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JEFF PITZER, OSB 020846 jpitzer@pitzerlaw.net

PITZER LAW

101 SW Main Street, Suite 805

Portland, OR 97204 Phone: (503) 227-1477 Fax: (503) 227-5839 Counsel for Plaintiff MetaMetrics, Inc.

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON PORTLAND DIVISION

METAMETRICS, INC.,

v.

Plaintiff,

NWEA (F/K/A NORTHWEST EVALUATION ASSOCIATION), an Oregon Domestic Nonprofit Corporation; MATTHEW CHAPMAN, an individual; JEFF STRICKLER, an individual,

Defendants.

Civ. No. 3:17-cv-1059

VERIFIED COMPLAINT FOR

TRADEMARK INFRINGEMENT, COPYRIGHT INFRINGEMENT, UNFAIR COMPETITION, FALSE ADVERTISING, AND OTHER CLAIMS

JURY TRIAL DEMANDED

  • I. INTRODUCTION & SUMMARY OF RELIEF REQUESTED

  • 1. Plaintiff MetaMetrics®, Inc. (“MetaMetrics”) brings this action for preliminary and

permanent injunctive relief, treble damages, statutory damages, an accounting, and attorneys’ fees

and costs against NWEA f/k/a Northwest Evaluation Association (“NWEA”), Mr. Matthew

Chapman, and Mr. Jeff Strickler (collectively “Defendants”) for their willful, intentional, and

malicious violations of federal and state law. As more fully detailed herein, MetaMetrics is the

VERIFIED COMPLAINT - 1 -

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creator of the highly acclaimed “Lexile Framework® for Reading” (the “Lexile Framework”). The

Lexile Framework is an innovative, science-based technology and related proprietary information

that matches readers with texts using a common “Lexile®” scale. For several decades, the Lexile

Framework has been used across the United States by numerous educational reading test

developers, publishers, content providers, educators, parents, and students. MetaMetrics owns

numerous registered trademarks and copyrights with respect to the computer programs, algorithms,

and related proprietary reading assessment and text complexity Lexile® measurement tools

comprising the Lexile Framework, and zealously safeguards how third parties are allowed to

deploy this intellectual property.

  • 2. Upon information and belief, Defendant NWEA is an Oregon domestic nonprofit

corporation formerly known as “Northwest Evaluation Association” based in Portland, Oregon,

with offices located at 121 NW Everett St., Portland, Oregon 97209. NWEA offers a student

assessment tool called “Measures of Academic Progress” (“MAP”) to thousands of school

districts, schools, and educational agencies throughout the country. Sometime in June 2017,

NWEA, at the behest and with the personal participation and approval of Defendants Matthew

Chapman and Jeff Strickler, published on NWEA’s website that it has purportedly created a new

and “improved” method for generating an “estimated Lexile® range” for readers. NWEA’s claims

with respect to this supposed “new and improved” method creates a false association with

MetaMetrics, constitutes false and misleading advertising, unfair competition, unfair and

deceptive trade practices, and trademark infringement likely to cause massive mistake, confusion,

and deception among consumers of MetaMetrics’ goods and services under federal and state law,

dilution of MetaMetrics’ distinctive and incontestable marks in violation of Oregon law, and

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conversion of MetaMetrics’ intellectual property. Moreover, having continued to engage in this

misconduct after notice by MetaMetrics and its written demands to cease their infringing acts,

Defendants’ willful and deceptive conduct easily makes this case an exceptional one for which

treble damages and attorneys’ fees are appropriate. Unfortunately, Defendants’ improper conduct

does not end with willful trademark infringement, unfair competition, trademark dilution, and

conversion.

  • 3. Upon investigating how NWEA concocted this “new method” for “Improved

Lexile Estimates” it appears that NWEA has been copying, infringing, and derivatively abusing

MetaMetrics’ online computer program, the “Lexile Analyzer®.” Through its website located at

www.lexile.com, MetaMetrics allows its licensees as authorized users to access the Lexile

Analyzer to submit an electronic excerpt of proposed text for analysis to generate a numerical

result, identified as an “estimated Lexile Measure” for text. The terms and conditions of use posted

on the Lexile Analyzer’s access page expressly limit its use “so long as the results are used for

non-published internal purposes only” (emphasis added); the Lexile Analyzer is intended for and

is typically used by publishers seeking to edit and refine their texts to reach a targeted level of

complexity in order to meet educational goals. Publishers cannot then use the estimate for the text

to assume a student’s reader measure. NWEA’s misuse and abuse of the Lexile Analyzer as stated

herein, or by other unauthorized means unknown to MetaMetrics, constitutes not only an

intentional breach of the Lexile Analyzer’s terms and conditions of use to which NWEA expressly

agreed each time it accessed the Lexile Analyzer, but also willful, malicious, and intentional

copyright infringement in violation of the U.S. Copyright Act. MetaMetrics is, therefore, entitled

to recover statutory damages of up to $150,000 for each copyright infringement, as well as

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attorneys’ fees and costs. Furthermore, MetaMetrics is entitled to recover for breach of contract.

NWEA’s conduct to date and threatened future conduct will inflict tremendous damage and harm

to MetaMetrics in an amount to be proven at trial, but conserva tively believed to be in the millions

of dollars, as NWEA’s actions constitute a serious threat to MetaMetrics’ core business.

II.

PARTIES, JURISDICTION & VENUE

  • 4. Plaintiff MetaMetrics is a North Carolina corporation with its principal place of

business at 1000 Park Forty Plaza Drive, Suite 120, Durham, North Carolina 27713. MetaMetrics

is the registered owner of numerous valid and incontestable U.S. Trademark and Service Mark

Registrations issued by the United States Patent and Trademark Office (“USPTO”) as well as

multiple Oregon Trademark and Service Mark registrations issued by the Oregon Secretary of

State (collectively the “MetaMetrics Marks”). For many years, MetaMetrics has extensively

promoted and advertised the MetaMetrics Marks to identify its goods and services throughout

Oregon and the United States at great expense.

  • 5. MetaMetrics, Inc. is the owner of valid and subsisting United States Trademark

Registration No. 2,180,702 on the Principal Register in the USPTO (“Register”) for the trademark

LEXILE FRAMEWORK® (“LEXILE FRAMEWORK Mark”) for “posters and printed charts,

maps, test books and test sheets for use in assessing an individual’s reading comprehension and

skills, printed lists of texts at various levels of reading difficulty” in International Class 16, which

has become incontestable within the meaning of Section 15 of the Lanham Act, 15 U.S.C. § 1065

(“Section 15”). A true and correct copy of the registration certificate for MetaMetrics’ United

States Trademark Registration No. 2,180,702, which was issued by the USPTO on August 11,

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1998, and having a first use date at least as early as January 5, 1996, is set forth in attached

E A (page 2).

  • 6. MetaMetrics, Inc. is the owner of valid and subsisting United States Trademark

Registration No. 2,231,125 on the Register for the trademark LEXILE® (“LEXILE ‘125 Mark”)

for “computer program for analyzing text difficulty and providing measurement of text difficulty”

in International Class 9, which has become incontestable within the meaning of Section 15. A true

and correct copy of the registration certificate for MetaMetrics’ LEXILE ‘125 Mark, which was

issued by the USPTO on March 09, 1999, and having a first use date at least as early as August

31, 1996, is set forth in attached E A (page 3).

  • 7. MetaMetrics, Inc. is the owner of valid and subsisting United States Trademark

Registration No. 2,295,007 on the Register for the trademark LEXILE ANALYZER® (“LEXILE

ANALYZER Mark”) for “computer services, namely, providing access to a software database for

the evaluation and analysis of texts and tests to determine reading difficulty” in International Class

42, which has become incontestable within the meaning of Section 15. A true and correct copy of

the registration certificate for MetaMetrics’ LEXILE ANALYZER Mark, which was issued by the

USPTO on November 30, 1999, and having a first use date at least as early as September 15, 1997,

is set forth in attached E A (page 4).

  • 8. MetaMetrics, Inc. is the owner of valid and subsisting United States Trademark

Registration No. 2,527,758 on the Register for the trademark METAMETRICS®

(“METAMETRICS Mark”) for “educational services, namely, conducting courses and seminars

in connection with assessment systems for determining reading and mathematical comprehension

and skills; educational research, namely, assessing systems for determining reading and

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mathematical comprehension skills; education testing; and devel oping assessment systems for

others to determine reading and mathematical comprehension and skills” in International Class 41

and for “assessment and evaluation of educational materials and programs; analysis and evaluation

of texts and tests in order to determine reading or mathematical difficulty; and consultation in

connection with the use and implementation of assessment systems for determining reading and

mathematical comprehension and skills” in International Class 4 2, which has become

incontestable within the meaning of Section 15. A true and correct copy of the registration

certificate for the METAMETRICS Mark, which was issued by the USPTO on January 8, 2002,

and having a first use date for each class at least as early as September 1997, is set forth in attached

E A (page 5).

  • 9. MetaMetrics, Inc. is the owner of valid and subsisting United States Trademark

Registration No. 2,706,910 on the Register for the trademark LEXILE® (“LEXILE ’910 Mark”)

for “computer software for use in assessing and improving student reading skills in the education

field and instructional manuals related thereto, sold as a unit” in International Class 9, and for

“printed materials, namely, book marks, posters, and catalogs featuring educational products and

services” in International Class 16, which has become incontestable within the meaning of Section

15. A true and correct copy of the registration certificate for MetaMetrics’ LEXILE ’910 Mark,

which was issued by the USPTO on April 15, 2003, and having a first use date for each class at

least as early as October 31, 1997, is set forth in attached E A (page 6).

  • 10. MetaMetrics, Inc. is the owner of valid and subsisting United States Trademark

Registration No. 3,969,306 on the Register for the trademark LEXILE® (“LEXILE ‘306 Mark”)

for “educational services, namely, preparing, administering, scoring and reporting on standardized

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tests and essay responses; educational testing services, namely, developing standardized tests to

determine reading comprehension and skills” in International Class 41, and “Analysis and

evaluation of written texts to assess their effectiveness in improving reading comprehension and

skills; analysis and evaluation of tests to assess their effectiveness in determining reading

comprehension and skills” in International Class 42, which has become incontestable within the

meaning of Section 15. A true and correct copy of the registration certificate for MetaMetrics’

LEXILE ‘306 Mark, which was issued by the USPTO on May 31, 2011, and having a first use

date for each class at least as early as May 31, 1987, is set forth in attached E A (page 7).

  • 11. MetaMetrics, Inc. is the owner of valid and subsisting United States Trademark

Registration No. 4,002,088 on the Register for the trademark LEXILE® (“LEXILE ‘088 Mark”)

for “providing temporary use of on-line non-downloadable software for analyzing text difficulty

and providing a measurement of text difficulty” in International Class 42, which has become

incontestable within the meaning of Section 15. A true and correct copy of the registration

certificate for MetaMetrics’ LEXILE ‘088 Mark, which was issued by the USPTO on July 26,

2011, and having a first use date at least as early as October 22, 1997, is set forth in attached

E A (page 8).

  • 12. MetaMetrics, Inc. registered in Oregon its “LEXILE ANALYZER” service mark

(Oregon Reg. No. 46659, filed June 29, 2017) for “computer services, namely, providing access

to a software database for the evaluation and analysis of texts and tests to determine reading

difficulty.” A true and correct copy of the registration certificate for MetaMetrics’ Oregon

LEXILE ANALYZER service mark is set forth in attached E A (page 10).

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  • 13. MetaMetrics, Inc. registered in Oregon its “METAMETRICS” service mark

(Oregon Reg. No. 46660, filed June 29, 2017) for “educational services, courses, and seminars

related to math and reading assessments and development of assessments, evaluating educational

materials and difficulty.” A true and correct copy of the registration certificate for MetaMetrics’

Oregon METAMETRICS service mark is set forth in attached E A (page 11).

  • 14. MetaMetrics, Inc. registered in Oregon its “LEXILE” service mark (Oregon Reg.

No. 46661, filed June 29, 2017) for “providing temporary use of on-line non-downloadable

software for analyzing text difficulty and providing a measurement of text difficulty.” A true and

correct copy of the registration certificate for MetaMetrics’ Oregon LEXILE service mark is set

forth in attached E A (page 12).

  • 15. MetaMetrics, Inc. registered in Oregon its “LEXILE FRAMEWORK” trademark

(Oregon Reg. No. 46662, filed June 29, 2017) for “posters and printed charts, maps, test books

and test sheets for use in assessing an individual's reading comprehension and skills; printed lists

of texts at various levels of reading difficulty.” A true and correct copy of the registration

certificate for MetaMetrics’ Oregon LEXILE FRAMEWORK trademark is set forth in attached

E A (page 13).

  • 16. True and correct copies of all the respective federal and state certificates of

registration for the MetaMetrics Marks with detailed reference to the goods and services they

identify and their first use dates are set forth in attached E A.

  • 17. MetaMetrics is also the exclusive owner of a copyright-protected, web-based

computer program identified for copyright registration purposes as the “Lexile Professional

Analyzer” and marketed under the mark LEXILE ANALYZER (“Lexile Analyzer”). Earlier

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published versions of the program have been registered and deposited with the U.S. Copyright

Office since at least as early as 1998. MetaMetrics also maintains a “Spanish” version of the

Lexile Analyzer. The most recent English version of the Lexile Analyzer was published by

MetaMetrics on June 7, 2017. On June 27, 2017, MetaMetrics, In c. submitted a completed

application to register the copyright in this version of the Lexile Analyzer program to the U.S.

Copyright Office through its Electronic Copyright Office (“eCO”) Registration System located at

https://www.copyright.gov/registration (the “eCO Registration System”) (Case No. 1-

5516665731). The prior English version of the Lexile Analyzer, version 5.1.14, was published by

MetaMetrics in 2016. On June 30, 2017, MetaMetrics, Inc. submitted a completed application to

register the copyright in this version of the Lexile Analyzer program to the U.S. Copyright Office

through the eCO Registration System (Case No. 1-5533805881). MetaMetrics is also the owner of

many other registered and unregistered copyrighted original works of authorship. True and correct

copies of the filing receipts for the completed copyright applications are set forth in attached

E .

  • 18. On information and belief, Defendant NWEA (f/k/a Northwest Evaluation

Association) is a domestic nonprofit corporation organized under the laws of Oregon. NWEA’s

principal place of business is at 121 NW Everett St., Portland, OR, 97209.

  • 19. Defendant Matthew Chapman is the Chief Executive Officer of NWEA. On

information and belief, Mr. Chapman is believed to be domiciled in this judicial district and

maintains a personal residence at 615 SW Burlingame Terrace, Po rtland, OR 97239. Mr. Chapman

is employed by NWEA in this judicial district. On further information and belief, Mr. Chapman

personally participated in the decision to have NWEA and/or its agents engage in the willful and

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malicious conduct alleged herein, and further directed, encouraged, or otherwise ordered others

within NWEA to engage in this conduct.

  • 20. Defendant Jeff Strickler is the President and Chief Operating Officer of NWEA.

On information and belief, Mr. Stickler is believed to be domiciled in this judicial district and

maintains a personal residence at 2950 NE 32nd Place, Portland, OR 97212. Mr. Strickler is

employed by NWEA in this judicial district. On further information and belief, Mr. Strickler

personally participated in the decision to have NWEA’s agents engage in the willful and malicious

conduct alleged herein, and further directed, encouraged, or otherwise ordered others within

NWEA to engage in this conduct.

  • 21. This Court has personal jurisdiction over the Defendants because they reside in this

judicial district. Further, all of the Defendants participated in the malicious, willful, and intentional

conduct set forth herein knowing that this conduct would inflict great damage and harm to

MetaMetrics in this judicial district.

  • 22. This Court has jurisdiction over the subject matter of the federal claims asserted

herein pursuant to 15 U.S.C. §§ 1116 and 1121, and 28 U.S.C. §§ 1331 and 1338(a)-(b). The

Court also has jurisdiction over the subject matter of the state claims asserted herein pursuant to

28 U.S.C. §§ 1332(a) and 1367(a).

III.

FACTUAL ACKGROUND REGARDING METAMETRICS AND ITS DEVELOPMENT OF THE PROPRIETARY LE ILE FRAMEWORK.

  • A. Overview Of The Lexile Framework For Reading Developed By MetaMetrics.

    • 23. MetaMetrics is an educational measurement and research organization that

develops scientific measures of academic achievement that link the individual reader with targeted

instruction in order to improve learning. Based in Durham, North Carolina, MetaMetrics’

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founders, Dr. A. Jackson Stenner and Dr. Malbert Smith, had a vision to make reading test scores

more actionable. They accomplished this by developing a proprietary formula to quantitatively

“link” (in an empirically defensible manner) the traditional distinction between “assessment” of

reading ability and “instruction” in reading. MetaMetrics was incorporated in 1986 to build upon

the optimism and passion of these two pioneering scholars who believed they could make positive

contributions to the education of all students.

  • 24. MetaMetrics’ extensive research initiatives over the course of many years

culminated in the development of its flagship product, The Lexile Framework, which is a scientific,

empirically defensible approach to linking student reading ability to the appropriate level of

reading materials (e.g., books, articles, websites, and textbooks) using equivalent units of measure.

The Lexile Framework involves a scale for measuring both the reading ability of an individual and

the text complexity of materials he or she encounters.

  • 25. The Lexile Framework reports a Lexile “reader measure” and a Lexile “text

measure” (each a “Lexile Measure” or, collectively, “Lexile Measures”). Each proprietary Lexile

Measure is generated and identified on a scale that extends from below “0” (e.g., reading primers)

to above “1600” (e.g., Wall Street Journal) with an “L” appended to the end of the number. For

example, 880L means “880 Lexile.” Unlike other measurement systems, the Lexile Framework

determines reading ability based on linking the Lexile Framework to specific assessments

developed by third parties, or working with them in developing specific assessments that directly

link to the Lexile Framework, rather than less accurate generalized “age” or “grade” level norms.

The concept behind The Lexile Framework for Reading is simple: if we can measure how well a

student can read and how complex a specific book is, we can use decades of empirical analysis

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and statistical modeling to forecast the comprehension that any student will likely experience with

that book.

  • 26. The Lexile Framework is widely recognized the world over by leading educators,

scholastic publishers, and booksellers as the “gold standard” for matching readers with texts. Tens

of millions of students worldwide have received a Lexile Measure that helps them find targeted

material from the more than 400 million articles, books and websites that have received Lexile

Measures. Lexile Measures connect learners of all ages with resources at the right level of

challenge and provide a carefully crafted proprietary scale in which growth towards state and

national standards can be measured.

  • B. MetaMetrics Allows Only Its Licensed Partners To Publish Lexile Measures To Protect Their Integrity And Accuracy.

    • 27. MetaMetrics has strict quality control procedures in place through a network of

licensed partners to protect the integrity and maintain the accuracy of Lexile Measures. In fact, if

MetaMetrics lost control over the protocols by which Lexile Measures are developed and

published it would severely undermine how the entire K-12 educational system teaches reading

and fosters literacy.

  • 28. Publishers, educators, parents, and students that rely on the continuing accuracy

and precision of Lexile Measures would be tremendously disadvantaged if Lexile Measures could

no longer be trusted as authentic, verifiable measures of a student’s reading ability and a text’s

complexity. If left to calculation at the hands of multiple unlicensed sources applying a variety of

unknown formulas, Lexile Measures would, quite literally, become meaningless. The following

explanation provides an overview of how Lexile Measures are developed and the safeguards

zealously maintained by MetaMetrics over its process to maintain their integrity:

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  • 29. The Lexile Measure for Readers. A student receives his or her Lexile Measure for

reading by taking a reading assessment. MetaMetrics itself does not offer a proprietary assessment

that reports a Lexile Measure for readers. Instead, it partners with state departments of education

and test publishers to either create assessments for them, or link to their existing assessments under

license, so that they can report students’ reading scores in terms of a Lexile Measure.

  • 30. Creating assessments requires the development of assessment items (e.g., questions

specific to a particular test) that conform to the Lexile Framework theory through a highly-

controlled process of passage development (e.g., source targeting of passage to entire text and to

the audience being tested), stem development (e.g., an embedded completion statement), and

response selections (Lexile Measures of answer choices). Linking to existing assessments requires

students to respond to previously calibrated and tested items with known Lexile Measures taken

from a proprietary MetaMetrics’ database of such items. The responses to the Lexile items and

the target test items are scaled. Using MetaMetrics’ linear equating methodology (or its other

statistical linking methods and procedures), the scale of the target test is linked with the Lexile

scale thus allowing a score on the target test to be converted to a Lexile Measure (which produces

a correspondence similar to a link from Celsius to Fahrenheit).

  • 31. MetaMetrics maintains through its licensing agreements with its partners strict

quality control over how these Lexile Measures for readers are developed through conversions

from existing assessments. Every year, over 35 million Lexile Measures for readers are reported

worldwide from more than 60 recognized test publishers and educational institutions under license

with MetaMetrics who have linked their assessments or have had MetaMetrics create assessments

for them to measure reading ability.

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  • 32. The Lexile Measure for Text.

On the other side of the Lexile reader measure to

text measure conjoint coin, a book, article, or piece of text receives a Lexile Measure for text when

it is analyzed by, or under license from, MetaMetrics. In this regard, MetaMetrics partners with

over 200 publishing companies (including but not limited to Scholastic, Pearson, and McGraw-

Hill). MetaMetrics also partners with the nation’s largest periodical database service providers,

including EBSCO, GALE and ProQuest, to provide Lexile Measures for newspaper and magazine

articles, as well as encyclopedia and reference content. MetaMetrics has also partnered with

publishers who wish to have textbooks measured as part of a textbook adoption for states. In the

aggregate, more than 400 million articles, books, and websites have received Lexile Measures.

Assigning a Lexile Measure for text involves a complicated process, and MetaMetrics maintains

stringent quality control over the manner in which Lexile Measure for text can be made public by

its publisher partners.

  • 33. Generally speaking, a publisher comes to MetaMetrics requesting measurement

services in order to obtain a certified Lexile Measure of the publisher’s text. A Lexile Measure

for text is developed by first obtaining a text from a publisher that is to be measured by

MetaMetrics. Next, MetaMetrics meticulously prepares the text for measurement (taking out

pictures or any other distracting material so all that is left is the text) and then feeds the text

electronically into MetaMetrics’ Lexile Analyzer software application that produces a certified

Lexile Measure for that text. Thereafter, the publisher under license is granted the right to use this

certified Lexile Measure. MetaMetrics’ proprietary software uses a sophisticated algorithm that

analyzes up to eleven variables relating to vocabulary and sentence structures to arrive at a unique

Lexile Measure of each text’s complexity.

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  • 34. MetaMetrics also licenses the Lexile Analyzer to content developers and publishers

so they can measure their own text in content development and receive an estimated Lexile

Measure for text. However, such license is granted for the partner’s internal purposes only.

MetaMetrics’ partners are contractually prohibited from reporting that estimated Lexile Measure

for text unless and until it is certified by MetaMetrics. MetaMetrics insists on maintaining quality

control and being the final arbiter of a certified Lexile Measure for text that can be published.

Through its partnerships with these content publishers and providers, MetaMetrics’ reputation for

trustworthy scholastic measurement standards has been maintained, as the texts of more than 400

million books, articles and websites have been assigned Lexile Measures.

IV. ACKGROUND REGARDING DEFENDANTS CREATION OF UNAUTHORIZED, INFRINGING, AND MISLEADING ESTIMATED LE ILE RANGES.

  • A. The 1999 Licensing Agreement Between MetaMetrics And NWEA.

    • 35. On October 20, 1999, MetaMetrics and NWEA concluded a Development and

Technology and Trademark License Agreement (as amended, the “1999 Agreement”) that licensed

to NWEA: (i) certain MetaMetrics’ proprietary technology as detailed in the 1999 Agreement (the

“Licensed Technology”); and (ii) the limited use of the Lexile trademark. A true and correct copy

of the 1999 Agreement, with protected portions redacted, is set forth in attached E C. 1

  • 1 The 1999 Agreement and the relevant amendments thereto have been produced with redactions only to protect portions thereof, deemed to be confidential and proprietary information, from public disclosure. The redacted portions are immaterial to the dispute, and will be more fully addressed in a motion for a protective order and/or privilege log.

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  • B. Amendments To The 1999 Agreement.

    • 36. The parties amended the 1999 Agreement five times over the years, including

repeated extensions and renewals. On March 12, 2007, MetaMetrics and NWEA executed

Amendment No. 1, which completely replaced Section A of the 1999 Agreement regarding

ownership of the development work. In that amendment, the parties recited the fact that the

development work was complete, and it resulted in the creation of a product, Measures of

Academic Progress (“MAP”). Amendment No. 1 granted copyright of MAP to NWEA, but

specified that MetaMetrics retained all copyright and other proprietary rights to the Lexile Measure

and “Licensed Technology.” A true and correct copy of Amendment No. 1, with protected portions

redacted, is set forth in attached E D.

  • 37. On December 31, 2010, MetaMetrics and NWEA concluded Amendment No. 3. In

Amendment No. 3, the parties recited MetaMetrics’ license of “Licensed Technology” to NWEA

in the 1999 Agreement. Amendment No. 3 contained a separate provision in Paragraph 5 that

referenced a separate agreement for access to and use of the Lexile Analyzer, the proprietary web-

based MetaMetrics computer program mentioned above that provides authorized users a web-

based measurement system which assigns only an “estimated” Lexile Measure for text. A true and

correct copy of Amendment No. 3, with protected portions redacted, is set forth in attached

E E.

  • 38. According to Paragraph 5 of Amendment No. 3, the parties intended to execute a

separate licensing agreement for the Lexile Analyzer, and MetaMetrics agreed to “waive its

customary license fees for access to the Lexile Analyzer.”

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  • 39. On April 24, 2014, MetaMetrics and NWEA concluded Amendment No. 4, which

stipulated that the term of the 1999 Agreement would be extended through June 30, 2017. A true

and correct copy of Amendment No. 4, with protected portions redacted, is set forth in attached

E F. On December 15, 2016, MetaMetrics and NWEA concluded Amendment No. 5,

wherein the parties simply agreed to initiate discussions in February 2017 as to whether they would

further extend the 1999 Agreement beyond the June 30, 2017 termination date. A true and correct

copy of Amendment No. 5, with protected portions redacted, is set forth in attached E G.

Those discussions did not bear fruit and, consequently, the 1999 Agreement, as amended,

terminated on June 30, 2017.

  • C. The Separate 2010 Agreement For Use Of The Lexile Analyzer And The Subsequent Website “Terms Of Use” To Which NWEA Agreed.

    • 40. On December 31, 2010, MetaMetrics and NWEA concluded a separate Technology

License Agreement that specifically addressed MetaMetrics’ licensing of the web-based Lexile

Analyzer computer program to NWEA (“Analyzer Agreement”). A true and correct copy of the

Analyzer Agreement is set forth in attached E H (page 2). According to its own terms, the

Analyzer Agreement expired one year later on December 31, 2011, and was never renewed

thereafter.

  • 41. Since the expiration of the Analyzer Agreement on December 31, 2011, NWEA’s

access and use of the Lexile Analyzer has been subject to the terms and conditions expressly stated

on MetaMetrics’ webpage where the Lexile Analyzer is accessed. In order to access and use the

Lexile Analyzer, NWEA users entered login credentials, and then acknowledged that by clicking

on the “analyze” button, they agreed “to the Lexile Analyzer Terms of Use” (the “Lexile Analyzer

Terms of Use”). A true and correct copy of the current Lexile Analyzer Terms of Use to which

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NWEA agreed is set forth in attached E H (page 9). The Lexile Analyzer Terms of Use

contain important conditions and restrictions regarding how NWEA users could use the program

and what NWEA could do with the results generated by it. Among other limitations, NWEA users

of this web-based program were confronted with the following prohibitions as conditions for the

license to use the Lexile Analyzer:

You may not publish or distribute the Lexile® measure generated by using the Lexile Analyzer®.

You may not enter the Lexile® measure you generated based on the text you submitted into a library or media center database or catalog.

You may not use the Lexile Analyzer® to create a Lexile® measure for the reading comprehension level of an individual reader, or any Lexile® measure you generated by using the Lexile Analyzer® to be identified as an estimated Lexile® measure for an individual reader.

A Lexile® measure is only as good as the preparation of the text by the Authorized User. Only Lexile® measures prepared by MetaMetrics are certified as guaranteed accurate estimates of the reading demand level of a text (“Certified Lexile® Measure”).

Your Lexile® measure you generated by using the Lexile Analyzer® is not a Certified Lexile® Measure, but should only be considered an “estimated Lexile measure.” Your estimated Lexile® measure likely differs from the Certified Lexile Measure of the complete book or text.

By using the Lexile Analyzer®, you are not granted permission to use any of MetaMetrics’ trademarks for any reason.

Your right to access and use the Lexile Analyzer Services is expressly conditioned on your intent to comply and continuing compliance with the above Terms of Use.

See E H (page 9). NWEA and its users agreed to these express terms, and similar terms, as

a condition of NWEA’s access and use of the Lexile Analyzer.

  • 42. On each occasion when an NWEA user accessed and used the Lexile Analyzer,

various components of the Lexile Analyzer program and the interface webpage were copied and

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stored in the NWEA user’s web browser’s “cache” and/or in the random access memory (“RAM”)

on the end user’s computer or device.

  • 43. NWEA and its users accessed the Lexile Analyzer on a noticeably increased

number of occasions over the last several months, as noted by MetaMetrics’ support personnel

responsible for overseeing MetaMetrics’ website. NWEA’s increased use of both the English and

Spanish versions of the Lexile Analyzer occurred, even though NWEA representatives professed

that use of the Lexile Analyzer was “unimportant” to NWEA. In fact, NWEA’s usage of the Lexile

Analyzer “spiked” considerably during the last six months before the 1999 Agreement expired.

  • 44. For example, MetaMetrics’ business records and computer forensics reveal that in

January 2017, an NWEA user with the login credentials “NWEA” accessed and used the Lexile

Analyzer seven times to analyze text. That same user increased his or her usage to 35 times in

February 2017. NWEA users’ overall usage of the Lexile Analyzer continued to increase

dramatically with 87 files analyzed in March, 117 files analyzed in April, 102 files analyzed in

May, 57 files analyzed in June, and seven files analyzed on July 1, 2017, the day after the 1999

Agreement terminated.

  • 45. On information and belief, NWEA has been regularly accessing and using the Lexile

Analyzer so that it could improperly use the program to generate concocted and unauthorized

“Improved Lexile Estimates” as counterfeit Lexile Measures for the reading comprehension level of

an individual reader in violation of the above Lexile Analyzer Terms of Use. Furthermore, upon

information and belief, NWEA has caused its customers and users (and subsequent transferees of

the so-called “Improved Lexile Estimates”) to create, transfer and distribute additional unauthorized,

infringing copies and derivative works from the Lexile Analyzer material through dissemination of

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NWEA’s untested and unauthorized scores as “Improved Lexile Estimates.” On information and

belief, NWEA may be using other unauthorized means to generate these so-called “Improved Lexile

Estimates” by using proprietary MetaMetrics’ technology.

  • D. MetaMetrics’ June 9, 2017 Demand Letter Specifically References NWEA’s Misuse And Abuse Of The Lexile Analyzer, Which Violates The Terms Of Use And Constitutes Intentional Trademark And Copyright Infringement.

    • 46. In early 2017, MetaMetrics and NWEA unsuccessfully attempted to renegotiate a

further extension of the 1999 Agreement beyond the termination date of June 30, 2017.

Consequently, the 1999 Agreement expired on June 30, 2017. Based on discussions between

MetaMetrics and NWEA, NWEA has taken the position that after June 30, 2017 it has the right,

without license, to report a purported “correlation” between its MAP scores assigned to readers

and “an estimated Lexile reading range,” essentially passing off NWEA’s product as a Lexile

Measure for reading ability, without MetaMetrics’ involvement or certification that the estimate

accurately points to an appropriate corresponding range of Lexile Measures for text. In fact, on

NWEA’s website in June 2017, it announced what “new” services it was providing for educators,

including the following announcement:

I L E

For reading tests, MAP reports use a new method for correlating RIT score to an estimated Lexile® reading range. This correlation is an estimate*, but it takes advantage of new research data and improved techniques. As a result, you could see a slight shift compared to the Lexile level shown on prior reports you have generated. 2

A true and correct copy of this this NWEA webpage is set forth in attached E I.

  • 2 The announcement contains the following “disclaimer” in much smaller font: “*The estimate is not associated with or endorsed by MetaMetrics, the developer of Lexile. Lexile® and MetaMetrics® are registered trademarks of MetaMetrics, Inc.”

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  • 47. On the afternoon of June 9, 2017, MetaMetrics sent a demand letter via email and

certified mail to NWEA. The letter notified NWEA that MetaMetrics objected to NWEA’s use

and reporting of non-certified Lexile estimates, or representing any other association linking

NWEA’s undisclosed and unproven formulas with MetaMetrics’ highly-acclaimed and proven

Lexile Measures. That demand letter specifically alleged that NWEA was going to improperly

use Lexile estimates “that have been created by ‘reverse-engineering’ by accessing

MetaMetrics®’ online LEXILE ANALYZER®,” or by some other means unknown to

MetaMetrics (emphasis added). Thus, MetaMetrics expressly warned NWEA that it had created

an unlicensed, infringing, counterfeit, and specious link between NWEA’s reader assessment

scores and MetaMetrics’ proprietary scale of Lexile Measures for text.

  • 48. Defendants’ actions and continued threatened ongoing actions constitute

unauthorized and infringing use of the MetaMetrics Marks. Defendants are using, and intend to

use, the registered MetaMetrics Marks to promote Defendants’ goods and services without license

or authorization from MetaMetrics of any kind. This unauthorized conduct includes the

publication of an online and in print advertisement of the so-called “Improved Lexile Estimates,”

by using the MetaMetrics Marks and comments which falsely represent that Defendants’ goods

and services are related to, similar to, equivalent to, or derived from, MetaMetrics’ authentic goods

and services bearing one or more of the MetaMetrics Marks. NWEA fails to disclose to consumers

the fact that its use of the MetaMetrics Marks is unauthorized by MetaMetrics and that

MetaMetrics affirmatively disapproves of these “Lexile Estimates.” Furthermore, Defendants are

marketing some form of “RIT to Reading Range” that uses a 150-point interval scale, which

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mimics MetaMetrics’ proprietary and protected 150-point interval scale for its well-known Lexile

Framework.

  • 49. Defendants’ conduct and intended conduct implicate interstate commerce and

commerce within Oregon, because Defendants are willfully and knowingly directing their

advertising and sales of goods and services to consumers both within and outside the State of

Oregon.

  • 50. On June 9, 2017, after receiving MetaMetrics’ demand letter that same afternoon,

NWEA submitted its demand for arbitration to the American Arbitration Association. A true and

correct copy of that demand is set forth in attached E J. NWEA’s demand for arbitration is

improper. The present dispute does not belong in arbitration because it clearly bears no relation

to the 1999 Agreement. MetaMetrics has moved to dismiss that proceeding.

  • E. The MetaMetrics Marks Are Sufficiently Famous In Oregon To Qualify For Protection Under Oregon’s Anti-Dilution Statute.

    • 51. The MetaMetrics Marks are highly-distinctive and famous trademarks and service

marks in the State of Oregon deserving Oregon’s statutory anti-dilution protections, because they

are widely recognized as a designation of the source of MetaMetrics’ goods and services. For

example, the MetaMetrics Marks have been extensively promoted throughout Oregon for more

than a decade through a variety of advertising and marketing channels, including through

MetaMetrics’ website, social media, and numerous educational conferences and industry events

held in the State of Oregon.

  • 52. Numerous companies selling products and services in Oregon have licensed the

Lexile Framework from MetaMetrics including, but not limited to, Capstone, Amplify, Istation,

Achieve3000, Scholastic, Dynamic Measurement Group, and Reading Horizons.

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  • 53. From 2004 to 2014, MetaMetrics had a direct contract with the State of Oregon to

report Lexile Measures for readers. Literally, hundreds of thousands of students in the state of

Oregon received Lexile Measures during this ten-year period. Over the years, MetaMetrics has

worked extensively with several publishers based in Oregon that properly licensed the Lexile

Framework from MetaMetrics. Those publishers include: Scholastic, Oregon Department of

Education, River Canyon Press, and Morgan Mackenzie Publishing.

  • 54. Numerous Oregon state agencies and their personnel have knowledge of

MetaMetrics’ Lexile-branded services and publish extensive information about the Lexile

Framework and Lexile Measures, including the Oregon Department of Education, Oregon State

Superintendent of Education, Oregon Literacy Framework, and the Oregon School Library

Information System. Dozens of Oregon School Districts in numerous geographic regions

throughout the state publish information about the Lexile Framework and Lexile Measures,

including some of the largest school districts, including the Portland School District (55,917

student population), Beaverton School District (44,634 student population), and the Salem-Kizer

School District (45,634 student population).

  • 55. The Lexile Framework and the Lexile Measures have also received numerous

accolades and acclaim from MetaMetrics’ customers and their constituents in Oregon. For

example, the Oregon Department of Education has acknowledged on its website that the Lexile

Framework is “[r]ecognized as the most widely adopted reading measure, Lexile Measures enable

educators, parents, and students to select targeted reading materials that can improve their reading

skills and monitors their reading growth across the curriculum.” This information is available at

http://www.ode.state.or.us/search/page/?=1638 (last visited July 2, 2017).

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  • 56. NWEA is engaging in trademark dilution by its conduct that is blurring the

distinctiveness of the famous MetaMetrics Marks and tarnishing them in the marketplace. For

example, NWEA recently stated that it has created “Improved Lexile Measures.” This statement

blurs the MetaMetrics Marks by impairing their distinctiveness as famous marks in Oregon

through NWEA’s association of its goods and services advertised as “Improved Lexile Measures.”

This statement also tarnishes the MetaMetrics Marks through a demonstrably false statement that

insinuates that something was previously “wrong” with MetaMetrics’ Lexile Measures and that

NWEA has somehow “fixed” them. Moreover, NWEA’s unauthorized and intentionally

misguided use of a purportedly scientifically based “2017 Algorithm” to concoct these “Improved

Lexile Measures” simply exacerbates this disparagement of MetaMetrics’ goods and services.

Only MetaMetrics or one of its officially licensed partners using sophisticated technology and

systems (as described above) has the ability to provide authentic, certified Lexile Measures. These

so-called “Improved Lexile Measures” are simply false Lexile Measures. Likewise, the purported

“disclaimer” does not help the situation, but in fact, makes it worse. Given how MetaMetrics has

maintained strict control over the issuance of Lexile Measures from the very beginning, educators,

publishers, and other third parties could easily interpret this disclaimer as endorsement,

association, sponsorship, recognition of compatibility, or tacit approval of NWEA’s conduct by

MetaMetrics.

  • F. Defendants Chapman And Strickler Are The Active And Conscious Forces Behind NWEA’s Infringing, Unfair, Deceptive, And Diluting Conduct.

    • 57. Defendant Chapman has worked for NWEA for more than ten years. In his role as

the Chief Executive Officer of NWEA, he has directed and overseen NWEA’s growth with the

introduction of new products and services.

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  • 58. On information and belief, Mr. Chapman was directly involved with or oversaw

NWEA’s prohibited access and abuse of MetaMetrics’ Lexile Analyzer and NWEA’s

impermissible uses of the Lexile Analyzer. On information and belief, Mr. Chapman was also

directly involved with or oversaw those employees responsible for NWEA’s development of

infringing and confusing references to MetaMetrics’ programs and services, including the Lexile

Analyzer, intending to make them appear inadequate, outdated, or in some sense inferior.

  • 59. On information and belief, Mr. Chapman is credited with NWEA’s growth in the

number of students served from approximately less than 2 million in or about 2007 to over 9

million today. NWEA has experienced this growth, in part, because of its use of Lexile Measures.

After nearly 18 years of being able to report Lexile Measures under license from MetaMetrics, for

reasons developed under the direction and control of management under Mr. Chapman, NWEA

now believes it can create an unlicensed, infringing, diluting, and false “equivalent” to Lexile

Measures without reproach.

  • 60. As CEO of NWEA, Mr. Chapman is the active, conscious force behind NWEA’s

infringing, diluting, and demonstrably unfair actions. In fact, on multiple occasions Mr. Chapman

has admitted the prominence of, and the necessity of, tying Lexile Measures to the success of

NWEA, telling MetaMetrics’ representatives essentially that “the market demands Lexiles, and

we intend to give them Lexiles.”

  • 61. Defendant Strickler is the Chief Operating Officer of NWEA and he leads the

business operations of NWEA in pursuit of its strategic objectives and business plan. On

information and belief, NWEA’s strategic objectives and business plan include unlawfully

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associating NWEA’s products and services with those of MetaMetrics to appear as if NWEA’s

“2017 Algorithm” is sponsored or endorsed or licensed by MetaMetrics.

  • 62. On information and belief, Mr. Strickler directed or oversaw NWEA’s

misappropriation of and abuse of MetaMetrics’ copyrighted programs and he directed or oversaw

NWEA’s false association with and tarnishing mischaracterizations of MetaMetrics’ protected

products and services.

  • 63. As COO and the leader of NWEA’s business operations, Mr. Strickler consciously

and actively guided NWEA’s conduct to engage in the Lanham Act and Copyright Act violations

described above.

  • 64. Both Mr. Chapman and Mr. Strickler were actively involved in the negotiations

with MetaMetrics regarding the renewal, and ultimately termination, of the 1999 Agreement.

Their negotiating tactics and stated positions showcased their and NWEA’s bad faith and malicious

intent. During the course of these discussions in 2017 (just like during the discussions that

occurred in 2010 and 2014), NWEA’s representatives improperly attempted to leverage NWEA’s

ill-conceived “right” to create and use unauthorized Lexile Measures as a basis for demanding

more favorable pricing terms from MetaMetrics.

  • 65. On information and belief, in their leadership capacities, both Defendants Chapman

and Strickler acted as major guiding forces behind NWEA’s infringing conduct and bad faith

intent.

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  • V. CLAIMS FOR RELIEF

COUNT I FEDERAL TRADEMARK INFRINGEMENT LANHAM ACT , U.S.C.

  • 66. MetaMetrics re-alleges and incorporates the allegations set forth in paragraphs 1

through 65 herein.

  • 67. Defendants’ acts as stated herein constitute use in commerce of reproductions,

counterfeits, copies, or colorable imitations of the valid and protectable MetaMetrics Marks, which

MetaMetrics owns and are federally registered to MetaMetrics, in connection with the sale,

offering for sale, distribution and advertising of goods and services on or in connection with which

such use is likely to cause confusion, or to cause mistake, or to deceive; in violation of 15 U.S.C.

§ 1114.

  • 68. Defendants’ acts as stated herein constitute reproductions, counterfeits, copies, or

colorable imitations of MetaMetrics’ federally registered MetaMetrics Marks, which Defendants

have applied to websites, electronic presentations and displays of infringing content, labels, signs,

prints, packages, wrappers, receptacles, or advertisements intended to be used in commerce upon

or in connection with the sale, offering for sale, distribution and advertising of goods and services

on or in connection with which such use is likely to cause confusion, or to cause mistake, or to

deceive; in violation of 15 U.S.C. § 1114.

  • 69. Defendants’ use in commerce of reproductions, counterfeits, copies, or colorable

imitations of MetaMetrics Marks on or in connection with Defendants’ goods and services is

without MetaMetrics’ consent or authorization.

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  • 70. Defendants’ use in commerce of reproductions, counterfeits, copies, or colorable

imitations of MetaMetrics Marks on or in connection with Defendants’ goods and services is likely

to cause confusion, to cause mistake or to deceive.

  • 71. Defendants’ acts as stated herein have been willful, with full knowledge, and in

conscious disregard of MetaMetrics’ rights in the MetaMetrics Marks, and with intent to trade off

MetaMetrics’ vast goodwill in its registered MetaMetrics Marks.

  • 72. Defendants’ acts as stated herein have been willful and with full knowledge that

such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

  • 73. Defendants NWEA, Chapman, and Strickler each has engaged in the foregoing

conduct, and they have acted in concert with respect to the foregoing conduct.

  • 74. The intentional nature of Defendants’ acts as stated herein makes this case an

exceptional case under Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), which should result

in an award of attorney’s fees to MetaMetrics.

  • 75. As a result of Defendants’ foregoing actions, Defendants have been unjustly

enriched, and MetaMetrics has been injured and damaged. Unless the foregoing alleged actions

of Defendants are enjoined, MetaMetrics will continue to suffer irreparable injury and damage.

COUNT II FEDERAL UNFAIR COMPETITION, FALSE DESIGNATION OF ORIGIN, AND FALSE ADVERTISING LANHAM ACT A , U.S.C. A

  • 76. MetaMetrics re-alleges and incorporates the allegations set forth in paragraphs 1

through 75 herein.

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  • 77. Defendants’ unauthorized use of the MetaMetrics Marks in misrepresentations and

false association of their goods or services having the ability to generate “Improved Lexile

Estimates,” correlating their goods and services without authorization to “an estimated Lexile®

reading range” and promoting resultant “shifts in Lexile levels” as acceptable in commerce falsely

indicates that Defendants or their agents are connected with, sponsored, endorsed, authorized, or

approved by, or affiliated with MetaMetrics, or that Defendants’ goods and services are connected

with, sponsored, endorsed, authorized, or approved by, or affiliated with MetaMetrics.

  • 78. Defendants’ unauthorized use of the MetaMetrics Marks, including, but not limited

to, the use and advertisement of “Improved Lexile Estimates,” correlating their goods and services

without authorization to “an estimated Lexile® reading range” and promoting resultant “shifts in

Lexile levels,” is likely to cause, and/or has caused, confusion, mistake or deception as to the

source or affiliation of Defendants’ goods and services.

  • 79. NWEA’s unauthorized use of the MetaMetrics Marks, including, but not limited to,

the use of “Improved Lexile Estimates,” correlating their goods and services without authorization

to “an estimated Lexile® reading range” and promoting resultant “shifts in Lexile levels,” in

NWEA’s commercial advertising or promotion misrepresents the nature of, the characteristics, and

qualities of Defendants’ goods and services as equivalent to, similar to, or related to MetaMetrics’

authentic goods and services.

  • 80. Defendants’ unauthorized use of the MetaMetrics Marks, including, but not limited

to, the use of “Improved Lexile Estimates,” correlating their goods and services without

authorization to “an estimated Lexile® reading range” and promoting resultant “shifts in Lexile

levels,” in connection with its goods and services allows Defendants to receive the benefit of

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MetaMetrics’ goodwill, which MetaMetrics has established at great labor and expense, and further

allows Defendants to gain acceptance of Defendants’ goods and services, based not on their own

qualities, but on the reputation, investment, hard work and goodwill of MetaMetrics.

  • 81. The acts of Defendants as stated herein constitute willful unfair competition in

violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

  • 82. The acts of Defendants as stated herein constitute willful false designation of origin,

in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

  • 83. The acts of Defendants as stated herein constitute willful false advertising, in

violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

  • 84. The intentional nature of Defendants’ acts as stated herein makes this an

exceptional case under Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), which should result

in an award of attorney’s fees to MetaMetrics.

  • 85. Defendants NWEA, Chapman, and Strickler each has engaged in the foregoing

conduct, and they have acted in concert with respect to the foregoing conduct.

  • 86. As a result of Defendants’ foregoing actions, NWEA has been unjustly enriched

and MetaMetrics has been injured and damaged. Unless Defendants’ foregoing alleged actions

are enjoined, MetaMetrics will continue to suffer irreparable injury and damage.

COUNT III COPYRIGHT INFRINGEMENT U.S.C. , et seq.

  • 87. MetaMetrics re-alleges and incorporates the allegations set forth in paragraphs 1

through 86 herein. MetaMetrics’ Lexile Analyzer constitutes an original work of authorship and

copyrightable subject matter under the laws of the United States.

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  • 88. As the creator of the original work of the Lexile Analyzer, MetaMetrics is the sole

owner of all exclusive rights in and to the Lexile Analyzer, as further set forth and described

previously in this Complaint.

  • 89. Defendants have copied and created derivatives works of the original expression of

the Lexile Analyzer without the consent or authority of MetaMetrics, including but not limited to

the storage of cache copies of Lexile Analyzer content on Defendants’ computers for uses that are

inconsistent with the express conditions set forth in the Lexile Analyzer Terms of Use, thereby

directly infringing MetaMetrics’ exclusive rights under the Copyright Act.

  • 90. Defendants’ foregoing acts constitute infringement of MetaMetrics’ exclusive

rights in violation of the Copyright Act, 17 U.S.C. §§ 106 and 501.

  • 91. Defendants’ actions were and are intentional, willful, wanton, and performed in

disregard of MetaMetrics’ rights.

  • 92. Defendants NWEA, Chapman, and Strickler each has engaged in the foregoing

conduct, and they have acted in concert with respect to the foregoing conduct.

  • 93. MetaMetrics is entitled to injunctive relief pursuant to 17 U.S.C. § 502.

MetaMetrics has no adequate remedy at law for Defendants’ wrongful conduct, and will suffer

irreparable harm without an injunction.

  • 94. As a result of Defendants’ foregoing actions, MetaMetrics has been and will

continue to be damaged, and Defendants have been unjustly enriched, by Defendants’ unlawful

infringement of MetaMetrics copyrighted Lexile Analyzer in an amount to be determined at trial.

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  • 95. Alternatively, MetaMetrics is entitled to statutory damages under 17 U.S.C. §

504(c), which damages, for the reasons set forth above, should be enhanced in accordance with 17

U.S.C. § 504(c)(2).

  • 96. MetaMetrics is entitled to recover its attorney’s fees and costs of suit pursuant to

17 U.S.C. § 505.

COUNT IV OREGON TRADEMARK INFRINGEMENT

O.R.S. .

AND OREGON COMMON LAW

  • 97. MetaMetrics re-alleges and incorporates the allegations set forth in paragraphs 1

through 96 herein.

  • 98. Defendants’ acts as stated herein constitute use in commerce of reproductions,

counterfeits, copies, or colorable imitations of the valid and protectable MetaMetrics Marks, which

MetaMetrics owns and are registered by MetaMetrics, in connection with the sale, offering for

sale, distribution and advertising of goods and services.

  • 99. Defendants’ acts as stated herein constitute reproductions, counterfeits, copies, or

colorable imitations of the MetaMetrics Marks, state registered marks and marks in which

MetaMetrics has established rights at common law, which Defendants have applied to online web

content used in advertisements, labels, signs, prints, packages, wrappers, receptacles, or

advertisements intended to be used in commerce upon or in connection with the sale, offering for

sale, distribution and advertising of goods and services.

  • 100. Defendants’ use in commerce of reproductions, counterfeits, copies, or colorable

imitations of the MetaMetrics Marks on or in connection with Defendants’ goods and services is

without MetaMetrics’ consent or authorization.

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  • 101. Defendants’ use in commerce of reproductions, counterfeits, copies, or colorable

imitations of the MetaMetrics Marks on or in connection with Defendants’ goods and services is

likely to cause confusion, to cause mistake or to deceive.

  • 102. Defendants’ acts as stated herein have been willful, with full knowledge, in bad

faith, and in conscious disregard of MetaMetrics’ rights in its MetaMetrics Marks, and with intent

to trade off MetaMetrics’ vast goodwill in its registered MetaMetrics Marks.

  • 103. Defendants’ acts as stated herein have been willful, with full knowledge and in bad

faith, that such imitation is intended to be used to cause confusion, or to cause mistake, or to

deceive.

  • 104. The intentional nature of Defendants’ acts as stated herein are in bad faith, with full

knowledge, and under exceptional circumstances, which should result in an award of three times

the damages and ill-gotten profits, and attorney’s fees to MetaMetrics.

  • 105. As a result of Defendants’ foregoing actions, Defendants have been unjustly

enriched, and MetaMetrics has been injured and damaged. Unless the foregoing alleged actions

of Defendants are enjoined, MetaMetrics will continue to suffer irreparable injury and damage.

Defendants’ foregoing actions are in violation of Oregon Revise d Statutes § 647.105 and Oregon

common law.

  • 106. Defendants NWEA, Chapman, and Strickler each has engaged in the foregoing

conduct, and they have acted in concert with respect to the foregoing conduct.

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COUNT V

OREGON TRADEMARK DILUTION

  • 107. MetaMetrics re-alleges and incorporates the allegations set forth in paragraphs 1

through 106 herein.

  • 108. MetaMetrics’ Marks are famous within a significant portion of the general

consuming public in the State of Oregon, both geographically and in the education industry. The

MetaMetrics Marks are registered federally, and registered in the State of Oregon. A significant

portion of the general consuming public in Oregon, including educators and students, recognize

MetaMetrics Marks as designating MetaMetrics as the source of its goods and services.

  • 109. The MetaMetrics Marks have been widely promoted and used in commerce in

Oregon for well over a decade.

  • 110. MetaMetrics derives substantial revenue from sales of goods and services in

Oregon identified as their source from use of the MetaMetrics Marks.

  • 111. Defendants’ use of the MetaMetrics Marks is likely to cause dilution by blurring

and by tarnishing the MetaMetrics Marks. Defendants’ use of MetaMetrics Marks began after

MetaMetrics Marks became famous in Oregon.

  • 112. Defendants willfully intended to cause dilution to, and trade on the recognition of,

the famous MetaMetrics Marks in violation of O.R.S. § 647.107.

  • 113. As a result of Defendants’ foregoing actions, Defendants have been unjustly

enriched and MetaMetrics has been injured and damaged. Unless the foregoing alleged actions of

Defendants are enjoined, MetaMetrics will continue to suffer irreparable injury and damage.

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  • 114. Defendants NWEA, Chapman, and Strickler each has engaged in the foregoing

conduct, and they have acted in concert with respect to the foregoing conduct.

COUNT VI

OREGON UNLAWFUL TRADE PRACTICES ACT

O.R.S. .

TO .

  • 115. MetaMetrics re-alleges and incorporates the allegations set forth in paragraphs 1

through 114 herein.

  • 116. Defendants’ use of the MetaMetrics Marks including but not limited to, “Improved

Lexile Estimates,” correlating their goods and services without authorization to “an estimated

Lexile® reading range” and promoting resultant “shifts in Lexile levels,” constitutes passing off

Defendants’ goods and services as MetaMetrics’ goods and services.

  • 117. Defendants’ use of the MetaMetrics Marks including but not limited to, “Improved

Lexile Estimates,” correlating their goods and services without authorization to “an estimated

Lexile® reading range” and promoting resultant “shifts in Lexile levels,” has been and is causing

a likelihood of confusion or misunderstanding as to the source, sponsorship, or approval of

Defendants’ goods and services.

  • 118. Defendants’ use of the MetaMetrics Marks, including but not limited to, “Improved

Lexile Estimates,” correlating their goods and services without authorization to “an estimated

Lexile® reading range” and promoting resultant “shifts in Lexile levels,” has been and is causing

a likelihood of confusion as to Defendants’ affiliation, connection, association with, or certification

by MetaMetrics.

  • 119. Defendants’ use of the MetaMetrics Marks, including but not limited to, “Improved

Lexile Estimates,” correlating their goods and services without authorization to “an estimated

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Lexile® reading range” and promoting resultant “shifts in Lexile levels,” misrepresents the

sponsorship, approval, characteristics, uses, benefits and qualities of Defendants goods and

services, which their goods and services do not have.

  • 120. Defendants’ disparagement of MetaMetrics’ goods and services in Defendants’

advertising and publications, including but not limited to Defendants’ description of “Improved

Lexile Estimates,” correlating their goods and services without authorization to “an estimated

Lexile® reading range” and promoting resultant “shifts in Lexile levels,” misrepresents the

characteristics, uses, benefits, or qualities of MetaMetrics’ goods and services.

  • 121. Defendants’ actions described herein are likely to cause confusion among members

of the public.

  • 122. As a result of Defendants’ willful actions as described herein, MetaMetrics has

suffered damages, and MetaMetrics will be irreparably harmed without an injunction.

  • 123. As a result of Defendants’ willful conduct as described herein, MetaMetrics is

entitled to injunctive relief and monetary damages, including MetaMetrics’ actual damages, costs,

and Defendants’ gains, profits and advantages obtained as a result of their unfair and deceptive

acts.

  • 124. As a result of Defendants’ willful conduct as described herein, MetaMetrics is

entitled to an award of punitive damages.

  • 125. As a result of Defendants’ actions described herein, MetaMetrics is entitled to

recover its attorneys’ fees and costs.

  • 126. Defendants’ conduct constitutes unfair trade practices in the conduct of a business

in violation of Oregon’s Unfair Trade Practices Act, Oregon Rev. Stat. §§ 646.605 to 646.656.

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  • 127. Defendants NWEA, Chapman, and Strickler each has engaged in the foregoing

conduct, and they have acted in concert with respect to the foregoing conduct.

COUNT VII COMMON LAW UNFAIR COMPETITION AND FALSE ADVERTISING

  • 128. MetaMetrics re-alleges and incorporates the allegations set forth in paragraphs 1

through 127 herein.

  • 129. Defendants’ copying of MetaMetrics Marks is infringing MetaMetrics’ rights and

creating a likelihood of confusion amongst consumers as to the origin, endorsement, or approval

of the goods and services bearing the unauthorized references to “Improved Lexile Estimates,”

correlating their goods and services without authorization to “an estimated Lexile® reading range”

and promoting resultant “shifts in Lexile levels.”

  • 130. Defendants’ aforementioned acts constitute unfair competition and infringement of

MetaMetrics’ common law rights in the MetaMetrics Marks, Lexile Analyzer, and other

proprietary technology and information owned by MetaMetrics in violation of the common law of

the State of Oregon.

  • 131. Defendants NWEA, Chapman, and Strickler each has engaged in the foregoing

conduct, and they have acted in concert with respect to the foregoing conduct.

  • 132. MetaMetrics has no adequate remedy at law and has continued to suffer irreparable

harm and damage as a result of Defendants’ aforesaid acts, which, if not enjoined, will cause

additional injury and loss. MetaMetrics is entitled to monetary damages, including MetaMetrics’

actual damages, costs and Defendants’ gains, profits and advantages obtained as a result of its

infringing acts.

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COUNT VIII REACH OF CONTRACT

  • 133. MetaMetrics re-alleges and incorporates the allegations set forth in paragraphs 1

through 132 herein.

  • 134. Defendants have materially breached the terms of the Lexile Analyzer Terms of

Use to which they agreed in order to obtain a license to use the Lexile Analyzer.

  • 135. Defendants have failed to use the Lexile Analyzer as required under the Lexile

Analyzer Terms of Use and within the scope of those terms, by using the Lexile Analyzer to create

the 2017 Algorithm and to use the Lexile Analyzer to generate unauthorized “Lexile Estimates”

and other unauthorized derivative works created and promoted as Lexile Measures for the reading

comprehension level of individual readers and identified as an estimated Lexile measure for

individual readers.

  • 136. Defendants’ breaches of the aforesaid agreement have caused damages to, and are

continuing to harm, MetaMetrics.

  • 137. Because of Defendants’ actions as stated herein, MetaMetrics will be irreparably

harmed without the entry of an injunction from the court.

COUNT I TORT OF CONVERSION

  • 138. MetaMetrics re-alleges and incorporates the allegations set forth in paragraphs 1

through 137 herein.

  • 139. Defendants have misappropriated, taken, and used MetaMetrics’ proprietary

material to promote their own goods and services without MetaMetrics’ consent.

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  • 140. By engaging in the aforementioned conduct with intent and full knowledge,

Defendants have significantly interfered with, and wrongfully and illegally exercised dominion

and control over, MetaMetrics’ proprietary material, which constitutes MetaMetrics’ property.

  • 141. Defendants NWEA, Chapman, and Strickler each has engaged in the foregoing

conduct, and they have acted in concert with respect to the foregoing conduct.

  • 142. Defendants’ aforementioned actions have caused substantial damages to

MetaMetrics, in an amount to be established at trial.

  • 143. Defendants’ wrongful actions of converting MetaMetrics’ property constitutes the

common law tort of conversion.

VI.

PRAYER FOR RELIEF

WHEREFORE, MetaMetrics prays that:

  • 1. The Court enter judgment in favor of MetaMetrics on all of its claims for relief,

including all recoverable claims for actual damages, enhanced damages, statutory damages and

any other monetary relief available to MetaMetrics;

  • 2. Defendants, and their agents, servants, employees, attorneys, and all others acting

in active concert or participation with any of them, be enjoined and restrained, during the pendency

of this action, and permanently thereafter, from:

  • a. using the MetaMetrics Marks, or any colorable imitations thereof, on or in connection with the design, manufacture, importation, advertisement, promotion, marketing, sale or other distribution of Lexile Measures, or linking to Lexile Measures for text, or any other goods or services;

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  • b. doing any other act or thing likely to confuse, mislead, or deceive others into believing that Defendants or their products emanate from, or are affiliated or connected with, or sponsored, endorsed or approved by, MetaMetrics;

  • c. making any representations concerning the quality of MetaMetrics’ goods or services, including but not limited to comparisons or other statements that disparage MetaMetrics’ goods and services;

  • d. using or disclosing any trade secret or Licensed Technology that MetaMetrics shared or disclosed in confidence with NWEA;

  • e. using MetaMetrics’ Lexile Analyzer in any manner that is inconsistent with the terms of the original licensing agreement and subsequent to its expiration, with the terms and conditions applicable to its use as posted at the Website;

  • 3. Defendants, their agents, servants, employees, attorneys, and all others in active

concert or participation with any of them, be enjoined and required, during the pendency of this

action, and permanently thereafter, to:

  • a. return MetaMetrics’ Licensed Technology pursuant to the parties’ 1999 Agreement;

  • b. preserve the confidentiality of all trade secrets that MetaMetrics shared with NWEA in connection with, but not limited to, the parties’ 1999 Agreement;

  • 4. The American Arbitration Association, and any designated arbitrator(s), be

enjoined, preliminarily, and permanently, from undertaking any arbitration proceedings for any

dispute between MetaMetrics and NWEA;

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  • 5. An accounting be ordered to determine Defendants’ profits resulting from its

activities and an Order compelling Defendants to pay all such profits to MetaMetrics and increased

as the Court finds to be just under the circumstances of this case;

  • 6. Defendants be required to pay to MetaMetrics damages, jointly and severally,

pursuant to the above-stated claims for relief;

  • 7. Defendants be required to deliver to MetaMetrics for destruction all labels, signs,

prints, packages, containers, product and advertisements in Defendants’ possession or control

bearing the MetaMetrics Marks, or any colorable imitations thereof;

  • 8. Defendants be required to file with the Court, and serve upon MetaMetrics, within

thirty (30) days after the entry and service on Defendants of an injunction, a report in writing and

under oath, setting forth in detail the manner and form in which Defendants have complied with

the terms of such injunction;

  • 9. Defendants pay to MetaMetrics the attorney’s fees and costs that MetaMetrics

incurs in connection with this litigation;

  • 10. Defendants pay to MetaMetrics statutory damages due to Defendants’ infringement

of MetaMetrics’ copyrights;

  • 11. The Court retain jurisdiction of this action for the purpose of enabling MetaMetrics

to apply to the Court in the future for such further orders and directions as may be necessary or

appropriate for the interpretation or execution of any Order entered in this action, for the

modification of any such Order, for the enforcement or compliance therewith, and for the

enforcement of any violations therefore; and

/ / /

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  • 12. MetaMetrics recover such other relief as the Court deems equitable and just.

DATED this 6 th day of July, 2017.

By:

/s/ Jeff Pitzer

Jeff Pitzer, OSB 020846 jpitzer@pitzerlaw.net

PITZER LAW

101 SW Main Street, Suite 805

Portland, OR 97204 Phone: (503) 227-1477 Fax: (503) 227-5839 Counsel for Plaintiff MetaMetrics, Inc.

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