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James D. Nelson, OSB #72219

jnelson@bpmlaw.com

BETTS, PATTERSON, & MINES, P.S.

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Telephone: (206) 292-9988

Facsimile: (206) 343-7053

Pam Kohli Jacobson, pro hac vice

pjacobson@bpmlaw.com

BETTS, PATTERSON, & MINES, P.S.

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Telephone: (206) 292-9988

Facsimile: (206) 343-7053

Attorneys for Defendants University of Oregon,

Mia Tuan, Edward J. Kame'enui, Francis J. Fien,

and Brad Shelton

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

EUGENE DIVISION

DYNAMIC MEASUREMENT GROUP, INC.,

an Oregon corporation,

Plaintiff,

vs.

UNIVERSITY OF OREGON, a special

governmental body as defined by ORS

174.117(1)(i); MIA TUAN, individually and in

Case No.: 6:14-cv-01295-TC

DEFENDANTS UNIVERSITY OF

OREGON, MIA TUAN, EDWARD J.

KAME'ENUI, FRANCIS J. FIEN IV,

AND BRAD SHELTON'S ANSWER,

AFFIRMATIVE DEFENSES AND

COUNTERCLAIMS TO DYNAMIC

MEASUREMENT GROUP, INC.'S

COMPLAINT FOR TRADEMARK
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her official capacity; EDWARD J. KAME’ENUI,

individually and in his official capacity;

FRANCIS J. FIEN IV, a/k/a Hank Fein,

individually and in his official capacity; BRAD

SHELTON, individually and in his official

capacity; and HOP SKIP TECHNOLOGIES

INC., an Oregon corporation,

Defendants.

AND COPYRIGHT INFRINGEMENT

DEMAND FOR JURY TRIAL

Defendants University of Oregon (the "University"), Mia Tuan, Edward Kame'enui,

Francis Fien IV, and Brad Shelton (collectively, the "University Defendants") by and through

their undersigned counsel, hereby assert that Plaintiff, Dynamic Measurement Group, Inc.

("DMG") and its principals, Drs. Good and Kaminski, systematically misappropriated the

University's federally-funded intellectual property for their own profit.

Dr. Good admitted to this fraud in his sworn testimony before the United States House of

Representatives Committee on Education and Labor. In fact, the public record is replete with

such evidence. For DMG's trademark registrations, Drs. Good and Kaminski filed trademark

applications for trademarks that DMG did not own, and submitted University webpages to the

Trademark Office to prove DMG's use of the marks. For DMG's copyright registrations, Drs.

Good and Kaminski again registered works that DMG did not own, and that expressly credit the

authorship and support of the University, their University colleagues and federal research grants.

However, the greatest travesty arises from DMG's use of the University's DIBELS

trademark to sell an unsound reading assessment product. Because DMG uses the University's

DIBELS moniker, parents and educators are deceived into thinking that the DMG product is able

to detect a significant percentage of at-risk young readers when it cannot.

The University Defendants in answer to DMG's Complaint For Trademark and Copyright

Infringement ("Complaint"), hereby admit, deny, state, and allege as follows:
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THE PARTIES

1. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations of paragraph 1 of the Complaint and therefore

deny them.

2. The University Defendants admit that the University has a principal place of

business at 1585 E. 13th Avenue, Eugene, OR 97403. The University Defendants aver that the

University is an arm of the state under the Eleventh Amendment of the United States

Constitution and is a state entity under the Oregon Constitution. The University Defendants

deny the remaining allegations in paragraph 2 of the Complaint.

3. The University Defendants admit that Mia Tuan ("Professor Tuan") is a resident

of the State of Oregon. The University Defendants deny the remaining allegations in paragraph

3 the Complaint.

4. The University Defendants admit the allegations in paragraph 4 of the Complaint.

5. The University Defendants admit the allegations in paragraph 5 of the Complaint.

6. The University Defendants admit the allegations in paragraph 6 of the Complaint.

7. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations of paragraph 7 of the Complaint and therefore

deny them.

8. The University Defendants admit that the Complaint purports to allege claims

over which the Court has subject matter jurisdiction under 28 U.S.C. § 1331, 28 U.S.C. § 1338

and 28 U.S.C. § 1367. The University Defendants deny the remaining allegations in paragraph 8

of the Complaint.

9. The University Defendants do not contest venue in this action. The University

Defendants deny the remaining allegations in paragraph 9 of the Complaint.
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10. The University Defendants admit that Dr. Ruth Kaminski and Dr. Roland Good,

along with numerous other University faculty and staff researched and developed the Dynamic

Indicators of Basic Early Literacy Skills ("DIBELS"). The University Defendants admit

DIBELS are measures designed to test the early literacy skills of students. The University

Defendants deny the remaining allegations in paragraph 10 of the Complaint.

11. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations of paragraph 11 of the Complaint and therefore

deny them.

12. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations of paragraph 12 of the Complaint and therefore

deny them.

13. The University Defendants deny that Dr. Kaminski first conceived of the DIBELS

assessment measures. The University Defendants lack knowledge or information sufficient to

form a belief as to the truth or falsity of the remaining allegations of paragraph 13 of the

Complaint and therefore deny them.

14. The University Defendants admit that Dr. Kaminski obtained her Ph.D. from the

University in 1992. The University Defendants deny the remaining allegations in paragraph 14

of the Complaint.

15. The University Defendants admit that Dr. Good acted as Dr. Kaminski's doctoral

advisor. The University Defendants lack knowledge or information sufficient to form a belief as

to the truth or falsity of the allegations in paragraph 15 regarding Drs. Good and Kaminski's paid

DIBELS trainings and therefore deny them. The University Defendants aver that the document

attached as Exhibit A speaks for itself and deny the allegations of paragraph 15 to the extent they

do not accurately describe the document. The University Defendants deny the remaining

allegations in paragraph 15 of the Complaint.
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16. The University Defendants admit that the University focused academic research

on DIBELS. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 16 regarding the activities of other

universities. The University Defendants deny the remaining allegations in paragraph 16 of the

Complaint.

17. The University Defendants admit that schools began to adopt the DIBELS

measures in the 1990s. The University Defendants lack knowledge or information sufficient to

form a belief as to the truth or falsity as to the remaining allegations in paragraph 17 of the

Complaint and therefore deny them.

18. The University Defendants deny the allegations in paragraph 18 of the Complaint.

19. The University Defendants admit that the University developed and implemented

the DIBELS Data System at least as early as May 2000. The University Defendants deny the

remaining allegations in paragraph 19 of the Complaint.

20. The University Defendants aver that the document attached as Exhibit B speaks

for itself and deny the allegations of paragraph 20 to the extent they do not accurately describe

the document. The University Defendants deny the remaining allegations in paragraph 20 of the

Complaint.

21. The University Defendants deny the allegations in paragraph 21 of the Complaint.

22. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 22 of the Complaint and therefore

deny them.

23. The University Defendants admit that Dr. Good and Dr. Kaminski approached the

University regarding the ownership of copyright related to DIBELS 5th Edition. The University

Defendants deny the remaining allegations in paragraph 23 of the Complaint.

24. The University Defendants deny the allegations in paragraph 24 of the Complaint.
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25. The University Defendants admit that the University repudiated Dr. Good and Dr.

Kaminski's ownership of the copyright to DIBELS 5th Edition at least as early as May 2001.

The University Defendants deny the remaining allegations in paragraph 25 of the Complaint.

26. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 26 of the Complaint and therefore

deny them.

27. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 27 of the Complaint and therefore

deny them.

28. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 28 of the Complaint and therefore

deny them.

29. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 29 of the Complaint regarding the

incorporation of DMG and therefore deny them. The University Defendants deny the remaining

allegations in paragraph 29 of the Complaint.

30. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 30 of the Complaint and therefore

deny them.

31. The University Defendants aver that any trademark application filed with the

United States Patent and Trademark Office speaks for itself and deny the allegations in

paragraph 31 of the Complaint to the extent they do not accurately describe the application. The

University Defendants deny the remaining allegations in paragraph 31 of the Complaint.

32. The University Defendants aver that the document attached to the Complaint as

Exhibit C speaks for itself and deny the allegations of paragraph 32 to the extent they do not
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accurately describe the document. The University Defendants deny the remaining allegations in

paragraph 32 of the Complaint.

33. The University Defendants deny the allegations in paragraph 33 of the Complaint.

34. The University Defendants aver that the document attached to the Complaint as

Exhibit D speaks for itself and deny the allegations of paragraph 34 to the extent they do not

accurately describe the document. The University Defendants deny the remaining allegations in

paragraph 34 of the Complaint.

35. The University Defendants aver that the document attached to the Complaint as

Exhibit D speaks for itself and deny the allegations of paragraph 35 to the extent they do not

accurately describe the document. The University Defendants deny the remaining allegations in

paragraph 35 of the Complaint.

36. The University Defendants deny the allegations in paragraph 36 of the Complaint.

37. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 37 of the Complaint and therefore

deny them.

38. The University Defendants deny the allegations in paragraph 38 of the Complaint.

39. The University Defendants deny the allegations in paragraph 39 of the Complaint.

40. The University Defendants aver that the document attached to the Complaint as

Exhibit E speaks for itself and deny the allegations of paragraph 40 to the extent they do not

accurately describe the document. The University Defendants deny the remaining allegations in

paragraph 40 of the Complaint.

41. The University Defendants deny the allegations in paragraph 41 of the Complaint.

42. The University Defendants deny the allegations in paragraph 42 of the Complaint.

43. The University Defendants deny the allegations in paragraph 43 of the Complaint.

44. The University Defendants deny the allegations in paragraph 44 of the Complaint.
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45. The University Defendants admit that Dr. Kaminski continued to work for the

University in various capacities until at least June 2011. The University Defendants deny the

remaining allegations in paragraph 45 of the Complaint.

46. The University Defendants admit that the University undertook an internal

investigation of Dr. Good in 2004. The University Defendants deny the remaining allegations in

paragraph 46 of the Complaint.

47. The University Defendants admit that the University undertook an internal

investigation of Dr. Good in 2004. The University Defendants deny the remaining allegations in

paragraph 47 of the Complaint.

48. The University Defendants admit that the University participated in negotiations

with DMG related to DIBELS. The University Defendants admit that the University and DMG

exchanged numerous drafts of a document entitled "Intellectual Property Agreement." The

University Defendants deny the remaining allegations in paragraph 48 of the Complaint.

49. The University Defendants admit that the University and DMG exchanged

numerous drafts of a document entitled "Intellectual Property Agreement." The University

Defendants deny the remaining allegations in paragraph 49 of the Complaint.

50. The University Defendants admit that the University and DMG exchanged

numerous drafts of a document entitled "Intellectual Property Agreement." The University

Defendants admit that the University never entered into or executed any Intellectual Property

Agreement with DMG. The University Defendants deny the remaining allegations in paragraph

50 of the Complaint.

51. The University Defendants aver that the document attached to the Complaint as

Exhibit F speaks for itself and deny the allegations of paragraph 51 to the extent they do not

accurately describe the document. The University Defendants deny the remaining allegations in

paragraph 51 of the Complaint.
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52. The University Defendants aver that the document attached to the Complaint as

Exhibit F speaks for itself and deny the allegations of paragraph 52 to the extent they do not

accurately describe the document. The University Defendants deny the remaining allegations in

paragraph 52 of the Complaint.

53. The University Defendants aver that the document attached to the Complaint as

Exhibit F speaks for itself and deny the allegations of paragraph 53 to the extent they do not

accurately describe the document. The University Defendants deny the remaining allegations in

paragraph 53 of the Complaint.

54. The University Defendants admit that Dr. Good altered his time commitment with

the University at various times during his tenure at the University. The University Defendants

lack knowledge or information sufficient to form a belief as to the truth or falsity of the

remaining allegations in paragraph 54 of the Complaint and therefore deny them.

55. The University Defendants aver that the documents attached to the Complaint as

Exhibits G, H, I, J, K, L and M speak for themselves and deny the allegations of paragraph 55 to

the extent they do not accurately describe the documents. The University Defendants deny the

remaining allegations in paragraph 55 of the Complaint.

56. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 56 of the Complaint related to third

party investment in DIBELS and therefore deny them. The University Defendants deny the

remaining allegations in paragraph 56 of the Complaint.

57. The University Defendants aver that the document attached as Exhibit N speaks

for itself and deny the allegations of paragraph 57 to the extent they do not accurately describe

the document. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the remaining allegations in paragraph 57 of the Complaint and

therefore deny them.
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58. The University Defendants admit that the University began receiving income

from the DIBELS Data System long before DMG even existed as a corporate entity. The

University Defendants deny the remaining allegations in paragraph 58 of the Complaint.

59. The University Defendants deny the allegations in paragraph 59 of the Complaint.

60. The University Defendants admit that DMG appears to be identified as the owner

of certain federal trademark registrations. The University Defendants deny the remaining

allegations in paragraph 60 of the Complaint.

61. The University Defendants aver that U.S. Registration Nos. 2,729,165, 2,750,275,

2,771,559, 3,970,666, 4,084,850, 4,164,609, and 3,446,832 speak for themselves and deny the

allegations in paragraph 61 to the extent they do not accurately describe these registrations. The

University Defendants deny the remaining allegations in paragraph 61 of the Complaint.

62. The University Defendants deny that DMG's registration for DIBELS, Reg. No.

2,729,165, is incontestable. The University Defendants aver that any DMG filings with the

USPTO in support of Reg. No. 2,729,165 speak for themselves and deny the allegations in

paragraph 62 to the extent they do not accurately describe the documents. The University

Defendants deny the remaining allegations in paragraph 62 of the Complaint.

63. The University Defendants aver that any DMG filings with the USPTO in support

of Reg. No. 2,729,165 speak for themselves and deny the allegations in paragraph 63 to the

extent they do not accurately describe the documents. The University Defendants deny the

remaining allegations in paragraph 63 of the Complaint.

64. The University Defendants admit that Indicadores Dinámicos del Éxito en la

Lectura, or IDEL, is a Spanish language early literacy assessment tool. The University

Defendants deny the remaining allegations in paragraph 64 of the Complaint.
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65. The University Defendants admit that the IDEL assessment measures were

previously known as BIDEL. The University Defendants deny the remaining allegations in

paragraph 65 of the Complaint.

66. The University Defendants admit that material bearing the IDEL mark were

available for download from the University's website. The University Defendants aver that the

document attached as Exhibit P speaks for itself and deny the allegations of paragraph 66 to the

extent they do not accurately describe the document. The University Defendants deny the

remaining allegations in paragraph 66 of the Complaint.

67. The University Defendants aver that the document attached as Exhibit Q speaks

for itself and deny the allegations of paragraph 67 to the extent they do not accurately describe

the document. The University Defendants deny the remaining allegations in paragraph 67 of the

Complaint.

68. The University Defendants admit that the University DIBELS Data System did

not at first offer a paid service for reports on IDEL results. The University Defendants deny the

remaining allegations in paragraph 68 of the Complaint.

69. The University Defendants deny that the development and creation of DIBELS

6th Edition was funded entirely by DMG. The University Defendants lack knowledge or

information sufficient to form a belief as to the truth or falsity of the remaining allegations in

paragraph 69 of the Complaint and therefore deny them.

70. The University Defendants aver that the document attached as Exhibit K speaks

for itself and deny the allegations of paragraph 70 to the extent they do not accurately describe

the document. The University Defendants deny the remaining allegations in paragraph 70 of the

Complaint.

71. The University Defendants lack knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations in paragraph 71 of the Complaint regarding
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DMG's activities related to DIBELS Next and DIBELSNet and therefore deny them. The

University Defendants deny the remaining allegations in paragraph 71 of the Complaint.

72. The University Defendants admit that the University sent DMG the April 4, 2012

letter attached as Exhibit R to the Complaint. The University Defendants deny the remaining

allegations in paragraph 72 of the Complaint.

73. The University Defendants admit that the University notified Sopris and Wireless

Generation of the University's ownership of the DIBELS and IDEL intellectual property. The

University Defendants deny the remaining allegations in paragraph 73 of the Complaint.

74. The University Defendants admit that the University filed an application to

register the DIBELS mark with the USPTO on July 20, 2012. The University Defendants aver

that the document attached as Exhibit S speaks for itself and deny the allegations of paragraph 74

to the extent they do not accurately describe the document. The University Defendants deny the

remaining allegations in paragraph 74 of the Complaint.

75. The University Defendants admit that the USPTO refused to register the

University's application for DIBELS on November 15, 2012. The University Defendants deny

the remaining allegations in paragraph 75 of the Complaint.

76. The University Defendants admit that the University filed a use-based and an

intent to use application to register the IDEL trademark on June 3, 2013. The University

Defendants further admit DMG's use of IDEL is confusingly similar to the University's use of the

IDEL mark. The University Defendants deny the remaining allegations in paragraph 76 of the

Complaint.

77. The University Defendants admit the allegations in paragraph 77 of the

Complaint.

78. The University Defendants admit the allegations in paragraph 78 of the

Complaint.
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79. The University Defendants admit the allegations in paragraph 79 of the

Complaint.

80. The University Defendants deny the allegations in paragraph 80 of the Complaint.

81. The University Defendants incorporate by reference their responses to the

allegations of paragraphs 1 through 80 as their response to paragraph 81 of the Complaint.

82. The University Defendants deny the allegations in paragraph 82 of the Complaint.

83. The University Defendants admit the University restored its own Educational Use

Agreement to its website. The University Defendants aver that the document attached as Exhibit

T speaks for itself and deny the allegations of paragraph 83 to the extent they do not accurately

describe the document. The University Defendants deny the remaining allegations in paragraph

83 of the Complaint.

84. The University Defendants admit that the University website acknowledges the

University's ownership and use of DIBELS. The University Defendants deny the remaining

allegations in paragraph 84 of the Complaint.

85. The University Defendants admit that the University DIBELS materials reference

University's use of the DIBELS mark. The University Defendants aver that the documents

attached as Exhibits U and J speak for themselves and deny the allegations of paragraph 85 to the

extent they do not accurately describe these documents. The University Defendants deny the

remaining allegations in paragraph 85 of the Complaint.

86. The University Defendants deny the allegations in paragraph 86 of the Complaint.

87. The University Defendants admit that DMG's use of the DIBELS mark is

unlawful and illegitimate. The University Defendants deny the remaining allegations in

paragraph 87 of the Complaint.

88. The University Defendants admit that the University owns the DIBELS mark.

The University Defendants aver that the document attached as Exhibit V speaks for itself and
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deny the allegations of paragraph 88 to the extent they do not accurately describe the document.

The University Defendants deny the remaining allegations in paragraph 88 of the Complaint.

89. The University Defendants admit that a Google search for "DIBELS" identifies

the University as its first hit and that the University website is the Official DIBELS Home Page.

The University Defendants aver that the document attached as Exhibit W speaks for itself and

deny the allegations of paragraph 89 to the extent they do not accurately describe the document.

The University Defendants deny the remaining allegations in paragraph 89 of the Complaint.

90. The University Defendants admit that the University collaborated with Defendant

Hop Skip Technologies Inc. ("Hop Skip") to release an iTunes mobile application entitled HiFi

Reading, and further admit that the application is advertised as supporting the administration of

DIBELS 6th Edition Oral Reading Fluency assessments. The University Defendants aver that

the documents attached as Exhibits X and Y speak for themselves and deny the allegations of

paragraph 90 to the extent they do not accurately describe these documents. The University

Defendants deny the remaining allegations in paragraph 90 of the Complaint.

91. The University Defendants aver that the document attached to the Complaint as

Exhibit Z speaks for itself and deny allegations of paragraph 91 to the extent they do not

accurately describe the document. The University Defendants deny the remaining allegations in

paragraph 91 of the Complaint.

92. The University Defendants admit that there is consumer confusion related to

DIBELS. The University Defendants deny the remaining allegations in paragraph 92 of the

Complaint.

93. The University Defendants deny the allegations in paragraph 93 of the Complaint.

94. The University Defendants deny the allegations in paragraph 94 of the Complaint.

95. The University Defendants incorporate by reference their responses to paragraphs

1-94 above as their response to paragraph 95 of the Complaint.
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96. The University Defendants admit that the University owns the IDEL mark and

was the first to use the IDEL mark in commerce. The University Defendants deny the remaining

allegations in paragraph 96 of the Complaint.

97. The University Defendants admit that the University's website reflects the

University's ownership of the intellectual property rights associated with IDEL. The University

Defendants aver that the document attached as Exhibit T speaks for itself and deny the

allegations of paragraph 97 to the extent they do not accurately describe the document. The

University Defendants deny the remaining allegations in paragraph 97 of the Complaint.

98. The University Defendants admit that the University's website reflects the

University's ownership of the intellectual property rights associated with IDEL. The University

Defendants aver that the documents attached as Exhibits AA and BB speak for themselves and

deny the allegations of paragraph 98 to the extent they do not accurately describe the documents.

The University Defendants deny the remaining allegations in paragraph 98 of the Complaint.

99. The University Defendants admit that the University is the owner of the IDEL

mark and ultimate source of IDEL products. The University Defendants deny the remaining

allegations in paragraph 99 of the Complaint.

100. The University Defendants admit that DMG is not the legitimate source of IDEL

products. The University Defendants deny the remaining allegations in paragraph 100 of the

Complaint.

101. The University Defendants admit that a likelihood of confusion arises from

DMG's use of the IDEL mark. The University Defendants deny the remaining allegations in

paragraph 101 of the Complaint.

102. The University Defendants deny the allegations in paragraph 102 of the

Complaint.
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103. The University Defendants deny the allegations in paragraph 103 of the

Complaint.

104. The University Defendants incorporate by reference their responses to paragraphs

1-103 above as their response to paragraph 104 of the Complaint.

105. The University Defendants admit that the University refers to DMG's DIBELS

Next benchmark goals as "DIBELS Next Former Goals" and UO's DIBELS Next benchmark

goals as "DIBELS Next Recommended Goals." The University Defendants aver that the

document attached as Exhibit CC speaks for itself and deny the allegations of paragraph 105 to

the extent they do not accurately describe the document. The University Defendants deny the

remaining allegations in paragraph 105 of the Complaint.

106. The University Defendants deny the allegations in paragraph 106 of the

Complaint.

107. The University Defendants admit that there is consumer confusion related to

DMG's use of DIBELS. The University Defendants deny the remaining allegations in paragraph

107 of the Complaint.

108. The University Defendants aver that the document attached as Exhibit DD speaks

for itself and deny the allegations of paragraph 108 to the extent they do not accurately describe

the document. The University Defendants deny the remaining allegations in paragraph 108 of

the Complaint.

109. The University Defendants deny the allegations in paragraph 109 of the

Complaint.

110. The University Defendants deny the allegations in paragraph 110 of the

Complaint.

111. The University Defendants deny the allegations in paragraph 111 of the

Complaint.
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112. The University Defendants incorporate by reference their responses to paragraphs

1-111 above as their response to paragraph 112 of the Complaint.

113. The University Defendants deny the allegations in paragraph 113 of the

Complaint.

114. The University Defendants deny the allegations in paragraph 114 of the

Complaint.

115. The University Defendants incorporate by reference their responses to paragraphs

1-114 above as their response to paragraph 115 of the Complaint.

116. The University Defendants deny the allegations in paragraph 116 of the

Complaint.

117. The University Defendants deny the allegations in paragraph 117 of the

Complaint.

118. The University Defendants incorporate by reference their responses to paragraphs

1-117 above as their response to paragraph 118 of the Complaint.

119. The University Defendants deny the allegations in paragraph 119 of the

Complaint.

120. The University Defendants deny the allegations in paragraph 120 of the

Complaint.

121. The University Defendants incorporate by reference their responses to paragraphs

1-120 above as their response to paragraph 121 of the Complaint.

122. The University Defendants deny the allegations in paragraph 122 of the

Complaint.

123. The University Defendants deny the allegations in paragraph 123 of the

Complaint.
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124. The University Defendants incorporate by reference their responses to paragraphs

1-123 above as their response to paragraph 124 of the Complaint.

125. The University Defendants deny the allegations in paragraph 125 of the

Complaint.

126. The University Defendants aver that any DMG copyright registration speaks for

itself and the deny the allegations of paragraph 126 to the extent they do not accurately describe

these registrations. The University Defendants deny the remaining allegations in paragraph 126

of the Complaint.

127. The University Defendants aver that the document attached as Exhibit EE speaks

for itself and deny the allegations of paragraph 127 to the extent they do not accurately describe

the document. The University Defendants deny the remaining allegations in paragraph 127 of

the Complaint.

128. The University Defendants admit that the University jointly developed the HiFi

Reading mobile application with Hop Skip and that this application is designed to facilitate the

administration, scoring, and management of DIBELS 6th Edition assessments. The University

Defendants aver that the document attached as Exhibit Y speaks for itself and deny the

allegations of paragraph 128 to the extent they do not accurately describe the document. The

University Defendants deny the remaining allegations in paragraph 128 of the Complaint.

129. The University Defendants deny the allegations in paragraph 129 of the

Complaint.

130. The University Defendants deny the allegations in paragraph 130 of the

Complaint.

131. The University Defendants deny the allegations in paragraph 131 of the

Complaint.
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132. The University Defendants deny the allegations in paragraph 132 of the

Complaint.

133. The University Defendants incorporate by reference their responses to paragraphs

1-132 above as their response to paragraph 133 of the Complaint.

134. The University Defendants admit that DMG unlawfully placed copyright notices

on government funded academic research and University works arising from University

resources. The University Defendants aver that the document attached as Exhibit FF speaks for

itself and deny the allegations of paragraph 134 to the extent they do not accurately describe the

document. The University Defendants deny the remaining allegations in paragraph 134 of the

Complaint.

135. The University Defendants deny the allegations in paragraph 135 of the

Complaint.

136. The University Defendants deny the allegations in paragraph 136 of the

Complaint.

137. The University Defendants aver that the document attached as Exhibit X speaks

for itself and deny the allegations of paragraph 137 to the extent they do not accurately describe

the document. The University Defendants deny the remaining allegations in paragraph 137 of

the Complaint.

138. The University Defendants deny the allegations in paragraph 138 of the

Complaint.

139. The University Defendants deny the allegations in paragraph 139 of the

Complaint.

The University Defendants deny that DMG is entitled to the judgment, injunctive relief,

damages and other relief set forth in paragraphs A-J on pages 41-46 of the Complaint.
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AFFIRMATIVE DEFENSES

140. By alleging the Affirmative Defenses set forth below, the University Defendants

do not agree or concede that they bear the burden of proof or the burden of persuasion on any of

these issues, whether in whole or in part. For their Affirmative Defenses to the Complaint, the

University Defendants state as follows:

FIRST AFFIRMATIVE DEFENSE

(Failure to State a Claim)

141. The Complaint fails, in whole or in part, to state a claim against the University

Defendants upon which relief can be granted.

SECOND AFFIRMATIVE DEFENSE

(Statute of Limitations)

142. DMG's claims are barred, in whole or in part, by the applicable statute of

limitations.

THIRD AFFIRMATIVE DEFENSE

(Waiver, Laches, Acquiescence, and Estoppel)

143. DMG's claims are barred, in whole or in part, by the doctrines of waiver, laches,

acquiescence and estoppel.

FOURTH AFFIRMATIVE DEFENSE

(Unclean Hands)

144. DMG's claims are barred, in whole or in part, by the doctrine of unclean hands.

FIFTH AFFIRMATIVE DEFENSE

(No Valid Trademark)

145. DMG's claims are barred, in whole or in part, because DMG has no valid,

protectable marks in which it enjoys any rights that may be asserted against the University

Defendants.
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SIXTH AFFIRMATIVE DEFENSE

(No Ownership of Trademark)

146. DMG's claims are barred, in whole or in part, because DMG does not own rights

to the DIBELS and IDEL trademarks.

SEVENTH AFFIRMATIVE DEFENSE

(Fraud in Procurement of Trademark Registrations)

147. DMG's claim of trademark infringement is barred, in whole or in part, by fraud or

deception in the trademark registration process.

EIGHTH AFFIRMATIVE DEFENSE

(No Valid Copyright)

148. DMG's claims are barred, in whole or in part, because DMG has no valid

protectable copyrights in which it enjoys any rights that may be asserted against the University

Defendants.

EIGHTH AFFIRMATIVE DEFENSE

(Fraud in Procurement of Copyright Registrations)

149. DMG's claims are barred, in whole or in part, by fraud or deception in the

copyright registration process, or by misuse of registered copyrights.

NINTH AFFIRMATIVE DEFENSE

(Work For Hire)

150. DMG's claims are barred, in whole or in part, by the work for hire doctrine.

TENTH AFFIRMATIVE DEFENSE

(Joint Authorship)

151. DMG's claims are barred, in whole or in part, by the doctrine of joint authorship.

ELEVENTH AFFIRMATIVE DEFENSE

(Fair Use)

152. DMG's claims are barred, in whole or in part, by the doctrine of fair use.
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TWELFTH AFFIRMATIVE DEFENSE

(No Injunctive or Equitable Relief)

153. DMG is not entitled to any injunctive or equitable relief because it will not suffer

irreparable harm and has an adequate remedy at law.

ADDITIONAL DEFENSES

154. The University Defendants reserve the right to assert additional defenses based on

information learned or obtained during discovery.

COUNTERCLAIMS

For its counterclaims, Defendant University of Oregon ("the University") hereby states

the following against the counterclaim defendants Dynamic Measurement Group, Inc. ("DMG"),

and DMG's co-founders Dr. Roland Good and Dr. Ruth Kaminski (collectively "CounterDefendants").

I. INTRODUCTION

It is indisputable that Drs. Good and Kaminski systematically misappropriated the

University's federally-funded intellectual property for their own profit. In fact, the public record

is replete with supporting evidence. Dr. Good, in his 2007 sworn testimony before the United

States House of Representatives Committee on Education and Labor, expressly conceded that he

used federal research funds to create his company, DMG. Moreover, DMG's trademark and

copyright applications for DIBELS and IDEL show Counter-Defendants' prior knowledge that

the underlying intellectual property was owned by the University.

As and for its counterclaims against Counter-Defendants, the University respectfully

shows as follows:
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II. JURISDICTION AND VENUE

1. The Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. §§

1119, 1120, and 1121, and 28 U.S.C. §§ 1331, 1338, 1367, 2201, and 2202.

2. The Court has personal jurisdiction over DMG because, by bringing this action, it

has consented to personal jurisdiction, and it has engaged in business activities in, and directed

to, this District and the State of Oregon, and committed tortious acts within this District and the

State of Oregon.

3. Personal jurisdiction also exists over Drs. Good and Kaminski because they are

the principals of DMG, and primarily participated in the infringing and fraudulent activities by

personally taking part in these activities and/or by having control of and directing these activities

such that, DMG, Dr. Good and Dr. Kaminski are jointly and severally liable for any damages

arising from these activities. At all material times, Drs. Good and Kaminski transacted business

in the State of Oregon such that hailing them into court in Oregon does not offend traditional

notions of fair play and substantial justice.

4. Venue is proper, pursuant to 28 U.S.C. § 1391(b), in that a substantial part of the

events or omissions giving rise to the claims arose in this District and Counter-Defendants can be

found in this District.

III. PARTIES

5. The University is a public research university located and doing business at 1585

E. 13th Avenue, Eugene, Oregon 97403.

6. DMG is an Oregon corporation having its principal place of business at 859

Willamette Street, Suite 320, Eugene, Oregon 97401. DMG was incorporated as an Oregon

corporation on January 16, 2002.
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7. Dr. Good works at the University as an Associate Professor and is a resident of

Oregon. Dr. Good co-founded DMG on January 16, 2002, has continuously worked as an officer

at DMG since 2002 and currently acts as its President and Secretary. Dr. Good continuously

worked for the University from June 1988 to the present.

8. Dr. Kaminski works at the University as a Courtesy Assistant Professor and is a

resident of Oregon. Dr. Kaminski co-founded DMG on January 16, 2002, has continuously

worked as an officer at DMG since 2002, and acted as its President until January 10, 2013. Dr.

Kaminski has worked for the University since at least June 16, 1992. Prior to this time, Dr.

Kaminski was a graduate student at the University.

IV. FACTUAL ALLEGATIONS

9. The University is a world-class teaching and research institution, committed to

pursuing innovation in more than 260 academic programs. The University's College of

Education ("College of Education") has long been recognized as one of the highest ranking

graduate programs in its field. The College of Education is widely known for its pioneering

efforts in applying social and educational research to classroom education.

A. The University's Early Language and Literacy Assessment Measures

10. The College of Education has been at the forefront of research conducted in the

area of early childhood language and literacy skills and assessment. The goods and services

offered by the College of Education's Center on Teaching and Learning ("CTL"), in particular,

have directly impacted the well-being of children and resulted in a quantifiable, marked increase

in the early language and literacy skills of students in the United States and throughout the

world. Due to its enormous success, CTL secured millions of dollars in government grants for

its projects, research, and outreach services.
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11. In particular, CTL, under its previous administrative entity, The Institute for

Development of Educational Achievement ("IDEA"), created and developed a web-based, database system that permits educators to track the results of a set of formative assessments of early

English and Spanish language and literacy development. The English language formative

assessments are known as Dynamic Indicators of Basic Early Literacy Skills, or DIBELS

("DIBELS assessments"). The Spanish language formative assessments are known as

Indicadores Dinámicos del Éxito en la Lectura, or IDEL ("IDEL assessments").

12. The DIBELS and IDEL assessments act as screening tools that provide educators

with instructional recommendations, benchmark goals and information on student skills in the

core components of beginning reading, including phonological awareness, the alphabetic

principle, accuracy, and fluency in reading connected text.

13. The web-based data system that allows educators to track the results of these

English and Spanish language assessments is known as the DIBELS Data System.

14. The University had successfully implemented the DIBELS assessments and the

DIBELS Data System throughout the United States prior to DMG and long before DMG even

existed as a corporate entity. The DIBELS assessments and the DIBELS Data System have been

used by over 29,000 schools and served over sixteen (16) million students nationwide. Printouts

from the University’s website are attached hereto as Exhibit A.

15. Since at least as early as January 2008, the University successfully implemented

the IDEL assessments throughout the United States.

B. University Resources Dedicated to Early Language and Literary Measures

16. The University expended enormous resources in the form of government grants

and personnel to create, develop and implement the DIBELS assessments, the IDEL

assessments, and the DIBELS Data System. The University dedicated numerous professors,
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graduate students and other personnel to the research, development and implementation of these

assessments and the DIBELS Data System—including the founders of DMG, Drs. Good and

Kaminski.

17. Among many other University faculty, staff and personnel, the DIBELS 5th

Edition expressly credits the defendants, Ed Kame'enui and Hank Fien, as contributors to the

work.

18. Moreover, in addition to other resources, the DIBELS 5th Edition expressly

credits the following government research grants awarded to the University:

Grant No. Grant Title

H024360010 Early Childhood Research Institute on Measuring Growth and

Development U.S. Department of Education

H023B90057 U.S. Department of Education

90CD0819 U. S. Department of Education, Special Education Programs

H180M10006 Early Childhood Research Institute on Measuring Growth and

Development

19. Among many other University faculty, staff and other personnel, the DIBELS 6th

Edition expressly credits the defendants, Ed Kame'enui and Hank Fien, as contributors to the

work.

20. Moreover, in addition to other resources, the DIBELS 6th Edition expressly

credits the following government research grants awarded to the University:

Grant No. Grant Title

H024360010 Early Childhood Research Institute on Measuring Growth and

Development U.S. Department of Education

H023B90057 U.S. Department of Education

90CD0819 U. S. Department of Education, Special Education Programs

H180M10006 Early Childhood Research Institute on Measuring Growth and

Development
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Grant No. Grant Title

CFDA 84.324X Center for Improving Reading Competence Using Intensive

Treatments Schoolwide (Project CIRCUITS) funded by the U. S.

Department of Education, Office of Special Education Programs

21. Among many other University faculty, staff and other personnel, the DIBELS 6th

Edition Revised expressly credits the defendants, Ed Kame'enui and Hank Fien, as contributors

to the work.

22. Moreover, in addition to other resources, the DIBELS 6th Edition Revised

expressly credits the following government research grants awarded to the University:

Grant No. Grant Title

H024360010 Early Childhood Research Institute on Measuring Growth and

Development U.S. Department of Education

H023B90057 U.S. Department of Education

90CD0819 U. S. Department of Education, Special Education Programs.

H180M10006 Early Childhood Research Institute on Measuring Growth and

Development

CFDA 84.324X Center for Improving Reading Competence Using Intensive

Treatments Schoolwide (Project CIRCUITS) funded by the U. S.

Department of Education, Office of Special Education Programs

C. University Ownership of Intellectual Property Related to Early Language

and Literacy Measures

23. University regulations, policies and directives, provide that the University owns

and is entitled to own all of the intellectual property developed by its employees, graduate

students, and staff with University resources and/or within the scope of their employment.

24. In addition, University regulations, policies and directives, as well as federal

regulations provide that the work product resulting from research and grant funds awarded to the

University is the property of the University.
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25. Drs. Good and Kaminski were notified of the University's ownership and right to

ownership of intellectual property developed at the University, using the University resources,

and/or using research grant funds awarded to the University.

26. Drs. Good and Kaminski executed agreements acknowledging the University's

ownership and right to ownership of intellectual property developed at the University, using the

University resources, and/or using research and grant funds awarded to the University. Among

other things, Drs. Good and Kaminski agreed to assign any intellectual property using University

resources to the University.

27. Notwithstanding their knowledge of the University regulations, policies and

directives and these executed agreements, Drs. Good and Kaminski executed assignment

agreements purporting to transfer intellectual property rights arising from University resources to

DMG.

D. The University's Trademarks and Trademark Applications

28. The University owns pending U.S. Application Serial No. 85682672 for the mark

DIBELS (the "University DIBELS Mark") for use in International Class 9 in conjunction with

"[d]ownloadable educational testing materials and manuals, online modules, and teacher

instruction guides in the form of audio files, text files, written documents, and multimedia files

for application and utilization of test measures to classroom teaching, all in the field of literacy

skills assessment;" in International Class 16 for "[p]rinted educational test materials and user

manuals in the field of literacy skills assessment;" and, in International Class 41 for "[p]roviding

a literacy testing website featuring secure data collection and analysis for entry of educational

assessment test data by users for generation of reports, for the monitoring of student progress, for

providing student demographics, and outcome measures, and for providing general information,

all in the field of testing for literacy skills assessment; educational testing services, namely,
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providing literacy testing through the distribution of a hard copy download of a testing tool with

a set of procedures and measures for administration to students and scoring by teachers for

assessing the acquisition of literacy skills, and assessment quantification of the data generated by

the test takers to predict and monitor the development and monitoring of literacy skills;

educational services, namely, providing workshops and seminars in the field of literacy skills

assessment" (the "'672 Application" or the "University DIBELS Application"). The '672

Application was filed on July 20, 2012. A copy of the ‘672 Application is attached hereto as

Exhibit B.

29. The University owns pending U.S. Application Serial No. 85949205 for the mark

IDEL, for use in International Class 16 in conjunction with "printed instructional, educational,

teaching and professional development materials in the areas of literacy and early literacy

assessment and skills in Spanish; educational books, periodical reports, and printed teaching

materials in the areas of literacy skills and early literacy skills, monitoring and assessing student

outcomes, skill and progress;" and, in International Class 41 for "educational research;

educational testing in Spanish; instruction in the field of literacy and early literacy skills,

monitoring and assessment of student progress and outcomes; education and educational services

in the nature of workshops, classroom instruction, seminars, professional development, and inservice and pre-service training in the field of literacy and early literacy skills, monitoring and

assessment of student progress and outcomes; standardized testing in Spanish; preparing,

administering and scoring standardized tests; measurement evaluations in the areas of literacy,

early literacy skills for educational purposes; providing seminars, training and educational

conferences, all of the foregoing in the areas of literacy and early literacy skills, monitoring and

assessment of student progress and outcomes; publication of educational books, periodical

reports, and teaching materials in the areas of literacy and early literacy skills, monitoring and

assessment of student progress and outcomes; providing on-line instructional, educational,
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testing and teaching materials in Spanish and distributing course materials in connection

therewith in the field of literacy and early literacy skills, monitoring and assessment via the

Internet" (the "'205 Application"). The '205 Application was filed on June 3, 2013. A copy of

the '205 Application is hereto as Exhibit C.

30. The University owns pending U.S. Application Serial No. 85949244 for the mark

IDEL for use in International Class 9 in conjunction with "software, including downloadable

computer application software for mobile phones, portable media players, tablets and handheld

computers, featuring Spanish language testing, teaching, monitoring, professional development,

and assessment materials in the field of literacy and early literacy skills;" and, in International

Class 41 for "providing Spanish-language instructional and educational testing, teaching,

professional development, monitoring, and assessment services in the field of literacy and early

literacy skills via the Internet, including downloadable computer application software for mobile

phones, portable media players, tablets and handheld computers" (the "'244 Application"). The

'244 Application was filed on June 3, 2013. A copy of the '244 Application is attached hereto as

Exhibit D. The University's '205 and '244 Applications are referred to collectively herein as the

"University IDEL Applications" and the marks that are the subject of the University IDEL

Applications are referred to herein as the "University IDEL Marks."

31. The University DIBELS Application and the University IDEL Applications are

collectively referred to herein as the "University Applications."

32. The University DIBELS Mark and the University IDEL Marks are collectively

referred to herein as the "University Marks."

33. The University began using the University DIBELS Mark as a trademark in

commerce prior to Counter-Defendants and long before DMG existed as a corporate entity.

34. Drs. Good and Kaminski used DIBELS on behalf of, and exclusively for, the

University long before DMG existed as a corporate entity.
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35. Prior to its use of the University DIBELS Mark in commerce, the University used

DIBELS as a trade name, and/or engaged in the use of DIBELS, analogous to trademark use, and

has continuously, substantially and exclusively used DIBELS in association with early language

and literacy assessment goods and services.

36. The University began using the University IDEL Mark as a trademark in

commerce prior to Counter-Defendants, and at least as early as July 2003.

37. Drs. Good and Kaminski used IDEL on behalf of, and exclusively for, the

University before filing DMG's application to register the same mark with the USPTO.

38. Prior to its use of the University IDEL Mark as a trademark, the University used

IDEL as a trade name, and/or engaged in the use of IDEL, analogous to trademark use, and has

continuously, substantially and exclusively used IDEL in association with early language and

literacy assessment goods and services.

39. The University has developed and enjoys extensive goodwill throughout the

United States and the world with respect to its University Marks. The University established this

goodwill through the expenditure of substantial sums in advertising and/or promotion of goods

and services offered under the University Marks. The University Marks are inherently

distinctive and have become widely known to the relevant class of consumers as the source of

literacy and early literacy assessment products and services that are based on vetted, theoretically

sound, peer-reviewed University research, such that the relevant class of consumers has come to

know, rely upon, and associate the University Marks with the University and to recognize it as

the source of the early language, literacy and early literacy assessment goods and/or services

provided by the University.
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E. The University's Copyrights

40. The University owns the copyrights to the University DIBELS and IDEL works

("University Works") and the following registrations for the University Works issued by the

United States Copyright Office:

Reg./App. No. Title

1 TX 7-909-203

Dynamic Indicators of Basic Early Literacy Skills 5th Edition

DIBELS Progress Monitoring Phoneme Segmentation Fluency

Kindergarten Student Booklet

2 TX 7-909-202

Dynamic Indicators of Basic Early Literacy Skills 5th Edition

DIBELS Kindergarten Student Booklet Benchmark Early Reading

Assessment Mid-Year NWF Option and Dynamic Indicators of Basic

Early Literacy Skills 5th Edition DIBELS Kindergarten Stimulus

Materials Benchmark Early Reading Assessment Mid-Year NWF

Option

3 TX 7-909-200

Dynamic Indicators of Basic Early Literacy Skills 5th Edition

DIBELS First Grade Scoring Booklet Benchmark Early Reading

Assessment With DIBELS Oral Reading Fluency and Dynamic

Indicators of Basic Early Literacy Skills 5th Edition DIBELS First

Grade Student Materials Benchmark Early Reading Assessment With

DIBELS Oral Reading Fluency

4 TX 7-909-196

Dynamic Indicators of Basic Early Literacy Skills 5th Edition

DIBELS Second Grade Scoring Booklet Benchmark Early Reading

Assessment With DIBELS Oral Reading Fluency and Dynamic

Indicators of Basic Early Literacy Skills 5th Edition DIBELS Second

Grade Student Materials Benchmark Early Reading Assessment With

DIBELS Oral Reading Fluency

5 TX 7-909-194

Dynamic Indicators of Basic Early Literacy Skills 5th Edition

DIBELS Third Grade Scoring Booklet Benchmark Early Reading

Assessment With DIBELS Oral Reading Fluency and Dynamic

Indicators of Basic Early Literacy Skills 5th Edition DIBELS Third

Grade Student Materials Benchmark Early Reading Assessment With

DIBELS Oral Reading Fluency

6 TX 7-909-183

Dynamic Indicators of Basic Early Literacy Skills 5th Edition

DIBELS Progress Monitoring Nonsense Word Fluency First Grade

Scoring Booklet and Dynamic Indicators of Basic Early Literacy

Skills 5th Edition DIBELS Progress Monitoring Nonsense Word

Fluency First Grade Student Materials
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Reg./App. No. Title

7 TX 7-909-205

Dynamic Indicators of Basic Early Literacy Skills 5th Edition

DIBELS Progress Monitoring Initial Sound Fluency Kindergarten

Scoring Booklet and Dynamic Indicators of Basic Early Literacy

Skills 5th Edition DIBELS Progress Monitoring Initial Sound

Fluency Kindergarten Student Materials

8 TX 7-909-138 University of Oregon Early Literacy Project Dynamic Indicators of

Basic Early Literacy Skills

9 TX 7-908-962

Dynamic Indicators of Basic Early Literacy Skills (DIBELS) with

CBM Benchmark Early Reading Assessment Administration and

Scoring Guide

10 TX 7-909-173 Dynamic Indicators of Basic Early Literacy Skills 5th Edition

DIBELS Administration and Scoring Guide

11 TX 7-909-175 Primary Prevention of Early Academic Problems University of

Oregon CBM-P Letter-Naming Fluency

12 TX 7-909-177 Primary Prevention of Early Academic Problems University of

Oregon CBM-P Picture-Naming Fluency

13 TX 7-909-180 Primary Prevention of Early Academic Problems University of

Oregon CBM-P Phonemic Segmentation Fluency

14 TX 7-915-517 Dynamic Indicators of Basic Early Literacy Skills 5th Edition

15 TX 7-915-518

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Kindergarten Scoring Booklet DIBELS Benchmark

Assessment and Dynamic Indicators of Basic Early Literacy Skills

6th Edition DIBELS Kindergarten Student Materials DIBELS

Benchmark Assessment

16 TX 7-915-529

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS First Grade Scoring Booklet DIBELS Benchmark

Assessment and Dynamic Indicators of Basic Early Literacy Skills

6th Edition DIBELS First Grade Student Materials DIBELS

Benchmark Assessment

17 TX 7-915-525

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Second Grade Scoring Booklet DIBELS Benchmark

Assessment and Dynamic Indicators of Basic Early Literacy Skills

6th Edition DIBELS Second Grade Student Materials DIBELS

Benchmark Assessment

18 TX 7-915-533

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Third Grade Scoring Booklet DIBELS Benchmark

Assessment and Dynamic Indicators of Basic Early Literacy Skills

6th Edition DIBELS Third Grade Student Materials DIBELS

Benchmark Assessment
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Reg./App. No. Title

19 TX 7-915-521

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Fourth Grade Scoring Booklet DIBELS Benchmark

Assessment and Dynamic Indicators of Basic Early Literacy Skills

6th Edition DIBELS Fourth Grade Student Materials DIBELS

Benchmark Assessment

20 TX 7-915-531

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Fifth Grade Scoring Booklet DIBELS Benchmark

Assessment and Dynamic Indicators of Basic Early Literacy Skills

6th Edition DIBELS Fifth Grade Student Materials DIBELS

Benchmark Assessment

21 TX 7-915-520

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Sixth Grade Scoring Booklet DIBELS Benchmark

Assessment and Dynamic Indicators of Basic Early Literacy Skills

6th Edition DIBELS Sixth Grade Student Materials DIBELS

Benchmark Assessment

22 TX 7-915-532

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring Phoneme Segmentation Fluency

Kindergarten Scoring Booklet

23 TX 7-915-524

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring Nonsense Word Fluency First Grade

Scoring Booklet and Dynamic Indicators of Basic Early Literacy

Skills 6th Edition DIBELS Progress Monitoring Nonsense Word

Fluency First Grade Student Materials

24 TX 7-915-534

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring Word Use Fluency Kindergarten and

First Grade Scoring Booklet

25 TX 7-915-522

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring Word Use Fluency Second and Third

Grade Scoring Booklet

26 TX 7-915-527

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring DIBELS Oral Reading Fluency First

Grade Scoring Booklet and Dynamic Indicators of Basic Early

Literacy Skills 6th Edition DIBELS Progress Monitoring DIBELS

Oral Reading Fluency First Grade Student Materials

27 TX 7-915-528

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring DIBELS Oral Reading Fluency Second

Grade Scoring Booklet and Dynamic Indicators of Basic Early

Literacy Skills 6th Edition DIBELS Progress Monitoring DIBELS

Oral Reading Fluency Second Grade Student Materials
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Reg./App. No. Title

28 TX 7-915-526

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring DIBELS Oral Reading Fluency Third

Grade Scoring Booklet and Dynamic Indicators of Basic Early

Literacy Skills 6th Edition DIBELS Progress Monitoring DIBELS

Oral Reading Fluency Third Grade Student Materials

29 TX 7-915-536

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring DIBELS Oral Reading Fluency Fourth

Grade Scoring Booklet and Dynamic Indicators of Basic Early

Literacy Skills 6th Edition

30 TX 7-915-537

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring DIBELS Oral Reading Fluency Fifth

Grade Scoring Booklet and Dynamic Indicators of Basic Early

Literacy Skills 6th Edition DIBELS Progress Monitoring DIBELS

Oral Reading Fluency Fifth Grade Student Materials

31 TX 7-915-538

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Progress Monitoring DIBELS Oral Reading Fluency Sixth

Grade Scoring Booklet and Dynamic Indicators of Basic Early

Literacy Skills 6th Edition DIBELS Progress Monitoring DIBELS

Oral Reading Fluency Sixth Grade Student Materials

32 TX 7-915-539 Dynamic Indicators of Basic Early Literacy Skills 6th Edition

33 TX 7-915-540 Dynamic Indicators of Basic Early Literacy Skills 6th Edition

Revised

34 TX 7-915-541 Dynamic Indicators of Basic Early Literacy Skills 6th Edition

DIBELS Administration and Scoring Guide

35 1-1790599992 Indicadores Dinámicos del Éxito en la Lectura 6ta Edición

36 1-1790600212 Indicadores Dinámicos del Éxito en la Lectura 7a Edición

(the "University Copyrights").

F. Counter-Defendants' Unlawful Activities Related to Trademarks

41. DMG's principals, Drs. Good and Kaminski, worked for the University as

professors at the University's College of Education. In fact, the two worked directly in the

research, development and implementation of the University's DIBELS and IDEL measures.

Drs. Good and Kaminski used the University DIBELS Mark and University IDEL Marks on

behalf of, and exclusively for, the University before they filed applications to register the DMG
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Marks with the USPTO in DMG's name. In addition, Drs. Good and Kaminski worked on behalf

of the University, along with many others, to train educators on the DIBELS Data System.

42. Dr. Good worked as an Assistant Professor for the University's College of

Education from June 1988 to August 1994. Around September 1994, Dr. Good was promoted to

Associate Professor in the University's College of Education. He continuously worked for the

University from June 1988 to the present. Dr. Good executed numerous agreements as a

condition of his employment whereby he agreed that the intellectual property rights arising from

the research funded, developed and implemented by the University, were owned by the

University. Dr. Good was one of the many University professors, graduate students, staff and

others who worked on, developed and implemented the research related to DIBELS and IDEL on

behalf of the University, including research funded by University grants and awards.

43. Dr. Kaminski worked as a graduate student at the University, and earned her Ph.D

in 1992. Dr. Good supervised her graduate work during this time. After earning her Ph.D, Dr.

Kaminski has worked for the University since June 16, 1992 in various capacities including as an

Assistant Professor, an Adjunct Assistant Professor and as a Courtesy Assistant Professor. Also

during this time, Dr. Kaminski executed numerous agreements whereby she agreed that the

intellectual property rights arising from research funded, developed and implemented by the

University, were owned by the University. Moreover, Dr. Kaminski was one of the many

University professors, graduate students and staff who worked on, developed and implemented

University research related to DIBELS pursuant to University grants and awards.

44. Drs. Good and Kaminski assisted a third-party company, Voyager Learning

Company, to appropriate the University's intellectual property related to DIBELS, including,

U.S. Patent No. 6,676,413 (the "'413 Patent"). The '413 Patent was the subject of litigation in the

United States District Court For The Northern District of Texas, EdSoft Software Corp. v.

Voyager, Cause No. 3-05CV1463-D, whereby Voyager paid the plaintiff at least $5.4 million
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dollars to settle the fraudulent patent procurement claim, among others. A copy of the ‘413

Patent is attached hereto as Exhibit E. A copy of excerpts from Voyager's Vital Indicators of

Progress: Technical Guide is attached hereto as Exhibit F. A copy of excerpts from Voyager’s

Form 10-K for the fiscal year ending December 31, 2005 is attached hereto as Exhibit G. A copy

of excerpts from Voyager’s Form 10-Q for the quarter ending September 29, 2007 is attached

hereto as Exhibit H.

i. DMG's Trademark Registrations

45. DMG is identified as the owner of U.S. Trademark Registration No. 2,729,165 for

DIBELS in International Class 16 for use in conjunction with "printed instructional, educational

and teaching materials in the areas of literacy and early literacy assessment and skills;

educational books, periodical reports and printed teaching materials in the areas of literacy skills

and early literacy skills, monitoring and assessing student outcomes, skill and progress" (the

"'165 Registration"). The '165 Registration issued on June 24, 2003. A copy of the '165

Registration is attached hereto as Exhibit I.

46. DMG is identified as the owner of U.S. Trademark Registration No. 2,750,275 for

DIBELS in International Class 41 for use in conjunction with "providing on-line instructional,

educational, testing and teaching materials and distributing course materials in connection

therewith in the field of literacy and early literacy skills, monitoring and assessment via a global

computer network" (the "'275 Registration"). The '275 Registration issued on August 12, 2003.

A copy of the '275 Registration is attached hereto as Exhibit J.

47. DMG is identified as the owner of U.S. Trademark Registration No. 2,771,559

DIBELS in International Class 41 for use in conjunction with "educational research; educational

testing; instruction in the field of literacy and early literacy skills, monitoring and assessment of

student progress and outcomes; education and educational services in the nature of workshops,
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classroom instruction, seminars, professional development, and in-service and pre-service

training in the field of literacy and early literacy skills, monitoring and assessment of student

progress and outcomes; standardized testing; preparing, administering and scoring standardized

tests; measurement evaluations in the areas of literacy, early literacy skills for educational

purposes; providing seminars, training and educational conferences, all of the foregoing in the

areas of literacy and early literacy skills, monitoring and assessment of student progress and

outcomes; publication of educational books, periodical reports, and teaching materials in the

areas of literacy and early literacy skills, monitoring and assessment of student progress and

outcomes" (the "'559 Registration"). The '559 Registration issued on October 7, 2003. A copy

of the '559 Registration is attached hereto as Exhibit K.

48. DMG is identified as the owner of U.S. Trademark Registration No. 3,970,666 for

DIBELS NEXT in International Class 16 for use in conjunction with "printed instructional,

educational and teaching materials in the areas of literacy and early literacy assessment and

skills; educational books, periodical reports and printed teaching materials in the areas of literacy

skills and early literacy skills, monitoring and assessing student outcomes, skill and progress;"

and in International 41 for "educational research; educational testing; instruction in the field of

literacy and early literacy skills, monitoring and assessment of student progress and outcomes;

education and educational services in the nature of workshops, classroom instruction, seminars,

professional development, and in-service and pre-service training in the field of literacy and

early literacy skills, monitoring and assessment of student progress and outcomes; standardized

testing; preparing, administering and scoring standardized tests; measurement evaluations in the

areas of literacy, early literacy skills for educational purposes; providing seminars, training and

educational conferences, all of the foregoing in the areas of literacy and early literacy skills,

monitoring and assessment of student progress and outcomes; publication of educational books,

periodical reports, and teaching materials in the areas of literacy and early literacy skills,
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monitoring and assessment of student progress and outcomes; providing on-line instructional,

educational, testing and teaching materials and distributing course materials in connection

therewith in the field of literacy and early literacy skills, monitoring and assessment via a global

computer network" (the "'666 Registration"). The '666 Registration issued on May 31, 2011. A

copy of the '666 Registration is attached hereto as Exhibit L.

49. DMG is identified as the owner of U.S. Trademark Registration No. 4,084,850 for

DIBELS NEXT in International Class 9 for use in conjunction with "computer software for

instructional and educational testing" (the "'850 Registration"). The '850 Registration issued on

January 10, 2012. A copy of the '850 Registration is attached hereto as Exhibit M.

50. DMG is identified as the owner of U.S. Trademark Registration No. 4,164,609 for

DIBELSNET in International Class 42 for use in conjunction with "providing online nondownloadable software for monitoring and assessment data reporting services in the area of

literacy and early literacy skills" (the "'609 Registration"). The '609 Registration issued on

June 26, 2012. A copy of the '608 Registration is attached hereto as Exhibit N.

51. The '165 Registration, the '275 Registration, the '559 Registration, the '666

Registration, the '850 Registration, and the '609 Registration are collectively referred to herein as

the "DMG DIBELS Registrations."

52. The marks that are the subject of the '165 Registration, the '275 Registration, the

'559 Registration, the '666 Registration, the '850 Registration, and the '609 Registration are

collectively referred to herein as the "DMG DIBELS Marks."

53. DMG is identified as the owner of U.S. Trademark Registration No. 3,446,832 for

IDEL (the "DMG IDEL Mark") in International Class 16 for use in conjunction with "printed

instructional, educational and teaching materials in the areas of literacy and early literacy

assessment and skills in Spanish; educational books, periodical reports and printed teaching

materials in the areas of literacy skills and early literacy skills, monitoring and assessing student
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outcomes, skill and progress;" and, in International Class 41 for "educational research;

educational testing in Spanish; instruction in the field of literacy and early literacy skills,

monitoring and assessment of student progress and outcomes; education and educational services

in the nature of workshops, classroom instruction, seminars, professional development, and inservice and pre-service training in the field of literacy and early literacy skills, monitoring and

assessment of student progress and outcomes; standardized testing in Spanish; preparing,

administering and scoring standardized tests; measurement evaluations in the areas of literacy,

early literacy skills for educational purposes; providing seminars, training and educational

conferences, all of the foregoing in the areas of literacy and early literacy skills, monitoring and

assessment of student progress and outcomes; publication of educational books, periodical

reports, and teaching materials in the areas of literacy and early literacy skills, monitoring and

assessment of student progress and outcomes; providing on-line instructional, educational,

testing and teaching materials in Spanish and distributing course materials in connection

therewith in the field of literacy and early literacy skills, monitoring and assessment via the

Internet" (the "'832 Registration"). The '832 Registration issued on June 10, 2008 (the "DMG

IDEL Registration"). A copy of the DMG IDEL Registration is attached hereto as Exhibit O.

54. Counter-Defendants filed DMG's intent-to-use application for the DMG IDEL

Mark, Ser. No. 78871475 (the "'475 Application") on April 27, 2006. Counter-Defendants claim

DMG first used the IDEL Mark in commerce at least as early as January 18, 2005. CounterDefendants have not filed an Affidavit of Incontestability for this mark under 15 U.S.C. § 1065

of the Trademark Act. A copy of the '475 Application is attached hereto as Exhibit P.

55. The DMG DIBELS Registrations and the DMG IDEL Registration are

collectively referred to herein as the "DMG Registrations."

56. The DMG DIBELS Marks and the DMG IDEL Mark are collectively referred to

herein as the "DMG Marks."
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ii. Counter-Defendants' Fraud Related to DIBELS Registrations

57. Counter-Defendants fraudulently procured, maintained and renewed the DMG

DIBELS Registrations by willfully making false representations of material fact in the trademark

applications, maintenance forms, and renewal forms for the DMG DIBELS Registrations.

58. Counter-Defendants willfully made false material misrepresentations in the

applications to register the DMG DIBELS Registrations. Counter-Defendants executed

numerous declarations under 18 U.S.C. § 1001 when it filed its applications to register the DMG

DIBELS Registrations with knowledge that: (1) DMG was not the owner of the DMG DIBELS

Marks; (2) DMG was not using the DIBELS mark in commerce; (3) DMG was not entitled to

use the DIBELS mark in commerce; (4) the University was previously using and had the prior

right to use DIBELS in commerce; and, (5) the statements in the declarations for the applications

to register the DMG DIBELS Registrations were not true.

59. Counter-Defendants knew that the University previously, substantially,

continuously and exclusively used the DIBELS mark in commerce when Counter-Defendants

filed the use-based applications to register the '165, '559 and '275 Marks in DMG's name.

60. Counter-Defendants knew that DMG was not using the DIBELS mark in

commerce when Counter-Defendants filed their use-based applications to register the '165, '559

and '275 Marks in DMG's name. Because DMG was not using the DIBELS mark when it filed

its trademark applications, there was no evidence for DMG to submit to the USPTO as a

specimen of DMG's use in commerce.

61. Having no evidence of its own use of DIBELS and to induce the USPTO to issue

trademark registrations for DMG's '165, '559, and '275 Marks, Counter-Defendants submitted

evidence of the University's use of DIBELS to show DMG's use in commerce.
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62. On February 13, 2002, Counter-Defendants fraudulently filed DMG's application

to register the '165 Mark for DIBELS by submitting a specimen of use to the USPTO that

evidences the University's use of DIBELS on the University's website at

http://dibels.uoregon.edu/. A copy of the specimen submitted by DMG to the USPTO on

February 13, 2002 in support of the ‘165 Mark is attached hereto as Exhibit Q.

63. Counter-Defendants did not submit any evidence with the application to register

the '165 Mark to support DMG's use in commerce, other than the evidence demonstrating the use

of DIBELS by the University on the University's website at http://dibels.uoregon.edu/.

64. Also on February 13, 2002, Counter-Defendants fraudulently filed the

applications to register the '559 and '275 Marks for DIBELS by submitting the webpages from

the University's website at http://dibels.uoregon.edu/measures/materials.php to the USPTO as

evidence of its own use in commerce. A copy of the specimen submitted by DMG to the

USPTO on February 13, 2002 in support of the ‘559 Mark is attached hereto as Exhibit R. A

copy of the specimen submitted by DMG to the USPTO on February 13, 2002 in support of the

‘275 Mark is attached hereto as Exhibit S.

65. Counter-Defendants did not submit any evidence with the applications to register

the '559 and '275 Marks to support DMG's use in commerce, other than the evidence

demonstrating the use of DIBELS by the University on the University's website at

http://dibels.uoregon.edu/measures/materials.php.

66. Counter-Defendants' applications to register the '666 and '850 Marks for DIBELS

NEXT expressly rely upon Counter-Defendants' fraudulently filed applications to register the

'165, '559 and '275 Marks, and wholly incorporate the University DIBELS Mark. A copy of

DMG's application to register the '666 Mark, Ser. No. 85156381, is attached hereto as Exhibit T.

A copy of DMG's application to register the '850 Mark is attached hereto as Exhibit U.
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67. Counter-Defendants' application to register DMG's '609 Mark for DIBELSNET

expressly relies on the '666 Mark and wholly incorporates the University DIBELS Mark. A copy

of DMG's application to register the '609 Mark, Ser. No. 85463933, is attached hereto as Exhibit

V.

68. Counter-Defendants then continued to willfully make false representations of

material fact in the trademark maintenance and renewal forms filed in support of the DMG

DIBELS Registrations by stating that DMG owned the DIBELS mark.

69. On July 25, 2008, Counter-Defendants fraudulently submitted DMG's Combined

Declaration of Use and Incontestability under Sections 8 and 15 of the Trademark Act for the

'165 Mark for DIBELS by executing a declaration stating that DMG was the owner of the

DIBELS mark, when it was and is not the owner. A copy of the specimen submitted by DMG to

the USPTO on May 1, 2008 in support of the ‘165 Mark is attached hereto as Exhibit W.

70. On October 7, 2008, Counter-Defendants fraudulently submitted DMG's

Combined Declaration of Use and Incontestability under Sections 8 and 15 of the Trademark Act

for the ‘559 Mark for DIBELS by executing a declaration stating that DMG was the owner of the

DIBELS mark, when it was and is not the owner. A copy of the specimen submitted by DMG to

the USPTO on July 17, 2008 in support of the ‘559 Mark is attached hereto as Exhibit X.

71. On August 12, 2008, Counter-Defendants fraudulently submitted DMG's

Combined Declaration of Use and Incontestability under Sections 8 and 15 of the Trademark Act

for the '275 Mark for DIBELS by executing a declaration stating that DMG was the owner of the

DIBELS mark, when it was and is not the owner. A copy of the specimen submitted by DMG to

the USPTO on June 18, 2008 in support of the ‘275 Mark is attached hereto as Exhibit Y.

72. Counter-Defendants knew of the University's prior ownership and use of the

DIBELS mark because its co-founders, Drs. Good and Kaminski, worked at the University's

College of Education, directly in the University's DIBELS program as researchers and trainers,
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prior to, during, and after filing the applications to register the DMG DIBELS Registrations.

Printouts from the University’s 2001 website are attached hereto as Exhibit Z.

73. In addition, Dr. Good admitted to DMG's fraudulent activities in his April 20,

2007 testimony under oath before the United States House of Representatives Committee on

Education and Labor. Dr. Good was subpoenaed to appear before this Committee to testify

regarding his unlawful activities related to the federal funding of DIBELS under the No Child

Left Behind Act and the Reading First Program. Among other things, Dr. Good testified that

DMG appropriated taxpayer money, including grants awarded to the University, in order to

privately profit from the University's research and development:

[CONGRESSWOMAN] SHEA-PORTER: So, in other words, it was

federal money, taxpayer's money, that created the base upon which

you created your company [DMG].

[DR] ROLAND GOOD: Yes. Federal funds created the knowledge

base, the technology that we used to apply to develop the specific

form that is DIBELS 6th edition . . . .

Dr. Good further conceded that the University refused to allow Counter-Defendants to have

control over the DIBELS educational materials:

[CONGRESSWOMAN] SHEA-PORTER: Why your company is yours

[sic] instead of belonging to those who paid for it, why you did not

[sic] keep it inside the university or inside a setting that would give

access and continue to develop it based on the fact that the

American people paid for this?

[DR.] ROLAND GOOD: The American people paid for the

development of the knowledge. We created that knowledge, and

we made that freely and publicly available for people to use, and

others are using that knowledge as well.

We created Dynamic Measurement Group in part to protect our

ability to give the measures away for free. When we talked with

the University of Oregon and about our desire to have control over

publication of it, they were not interested in making that assurance

. . . .
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Dr. Good also admitted that the University previously used and owned the University DIBELS

Mark. In addition, Dr. Good admitted that he had knowledge of the University's prior use and

ownership of the University DIBELS Mark when Counter-Defendants executed and filed

declarations in support of the trademark application, maintenance and renewal forms for the

DMG DIBELS Registrations. A copy of transcript excerpts of Dr. Good's 2007 United States

House of Representatives Committee on Education and Labor testimony is attached hereto as

Exhibit AA.

74. Counter-Defendants filed DMG's applications to register the DIBELS mark with

knowledge that they were falsely and fraudulently claiming the University's use of DIBELS as

their own.

75. Counter-Defendants knew that the University owned the University DIBELS

Mark, and had previously used DIBELS in commerce throughout the United States long before

DMG existed as a corporate entity. A copy of a printout from the Oregon Secretary of State

website is attached hereto as Exhibit BB. Copies of the University's historical webpage printouts

are attached hereto as Exhibit CC.

76. Counter-Defendants knew that the University was continuing to use the

University DIBELS Mark in commerce when Counter-Defendants filed DMG's applications to

register its DMG DIBELS Marks for confusingly similar goods/services.

77. Counter-Defendants knew that the University owned and was using the University

DIBELS Mark in commerce when Counter-Defendants filed DMG's trademark maintenance and

renewal forms for the DMG DIBELS Registrations. Counter-Defendants nevertheless executed

these declarations with the knowledge and belief that the statements in the declaration were false.

78. Counter-Defendants made false statements in support of the trademark

application, maintenance and renewal forms for the DMG DIBELS Registrations with the intent

to deceive the USPTO, to induce the USPTO to grant Counter-Defendants' applications to
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register the DMG DIBELS Marks, and to induce the USPTO to maintain and/or renew the DMG

DIBELS Registrations. The USPTO reasonably relied upon the truth of Counter-Defendants'

false statements when it granted Counter-Defendants' applications to register the DMG DIBELS

Marks, and when it agreed to maintain and/or renew the DMG DIBELS Registrations. Yet,

because Counter-Defendants incorrectly identified DMG as the owner in the applications to

register the DMG DIBELS Registrations, the DMG DIBELS Registrations are void ab initio.

iii. Counter-Defendants' Fraud Related to IDEL Registration

79. Long before DMG, the University substantially, continuously, and exclusively

used the University IDEL Mark in commerce throughout the United States, and the University

continues to use the University IDEL Mark in commerce throughout the United States and the

world.

80. Counter-Defendants fraudulently procured the DMG IDEL Registration by

willfully making false representations of material fact in Counter-Defendants' supporting

declarations for the trademark application and Statement of Use for the DMG IDEL Mark.

81. Counter-Defendants willfully made false material misstatements in CounterDefendants' application to register the DMG IDEL Mark, by executing the supporting

declaration, under notice of 18 U.S.C. § 1001, with willful knowledge that: (1) DMG was not

the owner of the DMG IDEL Mark; (2) DMG was not entitled to use the IDEL mark in

commerce; (3) the University was using and had the prior right to use the IDEL trademark in

commerce; and (4) that the statements in the declaration in support of the application to register

the DMG IDEL Registration were not true.

82. Counter-Defendants knew that the University previously, substantially,

continuously and exclusively used the University IDEL Mark in commerce when DMG filed an

intent-to-use application to register the DMG IDEL Mark on April 27, 2006. Nevertheless,
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Counter-Defendants fraudulently filed the application to register the DMG IDEL Mark in DMG's

name.

83. Counter-Defendants willfully made false material misstatements in the Statement

of Use for the DMG IDEL Mark, by executing the supporting declaration, under notice of 18

U.S.C. § 1001, with knowledge that DMG was not the owner of this mark.

84. Counter-Defendants knew of the University's prior ownership and use of the

IDEL mark since at least July 2003, because DMG's co-founders, Drs. Good and Kaminski,

worked as professors at the University's College of Education, directly in and/or in close

association with the University’s IDEL program as researchers and trainers, prior to, during, and

after Counter-Defendants' filing of the application to register the DMG IDEL Mark. Printouts

from the University’s 2003 website are attached hereto as Exhibit DD and Exhibit EE.

85. It is Dr. Kaminski, acting as the president of DMG in 2006, who signed the

application to register the IDEL trademark on behalf of DMG.

86. Moreover, Dr. Good is credited with editing the University's 2003 IDEL

assessment booklet, offered on the University's website at http://dibels.uoregon.edu, long before

DMG's filing of the application to register the DMG IDEL Mark in 2006. A copy of the

University's 2003 IDEL assessment booklet is attached hereto as Exhibit FF.

87. Counter-Defendants nevertheless signed the declaration in support of DMG's

application to register the DMG IDEL Mark and the supporting Statement of Use with

knowledge that the statements were false.

88. Counter-Defendants made these false statements with the intent to deceive the

USPTO and to induce the USPTO to grant Counter-Defendants' application to register the IDEL

mark. The USPTO reasonably relied upon the truth of Counter-Defendants' false statements

when it granted Counter-Defendants' application to register the IDEL mark. Yet, because
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Counter-Defendants was incorrectly identified DMG as the owner in the applications to register

the DMG IDEL Registration, this registration is void ab initio.

G. DIBELS NEXT, DIBELSNET and Harm to Public

89. To compete with the University's highly regarded DIBELS assessment measures

and DIBELS Data System, Counter-Defendants recently developed and implemented DMG's

own early language and literacy assessments and web-based data assessment system.

90. Counter-Defendants call DMG's new assessments DIBELS NEXT, and call the

web-based data assessment system, DIBELSNET (the "DIBELS NEXT products and services").

91. Despite Counter-Defendants' appropriation of the DIBELS moniker, the initial

research for DIBELS NEXT products and services was not conducted by the University.

92. Unlike the University's DIBELS products and services that have been subject to

over a decade of peer review, DMG's DIBELS NEXT benchmark achievement standards are

based on flawed research results generated from DMG's unsound, unvetted research

methodology.

93. DIBELS NEXT benchmark achievement standards and decision rules are based

on a small, homogenous student sample comprised of a high percentage of Caucasian and

economically privileged students, who have a low rate of reading disabilities.

94. Due to the sample population, the DIBELS NEXT benchmark achievement

standards and decision rules set entirely erroneous standards for educational decision making.

95. Unlike the University's DIBELS products and services, Counter-Defendants'

DIBELS NEXT products and services misinform educators regarding their students' reading

ability and fail to identify those students who need intensive reading skills intervention.
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96. In advertisements and written materials, Counter-Defendants falsely state that

students who meet the DIBELS NEXT benchmark achievement standards are very likely to pass

high-stakes end of year examinations.

97. Counter-Defendants also falsely advertise and promote that educators do not have

to follow-up or give intensive individualized instruction to students who satisfy the DIBELS

NEXT benchmark goals.

98. The DIBELS NEXT assessments erroneously conclude that certain students

satisfy achievement standards when, in fact, these students require additional support and

substantial reading intervention.

99. This travesty is compounded by the fact that educators also will be incorrectly

evaluated on the DIBELS NEXT scores of their students through another DMG product called

DIBELS AD, an acronym for DIBELS for Accountability Decisions.

100. The DIBELS NEXT products and services have harmed the public, and will

continue to harm the public.

101. Moreover, because Counter-Defendants' DIBELS NEXT and DIBELSNET marks

wholly incorporate the University's DIBELS mark—the public will be deceived into thinking

that the DIBELS NEXT products and services are based upon the same rigorous research

criteria, methodology, and peer review as the University's DIBELS products and services when

they are not.

H. Likelihood of Confusion

102. Counter-Defendants, through DMG, now directly compete with the University in

the field of early language and literacy assessment.

103. The DMG Marks are identical and/or confusingly similar in sight, sound and

commercial impression to the pre-existing University Marks.
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104. The goods and services listed in the DMG DIBELS Registrations are the same or

confusingly similar to the goods and services listed in the University DIBELS Application.

105. The goods and services listed in the DMG IDEL Registration are the same or

confusingly similar to the goods and services listed in the University IDEL Applications.

106. Due to the similarity between the parties' marks, the similarity of goods/services

of the respective parties, and the identical channels of trade, there exists a likelihood of

confusion among consumers of the goods and services.

107. In fact, since its introduction of DIBELS NEXT products and services in the

marketplace in 2010, the University has recorded over one thousand instances of actual

consumer confusion.

I. Counter-Defendants' Unlawful Activities Related to Copyrights

108. Long after Dr. Good's 2007 U.S. House of Representatives Committee testimony

conceding the University to be the source of DIBELS and as alleged in paragraph 127 of the

Complaint, Counter-Defendants fraudulently procured the following copyright registrations for

the University Works:

Reg. No. Title

1 TXu001619550 Dynamic Indicators of Basic Early Literacy Skills 5th Edition

2 TX0006989890 Dynamic Indicators of Basic Early Literacy Skills 6th Edition First

Grade Scoring Booklet Progress Monitoring Nonsense Word Fluency

3 TX0006989892 Dynamic Indicators of Basic Early Literacy Skills 6th Edition First

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency

4 TX0006989894

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

Kindergarten Scoring Booklet Progress Monitoring Initial Sound

Fluency
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Reg. No. Title

5 TX0006989900 Dynamic Indicators of Basic Early Literacy Skills 6th Edition

Administration and Scoring Guide

6 TX0006989907 Dynamic Indicators of Basic Early Literacy Skills 6th Edition First

Grade Student Materials Progress Monitoring Oral Reading Fluency

7 TX0006989918 Dynamic Indicators of Basic Early Literacy Skills 6th Edition First

Grade Student Materials Benchmark Assessment

8 TX0006996893

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

Kindergarten Student Materials Progress Monitoring Initial Sound

Fluency

9 TX0006997739

Dynamic Indicators of Basic Early Literacy Skills 6th Edition First

Grade Student Materials Progress Monitoring Nonsense Word

Fluency

10 TX0006997742

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

Kindergarten and First Grade Scoring Booklet Progress Monitoring

Word Use Fluency

11 TX0006997749

Dynamic Indicators of Basic Early Literacy Skills 6th Edition

Kindergarten Scoring Booklet Progress Monitoring Phoneme

Segmentation Fluency

12 TX0006997758 Dynamic Indicators of Basic Early Literacy Skills 6th Edition

Kindergarten Students Materials Benchmark Assessment

13 TX0006993535 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Third

Grade Student Materials Progress Monitoring Oral Reading Fluency

14 TX0006993530 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Second

Grade Student Materials Progress Monitoring Oral Reading Fluency

15 TX0006993539 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Second

Grade Student Materials Benchmark Assessment

16 TX0006993542 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Third

Grade Student Materials Benchmark Assessment

17 TX0006993548 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Third

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency
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Reg. No. Title

18 TX0006993551 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Second

Grade Scoring Booklet Benchmark Assessment

19 TX0006993555

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Second

and Third Grade Scoring Booklet Progress Monitoring Word Use

Fluency

20 TX0006993557 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Second

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency

21 TX0006993564 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Third

Grade Scoring Booklet Benchmark Assessment

22 TX0006993559 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fifth

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency

23 TX0006989913 Dynamic Indicators of Basic Early Literacy Skills 6th Edition First

Grade Scoring Booklet Benchmark Assessment

24 TX0006993376 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fourth

Grade Student Materials Progress Monitoring Oral Reading Fluency

25 TX0006993377 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fourth

Grade Student Materials Benchmark Assessment

26 TX0006993536 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fifth

Grade Student Materials Benchmark Assessment

27 TX0006993541 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fifth

Grade Student Materials Progress Monitoring Oral Reading Fluency

28 TX0006993547 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Sixth

Grade Student Materials Progress Monitoring Oral Reading Fluency

29 TX0006993550 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Sixth

Grade Student Materials Benchmark Assessment

30 TX0006993554 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fourth

Grade Scoring Booklet Benchmark Assessment

31 TX0006993575 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fifth

Grade Scoring Booklet Benchmark Assessment
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Reg. No. Title

32 TX0006993576 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Sixth

Grade Scoring Booklet Benchmark Assessment

33 TX0006993583 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Sixth

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency

34 TX0006993589 Dynamic Indicators of Basic Early Literacy Skills 6th Edition

Kindergarten Scoring Booklet Benchmark Assessment

35 TX0006993593 Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fourth

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency

(the "DMG Copyrights").

109. The University Works were authored and are owned by the University pursuant to

Oregon State regulations, University regulations, University directives, federal government

research grant terms, the work for hire doctrine and/or the terms of executed contracts.

110. It is indisputable that, throughout their tenure at the University, Drs. Good and

Kaminski knew that the University owned and was entitled to own the intellectual property

arising from University resources and/or government grants pursuant to Oregon State

regulations, University regulations, and University directives. In fact, Drs. Good and Kaminski

executed numerous agreements whereby they agreed to comply with these Oregon State

regulations, University regulations, and University directives by, among other things, agreeing to

assign any intellectual property rights arising from University resources to the University as a

condition of their work at the University.

111. Drs. Good and Kaminski did not comply with the law or their contractual

obligations. Instead, Drs. Good and Kaminski falsely stated in the copyright applications for the

DMG Copyrights that DMG owned the underlying University Works in order to induce the

Copyright Office to register the DMG Copyrights in DMG's name.
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112. As such, Counter-Defendants procured the DMG Copyrights by knowingly

making false representations of material fact to the Copyright Office, with the intent to deceive

the Copyright Office and to induce the Copyright Office to register the copyrights for the

University Works to DMG.

113. The Copyright Office reasonably relied upon the truth of Counter-Defendants'

false statements when it granted Counter-Defendants' applications to register the DMG

Copyrights.

114. After fraudulently procuring copyright registrations for works funded by the

American public, Drs. Good and Kaminski now assert the DMG Copyrights against their own

University colleagues who were expressly credited as authors of the underlying University

Works.

J. Counter-Defendants' Unlawful Activities Related to Education Use

Agreement

115. Drs. Good and Kaminski's systematic, unlawful activities were not limited to their

fraudulent procurement of intellectual property registrations. Among other things, the two used

their roles as trusted faculty to systematically misappropriate government funded intellectual

property.

116. Drs. Good and Kaminski not only provided DIBELS training on behalf of the

University, but also were the two principal faculty entrusted by the University to manage the

research, development, and implementation of DIBELS and IDEL at the University—including

the management of University employees, the DDS online assessment tool and the University

DIBELS website.

117. In 2003, without authorization by the University, Drs. Good and Kaminski

unlawfully used their positions as trusted faculty to replace the DIBELS 5th Edition and DIBELS

6th Edition Education Use Agreement crediting the University with the development of the
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DIBELS measures—with an Education Agreement that removed any reference to the University

and solely credited their own company, DMG.

118. Drs. Good and Kaminski used their positions as trusted faculty and supervisors to

instruct University employees to upload and maintain DMG's unlawful Education Use

Agreement until the University removed it from its website.

FIRST CLAIM FOR RELIEF

(Trademark Infringement and False Designation of Origin

under the Lanham Act § 43(a))

119. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 118 above.

120. The University owns all rights, title, and interest in and to, and holds the first,

superior and exclusive rights to use University Marks in conjunction with early language and

literacy assessment goods/services.

121. The University gained prior state and nationwide common law rights in the

DIBELS mark in conjunction with early language assessment goods/services long before the

registration dates of the DMG DIBELS Registrations. The University has continuously used the

University Marks in commerce in conjunction with early language assessment goods/services

and continues to use these marks in commerce in association with these goods/services.

122. The University DIBELS Mark and the University IDEL Marks are inherently

distinctive and/or have acquired secondary meaning.

123. Without permission, authority, or license from the University, CounterDefendants have been offering for sale, distributing, and/or selling in commerce, over the

Internet in this District and elsewhere, early language and literacy assessment goods/services

under the DIBELS and IDEL brands, which are confusingly similar to the University's well
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known and long-standing established trademarks. Drs. Good and Kaminski have personally

taken part in these infringing activities and specifically directed others to do so.

124. Counter-Defendants' unauthorized use of the DMG Marks infringes on the valid

prior trademark rights established by the University prior to the issuance of the DMG

Registrations.

125. Counter-Defendants' unauthorized use of DIBELS and IDEL in conjunction with

early language and literacy assessment goods/services damages and dilutes the goodwill and

reputation of the University in its trademarks and interferes with and reduces sales of the

University's DIBELS and IDEL goods/services. Counter-Defendants' conduct also damages the

relationship and goodwill the University enjoys with its consumers.

126. Counter-Defendants knew that its adoption, commencement of use in commerce,

and continuing use of the University's DIBELS and IDEL trademarks in connection with early

language and literacy assessment goods/services would cause confusion, mistake, or deception

among purchasers, users, and the public.

127. Counter-Defendants knew of the University's prior use of the University Marks.

By adopting, commencing to use, and continuing to use the University's DIBELS and IDEL

trademarks, Counter-Defendants intended to induce, did induce and will continue to induce

customers to purchase early language and literacy assessment goods/services by trading off of

the extensive goodwill and reputation built up by the University in its University Marks.

128. Counter-Defendants' acts constitute false descriptions, false designations, false

representations of origin, and false advertising in interstate commerce, in violation of Section

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

129. Counter-Defendants' conduct has been knowing, deliberate, willful, and intended

to cause confusion, or to cause mistake or to deceive in violation of the University's rights.
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130. The foregoing actions of Counter-Defendants have confused and are likely to

continue to confuse the public, and constitute a false designation of origin and a false or

misleading description or representation in violation of, and violate the University's rights under,

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

131. Counter-Defendants' wrongful conduct, as averred above, has permitted and will

permit them to make substantial sales and profits on the strength of the University's reputation,

marketing, advertising, sales, and consumer recognition. The University seeks an accounting of

Counter-Defendants' profits and further requests that the Court increase the award of CounterDefendants' profits to the University in an amount in the Court's discretion.

132. As a direct and proximate result of Counter-Defendants' wrongful conduct, as

averred above, the University has been and will be deprived of substantial sales of its early

language and literacy assessment services in an amount as yet unknown but to be determined at

trial, and has been and will be deprived of the value of its University Marks as a commercial

asset, in an amount as yet unknown but to be determined at trial. The University seeks its actual

damages, and requests that the Court grant the University three times the amount of its actual

damages in the Court's discretion.

133. The University and the public have suffered and continues to suffer irreparable

harm as a result of Counter-Defendants' conduct, and that harm will continue unless the Court

enjoins Counter-Defendants' conduct. This harm constitutes an injury for which the University

has no adequate remedy at law.

134. Pursuant to 15 U.S.C. § 1118, the University asks the court for an order forcing

Counter-Defendants and their licensees to deliver up for destruction all materials in CounterDefendants' possession that infringe upon the University's rights.
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SECOND CLAIM FOR RELIEF

(Cancellation of Trademark Registrations Under the Lanham Act § 38)

135. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 134 above.

136. DMG applied for and fraudulently obtained the DMG Registrations. Statements

made in each application, statement of use, maintenance forms and/or renewal forms for the

DMG Registrations, were false, and known in fact by Counter-Defendants to be false at the time

these statements were made.

137. Counter-Defendants fraudulently procured the DMG IDEL Registration by

willfully making false representations of material fact in its DMG IDEL Mark trademark

application and Statement of Use. Counter-Defendants also fraudulently procured, maintained,

and renewed the DMG DIBELS Registrations by willfully making false representations of

material fact in its trademark applications, maintenance forms, and renewal forms for the DMG

DIBELS Registrations.

138. Counter-Defendants willfully made these materially false statements with the

intent to: (1) deceive the USPTO; (2) induce the USPTO to grant DMG's applications for the

DMG DIBELS Registrations and the DMG IDEL Registration; (3) induce the USPTO to

maintain the DMG DIBELS Registrations; and/or, (4) induce the USPTO to renew the DMG

DIBELS Registrations. The USPTO reasonably relied upon the truth of Counter-Defendants'

false statements, granted Counter-Defendants' applications for the DMG Registrations, and

allowed the continued registration of the DMG Registrations.

139. The DMG Registrations also were obtained contrary to Section 1052 and 1064 of

the Lanham Act because the marks registered to DMG under the DMG Registrations are being

used by or with DMG's permission in a manner so as to misrepresent the source of goods or

services being offered in connection with the IDEL and DIBELS trademarks.
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140. Counter-Defendants' use of the DMG Marks infringes on the valid prior

trademark rights established at common law by the University prior to the filing of the

applications to register the DMG Registrations.

141. The University has been harmed by the DMG Registrations. Each of the DMG

Registrations is required to be cancelled under 15 U.S.C. §§ 1064 and 1119. DMG is liable for

the University's damages under 15 U.S.C. § 1120.

THIRD CLAIM FOR RELIEF

(Declaratory Relief of Prior Common Law Trademark Use)

142. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 141 above.

143. The University is the prior, senior user of the University Marks in intrastate and

interstate commerce, in connection with early childhood literacy assessment good/services.

144. An actual, substantial and justiciable controversy exists between the parties with

respect to the University Marks. The University contends that it is the prior, senior user and

owner of the University Marks, and further contends that DMG is using the University Marks in

violation of the University's rights under the Lanham Act and at common law. CounterDefendants dispute the University's contentions.

145. The University is entitled to a declaratory judgment that it is the prior, senior user

of the University Marks in intrastate and interstate commerce, that is owns common law rights in

the University Marks in all states and territories in the United States as the prior user, and that

Counter-Defendants have violated the University's rights in the University's Marks under the

Lanham Act and at common law.
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FOURTH CLAIM FOR RELIEF

(Copyright Infringement)

146. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 145 above.

147. The University Works are comprised of original material that is copyrightable

subject matter under the Copyright Act, 17 U.S.C. § 101 et seq.

148. Without consent, authorization, approval, or license, the Counter-Defendants

knowingly, willingly, and unlawfully copied, prepared, published, and distributed the University

Works, portions thereof, and/or derivative works, and continue to do so. Counter-Defendants'

activities infringe the University's Copyrights.

149. Upon information and belief, the Counter-Defendants have entered into numerous

licensing agreements with third parties who use the University Works and/or copyrightable

portions of the University Works. These licensing agreements and uses are not authorized by the

University. The Counter-Defendants have thus induced, caused, and materially contributed to

the infringing acts of others by encouraging, inducing, allowing and assisting others to use, copy

and distribute the University Works, and/or works derived therefrom.

150. The Counter-Defendants' direct and induced infringements are and have been

knowing and willful.

151. By this unlawful copying, use, and distribution, the Counter-Defendants have

violated the University's exclusive rights under 17. U.S.C. § 106.

152. The Counter-Defendants have realized unjust profits, gains and advantages as a

proximate result of its infringement.

153. The Counter-Defendants will continue to realize unjust profits, gains and

advantages as a proximate result of its infringement as long as such infringement is permitted to

continue.
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154. The University is entitled to an injunction restraining the Counter-Defendants

from engaging in any further such acts in violation of the United States copyright laws. Unless

the Counter-Defendants are enjoined and prohibited from infringing the University Copyrights,

inducing others to infringe the University Copyrights, and unless all infringing products and

advertising materials are seized, the Counter-Defendants will continue to intentionally infringe

and induce infringement of the University Copyrights.

155. As a direct and proximate result of the Counter-Defendants direct and indirect

willful copyright infringement, the University has suffered, and will continue to suffer, monetary

loss to its business, reputation and goodwill. The University is entitled to recover from the

Counter-Defendants, in amounts to be determined at trial, the damages sustained and will

sustain, and any gains, profits and advantages obtained by the Counter-Defendants as a result of

Counter-Defendants acts of infringement and Counter-Defendant's use and publication of the

copies of the University Works.

FIFTH CLAIM FOR RELIEF

(Declaratory Relief of Invalidity and/or Non-Infringement of Copyright)

156. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 155 above.

157. There is an actual controversy between the University and the CounterDefendants regarding the validity of the DMG Copyrights and the adequacy of these

registrations to support an action for infringement.

158. The University desires a judicial determination that the DMG Copyrights are not

valid or entitled to a presumption of validity for the contents of the supporting registration

applications pursuant to 17 U.S.C. § 410(c)(requiring a work to be registered within five years of

first publication to enjoy the presumption of validity). The Complaint concedes that the
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applications to register the DMG Copyrights were filed more than five years from the date of

first publication.

159. The University seeks a judicial determination that the DMG Copyrights lack

validity and are insufficient to support claims for infringement against the University

Defendants.

160. The University also seeks a judicial determination that the DMG Copyrights are

invalid and/or unenforceable because DMG failed to comply with the registration requirements

of 17 U.S.C. § 409 and 37 C.F.R. § 202.3. In particular, the DMG Copyright Registrations failed

to disclose that the subject works were not owned by DMG, that DMG did not obtain lawful

assignments from all contributors to the subject works, and that the subject works were works for

hire owned by the University.

161. Accordingly, the University seeks a declaratory judgment that the DMG

Copyrights are: (1) are not entitled to a presumption of validity; (2) invalid due to DMG's failure

to comply with the disclosure requirements of 17 U.S.C. § 409 and 37 C.F.R. § 202.3; and (3)

insufficient to support an infringement action.

SIXTH CLAIM FOR RELIEF

(Common Law Trademark Infringement and Unfair Competition)

162. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 161 above.

163. Counter-Defendants' acts constitute common law trademark infringement and

unfair competition, and have created and will continue to create a likelihood of confusion to the

irreparable injury of the University. The University has no adequate remedy at law for this

injury.
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164. Counter-Defendants acted with full knowledge of the University's use of, and

common law rights to, the University's Marks and without regard to the likelihood of confusion

of the public resulting from Defendants' activities.

165. Counter-Defendants actions demonstrate an intentional, willful, and malicious

intent to trade on the goodwill associated with the University DIBELS Mark and the University

IDEL Marks to the great and irreparable injury of the University.

166. As a result of Counter-Defendants' acts, the University has been damaged in an

amount not yet determined or ascertainable. At a minimum, the University is entitled to

injunctive relief, to an accounting of Counter-Defendants' profits, damages and costs.

SEVENTH CLAIM FOR RELIEF

(Conversion)

167. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 166 above.

168. By the actions and omissions described above, Counter-Defendants intentionally

took possession or control of University intellectual property and resources as well as the illgotten gains of funds belonging to the University, and did not return them but instead kept them

for their own use and/or transferred them to other persons, who were not acting in the interests of

the University, for other uses.

169. Counter-Defendants' intentional conversion of the funds was inconsistent with,

and seriously interfered with, the rights of the University in its intellectual property and in

University resources.

170. As a direct and proximate result of Counter-Defendants' conversion, the

University has been damaged in an amount not yet determined or ascertainable. At a minimum,

the University is entitled to injunctive relief, to an accounting of Counter-Defendants' profits,

damages, and costs.
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EIGHTH CLAIM FOR RELIEF

(Breach of Contract and Covenants of Good Faith and Fair Dealing)

171. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 170 above.

172. As a condition of their work at the University, Dr. Good and Dr. Kaminski agreed

to assign their rights to any intellectual property generated using University resources, including

University research and grant funds to the University (the "Agreements"). The University fully

performed and did not breach its Agreements with Drs. Good and Kaminski.

173. Drs. Good and Kaminski materially breached their Agreements and the covenants

of good faith and fair dealing with the University by failing to assign their intellectual property

rights related to DIBELS and IDEL to the University.

174. Drs. Good and Kaminski also materially breached their Agreements with the

University by assigning their intellectual property rights related to DIBELS and IDEL to DMG.

175. In addition, Drs. Good and Kaminski breached their Agreements with the

University by inducing University employees, staff and researchers to breach their employment

agreements with the University by, among other things, assigning intellectual property developed

with University resources to DMG.

176. The University seeks specific performance of the Agreements. Moreover, Dr.

Good and Dr. Kaminski's breach of their contractual obligations is material and has damaged,

and continues to damage the University in an amount to be determined at trial. CounterDefendants' ongoing breach is also inflicting irreparable harm on the University.

NINTH CLAIM FOR RELIEF

(Breach of Fiduciary Duty)

177. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 176 above.
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178. Dr. Good is a tenured professor at the University. Dr. Kaminski worked for the

University in various capacities until 2011 pursuant to numerous Agreements. As such, Dr.

Good and Dr. Kaminski were under certain fiduciary duties to the University, including, without

limitation, duties of loyalty, trust, honesty, and disclosure, which, among other things, required

them not to misappropriate the University's resources for their own benefit, make full disclosure

to the University of all material facts, and to otherwise act in the utmost good faith and honesty

toward the University in all matters connected with Dr. Good and Dr. Kaminski's work with the

University.

179. The University relied upon Dr. Good and Dr. Kaminski to manage the University

resources, University research, University training and University employees related to DIBELS

and IDEL, and Dr. Good and Dr. Kaminski were bound to act in good faith and with due regard

to the interests of the University.

180. By their actions or omissions, Dr. Good and Dr. Kaminski acted in disregard of

their fiduciary duty owed to the University by committing the foregoing unlawful and/or

fraudulent actions, by breaching their agreements and the terms of their employment with the

University, by placing their own interests above those of the University in their position as

professors at the University and by misleading the University through the above-referenced acts

and/or omissions.

181. As a direct and proximate result of the actions taken by Dr. Good and Dr.

Kaminski in breach of their fiduciary duty, the University has been damaged, and continues to be

damaged in an amount to be determined at trial. Dr. Good and Dr. Kaminski's ongoing breach

also is inflicting irreparable harm on the University.
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TENTH CLAIM FOR RELIEF

(Constructive Trust)

182. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 181 above.

183. A confidential and/or fiduciary relationship exists and existed between the

University and Drs. Good and Kaminski. Through their unlawful and fraudulent activities, Drs.

Good and Kaminski violated the duties imposed by their confidential and/or fiduciary

relationship with the University.

184. By their actions and omissions, Counter-Defendants obtained funds, access to

funds and/or the ill-gotten gains of funds, including intellectual property, belonging to the

University. Through their wrongful conduct, Counter-Defendants were unjustly enriched to the

detriment of the University.

185. In good conscience and equity, Counter-Defendants should not be permitted to

retain those funds and ill-gotten gains that rightfully belong to the University for use for the

benefit of the public.

186. As a result of Counter-Defendants' wrongful conduct, this Court should impose a

constructive trust on each of the Counter-Defendants, pursuant to equity, requiring them to

disgorge and make restitution to the University. Failure to impose a constructive trust would

result in unjust enrichment.

ELEVENTH CLAIM FOR RELIEF

(Accounting)

187. The University realleges and incorporates by this reference herein each and every

allegation set forth in paragraphs 1 through 186 above.
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188. By their actions or omissions described above, Counter-Defendants have obtained

funds, access to funds and/or the ill-gotten gains of funds belonging to the University through

their wrongful conduct.

189. Counter-Defendants have failed to account for the use and location of the

University's funds and/or the ill-gotten gains of the University's funds.

190. The University requests that the Court order Counter-Defendants to provide

records of books and accounts to establish the use and location of the University's funds and the

ill-gotten gains of the University's funds.

PRAYER FOR RELIEF

WHEREFORE, the University requests that the Court enter judgment against CounterDefendants, as follows:

a. That the Court enter judgment holding Counter-Defendants liable for

copyright infringement and trademark infringement;

b. That the Court issue preliminary and permanent injunctive relief against

Counter-Defendants, and that Counter-Defendants, their officers, agents, representatives,

servants, employees, attorneys, successors, licensees and assignees, and all others in active

concert or participation with Counter-Defendants, be enjoined and restrained from continued acts

of infringement of the trademarks and copyrights at issue in this litigation, including the offering

for sale, marketing, or selling any early language and literacy assessment goods and/or services

in conjunction with the words "DIBELS" or "IDEL" or any colorable imitation thereof;

c. The Court find that Counter-Defendants fraudulently obtained the DMG

Registrations, or that the DMG Registrations may not be maintained by DMG due to its

infringement of the University's rights or other unlawful use of the DMG Registrations; and
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order that each of the DMG Registrations be canceled from the Principal Register of the United

States Patent and Trademark Office;

d. That the Court issue a declaratory judgment, pursuant to 28 U.S.C.

§ § 2201(a) and 2202, and the Lanham Act, 15 U.S.C. § 1051 et eq., declaring the University's

ownership of common law rights in the University Marks in all states and territories in the

United States, as the prior user over the Counter-Defendants, and further declaring that CounterDefendants have used the University Marks in violation of the University's rights under the

Lanham Act and at common law.

e. The Court find Counter-Defendants' acts complained of herein unlawful as

constituting trademark infringement, false descriptions, false designation of origin, false

representations of origin and false advertising under the causes of action asserted in this

Complaint;

f. That the Court require that Counter-Defendants deliver up for destruction

all labels, signs, prints, advertisements, and other materials that infringe the University's

trademark rights, and/or are a result of any false descriptions, false designation of origin, false

representations of origin and false advertising by Counter-Defendants;

g. That the Court order an accounting of all profits received by CounterDefendants from the use, licensing, assignment and/or sale of the University's intellectual

property including the University Copyrights and early language and literacy goods/services

using the words "DIBELS" and/or "IDEL" or any colorable imitation thereof;

h. That the Court enter an order permanently enjoining the CounterDefendants, it officers, agents, servants, employees, attorneys and affiliated companies, its

licensees, assigns and successors in interest, and those persons in active concert or participation

with it, from continued acts of infringement of the University Copyrights at issue in this

litigation;
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i. That the Court enter an order that all copies made or used in violation of

the University's Copyrights, and all means by which such copies may be reproduced, be

impounded and destroyed or otherwise reasonably disposed of;

j. That the Court enter an order awarding the University statutory damages

and damages according to proof resulting from the Counter-Defendants' infringement of the

University Copyrights at issue in this litigation;

k. That the Court enter an order awarding the University its costs and

attorneys' fees under 17 U.S.C. § 505;

l. That the Court enter a declaratory judgment that the DMG Copyrights are

invalid and unenforceable against the University and the University Defendants;

m. That the Court award the University damages for Counter-Defendants'

common law trademark infringement and unfair competition, in an amount to be proven at trial;

n. That the Court award the University damages for Counter-Defendants'

conversion, in an amount to be proven at trial;

o. That the Court award the University damages for breach of contract and

breach of the duty of good faith and fair dealing, in an amount to be proven at trial;

p. That the Court award the University specific performance by ordering

DMG, Dr. Good and/or Dr. Kaminski to assign the DMG Copyrights to the University;

q. That the Court award the University actual damages for Dr. Good and Dr.

Kaminski's breach of fiduciary duty, in an amount to be proven at trial;

r. That the Court impose a constructive trust or equitable lien on assets in the

possession or control of Counter-Defendants, or award money damages in equal amounts;

s. That the Court issue an Order directing Counter-Defendants to provide an

accounting of the use and location of University resources, funds and the ill-gotten gains from

the foregoing, including any and all licensing revenues;
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t. That the Court award the University such equitable relief as may be

required to return the University's assets and restore any profits owing to the University;

u. That the Court award the University all gains, profits, and advantages

derived by Counter-Defendants for its unlawful acts, including an award of increased profits;

v. That the Court award the University all damages caused by Defendants'

unlawful acts;

w. That the Court award the University treble damages as provided by law;

x. That the Court award the University its attorneys' fees and costs incurred

herein, including prejudgment and post-judgment interest; and

y. That the Court grant the University all other relief to which it is entitled

and such other or additional relief as is just and proper.
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Suite 1400

701 Pike Street

Seattle, Washington 98101-3927

(206) 292-9988

JURY TRIAL DEMAND

The University respectfully demands a trial by jury on all claims and issues so triable.

DATED this 20th day of October, 2014.

BETTS, PATTERSON & MINES, P.S.

By: s/ James D. Nelson

James D. Nelson, OSB #72219

Email: jnelson@bpmlaw.com

One Convention Place

701 Pike Street, Suite 1400

Seattle, Washington 98101

Telephone: 206.292.9988

Facsimile: 206.343.7053

Pam Kohli Jacobson, pro hac vice

pjacobson@bpmlaw.com

BETTS, PATTERSON, & MINES, P.S.

One Convention Place

701 Pike Street, Suite 1400

Seattle, WA 98101

Telephone: (206) 292-9988

Facsimile: (206) 343-7053

Attorneys for Defendants University of

Oregon, Mia Tuan, Edward J. Kame'enui,

Francis J. Fien, and Brad Shelton
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CERTIFICATE OF SERVICE

I hereby certify that on October 20, 2014, I electronically filed DEFENDANTS

UNIVERSITY OF OREGON, MIA TUAN, EDWARD J. KAME'ENUI, FRANCIS J. FIEN IV,

AND BRAD SHELTON'S ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS

TO DYNAMIC MEASUREMENT GROUP, INC.'S COMPLAINT FOR TRADEMARK AND

COPYRIGHT INFRINGEMENT with the Clerk of the Court using the CM/ECF system, which

will send notification of such filing to the following:

Frederick A. Batson

batson@gleaveslaw.com

Gleaves Swearingen LLP

975 Oak Street

Suite 800

Eugene, OR 97401-3122

William Strong

wstrong@kcslegal.com

Kotin, Crabtree & Strong, LLP

1 Bowdoin Square Suite 800

Boston, MA 02114-2925

K.C. Huffman

kchuffman@thorp-purdy.com

Michelle Bassi

MBassi@thorp-purdy.com

Thorp, Purdy, Jewett, Urness & Wilkinson, P.C.

1011 Harlow Road, Suite 300

Springfield, OR 97477

Dated at Seattle, Washington, this 20th day of October, 2014.

s/ Terri Li

Intellectual Property Paralegal