Nominative fair use defense in 2d Cir goes about as well as you’d expect on motion to dismiss

Excelsior College v. Wolff, 2018 WL 3964703, No. 17-CV-0011
(N.D.N.Y. Aug. 16, 2018)
Excelsior alleged that Wolff infringed its rights by advertising
and selling a test preparation service that uses Excelsior’s registered marks
and copyrighted material for a Clinical Performance Nursing Exam required to
pass its nursing program.  Wolff, a
former student who signed the academic honesty policy, uses and and his html [foolishly] includes “CPNE” and “Excelsior
College” as keywords and meta-tags. He used RobsCPNE on social media.  Wolff allegedly requests CPNE test questions
and exam feedback from students who take the CPNE exam, then them to students
preparing to take the CPNE exam, allegedly violating and causing the violation
of the honesty policy.
We’re in the Second Circuit, so nominative fair use can’t be
used to kick out the case on a motion to dismiss. Strength: registered without
requiring a showing of secondary meaning, so presumed inherently distinct
(though given what CPNE stands for, that’s a little hard to accept) and
plausibly has acquired distinctiveness due to use since 1975 and “significant”
sums spent on advertising. Similarity: yep. Proximity/bridging the gap:
Excelsior also offers test prep services. No pleading of actual confusion, but
that’s ok. Bad faith: knowledge of the mark and disregard of C&D demands,
along with use of a privacy protection service to conceal his domain name
registration [um, didn’t it use his name?] alleged bad faith. Sophistication:
favored Wolff, but irrelevant.  At this stage,
the court couldn’t evaluate the nominative fair use factors (whether use is
necessary to identify the defendant’s product or service—seriously? That
follows from the allegations of the complaint). It was plausible that
purchasers could believe there was sponsorship, approval, or affiliation with
Excelsior, since it advertised test prep for people seeking an associates
degree through Excelsior and the website included the CPNE mark.  
On ACPA, Wolff argued that allegations of bad faith weren’t
plausible because the domain sent users to and
the content is “replete with references to Defendant, Robbie Wolff, by name,
including testimonials and reviews.” But it was also “replete with Plaintiff’s
mark and references to Excelsior College/Excelsior University, which could
cause confusion,” and Excelsior alleged bad faith intent to profit [from
confusion?].  However, that doesn’t
really rebut the point that Wolff does not seem to have hidden his identity in
any way, which makes allegations alleging bad faith from his use of privacy protection for his contact info implausible.
Copyright infringement: also plausibly alleged that Wolff
copied substantial amounts of Excelsior’s materials.  False advertising under NY GBL § 350: the
requirement that conduct be consumer-oriented was satisfied by the alleged
trademark infringement. State law unfair competition additionally required bad
faith. The complaint alleged that the defendant used an identical mark with the
bad faith intention to profit from the known goodwill of the plaintiff’s mark.
That was enough to plausibly plead bad faith.
Tortious interference (with the honesty agreement) was also plausibly
pled even though the CPNE is a practical exam, not a written exam, and even
though Wolff argued that all test preparation services involve training the test-taker
how to answer the type of questions likely to be on the test.

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