University of Florida v. KPB, Inc.

United States Court of Appeals,

Eleventh Circuit.

No. 94-2157.

UNIVERSITY OF FLORIDA, Plaintiff-Appellant,

v.

KPB, INC., a Florida Corporation d/b/a "A" Notes, Kenneth Paul
Brickman, Defendants-Appellees.

July 31, 1996.

Appeal from the United States District Court for the Northern
District of Florida. (No. 90-10078-MMP), Maurice Mitchell Paul,
Chief Judge.

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

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.
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

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.
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

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 is from out-of-state, as well
as introducing evidence of a U.F. professor's contract to develop
commercial study guides with an out-of-state publisher.
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 at 1535. Section 43(a) provides

§ 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

4
A "trademark" is defined in 15 U.S.C. § 1127 as including
"any word, name, symbol, or device or any combination thereof"
used by any person "to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by
others and to indicate the source of the goods, even if that
source in unknown." Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 768, 112 S.Ct. 2753, 2757, 120 L.Ed.2d 615 (1992). A
"service mark" is identical to a trademark in all respects except
that it is intended to indicate the origin of services, rather
than goods. Restatement (Second) of Unfair Competition § 9 cmt.
f (1994). "Trade dress" involves the "total image of a product
and may include features such as size, shape, color or color
combinations, texture, graphics, or even particular sales
techniques." AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535
(11th Cir.1986) (quoting John H. Harland Co. v. Clarke Checks,
Inc., 711 F.2d 966, 980 (11th Cir.1983)).

In support of its § 43(a) claims, U.F. has cited
trademark, service mark, and trade dress cases, but has not
clearly declared under which category its claims fall.
Central to U.F.'s Lanham claims is its course numbering
system, for which we assume U.F. is claiming § 43(a)
protection as an unregistered service mark. Regardless of
the terminology used, the same substantive legal principles
apply equally to all three categories of marks.
 (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

1531, 1535 (11th Cir.1986), 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

5
Whether the plaintiff's trade dress is inherently
distinctive depends upon an examination of whether "it [is] a
"common" basic shape or design, whether it [is] unique or unusual
in a particular field, [and] whether it [is] a mere refinement of
a commonly adopted and well-known form of ornamentation for a
particular class of goods viewed by the public as a dress or
ornamentation for the goods...." Id. at 1536 (quoting Brooks
Shoe Manufacturing Co. v. Suave Shoe Corporation, 716 F.2d 854,
858 (11th Cir.1983)). If the plaintiff's trade dress is not
sufficiently distinctive to allow consumers to identify the
product from the trade dress, then the dress does not inherently
serve as an indication of origin and the plaintiff can claim no
right to the exclusive use of the trade dress. AmBrit, 812 F.2d
at 1536.

Alternatively, a finding of "secondary meaning"—the
connection in the consumer's mind between the mark and the
product's producer, whether that producer is known or
unknown—establishes protectability notwithstanding the
indistinctiveness of the trade dress. Id. "Trademarks and
trade dress may be classified as generic, descriptive,
suggestive, or arbitrary. Once conceived as distinct
categories, these rubrics are now commonly viewed as
"central tones in a spectrum,' " with distinctiveness
increasing as it moves toward the suggestive or arbitrary
end of the spectrum. Id. at 1537.
6
A [mark] is "functional" if it affords benefits in the
manufacturing, marketing, or use of the goods or
services with which [it] is used, apart from any
benefits attributable to the [mark's] significance as
an indication of source, that are important to
effective competition by others and that are not
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

practically available through the use of alternative
designs.

Restatement (Third) of Unfair Competition § 17 (1994).
7
"[T]he touchstone test for a violation of § 43(a) is the
"likelihood of confusion' resulting from the defendant's adoption
of a trade dress similar to the plaintiff's." Original
Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 831-
32 (11th Cir.1982). A variety of factors are relevant in
determining whether there is a likelihood of confusion including
the strength of the trade dress, similarity of design, similarity
of the products, identity of retail outlets and purchasers,
similarity of advertising media, the defendant's intent and
actual confusion. AmBrit, 812 F.2d at 1538.
8
The court supported its ruling by stating merely that:

Well, there is no confusion here. There is no false
if that aspect of U.F.'s argument has merit, this court has held

that in addition to likelihood of confusion, liability under the §

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 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.

advertising, there is nothing. You ought to try this
thing on what the main theme is and, that is, is there
a copyright here and did the defendant violate the
copyright? All of this other junk—and it is
junk—shouldn't even be here. It ought to be gone. And
you shouldn't be—whether the university is mad at
anyone, it doesn't make a hill of beans.
9
We further note that the course numbering system utilized
by U.F. was not a "personalized, ... unusual, numbering system,
... on which customers might rely for the reputation and quality
of the product" as that found protectible in B.H. Bunn. 451 F.2d
at 1263. A general system of course numbers, locations, and
times has nothing to do with the quality of a product, but is
common to any educational institution. Mere reference to U.F.'s
course numbering system by A-Plus Notes on its corresponding
study guides was within its competitive rights.
 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.