College Source, Inc. v. AcademyOne, Inc. 2012 WL 5269213 (E.D. Pa. Oct. 25, 2012)

CASE SUMMARY

FACTS

Plaintiff CollegeSource, Inc. ("CollegeSource") offers access to subscription-based and free databases providing information on college and university course curriculums, equivalencies, and transferability. CollegeSource hosts course catalogs and updates its databases annually by collecting digital course catalogs and digitizing paper course catalogs. It sells access to its database in addition to tools that facilitate student academic-credit transfers and offers a free service, CataLink, that allows schools to link directly to CollegeSource's digitized course catalogs. Defendant AcademyOne, Inc. ("AcademyOne") builds systems that allow faculties to evaluate academic courses for credit equivalency. To build its database of course descriptions, AcademyOne hired a developer to download course catalogs and convert them into a text database. The developer downloaded some course catalogs from schools using CollegeSource's CataLink database and "scraped" the PDF files for text. AcademyOne allowed free access to its course-description database and hosted 4,000 courses on its website. AcademyOne purchased the terms "college source" and "career guidance foundation," both trademarks of CollegeSource, as search-engine keywords. CollegeSource sued AcademyOne for trademark infringement and unfair competition, among other claims. AcademyOne moved for summary judgment and the district court granted the motion.

ANALYSIS

The court dismissed CollegeSource's infringement and unfair-competition claims because CollegeSource did not provide sufficient evidence that AcademyOne's use of CollegeSource's trademarks was likely to cause confusion. The court noted the four-factor likelihood-of-confusion test for keyword cases adopted by the Ninth Circuit in Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011): (1) strength of the mark, (2) evidence of actual confusion, (3) types of goods and degree of care likely to be exercised by the typical purchaser, and (4) the labeling and appearance of the advertisements triggered by the keywords. In applying the traditional Third Circuit multifactor likelihood-of-confusion test known as the Lapp factors, the district court stated it would "place emphasis" on the four Network Automation factors.

The strength-of-the-mark factor favored CollegeSource because it used COLLEGE SOURCE for eighteen years and CAREER GUIDANCE FOUNDATION for over thirty years, and both marks...