Property, intangible

a blog about ownership of intellectual property rights and its licensing

Who Can Enforce the Mark?

I previously wrote about an unusual case in Florida, where a state agency alleged infringement of registered trademarks. The lawsuit was dismissed for lack of standing, with the district court reaching the conclusion that the enabling statute for the agency didn’t grant it the right to enforce its trademarks.

According to the statute, Florida VirtualSchool is authorized to

acquire, enjoy, use, and dispose of … trademarks and any licenses and other rights or interests thereunder or therein…. Ownership of all such … trademarks, licenses, and rights or interest thereunder or therein shall vest in the state with [Florida VirtualSchool] having full right of use and full right to retain the revenues derived therefrom.

Fla. Stat. § 1002.37(2)(c).

You see the problem—Florida VirtualSchool has broad rights that appear to be those of an owner, but the statute says expressly that the state nevertheless owns the trademarks (as well as patents and copyrights). If the state owns the trademarks, then only the Department of State can sue for infringement. The district court went with the plain statement of ownership in the statute and dismissed Florida VirtualSchool’s case for lack of standing.

Florida VirtualSchool has appealed and the 11th Circuit is now asking the Florida Supreme Court for an opinion: “The issue in this case is an important one, as it affects the respective rights of various Florida agencies and departments with respect to intellectual property.” It therefore certified the following question to the Florida court:

Does Florida VirtualSchool’s statutory authority to “acquire, enjoy, use, and dispose of … trademarks and any licenses and other rights or interests thereunder or therein” necessarily include the authority to bring suit to protect those trademarks, or is that authority vested only in the Department of State?

Florida VirtualSchool v. K12, Inc., No. 12-14271 (11th Cir. Oct. 10, 2013).

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