THE FLORIDA VIRTUAL SCHOOL, еtc., Appellant, vs. K12, INC., et al., Appellees.
No. SC13-1934
Supreme Court of Florida
[September 18, 2014]
LEWIS, J.
This case is before the Court to answer a question under Florida law certified by the United States Court of Appeals for the Eleventh Circuit that is essential in determining an action pending in that court and for which there appears to be no controlling Florida precedent. We have jurisdiction.
Does Florida VirtualSchool‘s statutory authority to “acquire, enjoy, use, and dispose of ... trademarks and any licenses and other rights or interests thereunder or therein” necessarily include the authority to bring suit to protect those trademarks, or is that authority vested only in the Department of State?
Because the statute quoted by the Eleventh Circuit includes additional language that is relevant to our resolution of the issue presented, and that federal court specifically stated that our analysis is not limited, we rephrase the certified question as follows:
Does the Florida Virtual School‘s statutory authority to “acquire, enjoy, use, and dispose of ... trademarks and any licenses and other rights or interests thereunder or therein,” and the designation of its board of trustees as a “body corporate with all the powers of a body corporate and such authority as is needed for the proper operation and improvement of the Florida Virtual School,” necessarily include the authority to file an action to protect those trademarks?
For the reasons expressed below, we answer the question in the affirmative.
FACTS AND BACKGROUND INFORMATION
In the order dismissing the action filed by the Florida Virtual School against K12, Inc., and K12, Florida, LLC (collectively “K12“), the United States District Court for the Middle District of Florida provided a brief history of the school in question:
In 1997, Plaintiff [the Florida Virtual School] was founded under the name “Florida On-Line High School.” Plaintiff is an educational institution whose mission is to provide online courses to students throughout the United States and foreign countries. In June 2000, Plaintiff became an agency of the State of Florida pursuant to Section 228.082 of the Florida Statutes. In 2002, Section 228.082 of the
Florida Statutes was amended and renumbered as Section 1002.37 of the Florida Statutes. At this time, Plaintiff‘s name was changed to “Florida VirtualSchool.”
The opinion of the Elevеnth Circuit provides the relevant facts of the action filed by the Florida Virtual School against K12:
Florida VirtualSchool was “established for the development and delivery of online and distance learning education.”
Fla. Stat. § 1002.37 . By January of 2002, it was using the marks “FLVS” and “FLORIDA VIRTUALSCHOOL” in connection with its online education program, marks which it registered with the United States Patent and Trademark Office. In 2003, the State of Florida began a pilot program that allowed private companies to compete with Florida VirtualSchool and serve a limited number of students. K12—a national online education provider—was part of that program.Florida VirtualSchool alleges that K12 infringed on its trademarks by causing actual market confusion in a variety of ways. First, K12 adopted the name “Florida Virtual Academy” and “FLVA” for its services in Florida. And, after the pilot program became permanent, it also began using the name “Florida Virtual Program” and “FLVP.” Second, K12 has paid for a sponsored listing on http://www.flvs.com—a website owned by Name Administration, Inc.—to divert customers away from Florida VirtualSchool‘s website (http://www.flvs.net). Third, the website for K12‘s Florida Virtual Program is similar in both design and color scheme to the website for Florida VirtualSchool.
On May 18, 2011, Florida VirtualSchool sued K12 for trademark infringement under both the Lanham Act, see
15 U.S.C. § 1051 et seq. , and Florida common law. [n.2] K12 filed a motion for summary judgment or, alternatively, to dismiss for lack of standing.
[N.2.] Florida VirtualSchool also brought a claim of cyber-piracy against Name Administration, Inc., but voluntarily dismissed that claim.
K12 asserted that the Florida Virtual School had no standing because the authority to file an action with regard to the trademarks was vested exclusively in the Florida Department of State (DOS). In support of this contention, K12 relied upon language in the Florida Virtual School‘s enabling statute which provides that all school trademarks are owned by the State.
On appeal, the Eleventh Circuit concluded that this matter involves an issue of first impression, and that the parties had presented reasonable arguments with regard to whether the Florida Virtual School possessed standing to file an action to protect the trademarks. Fla. VirtualSchool, 735 F.3d at 1273-74. The Eleventh Circuit concluded that this case “affects the respective rights of various Florida
ANALYSIS
Relevant Statutes and Standard of Review
An agency created by statute does not possess any inherent powers. Rather, the agency is limited to the powers that have been granted, either expressly or by necessary implication, by the statute that created the agency. St. Regis Paper Co. v. State, 237 So. 2d 797, 799 (Fla. 1st DCA 1970). The statutes that pertain to the issue here provide, in relevant part:
286.021. Dеpartment of State to hold title to patents, trademarks, copyrights, etc.
The legal title and every right, interest, claim or demand of any kind in and to any patent, trademark or copyright, or application for the same, now owned or held, or as may hereafter be acquired, owned and held by the state, or any of its boards, commissions or agencies, is hereby granted to and vested in the Department of State for the use and benefit of the state; and no person, firm or corporation shall be entitled to use the same without the writtеn consent of said Department of State.
286.031. Authority of Department of State in connection with patents, trademarks, copyrights, etc.
The Department of State is authorized to do and perform any and all things necessary to secure letters patent, copyright and trademark on any invention or otherwise, and to enforce the rights of the state therein; to license, lease, assign, or otherwise give written consent to any person, firm or corporation for the manufacture or use thereof, on a royalty basis, or for such оther consideration as said
department shall deem proper; to take any and all action necessary, including legal actions, to protect the same against improper or unlawful use or infringement, and to enforce the collection of any sums due the state and said department for the manufacture or use thereof by any other party; to sell any of the same and to execute any and all instruments on behalf of the state necessary to consummate any such sale; and to do any and all other acts neсessary and proper for the execution of powers and duties herein conferred upon said department for the benefit of the state.
1002.37. The Florida Virtual School
(2) The Florida Virtual School shall be governed by a board of trustees comprised of seven members appointed by the Governor to 4-year staggered terms. The board of trustees shall be a public agency entitled to sovereign immunity pursuant to s. 768.28, and board members shall be public officers who shall bear fiduciary responsibility for the Florida Virtual School. The board of trustees shall have the following powers and duties:
. . . .
(b) The board of trustees shall be responsible for the Florida Virtual School‘s development of a state-of-the-art technology-based education delivery system that is cost-effective, educationally sound, marketable, and capable of sustaining a self-sufficient delivery system through the Florida Education Finance Program.
(c) The board of trustees shall aggressively seek avenues to generate revenue to support its future endeavors, and shall enter into agreements with distance learning providers. The boаrd of trustees may acquire, enjoy, use, and dispose of patents, copyrights, and trademarks and any licenses and other rights or interests thereunder or therein. Ownership of all such patents, copyrights, trademarks, licenses, and rights or interests thereunder or therein shall vest in the state, with the board of trustees having full right of use and full right to retain the revenues derived therefrom. . . .
. . . . The board of trustees shall be a body corporate with all the powers of a body corporate and such authority as is needed for the proper operation and imрrovement of the Florida Virtual School.
Each statute addresses trademarks that are owned by the State. However, that does not end the analysis. The enabling statute for the Florida Virtual School and the statutes under which the DOS operates present a tension with regard to the scope of authority granted to the school. For example, sections 286.021 and 286.031 provide that the DOS is authorized to do and perform any and all things necessary to generally secure letters patent, copyright and trademark on any invention or otherwise, аnd trademarks generally owned by the State may not be used by a corporation without the written consent of the DOS. However, section 1002.37 specifically establishes a board of trustees to govern the Florida Virtual School, designates the board as “a body corporate,” and further specifically authorizes the board to acquire, enjoy, and use trademarks “and any licenses and other rights or interests thereunder or therein.”
Additionally, section 286.031 provides that the DOS is generally authorized to sell trademarks. However, section 1002.37 provides that the Florida Virtual School board of trustees may “dispose of” trademarks.
The overlapping language with regard to the respective rights and duties of the Florida Virtual Sсhool and the DOS creates a need to interpret the extent of the relationship and powers involved. Specifically at issue is the field of operation for the school with respect to the trademarks it acquires on behalf of the State. Accordingly, it is necessary to apply principles of statutory construction to determine whether the Florida Statutes provide the Florida Virtual School a basis for the authority to file actions for infringement of the school‘s trademarks. See Polite v. State, 973 So. 2d 1107, 1111 (Fla. 2007) (“As with all cases of statutory construction, it is the Court‘s purpose to effectuate legislative intent.“).
Principles of Statutory Construction
To discern legislative intent, a court must look first and foremost at the actual language used in the statute. Moreover, a “statute should be interpreted to give effect to every clause in it, and to accord meaning and harmony to all of its parts.” Jones v. ETS of New Orleans, Inc., 793 So. 2d 912, 914-15 (Fla. 2001) (quoting Acosta v. Richter, 671 So. 2d 149, 153-54 (Fla. 1996)).
Larimore v. State, 2 So. 3d 101, 106 (Fla. 2008) (citation omitted). When reconciling statutes that may appear to conflict, the rules of statutory construction provide that a specific statute will control over a general statute, see State v. J.M., 824 So. 2d 105, 112 (Fla. 2002), and a more recently enacted statute will control over older statutes. See Palm Bch. Cnty. Canvassing Bd. v. Harris, 772 So. 2d 1273, 1287 (Fla. 2000); see also ConArt, Inc. v. Hellmuth, Obata + Kassabaum, Inc., 504 F.3d 1208, 1210 (11th Cir. 2007). With regard to the latter rule, this Court has explained “[t]he more recently enacted provision may be viewed as the clearest and most recent expression of legislative intent.” Harris, 772 So. 2d at 1287.
The Plain Language of Section 1002.37
The plain language of section 1002.37(2) provides that the Florida Virtual School‘s board of trustees “shall be a body corporate with all the powers of a body
The authority to file legal actions is the first enumerated power granted to corporations by the Florida Statutes. See
Further, a number of statutes that grant an entity all the powers of a body corporate without limitation also provide an illustrative list of powers that the grant entails, and the ability to file legal actions is routinely included in that list. See, e.g.,
Moreover, the enabling statute clearly grants the board of trustees “such authority as is needed for the proper operation and improvement of the Florida Virtual School.”
Furthermore, when viewed in the historical context, it is logical and consistent to conclude that the Legislature chose to grant broad powers to the school. When the Florida Virtual School was designated as a public agency in 2000 (under the name “Florida On-Line High School“), ch. 2000-224, § 1, Laws of Fla., the board of trustees was charged with the development and delivery of a relatively new form of education—online and distance learning. The enabling statute currently provides: “The board of trustees shall be responsible for the Florida Virtual School‘s development of a state-of-the-art technology-based education delivery system that is cost-effective, educationally sound, marketable, and capable of sustaining a self-sufficient delivery system through the Florida
The Legislature reаsonably could have concluded that the trustees would possess a level of expertise beyond that of the DOS with respect to the development of the technology for the Florida Virtual School. Thus, the board of trustees would be better suited to monitor the use of this State-owned intellectual property and safeguard it against infringement. Moreover, because section 1002.37 does not require the Florida Virtual School to notify the DOS whenever it secures a trademark, copyright, or patent (as it clearly has the right and power tо do), it is uncertain as to how the DOS could continually monitor school intellectual property for possible infringement. The lack of a notification requirement reflects a determination by the Legislature that the Florida Virtual School would have a degree of independence from the DOS with respect to intellectual property acquired by the school.
Finally, although the enabling statute expressly and reasonably provides that the trademarks acquired by the Florida Virtual School are owned by the State, and section 286.021 prоvides that legal title to property owned by the State vests in the DOS, the trustees of the Florida Virtual School have the clear, express authority to
The Specific, Later-Enacted Statute
The other rules of statutory construction also support our conclusion that the Florida Virtual School possesses standing under its enabling statute to file a trademark infringement action. Section 286.031 generally governs trademarks that are held or owned by the State, and authorizes the DOS to protect those trademarks against “improper or unlawful use or infringement.”
Further, the Florida Virtual School‘s enabling statute is more recent than the DOS statutes. The statute that designated the Florida Virtual School to be a public agency was enacted in 2000 (under the name “Florida On-Line High School“). See ch. 2000-224, § 1, Laws of Fla. The DOS statutes were enacted in 1943, see ch. 21959, §§ 1-2, Laws of Fla. (1943),2 and have not been amended since 1979—
Thus, the 1979 Florida Legislature likely could not have envisioned “virtual” public schools, or that a student could graduate from high school without attending classes in a brick-and-mortar structurе. It is reasonable to conclude that the Legislature in 2000 intended to give this new concept agency as much autonomy as possible to succeed in what was a cutting-edge educational endeavor. Requiring the Florida Virtual School to seek assistance from a different State agency to protect its legal rights, as well as school intellectual property from third-party misappropriation and misuse, would be inconsistent with overall statutory language that grants the trustees the authority to ensure the “proper operation and improvement” of the school.
Application to Other Enabling Statutes
Our interpretation of section 1002.37 constitutes a rational construction that effectuates the broad grant of rights and powers to the Florida Virtual School by the Legislature. It is simply not logical for a State entity to have the authority to “acquire, enjoy, use, and dispose of patents, copyrights, and trademarks and any licenses and other rights or interests thereunder or therein,”
CONCLUSION
Based on thе foregoing, we answer the rephrased certified question in the affirmative. We hold that the Florida Virtual School‘s statutory authority to “acquire, enjoy, use, and dispose of ... trademarks and any licenses and other rights or interests thereunder or therein,” and the designation of its board of trustees as a “body corporate with all the powers of a body corporate and such authority as is needed for the proper operation and improvement of the Florida
It is so ordered.
LABARGA, C.J., and PARIENTE, QUINCE, CANADY, POLSTON, and PERRY, JJ., concur.
NOT FINAL UNTIL TIME EXPIRES TO FILE REHEARING MOTION, AND IF FILED, DETERMINED.
Certified Question of Law from the United States Court of Appeals for the Eleventh Circuit - Case No. 12-14271
Stephen Hart Luther and Ryan Thomas Santurri of Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., Orlando, Florida, and Frank Charles Kruppenbacher, General Counsel, Florida Virtual School, Orlando, Florida, for Appellant
Stephanie Leigh Carman of Hogan Lovells US LLP, Miami, Florida, and Steven P. Hollman and Catherine E. Stetson of Hogan Lovells US LLP, Washington, District of Columbia, for Appellees