               Case: 12-14271      Date Filed: 10/10/2013     Page: 1 of 9


                                                                             [PUBLISH]

                 IN THE UNITED STATES COURT OF APPEALS

                          FOR THE ELEVENTH CIRCUIT
                       _________________________________

                                  No. 12-14271
                       _________________________________

                     D.C. Docket No. 6:11-cv-00831-GAP-KRS

FLORIDA VIRTUALSCHOOL,
a Florida Educational Institution,
                                                                     Plaintiff-Appellant,

                                          versus

K12, INC.,
a Delaware Corporation,
K12 FLORIDA, LLC,
a Florida Limited Liability Company,
                                                       Defendants-Appellees.
                       _________________________________

                     Appeal from the United States District Court
                         for the Middle District of Florida
                      _________________________________

                                   (October 10, 2013)

Before DUBINA, JORDAN, and BALDOCK, * Circuit Judges.

JORDAN, Circuit Judge:



*
  Honorable Bobby R. Baldock, United States Circuit Judge for the Tenth Circuit, sitting by
designation.
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       Given the increasing popularity of online education and its growing use in

the K-12 segment, 1 it is probably not a surprise to see monetary disputes between

competitors in that industry end up in court. In this case, Florida VirtualSchool, a

Florida state agency, appeals the district court’s dismissal of its trademark

infringement suit against K12, Inc. and K12 Florida, LLC (collectively “K12”) for

lack of standing. The issue before us is whether Florida VirtualSchool is authorized

under Florida law to assert these trademark infringement claims, or whether that

authority lies exclusively with Florida’s Department of State. After review, and

with the benefit of oral argument, we find that the relevant Florida law is

ambiguous on this issue, and that we would greatly benefit from the guidance of

the Florida Supreme Court.

                                             I

       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


       1
         See, e.g., Matthew Lynch, K-12 Online Learning as a Life Skill, THE HUFFINGTON POST
BLOG (Sept. 26, 2013, 3:29 PM), http://www.huffingtonpost.com/matthew-lynch-edd/k-12-
online-learning-as-a_b_3997854.html.

                                             2
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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. 2 K12 filed a motion for summary judgment or, alternatively, to

dismiss for lack of standing. The district court concluded as a matter of law that

Florida VirtualSchool was not the legal owner of the trademarks in question under

Florida law and did not have standing to bring suit under the Lanham Act. It

therefore dismissed the complaint without prejudice. See Florida VirtualSchool v.



      2
         Florida VirtualSchool also brought a claim of cyber-piracy against Name
Administration, Inc., but voluntarily dismissed that claim.

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K12, Inc., No. 6:11-cv-831-Orl-31KRS, 2012 WL 2920998 (M.D. Fla. July 16,

2012). This appeal followed.



                                         II

      We review de novo a district court’s dismissal for lack of standing. See

Stalley ex rel. United States v. Orlando Reg’l Healthcare Sys., 524 F.3d 1229,

1232 (11th Cir. 2008). We also exercise de novo review over the district court’s

interpretation of state law. See Venn v. St. Paul Fire and Marine Ins. Co., 99 F.3d

1058, 1066 (11th Cir. 1996).

      “To bring a trademark infringement claim under the Lanham Act, a plaintiff

must hold a valid trademark.” Natural Answers, Inc. v. SmithKline Beecham Corp.,

529 F.3d 1325, 1329 (11th Cir. 2008). In a case like this one, the trademark’s

owner or successor in interest has standing to sue. See 15 U.S.C. § 1114 (stating

that remedies are available to the registrant); 11 U.S.C. § 1127 (defining

trademark’s “registrant” to include “the legal representatives, predecessors,

successors and assigns of such . . . registrant”). See also Gaia Technologies, Inc. v.

Reconversion Technologies, Inc., 93 F.3d 774, 777 (Fed. Cir. 1996) (holding that a

party lacks standing to assert a trademark infringement claim “[a]bsent ownership

of the intellectual property”); Quabuag Rubber Co. v. Fabiano Shoe Co., Inc., 567

F.2d 154, 159 (1st Cir. 1977) (holding that an exclusive licensee had standing to



                                          4
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sue under the Lanham Act, but a non-exclusive licensee did not); DEP Corp. v.

Interstate Cigar Co., Inc., 622 F.2d 621, 623-24 (2d Cir. 1980) (same). And,

although federal law provides a cause of action for trademark infringement, the

matter of who owns a trademark is ordinarily determined by state law. See Country

Mutual Ins. Co. v. Am. Farm Bureau Federation, 876 F.2d 599, 601 (7th Cir.

1989); Gibraltar, P.R., Inc. v. Otoki Group, Inc., 104 F.3d 616, 619 (4th Cir.

1997).

      Under Florida law, “[a]n agency’s powers are limited to those conferred by

the Legislature.” Schindelar v. Fla. Unemployment Appeals Comm’n, 31 So. 3d

903, 905 (Fla. 1st DCA 2010). Cf. FLA. STAT. § 120.52(8) (“An agency may adopt

only rules that implement or interpret the specific powers and duties granted by the

enabling statute.”). With respect to trademarks, Florida VirtualSchool is authorized

by statute to “acquire, enjoy, use, and dispose of . . . trademarks and any licenses

and other rights or interests thereunder or therein.” FLA. STAT. § 1002.37(2)(c). But

“[o]wnership of all such . . . trademarks, licenses, and rights or interest thereunder

or therein shall vest in the state with [Florida VirtualSchool] having full right of

use and full right to retain the revenues derived therefrom.” Id. (emphasis added).

      A different Florida statute generally provides that the Department of State is

vested with “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



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or held, or as may hereafter be acquired, owned and held by the state, or any of its

boards, commissions or agencies.” FLA. STAT. § 286.021. The Department of State

is further authorized to “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 . . . including legal actions, to protect the same against

improper or unlawful use or infringement . . . .” FLA. STAT. § 286.031. The district

court concluded that, under § 286.021, only the Department of State has standing

to sue for infringement of Florida VirtualSchool’s trademarks.

      We read the specific statute governing Florida VirtualSchool, §

1002.37(2)(c), and the general statute concerning the Department of State, §

286.021, to be in tension with one another. And we cannot turn to any decision

from the Florida courts for guidance as to how these statutes ought to be reconciled

because they have never been so much as cited in a state court decision. This case,

in our view, presents a state law issue of first impression with reasonable

arguments on both sides.

      On the one hand, Florida VirtualSchool’s right to acquire, enjoy, use,

license, and dispose of trademarks, as set forth in § 1002.37(2)(c), would appear to

fully encompass the rights attendant to ownership, including the right to protect

those ownership interests. First, Florida VirtualSchool’s right to acquire

trademarks connotes ownership because only the owner can register a trademark



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under federal law. See 15 U.S.C. § 1051. Second, the right to enjoy and use

trademarks would be largely ethereal if Florida VirtualSchool could not protect

against infringement. Third, Florida VirtualSchool’s right to license its trademarks

and retain the revenues derived therefrom conflicts to some degree with both FLA.

STAT. § 286.021, which forbids any person from using state-owned trademarks

without the written consent of the Department of State, and FLA. STAT. § 286.031,

which authorizes the Department to license state-owned trademarks for

consideration to be determined by the Department. Fourth, the right to dispose of

property is generally reserved for the owner of such property. See, e.g.,

Jacksonville Bulls Football, Ltd. v. Blatt, 535 So. 2d 626, 629 (Fla. 3rd DCA 1988)

(“An owner of property has the right to dispose of it as he or she sees fit . . .”).

      On the other hand, the rights of the Department of State with respect to

trademarks (and other intellectual property) do not seem to contemplate a co-equal

partner. First, § 286.021 vests in the Department of State all “legal title and every

right [and] interest” in trademarks. Second, Florida VirtualSchool’s enabling

statute does not specifically provide for a general right to sue or, more specifically,

the authority to take necessary legal action to protect against improper or unlawful

use or infringement of trademarks. The Department of State—not Florida

VirtualSchool—has been given such express authority by § 286.031. Third, other

provisions of Florida law pertaining to the trademark rights of other state agencies



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have expressly given those agencies more explicit authority to take necessary legal

action. See, e.g., FLA. STAT. § 601.101 (Dep’t of Citrus); FLA. STAT. § 334.049(1)-

(2) (Dep’t of Transportation); FLA. STAT. § 1004.23 (State universities); FLA. STAT.

§ 24.105(10) (Dep’t of the Lottery). Fourth, some opinions by Florida’s Attorney

General—which are “entitled to careful consideration and should be regarded as

highly persuasive,” State v. Family Bank of Hallandale, 623 So. 2d 474, 478 (Fla.

1993)—lend some support to K12’s reading of §§ 286.021 and 286.031. See Op.

Att’y Gen. Fla. 00-13 (2000); Op. Att’y Gen. Fla. 71-298 (1971); Op. Att’y Gen.

Fla. 69-81 (1969).3

                                              III

       We recognize that “when we write to a state law issue, we write in faint and

disappearing ink.” McMahan v. Toto, 311 F.3d 1077, 1079 (11th Cir. 2002)

(internal quotation marks omitted). For that reason, we have previously said that

“[w]hen substantial doubt exists about the answer to a material state law question

upon which the case turns, [we] should certify that question to the state supreme

court in order to avoid making unnecessary state law guesses and to offer the state

court the opportunity to explicate state law.” Forgione v. Dennis Pirtle Agency,

Inc., 93 F.3d 758, 761 (11th Cir. 1996).


       3
          Unfortunately, we do not have the views of the Department of State on the issue before
us. Although it was granted leave to do so, the Department chose not to file an amicus curiae
brief in this appeal.

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      The issue in this case is an important one, as it affects the respective rights

of various Florida agencies and departments with respect to intellectual property.

Accordingly, we certify the following question to the Florida Supreme Court for

determination under Florida law:

      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?

Our statement of the question is not meant to restrict, in any way, the Florida

Supreme Court’s response to the question or its analysis of the issue raised. To

assist the Florida Supreme Court in considering this certified question, the record

in this case and the parties’ briefs shall accompany this certification.

      QUESTION CERTIFIED.




                                           9
