CopyCited 2 times | Published | Court of Appeals for the Eleventh Circuit | 108 U.S.P.Q. 2d (BNA) 1497, 2013 WL 5825430, 2013 U.S. App. LEXIS 20602
...5
Case: 12-14271 Date Filed: 10/10/2013 Page: 6 of 9
or held, or as may hereafter be acquired, owned and held by the state, or any of its
boards, commissions or agencies.” FLA. STAT. § 286.021....
...patent, copyright and trademark on any invention or otherwise, and to enforce the
rights of the state therein . . . including legal actions, to protect the same against
improper or unlawful use or infringement . . . .” FLA. STAT. §
286.031. The district
court concluded that, under §
286.021, only the Department of State has standing
to sue for infringement of Florida VirtualSchool’s trademarks.
We read the specific statute governing Florida VirtualSchool, §
1002.37(2)(c), and the general statute concerning the Department of State, §
286.021, to be in tension with one another....
...Second, the right to enjoy and use
trademarks would be largely ethereal if Florida VirtualSchool could not protect
against infringement. Third, Florida VirtualSchool’s right to license its trademarks
and retain the revenues derived therefrom conflicts to some degree with both FLA.
STAT. § 286.021, which forbids any person from using state-owned trademarks
without the written consent of the Department of State, and FLA....
...3rd DCA 1988)
(“An owner of property has the right to dispose of it as he or she sees fit . . .”).
On the other hand, the rights of the Department of State with respect to
trademarks (and other intellectual property) do not seem to contemplate a co-equal
partner. First, § 286.021 vests in the Department of State all “legal title and every
right [and] interest” in trademarks....
...Fourth, some opinions by Florida’s Attorney
General—which are “entitled to careful consideration and should be regarded as
highly persuasive,” State v. Family Bank of Hallandale,
623 So. 2d 474, 478 (Fla.
1993)—lend some support to K12’s reading of §§
286.021 and
286.031....
CopyCited 1 times | Published | Supreme Court of Florida | 39 Fla. L. Weekly Supp. 569, 2014 WL 4638694, 2014 Fla. LEXIS 2823
...the Florida Department of State (DOS). In support of this contention, K12 relied
upon language in the Florida Virtual School’s enabling statute which provides that
all school trademarks are owned by the State. §
1002.37(2)(c), Fla. Stat. (2013).
K12 noted that section
286.021, Florida Statutes (2013), grants to, and vests in, the
DOS “[t]he legal title and every right, interest, claim or demand of any kind in and
to any patent, trademark or copyright” that is owned or held by the State....
...Rather,
the agency is limited to the powers that have been granted, either expressly or by
necessary implication, by the statute that created the agency. St. Regis Paper Co.
v. State,
237 So. 2d 797, 799 (Fla. 1st DCA 1970). The statutes that pertain to the
issue here provide, in relevant part:
286.021....
...s, is
hereby granted to and vested in the Department of State for the use
and benefit of the state; and no person, firm or corporation shall be
entitled to use the same without the written consent of said
Department of State.
§ 286.021, Fla....
...(2013).
Each statute addresses trademarks that are owned by the State. However,
that does not end the analysis. The enabling statute for the Florida Virtual School
and the statutes under which the DOS operates present a tension with regard to the
scope of authority granted to the school. For example, sections
286.021 and
286.031 provide that the DOS is authorized to do and perform any and all things
necessary to generally secure letters patent, copyright and trademark on any
invention or otherwise, and trademarks generally owned by the State may not be
used by a corporation without the written consent of the DOS....
...degree of independence from the DOS with respect to intellectual property
acquired by the school.
Finally, although the enabling statute expressly and reasonably provides that
the trademarks acquired by the Florida Virtual School are owned by the State, and
section 286.021 provides that legal title to property owned by the State vests in the
DOS, the trustees of the Florida Virtual School have the clear, express authority to
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“acquire, enjoy, use, and...
...Section
286.031 generally governs trademarks that
are held or owned by the State, and authorizes the DOS to protect those trademarks
against “improper or unlawful use or infringement.” §
286.031, Fla. Stat.; see also
Op. Att’y Gen. Fla. 2000-13, at *2 (2000) (“[S]ections
286.021 and
286.031,
Florida Statutes, vest general authority in the Department of State ....
...agency was enacted in 2000 (under the name “Florida On-Line High School”).
See ch. 2000-224, § 1, Laws of Fla. The DOS statutes were enacted in 1943, see
ch. 21959, §§ 1-2, Laws of Fla. (1943),2 and have not been amended since 1979—
2. Although we refer to sections
286.021 and
286.031 as “the DOS
statutes,” the DOS was not named as the administering agency of these provisions
until 1979....
CopyPublished | Court of Appeals for the Eleventh Circuit | 2014 WL 6436644
...the Florida Department of State (DOS). In support of this contention, K12 relied
upon language in the Florida Virtual School's enabling statute which provides that
all school trademarks are owned by the State. §
1002.37(2)(c), Fla. Stat. (2013).
K12 noted that section
286.021, Florida Statutes (2013), grants to, and vests in, the
DOS "[t]he legal title and every right, interest, claim or demand of any kind in and
to any patent, trademark or copyright" that is owned or held by the State....
...Rather,
the agency is limited to the powers that have been granted, either expressly or by
necessary implication, by the statute that created the agency. St. Regis Paper Co.
v. State,
237 So. 2d 797, 799 (Fla. 1st DCA 1970). The statutes that pertain to the
issue here provide, in relevant part:
286.021....
..., is
hereby granted to and vested in the Department of State for the use
and benefit of the state; and no person, firm or corporation shall be
entitled to use the same without the written consent of said
Department of State.
§ 286.021, Fla....
...degree of independence from the DOS with respect to intellectual property
acquired by the school.
Finally, although the enabling statute expressly and reasonably provides that
the trademarks acquired by the Florida Virtual School are owned by the State, and
section 286.021 provides that legal title to property owned by the State vests in the
DOS, the trustees of the Florida Virtual School have the clear, express authority to
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Case: 12-14271...
