Ward v. Knox County Board of Education

869 F. Supp. 2d 860, 2012 WL 1409285, 2012 U.S. Dist. LEXIS 56566
CourtDistrict Court, E.D. Tennessee
DecidedApril 23, 2012
DocketNo. 3:11-CV-438
StatusPublished
Cited by2 cases

This text of 869 F. Supp. 2d 860 (Ward v. Knox County Board of Education) is published on Counsel Stack Legal Research, covering District Court, E.D. Tennessee primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ward v. Knox County Board of Education, 869 F. Supp. 2d 860, 2012 WL 1409285, 2012 U.S. Dist. LEXIS 56566 (E.D. Tenn. 2012).

Opinion

MEMORANDUM OPINION AND ORDER

THOMAS A. VARLAN, District Judge.

This civil action is before the Court on three motions: (1) the Motion to Dismiss Counts V, VI, and VIII of Plaintiffs’ Complaint on Behalf of Defendant Scott Bacon [Doc. 26]; the Motion to Dismiss on Behalf of Mary Kerr [Doc. 29]; and Defendant, Walsworth Publishing Co., Ine.’s Partial Motion to Dismiss Complaint or, in the Alternative, Motion for More Definite Statement [Doc. 36]. Plaintiff responded to all three motions [Docs. 32, 33, 34, 35, 40, 41], The Court has thoroughly considered the filings, and for the reasons stated herein, the Court will grant in part and deny in part the Motion to Dismiss Counts V, VI, and VIII of Plaintiffs’ Complaint on Behalf of Defendant Scott Bacon [Doc. 26], grant in part, deny in part, and deny as moot in the Motion to Dismiss on Behalf of Mary Kerr [Doc. 29], and grant in part, deny in part, and deny as moot in part Defendant, Walsworth Publishing Co., Inc.’s Partial Motion to Dismiss Complaint [862]*862or, in the Alternative, Motion for More Definite Statement [Doc. 36].

I. Background

Plaintiffs commenced this civil action on September 6, 2011, seeking emergency injunctive relief, a permanent injunction, and damages [Doc. 1]. The Court previously denied plaintiffs’ request for injunctive relief as well as plaintiffs’ request for sequestration of proceeds [Doc. 16].

Plaintiff Michael Scott Ward (‘Ward”) is citizen and resident of Knox County, Tennessee [Id. ¶ 1]. Plaintiff WeDo Fund-raising, Inc. (“WeDo Fundraising”) is a Tennessee corporation and Ward is its principal shareholder [Id. ¶ 2], Plaintiff PrintVenture, Inc. (“PrintVenture”) was a Tennessee corporation and Ward was its principal shareholder [Id. ¶ 3]. Ward, WeDo Fundraising, and PrintVenture all conduct business under the trade name Feredonna Communications (“Feredonna”) [Id. ¶ 4], Feredonna is a publisher with over eighteen years of experience in designing, branding, publishing, printing, and distributing fund-raising materials, as well as organizing, marketing, managing, and conducting fund-raising campaigns, including fund-raising campaigns for schools and school districts in Alabama, Georgia, Ohio, and Tennessee [Id. ¶¶ 5-6].

Defendant Knox County is a municipal corporation organized and existing as such under the laws of the State of Tennessee [Id. ¶ 8], Defendant Knox County Board of Education is an agency of Knox County and is vested with the management and control of the Knox County School system [Id. ¶ 7]. Plaintiff alleges it is the ultimate policy-making body with regard to all policy determinations in the operation of the school system [Id.]. Defendants Scott Bacon (“Bacon”) and Mary Kerr (“Kerr”) are both residents of Knox County, Tennessee, and employees of Knox County Schools [Id. ¶¶ 9-11]. Defendant Walsworth Publishing Company, Inc. (“Walsworth”) is a corporation formed under the laws of the state of Missouri and has its principal place of business there [Id. ¶ 12].

In 1994, “Knox County Schools awarded Feredonna the contract for a system-wide fundraising program centered around the sale of a coupon book” [Id. ¶ 15]. With respect to the coupon book program, and during a period of seventeen years, Feredonna’s role included assistance with merchant and sponsor recruitment, branded merchandise and materials, and other aspects of the program not traditionally provided by a printing company [Id. ¶ 17]. Feredonna designed a new format for the coupons and book design, introduced standardized branding and placement for merchant sponsors on the cover and throughout the book, tabbed coupons with merchant names, developed photo recognition to reward top-selling students, and developed styles guides to standardize wording and descriptions for the coupons [Id. ¶¶ 18-22], Feredonna alleges its “innovations enhanced the image of the coupon books,” which increased their value to Knox County Schools, and that Feredonna continues to use this “trade dress” [Doc. 1 ¶¶ 23-24]. Also, independent from the coupon book program, Feredonna contracted with Knox County Schools to provide other materials, including, for example, curriculum guides [Id. ¶ 16].

Feredonna alleges that it has used the trade name “School Coupons” on coupon book fund-raising products since at least 1994 [Id. ¶ 25]. Feredonna “sought and received federal trademark registration of the ‘School Coupons’ mark (Supplemental Register, serial number 75365161)” [Id. ¶ 26]. Knox County Schools and Jefferson County, Alabama, the two markets in which Feredonna produced and published [863]*863coupon book programs, were notified in writing that Feredonna was registering the “School Coupons” trade name, but neither contested the registration [Id. ¶¶ 27-28]. As early as 1998, “Feredonna began claiming copyright rights to the School Coupons® coupon books and their design, format, layout, and contents that they were producing for the Knox County Schools,” and did so allegedly with Knox County Schools’ knowledge and assent [Id. ¶¶ 29-30]. Knox County Schools allegedly “claimed no trademarks or copyrights related to the School Coupons® program produced by Feredonna for the Knox County Schools” [Id. ¶ 32]. Feredonna registered its copyright as well as the web domain “schoolcoupons.com” [Id. ¶¶ 31, 33]. Knox County Schools later registered the web domain “schoolcoupons.org,” and Feredonna claimed infringement and demanded that the domain be relinquished to Feredonna, a request with which Knox County Schools complied [Id. ¶¶ 34-36]. Feredonna also owns the web domain names “schoolcoupons.net” and “schoolcouponsúnfo” [Id. ¶ 37].

Allegedly, Feredonna published the School Coupons program for both private and parochial schools and school districts throughout East Tennessee, including Knox County Schools, as well as in Birmingham, Alabama, Cleveland, Ohio, and Nashville, Tennessee [Id. ¶¶ 38-39]. With respect to Knox County Schools, as the relationship developed, “an unwritten division of responsibilities also developed,” wherein “Knox County was responsible for merchant recruitment for the book inside Knox County, and Feredonna was responsible for merchant recruitment outside Knox County, and for any regional or national merchant accounts,” in addition to its role in designing, developing, and publishing the materials [Id. ¶ 40].

Plaintiffs allege that, at several events, Bacon “tried to claim credit for the School Coupons® program” [Id. ¶ 42]. Bacon allegedly referred to Feredonna as “merely the printer” of the book [Id. ¶ 43]. Ward allegedly corrected him when such statements were made in his presence, “noting that Feredonna developed, produced, and published the School Coupons® coupon book on behalf of its client, Knox County Schools, and that Bacon was an employee of Knox County Schools” [Id. ¶ 44].

In March 2008, a meeting was held between Feredonna and Knox County Schools to discuss the upcoming twentieth anniversary of the coupon program; Bacon, Kerr, Ward, and Alanna Fletcher, an employee of Ward’s, were present [Id. ¶¶ 45-46]. Ward allegedly “suggested that the 20th anniversary campaign provided an opportunity to raise the price of the School Coupons® book ... and to introduce a new discount card program that could be developed into a spin-off fundraising campaign” [Id. ¶ 47].

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Cite This Page — Counsel Stack

Bluebook (online)
869 F. Supp. 2d 860, 2012 WL 1409285, 2012 U.S. Dist. LEXIS 56566, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ward-v-knox-county-board-of-education-tned-2012.