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Educational Impact, Inc. v. Scott

United States District Court, W.D. Kentucky, Louisville

September 22, 2017

EDUCATIONAL IMPACT, INC. PLAINTIFF
v.
TERRANCE M. SCOTT DEFENDANT

          MEMORANDUM OPINION

          CHARLES R. SIMPSON III, SENIOR JUDGE UNITED STATES DISTRICT COURT

         This matter is before the Court on motion of Plaintiff Educational Impact, Inc. (“Educational Impact”). Educational Impact apparently moves for a Federal Rules of Civil Procedure 12(b)(6) dismissal of Defendant Terrance M. Scott's Lanham Act Amended Counterclaim under the theory of laches. For the following reasons, Plaintiff's Motion to Dismiss Defendant's Lanham Act Amended Counterclaim will be DENIED.

         I. BACKGROUND

         Defendant Terrance M. Scott (“Dr. Scott”) is the Director of the University of Louisville's Center for Instructional and Behavioral Research in Schools, specializing in behavioral disorders. (Am. Countercl., DN 20, ¶ 2.) Dr. Scott alleges that he is a founder of a technique for addressing challenging student conduct called “the positive behavior interventions and support movement” (“PBIS”). (Id.) According to Dr. Scott, he has provided training to school districts around the country to teach his technique. (Id.)

         Pursuant to an alleged contract with the Ohio Department of Education (“ODE”), Dr. Scott presented at a seminar in Columbus, Ohio on September 13, 2004. (Am. Countercl., DN 20, ¶ 8.) Dr. Scott agreed to allow the ODE to film his presentation, but claims that this permission was conditioned on the ODE's agreement that the film would be used only for in-house, non-commercial instruction. (Id., ¶ 9.) On the day of his presentation, Dr. Scott signed a “Talent Release” (“release”) granting Plaintiff Educational Impact “the right and permission to copyright, in their own name or otherwise, use or publish the images in which [Dr. Scott] may be included.” (Compl., DN 1-2, Ex. 2.)[1]

         Educational Impact is a Pennsylvania corporation that sells educational development materials to school districts for profit. (Am. Countercl., DN 20, ¶ 3.) Educational Impact claims to develop, create, market, and sell “online professional development programs and services that include programs and services specifically for teacher evaluation and training.” (Compl., DN 1, ¶ 7.)

         Dr. Scott alleges that Educational Impact relied on “deceptive solicitation” to procure his signature on the release. (Am. Countercl., DN 20, ¶ 14.) He claims that an ODE employee ran up to him seconds before he began his presentation and asked him to sign this release. (Id., ¶ 10.) He further claims that he believed the release was a standard video release agreement between himself and the ODE. (Id., ¶ 12.) Dr. Scott maintains that he remained “completely unaware” for many years after the seminar that Educational Impact had filmed his presentation for their commercial use. (Id.)

         Dr. Scott claims to have discovered Educational Impact's use of his seminar in 2010. (Am. Countercl., DN 20, ¶¶ 19-21.) Dr. Scott was allegedly contacted by a school district employee of Loudoun County, Virginia, who stated that an Educational Impact employee had informed her that Dr. Scott was working with Educational Impact. (Id., ¶¶ 19-20.) Dr. Scott claims that soon after his conversation with the Loudoun County school district employee, he visited Educational Impact's website and discovered a clip of his filmed 2004 seminar and his corresponding PowerPoint slides. (Id., ¶ 22.)

         On June 25, 2010, Dr. Scott emailed Scott Elias (“Elias”), an Educational Impact salesperson, about his conversation with the Loudoun employee and subsequent discovery of his video and PowerPoint slides on Educational Impact's website. (Am. Countercl., DN 20, ¶ 25.) He further stated, “I'm not sure what all your program consists of or how you came by the videos but I do not lend my name, materials, or other likenesses to for-profit ventures.” (Id.) Elias responded by email on June 28, 2010 with an attachment of Dr. Scott's signed, 2004 release, stating that “[t]he language in the release is straightforward and provides EI with the unlimited rights to use the video in our online programs or elsewhere.” (Id., ¶ 26.)

         Upon receipt of Elias' email response, Dr. Scott purportedly called a contact at the ODE to explain his situation. (Am. Countercl., DN 20, ¶ 32.) Dr. Scott claims that this contact assured him that the ODE had not granted Educational Impact permission to use Dr. Scott's lecture for their own purposes. (Id., ¶ 33.) Further, Dr. Scott asserts that the ODE would “ensure that [Educational Impact] removed Dr. Scott's image and presentation from its website.” (Id., ¶ 34.)

         By Dr. Scott's assertions, he believed that the matter was resolved in 2010 with the aid of the ODE. He also alleges that he had no knowledge that Educational Impact had any specific intent to sell his video, image, or property for profit. (Am. Countercl., DN 20, ¶ 23.) Rather, he claims that he only knew that Educational Impact was representing a false affiliation. (Id., ¶ 24.) Then, in 2016, a representative of the Jefferson County Public Schools (“JCPS”) in Kentucky allegedly contacted Dr. Scott and asked him to review a training program they had purchased from Educational Impact. (Id., ¶ 36.) Upon review, Dr. Scott maintains he discovered “several lengthy excerpts” of one of his PBIS presentations. (Id., ¶ 38.) Dr. Scott alleges that he then reviewed Educational Impact's website and found his name as an “affiliated expert.” (Id., ¶ 39.)

         In July of 2017, Dr. Scott allegedly emailed Educational Impact concerning his most recent discovery and subsequently hired an attorney, who then sent a formal cease-and-desist letter to Educational Impact. (Id., ¶¶ 45-46.) In response, Educational Impact filed a Complaint for Declaratory Judgment for one count of the lawful use of Dr. Scott's identity and material for Educational Impact's commercial use. (Compl., DN 1.) Subsequently, Dr. Scott brought his Amended Counterclaim for violations of the Lanham Act, statutory right of publicity under Kentucky law, common law misappropriation of name and likeness for commercial gain, declaratory judgment, unjust enrichment, and punitive damages. (Am. Countercl., DN 20.)

         Plaintiff Educational Impact now seeks dismissal of Count I of Defendant Dr. Scott's Amended Counterclaim, the alleged violation of the Lanham Act, under the theory of laches. (Pl.'s Mot. To Dismiss, DN 23.)

         II. ...


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