Dynamic Measurement Group, Inc. v. University of Oregon et al

Filing 82

OPINION AND ORDER: Judge Coffin's Findings and Recommendation 71 are adopted in full. Motion to Dismiss 47 and Motion for Partial Summary Judgment 48 are granted in part and denied in part. Signed on 8/4/2015 by Judge Michael J. McShane. (cp) Modified to add "Opinion" to docket entry on 8/4/2015 (ljb).

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON

DYNAMIC MEASUREMENT
GROUP, INC., an Oregon
Corporation
CASE NO: 6: 14-CV-01295-TC
Plaintiff,
ORDER AND OPINION

V.
UNIVERSITY OF OREGON,
MIA TUAN,
EDWARD J. KAME’ENUI,
FRANCIS J. FIEN IV,
BRAD SHELTON,
HOP SKIP TECHNOLOGIES, INC.,
Defendants.
_____________________________
MCSHANE, Judge:
Magistrate Judge Thomas Coffin filed a Findings and Recommendation (ECF No. 71)
and the matter is now before this court. See 28 U.S.C. § 636(b)(1)(B); Fed.R.Civ.P. 72(b). Both
Defendant, the University of Oregon, and Counterclaim-Defendant, Dynamic Measurement
Group, Inc., filed objections to the Findings and Recommendation. ECF No.76, 77.
Accordingly, I have reviewed this case de novo. See 28 U.S.C. § 636(b)(1)(c); McDonnell
Douglas Corp. v. Commodore Bus. Mach., Inc., 656 F.2d 1309, 1313 (9th Cir. 1981). I find no
error and adopt the Findings and Recommendations in full.
Counterclaim-Defendant Dynamic Measurement Group, Inc. (DMG) first argues that
Judge Coffin should have granted its motion for summary judgment, ECF No. 48, against
1 – ORDER AND OPINION

Defendant University of Oregon (UO) as it related to UO’s trademark claims. DMG contends
the UO’s federal trademark claims should be dismissed because (1) the relevant statute of
limitations was two years and UO should not receive the protections of O.R.S. § 12.2501 because
it was not working for the benefit of the state of Oregon, or, (2) even if UO fell under the
auspices of O.R.S. § 12.250, UO delayed for 10 years and laches should bar the trademark claim
because the University’s delay was factually and presumptively unreasonable. I disagree. UO
brought its claims under the Lanham Act, 15 U.S.C. § 1501 et. seq., which does not contain a
statue of limitations. Therefore, courts have generally presumed that Congress intended for them
to “borrow” the statue of limitations from the most closely analogous state statute. See, e.g.,
Reed v. United Transp. Union, 488 U.S. 319, (1989). As UO claims DMG obtained its
trademarks through fraud, ECF No. 40, the applicable limitations period is found in O.R.S. §
12.110(1); it is two years. However, O.R.S § 12.250 states that the limitation in O.R.S. §
12.110(1) does not apply to actions brought in the name of the state.
The first part of DMG’s argument, that the two-year statute of limitations applies because
UO should not receive the protections of O.R.S. § 12.250, fails because, as Judge Coffin
correctly noted, “Prior to July 1, 2014, the University was... expressly an instrumentality of the
state.” See O.R.S. § 351.011; ECF. No. 71. Moreover, even after July 1, 2014, UO has a
governing board, and while it is not a body of local or municipal government, it may still be an
instrumentality of the state if it carries out the state purpose of educating its citizenry, has certain
delegated powers from the state, and is subject, at least in part, to legislative control. Clarke v.
Oregon Health Scis. Univ., 343 Or. 581, 594 – 96 (Or. 2007); O.R.S. § 352.033. As UO fits these

1

O.R.S. § 12.250 states in its entirety: “Unless otherwise made applicable thereto, the limitations prescribed in this
chapter shall not apply to actions brought in the name of the state, or any county, or other public corporation therein,
or for its benefit.”

2 – ORDER AND OPINION

parameters, Judge Coffin correctly found that UO is not subject to the statute of limitations in
O.R.S. § 12.110(1) because O.R.S. § 12.250 protects it as an instrumentality of the state.
The second part of DMG’s argument, that UO’s delay was presumptively and factually
unreasonable so that laches should bar the trademark claims, is similarly unpersuasive. Laches is
an equitable defense that is distinct from a statute of limitations, however, a laches determination
is made with reference to the applicable statute of limitations. Jarrow Formulas, Inc. v. Nutrition
Now, Inc., 304 F.3d 829, 835 (9th Cir. 2002). Therefore, if a plaintiff files an action before the
statute of limitations has expired, there is a strong presumption that laches is inapplicable. See,
e.g., Shouse v. Pierce County, 559 F.2d 1142, 1147 (9th Cir. 1977). Similarly, if the plaintiff
files an action after the limitations period has expired, then there is a presumption that laches is
applicable. See, e.g., Brown v. Kayler, 273 F.2d 588, 592 (9th Cir. 1959). In this case, as the twoyear statute of limitations is inapplicable to UO, there is no presumption of laches and UO’s
delay was thus not presumptively unreasonable.
Turning to DMG’s argument that UO’s delay was factually unreasonable and therefore its
trademark claims were barred by laches, I agree with Judge Coffin and conclude that there are
questions of fact regarding UO’s delay that preclude summary judgment. In order for laches to
be applicable, the court will first look to the length of the delay and then to its reasonableness.
Jarrow Formulas, 304 F.3d at 838. In order to be successful, the party asserting laches must
show that 1) the delay was unreasonable, and 2) the party asserting laches would be prejudiced if
the infringement were to continue. Id. A party is permitted to delay a suit in order to balance the
cost of litigation with the scope of the infringement. Danjaq LLC v. Sony Corp., 263 F.3d 942,
954 (9th Cir. 2001). However, if a party delays a suit in order to capitalize on the infringing
party’s industry, then the delay is not justifiable. Id. In this case, there is evidence that UO knew

3 – ORDER AND OPINION

that DMG was using what it considered to be its trademark. See, e.g., ECF No. 52 – 11.
However, despite all the exhibits and declarations there is scant record pertaining to UO’s
rationale surrounding its delay in filing a trademark cancellation. Therefore, I agree with Judge
Coffin and will not grant DMG’s motion for summary judgment, ECF No. 48, as it relates to
laches in order to more fully develop the record.
Defendant UO asserts that Judge Coffin erred in determining that DMG successfully
showed that it had expressly repudiated UO’s ownership interest in the work that comprised
DIBELS 2 6th. UO argues that there was no express repudiation of each of the component pieces
of DIBELS 6th, which was split into 60 different copyrighted sections. DMG argues that
DIBELS 6th is a marketed unit, and therefore, even though there was no express repudiation of
each of the component parts, the law does not require such specificity. ECF No. 79, 7 – 8.
Copyright claims that center on ownership begin to accrue when express repudiation is conveyed
to the claimant. Seven Arts Filmed Entm't, Ltd. v. Content Media Corp. PLC, 733 F.3d 1251,
1255 – 56 (9th Cir. 2013). DMG mentions events in 2001, 2005, 2006, and 20073 that
communicated express repudiation to the University. Additionally, DMG openly and notoriously
sold the DIBELS 6th, IDEL 4 7th, the 2008 version of DIBELS, DIBELS DEEP, and DIBELS
Survey. This record supports Judge Coffin’s determination that UO’s copyright claims are timebarred under the three-year statute of limitations found in 17 USCS § 507.

2

DIBELS is an acronym for Dynamic Indicators of Basic Early Literacy Skills. It is comprised of a series of quick
evaluations that are designed to measure different markers in the development of literacy for grades K – 6 and, in so
doing, allow teachers to target students who may experience later difficulties in literacy. ECF No. 1, ¶¶ 10 – 13. An
estimated 25% of students in the US are tested with the DIBELS measures. Id.
3
Specifically, DMG calls the court’s attention to a 2001 letter to the University of Oregon’s Office of Technology
Transfer, ECF. Nos. 62 – 2, 62 – 3, a standard intellectual property disclosure form from 2005, ECF No. 52 – 13,
an unsigned intellectual property agreement from 2005, ECF No. 52 – 14, the Schenkel memorandum, ECF No. 5211, conflict of interest disclosures from 2006 and 2007, ECF Nos. 52 – 18, 52 – 19, and Congressional testimony in
2007, ECF No. 52 – 24.
4
IDEL is an acronym for Indicadores Dynámicos del Éxito en la Lectura. While it is not a direct translation of
DIBELS into Spanish, it is the analogous program.

4 – ORDER AND OPINION

In light of the foregoing, Judge Coffin’s Findings and Recommendation (ECF No. 71) is
adopted in full.

IT IS SO ORDERED.
DATED this 4th day of August, 2015

/s/ Michael McShane
Michael McShane
United States District Judge

5 – ORDER AND OPINION