Valentina Palm/ Assistant News Director
FIU appealed for a second time, on Thursday Sep. 26, a judge’s order to pay $1.15 million to Florida National University, continuing a six year legal fight.
FIU’s Board of Trustees sued FNU in 2013 for trademark infringement violating federal and state law when FNU changed its name from Florida National College (FNC) to Florida National University.
Last week, the FIU Board of Trustees paid $505 to file an objection to the amount of legal fees they owe FNU, extending the case for around nine to 12 months, according to Steven Peretz, one of the lawyers representing FNU.
The second appeal comes after FIU has repeatedly lost court decisions dealing with the suit and the amount owed to FNU attorneys.
With this appeal, the current amount of $1.15 million in attorneys’ fees will increase depending on the length of the case.
“We’re disappointed that FIU decided to appeal the trial court’s ruling,” said Peretz. “FIU has made a lot of unnecessary work for everyone in this case.”
PanterNOW reached out FIU’s lawyer, David Friedland, who declined to comment on the case.
In 2017, Magistrate Judge Andrea Simoton awarded FNU $1.15 million after it’s 2015 victory on the trademark lawsuit filed by FIU.
The appeal is FIU’s last opportunity to contest the payment and according to Peretz, it could mean the end of the six year case.
FIU claimed FNU’s new name infringed on its trademark, confused customers with affiliation for FNU to profit off of FIU’s reputation and affecting its business.
On the federal level, FIU sued for trademark infringement and unfair competition.
On the state level, FIU sued for trademark infringement, trademark dilution and injury to business reputation, also seeking the cancellation of FNU’s state registered trademark.
Mark Terry, a Miami trademark lawyer not involved with the case, believes FIU should’ve never filed the suit in the first place.
“There was not a genuine disagreement about a law or its interpretation, the plaintiff should have never filed a totally bogus complaint,” said Terry.
The claim was bogus, according to Terry, because the use of acronyms by colleges and universities has made acronym overlap common, and for a trademark suit to qualify, there has to be a likelihood of consumer confusion.
That is not the case, according to Terry. For example, a consumer wouldn’t confuse University of Michigan with University of Miami, even though they share the “U.M.” acronym.
FNU is located in a shopping mall between a salon and a liquor store on Coral Way, only one mile away from the FIU campus. Despite their proximity, they are radically different.
FNU is a small private for-profit school founded 30 years ago with 3,819 current students. FIU, on the other hand, is a public research institution founded almost 50 years ago with over 54,000 currently enrolled students.
The differences in school size, programs offered and student body favored FNU in the case. District Judge Kathleen M. Williams ruled in 2015 there wasn’t enough proof of trademark infringement that could lead to customer confusion, making FIU’s case meritless.
Although FIU lost the trademark suit, the case is not settled because they have appealed FNU’s entitlement to attorney fees and the amount owed for the last four years.
PantherNOW reached out to the Board of Trustees about the decision to appeal but they referred the questions to Media Relations who declined to comment on pending litigation.
FNU changed its name from Florida National College to Florida National University in 2012 after earning its accreditation to offer masters programs, expanding their curriculum.
That year, FIU sent the private institution a letter stating it expected FNU to discontinue using their new name and acronym, and to also withdraw it’s trademark application altogether.
In the letter, FIU explained the name Florida National University caused confusion in the marketplace and infringed its trademark. The letter also claimed unfair competition, and deceptive and unfair trade practice.
FNU responded that FIU’s argument was meritless in a letter later that year.
FNU argued both institutions agreed on the usage of “National” in its name in 1989 , more than 13 universities in the state have “Florida” and “University” in their names and acronyms, and they are not competing institutions. Therefore, there is no likeliness of customer confusion to support a trademark infringement suit.
Peretz was surprised FIU proceeded to file a trademark lawsuit on May 3, 2013.
“We thought we did a good job indicating what the problems would be if they brought the suit,” said Peretz. “The arguments that I gave FIU in that letter before the lawsuit were ultimately the basis for FNU winning the case.”
In court, FIU lawyers claimed FNU’s name infringed on its federally registered trademark based on the similarity of the words national and international, their overlap in curriculum and recruitment media created a possible customer confusion.
FNU argued FIU’s trademark was weak mark because more than 13 state universities use “Florida” and “University”; the words national and international have opposite meanings. Despite curriculum similarity, FNU argued they are not competing institutions as FIU is a “top-tier” research school and FNU’s mission is to “prepare students for immediate gainful employment upon graduation.”
Also, student body populations differ in number and level of education. 50 percent of FNU students are seeking associate degrees, and 20 percent are working towards an English as a Second Language certificate.
Additionally, FNU only does in person recruitment.
“They’re not competitive because FNU has principally associate degree programs and FIU has no associate degree programs,” said Peretz. “Now, there is a there is some overlap at the bachelor’s degree graduate level. But what is interesting is that so many of the FIU students that went to the bachelor’s program went there from FNUs associate degree program.”
FIUs case evidence was a FedEx email questioning FNU’s affiliation with FIU, a letter from a highschool student sent to FNU requesting information about FIU, possible employee confusion and the mistake of a WLRN announcer who confused the names on air.
Self-destructive depositions hurt FIU the most, according to court documents.
Witnesses included FIU’s Dean of Undergraduate Admissions, the University’s marketing director and in-house lawyer and FIU marketing consultants.
“Their key witnesses said they had never even heard of Florida National University,” said Peretz.
FIU argued FNU’s intent with its change of name was to profit off FIU’s reputation and the reputation of all of Florida State universities. FNU defended its decision to change from “College” to “University” with their new Masters accreditation and the 1989 agreement.
Both institutions mediated throughout the case aiming to reach a settlement, but FIU consistently requested FNU to keep its name as Florida National College.
“That didn’t help Florida National because, as with the graduate programs, they wanted to emphasize that they were University,” said Peretz. “Apparently in Latin American to say you’re a college is not impressive, saying you’re a university is impressive, and FNU gets a fair number of students from South America.”
The court found FIU’s claims meritless and Judge Williams ruled in favor of Florida National University two years later on March 4, 2015.
“Likeliness of confusion seems even more remote considering the level of sophistication and the amount of investigation one would expect from prospective students when considering a particular school or a particular kind of degree,” wrote Judge William in the case order.
FNU filed a motion to be awarded attorney fees for the case that same year.
FIU appealed Judge William’s decision in the United States Court of appeal, and in 2016, the appellate court affirmed the decisions favoring FNU.
Ever since, FIU has fought FNU’s entitlement to attorney fees.
Fight For Attorney Fees:
This trademark lawsuit is remarkable, according to Terry, because of FNU’s award of attorney fees which are only granted in extraordinary cases.
FNU defended its entitlement to attorney fees saying the suit qualified as an “exceptional case” and in 2015, motioned for attorney fees in the district court and court of appeals.
FNU defined the case as exceptional for several reasons: It won all federal and state claims, FIU’s examples of customer confusion were insufficient and they continued to litigate the case after its own administration testified to the invalidity of their claims.
Also, FIU continued litigation despite their administration saying there hadn’t been an instance of application process confusion or monetary loss because of the name change.
FNU said FIU unreasonably continued the case with unsupported claims, without a customer confusion survey or revaluation through the case, rebutting district and appellate court decisions.
FIU opposed both motions but in August of 2017 Magistrate Judge Andrea Simoton approved the award of attorney fees in a recommendations report for being an “exceptional case” due to the disparities in litigation position between the schools.
And also, because of FIU’s failure to offer evidence of monetary loss due to the name change.
The judge found the minimal evidence presented “meritless.”
A month later, FIU objected to the Judge’s report, but in June of 2018 the court agreed with the report granting attorney fees and began the settlement for the amount.
FNU filed a $1.6 million attorney fee request, later reduced seven percent by the judge to $1.15 million because of FNUs own recommendation.
FIU objected to FNU’s $1.15 million request but Magistrate Judge Jacqueline Becerra approved last August 2019.
The $1.15 million is made up of $866,629.80 for the district court case and $292,304.80 for the appeal process started by FIU.
FIU opposed the amount again in July but by August the district Judge reaffirmed it, again.
Last Thursday, September 26 FIU filed a motion to appeal the decision for the second time.
“We have been frustrated that the case is going on now for six years and well might go on further if FIU decides to appeal,” said Peretz before FIU filed the motion.
Where it all began:
This 2013 trademark case was not the first time FIU disputed FNU’s name.
FIU sued FNU over a trademark dispute in 1989, a year after it changed its name from Florida International Institute to Florida International College (FIC).
FIC consented to change its name to Florida National College that year to settle the case.
At the time FIU also argued name similarity because the words “National” and “International” denote geographic terms but after 20 years of the agreement on the name “Florida National College” Peretz believes FNU’s change from College to University was the real trigger for the 2013 lawsuit.
“The case really came down to the narrow question as to whether changing from college to university was a tipping point that made a good relationship turn into a bad relationship,” said Peretz.