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
...secure letters
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....
...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. STAT. §
286.031,
which authorizes the Department to license state-owned trademarks for
consideration to be determined by the Department....
...t to sue or, more specifically,
the authority to take necessary legal action to protect against improper or unlawful
use or infringement of trademarks. The Department of State—not Florida
VirtualSchool—has been given such express authority by § 286.031....
...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
...(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. K12 also
referenced section
286.031, Florida Statutes (2013), which authorizes the DOS to
“secure letters patent, copyright and trademark on any invention or otherwise, and .
....
...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. Stat. (2013).
286.031....
...and all instruments on behalf of the state necessary to consummate
any such sale; and to do any and all other acts necessary and proper
for the execution of powers and duties herein conferred upon said
department for the benefit of the state.
§ 286.031, Fla....
...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....
...other rights or interests thereunder or therein.” §
1002.37(2), Fla. Stat. Nothing in
section
1002.37 requires the Florida Virtual School to obtain written consent from
the DOS before enjoying or using a school trademark or any rights or interests
therein.
Additionally, section
286.031 provides that the DOS is generally authorized
to sell trademarks. However, section
1002.37 provides that the Florida Virtual
School board of trustees may “dispose of” trademarks. §
1002.37(2)(c), Fla. Stat.
Section
286.031 provides that the DOS is entitled to “license, lease, assign, or
-7-
otherwise give written consent” to entities to use the trademarks “on a royalty
basis, or for such other consideration as said department shall deem proper,” and
also to “enforce the collection of any sums due . . . for the manufacture or use
thereof by any other party.” §
286.031, Fla....
...The Specific, Later-Enacted Statute
The other rules of statutory construction also support our conclusion that the
Florida Virtual School possesses standing under its enabling statute to file a
trademark infringement action. 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 ....
...rida 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
...and all instruments on behalf of the state necessary to consummate
any such sale; and to do any and all other acts necessary and proper
for the execution of powers and duties herein conferred upon said
department for the benefit of the state.
§ 286.031, FIa....
...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 286.02 1 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....
...other rights or interests thereunder or therein." §
1002.37(2), Fla. Stat. Nothing in
section
1002.37 requires the Florida Virtual School to obtain written consent from
the DOS before enjoying or using a school trademark or any rights or interests
therein.
Additionally, section
286.031 provides that the DOS is generally authorized
to sell trademarks. However, section
1002.37 provides that the Florida Virtual
School board of trustees may "dispose of' trademarks. §
1002.37(2)(c), Fla. Stat.
Section
286.031 provides that the DOS is entitled to "license, lease, assign, or
Case: 12-14271 Date Filed: 11/17/2014 Page: 11 of 22
otherwise give written consent" to entities to use the trademarks "on a royalty
basis, or for such other consideration as said department shall deem proper," and
also to "enforce the collection of any sums due. . . for the manufacture or use
thereof by any other party." §
286.031, Fla....
...The Specific, Later-Enacted Statute
The other rules of statutory construction also support our conclusion that the
Florida Virtual School possesses standing under its enabling statute to file a
trademark infringement action. 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....
...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 286.02 1 and 286.031 as "the DOS
statutes," the DOS was not named as the administering agency of these provisions
until 1979....
