AMERICAN INTERCONTINENTAL UNIVERSITY, INC. v. AMERICAN UNIVERSITY
1:17-cv-01815
D.D.C.Aug 14, 2017Background
- Plaintiffs: Career Education Corporation (CEC) and its subsidiary American InterContinental University (Georgia/Delaware entities) seek declaratory judgments of noninfringement and related relief against American University (AU).
- AU is a D.C. non-profit university that recruits nationally and has some contacts with Illinois (college fairs, high school visits, online courses, vendors), which plaintiffs say involve AU's mark.
- Procedural history: Plaintiffs filed suit after AU opposed CEC’s PTO trademark application claiming likelihood of confusion; plaintiffs obtained jurisdictional discovery. AU moved to dismiss for lack of personal jurisdiction in Illinois.
- Central legal dispute: whether Illinois courts may exercise specific personal jurisdiction over AU in a declaratory-judgment noninfringement action—whether the relevant contacts are AU’s trademark use in Illinois or AU’s enforcement actions (e.g., opposition filed in Virginia).
- Evidence: No cease-and-desist letters or enforcement actions directed at Illinois residents; AU’s PTO opposition was filed in Virginia. Plaintiffs offered no evidence of enforcement targeted at Illinois.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Illinois has specific personal jurisdiction over AU in a declaratory-judgment action for noninfringement | AU’s use of its trademark in Illinois (recruiting, online courses, vendors) is sufficiently related to plaintiffs’ claim to establish jurisdiction | Only AU’s enforcement-related conduct (threats, oppositions, cease-and-desists) is relevant; AU has not purposefully directed enforcement at Illinois | Held: No specific jurisdiction — plaintiffs failed to show AU purposefully directed enforcement activities at Illinois |
| Whether plaintiffs may rely on AU’s general use/marketing in Illinois to satisfy “arising out of” requirement | Plaintiffs: whole course of AU’s trademark use in Illinois is sufficiently related | AU: declaratory-judgment claims arise from enforcement conduct, not mere trademark use | Held: Court adopts enforcement-focused approach; AU’s Illinois marketing/use insufficient |
| Whether AU’s PTO opposition supports jurisdiction in Illinois | Plaintiffs: PTO opposition demonstrates AU’s enforcement activity | AU: PTO opposition was filed in Virginia and not targeted to Illinois | Held: PTO opposition alone does not supply contacts with Illinois |
| Whether transfer is appropriate instead of dismissal | Plaintiffs requested transfer but proposed no alternative forum yet | AU reserved right to object to transfer destination | Held: Court lacks personal jurisdiction but will consider transfer; plaintiffs ordered to propose forum by set deadline |
Key Cases Cited
- Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324 (Fed. Cir. 2008) (in declaratory-judgment suits, relevant contacts are defendant’s enforcement activities, not its business activities)
- International Shoe Co. v. Washington, 326 U.S. 310 (U.S. 1945) (minimum contacts test for personal jurisdiction)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (U.S. 1985) (purposeful availment/targeting test for specific jurisdiction)
- Radio Sys. Corp. v. Accession, Inc., 638 F.3d 785 (Fed. Cir. 2011) (enforcement conduct needed to support jurisdiction in intellectual-property declaratory-judgment actions)