The Trustees Of Columbia University in the City of New York v. Encyclopaedia…

Background

Ehsan Yarshater founded the Encyclopaedia Iranica in 1981. The publication focused on Iranian civilization and used the mark “ENCYCLOPÆDIA IRANICA.” Yarshater founded Encyclopaedia Iranica Foundation, Inc. (EIF) in 1990. The court found that EIF paid many of the project’s operating expenses and donated $5.3 million to Columbia’s Center for Iranian Studies from 1993 through 2017.

The court concluded, however, that the evidence showed EIF was established primarily as a fundraising vehicle for the Encyclopaedia, rather than as the recipient of its intellectual property. The parties disputed ownership of the trademark and other intellectual property, leading to the related lawsuits.

Preliminary Injunction

EIF applied for a temporary restraining order seeking to prevent the Trustees of Columbia University in the City of New York, Elton Daniel, and Brill USA, Inc. from using what EIF called counterfeit imitations of its trade name, domain name, and registered ENCYCLOPÆDIA IRANICA marks in advertising and selling printed and online publications. The court initially granted and extended the temporary restraining order, then held an evidentiary hearing on whether to convert it into a preliminary injunction.

A preliminary injunction is an order issued before final judgment to prevent likely harm while a case continues. For the trademark and unfair-competition claims, EIF had to show both that it owned a valid, protectable mark and that Columbia’s use was likely to confuse consumers. EIF also had to satisfy the other preliminary-injunction factors, including likely irreparable harm, inadequate monetary remedies, a favorable balance of hardships, and consistency with the public interest.

The court held that trademark registration alone did not establish ownership because the party claiming ownership also had to show prior use in commerce or a valid transfer of rights from the prior owner. The parties agreed that the mark was first used in 1982 and that someone other than EIF controlled it before EIF’s registration. EIF argued that Yarshater controlled the mark and intended to transfer it to EIF.

The court rejected that argument. It found that the full context of EIF’s 2008 annual-report language described the Center as performing the Encyclopaedia’s academic functions while EIF focused on fundraising. The court also found that EIF’s bylaws, publishing contracts, Yarshater’s direction of EIF’s attorney, his contracts on EIF’s behalf, and his approval of expenses did not demonstrate a clear intent to transfer the trademark. EIF’s witnesses could not identify documents showing such an intent.

Because EIF could not show a likelihood of success on the merits or a sufficiently serious question concerning trademark ownership, the court declined to evaluate the remaining preliminary-injunction factors. EIF’s motion for a preliminary injunction was DENIED.

Document Inventory and Other Requests

Earlier case-management orders required a third-party vendor to inventory materials in Columbia’s possession whose ownership was disputed. The defendants later asked the court to modify the case-management plan and sought a hearing, citing changed circumstances and the COVID-19 crisis. EIF proposed procedures to facilitate the inventory during the pandemic, including remote video observation.

The court held that the defendants had not shown the required good cause for changing the scheduling order. It noted that the inventory requirement had first been imposed before the pandemic and that Columbia had not responded to EIF’s proposed accommodations. The defendants’ requests for a pre-motion hearing and modification of the case-management plan were DENIED.

The court also GRANTED EIF’s and the defendants’ requests to strike the specified filings and portions of EIF’s opposition identified in the conclusion.