COLLEGESOURCE, INC. v. ACADEMYONE, INC.
MEMORANDUM AND/OR OPINION RE: DEFENDANT'S MOTION FOR SUMMARY JUDGMENT (DOC. NO.164). SIGNED BY HONORABLE MARY A. MCLAUGHLIN ON 10/25/2012. 10/25/2012 ENTERED AND COPIES E-MAILED.(kk, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
October 25, 2012
This case concerns two companies providing online
college transfer services.
The plaintiff, CollegeSource, Inc.
has accused the defendant, AcademyOne, Inc., of republishing
course catalogs and course information digitized and maintained
Both companies utilize the course catalogs and
information to serve schools and individual students seeking to
transfer credits from one school to another.
The defendant has moved for summary judgment under Rule
56 of the Federal Rules of Civil Procedure on all remaining
counts of the Amended Complaint: Violation of the U.S. Computer
Fraud and Abuse Act (“CFAA”) (Count III); Breach of Contract
(Count IV); Unjust Enrichment (Count V); Trademark Infringement
(Count VI) and Unfair Competition (Count VII) under U.S. Lanham
Act; Declaration of Trademark Invalidity Due to Fraud on
U.S.P.T.O. (Count VIII); and False Advertising under U.S. Lanham
Act (Count IX).
The Court grants the defendant’s motion for
summary judgment in its entirety.
Summary Judgment Record
CollegeSource’s claims stem from four distinct sets of
First, AcademyOne’s course catalog collection efforts
form the basis of the plaintiff’s breach of contract, unjust
enrichment, and CFAA claims.
Second, AcademyOne’s purchase of
Internet search engine AdWords relates to the claims of trademark
infringement and unfair competition under the Lanham Act.
AcademyOne’s registration of the “CollegeTransfer.net” trademark
relates to the declaratory judgment sought by the plaintiff on
the term’s trademark invalidity.
The final set of facts,
respecting correspondences and advertising proffered by
AcademyOne, relates to CollegeSource’s false advertising claim.
CollegeSource and Career Guidance Foundation
The plaintiff, CollegeSource, Inc., is a company that
provides the public with information and data services relating
to college and university course curriculums, equivalencies, and
transferability. It is the successor in interest to Career
The facts presented here are undisputed unless otherwise
noted. Disputed facts are read in the light most favorable to
the nonmoving party, the plaintiff. Sheridan v. NGK Metals
Corp., 609 F.3d 239, 251 n.12 (3d Cir. 2010).
Guidance Foundation (“CGF”), which was founded in 1971.
Compl. ¶ 5; Tr. Prelim. Inj. Hr’g 22:2-10 (D. Ex. 12).
CollegeSource offers three products: CollegeSource
Online, the Transfer Evaluation System (“TES”), and CataLink.
CollegeSource Online is a subscription service that provides
access to CollegeSource’s archive of PDF digital college course
The product is available to users who have a paid
Users can also download a free trial and gain
access to up to three PDF catalogs.
Pl.’s Resp. to Def.’s Mot.
for Summ. J. (“Pl.’s Resp.”) 8; Kerry Cooper Dep. (“Cooper Dep.”)
108:22-109:4, Aug. 23, 2011 (D. Ex. 13); D. Exs. 15-16.
TES is an online database of courses and other course
equivalency-related data culled from CollegeSource’s library of
It is also available by subscription.
primarily marketed to institutions seeking to facilitate the
transfer of credits from one school to another.
Am. Compl. ¶¶
24-25; Pl.’s Resp. 8; Tr. Prelim. Inj. Hr’g 22:2-10.
Finally, CataLink is a hyperlink service developed to
assist schools in distributing course catalogs efficiently.
CollegeSource provides subscribing schools with a URL hyperlink
to CollegeSource’s archive of that school’s digital course
catalogs, which can then be inserted and displayed on the
“D. Ex.” numbers refer to exhibits in the Consolidated
Appendix of Exhibits to AcademyOne’s Memorandum in Support of
school’s home page.
When an interested user seeks to browse past
catalog titles, he clicks on the CataLink and is brought to
Expert Report of Paul Lewis at 15, Dec.
21, 2011 (“Lewis Report”) (D. Ex. 22); Stanley Novak Dep. (“Novak
Dep.”) 82:20-83:11, Aug. 24, 2011 (D. Ex. 6).
Unlike CollegeSource Online and TES, CataLink is not a
Users are transported to CollegeSource’s
website with no notification that they were leaving the school’s
Jessica Ybarra Dep. (“Ybarra Dep.”) 33:8-36:5,
Aug. 26, 2011 (D. Ex. 23); Cooper Dep. 84:16-22 (D. Ex. 13);
Lewis Report 10-17 (D. Ex. 22).
The defendant AcademyOne was founded around 2006 with
the objective to build administrative systems for schools and to
reduce costs associated with student transfers.
since developed two products: the Course Equivalency Management
Center (“CEMC”) and the National Course Atlas.
users, mostly faculty, to evaluate academic courses and
curriculum at different institutions to make decisions on credit
The National Course Atlas is a database of current
course information from roughly 4,000 colleges.
Tr. Prelim. Inj.
Hr’g 114:3-4, 115:2-5, 119:3-8, 121:14-19; D. Ex. 2 at 2.
The Parties’ Course Catalog Collections
CollegeSource’s Collection Methods
CollegeSource derived its first set of electronic
college course catalogs through CGF in 2004, when CGF transferred
its assets to CollegeSource as part of a settlement.
Am. Compl. ¶ 23.
D. Ex. 10;
Now, CollegeSource repopulates its course
catalogs on a yearly basis.
It acquires its collection of
college course catalogs by contacting individual colleges by
email or telephone and requesting copies of their catalogs.
colleges then provide the catalog, either in electronic or paper
If the catalog is in electronic form, CollegeSource
processes it, converts it to PDF format, and adds it to its
If the catalog is in paper form, CollegeSource scans
it and processes it with optical character recognition software
to convert it to PDF format.
D. Ex. 17; Tr. Prelim. Inj. Hr’g
49:21-22, 78:1-25, 79:1-9; Novak Dep. 33:10-13, 34:21-35:9, 39:240:10 (D. Ex. 6).
Course data is also extracted and placed in the TES
course database, and the entire PDF catalog is placed in the
CollegeSource Online database.
Selected catalogs are also made
available via the CataLink system.
Pl.’s Resp. 7, Tr. Prelim.
Inj. Hr’g Novak Test. 67:12-68:1, 75:21-23, 78:18-79:9.
Finally, CollegeSource inserts a uniform cover page (or
“splash page”) which includes the CollegeSource logo on each
catalog it converts to PDF format.
CollegeSource tags the data
both on the cover page and throughout the rest of the document.
Pl.’s Resp. 7-8; Tr. Prelim. Inj. Hr’g 32:7-11, 49:23-50:1.
CollegeSource’s Copyright Notices and Subscription
“Copyright & Disclaimer Information” Notices
On the inside cover of each of its PDF college
catalogs, CollegeSource inserts a page entitled “Copyright &
The notice reads in relevant part:
While CollegeSource, Inc. and Career Guidance
Foundation provides information as a service to the
public, copyright is retained on all digital catalogs.
This means you may NOT:
distribute the digital catalog files to others,
“mirror” or include this material on an internet
(or intranet) server, or
modify or re-use the files
without the express written consent of CollegeSource,
Inc. and Career Guidance Foundation and the appropriate
D. Ex. 26 at 3; Tr. Prelim. Inj. Hr’g 32:22-24.
In addition, CollegeSource’s website contains a
“Copyright and Disclaimer” hyperlink in the lower left-hand
corner. The page accessed by this link contains language
substantively identical to that of the “Copyright & Disclaimer
Information” page in the PDF catalogs.
D. Exs. 34, 36.
CollegeSource also has a subscription agreement for its
CollegeSource Online and TES services.
To access subscriber-only
services on CollegeSource Online and TES, a user must accept the
terms of the subscription agreement.3
Troy Holaday Dep.
This agreement stipulates, in relevant part:
CollegeSource Online, TES, and, unless other terms and conditions
expressly govern, any other electronic services from
CollegeSource, Inc. that may be made available from time to time
(each, a “Service”, and collectively the “Services”).
To the extent you have access to, or are using, a Service without
having both completed CollegeSource, Inc.’s registration process,
you are hereby notified that your continued use of a Service is
nevertheless subject to the terms and conditions of this
* * * *
LIMITATIONS ON USE.
* * * *
The text, graphics, images, video, design, course
description data, pdf college catalogs, information,
organization, compilation, look and feel, advertising and
all other protectable intellectual property, and all
improvements, suggestions, and derivations thereto and
thereof (collectively, the “Content”) available through the
Services is CollegeSource, Inc.’s property and is protected
by copyright and other intellectual property laws. Unless
you have CollegeSource, Inc.’s written consent, you may not
sell, publish, broadcast, distribute, retransmit the
information obtained through any Service, or otherwise
provide access to the Content received through the Services
to anyone, including, if applicable, your fellow students or
employees . . . .
You agree not to rearrange or modify the Content. You agree
not to create abstracts from, scrape or display data from
the Content for use on another web site or service. You
agree not to post any of the Content from the Services to
weblogs, newsgroups, mail lists or electronic bulletin
boards, without CollegeSource, Inc.’s written consent. To
(“Holaday Dep. III”) 254:1-255:25, Sep. 27, 2011 (D. Ex. 14).
Such agreements can be accessed by a user in two
First, a user seeking to log in encounters a sign-in
Within the sign-in box is the following language: “By
signing in above, I agree to be bound by the terms of the . . .
The box includes a link to this
Second, when the user attempts to access a course
catalog using CollegeSource Online or TES, he also encounters a
pop-up submission form to apply for a free trial.
submission form, there is a shortened version of the agreement
and a link to the complete agreement.
D. Ex. 33; Troy Holaday
Dep. (“Holaday Dep. I”) 87:1-16, Aug. 25, 2011 (D. Ex. 46).
In contrast, when a user accesses a course catalog via
a CataLink placed on a college’s website, there are neither links
to CollegeSource’s Copyright and Disclaimer notice nor to its
However, the Copyright and Disclaimer
page is still included in the course catalog.
Lewis Report at 17
(screenshot of CataLink page) (D. Ex. 22).
request consent for this and other matters, please contact
CollegeSource Customer Service.
* * * *
You agree not to use the Services for any unlawful or
unauthorized purpose. CollegeSource, Inc. reserves the
right to terminate or restrict your access to a Service if,
in its opinion, your use of the Service does or may violate
any laws, regulations or rulings, infringe upon another
person’s rights or violate the terms of this Agreement.”
D. Ex. 41 (emphasis added).
AcademyOne Begins Collecting Its Course Catalog
Because both of its products require course data,
AcademyOne began a process to electronically gather course
descriptions in 2008.
In order to obtain the course catalog data
needed to run their services, AcademyOne first made several
attempts to license CollegeSource’s database.
CollegeSource denied its requests.
Tr. Prelim. Inj. Hr’g Stanley
Test. 5:7-6:13 (D. Ex. 56); Tr. Prelim. Inj. Hr’g 60:2-3; Cooper
Decl. ¶ 13 (ECF No. 185).
Thereafter, AcademyOne turned to the Chinese company
Beijing Zhongtian-Noah Sports Science Co., Ltd. (“Noah”) to
retrieve the data.
AcademyOne hired Noah to pull PDF or HTML
college catalogs directly from the college websites.
agreement between the parties stipulated that AcademyOne would
provide Noah with a list of links to online catalogs and that
Noah would compile the course information into a single course
database. (D. Ex. 58 at ex. A).
Approximately half of the 4,000 schools targeted by
Noah posted their course catalogs in PDF format, which had to be
converted and processed before being copied as text, or
“scraped,” into AcademyOne's database.
To collect the PDF course
catalogs, Noah downloaded over 18,000 PDF files.
Inj. Hr’g Stanley Test. 7:21-22 (D. Ex. 56); Stanley Decl. ¶ 9,
(D. Ex. 59); Moldoff Decl. (“Moldoff Decl. II”) ¶ 13, Jan. 5,
2011 (D. Ex. 60).
Initially, AcademyOne provided Noah the URLs at which
to find the college catalogs.
Some of these schools utilized
CollegeSource’s CataLink service.
Noah eventually took over the
task of locating the URLs based on a list of accredited colleges
provided by AcademyOne.
Lin Zhou Dep., July 30, 2009, 83:11-13
(D. Ex. 62); Def.’s Mem. Supp. Summ. J. (“Def. Mot.”) at 21; D.
Ex. 65; Lin Zhou Dep., Oct. 11, 2011, 37:11-24 (D. Ex. 66).
There is evidence that between 2005 and 2007, several
AcademyOne employees registered for free trial subscriptions to
These free trials allowed for a limited
number of course catalog downloads.
D. Exs. 109-10.
CollegeSource Finds Copies of Its PDF Catalogs on
In early 2007, AcademyOne launched its websites, which
provided free access to its course description database.
included around 2,000 of the 18,000 PDF documents that Noah had
David Moldoff Dep. 52:15-53:17, 90:14-19, Mar. 20,
2009 (D. Ex. 67); Tr. Prelim. Inj. Hr’g 123:16-20.
Soon thereafter, CollegeSource’s CEO, Kerry Cooper,
discovered that some of the PDF documents posted by AcademyOne
had been copied from CollegeSource servers.
able to determine the identity of the documents because they
included, on page two, CollegeSource’s Copyright and Disclaimer
Cooper and other CollegeSource employees then
spent a full workday identifying around 680 CollegeSource course
catalogs located on AcademyOne's website.
Tr. Prelim. Inj. Hr’g
Noah later reported to AcademyOne that
out of the over 18,000 PDF documents it provided, 783 were
D. Exs. 71-72.
The 783 “CollegeSource PDFs” had been obtained by Noah
through CollegeSource’s CataLink service.
CataLink is a
“hyperlink” archival service provided to subscribing schools and
universities with which educational institutions can copy a link
to CollegeSource’s PDF version of their catalog and post it to
their own websites.
Over 1,700 PDF course catalogs containing
the name “CollegeSource” are publicly available on college
Novak Dep. 77:7-80:12 (D. Ex. 6); Lewis Report at 8-9
(D. Ex. 22); D. Exs. 47, 51-54.
In 2008, CollegeSource hired a computer expert, Michael
Bandemer, to examine and analyze whether AcademyOne had
improperly used electronically stored intellectual property of
Bandemer confirmed that some PDFs posted on
AcademyOne’s website were identifiable as “encrypted
[CollegeSource] PDF data.”
Expert Report of Michael R. Bandemer
(“Bandemer Report”) 2, 4 (D. Ex. 91).
After 2009, only institutions which were subscribers to
CollegeSource Online had privilege to a CataLink hyperlink.
Prior to 2009, however, all institutions could do the same;
CollegeSource was aware of these practices and permitted them.
Novak Dep. 77:7-78:23, 79:4-80:12 (D. Ex. 6); Lewis Report at 89; D. Exs. 47, 51-54.
CollegeSource has not identified any signs of a
firewall breach of CollegeSource’s servers or any unusually large
downloads of CollegeSource data.
Ybarra Dep. 19:8-11, 40:13-18
(D. Ex. 23).
4. The Cease and Desist Letter and Its Aftermath
On April 23, 2007, Kerry Cooper, the CEO of
CollegeSource, hand-delivered a cease and desist letter to
This letter asserted that there were “approximately
700 instances” of “literal copying and display of the
CollegeSource Materials by AcademyOne.”
that AcademyOne willfully infringed its copyright, violated the
Lanham Act, and violated the California Business and Professions
Code § 17200.
The letter demanded that AcademyOne remove all
CollegeSource PDF catalogs from its websites and servers.
Prelim. Inj. Hr’g 36:22-37:1; Moldoff Decl. II ¶ 19, Ex. 1 (D.
Upon receiving the cease and desist letter, AcademyOne
disabled the links on its website which allowed access to all PDF
catalogs and initiated an internal investigation regarding
During the investigation, the PDFs
were not linked onto the website, but the catalogs remained on
AcademyOne’s servers, meaning anyone who had saved the URL for a
specific catalog could still access it.
39:13-17, 125:12-21; D. Exs. 71-72.
Tr. Prelim. Inj. Hr’g
Following the investigation, AcademyOne removed all PDF
catalogs from its servers.
At that time, AcademyOne did not
delete the course descriptions “scraped,” or copied, from the
In January 2011, AcademyOne initiated a new
method of repopulating its databases in a manner which did not
involve Noah’s PDF files.
Thus, it removed at that time all
course descriptions derived from PDF catalogs (including catalogs
not created by CollegeSource) from its database.
Inj. Hr’g 126:10-16, 127:15-24; Moldoff Decl.(“Moldoff Decl.
III”) ¶ 14, Feb. 27, 2012 (D. Ex. 3).
5. Damages Incurred by CollegeSource
CollegeSource embarked on a number of steps upon its
discovery of AcademyOne’s actions in early 2007.
CollegeSource initiated an internal investigation of AcademyOne’s
websites, which involved many employees’ working hours. Tr.
Prelim. Inj. Hr’g 31:21-32:19.
In addition, CollegeSource hired
a computer expert, Michael Bandemer, to analyze the full scope of
Finally, CollegeSource incurred costs by
implementing increased security measures on their catalogs, such
as “seeding,” “salting,” and “watermarking.”
well in excess of $5,000.
These costs were
Cooper Decl. ¶ 16, (ECF No. 185).
Beginning in 2007, AcademyOne purchased the terms
“college,” “college source,” “career guidance,” and “career
guidance foundation” from several Internet search engines such as
This form of Internet advertising, known as “AdWords,”
presents advertisements as “sponsored links” or “sponsored
results” in addition to the standard search results.
user who entered the search terms purchased by the advertiser
would, in addition to the normal search results, be presented
with an ad for the advertiser’s website.
Moldoff Decl. III ¶¶
16, 18 (D. Ex. 3).
Here, AcademyOne’s advertisements are titled with a key
phrase such as “College Transfer Help” or “Find Transfer
It identifies its website “collegetransfer.net,”
The display of the advertisements vary depending
on the Internet service provider.
On AOL, for example, the links
are listed above the normal results, shaded a different color
from the normal search results, and listed as a “Sponsored Link.”
On Google, the links are listed to the right of the normal
results under the banner “Sponsored Links.”
On Ask.com, the
advertisement is nestled within the normal results and under a
small “Sponsored Results” banner.
Troy Holaday Decl. (“Holaday
Decl. II”) Ex. I, Apr. 5, 2012 (ECF No. 186-9).
CollegeSource and its predecessor CGF have continuously
used the “CAREER GUIDANCE FOUNDATION” name and marks in
advertising and in general commerce since 1980.
“COLLEGESOURCE” continuously since 1994.
They have used
owns all title and interest to the mark “CollegeSource.”
Decl. ¶¶ 17-18 (ECF No. 185); Holaday Decl. II, Ex. H (ECF No.
AcademyOne’s Trademark in CollegeTransfer.net
AcademyOne filed an application with the U.S. Patent
and Trademark Office (USPTO) to register “collegetransfer.net” as
a service mark on July 3, 2009, and thereafter requested that the
mark be moved to the Supplemental Register.
The mark was
registered on the Supplemental Register on May 25, 2010.
not yet been registered on the Principal Register.
267, 279, 284; Papaefthimiou Decl. Ex. 23, 26 (ECF No. 187-21,
In its application to the USPTO, AcademyOne represented
that it first used collegetransfer.net in commerce on December 1,
However, there is evidence in the record to suggest that
the correct date of its first use was sometime after March 2007.
Papaefthimiou Decl. Ex. 4 ¶ 12 (ECF No. 187-4).
AcademyOne did not inform the USPTO about an Eastern District of
Pennsylvania decision which held that CollegeSource did not
infringe on the collegetransfer.net trademark with its own
AcademyOne, Inc. v. CollegeSource,
Inc., No. 08-5707, 2009 WL 5184491 (E.D. Pa. Dec. 21, 2009).
CollegeSource has argued that due to AcademyOne’s false
statements and omissions, AcademyOne’s trademark over
“collegetransfer.net” should be cancelled.
Pl.’s Resp. 118-19.
AcademyOne’s Letters and Database Representations
Finally, CollegeSource’s false advertising claim stems
from two sets of public statements made by AcademyOne: its
correspondences to public colleges and representations made on
its website respecting the accuracy of its course database.5
Letters to Public Colleges Under State Freedom of
From January through July 2010, Mr. David Moldoff,
AcademyOne’s CEO, sent letters to a number of public colleges
requesting information under state freedom of information or
In these letters, Mr. Moldoff informed the
institutions that CollegeSource had filed “copyright claims” in
federal district court.
He requested copies of correspondences
between the institution and CollegeSource relating to any
“ownership and control [by CollegeSource] of your Institution’s
digital catalog and the course descriptions therein.”
also states that “CollegeSource claims control of the digital
catlogs that they collect, even if it resides on your website.”
Finally, it states that CollegeSource’s assertions of ownership
Plaintiff has withdrawn the third portion of the false
advertising claim, regarding the defendant’s submission to the
South Carolina Department of Education to bid for its course
articulation and transfer service. Pl.’s Resp. 126.
“attempt to preclude AcademyOne and other software providers from
providing automated student transfer systems . . . .”6
Mr. Moldoff, who is not a lawyer, has testified that he
used the term “copyright claim” generally and not as a reference
to a specific cause of action.
He also testified that he made
his statement regarding CollegeSource’s actions against
AcademyOne and other software providers as a result of a
statement made by CGF’s founder, Harry Cooper.
Mr. Moldoff had
The statements at issue are as follows:
“AcademyOne is making this request as a result of CollegeSource’s
copyright claims filed with the United States District Court for
the Eastern District of Pennsylvania in July, 2010 whereby
CollegeSource is claiming ownership and control of your
institution’s digital catalog and the course descriptions
contained within, whereby restricting the use of your academic
content sourced from the digital catalog that was designed to
support academic purposes by other institutions and prospective
students. CollegeSource’s assertations attempt to preclude
AcademyOne and other software providers from providing automated
student transfer systems that may enable prior learning
assessment, credit recommendation methods and articulation
decisions using course content sourced from digital catalogs
CollegeSource has tagged.
* * * *
AcademyOne’s CollegeTransfer.Net enables students to compile an
academic history referencing course data and facilitates course
comparability projects across institutions and their academic
* * * *
CollegeTransfer.Net and CourseAtlas.com are sites where students
can freely find what courses transfer in and out between
institutions throughout the United States as more and more
institutions are publishing their course level data with our
D. Ex. 96.
been informed that Mr. Cooper stated to members of the industry
that CollegeSource intended to bring suit against any other
developers who copied course descriptions or engaged in similar
Tr. Prelim. Inj. Hr’g 132:17-136:4.
As a result of Mr. Moldoff’s letters, some schools
contacted CollegeSource and expressed concern.
CollegeSource’s clients pulled its catalogs from CollegeSource’s
Tr. Prelim. Inj. Hr’g 52:7-9, 53:4-14.
AcademyOne’s Database Representations
On one of AcademyOne's websites, courseatlas.com,
AcademyOne makes several statements regarding its course
databases, including that it is “published annually” with
“current course offerings”, is the “most comprehensive database
of current course offerings possible”, is not “outdated”, and is
“reliable, accurate, and up-to-date.”
Papaefthimiou Decl. Exs.
28-30, Apr. 6, 2012 (ECF No. 187-26,28).
CollegeSource claims that these statements are false or
It points to an entry for Bergen Community College
which appears to be derived from a 2006-2007 catalog, not the
Pl.’s Resp. 121-22; Papaefthimiou Decl. Ex. 31
(ECF No. 187-29).
On July 20, 2010, eleven months after a parallel
California action was dismissed,7 CollegeSource filed this action
in the Eastern District of Pennsylvania and moved for a temporary
restraining order to preserve evidence on AcademyOne’s computers.
On August 3, 2010, the Court denied the motion and instructed
both parties not to destroy any potentially relevant information.
CollegeSource thereinafter filed an Amended Complaint on October
19, 2010, which AcademyOne moved to dismiss in part.
CollegeSource initiated its litigation in the Southern
District of California in October 2008. CollegeSource, Inc. v.
AcademyOne, Inc., No. 08-1987 (S.D. Cal.) (“California Action”).
In August 2009, the California Action district court dismissed
that case for lack of personal jurisdiction, and CollegeSource
filed a timely appeal. Id. at 2009 WL 2705426 (S.D. Cal. Aug.
24, 2009). While the issue was pending appeal, CollegeSource
filed the instant case in July 2010. After consultation with
both parties, this Court agreed to move forward with the instant
case with the understanding and agreement that CollegeSource
would continue to litigate regardless of the outcome of the
California Action appeal. The parties thereinafter engaged in
extensive motion practice.
However, on August 8, 2011, the Ninth Circuit reversed the
district court’s earlier dismissal in the California Action, and
on September 1, 2011, CollegeSource moved to dismiss, transfer,
or stay the instant lawsuit pending resolution in California.
The Court denied the motion on October 28, 2011. It held that
departure from the first-filed rule was warranted in this
situation because the instant case had already “developed
considerably further than in the first-filed California Action”
and the Court had developed familiarity with the facts and legal
issues surrounding the case. Moreover, to allow otherwise would
be contrary to principles of fairness and comity, resulting in a
waste of judicial resources. CollegeSource, Inc. v. AcademyOne,
Inc., No. 10-3542 (E.D. Pa.) (ECF No. 133).
The California Action is currently stayed pending
resolution of the instant case. The plaintiff has appealed the
stay order and it is currently pending before the Ninth Circuit
Court of Appeals. CollegeSource, Inc. v. AcademyOne, Inc., No.
12-55013 (9th Cir.).
engaged in briefing on a number of issues, including the
plaintiff’s RICO claims (Counts 1 & 2 of the Amended Complaint).
On December 6, 2010, CollegeSource moved for a
At a day-long evidentiary hearing and
separate oral argument, the Court heard testimony from five
witnesses and received 92 exhibits as evidence.
engaged in extensive briefing of the legal issues and submitted
proposed findings of fact and conclusions of law.
the Court denied the motion because CollegeSource did not show
that, absent an injunction, it would suffer irreparable harm on
its breach of contract and unjust enrichment claims.
also held that CollegeSource had not demonstrated a likelihood of
success on its false advertising claim under the Lanham Act.
On May 19, 2011, the Court granted Defendants’ motion
to dismiss the RICO claims, dismissed David Moldoff from the
case, and issued a scheduling order.
The parties proceeded with discovery beginning in June
Expert discovery commenced in October 2011.
produced two affirmative expert reports and AcademyOne served
three rebuttal reports.
On February 27, 2012, AcademyOne moved for summary
judgment on all remaining counts.
The parties engaged in
substantial briefing and the Court heard oral argument on the
motion on June 13, 2012.
On September 21, 2012, months after discovery had ended
and as the Court was finalizing its decision on the summary
judgment motion, CollegeSource filed a motion for leave to
supplement its opposition to the summary judgment motion and to
The plaintiff argued that it had used a search
vehicle called “Agent Ransack” to uncover “newly discovered
evidence” relating to the defendant’s Apple Server and the
plaintiff’s server logs.
After holding a telephone conference to
discuss the parties’ arguments, the Court denied the plaintiff’s
Given that the Agent Ransack software program was
created in 2000 and has been freely available on the Internet
throughout the course of this litigation, the Court reasoned that
the plaintiff did not offer a persuasive reason why the search
vehicle could not have been utilized during the proper time for
AcademyOne is entitled to summary judgment if there “is
no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.”
Fed. R. Civ. P. 56(a).
In making its determination, the Court must consider the evidence
in the light most favorable to the nonmoving party.
NGK Metals Corp., 609 F.3d 239, 251 n.12 (3d Cir. 2010).
moving party bears the initial burden of demonstrating an absence
of genuine issues of material fact.
Celotex Corp. v. Catrett,
477 U.S. 317, 323 (1986).
An issue is genuine if there is a
sufficient evidentiary basis for a reasonable jury to find for
the non-moving party; it is material if it may affect the outcome
of the suit under governing law.
Anderson v. Liberty Lobby, Inc.
477 U.S. 242, 248 (1986).
AcademyOne has moved for summary judgment on Counts 3-9
of the Amended Complaint: Violation of the U.S. Computer Fraud
and Abuse Act (“CFAA”) (18 U.S.C. § 1030); state law claims of
Breach of Contract and Unjust Enrichment; Trademark Infringement
under U.S. Lanham Act (15 U.S.C. § 1114); Unfair Competition
under U.S. Lanham Act (15 U.S.C. § 1125(a)); Declaration of
Trademark Invalidity; and False Advertising under U.S. Lanham Act
(15 U.S.C. § 1125(a)).
The Court will begin by addressing the
two state law claims, breach of contract and unjust enrichment.
It will then address the remaining claims in turn.
The Plaintiff’s Breach of Contract Claim
The defendant argues that the plaintiff’s breach of
contract claim is equivalent to the rights created by the
Copyright Act of 1976 and should be preempted.
The Court finds
no preemption with respect to the breach of contract claim.
Section 301(a) of the Copyright Act preempts state law
claims that are equivalent to the rights created by federal
17 U.S.C. § 301(a).
In the Third Circuit, “if a
state cause of action requires an extra element, beyond mere
copying, preparation of derivative works, performance,
distribution or display, then . . . federal law will not preempt
the state action.”
Dun and Bradstreet Software Servs., Inc. v.
Grace Consulting, Inc., 307 F.3d 197, 217 (3d Cir. 2002)
This circuit has not decided whether
breach of contract claims per se contain an extra element.
Several extra elements arise in CollegeSource’s breach
of contract claim.
First, a breach of contract claim involves
the existence of a contract or agreement.
E.g., MCS Services,
Inc. v. Raleigh Johnsen, No. 01-4430, 2002 WL 32348500, at *6
(E.D. Pa. Aug. 13, 2002).
Under Pennsylvania law, the plaintiff
must prove offer, acceptance, and consideration to establish that
a contract exists.
537, 541 (1993).
E.g., Schreiber v. Olan Mills, 426 Pa. Super.
Such elements are not at issue in copyright.
Melville B. Nimmer & David Nimmer, Nimmer on Copyright
§ 1.01[B][a] (2002) (“Without a promise there is no contract,
while a promise on the part of one who engages in unlicensed
reproduction or distribution is not required in order to
constitute him a copyright infringer.”).
Second, copyright and contract law differ in the type
of right resulting from the court’s judgment.
is in personam and copyright is in rem, a judgment on the basis
of contract law will impact a third party’s rights differently.
E.g., Video Pipeline, Inc. v. Buena Vista Home Entertainment,
Inc., 210 F. Supp. 2d 552, 566 (D.N.J. 2002) (citing ProCD, Inc.
v. Zeidenberg, 86 F.3d 1447, 1454 (7th Cir. 1996)).
case, any decision by this Court regarding AcademyOne’s breach of
contract will not affect “the options of persons who are
strangers to the author.”
ProCD, 86 F.3d at 1454.
Some courts have held that a breach of contract by
itself is not enough to avoid preemption. “If the promise amounts
only to a promise to refrain from reproducing, performing,
distributing or displaying the work, then the contract claim is
Wrench LLC v. Taco Bell Corp., 256 F.3d 446, 457
(6th Cir. 2001).
At oral argument, however, CollegeSource stated
that its claim relates to “defendant’s promise to make only
personal use” of the documents.
Tr. Hr’g Mot. Summ. J. 6/13/12
(“6/13/12 Hr’g Tr.”) 56:17-22.
Indeed, the license discusses the
user’s obligation to print documents only for personal use.
This is sufficiently distinct from copyright law to pass
E.g., Video Pipeline, 210 F. Supp. 2d at 567 (holding
that a contract’s regulation on permitted use, there the
license’s regulation that defendants must display a trademark on
its websites, was sufficient to establish an extra element).
The plaintiff’s cause of action alleges three potential
extra elements distinct from those analyzed for rights derived
from the Copyright Act.
Therefore, the Court finds no preemption
and proceeds with a breach of contract analysis.
There are two separate claims at issue: the “Copyright
and Disclaimer” notice, which is located on the inside cover of
the PDF course catalogs as well as on the website itself, and the
subscription agreement, which is present when a user seeks access
to subscriber-only materials.
CollegeSource’s “Copyright and Disclaimer” Notices
Summary judgment is granted in favor of AcademyOne on
the breach of contract claim stemming from the “Copyright and
Disclaimer” notices contained on CollegeSource’s PDF catalogs and
Under Pennsylvania law, contract formation requires
that the parties “1) reach a mutual understanding, 2) exchange
consideration, and 3) delineate the terms of their bargain with
Weaverton Transp. Leasing, Inc. v. Moran,
834 A.2d 1169, 1172 (Pa. Super. 2003).
To have mutual
understanding, both parties must be aware of the contractual
nature of the document.
Zukoski v. Balt. & Ohio R.R. Co., 315
F.2d 622, 625 (3d Cir. 1962).
The “Copyright and Disclaimer” notice is located on the
second page of the PDF catalogs and on the CollegeSource website
It states that CollegeSource retains a copyright on all
digital catalogs and that, as a result of the copyright, users
are prohibited from using the document in certain manners.
Exs. 26, 36.
It does not contain any of the essential elements
of contract formation.
It does not state what exactly is being
offered; that users should agree to its terms in a particular
manner; or that users will obtain any sort of consideration in
exchange for their assent.
See, e.g., Stelmack v. Glen Alden
Coal Co., 14 A.2d 127, 128-29 (Pa. 1940).
Moreover, it is not obvious that the “Copyright and
Disclaimer” notices are documents based in contract as opposed to
First, the title of the documents, “Copyright and
Disclaimer Information,” suggests that they serve to inform the
user of rights under the Copyright Act.
D. Exs. 26, 36.
language in the actual documents reinforces this inference.
fact that the notices make reference to copyright ownership to
declare limitations on user rights would suggest that the
restrictions are grounded in copyright law, not contract law.
reasonable party reading the documents would not be aware of the
contractual nature of the documents.
Because no contract was ever formed by the notice,
AcademyOne could not have breached any such contract.
judgment is granted in favor of AcademyOne on the breach of
contract claim stemming from these notices.
CollegeSource’s Subscription Agreement
Summary judgment is granted in favor of AcademyOne with
respect to the breach of contract claim regarding the
CollegeSource has not provided any
evidence demonstrating that AcademyOne breached the subscription
agreement by improperly obtaining CollegeSource data through its
The subscription agreement is encountered by users
seeking to browse CollegeSource’s subscriber-only content.
Before users can browse such content, they confront a link to the
subscription agreement accompanied by a box that states “by
signing in above, I agree to be bound by the terms of the . . .
D. Ex. 33.
A user cannot access the
subscriber-only content without signing in, either through a paid
or free trial subscription.
From this box, users may opt to click on the link to
the subscription agreement, the relevant terms of which state the
your use of CollegeSource on-line TES, and unless other terms and
conditions expressly govern, any other electronic service from
CollegeSource, Inc. that may be available from time to time.”
Ex. 41 (emphasis added).
Among other restrictions, the agreement
includes a provision prohibiting non-personal use of the
The subscription agreement is a “browsewrap agreement,”
which some courts have held to be an enforceable contract.
e.g., Register.com, Inc. v. Verio, Inc., 356 F.3d 393, 406 (2d
It explicitly states that it is an agreement between
CollegeSource and the user.
In addition, it provides a
designated manner in which the user can manifest assent.
is also evidence that in 2005, several AcademyOne employees
registered for “demo” subscriptions with CollegeSource and were
given the option to view the subscription’s terms.
D. Exs. 109-
However, CollegeSource has not presented any evidence
demonstrating that AcademyOne obtained CollegeSource data in
There is no
evidence that AcademyOne’s actions as a subscriber (that is,
while logged in) violated the subscription’s terms.
Def. Mot. at
CollegeSource relies instead on the argument that the
scope of the subscription agreement extends beyond the actions of
AcademyOne while logged in as a subscriber and includes
AcademyOne’s subsequent access of CollegeSource documents through
In short, CollegeSource argues that the term
“electronic service” should cover CataLink, and AcademyOne argues
that it should not.
According to CollegeSource, the plain language of the
subscription agreement establishes that the contract’s terms
extend beyond the subscription itself.
6/13/12 Hr’g Tr. 40:20-
The subscription agreement gives notice to subscribers that
restrictions apply to all of CollegeSource’s “other electronic
Pl.’s Resp. 35.
CataLink is an electronic service
because it is comprised of “CollegeSource’s information from
6/13/12 Hr’g Tr. 42:19-21.
In contract interpretation, determining the intent of
the parties is paramount.
Compass Tech., Inc. v. Tseng Lab.,
Inc., 71 F.3d 1125, 1131 (3d Cir. 1995).
To determine the
intention of the parties, the court shall “adopt an
interpretation . . . which under all circumstances ascribes the
most reasonable, probable, and natural conduct of the parties.”
Glenn Distrib. Corp. v. Carlisle Plastics, Inc., 297 F.3d 294,
301 n.4 (3d Cir. 2002) (internal citations omitted).
The Court is not persuaded that the subscription
agreement intends to cover CataLink as an electronic service.
The term “Service” is used multiple times in the agreement, and
some of these usages are not applicable to CataLink.
example, Paragraph 3.a. restricts subscribers from using the same
username at the same time to log in to “Services”; CataLink,
however, has no subscriber username restrictions.
D. Ex. 41.
addition, Paragraph 3.e. states that CollegeSource can “terminate
or restrict [a user’s] access to a Service.”
In the first
instance, it is unclear whether CollegeSource is even able to
cause a user’s CataLink privileges to be terminated. Furthermore,
CataLink is designed to be publicly accessible.
termination is “facially inconsistent with the public access that
CollegeSource provides to catalogs through CataLink.”
Br. to Mot. Summ. J. 9 (“Def. R. Br.”).
From the position of the subscriber, it is difficult to
imagine that AcademyOne intended to bind itself to restrictions
to use in the CataLink context.
In contrast to the other
services provided by CollegeSource, which serve a subscriber
directly, a user accesses a CataLink-based document through a
third party’s website, which then redirects the user to a
Lewis Report 10-12 (D. Ex. 22).
possible that a typical user may never even know he visited a
Given the attenuation of CataLink usage to a
subscription agreement, it would not be “natural” to construe the
contract to apply to such usage.
If CollegeSource had intended its subscriber agreement
to include CataLink, it did not make its intention clear.
Reading the contract as a whole, and reading the terms as
consistently as possible, “Services” should not include the
The Court grants AcademyOne’s Motion for
Summary Judgment as to the breach of contract claim regarding the
The Plaintiff’s Unjust Enrichment Claim
Unlike CollegeSource’s breach of contract claim, its
unjust enrichment claim is equivalent to the rights created by
the Copyright Act because it does not state an extra element
beyond those at issue in federal copyright law.
Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307
F.3d 197, 217 (3d Cir. 2002).
The Court holds that the unjust
enrichment claim is preempted by the Copyright Act.
The Third Circuit has not yet ruled on whether an
additional element exists in unjust enrichment claims.
circuits to consider the issue have held that there is no
“additional element” in unjust enrichment claims stemming from
acts that would in and of themselves have violated the Copyright
E.g., R.W. Beck, Inc. v. E3 Consulting, LLC, 577 F.3d 1133,
1149 (10th Cir. 2009); Tastefully Simple, Inc. v. Two Sisters
Gourmet, L.L.C., 134 Fed. Appx. 1, 2005 WL 820606, *6, n. 3 (6th
Cir. 2005); Summit Mach. Tool Mfg. Corp. v. Victor CNC Systems,
Inc., 7 F.3d 1434, 1442 (9th Cir. 1993); see also Berry v.
Deutsche Bank Trust Co. Americas, No. 07-cv-7634, 2008 WL 4694968
(S.D.N.Y. Oct.21, 2008), aff’d 378 Fed. Appx. 110, 2010 WL
2079914 (2d Cir. 2010).
Here, CollegeSource asserts that AcademyOne was
unjustly enriched because it copied and displayed on its website
course descriptions from CollegeSource catalogs, and in doing so
derived a financial benefit.
Pl.’s Resp. 36; Am. Compl. ¶ 64-66.
The exclusive right to copy and display copyrighted works is
conferred by Section 106 of the Copyright Act.
See 17 U.S.C. §
106 (granting the copyright owner exclusive rights to “reproduce
the copyrighted work in copies” and “display the copyrighted work
Thus, to the extent that the course descriptions are
subject to copyright, then CollegeSource’s claim of unjust
enrichment stems from acts that also violate the Copyright Act.
E.g., Curtin v. Star Editorial, Inc., 2 F. Supp. 2d 670, 675
(E.D. Pa. 1998) (preempting the plaintiff's unjust enrichment
claim because “plaintiff asserts an exclusive right to and
reimbursement for the use of his compilation of photographs”).
The Court is not persuaded by the plaintiff’s argument
that the facts in this case differ substantially from those
required to state a claim for copyright infringement.
element of misrepresentation, or taking in an underhanded way,
does not avoid preemption.
See Profoot, Inc. v. MSD Consumer
Care, Inc., No. 11-7079, 2012 WL 1231984, at *6 (D.N.J. Apr. 12,
Neither do allegations that the benefit conferred was in
See 1-1 Nimmer
the form of money saved instead of actual profit.
on Copyright § 1.01(B)(1)(h) (stating that a copyright infringer
“always ‘accepts’ the benefit of the copyrighted work”).
these reasons, the Court finds that the unjust enrichment claim
The Plaintiff’s Computer Fraud and Abuse Act Claim
CollegeSource asserts that AcademyOne’s actions have
breached the U.S. Computer Fraud and Abuse Act (“CFAA”), 18
U.S.C. § 1030.
Because CollegeSource has not produced evidence
of acts of unauthorized access, or access exceeding
authorization, to CollegeSource computers, the Court grants
summary judgment in favor of AcademyOne on this claim.
The CFAA is a federal criminal statute that prohibits
seven activities related to unwelcome access or breach of
Although it is primarily a criminal
statute, the CFAA contains a civil enforcement provision:
Any person who suffers damage or loss by reason of a
violation of this section may maintain a civil action
against the violator to obtain compensatory damages and
injunctive relief or other equitable relief. A civil action
for a violation of this section may be brought only if the
conduct involves 1 of the factors set forth in clause (i),
(ii), (iii), (iv), or (v) of subsection (a)(5)(B).
18 U.S.C. § 1030(g).
CollegeSource makes four claims under the
CFAA: § 1030(a)(2)(C), § 1030(a)(4), § 1030 (a)(5)(B), and § 1030
Each claim revolves around the same set of facts as
applied to different, but related, elements.
Two of the claims,
§ 1030(a)(5)(B) and § 1030 (a)(5)(C), require proof that the
defendant accessed a protected computer without authorization;
the other two, § 1030(a)(2)(C) and § 1030(a)(4), require proof
that the defendant accessed a protected computer without
authorization or exceed[ing] authorized authority.
The term “without authorization” is not defined in the
CFAA and the Third Circuit has not issued an opinion on this
The standard in other circuits is whether the access is
“in any way related to [its] intended function.”
States v. Phillips, 477 F.3d 215, 220 (5th Cir. 2007); United
States v. Morris, 928 F.2d 504, 510 (2d Cir. 1991).
“exceeds authorized access” is defined by the CFAA as “access
[of] a computer with authorization and to use such access to
obtain or alter information in the computer that the accesser is
not entitled to obtain or alter.”
18 U.S.C. § 1030(e)(6).
another way, “[A] person who ‘intentionally accesses a computer
without authorization’ . . . accesses a computer without any
permission at all, while a person who ‘exceeds authorized access’
. . . has permission to access the computer, but accesses
information on the computer that the person is not entitled to
LVRC Holdings LLC v. Brekka, 581 F.3d 1127, 1133 (9th
CollegeSource alleges that AcademyOne accessed
CollegeSource’s protected computer to obtain college catalog PDF
files off its server.
CollegeSource does not specify which acts
of access it refers to, but states that at the very least,
“Defendant admits that it accessed CollegeSource’s ‘protected
computer’ to obtain CollegeSource’s college catalog pdf files off
of its servers through its Catalink service.”
Pl.’s Resp. 45.
The record does not reflect any evidence of a breach of security
or “hacking” by AcademyOne.
11, 40:13-18 (D. Ex. 23).
Bandemer Report 4; Ybarra Dep. 19:8Nor is there evidence that
AcademyOne’s free trial subscriptions were used to download
CollegeSource documents for commercial purposes.
The Court thus
will analyze the CFAA claims with respect to websites linked
through the CataLink service only.
Accordingly, the Court holds that because the documents
in issue were available to the general public, AcademyOne did not
access them without authorization.
Moreover, because AcademyOne
CataLink access, it did not exceed authorized access.
§ 1030(a)(5)(B) and § 1030 (a)(5)(C): “Without
First, the Court finds that AcademyOne was authorized
to access the CataLink websites it and Noah visited in order to
obtain PDF course catalogs.
Because CataLink is available on the
Internet and does not require a password or individualized
access, any member of the public had authority to access the
Lewis Report 10 (D. Ex. 22).
Moreover, the point
of the CataLink system is to help colleges provide public access
to their course catalogs.
The nature of CataLink thus grants all
parties authority to access catalogs.
See, e.g., Cvent, Inc. v.
Eventbrite, Inc., 739 F. Supp. 2d 927, 932 (E.D. Va. 2010).
CollegeSource has alleged that AcademyOne accessed
CollegeSource’s websites in an unauthorized manner.
CollegeSource asserts that it would not have authorized
AcademyOne’s access of the CataLink service “for the purpose of
competing with CollegeSource or other commercial purposes,” and,
therefore, AcademyOne’s actions were unauthorized.
Am. Compl. ¶
CollegeSource’s argument fails because it refers to
unauthorized use, not unauthorized access.
The CFAA protects
against unauthorized access rather than unauthorized use.
Integrated Waste Solutions v. Goverdhanam, No. 10-2155, 2010 WL
4910176, at *8 (E.D. Pa. Nov. 30, 2010); Grant Mfg. & Alloying,
Inc. v. McIlvain, No. 10-1029, 2011 WL 4467767, at *6 (E.D. Pa.
Sep. 23, 2011).
AcademyOne, as a member of the public, would
have had authorization if it had used the data for non-commercial
related purposes; by CollegeSource’s account, it is only because
AcademyOne’s use was inappropriate that it became unauthorized.
The argument is insufficient to support a CFAA claim.
To violate § 1030(a)(5)(B), one must intentionally
access a protected computer without authorization, and as a
result recklessly cause damage or loss.
18 U.S.C. §
To violate § 1030(a)(5)(C), one must
intentionally access a protected computer without authorization,
and as a result cause damage or loss.
18 U.S.C. § 1030(a)(5)(C).
Because AcademyOne did not access CollegeSource websites without
authorization, summary judgment is granted in AcademyOne’s favor
on these two claims.
§ 1030(a)(2)(C) and § 1030(a)(4): “Exceeding
CollegeSource has also asserted claims under 18 U.S.C.
§ 1030(a)(2)(C) and § 1030(a)(4).
Under § 1030(a)(2)(C), a
person who “intentionally accesses a computer without
authorization or exceeds authorized access, and thereby obtains
information from any protected computer” is in violation of the
18 U.S.C. § 1030(a)(2)(C).
Under § 1030(a)(4), a person
who “knowingly and with intent to defraud, accesses a protected
computer without authorization, or exceeds authorized access, and
by means of such conduct furthers the intended fraud and obtains
anything of value [greater than $5000]” is also in violation of
18 U.S.C. § 1030(a)(4).
Because AcademyOne did not
exceed authorization when it accessed CollegeSource course
catalog PDFs via CataLink, both claims are dismissed.
CollegeSource argues that because AcademyOne violated
courts outside of this circuit have accepted the argument that a
E.g., United States v. Drew, 259 F.R.D. 449, 461-62
(C.D. Cal. 2009).
This argument does not help CollegeSource
As discussed earlier in Part A.3, the copyright notice,
AcademyOne’s actions with respect to CataLink.
AcademyOne did not access CollegeSource servers in a manner that
exceeds authorization, and summary judgment is granted in favor
of the defendant under 18 U.S.C. § 1030(a)(2)(C) and 1030(a)(4).
3. Loss Analysis Under the CFAA
Because CollegeSource’s CFAA claim fails on the basis
of authorization, the Court need not analyze the statute’s
Because the parties briefed the issue of
loss under the CFAA, however, the Court notes that there is
sufficient loss to establish standing in this case.
Under the CFAA, a plaintiff must establish “loss to 1
or more persons during any 1-year period . . . aggregating at
least $5,000 in value” to establish standing.
18 U.S.C. §
The statute defines loss as “any reasonable
cost to any victim.”
18 U.S.C. § 1030(e)(11).
The Third Circuit has not interpreted the term “loss”
under the CFAA.
Other appellate courts have characterized the
definition as “broadly worded” and found that it “plainly
contemplates . . . costs incurred as part of the response to a
CFAA violation, including the investigation of an offense.”
v. iParadigms, LLC, 562 F.3d 630, 646 (4th Cir. 2009).
Under this definition, CollegeSource’s internal
investigation of AcademyOne's websites, its hiring of a computer
expert, and its subsequent security measures constitute loss
under the CFAA because they are reasonable costs related to a
breach of security.
AcademyOne argues that because these losses
are not related to damage or interruption of a computer, they do
not fall within the scope of CFAA’s damages.
Def. Mot. 65.
interpretation would eliminate many reasonable costs that would
otherwise be recoverable and would conflict with the broad
language of the statute.
The Court finds that loss has been
established in the record here.
E.g., iParadigms, 562 F.3d at
645 (holding that remedial measures, including an investigation
following a glitch in security systems, constituted loss under
the CFAA); SuccessFactors, Inc. v. Softscape, Inc., 544 F. Supp.
2d 975, 980–81 (N.D. Cal. 2008).
The Plaintiff’s Trademark Infringement and Unfair
Competition Claims Under sU.S. Lanham Act
CollegeSource asserts that AcademyOne’s AdWord
purchases, which included certain CollegeSource trademarks, is
trademark infringement and unfair competition in violation of the
Because the plaintiff has not proven that the
defendant’s use is likely to cause confusion, the Court grants
summary judgment in favor of AcademyOne.
In order to prove trademark infringement and unfair
competition under the Lanham Act, CollegeSource must prove: (1)
it owns the “CollegeSource” and “Career Guidance Foundation”
marks; (2) the marks are valid and legally protectable; and (3)
AcademyOne’s use of the mark is likely to create confusion.
Checkpoint Systems, Inc. v. Check Point Software Tech., Inc., 269
F.3d 270, 279 (3d Cir. 2001).
The parties do not dispute the
first two elements; rather, AcademyOne claims that CollegeSource
has not proven that AcademyOne’s use is likely to create
To determine whether there is a likelihood of consumer
confusion, this Circuit applies the factors listed in Interpace
Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983).
economic reality and common sense require that some of the Lapp
factors be analyzed differently” depending on the type of claim
Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d
463, 472 (3d Cir. 2005).
The Ninth Circuit has recently addressed the issue of
purchasing a competitor’s trademarks as AdWords to generate
search engine hits.
In Network Automation, it held that certain
factors (namely the strength of the mark, evidence of actual
confusion, types of goods and degree of care likely to be
exercised by the typical purchaser, and the labeling and
appearance of the advertisements) were most relevant in AdWords
Network Automation, Inc. v. Advanced Systems
Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011).
Checkpoint, 269 F.3d at 280 (stating that the weight of the
factors depends on the circumstances of the specific case).
Court agrees, and in analyzing the Lapp factors, it will place
emphasis on the four factors noted in Network Automation.
The Strength of the Owner’s Mark
CollegeSource’s marks in question are both suggestive
and commercially strong.
Mark strength is measured by “(1) the
distinctiveness or conceptual strength of the mark; and (2) the
commercial strength or marketplace recognition of the mark.”
H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d
198, 221 (3d Cir. 2000).
The first part of the test examines the
features of the marks, while the second looks to factual evidence
of “marketplace recognition” or commercial strength.
Marks are often divided into four classifications in
order to determine conceptual strength: generic, descriptive,
suggestive, and arbitrary or fanciful.
which are considered conceptually stronger, require consumer
imagination in order to determine what the product is;
descriptive marks, on the other hand, convey an immediate idea
about the product.
Id. at 221-22.
The “COLLEGESOURCE” mark is suggestive.
It is not a
literal description of CollegeSource’s services, the facilitation
of transfers from one school to the other.
Rather, it suggests
the general field which CollegeSource serves, and a mental leap
is required to move from the “COLLEGESOURCE” mark to
CollegeSource’s services. “CAREER GUIDANCE FOUNDATION” also does
not describe CollegeSource’s services.
Even though college
transfer could fall under the general heading of “career
guidance,” it is one possible type of service of many.
In addition, these two marks are commercially strong.
CollegeSource has been using “COLLEGESOURCE” for 18 years and
“CAREER GUIDANCE FOUNDATION” for over 30 years.
17-18, Apr. 6, 2012 (ECF No. 185).
Cooper Decl. ¶¶
CollegeSource has also spent
hundreds of thousands of dollars advertising its marks, including
print ads in trade show programs and flyers to schools.
Decl. I ¶¶ 15-16 (ECF No. 186).
The strength of the owner’s mark is relevant in the
AdWords infringement context because it is probative of possible
“[A] consumer searching for a generic term is more
likely to be searching for a product category,” instead of
knowing exactly what he is looking for from the outset.
Automation, 638 F.3d at 1149.
Because CollegeSource’s marks are
both suggestive and commercially strong, this factor favors
Evidence of Actual Confusion
There is little evidence showing actual confusion
stemming from AcademyOne’s purchase of CollegeSource’s marks as
Although actual confusion is not necessary to find a
likelihood of confusion, a “showing of actual confusion among
significant numbers of consumers provides strong support for the
likelihood of confusion.”
Playboy Enter., Inc. v. Netscape
Communic’ns Corp., 354 F.3d 1020, 1026 (9th Cir. 2004)) (emphasis
See also Versa Prods. Co., Inc. v. Bifold Co. (Mfg.), 50
F.3d 189, 205 (3d Cir. 1995) (“If a defendant’s product has been
sold for an appreciable period of time without evidence of actual
confusion, one can infer that continued marketing will not lead
to consumer confusion in the future. The longer the challenged
product has been in use, the stronger this inference will be.”).
The record reflects that there have only been 65
instances in which Internet users searched for CollegeSource,
were presented with AcademyOne’s advertisements, and clicked to
Moldoff Decl. III ¶¶ 18-19 (D. Ex. 3).
Moreover, all of these clicks occurred in June 2009, in the span
of one month.
Even assuming that all clicks resulted from
consumer confusion and not legitimate advertising diversion or in
anticipation of litigation, CollegeSource’s evidence of actual
confusion is sparse.
See Checkpoint, 269 F.3d at 298-99
(considering 20 instances of actual confusion over a period of
five years to be de minimis evidence of actual confusion).
factor weighs in favor of AcademyOne.
Labeling and Appearance of the Advertisements
In the AdWords context, the likelihood of confusion
“will ultimately turn” on what the consumer saw on the screen,
including labeling and overall appearance.
638 F.3d at 1153-54.
Even if the ads do not clearly identify a
source, partitioning the “search results pages so that the
advertisements appear in separately labeled sections for
‘sponsored’ links” decreases the likelihood of confusion.”
Although AcademyOne does not identify itself in its
advertisements, its advertisements are presented in separate
sections of the search results.
In each of the Internet search
provider’s search results, the partitioned area is labeled
Some are even differentiated by a shaded text
In addition, AcademyOne did not use CollegeSource’s marks
in the actual advertisements themselves; rather, the marks were
used as triggers which prompted the advertisements to appear.
Holaday Decl. II, Ex. I (ECF No. 186-9). “The labeling and
appearance of the advertisements as they appear on the results
page includes more than the text of the advertisement, and must
be considered as a whole.”
Network Automation, 638 F.3d at 1154.
Given the entire context of the advertisement’s appearance,
especially the clearly differentiated text boxes and the fact
that CollegeSource’s name does not appear within the language of
the advertisement, the Court finds that this factor weighs in
favor of AcademyOne.
Factors Indicative of Care and Attention
Expected of Consumers When Making a Purchase
This analysis predicts the degree of care an ordinary
consumer would use in a particular context.
When, for example,
the relevant products are expensive, or the consumer class
consists of sophisticated or professional purchasers, confusion
is less likely.
Checkpoint, 269 F.3d at 284.
Here, the question
is whether an ordinary consumer seeking college transfer
information via the Internet is expected to exercise diligence in
The Court finds that this factor cuts in
First, the degree of care exercised by Internet users
is “becoming more heightened as the novelty of the Internet
evaporates and online commerce becomes commonplace.”
Automation, 638 F.3d at 1152.
Modern Internet users “are
accustomed to such exploration by trial and error.”
Sales v. Tabari, 610 F.3d 1171, 1179 (9th Cir. 2010).
Internet user’s increasing level of experience with search sites
decreases the likelihood that they would be confused by the
advertisements at issue in this case.
In particular, consumers seeking to obtain transfer
information are likely to practice diligence in their research.
Typical consumers are interested in some facet of higher
education, be it transferring colleges or returning to school for
Def. R. Br. 26-27.
Given the importance of
their inquiries, they have an incentive to be discerning about
the search results they choose to trust.
Thus, “the nature of
the particular goods and the relevant consumers” suggest that
consumers would exercise prudence in this matter.
Automation, 638 F.3d at 1153.
CollegeSource claims that because both parties provide
services for free, the level of care exercised by consumers is
However, it is not clear that the consumers utilizing
search processes are searching for free services exclusively.
After all, CollegeSource provides for-charge subscriber services,
Pl.’s Resp. 10.
The level of consumer care and skill is highly relevant
to the likelihood of consumer confusion.
F.3d at 1152.
Network Automation, 638
Modern Internet users, particularly ones who are
interested in credit distribution in higher education
institutions, are not likely to be confused by Internet
Thus, the Court finds that this factor weighs in
The Degree of Similarity Between the Owner’s Mark
and the Alleged Infringing Mark
In the context of AdWords advertising, this factor
should not favor either party.
The factor is especially relevant
when a consumer confronts two different trademarks and, due to
their similarity, has trouble distinguishing between the two.
the AdWords context here, the consumer enters one trademark as a
search term and sees a sponsored link that displays neither.
Holaday Decl. II, Ex. I (ECF No. 186-9).
Automation cautions against placing an “artificial distinction”
in such factors. 638 F.3d at 1151. This Court agrees and will
place little weight on this factor.
The Intent of the Defendant in Using the Mark
In evaluating this factor, courts “look at whether the
defendant chose the mark to intentionally confuse consumers, and
thereby capitalize on the senior user’s goodwill, and whether the
defendant gave adequate care to investigating its proposed mark.”
Sabinsa Corp. v. Creative Compounds, LLC, 609 F.3d 175, 187 (3d
In the AdWords context, the defendant’s intent is
relevant as evidence that the trademark is used to mislead
consumers instead of truthfully informing them of their choices,
but should not be weighed in isolation.
Network Automation, 638
F.3d at 1153.
There is no evidence that AcademyOne adopted
CollegeSource’s marks in order to intentionally confuse.
only evidence CollegeSource produces to support its assertion is
that AcademyOne knew of CollegeSource’s marks at the time it
purchased its AdWords.
AcademyOne’s knowledge of the marks is
insufficient to infer an intent to capitalize on CollegeSource’s
AcademyOne may have used CollegeSource’s mark in order
to “truthfully inform [consumers] of their choice of products.”
Network Automation, 638 F.3d at 1153; see also Lindy Pen Co.,
Inc. v. Bic Pen Corp., 725 F.2d 1240, 1248 (9th Cir. 1984)
(“Liability for infringement may not be imposed for using a
registered trademark in connection with truthful comparative
This factor weighs in favor of AcademyOne.
Similarity in Channels of Trade, Marketing, and
If the parties have similar marketing campaigns and
advertise through the same media channels, there is a greater
likelihood of confusion.
Checkpoint, 269 F.3d at 288-89.
However, “this factor becomes less important when the marketing
channel is less obscure.”
Network Automation, 638 F.3d at 1151.
It is undisputed that CollegeSource does not, nor has
it ever, engaged in Internet advertising via AdWords.
Dep. 144:20-25 (D. Ex. 13).
Instead, CollegeSource primarily
markets through print materials and attendance at trade shows and
Holaday Decl. II ¶ 15 (ECF No. 186).
Internet is not an “obscure” marketing channel, and advertising
via AdWords has become increasingly prolific.
Thus, this factor
Similarity in Targets of the Parties’ Sales
Similarity of the Goods’ Function
These factors both favor CollegeSource.
parties target educational institutions.
Both parties placed
bids to build a web-based transfer system for South Carolina
CollegeSource asserts that it uses the Internet to
advertise, but not through AdWords. Holaday Decl. ¶ 15; Cooper
Dep. 144:20-25 (D. Ex. 13).
D. Ex. 77.
AcademyOne has produced similar products
for several other states, including Pennsylvania and Delaware.
Tr. Prelim. Inj. Hr’g 119:9-21.
CollegeSource also serves many
colleges directly via its CataLink system.
83:11 (D. Ex. 6).
Novak Dep. 82:20-
Second, both parties offer similar products.
Both provide course databases in efforts to ease the college
transfer process for students and institutions.
The Court considers this factor in favor of
However, given the context in which the
advertisements appear, notably the differentiation in their
appearance and the sophistication of the typical consumer, the
Court gives this factor minimal overall weight.
Automation, 638 F.3d at 1150 (employing similar analysis for the
“proximity of the goods” factor).
In conclusion, CollegeSource has not demonstrated that
AcademyOne’s AdWords cause consumer confusion.
Of the four
factors highlighted by the Ninth Circuit in Network Automation,
three weigh in favor of AcademyOne and only one weighs in favor
The remaining Lapp factors do not strongly
weigh in favor of CollegeSource and are insufficient to outweigh
the analysis above.
Therefore, the Court grants AcademyOne’s
motion for summary judgment with regard to the trademark
infringement and unfair competition claims under the Lanham Act.
The Plaintiff’s Trademark Invalidity Claim Under U.S.
Under 28 U.S.C. § 2201(a), a court may only consider a
declaratory judgment action in a “case of actual controversy,” or
when the plaintiff has standing to bring the claim.
actual controversy is definite and concrete.
A case of
Wyatt, V.I., Inc.
v. Gov’t of the V.I., 385 F.3d 801, 806 (3d Cir. 2004).
based upon hypothetical or abstract infringements of rights do
not warrant judicial intervention.
The Court will grant the
defendant’s motion for summary judgment on the trademark
invalidity claim because the plaintiff lacks statutory standing
to seek declaratory judgment.
Here, CollegeSource’s claim for standing relies on the
supposition that AcademyOne's registration on the Supplemental
Register may eventually be moved to the Principal Register and
become enforceable against CollegeSource.
Pl.’s Resp. 111.
addition, CollegeSource claims that “[g]iven CollegeSource’s
current and anticipated future use of CollegeTransfer.com, its
status as Defendant’s primary competitor, and the fact that
Defendant has already sought to enforce its supposed ‘trademark
rights’ against CollegeSource, CollegeSource has a real interest
in resolving the issue of Defendant’s lack of rights to
CollegeSource’s first claim for standing is
unpersuasive because it is contingent upon hypothetical events
that may occur in a number of ways not able to be anticipated.
See Wyatt, 385 F.3d at 808.
CollegeSource’s second basis, that
AcademyOne previously attempted to enforce its mark, is an even
weaker argument, as the previous action has already been resolved
in CollegeSource’s favor.
See AcademyOne, Inc. v. CollegeSource,
Inc., No. 08-5707, 2009 WL 5184491 (E.D. Pa. Dec. 21, 2009).
Summary judgment will be granted in AcademyOne’s favor on the
Declaration of Trademark Invalidity claim.
The Plaintiff’s False Advertising Claim Under U.S.
To establish a false advertising claim under the Lanham
Act, a plaintiff must prove:
1) that the defendant has made
false or misleading statements as to his own product or that of
another; 2) that there is actual deception or at least a tendency
to deceive a substantial portion of the intended audience; 3)
that the deception is material and likely to influence purchasing
decisions; 4) that the advertised goods traveled in interstate
commerce; and 5) that there is a likelihood of injury to the
Pernod Ricard USA., LLC v. Bacardi U.S.A., Inc., 653
F.3d 241, 248 (3d Cir. 2011).
At issue in this case is the second requirement,
whether a commercial statement is either literally and
unambiguously false, or literally true or ambiguous but with the
tendency to deceive consumers.
Novartis Consumer Health, Inc. v.
Johnson & Johnson-Merck Consumer Pharms. Co., 290 F.3d 578, 586
(3d Cir. 2002).
If a claim is literally false, the finder of
fact need not consider whether the public was actually misled.
Id. at 586.
If a claim is not literally false, the plaintiff
must show either actual deception or that the claim had a
tendency to deceive.
AcademyOne’s Database Representations
AcademyOne makes several statements on its website
regarding its course database, including that it is “published
annually” with “current course offerings,” the “most
comprehensive database of current course offerings possible,” not
“outdated,” and “reliable, accurate, and up-to-date.”
Papaefthimiou Decl. Exs. 28-30, Apr. 6, 2012 (ECF Nos. 187-26 to
CollegeSource claims that these statements are false and
As evidence to support this assertion, CollegeSource
submits a single course description from AcademyOne’s website
which CollegeSource claims came from a 2006-07 catalog.
Although CollegeSource’s evidence does show that a
course description on AcademyOne's website replicates an older
catalog, it does not establish that the description is out of
date or not current.
CollegeSource has not produced any evidence
regarding whether Bergen Community College still offers PSY 108,
or whether the current course description differs from the one in
It is possible that even though
AcademyOne’s course description is from a 2006-07 course catalog,
the information is still current.
Moreover, CollegeSource has not shown that AcademyOne’s
representations have a tendency to deceive.
that because AcademyOne does not provide the date when the course
description was last modified, its advertisements are misleading.
Id. at 122-23.
The Court disagrees.
piece of evidence does not sufficiently establish that the
intended audience would be deceived by AcademyOne’s assertions.
The Court therefore grants summary judgment with respect to the
false advertising claim stemming from AcademyOne’s database
AcademyOne’s Letters to Colleges Under Freedom of
AcademyOne made several statements in its letters to
colleges under freedom of information acts, including that
CollegeSource filed copyright claims against AcademyOne, that
CollegeSource attempted to preclude AcademyOne and other software
providers from providing student transfer systems, and that
CollegeSource claimed ownership of college catalog copyrights.
CollegeSource claims that these representations are false and
Summary judgment will be granted in favor of
AcademyOne on these claims.
In its earlier preliminary injunction decision, the
Court held that CollegeSource’s false advertising claims are
unlikely to succeed because the statements are not literally
false and there is insufficient evidence that the letters have a
tendency to deceive the intended audience.
description of the lawsuit as copyright is not literally false.
Mr. Moldoff testified that his reference to copyright was meant
to refer to CollegeSource’s Copyright Notice and Disclaimer, not
to a legal cause of action.
Tr. Prelim. Inj. Hr’g. 132:19-
The Court finds that Mr. Moldoff’s understanding of the
situation, and his subsequent statement to that effect, were
reasonable and cannot be considered literally false.
Since the preliminary injunction hearing, the only new
evidence introduced by CollegeSource for this claim is the fact
that an attorney may have had a role in drafting the letter.
Pl.’s Resp. 125-26.
This evidence is presumably introduced to
rebut the Court’s previous statement that “although no violation
of copyright law is asserted in this lawsuit, such an
understanding and description is a reasonable characterization of
this matter for a non-lawyer to make.”
CollegeSource, Inc. v.
AcademyOne, Inc., No. 10-3542, 2011 WL 1540403, at *8 (E.D. Pa.
Apr. 22, 2011).
Although the Court’s reasoning referred to the
fact that a non-lawyer drafted the letter, the fact that a lawyer
may have been involved does not negate the Court’s overall
Second, CollegeSource contends that because only
AcademyOne is the subject of this lawsuit, AcademyOne's claim
that CollegeSource is attempting to preclude other software
developers from offering course transfer software is literally
However, Mr. Moldoff has testified that he believed that
Harry Cooper, the founder of CGF, threatened other software
developers with suit if they similarly copied CollegeSource’s
Tr. Prelim. Inj. Hr’g 133:17-136:4.
AcademyOne's claim regarding “other software developers” was not
unambiguously false given the fact that CollegeSource’s founder
may have threatened other developers with suit.
Finally, no reasonable jury could find Mr. Moldoff’s
statement that “CollegeSource claims control of the digital
catalogs they collect, even if they reside on your website,” was
As part of this suit, CollegeSource has
asserted contract claims stemming from the Copyright and
Disclaimer Information pages included in each of its digitized
CollegeSource thus claims that every catalog
containing that notice is subject to the conditions contained
This makes Mr. Moldoff’s statement at least ambiguous,
if not true.
Because no reasonable jury could find that Mr.
Moldoff’s statements in the freedom of information letters were
unambiguously and literally false, CollegeSource must show that
they had a tendency to deceive.
CollegeSource has submitted
evidence that as a result of Mr. Moldoff’s letters, some schools
contacted CollegeSource and expressed their concern, and at least
one of CollegeSource’s clients pulled their catalogs from
Tr. Prelim. Inj. Hr’g 52:7-9, 53:4-14.
This evidence is insufficient to demonstrate that AcademyOne’s
statements had a tendency to deceive “a substantial portion of
the intended audience.”
Warner-Lambert v. Breathasure, 204 F.3d
87, 91-92 (3d Cir. 2000) (citations omitted).
See also Novartis
Consumer Health, 290 F.3d 578, 594 (3d Cir. 2002) (holding that
survey evidence that 15% of the respondents were misled was
sufficient to establish actual deception or a tendency to
When the Court in April 2011 denied CollegeSource’s
motion for a preliminary injunction, it held that CollegeSource’s
false advertising claim stemming from the freedom of information
letters was unlikely to succeed on the merits because the
statements were not literally false and CollegeSource had not
produced evidence showing that they had a tendency to deceive.
CollegeSource, Inc. v. AcademyOne, Inc., No. 10-3542, 2011 WL
1540403, at *7-9 (E.D. Pa. Apr. 22, 2011).
Despite a year of
fact and expert discovery, CollegeSource still has not produced
sufficient evidence showing that the allegedly false statements
had a tendency to deceive.
As such, the Court’s logic and
reasoning from that preliminary injunction still apply.
Court grants AcademyOne's motion for summary judgment for the
false advertising claim stemming from the freedom of information
In sum, the plaintiff has not pointed to sufficient
evidence to permit a reasonable jury to find in its favor on
Counts 3 through 9 of the Amended Complaint.
plaintiff has raised no genuine issue of material fact, the
defendant is entitled to summary judgment on all remaining
The defendant’s motion is granted and judgment is
entered in AcademyOne’s favor.
An appropriate order shall issue separately.