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Devry Inc. v. International University of Nursing

June 30, 2009

DEVRY INC. AND GLOBAL EDUCATION INTERNATIONAL INC., PLAINTIFFS,
v.
INTERNATIONAL UNIVERSITY OF NURSING D/B/A ROBERT ROSS INTERNATIONAL UNIVERSITY OF NURSING, DEFENDANTS.



The opinion of the court was delivered by: Judge Ronald A. Guzmán

MEMORANDUM OPINION AND ORDER

Plaintiffs have sued defendant for trademark infringement, unfair competition and its alleged violations of the Illinois Uniform Deceptive Trade Practices Act and the Illinois Consumer Fraud and Deceptive Business Practices Act. The case was tried to the Court from June 23-25, 2008. This Order constitutes the Court's findings of fact and conclusions of law.

Parties and Background

Plaintiff DeVry Inc. ("DeVry"), is a Delaware corporation located in Illinois and the ultimate parent company of plaintiff Global Education International Inc. ("Global"). (Def.'s Resp. Pls.' Proposed Findings of Fact ¶¶ 1, 4.) Global is a Barbados corporation located in Barbados and the parent company of Ross University School of Medicine, which is in Dominica, and Ross University School of Veterinary Medicine, which is in St. Kitts (collectively, "Ross University"). (Id. ¶¶ 3,4, 6, 7.) Ross University's administrative offices are in New Jersey. (Id. ¶ 5.) Defendant International University of Nursing ("IUON") is a Delaware limited liability corporation with an administrative office in New York. (Id. ¶ 9.)

In 1978, Dr. Robert Ross established a medical school in Dominica. (Id. ¶ 11.) In 1983, the school formally adopted the name Ross University School of Medicine. (Id.)

In 1981, Robert Ross established a school of veterinary medicine in Dominica. (Id. ¶ 12.) In 1983, he moved the school to St. Kitts and named it Ross University School of Veterinary Medicine. (Id.) Both schools were owned by Dominica Management, Inc., a company wholly owned by Ross. (PX 58 at D01283 (admitted Trial Tr. at 269).)

In February 2000, Ross sold ninety percent of his interest in Dominica Management, Inc. to Leeds Equity Partners III, L.P. and J.W. Childs Equity Partners II, L.P. for approximately $100 million. (Id. at D01283-01284.) The sale was memorialized in a Recapitalization Agreement, which Ross signed on February 19, 2000. (Id. at D01275, D01366.) Section 6.15(a) of the agreement states:

[Dominica Management, Inc. and Ross University] own and possess all right, title and interest in and to all Intellectual Property Rights created or developed by or under the direction or supervision of [Dominica Management, Inc. and Ross University] or [Robert Ross] relating to the business of [Dominica Management, Inc. and Ross University] or to the actual or demonstratively anticipated research or development conducted by [Dominica Management, Inc. and Ross University]. (Id. at D01323.) The term "Intellectual Property Rights" is defined to include "trademarks, service marks, trade dress, trade names, logos and corporate names and registrations and applications for registration thereof and Internet domain names together with all of the goodwill associated therewith." (Id. at D01350.)

In 2003, DeVry purchased all of the shares of Dominica Management, Inc. from the Leeds and Childs partnerships and Robert Ross, paying Ross $48 million for his remaining ten percent interest in the company. (Def.'s Resp. Pls.' Proposed Findings of Fact ¶¶ 22, 24.) After this sale, Robert Ross no longer had any connection to or affiliation with Ross University. (Id. ¶ 25.)

In May 2005, Robert Ross opened IUON in St. Kitts. (Pls.' Resp. Def.'s Proposed Findings of Fact ¶¶ 26, 28, 31.) In August 2005, IUON changed its name to "Robert Ross International University of Nursing," a name that it used until December 2007. (Def.'s Resp. Pls.' Proposed Findings of Fact ¶ 26.) IUON is not connected to or affiliated with DeVry, Global or Ross University. (Id. ¶ 10.)

The IUON campus is about a half-mile away from the Ross veterinary school and lies between it and Basseterre, the major city in St. Kitts. (Id. ¶¶ 29-30.) Thus, it is difficult to get to the Ross campus from Basseterre or the St. Kitts airport without passing IUON. (Id. ¶ 30.) There is a large sign in front of the Ross veterinary school that reads "ROSS UNIVERSITY School of Veterinary Medicine." (Id. ¶ 48; PX 15 (admitted Trial Tr. at 268-69).) From October 2005 until November of 2007, there was a large sign in front of defendant's campus that read "ROBERT ROSS International University of Nursing." (Def.'s Resp. Pls.' Proposed Findings of Fact ¶ 49; PX 15.)

Jurisdiction

Plaintiff seeks only injunctive relief, claims that IUON says are moot because it has stopped using "Robert Ross" as a trade name or mark. However, voluntary cessation of unlawful conduct does not necessarily moot a claim for injunctive relief. BMG Music v. Gonzalez, 430 F.3d 888, 893 (7th Cir. 2005). Rather, an injunction may still be appropriate "to ensure that the misconduct does not recur as soon as the case ends." Id. Such is the case here. The record shows that Robert Ross, IUON's chairman and founder, attaches his name to everything he does and has no qualms about changing IUON's name, having done so twice in its four-year existence. (Ross Dep. at 15, 18, 24-26.) Those facts, coupled with IUON's argument that it can make "fair and descriptive" use of Ross' name without violating plaintiffs' rights, establish that plaintiffs have live claims for injunctive relief.

The Court has jurisdiction over the trademark and federal unfair competition claims pursuant to 28 U.S.C. § 1338 and the state law claims pursuant to 28 U.S.C. § 1367. See Steele v. Bulova Watch Co., 344 U.S. 280, 281, 285 (1952)(holding that "a United States District Court has jurisdiction to award relief to an American corporation against acts of trade-mark infringement and ...


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