International Information Systems Security Certification Consortium, Inc. v. Security University, LLC
823 F.3d 153
2d Cir.2016Background
- ISC2 is the owner of the CISSP® registered certification mark, used to indicate individuals who meet ISC2’s certification standards and pass its exam.
- Security University (SU), run by Sondra Schneider (a CISSP), offered CISSP exam-prep courses and identified instructors as CISSP-certified; SU also used the phrases “Master CISSP” or “CISSP Master” in some advertisements (2010–2012).
- ISC2 sued SU for certification-mark infringement (15 U.S.C. § 1114), false designation/false advertising (15 U.S.C. § 1125(a)), dilution (15 U.S.C. § 1125(c)), and CUTPA unfair competition.
- The district court granted summary judgment to SU, holding SU’s use was nominative fair use under the Ninth Circuit three-part test and concluding only source confusion mattered for infringement of a certification mark.
- The Second Circuit vacated summary judgment on infringement, false designation, and CUTPA claims (affirming only dismissal of dilution), holding the district court misapplied the law: nominative fair use is not an affirmative defense and courts must apply the Polaroid factors plus nominative-use considerations and recognize multiple types of confusion (sponsorship/affiliation as well as source).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether SU’s use of “Master CISSP” infringed ISC2’s certification mark | SU’s ads likely confuse the public about ISC2’s sponsorship/endorsement and thus infringe and cause false designation | Use was nominative fair use (Ninth Circuit test): necessary to identify CISSP, used only as needed, and did not suggest ISC2 sponsorship | Vacated district court judgment; remanded to evaluate infringement using Polaroid factors plus nominative-use factors and considering sponsorship/affiliation confusion (not limited to source) |
| Whether nominative fair use is an affirmative defense to Lanham Act infringement | ISC2: nominative use should not automatically bar liability where confusion exists | SU: nominative fair use justified dismissal under Ninth Circuit approach | Court: nominative fair use is not an affirmative defense; it does not supplant likelihood-of-confusion analysis under Polaroid |
| Proper legal test to assess likelihood of confusion in nominative-use cases | ISC2: apply Polaroid factors and consider certification-mark-specific infringement paths | SU: Ninth Circuit three-part nominative fair use test can replace multi-factor confusion inquiry | Court: Polaroid remains primary; courts must also consider three nominative-use factors (necessity, amount of mark used, conduct implying sponsorship) alongside Polaroid factors |
| Whether protection for certification marks is limited to source-confusion scenarios | ISC2: certification marks can be infringed in multiple ways (including implying sponsorship/creating new lines) | SU: certification marks by certified users rarely cause source confusion; thus nominative use is safe | Court: rejection of source-only view; certification marks can be infringed in many ways and confusion as to sponsorship/affiliation is legally relevant |
Key Cases Cited
- New Kids on the Block v. News Am. Publ’g Inc., 971 F.2d 302 (9th Cir. 1992) (articulated three-part nominative fair use test)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (sets the eight-factor likelihood-of-confusion test)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (endorses nominative-use principles; defendant may accurately describe branded product so long as no confusion)
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (explains statutory expansion beyond source-only confusion)
- Weight Watchers Int’l, Inc. v. Luigino’s, Inc., 423 F.3d 137 (2d Cir. 2005) (confusion as to endorsement/sponsorship can support infringement even when source is clear)
- Century 21 Real Estate Corp. v. LendingTree, Inc., 425 F.3d 211 (3d Cir. 2005) (treats nominative fair use as an affirmative defense with three-part test)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) (Supreme Court treating classic descriptive fair use as statutory affirmative defense)
- Am. Bd. of Psychiatry & Neurology, Inc. v. Johnson-Powell, 129 F.3d 1 (1st Cir. 1997) (certification-mark misuse can infringe when false certification claimed)