Most of the lawsuits we write about in the Daily Dawg are about personnel disputes, student injuries, student discipline or special education. But schools also get enmeshed in business disputes.  Several districts around the country are defending suits filed by a company called Springboards to Education, Inc. alleging trademark infringement.   In one such case the federal court recently ruled in favor of Houston ISD.

The case is about trademarks owned by Springboards.  The company alleges that HISD infringed on their intellectual property by creating, selling and distributing thousands of products (t-shirts, brochures, bumper stickers) that included Springboards’ trademarks.   Houston ISD acknowledged much of this. The district aggressively promoted its “Millionaire Club”—a reading program for kids, and used phrases similar to Springboards’ trademarks in the process.

But the district denied that it sold any such product, or made any profit on any of this. These were giveaways.

That was the crucial fact.   In a trademark infringement case, the plaintiff must prove that the other party used its trademark without consent in a commercial enterprise.  Key Quote:

…the Court finds that creating and distributing items free of charge to students as an incentive to participate in a free local public education reading program is not commercial use of Springboard’s Marks.

Springboard produced evidence that it claimed showed that the HISD print shop had actually made a profit by printing flyers and brochures. Commercial use? The court said no. There was no true “profit.” What looked like a profit was only a reflection of an internal transaction within HISD.  The HISD Library Department “paid” the Print Shop for this work.  It was an HISD entity paying another HISD entity. This is not “commercial use.”

This case is getting quite a bit of attention among lawyers around the country, and for good reason.  The court’s ruling effectively means that school districts don’t have to worry about trademark infringement, so long as the program is free.

But let’s be careful about this. This is a lower court decision in a case that will probably go on to higher level courts.  If you are worried about using materials that may be protected by trademark, proceed cautiously—i.e., call your lawyer!

The go-to guy in our firm on these matters is Barry Berenberg in our Albuquerque office. Barry is currently involved in representing a district in South Texas in a case filed by Springboards.  That case involves multiple school districts and is pending in federal court.  Barry has extensive experience with what the lawyers call “IP Law”—Intellectual Property. We also have other lawyers in the firm with experience in dealing with trademark issues. So we can help you out on these things.

The case is Springboards to Education, Inc. v. Houston ISD, decided by the district court for the Southern District of Texas on January 22, 2018. We found it at 2018 WL 523266.

DAWG BONE: IT’S NOT “COMMERCIAL USE” IF YOU GIVE IT AWAY.

Tomorrow: Where do we go with that child abuse report?