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
...atly benefit from the guidance of
the Florida Supreme Court.
I
Florida VirtualSchool was “established for the development and delivery of
online and distance learning education.” FLA. STAT. § 1002.37....
...y the
enabling statute.”). With respect to trademarks, Florida VirtualSchool is authorized
by statute to “acquire, enjoy, use, and dispose of . . . trademarks and any licenses
and other rights or interests thereunder or therein.” FLA. STAT. § 1002.37(2)(c)....
...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....
...n. This case,
in our view, presents a state law issue of first impression with reasonable
arguments on both sides.
On the one hand, Florida VirtualSchool’s right to acquire, enjoy, use,
license, and dispose of trademarks, as set forth in § 1002.37(2)(c), would appear to
fully encompass the rights attendant to ownership, including the right to protect
those ownership interests....
CopyCited 1 times | Published | Supreme Court of Florida | 39 Fla. L. Weekly Supp. 569, 2014 WL 4638694, 2014 Fla. LEXIS 2823
...2013),1 the
Eleventh Circuit certified the following question:
1. The appellant is referenced in the federal proceedings as both Florida
VirtualSchool and Florida Virtual School. For purposes of this decision, we refer
to appellant as the Florida Virtual School. See § 1002.37, Fla....
...In June 2000,
Plaintiff became an agency of the State of Florida pursuant to Section
228.082 of the Florida Statutes. In 2002, Section 228.082 of the
-2-
Florida Statutes was amended and renumbered as Section 1002.37 of
the Florida Statutes....
...July 16, 2012).
The opinion of the Eleventh Circuit provides the relevant facts of the action
filed by the Florida Virtual School against K12:
Florida VirtualSchool was “established for the development and
delivery of online and distance learning education.” Fla. Stat. §
1002.37....
...ademarks was vested exclusively in
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....
...ry 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. Stat. (2013).
1002.37....
...The board of trustees shall be a body corporate with all the
powers of a body corporate and such authority as is needed for the
proper operation and improvement of the Florida Virtual School.
-6-
§ 1002.37(2), Fla....
...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. However, section
1002.37 specifically establishes a board of trustees to govern the Florida Virtual
School, designates the board as “a body corporate,” and further specifically
authorizes the board to acquire, enjoy, and use trademarks “and any licenses and
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....
...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. Stat. Despite this general language,
section
1002.37 provides that the Florida Virtual School board of trustees “shall
enter into agreements with distance learning providers” and is required to
“aggressively seek avenues to generate revenue to support its future endeavors.” §
1002.37(2)(c), Fla....
...With regard to the latter rule, this
Court has explained “[t]he more recently enacted provision may be viewed as the
clearest and most recent expression of legislative intent.” Harris,
772 So. 2d at
1287.
The Plain Language of Section
1002.37
The plain language of section
1002.37(2) provides that the Florida Virtual
School’s board of trustees “shall be a body corporate with all the powers of a body
-9-
corporate and such authority as is needed for the proper o...
...(2013) (the board of
trustees of a Florida College System institution “is constituted a body corporate . . .
with all the powers and duties of a body corporate, including the power . . . to sue
or be sued.”).
- 11 -
Although section 1002.37 does not attempt to include an illustrative list, we
conclude that the absence of such a list does not deprive the Florida Virtual School
of the ability to initiate a legal action....
...521, 524 (Fla. 1927) (“The capacity of suit
is one of the essential and ordinary incidents to a corporation.”); see also §§
607.0302(1),
617.0302(2), Fla. Stat. Thus, we conclude that the “all the powers of
a body corporate” language in section
1002.37(2) authorizes the school to initiate
litigation....
...o protect the
trademarks that it acquires on behalf of the State.
Moreover, the enabling statute clearly grants the board of trustees “such
authority as is needed for the proper operation and improvement of the Florida
Virtual School.” § 1002.37(2), Fla....
...If third parties could wrongfully appropriate the Florida Virtual School
- 12 -
trademarks without repercussions, the school would lose customers, contracts, and
revenue, and its operation would be significantly compromised. Instead, the broad
and unqualified language in section 1002.37(2) supports our conclusion that the
Legislature intended to give the Florida Virtual School the authority to file legal
actions to protect school trademarks against infringement. To interpret the “body
corporate” and the “such authority” language in this manner both gives meaning to
each clause in section 1002.37(2) and harmonizes the statute by ensuring that the
Florida Virtual School has the ability to protect its operation and continue its
improvement through enforcement of its trademark rights....
...ased
education delivery system that is cost-effective, educationally sound, marketable,
and capable of sustaining a self-sufficient delivery system through the Florida
- 13 -
Education Finance Program.” § 1002.37(2)(b), Fla....
...respect to the
development of the technology for the Florida Virtual School. Thus, the board of
trustees would be better suited to monitor the use of this State-owned intellectual
property and safeguard it against infringement. Moreover, because section
1002.37 does not require the Florida Virtual School to notify the DOS whenever it
secures a trademark, copyright, or patent (as it clearly has the right and power to
do), it is uncertain as to how the DOS could continually monitor school intellectual
property for possible infringement....
...DOS, the trustees of the Florida Virtual School have the clear, express authority to
- 14 -
“acquire, enjoy, use, and dispose of patents, copyrights, and trademarks and any
licenses and other rights or interests thereunder or therein.” § 1002.37(2)(c), Fla.
Stat....
...rida Virtual School, its ability to exercise
those rights would be meaningless if the agency holding those rights could not also
protect the intellectual property from infringement. Accordingly, we hold that the
legislative grant of the rights in section 1002.37(2) to the trustees of the Florida
Virtual School necessarily authorizes the school to file actions to protect those
rights and the intellectual property acquired by the school.
The Specific, Later-Enacted Sta...
...2000-13, at *2 (2000) (“[S]ections
286.021 and
286.031,
Florida Statutes, vest general authority in the Department of State . . . to apply for,
hold and enforce legal title to trademarks, patents, and copyrights on behalf of the
State of Florida.” (emphasis supplied)). However, section
1002.37 specifically
authorizes the Florida Virtual School to acquire, use, enjoy, and dispose of the
- 15 -
trademarks it has acquired....
...powers of a body corporate and such authority as is needed for the proper
operation and improvement of the Florida Virtual School” necessarily incorporates
the ability to protect the trademarks that the school has acquired on behalf of the
State and continues to use and enjoy. § 1002.37(2), Fla. Stat. Therefore, section
1002.37 controls over the general DOS statutes and creates an exception to the
general rule that only the DOS is authorized to protect State-owned trademarks
against unlawful use or infringement....
...protect its legal rights, as well as school intellectual property from third-party
misappropriation and misuse, would be inconsistent with overall statutory
language that grants the trustees the authority to ensure the “proper operation and
improvement” of the school. § 1002.37(2), Fla....
... statutes, which only generally vest the authority to enforce State-owned trademarks
with the DOS. See Harris,
772 So. 2d at 1287; ConArt, Inc.,
504 F.3d at 1210.
Application to Other Enabling Statutes
Our interpretation of section
1002.37 constitutes a rational construction that
effectuates the broad grant of rights and powers to the Florida Virtual School by
the Legislature. It is simply not logical for a State entity to have the authority to
“acquire, enjoy, use, and dispose of patents, copyrights, and trademarks and any
licenses and other rights or interests thereunder or therein,” §
1002.37(2)(c), Fla.
Stat., but then be powerless to protect that intellectual property from infringement.
Accordingly, we hold that where this State entity has been specifically granted
rights with regard to intellectual property as those liste...
CopyPublished | Court of Appeals for the Eleventh Circuit | 2014 WL 6436644
...2013),1 the
Eleventh Circuit certified the following question:
1. The appellant is referenced in the federal proceedings as both Florida
VirtualSchool and Florida Virtual School. For purposes of this decision, we refer
to appellant as the Florida Virtual School. See § 1002.37, Fla....
...228.082 of the Florida Statutes. In 2002, Section 228.082 of the
2
Case: 12-14271 Date Filed: 11/17/2014 Page: 6 of 22
Florida Statutes was amended and renumbered as Section 1002.37 of
the Florida Statutes....
...July 16, 2012).
The opinion of the Eleventh Circuit provides the relevant facts of the action
filed by the Florida Virtual School against K12:
Florida VirtualSchool was "established for the development and
delivery of online and distance learning education." Fla. Stat. §
1002.37....
...trademarks was vested exclusively in
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....
...ry 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. Stat. (2013).
1002.37....
...powers of a body corporate and such authority as is needed for the
proper operation and improvement of the Florida Virtual School.
6
Case: 12-14271 Date Filed: 11/17/2014 Page: 10 of 22
§ 1002.37(2), Fla....
...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. However, section
1002.37 specifically establishes a board of trustees to govern the Florida Virtual
School, designates the board as "a body corporate," and further specifically
authorizes the board to acquire, enjoy, and use trademarks "and any licenses and
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....
...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. Stat. Despite this general language,
section
1002.37 provides that the Florida Virtual School board of trustees "shall
enter into agreements with distance learning providers" and is required to
"aggressively seek avenues to generate revenue to support its future endeavors." §
1002.37(2)(c), Fla....
...With regard to the latter rule, this
Court has explained "[t}he more recently enacted provision may be viewed as the
clearest and most recent expression of legislative intent." Harris,
772 So. 2d at
1287.
The Plain Language of Section
1002.37
The plain language of section
1002.37(2) provides that the Florida Virtual
School's board of trustees "shall be a body corporate with all the powers of a body
9
Case: 12-14271 Date Filed: 11/17/2...
...(2013) (the board of
trustees of a Florida College System institution "is constituted a body corporate. .
with all the powers and duties of a body corporate, including the power. . . to sue
or be sued.").
Case: 12-14271 Date Filed: 11/17/2014 Page: 15 of 22
Although section 1002.37 does not attempt to include an illustrative list, we
conclude that the absence of such a list does not deprive the Florida Virtual School
of the ability to initiate a legal action....
...of Pub.
Instruction for Lafayette Cnty,
111 So. 521, 524 (Fla. 1927) ("The capacity of suit
is one of the essential and ordinary incidents to a corporation."); see also §
607.0302(1), 6 17.0302(2), Fla. Stat. Thus, we conclude that the "all the powers of
a body corporate" language in section
1002.37(2) authorizes the school to initiate
litigation....
...s to protect the
trademarks that it acquires on behalf of the State.
Moreover, the enabling statute clearly grants the board of trustees "such
authority as is needed for the proper operation and improvement of the Florida
Virtual School." § 1002.37(2), Fla....
... Case: 12-14271 Date Filed: 11/17/2014 Page: 16 of 22
trademarks without repercussions, the school would lose customers, contracts, and
revenue, and its operation would be significantly compromised. Instead, the broad
and unqualified language in section 1002.37(2) supports our conclusion that the
Legislature intended to give the Florida Virtual School the authority to file legal
actions to protect school trademarks against infringement. To interpret the "body
corporate" and the "such authority" language in this manner both gives meaning to
each clause in section 1002.37(2) and harmonizes the statute by ensuring that the
Florida Virtual School has the ability to protect its operation and continue its
improvement through enforcement of its trademark rights....
...d, marketable,
and capable of sustaining a self-sufficient delivery system through the Florida
1
Case: 12-14271 Date Filed: 11/17/2014 Page: 17 of 22
Education Finance Program." § 1002.37(2)(b), Fla....
...respect to the
development of the technology for the Florida Virtual School. Thus, the board of
trustees would be better suited to monitor the use of this State-owned intellectual
property and safeguard it against infringement. Moreover, because section
1002.37 does not require the Florida Virtual School to notify the DOS whenever it
secures a trademark, copyright, or patent (as it clearly has the right and power to
do), it is uncertain as to how the DOS could continually monitor school intellectual
property for possible infringement....
...rida Virtual School, its ability to exercise
those rights would be meaningless if the agency holding those rights could not also
protect the intellectual property from infringement. Accordingly, we hold that the
legislative grant of the rights in section 1002.37(2) to the trustees of the Florida
Virtual School necessarily authorizes the school to file actions to protect those
rights and the intellectual property acquired by the school.
The Specific, Later-Enacted St...
...2000-13, at *2 (2000) ("[S]ections 286.02 1 and 286.03 1,
Florida Statutes, vest general authority in the Department of State . . . to apply for,
hold and enforce legal title to trademarks, patents, and copyrights on behalf of the
State of Florida." (emphasis supplied)). However, section 1002.37 specifically
authorizes the Florida Virtual School to acquire, use, enjoy, and dispose of the
- 15-
Case: 12-14271 Date Filed: 11/17/2014 Page: 19 of 22
trademarks it has acquired....
...ty as is needed for the proper
operation and improvement of the Florida Virtual School" necessarily incorporates
the ability to protect the trademarks that the school has acquired on behalf of the
State and continues to use and enjoy. § 1002.37(2), Fla. Stat. Therefore, section
1002.37 controls over the general DOS statutes and creates an exception to the
general rule that only the DOS is authorized to protect State-owned trademarks
against unlawful use or infringement....
...protect its legal rights, as well as school intellectual property from third-party
misappropriation and misuse, would be inconsistent with overall statutory
language that grants the trustees the authority to ensure the "proper operation and
improvement" of the school. § 1002.37(2), Fla....
...statutes, which only generally vest the authority to enforce State-owned trademarks
with the DOS. See Harris,
772 So. 2d at 1287; ConArt, Inc.,
504 F.3d at 1210.
Application to Other Enabling Statutes
Our interpretation of section
1002.37 constitutes a rational construction that
effectuates the broad grant of rights and powers to the Florida Virtual School by
the Legislature. It is simply not logical for a State entity to have the authority to
"acquire, enjoy, use, and dispose of patents, copyrights, and trademarks and any
licenses and other rights or interests thereunder or therein," §
1002.37(2)(c), Fla.
Stat., but then be powerless to protect that intellectual property from infringement.
Accordingly, we hold that where this State entity has been specifically granted
rights with regard to intellectual property as those liste...
