Fifth Circuit Affirms Springboards To Education's Loss Against Houston School In Trademark Case Appeal

from the read-a-lawbook dept

Way back in 2016, we discussed one company’s quest to sue a bunch of librararies and schools for infringing on its program to promote reading to young schoolchildren. If that seems positively evil, then, yes, you indeed have a soul, so congratulations. If you’re wondering how such a thing could have legal standing, it all centers around Springboards to Education having created the reading program with rewards that included children entering the “Millionaire Reading Club” for getting through a certain amount of books, the handing out of fake reward money, and other prizes. A bunch of libraries and schools independently setup their own reading clubs with similarly named rewards, thus leading to Springboards filing suit.

One of those school districts in Houston defended itself by pointing out that it was not engaged in commerce, meaning that its use was plainly Fair Use. The school won its case.

Springboards sued HISD for trademark infringement, counterfeiting, false designation of origin and dilution. After HISD and Springboards filed cross-motions for summary judgment, the district court granted HISD’s motion on the ground that Springboards could not show that HISD had used the mark in commerce. Springboards appealed.

Amazingly, Springboards appealed that decision, sending the case to the Fifth Circuit. Not surprisingly, the Fifth Circuit affirmed the ruling, pointing out that not only did it not have any opinion that would overrule the lower court’s contention that the school district was not engaged in commerce, but also adding that there was no likelihood of confusion in the use, thus rendering this not trademark infringement.

Springboards to Education, Inc., sued Houston Independent School District under the Lanham Act for using its marks in the course of operating a summer-reading program. The district court disposed of Springboards’ claims on summary judgment because it concluded that a reasonable jury could not find that the allegedly infringing use of Springboards’ marks was commercial in nature. We AFFIRM, albeit on alternative grounds: as explained herein, a reasonable jury could not find that the allegedly infringing use of the marks created a likelihood of confusion.

The court goes on through a long, detailed explanation to Springboards as to what confusion actually is and who’s confusion is actually relevant to a discussion over trademark infringement. Springboards had attempted, for instance, to suggest that parents and children themselves might be confused, thinking they were part of a Springboards program rather than one created by the school. The court points out that, even if that weren’t the case, the children and their parents aren’t a purchaser in any of this.

Springboards suggests HISD’s students and their parents might have been confused into thinking that HISD was using Springboards’ program instead of its own. Regardless of whether that might have been the case, HISD’s students and their parents are not the appropriate focus of the likelihood-of-confusion analysis. Although the ultimate recipients of HISD’s services and products, the students and their parents were not purchasers in any ordinary sense.3 They are better characterized as the “users” of the allegedly infringing products and services.

And, since HISD wasn’t attempting to compete with Springboards’ program elsewhere, no relevant confusion could be found.

One would hope this would be the end of this stupid saga and everyone could just get back to encouraging children to read books in their own specific ways. Whether Springboards will finally take the hint is the worst kind of cliffhanger.

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Companies: springboards to education

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Comments on “Fifth Circuit Affirms Springboards To Education's Loss Against Houston School In Trademark Case Appeal”

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Anonymous Anonymous Coward (profile) says:

Confused about confusion when confusing confusing is pertinent

Confusion is inherent in a corporate entity that is looking for confusion, when there is no possibility for confusion in the public. That the corporate entity is confused about confusion isn’t the issue. The issue is that the corporate entity is claiming confusion, but is seriously confused about what confusion is, when it comes to a court of law.

John Smith says:

What pirates don't understand

If schools freely encourage children to read, they take away the incentive for publishers to promote their materials for children. Moreover, every name of a child is a name not available for publishers to put on their mailing list. This is why Article 13 will replace Section 230 as rational people see that such rampant, unchecked piracy does not benefit society.

But whether Article 13 passes or fails I honestly couldn’t care less. It will be back. We outrank pirates in money, resources and the government’s ear. You Aspies are fucked.

bhull242 (profile) says:

I concur, but…

While I agree with the end result, I’m not sure I agree with the reasoning the appeals court used here.

Let me use an example to show what I mean:

Let’s say that somebody made a video game using some engine they created or that they licensed from someone else but isn’t the Unity engine. They use Unity-like trademarks in the packaging and ads for the game, and not as in a parody. This would be a pretty clear case of trademark infringement as it makes the false claim that Unity was used in the game, which is not the source. However, technically Unity isn’t sold to gamers but to game designers, so by the logic used by the appeals court here, that wouldn’t be the correct avenue for determining infringement even though knowing that a game is made with Unity is useful information for gamers, too.

Again, this isn’t exactly like the case with Springboards, which is clearly not trademark infringement for other reasons. I’m just a little concerned that the appeals court may have used incorrect reasoning.

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