Int'l Info Sys. SEC Cert. Consortium, Inc. v. Security University, Ll

823 F.3d 153 (2nd Cir. 2016)

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Nature of the Case

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Facts

P is a non-profit organization that was formed in 1989 to develop standards for the information security industry. P developed a certification program and began using the certification mark 'CISSP®' to denote a 'Certified Information Systems Security Professional' who has met certain requirements and standards of competency in the information security field, including passing the CISSP® certification examination that P administers. D is a for-profit company that provides information security training. D preps people for P's certification examination. D uses P's mark in connection with certification-specific training courses. P agrees with the use of the mark related to such courses and also allows instructions to accurately identify themselves as being CISSP®-certified, so long as they follow P's regulations governing the use of the mark. P objected to a misleading suggestion that D's instructor, Clement Dupuis, had attained some higher level of certification as a 'Master CISSP' or 'CISSP Master.' P sued D alleging infringement under 15 U.S.C. § 1114, false designation of origin and false advertising under 15 U.S.C. § 1125(a), trademark dilution under 15 U.S.C. § 1125(c), and unfair competition under CUTPA. D filed counterclaims denying each of these allegations and alleging antitrust violations due to P's alleged misuse of its certification mark. The parties cross-moved for summary judgment. The district court granted summary judgment to D on all counts. P's claims failed under the doctrine of nominative fair use because D's alleged misuse could not give rise to confusion as to the source of D's services. The court applied the Ninth Circuit's doctrine of nominative fair use, according to which 'nominative fair use applies when all three of the following requirements are met: '[1] the product or service in question must be one not readily identifiable without use of the trademark; [2] only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and [3] the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.'' It found that no reasonable juror could find that D's of the CISSP mark suggest that D's training courses were sponsored or endorsed by P. The district court reasoned that the disclaimers D placed at the bottom of some of its advertisements further served to reduce any suggestion that their classes were sponsored or endorsed by P. P appealed.