Product Review Website Defeats Trademark Claims–Boarding School Review v. Delta Career Education
By Eric Goldman
Boarding School Review, LLC v. Delta Career Education Corp., 1:11-cv-08921-DAB (SDNY March 29, 2013)
This case involves Community College Review, with the tagline “find the right community college for you.” It publishes information about various community colleges and provides a navigation wizard. The community college pages include advertising and a lead generation form that allegedly forwards leads to competitive colleges. The trademark owners in this case operate private colleges offering associate degrees. The colleges sued CCR for trademark and copyright infringement.
The colleges objected to statements on CCR website saying “Get info / application from [name of trademarked college]” when those statements allegedly generated leads that were sent to competitors. This claim fails because the colleges merely alleged CCR forwarded the leads to competitors without any further factual support. This failed the Iqbal pleading standard.
The remaining trademark claims failed–on a motion to dismiss–for lack of consumer confusion. The court says the site headline (referencing “Community College Review”), domain names and “header and navigational menu clearly and quickly communicate to site visitors that BSR’s website is an omnibus review site profiling community colleges, not a website affiliated with or sponsored by the schools profiled.” The court also notes the sophistication of prospective college students (accord the CollegeSource ruling) and the industry differences between college operator and a review website.
The federal trademark dilution claim fails because of a lack of fame (FWIW, I hadn’t heard of the trademark owners or their colleges before) despite the allegations that:
Defendants own at least fourteen educational institutions, provide educational services to at least 16,000 people, have one subsidiary that has operated for more than 100 years, have invested “enormous” sums of money in marketing, provide services that are “highly sought after,” and have experienced “extraordinary and longstanding sales success”
The state trademark dilution claim fails because there wasn’t a plausible allegation that the colleges “will lose their ability to serve as a unique identifier of Defendants’ educational institutions.” The court doesn’t use the term nominative use, but basically the court says that CCR’s nominative use can’t create blurring, and there wasn’t any tarnishment because CCR didn’t link the trademarks with shoddy products (I didn’t fully understand the court here).
The colleges also alleged copyright infringement, but the allegedly infringing activity all occurred before the copyright registrations, so the court denies statutory damages and attorneys’ fees. There might still be actual damages worth pursuing; if not, the lack of juicy damages might de facto end the copyright claim.
The court allows the colleges to amend the complaint with respect to the “Get info / application from” language. Otherwise, the trademark claims were dismissed with prejudice.
This case didn’t involve consumer reviews, so 47 USC 230 wasn’t implicated. Still, the colleges’ tactics were similar to the efforts we’ve seen from other attempts to work around Section 230, such as the PissedConsumer line of cases. Basically, the colleges tried to use trademark law to shut down the review website from building product pages in an ad-supported website. These efforts to depopulate a product catalog’s taxonomy pose a serious threat to the integrity of review websites, and it’s great to see the court reject the effort. I also discuss this issue in my Online Word of Mouth and Regulating Reputational Information papers.
This case is the latest trademark case in the increasingly rough-and-tumble world of marketing educational services. Other cases in this line include CollegeSource v. AcademyOne and Private Career Training Institutions Agency v. Vancouver Career College (Burnaby) Inc. (from Canada).
[Photo Credit: Young woman having trouble studying // ShutterStock]