COLLEGESOURCE, INC. v. ACADEMYONE, INC.

Filing 226

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
COLLEGESOURCE, INC.

:
:
:
:
:

v.
ACADEMYONE, INC.

CIVIL ACTION

NO. 10-3542

MEMORANDUM
McLaughlin, J.

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
by CollegeSource.

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.

I.

Summary Judgment Record
CollegeSource’s claims stem from four distinct sets of

facts.1

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.

Third,

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.

A.

Factual Background
1.

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

1

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).
2

Guidance Foundation (“CGF”), which was founded in 1971.

Am.

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
catalogs.

The product is available to users who have a paid

subscription.

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
course catalogs.

It is also available by subscription.

It is

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

2

“D. Ex.” numbers refer to exhibits in the Consolidated
Appendix of Exhibits to AcademyOne’s Memorandum in Support of
Summary Judgment.
3

school’s home page.

When an interested user seeks to browse past

catalog titles, he clicks on the CataLink and is brought to
CollegeSource’s domain.

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
subscriber service.

Users are transported to CollegeSource’s

website with no notification that they were leaving the school’s
Internet domain.

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).

2.

AcademyOne

The defendant AcademyOne was founded around 2006 with
the objective to build administrative systems for schools and to
reduce costs associated with student transfers.

AcademyOne has

since developed two products: the Course Equivalency Management
Center (“CEMC”) and the National Course Atlas.

CEMC allows

users, mostly faculty, to evaluate academic courses and
curriculum at different institutions to make decisions on credit
equivalency.

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.

4

B.

The Parties’ Course Catalog Collections
1.

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.

The

colleges then provide the catalog, either in electronic or paper
form.

If the catalog is in electronic form, CollegeSource

processes it, converts it to PDF format, and adds it to its
database.

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

5

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.

2.

CollegeSource’s Copyright Notices and Subscription
Agreement
a.

“Copyright & Disclaimer Information” Notices

On the inside cover of each of its PDF college
catalogs, CollegeSource inserts a page entitled “Copyright &
Disclaimer Information.”

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
school.
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.

6

D. Exs. 34, 36.

b.

Subscription Agreement

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

3

Troy Holaday Dep.

This agreement stipulates, in relevant part:

“This Subscriber Agreement and Terms of Use govern your use of
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
Agreement.
* * * *
LIMITATIONS ON USE.
* * * *
b.
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 . . . .
c.

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
7

(“Holaday Dep. III”) 254:1-255:25, Sep. 27, 2011 (D. Ex. 14).
Such agreements can be accessed by a user in two
manners.
box.

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 . . .
Subscription Agreement.”
agreement.

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.

In the

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
subscription agreement.

However, the Copyright and Disclaimer

page is still included in the course catalog.

Lewis Report at 17

(screenshot of CataLink page) (D. Ex. 22).

e.

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).
8

2.

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.

However,

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.

The

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.

Tr. Prelim.

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).
9

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
CollegeSource Online.

These free trials allowed for a limited

number of course catalog downloads.

3.

D. Exs. 109-10.

CollegeSource Finds Copies of Its PDF Catalogs on
AcademyOne’s Websites

In early 2007, AcademyOne launched its websites, which
provided free access to its course description database.

This

included around 2,000 of the 18,000 PDF documents that Noah had
collected.

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.

CollegeSource was

able to determine the identity of the documents because they
included, on page two, CollegeSource’s Copyright and Disclaimer
Information page.

Cooper and other CollegeSource employees then
10

spent a full workday identifying around 680 CollegeSource course
catalogs located on AcademyOne's website.
31:21-32:19, 35:21-36:13.

Tr. Prelim. Inj. Hr’g

Noah later reported to AcademyOne that

out of the over 18,000 PDF documents it provided, 783 were
“CollegeSource PDFs.”

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
websites.4

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
CollegeSource.

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).
4

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.
11

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
AcademyOne.

This letter asserted that there were “approximately

700 instances” of “literal copying and display of the
CollegeSource Materials by AcademyOne.”

CollegeSource claimed

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.

Tr.

Prelim. Inj. Hr’g 36:22-37:1; Moldoff Decl. II ¶ 19, Ex. 1 (D.
Ex. 60).
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
CollegeSource’s allegations.

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.
12

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
CollegeSource PDFs.

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.

Tr. Prelim.

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.

First,

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
AcademyOne’s actions.

Finally, CollegeSource incurred costs by

implementing increased security measures on their catalogs, such
as “seeding,” “salting,” and “watermarking.”
well in excess of $5,000.

C.

These costs were

Cooper Decl. ¶ 16, (ECF No. 185).

AcademyOne’s AdWords
Beginning in 2007, AcademyOne purchased the terms
13

“college,” “college source,” “career guidance,” and “career
guidance foundation” from several Internet search engines such as
Google.

This form of Internet advertising, known as “AdWords,”

presents advertisements as “sponsored links” or “sponsored
results” in addition to the standard search results.

Thus, a

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
Information.”
not AcademyOne.

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.
14

They have used

Finally, CollegeSource

owns all title and interest to the mark “CollegeSource.”

Cooper

Decl. ¶¶ 17-18 (ECF No. 185); Holaday Decl. II, Ex. H (ECF No.
186-9).

D.

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.

It has

Am. Compl.

267, 279, 284; Papaefthimiou Decl. Ex. 23, 26 (ECF No. 187-21,
23).
In its application to the USPTO, AcademyOne represented
that it first used collegetransfer.net in commerce on December 1,
2005.

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).

In addition,

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
website, collegetransfer.com.

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
15

“collegetransfer.net” should be cancelled.

E.

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

1.

Letters to Public Colleges Under State Freedom of
Information Acts

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
“sunshine” laws.

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.”

The letter

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
5

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.
16

“attempt to preclude AcademyOne and other software providers from
providing automated student transfer systems . . . .”6

D. Exs.

95-96.
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.

6

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
departments.
* * * *
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
service.”
D. Ex. 96.
17

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
conduct.

Tr. Prelim. Inj. Hr’g 132:17-136:4.
As a result of Mr. Moldoff’s letters, some schools

contacted CollegeSource and expressed concern.

One of

CollegeSource’s clients pulled its catalogs from CollegeSource’s
databases.

Tr. Prelim. Inj. Hr’g 52:7-9, 53:4-14.

2.

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
misleading.

It points to an entry for Bergen Community College

which appears to be derived from a 2006-2007 catalog, not the
current catalog.

Pl.’s Resp. 121-22; Papaefthimiou Decl. Ex. 31

(ECF No. 187-29).

II.

Procedural History
On July 20, 2010, eleven months after a parallel
18

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.

The parties

7

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.).
19

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
preliminary injunction.

At a day-long evidentiary hearing and

separate oral argument, the Court heard testimony from five
witnesses and received 92 exhibits as evidence.

The parties

engaged in extensive briefing of the legal issues and submitted
proposed findings of fact and conclusions of law.

Ultimately,

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.

The Court

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
2011.

Expert discovery commenced in October 2011.

CollegeSource

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.

20

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
reopen discovery.

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
motion.

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
discovery.

III. Analysis
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.

Sheridan v.

NGK Metals Corp., 609 F.3d 239, 251 n.12 (3d Cir. 2010).

The

moving party bears the initial burden of demonstrating an absence
of genuine issues of material fact.
21

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.

A.

The Plaintiff’s Breach of Contract Claim
1.

Preemption Argument

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
copyright.

17 U.S.C. § 301(a).

In the Third Circuit, “if a
22

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)
(quotations omitted).

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

§ 1.01[B][1][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.

Because contract

is in personam and copyright is in rem, a judgment on the basis
of contract law will impact a third party’s rights differently.

23

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)).

In this

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
preempted.”

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.

D.

Ex. 26.

This is sufficiently distinct from copyright law to pass

muster.

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.
24

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.

2.

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
website.
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
sufficient clarity.”

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
itself.

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.

D.

It does not contain any of the essential elements
25

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
copyright law.

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.

The

language in the actual documents reinforces this inference.

The

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.

A

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.

Summary

judgment is granted in favor of AcademyOne on the breach of
contract claim stemming from these notices.

3.

CollegeSource’s Subscription Agreement

Summary judgment is granted in favor of AcademyOne with
respect to the breach of contract claim regarding the
subscription agreement.

CollegeSource has not provided any
26

evidence demonstrating that AcademyOne breached the subscription
agreement by improperly obtaining CollegeSource data through its
subscriptions.
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 . . .
Subscription Agreement.”

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
following:

“The subscriber agreement and terms of use govern

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).

D.

Among other restrictions, the agreement

includes a provision prohibiting non-personal use of the
documents.
The subscription agreement is a “browsewrap agreement,”
which some courts have held to be an enforceable contract.

See,

e.g., Register.com, Inc. v. Verio, Inc., 356 F.3d 393, 406 (2d
Cir. 2004).

It explicitly states that it is an agreement between

CollegeSource and the user.

In addition, it provides a
27

designated manner in which the user can manifest assent.

There

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-

10.
However, CollegeSource has not presented any evidence
demonstrating that AcademyOne obtained CollegeSource data in
breach of the subscription agremeent’s terms of use.

There is no

evidence that AcademyOne’s actions as a subscriber (that is,
while logged in) violated the subscription’s terms.

Def. Mot. at

52.
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
CataLink.

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.
22.

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
services.”

Pl.’s Resp. 35.

CataLink is an electronic service

28

because it is comprised of “CollegeSource’s information from
CollegeSource’s server.”

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.

For

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.

In

addition, Paragraph 3.e. states that CollegeSource can “terminate
or restrict [a user’s] access to a Service.”

Id.

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.

An at-will

termination is “facially inconsistent with the public access that
CollegeSource provides to catalogs through CataLink.”
Br. to Mot. Summ. J. 9 (“Def. R. Br.”).
29

Def. R.

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
CollegeSource browser.

Lewis Report 10-12 (D. Ex. 22).

It is

possible that a typical user may never even know he visited a
CataLink weblink.

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
CataLink service.

The Court grants AcademyOne’s Motion for

Summary Judgment as to the breach of contract claim regarding the
subscription agreement.

B.

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.

Dun and

Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307
30

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.

The

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
Act.

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
publicly”).

Thus, to the extent that the course descriptions are

subject to copyright, then CollegeSource’s claim of unjust
31

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.

The extra

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,
2012).

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”).

For

these reasons, the Court finds that the unjust enrichment claim
is preempted.

C.

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.
32

The CFAA is a federal criminal statute that prohibits
seven activities related to unwelcome access or breach of
protected computers.

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
(a)(5)(C).

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
issue.

The standard in other circuits is whether the access is

“in any way related to [its] intended function.”

E.g., United

States v. Phillips, 477 F.3d 215, 220 (5th Cir. 2007); United
States v. Morris, 928 F.2d 504, 510 (2d Cir. 1991).

The term

“exceeds authorized access” is defined by the CFAA as “access
[of] a computer with authorization and to use such access to
33

obtain or alter information in the computer that the accesser is
not entitled to obtain or alter.”

18 U.S.C. § 1030(e)(6).

Put

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
access.”

LVRC Holdings LLC v. Brekka, 581 F.3d 1127, 1133 (9th

Cir. 2009).
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
34

access them without authorization.

Moreover, because AcademyOne

was under no obligation to abide by any terms of use as to its
CataLink access, it did not exceed authorized access.

1.

§ 1030(a)(5)(B) and § 1030 (a)(5)(C): “Without
Authorization” Analysis

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
information.

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. ¶

177.
CollegeSource’s argument fails because it refers to
unauthorized use, not unauthorized access.
35

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.
1030(a)(5)(B).

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.

2.

§ 1030(a)(2)(C) and § 1030(a)(4): “Exceeding
Authorization” Analysis

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
36

information from any protected computer” is in violation of the
CFAA.

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
the CFAA.

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
its “terms of use,” its actions exceeded authorization.

Some

courts outside of this circuit have accepted the argument that a
website’s terms of use can define authorized access for that
website.

E.g., United States v. Drew, 259 F.R.D. 449, 461-62

(C.D. Cal. 2009).
here.

This argument does not help CollegeSource

As discussed earlier in Part A.3, the copyright notice,

website terms of use, and subscription agreement do not bind
AcademyOne’s actions with respect to CataLink.

Therefore,

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
37

remaining requirements.

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. §

1030(c)(4)(A)(i)(I).

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.”

A.V.

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.

This

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
38

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).

D.

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
Lanham Act.

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
confusion.
To determine whether there is a likelihood of consumer
confusion, this Circuit applies the factors listed in Interpace
39

Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983).

“However,

economic reality and common sense require that some of the Lapp
factors be analyzed differently” depending on the type of claim
at issue.

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
advertising cases.

Network Automation, Inc. v. Advanced Systems

Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011).

Cf.

Checkpoint, 269 F.3d at 280 (stating that the weight of the
factors depends on the circumstances of the specific case).

This

Court agrees, and in analyzing the Lapp factors, it will place
emphasis on the four factors noted in Network Automation.

1.

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

A &

40

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.

Id.

Marks are often divided into four classifications in
order to determine conceptual strength: generic, descriptive,
suggestive, and arbitrary or fanciful.

Id.

Suggestive marks,

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

41

print ads in trade show programs and flyers to schools.

Holaday

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
confusion.

“[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.

Network

Because CollegeSource’s marks are

both suggestive and commercially strong, this factor favors
CollegeSource.

2.

Evidence of Actual Confusion

There is little evidence showing actual confusion
stemming from AcademyOne’s purchase of CollegeSource’s marks as
AdWords.
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
added).

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

42

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
AcademyOne’s website.

Moldoff Decl. III ¶¶ 18-19 (D. Ex. 3).

Moreover, all of these clicks occurred in June 2009, in the span
of one month.

Id.

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).

This

factor weighs in favor of AcademyOne.

3.

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.

Network Automation,

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.”

Id.

Although AcademyOne does not identify itself in its
advertisements, its advertisements are presented in separate
43

sections of the search results.

In each of the Internet search

provider’s search results, the partitioned area is labeled
“sponsored links.”
box.

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.

4.

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
44

his research.

The Court finds that this factor cuts in

AcademyOne’s direction.
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.

Network

Modern Internet users “are

accustomed to such exploration by trial and error.”

Toyota Motor

Sales v. Tabari, 610 F.3d 1171, 1179 (9th Cir. 2010).

The modern

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
another degree.

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.

Network

Automation, 638 F.3d at 1153.
CollegeSource claims that because both parties provide
services for free, the level of care exercised by consumers is
low.

However, it is not clear that the consumers utilizing

search processes are searching for free services exclusively.
45

After all, CollegeSource provides for-charge subscriber services,
as well.

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
advertising.

Thus, the Court finds that this factor weighs in

AcademyOne’s favor.

5.

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.

In

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).

Indeed, Network

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.

46

6.

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
Cir. 2010).

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.

The

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
goodwill.

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
advertising.”).

This factor weighs in favor of AcademyOne.

47

7.

Similarity in Channels of Trade, Marketing, and

Advertising
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).

Cooper

Instead, CollegeSource primarily

markets through print materials and attendance at trade shows and
conferences.8

Holaday Decl. II ¶ 15 (ECF No. 186).

Moreover, the

Internet is not an “obscure” marketing channel, and advertising
via AdWords has become increasingly prolific.

Thus, this factor

favors AcademyOne.

8.

Similarity in Targets of the Parties’ Sales
Efforts and

9.

Similarity of the Goods’ Function

These factors both favor CollegeSource.
parties target educational institutions.

First, both

Both parties placed

bids to build a web-based transfer system for South Carolina

8

CollegeSource asserts that it uses the Internet to
advertise, but not through AdWords. Holaday Decl. ¶ 15; Cooper
Dep. 144:20-25 (D. Ex. 13).
48

colleges.

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
CollegeSource.

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.

See Network

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
of CollegeSource.

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.

49

E.

The Plaintiff’s Trademark Invalidity Claim Under U.S.

Lanham Act
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).

Claims

based upon hypothetical or abstract infringements of rights do
not warrant judicial intervention.

Id.

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.

In

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
CollegeTransfer.net.”

Id.

50

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.

F.

The Plaintiff’s False Advertising Claim Under U.S.
Lanham Act
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
plaintiff.

Pernod Ricard USA., LLC v. Bacardi U.S.A., Inc., 653

F.3d 241, 248 (3d Cir. 2011).

51

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.

1.

Id.

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
28).

CollegeSource claims that these statements are false and

misleading.

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.
Resp. 121-22.

52

Pl.’s

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
AcademyOne’s database.

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.

CollegeSource claims

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.

CollegeSource’s single

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
representations.

2.

AcademyOne’s Letters to Colleges Under Freedom of
Information Laws

AcademyOne made several statements in its letters to
colleges under freedom of information acts, including that

53

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
misleading.

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.

First, the

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.
133:16.

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

54

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
conclusion.
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
false.

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
course descriptions.

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
unambiguously false.

As part of this suit, CollegeSource has

asserted contract claims stemming from the Copyright and

55

Disclaimer Information pages included in each of its digitized
college catalogs.

CollegeSource thus claims that every catalog

containing that notice is subject to the conditions contained
within.

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
CollegeSource databases.

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
deceive).
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

56

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.

The

Court grants AcademyOne's motion for summary judgment for the
false advertising claim stemming from the freedom of information
letters.

IV.

Conclusion
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.

Because the

plaintiff has raised no genuine issue of material fact, the
defendant is entitled to summary judgment on all remaining
counts.

The defendant’s motion is granted and judgment is

entered in AcademyOne’s favor.
An appropriate order shall issue separately.

57