St. Louis University v. Rice et al

Filing 17

OPINION MEMORANDUM AND ORDER. (See Full Order.) IT IS HEREBY ORDERED that Plaintiff's Motion for a Temporary Restraining Order [Doc. No. 4 ] is DENIED. Signed by District Judge Henry Edward Autrey on 9/22/2017. (CBL)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
ST. LOUIS UNIVERSITY,
)
)
Plaintiff,
)
)
v.
) CASE NO. 17CV2397 HEA
)
MICHAEL TODD RICE, M.D. and
)
MANDY RICE, D.O.,
)
)
Defendants.
)
OPINION, MEMORANDUM AND ORDER
This matter is before the Court on Plaintiff’s Motion for Temporary
Restraining Order [Doc. No. 4]. A hearing on the motion was held on September
14, 2017, at which counsel for the parties appeared. For the following reasons, the
motion will be denied.
BACKGROUND
Plaintiff filed this action alleging dilution of its trademarks and service
marks under 15 U.S.C. § 1125(c) and Mo.Rev.Stat. § 417.061, cyberpiracy under
15 U.S.C. § 1125(d), and misuse of a benevolent society’s name under Mo.Rev.
Stat. § 417.150.1.
Plaintiff’s Complaint alleges the following1:

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The recitation of facts is set forth for the purposes of this Opinion only and in no way relieves the parties of the
necessary proof thereof.

Plaintiff (“SLU”) is an institution of higher education of longstanding
duration in St. Louis, Missouri. It is highly regarded by persons and businesses
throughout St. Louis, has thousands of alumni, and it enjoys an exceptional
reputation both locally and nationally.
As an educational institution and a brand, SLU has become highly
recognizable, particularly in the United States by its name of incorporation (St.
Louis University, in use since 1832), its brand name (Saint Louis University, in use
since 1832) and its official abbreviated name (SLU, in use since 1950). Several of
its marks are registered in the United States Patent and Trademark Office
(“USPTO”), including SAINT LOUIS UNIVERSITY (No. 1,729,449, issued
November 3, 1992) and SLU (No. 1,731,196, issued November 10, 1992), for use
in connection with educational services (among other goods and services as well).
For many decades, SLU has been using the ST. LOUIS UNIVERSITY,
SAINT LOUIS UNIVERSITY and SLU names and marks (collectively, the “SLU
Marks” or the “Marks”) in the marketing and promotion of its educational services,
including on its website, including the homepage (www.slu.edu).
Among other things, SLU’s website devotes multiple pages to its Office of
University Compliance (https://www.slu.edu/general-counsel-home/compliance),
which is responsible for University policies and regulatory compliance.

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SLU offers undergraduate, graduate, and professional programs, including a
doctoral medicine (M.D.) program at St. Louis University School of Medicine (the
“School of Medicine”). In addition to training future physicians in its four-year
M.D. degree program, the School of Medicine also sponsors postgraduate and
residency programs for medical school graduates. All of the School of Medicine’s
residency programs are approved and accredited by the Accreditation Council for
Graduate Medical Education. SLU owns a registration for the mark SLUCARE,
issued by the USPTO on February 18, 1997, for use in connection with the
provision of medical care.
Defendant Mandy Rice, D.O., is a resident in the surgery program at the
School of Medicine. She is also the plaintiff in a civil lawsuit filed in St. Louis
City Circuit Court arising out of the decision of her program’s leadership that
Mandy would have to repeat the fourth year of her surgical residency rather than
being promoted to her fifth year of residency with the rest of her class, in which
she seeks damages in excess of $25,000 against SLU.
Shortly after Defendant Mandy Rice filed her lawsuit, SLU learned of the
existence of a website titled “St. Louis University School of Medicine Compliance
Project (SLUCP)” at slucomplianceproject.org (“Website”). Plaintiff alleges that
the Website uses the SLU Marks extensively, including in its domain name along
with non-identifying terminology, in an apparent attempt to confuse internet users
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who may be searching for SLU or its Office of University Compliance and to draw
their attention away from SLU’s educational services and provision of medical
care to the issues of Mandy Rice’s lawsuit and the Website authors’ own
“educational” services regarding a competing opinion on “compliance,” all for
Mandy Rice’s personal gain.
SLU also learned of a Facebook page named “St. Louis University
Compliance Project (SLUCP),” which can be found at www.facebook.com/
slucomplianceproject, and which also allegedly uses the SLU Marks extensively,
including in the page ID (“Facebook Page”) and also appears to be an attempt to
“educate” persons searching the Internet for SLU or its Office of University
Compliance as to the authors’ own views as opposed to the educational services
and/or provision of medical care offered by SLU.
Plaintiff believes the Website and Facebook Page are operated by Defendant
Michael Todd Rice, with content supplied by or assistance from his wife,
Defendant Mandy Rice.
On September 6, 2017, SLU contacted Defendants, through their counsel,
and requested that Defendants cease using the acronym SLUCP (and any other
acronym using SLU’s trademarks), cease use of the SLU Marks in any domain
name or name of any Facebook page, and additionally disclaim affiliation,
sponsorship or approval by SLU of any criticism or commentary they wished to
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post publicly about SLU or Dr. Mandy Rice’s lawsuit proceedings such that
Internet users would not be so confused and misled. Defendants refused to comply
with SLU’s requests.
Count I is brought as a claim for Cyberpiracy in violation of 15 U.S.C. §
1125(d)). This Count claims that Defendants intended to divert consumers and the
public from SLU’s website to “St. Louis University Medical School Compliance
Project (SLUCP)” in order to harm the goodwill represented by the SLU Marks
and tarnish or disparage the Marks by creating a likelihood of confusion as to the
source, sponsorship, affiliation, or endorsement of their website.
Further, Plaintiff claims Defendants have a bad faith intent to profit from the
SLU Marks insofar as their website and Facebook page are an attempt to influence
and affect the outcome of Mandy Rice’s lawsuit for her personal gain, including
tainting potential jurors who may decide Mandy Rice’s pending lawsuit against
SLU and for settlement leverage as opposed to true criticism and commentary
which might otherwise be protected.
Count II is brought as a Dilution Claim in Violation of Missouri Revised
Statute § 417.061. It alleges that SLU owns and enjoys common law rights in
Missouri to the SLU Marks that are superior to any rights Defendants may claim
with respect to their website or Facebook page.

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Count II alleges that Defendants’ unauthorized and deceptive use of the SLU
Marks blurs and erodes the public’s exclusive identification of the Marks with the
University and tarnishes the positive associations of the SLU Marks.
Plaintiff further contends that Defendants’ unauthorized and deceptive use of
the SLU Marks are likely to cause injury to SLU’s business reputation and dilute
the distinctiveness of the SLU Marks unless the Court enjoins Defendants’
unlawful activity.
Count III is a Dilution claim alleging a Violation of 15 U.S.C. § 1125(c)). It
alleges that the SLU Marks have become sufficiently well recognized by the
general public to be deemed famous marks within the meaning of 15 U.S.C. §
1125(c)(2)(A). Defendants’ alleged unauthorized and deceptive use of the SLU
Marks in commerce has caused damage to the Marks’ reputation, and will continue
to cause harm if the Court does not enjoin Defendants’ unlawful activity.
Count IV is a claim alleging Misuse of a Benevolent Society’s Name in
Violation of Missouri Revised Statute § 417.150). In support of the Claim,
Plaintiff alleges that SLU was formed as a Missouri benevolent corporation under
the laws of the State of Missouri on December 28, 1832. SLU has continuously
used the name St. Louis University since its formation in 1832.
Around July or August of 2017, Defendants launched a website,
slucomplianceproject.org, for “St. Louis University Medical School Compliance
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Project (SLUCP)” and Facebook page https://www.facebook.com/
slucomplianceproject for “St. Louis University Compliance Project (SLUCP).”
Plaintiff urges that Defendants’ use of the names “St. Louis University
Medical School Compliance Project (SLUCP)” and “St. Louis University
Compliance Project (SLUCP)” so resemble the name of St. Louis University as to
be a colorable imitation thereof in violation of Section 417.150.1 of the Missouri
Revised Statutes and all relief authorized thereunder shall be granted.
DISCUSSION
In determining whether to issue a TRO, the Court must consider the
following four factors: (1) the threat of irreparable harm to the movants; (2) the
balance between this harm and the injury that granting the injunction will inflict on
other parties litigant; (3) the probability that movants will succeed on the merits;
and (4) the public interest. Grasso Enters, LLC v. Express Scripts, Inc., 809 F.3d
1033, 1036 n.2 (8th Cir. 2016)(quoting Dataphase Sys., Inc. v. C L Sys., Inc., 640
F.2d 109, 113 (8th Cir. 1981) (en banc); see also Home Instead, Inc. v. Florance,
721 F.3d 494, 497 (8th Cir. 2013). The party requesting injunctive relief bears the
“complete burden” of proving that an injunction should be granted. Gelco Corp. v.
Coniston Partners, 811 F.2d 414, 418 (8th Cir. 1987).
Irreparable Harm to Plaintiff Absent a Temporary Restraining Order

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“[T]o demonstrate irreparable harm, a party must show that the harm is
certain and great and of such imminence that there is a clear and present need for
equitable relief.” Novus Franchising, Inc. v. Dawson, 725 F.3d 885, 895 (8th Cir.
2013).
Plaintiff argues in support of its claim of irreparable harm that a Google
search for SLU compliance project, Defendants’ website shows up first in the
results list. Speculative harm, however, is not sufficient to establish irreparable
harm. Plaintiff has presented no evidence that any actual internet users were
confused or believed that Defendants’ website was a website of Plaintiff. Indeed,
when on the first page of Defendants’ website, the site now contains a disclaimer
in the top portion that it is not affiliated with Plaintiff. The bottom of the page
contains the following disclaimer and notice:
*Disclaimer: We are in no way associated with or supported by any
educational, administrative, accreditation, licensing or oversight body
mentioned in these pages. In fact, we’re certain they all wish we’d just
go away.
*Legal: Institutional images and names are used non-commercially and
under concepts of fair use, public domain, sharing of newsworthy and
public-benefitting criticism, and with an unlikelihood of confusion as to
trademark usage. Legal correspondence will be gladly shared broadly
here and on social media.
Although Plaintiff has argued that Defendants are using the website to gain
an advantage in Mandy Rice’s lawsuit against Plaintiff, Defendants have submitted
Michael Rice’s affidavit that Mandy was not involved in the creation of the
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website and Michael Rice is using the website to present his opinions and beliefs
with respect to SLU’s compliance. Nowhere does Plaintiff controvert theses
affidavits, nor does it present any evidence of a bad faith motive to pressure SLU
vis a vis Mandy’s lawsuit against SLU.
Defendants clearly intended to avoid claims of misuse and confusion by
setting out that their website is not SLU’s website. Defendants have included a
notice that the site is in actuality, a site intended to criticize Plaintiff. Included in
this notice is a link to the official SLU compliance department. Likewise,
Defendants’ Facebook page contains similar disclaimers.
Although Defendants’ website has “St. Louis University” and “SLU” in its
name, the website itself contains no distinctive other St. Louis University logos,
such as the use of the colors blue and white the Billikin mascot. Plaintiff has not
presented any concrete evidence of irreparable harm.
Likelihood of Success on the Merits
Defendants do not dispute that SLU’s mark is distinctive or famous at the
time Defendant’s Domain Name was registered. The SLU mark, as a registered
mark, is likely entitled to a rebuttable presumption that it is distinctive. E.g.,
Faegre & Benson, LLP v. Purdy, 447 F. Supp. 2d 1008, 1012 (D. Minn. 2006)
(citing Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 869 (8th Cir. 1994)).
Defendants have not rebutted this presumption, and the Court sees no reason not to
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apply it here. Accordingly, because the SLU mark was registered long before the
Domain Names were registered, it was likely distinctive at the time the Domain
Names were registered.
The Court must, however, consider whether there was bad faith intent to
profit from the marks. ACPA provides a list of non-exclusive factors for courts to
consider in determining whether there is bad faith intent. 15 U.S.C. §
1125(d)(1)(B)(i). “The first four factors have been seen as reasons why a defendant
might in good faith have registered a domain name incorporating someone else's
mark, and the other five are indicia of bad faith intent.” Coca-Cola Co., 382 F.3d
at 785.
Defendants have taken several steps to establish that their use falls under the
fourth factor—“the person's bona fide noncommercial or fair use of the mark in a
site accessible under the domain name,” 15 U.S.C. § 1125(d)(1)(B)(i)(IV).
Defendants argue that the “SLU Compliance Project” site was a criticism or “gripe
site,” which may be considered a noncommercial, fair use of SLU's marks. See
LeMond v. Stinchfield, No. CV 17-2071 (JRT/TNL), 2017 WL 3491837, at *3–8
(D. Minn. Aug. 14, 2017); Cleary Bldg. Corp. v. David A. Dame, Inc., 674 F.
Supp. 2d 1257, 1265 (D. Colo. 2009).
At this stage of the proceedings, it appears that Defendants use is
encompassed within the “fair use” exception and as such, the Court cannot find, for
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the purposes of this temporary restraining order motion that Plaintiff is likely to
succeed on the merits of its claims.
Balance of the Harms
Defendants have argued, and their website contains a notice of same, that
they are expressing their views and opposition to the way SLU operates. Plaintiff
has not controverted this affidavit with any evidence that SLU has experienced any
harm from Defendant’s website. Ordering Defendants to cease expressing their
opinions in the website has serious First Amendment implications that outweigh
Plaintiff’s speculative harm
Public Interest
The Court finds that the public interest favors Defendants. No evidence has
been produced that Plaintiff has suffered any actual harm through confusion,
dilution or mistake regarding the subject website. There appears to be no risk of
public deception and broader public interests implicated by Defendants’ website,
as opposed to one which attempts to actually be valid trademarked site. See CocaCola Co., 382 F.3d at 789-90 (“The danger of consumer deception warrants some
regulation of trademark usage and the public interest in free expression is
adequately protected by leaving open ample alternative avenues of
communication.” (internal citation omitted)). In this instance, the alternative

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avenue is a separate website which notifies its readers that it is specifically not the
entity being criticized.
CONCLUSION
Based upon the foregoing analysis, the Court concludes a temporary
restraining order is not appropriate.
Accordingly,
IT IS HEREBY ORDERED that Plaintiff’s Motion for a Temporary
Restraining Order [Doc. No. 4] is DENIED.
Dated this 22nd day of September, 2017.

________________________________
HENRY EDWARD AUTREY
UNITED STATES DISTRICT JUDGE

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