Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

TRUSTEES OF COLUMBIA UNIV. IN NEW YORK v. COLUMBIA

April 25, 1997

THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK, Plaintiff, against COLUMBIA/HCA HEALTHCARE CORPORATION, Defendant.


The opinion of the court was delivered by: KOELTL

 JOHN G. KOELTL, District Judge:

 This case concerns a dispute over the right to use the mark "Columbia," alone and in combination with other words or phrases, in connection with the provision of medical and healthcare services. The plaintiff, The Trustees of Columbia University in the City of New York, alleges that the use of the name "Columbia" by the defendant, Columbia/HCA Healthcare Corporation, in connection with the provision of medical and healthcare services is likely to cause confusion, or to cause mistake, or to deceive the public as to the source or sponsorship of the defendant's services and the services of its affiliated physicians and to mislead the public into believing that the defendant's services emanate from, are approved or sponsored by, or are in some way associated or connected with the plaintiff. The plaintiff asserts claims under the Lanham Act, as amended, 15 U.S.C. § 1051 et seq., for false designation of origin, infringement of a registered trademark, and dilution of a famous mark, under New York's anti-dilution statute, and under the common law for trademark infringement and unfair competition. The plaintiff seeks injunctive relief, damages, an accounting for profits, treble damages, prejudgment interest, attorneys' fees, and the costs and disbursements of the action. The plaintiff also asks that the defendant be required to run a program of corrective advertising.

 Following an eight-day non-jury trial and after reviewing all of the submissions of the parties and having assessed the credibility of all of the witnesses, the Court makes the following findings of fact and conclusions of law:

 FINDINGS OF FACT

 1. This Court has jurisdiction over the federal causes of action for alleged violations of the Lanham Act under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a). Jurisdiction over the supplemental state-law claims exists under 28 U.S.C. §§ 1338(b) and 1367(a).

 2. The plaintiff is a non-profit corporation organized and existing under the laws of the State of New York, having its principal place of business in the City of New York within this judicial district. (Joint Pre-Trial Order, Undisputed Facts ("UF"), P 4a.)

 3. The defendant is a for-profit corporation organized and existing under the laws of the State of Delaware, having its principal place of business in Nashville, Tennessee. The defendant, through numerous subsidiaries, joint ventures and/or partnerships, owns and operates proprietary hospitals and ambulatory health care facilities throughout the United States, which it advertises and promotes in television and print advertising that is broadcast or circulated throughout the United States, including New York. (UF P 4b.)

 4. The plaintiff has long been one of the world's leading research and teaching universities that offers post-secondary and post-graduate education in a wide variety of intellectual and professional disciplines, including medicine. (UF P 4c; Morris Witness Statement ("W.S.") P 2.)

 6. The plaintiff uses the name "Columbia University" in connection with various educational services. It is the owner of a federal registration for the service mark "Columbia University" in connection with "educational services." (Pl.'s Ex. 1.)

 7. The plaintiff has over a period of 200 years established itself as one of the preeminent names in medical education. The Columbia University College of Physicians and Surgeons, known generally as Columbia Medical School (the "Medical School"), as well as the School of Dental and Oral Surgery, the School of Nursing, and the School of Public Health, are regarded as among the most distinguished centers for medical education in the United States. (UF P 4e; Weisfeldt W.S. (Pl.'s Ex. 229) PP 16-17; Polf W.S. (Pl.'s Ex. 230) P 7.) The Medical School attracts some of the most highly qualified applicants from the United States and abroad, and medical interns and residents from around the world seek out facilities associated with the plaintiff for their training. (Weisfeldt W.S. (Pl.'s Ex. 229) P 16; Morris W.S. (Pl.'s Ex. 226) P 10.)

 8. The plaintiff's faculty physicians have garnered widespread public recognition and fame for the quality of their medical skills, research, and leadership in education. A number of them have been awarded Nobel prizes and have been responsible for major medical breakthroughs, including the development of heart catheterization, the development of the first blood test for cancer, the first medical use of a laser, and the first successful transfer of genes from one cell to another. In recent years, the plaintiff has risen to fourth place among all medical institutions in the United States in the amount of federal funding that it has received for biomedical research. (Morris W.S. (Pl.'s Ex. 226) P 9; Weisfeldt W.S. (Pl.'s Ex. 229) P 17; Pl.'s Exs. 7-9, 10b.)

 9. As an institution, the plaintiff is not engaged in the practice of medicine and is not licensed to provide medical services. (Morris Trial Test. at 196-98, 389; Polf Trial Test. 535.) The plaintiff permits the members of the faculty of its medical school to engage in the private clinical practice of medicine through its physician practice plans. Patients treated under the practice plans are billed directly by the plaintiff, and all monies paid by these patients are deposited into accounts owned by the plaintiff. After payment of the medical staff salaries, the plaintiff and its medical departments receive approximately five to ten percent of the total income from the practice plans. (Weisfeldt W.S. (Pl.'s Ex. 229) P 5, 9; Weisfeldt Trial Test. at 475-80; Pl.'s Exs. 74f, 75.)

 10. In 1921, the plaintiff entered into an alliance with The Presbyterian Hospital in the City of New York, a nonprofit hospital, to form the world's first academic medical center. The twin goals of the alliance were to secure the best possible medical treatment for the sick and injured, and to provide for medical education and research of the highest order. The medical center uses the name "Columbia-Presbyterian Medical Center." (UF P 4f; Morris W.S. (Pl.'s Ex. 226) P 4; Pl.'s Ex. 19a; Pl.'s Ex. 24 at P4056.)

 11. The present day Columbia-Presbyterian Medical Center is comprised of several different hospital centers, doctors' offices, and institutes for the treatment of patients including the Presbyterian Hospital *fn1" and the plaintiff's various Health Sciences schools, including the Medical School, the School of Nursing, the School of Public Health, and the School of Dental and Oral Surgery. (UF P 4g.)

 13. Pursuant to the alliance, the plaintiff has orally authorized and licensed the use of the Columbia name to be combined with the name of the Presbyterian Hospital as part of the joint mark "Columbia-Presbyterian Medical Center" that is used by both parties for the services provided by the center. The terms and restrictions of the license are reflected and confirmed in the 1994 Public Relations/Media Guidelines for the Columbia-Presbyterian Medical Center. (Polf W.S. (Pl.'s Ex. 230) PP 11-12; Morris P 5; Pl.'s Ex. 76.)

 14. Pursuant to the alliance, the plaintiff has also orally consented to the use of the "Columbia" name by the Columbia-Presbyterian Medical Center Fund, Inc. ("the Fund"), which owns a federal service mark registration for the "Columbia-Presbyterian Medical Center" mark *fn2" for "medical care services." (Morris W.S. (Pl.'s Ex. 226) at P 5 & n.1; Pl.'s Ex. 2.) The Fund has granted the plaintiff and the Presbyterian Hospital an irrevocable license to use the "Columbia-Presbyterian Medical Center" logo. (Def.'s Ex. CU.) There is no agreement between the plaintiff and the Presbyterian Hospital that provides that the Presbyterian Hospital cannot continue to use the Columbia-Presbyterian name if the alliance between the two institutions were discontinued. (Morris Trial Test. at 332.)

 15. At present, the plaintiff and the Presbyterian Hospital are separately, or jointly, affiliated with several other hospitals and ambulatory facilities located in New York, New Jersey, and Connecticut. For example, the plaintiff has a University affiliation with Harlem Hospital Center, New York State Psychiatric Institute, and St. Luke's-Roosevelt Hospital Center in New York City; with Helen Hayes (New York State Rehabilitation Hospital) and Mary Imogene Bassett Hospital in upstate New York; and with Overlook Hospital in New Jersey. The plaintiff and the Presbyterian Hospital are jointly affiliated with Horton Hospital, Lawrence Hospital, Nyack Hospital, St. Francis Hospital, and White Plains Hospital Center in New York; The Valley Hospital in New Jersey; and New Milford Hospital in Connecticut. (Morris W.S. (Pl.'s Ex. 226) P 16; Morris Trial Test. at 81-82; Tenenbaum Trial Test. at 559-61; Pl.'s Ex. 22.)

 16. In connection with recent merger talks between the Presbyterian Hospital and New York Hospital, which is affiliated with Cornell University's medical school, faculty physicians from the plaintiff and Cornell University have formed an alliance designated "Columbia-Cornell Care." The Columbia-Cornell alliance was formed to help increase marketing and advertising of the services of the affiliated physicians and to negotiate more favorable contracts with HMOs and managed care medical insurers. (Weisfeldt W.S. (Pl.'s Ex. 229) PP 31-33; Weisfeldt Trial Test. at 442-44, 500-03; Tenenbaum W.S. (Pl.'s Ex. 231) P 22; Pardes W.S. (Pl.'s Ex. 228) P 8.)

 17. The Presbyterian Hospital, the Columbia-Presbyterian Medical Center, and the Columbia-Presbyterian Medical Center Fund are not parties in this action.

 18. Although the media often shortens the full terms "Columbia-Presbyterian Medical Center," "Columbia-Presbyterian," or "Columbia University," to "Columbia" in the course of reports, those reports almost always contain the other identifying names. *fn3"

  19. The plaintiff publishes and distributes promotional materials aimed at public consumers, primarily under the names "Columbia University," "Columbia-Presbyterian," and "Columbia-Presbyterian Medical Center." *fn4" (Pl.'s Exs. 24-39, 42-65, 68.) It has sponsored only one print advertisement relating to medical services in The New York Times entitled "Columbia University Doctors Are New York's Best." (Pl.'s Ex. 5; Polf Trial Test. at 537-38.) The plaintiff has never advertised any healthcare services on television or radio. The hospitals that are affiliated with the plaintiff and/or the Presbyterian Hospital advertise and promote this affiliation in print and on radio. (Morris W.S. (Pl.'s Ex. 226) P 16; Tenenbaum W.S. (Pl.'s Ex. 231) P 8; Pl.'s Ex. 11c-d.)

 20. In early 1996, the plaintiff and the Presbyterian Hospital retained the advertising firm, Bozell Worldwide, to prepare a coordinated advertising campaign to promote the services of the Columbia-Presbyterian Medical Center. Both the plaintiff and the Presbyterian Hospital intend to share the expense of the campaign, which is budgeted at approximately $ 2 million. (Polf W.S. (Pl.'s Ex. 230) P 18; Rose Trial Test. at 112-14; Weisfeldt Trial Test. at 440-42; Pl.'s Ex. 14.) The major thrust of the campaign is scheduled to begin in 1997 towards the end of the winter. (Polf W.S. (Pl.'s Ex. 230) P 20.)

 21. The plaintiff maintains an Internet Web page at "Columbia.edu" with a well-known and highly regarded medical information service under the name "Go Ask Alice." The Columbia-Presbyterian Medical Center similarly maintains a "CPMC" Web site that is linked to the plaintiff's site. (Tenenbaum W.S. (Pl.'s Ex. 231) P 28.)

 22. The plaintiff does not own, nor has it attempted to secure, any United States Registration for the mark "Columbia University" or any other variation of the "Columbia" name in connection with medical, hospital, or healthcare services. (Morris Trial Test. at 91.)

 23. The word "Columbia" is a term with historic, patriotic, and geographic connotations. An article entitled "Topic of the Times," which appeared in the New York Times on October 12, 1996, explained that the word "Columbia" is a term derived from Columbus and is sometimes used as a synonym for America. (Def.'s Ex. MB.) Webster's Ninth New Collegiate Dictionary defines it as "the United States." (Def.'s Ex. EQ.)

 24. The defendant is the largest provider of healthcare services in the United States, operating approximately 340 hospitals, 130 surgery centers, and over 200 home healthcare agencies, all of which use some variation of the "Columbia" name. Since its founding in 1987, the defendant has grown to become the ninth largest private employer in the United States with over 285,000 employees. (Scott Dec. P 5, 7.)

 25. The defendant's CEO, Richard Scott, who was trained as a lawyer rather than a doctor, initially selected the name "Columbia" because it sounded positive and national in scope, which was consistent with his vision for the company. In selecting the name, Mr. Scott was not aware of any potential conflicts with any entities in the healthcare industry that use the name. Although he had heard of the plaintiff and its law school, he was not aware at that time that the plaintiff had a medical school and was not aware of the Columbia-Presbyterian Medical Center. (Scott W.S. (Def.'s Ex. HG) P 3; Scott Trial Test. at 652, 654.) The defendant has continuously used the word "Columbia" as part of its corporate name since 1987. (UF P 4i.)

 26. Defendant is the successor to the Columbia Hospital Corporation, which was first formed in 1987 and owned and operated hospitals or other medical facilities in Texas. Through additional acquisitions, the Columbia Hospital Corporation grew to a base of approximately 12 hospitals located in Texas and Florida by 1991. (UF P 4j.)


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.