MetaMetrics Complaint

Case 3:17-cv-01059-BR Document 1 Filed 07/06/17 Page 1 of 43
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., Civ. No. 3:17-cv-1059
Plaintiff, VERIFIED COMPLAINT FOR

v. TRADEMARK INFRINGEMENT,
COPYRIGHT INFRINGEMENT,
NWEA (F/K/A NORTHWEST EVALUATION UNFAIR COMPETITION, FALSE
ASSOCIATION), an Oregon Domestic Nonprofit ADVERTISING, AND OTHER
Corporation; MATTHEW CHAPMAN, an CLAIMS
individual; JEFF STRICKLER, an individual,
JURY TRIAL DEMANDED
Defendants.
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 -
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 NWEAs website that it has purportedly created a new
and improved method for generating an estimated Lexile range for readers. NWEAs 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
VERIFIED COMPLAINT - 2
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 Analyzers 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 students reader measure. NWEAs 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 Analyzers 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
attorneys fees and costs. Furthermore, MetaMetrics is entitled to recover for breach of contract.
NWEAs conduct to date and threatened future conduct will inflict tremendous damage and harm
to MetaMetrics in an amount to be proven at trial, but conservatively believed to be in the millions
of dollars, as NWEAs 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 individuals 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,
1998, and having a first use date at least as early as January 5, 1996, is set forth in attached
E A (page 2).
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).
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).
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
mathematical comprehension skills; education testing; and developing 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 42, 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).
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).
for educational services, namely, preparing, administering, scoring and reporting on standardized
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).
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).
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
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, Inc. 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. NWEAs
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, Portland, 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
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 NWEAs 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
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
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 students reading ability and a texts
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:
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.
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 nations 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 publishers 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 texts complexity.
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 partners 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.
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.
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, NWEAs
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
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 NWEAs 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
stored in the NWEA users web browsers cache and/or in the random access memory (RAM)
on the end users 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. NWEAs 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, NWEAs 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
NWEAs 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 NWEAs

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 NWEAs 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
NWEAs 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.
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 NWEAs use
and reporting of non-certified Lexile estimates, or representing any other association linking
NWEAs 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 NWEAs 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
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. NWEAs 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 Oregons Anti-Dilution Statute.
51. The MetaMetrics Marks are highly-distinctive and famous trademarks and service
marks in the State of Oregon deserving Oregons 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.
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).
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 NWEAs 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, NWEAs 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 NWEAs conduct by
MetaMetrics.
F. Defendants Chapman And Strickler Are The Active And Conscious Forces Behind
NWEAs 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 NWEAs growth with the
introduction of new products and services.
58. On information and belief, Mr. Chapman was directly involved with or oversaw
NWEAs prohibited access and abuse of MetaMetrics Lexile Analyzer and NWEAs
impermissible uses of the Lexile Analyzer. On information and belief, Mr. Chapman was also
directly involved with or oversaw those employees responsible for NWEAs 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 NWEAs 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 NWEAs
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, NWEAs strategic objectives and business plan include unlawfully
associating NWEAs products and services with those of MetaMetrics to appear as if NWEAs
2017 Algorithm is sponsored or endorsed or licensed by MetaMetrics.
62. On information and belief, Mr. Strickler directed or oversaw NWEAs
misappropriation of and abuse of MetaMetrics copyrighted programs and he directed or oversaw
NWEAs false association with and tarnishing mischaracterizations of MetaMetrics protected
products and services.
63. As COO and the leader of NWEAs business operations, Mr. Strickler consciously
and actively guided NWEAs 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 NWEAs bad faith and malicious
intent. During the course of these discussions in 2017 (just like during the discussions that
occurred in 2010 and 2014), NWEAs representatives improperly attempted to leverage NWEAs
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 NWEAs infringing conduct and bad faith
intent.
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.
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 attorneys 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
through 75 herein.
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. NWEAs 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
NWEAs 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
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 attorneys fees to MetaMetrics.
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.
through 86 herein. MetaMetrics Lexile Analyzer constitutes an original work of authorship and
copyrightable subject matter under the laws of the United States.
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.
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.
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 attorneys fees and costs of suit pursuant to
17 U.S.C. 505.
COUNT IV
OREGON TRADEMARK INFRINGEMENT
O.R.S. . AND OREGON COMMON LAW
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.
imitations of the MetaMetrics Marks on or in connection with Defendants goods and services is
without MetaMetrics consent or authorization.
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 attorneys fees to MetaMetrics.
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 Revised Statutes 647.105 and Oregon
common law.
COUNT V
OREGON TRADEMARK DILUTION
O.R.S. .
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.
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 VI
OREGON UNLAWFUL TRADE PRACTICES ACT
O.R.S. . TO .
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 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 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 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 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 Oregons Unfair Trade Practices Act, Oregon Rev. Stat. 646.605 to 646.656.
COUNT VII
COMMON LAW UNFAIR COMPETITION AND FALSE ADVERTISING
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.
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.
COUNT VIII
REACH OF CONTRACT
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
through 137 herein.
139. Defendants have misappropriated, taken, and used MetaMetrics proprietary
material to promote their own goods and services without MetaMetrics consent.
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.
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;
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;
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 attorneys 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
///
12. MetaMetrics recover such other relief as the Court deems equitable and just.
DATED this 6th 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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Case 3:17-cv-01059-BR Document 1 Filed 07/06/17 Page 1 of 43

JEFF PITZER, OSB 020846

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

METAMETRICS, INC., Civ. No. 3:17-cv-1059

Plaintiff, VERIFIED COMPLAINT FOR

I. INTRODUCTION & SUMMARY OF RELIEF REQUESTED

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

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,

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

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

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

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

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

of dollars, as NWEAs 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

Oregon and the United States at great expense.

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

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

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

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

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

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

forth in attached E A (page 12).

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

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

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

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

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

within NWEA to engage in this conduct.

NWEA to engage in this conduct.

MetaMetrics in this judicial district.

28 U.S.C. 1332(a) and 1367(a).

III. FACTUAL ACKGROUND REGARDING METAMETRICS AND ITS

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

23. MetaMetrics is an educational measurement and research organization that

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

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

contributions to the education of all students.

the text complexity of materials he or she encounters.

national standards can be measured.

B. MetaMetrics Allows Only Its Licensed Partners To Publish Lexile Measures To

and fosters literacy.

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

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

for them to measure reading ability.

its publisher partners.

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

Lexile Measure of each texts complexity.

IV. ACKGROUND REGARDING DEFENDANTS CREATION OF UNAUTHORIZED,

A. The 1999 Licensing Agreement Between MetaMetrics And NWEA.

B. Amendments To The 1999 Agreement.

redacted, is set forth in attached E D.

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