University of Florida v. KPB, Inc.

• Decision Date: 31 July 1996
• Docket Number: No. 94-2157,94-2157
• Citation: 39 USPQ2d 1603,89 F.3d 773
• Parties: 110 Ed. Law Rep. 1079, 39 U.S.P.Q.2d 1603 UNIVERSITY OF FLORIDA, Plaintiff-Appellant, v. KPB, INC., a Florida Corporation d/b/a "A" Notes, Kenneth Paul Brickman, Defendants-Appellees.
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 773

89 F.3d 773

110 Ed. Law Rep. 1079, 39 U.S.P.Q.2d 1603

UNIVERSITY OF FLORIDA, Plaintiff-Appellant, v. KPB, INC., a Florida Corporation d/b/a "A" Notes, Kenneth Paul Brickman, Defendants-Appellees.

No. 94-2157.

United States Court of Appeals Eleventh Circuit.

July 31, 1996.

Herbert L. Allen, Allen, Dyer, Doppelt, Franjola & Milbrath, P.A., Orlando, Florida, for appellant.

John E. Kirkpatrick, Miami, FL, for appellees.

Appeal from the United States District Court for the Northern District of Florida.

Before HATCHETT and BARKETT, Circuit Judges, and GODBOLD, Senior Circuit Judge.

PER CURIAM:

The University of Florida ("U.F.") appeals from a judgment in favor of KPB, Inc., d/b/a A-Plus Notes ("A-Plus Notes") after a jury trial on U.F.'s claims of copyright infringement. A-Plus Notes produces commercial study guides for various courses taught at U.F. by hiring students attending U.F. to take lecture notes, which it in turn markets to the student body as a whole. U.F. contends that the district court erred in denying its motions for summary judgment and judgment as a matter of law as to its statutory and common law copyright infringement claims. ¹ U.F. argues also that the court erred in directing verdicts in favor of A-Plus Notes on U.F.'s claims of false representation of origin and deceptive advertising pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). ² U.F. alternatively argues that a new trial is required because the great weight of the evidence is against the jury's verdict as to the copyright claims and/or because the jury's verdict was tainted by counsel's misconduct during trial.

Motions for directed verdict and judgment notwithstanding the verdict are subject to de novo review. Accordingly, we apply the same standard the district court must apply in determining whether to grant the motion. MacPherson v. University of Montevallo, 922 F.2d 766, 770 (11th Cir.1991); Carter v. City of Miami, 870 F.2d 578, 581 (11th Cir.1989). We review all of the evidence in the light most favorable to, and with all reasonable inferences drawn in favor of, the nonmoving party. MacPherson, 922 F.2d at 770. If the facts and inferences are so strong and overwhelmingly in favor of one party that the court believes that reasonable persons could not arrive at a contrary verdict, the grant of a directed verdict is proper. Verbraeken v. Westinghouse Electric Corp., 881 F.2d 1041, 1045 (11th Cir.1989) (quoting Boeing Co. v. Shipman, 411 F.2d 365 (5th Cir.1969)), cert. denied, 493 U.S. 1064, 110 S.Ct. 884, 107 L.Ed.2d 1012 (1990). If, however, substantial evidence is presented opposed to the motion, and this evidence is of such quality and weight that reasonable and fair-minded persons in the exercise of impartial judgment might reach different conclusions, the motion must be denied. Verbraeken, 881 F.2d at 1045. Denial of a motion for a new trial is reviewed for clear abuse of discretion. Hessen ex rel. Allstate Ins. Co. v. Jaguar Cars, Inc., 915 F.2d 641, 644-45 (11th Cir.1990).

At the outset, we note that on appeal from a final judgment after trial, the law of this circuit prohibits review of U.F.'s claim that the district court erred in denying its motion for summary judgment as to copyright infringement. Wenzel v. Boyles Galvanizing Co., 920 F.2d 778, 782 (11th Cir.1991). As this court explained in Stuckey v. Northern Propane Gas Co., 874 F.2d 1563, 1567 (11th Cir.1989) (quoting Holley v. Northrop Worldwide Aircraft Serv., Inc., 835 F.2d 1375, 1378 (11th Cir.1988)), we do "not review the propriety of orders denying summary judgment motions based on the evidence available when the motion was made." The proper inquiry, rather, is directed to the sufficiency of the evidence as presented at trial, which the record reveals to be competent support for the jury's verdict for A-Plus Notes on the copyright claims.

U.F. also claims the district court erred in directing verdicts for A-Plus Notes on U.F.'s claims brought pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Section 43(a) of the Lanham Act creates a federal cause of action for unfair competition, but is limited to interstate commercial activities. ³ Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 838 (11th Cir.1983). The section forbids unfair trade practices involving infringement of trade dress, service marks, or trademarks, even in the absence of federal trademark registration. ⁴ See Two Pesos, 505 U.S. at 768, 112 S.Ct. at 2757; Jellibeans, 716 F.2d at 839; AmBrit, 812 F.2d 1531, 1535 (11th Cir.1986). Section 43(a) provides%1

§ 1125 False designations of origin and false descriptions forbidden

(a)(1) Any person who, on or in connection with any goods or services, ... uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a).

This court held in AmBrit, Inc. v. Kraft, Inc., 812 F.2d at 1535, that in order to establish liability under § 43(a), the plaintiff must prove three elements: (1) its mark is inherently distinctive or has acquired secondary meaning, ⁵ (2) its mark is primarily non-functional, ⁶ and (3) the defendant's mark is confusingly similar. ⁷

U.F. claims A-Plus Notes engaged in misrepresentation of origin and deceptive advertising during the marketing of its study guides in violation of § 43(a) of the Lanham Act, and that the district court erred in directing verdicts for A-Plus Notes on those claims. In order to advance its Lanham Act claims to the jury, U.F. was required to present substantial evidence as to all three elements: (1) distinctiveness, (2) nonfunctionality, and (3) confusing similarity. The district court noted that U.F. conceded before trial that the information it sought to protect--numbers, places, and times of course meetings, etc.--is functional and otherwise nondistinctive.

U.F. focused its appeal on the third element--that the court applied the wrong test in assessing its unfair competition claims by relying upon the absence of actual confusion, instead of determining whether there existed a likelihood of confusion, as to U.F.'s sponsorship or approval of the A-Plus study guides. ⁸ Even if that aspect of U.F.'s argument has merit, this court has held that in addition to likelihood of confusion, liability under § 43(a) specifically requires a showing of nonfunctionality and distinctiveness of the plaintiff's mark, which U.F. has conceded it cannot do. Bauer Lamp Co., Inc. v. Shaffer, 941 F.2d 1165, 1170 (11th Cir.1991); AmBrit, 812 F.2d at 1535.

U.F. attempts to circumvent this court's requirement of a showing of all three Lanham elements by relying upon the former Fifth Circuit's decision in B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d 1254 (5th Cir.1971), for the proposition that A-Plus Notes' actions as a whole created confusion as to the original source of the study guides. The "sum of the digits" test in B.H. Bunn Co. was used, however, to assess unfair competition claims brought pursuant to Florida state law, not the Lanham Act. ⁹ Id. at 1262, 1263. We have found no authority to the effect that a "sum of the digits" test will allow this court to disregard the absence of two of the three elements required under the Lanham Act for an unfair competition claim.

Without "substantial evidence" that the information U.F. sought to protect was both distinctive and nonfunctional, elements necessary to prevail under § 43(a) of the Lanham Act, directed verdicts were appropriately granted in favor of A-Plus Notes. We accordingly affirm.

AFFIRMED.

1 U.F. claims statutory copyright infringement pursuant to 17 U.S.C. § 101 et seq., as well as common law copyright infringement, of written and oral components of its professors' lectures in fourteen courses taught during the 1990 spring semester, and one course taught in the 1989 fall semester.

2 At the outset, we find U.F.'s claim that A-Plus Notes intentionally interfered with U.F.'s relationship with the student notetakers to be without merit, and affirm the district court's grant of a directed verdict to A-Plus Notes on that issue.

3 Our review of the record indicates that the Lanham Act claims were properly within the jurisdiction of the district court. U.F. made a showing that the marketing and sale of A-Plus Notes had an effect upon interstate commerce, see Rickard v. Auto Publisher, Inc., 735 F.2d 450, 453 n. 1 (11th Cir.1984), and Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 838-39 (11th Cir.1983), by presenting evidence that approximately fifteen percent of its student body...