Stephen H. Luther and Ryan T. Santurri are representing the Florida VirtualSchool, an online education provider created by the State of Florida, in a trademark infringement case against K12, Inc. and K12 Florida, LLC over the use of the FLVS and Florida VirtualSchool marks. The defendants in this litigation argued that Florida VirtualSchool does not own these marks and that only the Florida Department of State could enforce rights in these marks. This issue was decided by the Florida Supreme Court after a federal appellate court asked it to clarify Florida law on the matter. In posing the question to the Florida Supreme Court, the Eleventh Circuit U.S. Court of Appeals explained that the “issue, in this case, is an important one, as it affects the respective rights of various Florida agencies and departments with respect to intellectual property.”
In response to this request, the Florida Supreme Court issued a unanimous opinion holding that the Florida VirtualSchool has the right and authority to protect its trademarks in court and that those rights do not belong to the Florida Department of State. The Supreme Court’s opinion notes that if “third parties could wrongfully appropriate the Florida Virtual School trademarks without repercussions, the school would lose customers, contracts, and revenue, and its operation would be significantly compromised. Instead, the broad and unqualified language [of the Florida VirtualSchool statute] 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.” The Florida Supreme Court also held that other entities in the State of Florida that have been granted the same rights would also be able to enforce their trademarks.
Stephen Luther said that this “decision represents an important victory for Florida VirtualSchool and other governmental entities in the State of Florida. These entities are creating valuable assets for the State, and it is important that they have the ability to own and protect those assets on the State’s behalf.”