Instructure v. Canvas Technologies
2:21-cv-00454
| D. Utah | Jan 5, 2022Background
- Instructure has long-used and federally registered the CANVAS mark (LMS launched 2010) and developed integrated ePortfolio and Portfolium recruiting/portfolio services targeting students and employers.
- Branded Holding Group owned canvas.com since 1997; Jumpstart (rebranded to Canvas Tech) leased/acquired canvas.com in 2021 and rebranded to "Canvas."
- Canvas Tech acquired certain CANVAS trademark rights from Colby Smith (including the ’811 registration for a stylized/industry-specific mark) after rebranding.
- Instructure sent cease-and-desist communications, then sued Canvas Tech (July 2021) and moved for a preliminary injunction to stop Canvas Tech’s use of the CANVAS mark.
- The court found Instructure likely to prevail on its Lanham Act infringement claim, granted a preliminary injunction (bond $100,000), denied Canvas Tech’s motion to dismiss the cybersquatting claim, and denied Instructure’s motion to dismiss Canvas Tech’s counterclaims.
- The court took judicial notice of the canvas.com 1997 registration date and certain DomainTools/WHOIS history entries but limited the legal effect of those entries to their face value (did not decide whether a re-registration occurred).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement / likelihood of confusion | Instructure: long, strong use of CANVAS; overlapping services (ePortfolios/Portfolium vs. Canvas Tech recruiting), similar branding => likely confusion | Canvas Tech: different services/markets; prior users (Ms. Smith, Jobvite) limit Instructure’s exclusivity | Court: Found Instructure likely to succeed; all six likelihood-of-confusion factors favor Instructure; preliminary injunction granted |
| Irreparable harm and injunction balance | Instructure: harm to goodwill, confusion, prompt enforcement supports irreparable harm | Canvas Tech: delay and third-party prior users (Jobvite, Smith) rebut irreparable harm | Court: Presumed irreparable harm upon likelihood of success; balance of hardships favors Instructure; injunction appropriate |
| ACPA cybersquatting – meaning of "at the time of registration" | Instructure: "registration" includes re-registrations; DomainTools entries show registrar/registrant change in 2021 during mark’s fame | Canvas Tech: "registration" should mean original/initial 1997 registration; Domains By Proxy entries do not prove re-registration | Court: Adopted interpretation that ACPA includes re-registrations; denied motion to dismiss cybersquatting claim because DomainTools entries plausibly allege a re-registration during Instructure’s fame |
| Motion to dismiss Canvas Tech’s counterclaims | Instructure: Canvas Tech cannot allege superior common-law rights (priority) based on Ms. Smith’s limited use; therefore counterclaims fail | Canvas Tech: Alleged prior use and ownership (federal registration and common-law use) support counterclaims | Court: Denied motion to dismiss; priority dispute is factual and not appropriate to resolve at Rule 12(b)(6) stage; UUCA claim adequately pleaded without an "infringement-plus" requirement |
Key Cases Cited
- Roda Drilling Co. v. Siegal, 552 F.3d 1203 (10th Cir. 2009) (four-factor preliminary injunction standard)
- Utah Lighthouse Ministry v. Foundation for Apologetic Info. & Res., 527 F.3d 1045 (10th Cir. 2008) (ACPA/cybersquatting elements)
- Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir. 2002) (six-factor likelihood-of-confusion test)
- Hornady Mfg. Co. v. Doubletap, Inc., 746 F.3d 1001 (10th Cir. 2014) (similarity of marks as primary factor in confusion analysis)
- Jysk Bed'N Linen v. Dutta-Roy, 810 F.3d 767 (11th Cir. 2015) (interpreting "registration" to include re-registrations under the ACPA)
- Storey v. Cello Holdings, LLC, 347 F.3d 370 (2d Cir. 2003) (supporting view that re-registrations count under ACPA)
- GoPets Ltd. v. Hise, 657 F.3d 1024 (9th Cir. 2011) (contrasting view limiting "registration" to initial registration)