Frederick A. Batson, OSB 821887 

batson@gleaveslaw.com 

GLEAVES SWEARINGEN LLP

P. O. Box 1147 

Eugene, OR 97440 

Phone: (541) 686-8833 

Fax: (541) 345-2034 

Lead Counsel for Plaintiff Dynamic Measurement Group, Inc. 

UNITED STATES DISTRICT COURT 

DISTRICT OF OREGON 

EUGENE DIVISION 

DYNAMIC MEASUREMENT GROUP, 

INC., an Oregon corporation, 

 

 PLAINTIFF, 

v. 

UNIVERSITY OF OREGON, a special 

governmental body as defined by ORS 

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

in 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. 

Case No. 6:___________________

COMPLAINT FOR 

TRADEMARK AND COPYRIGHT 

INFRINGEMENT
COMPLAINT - 2 

 Plaintiff Dynamic Measurement Group, Inc. by this action seeks injunctive relief to 

prevent continuing trademark infringement and unfair competition by the University of Oregon, 

and by a private corporation acting in concert with the University of Oregon, in connection with 

DMG’s registered marks DIBELS, DIBELS Next, and IDEL. It also seeks injunctive relief and 

statutory damages with respect to copyright infringement and misuse of copyright management 

information by those same parties in connection with an “app” containing the DIBELS Oral 

Reading Fluency assessment measures. 

PARTIES 

1. Plaintiff Dynamic Measurement Group, Inc. (“DMG”) is an Oregon corporation 

having its principal place of business at 859 Willamette Street, Suite 320, Eugene, OR 97401. 

2. Defendant University of Oregon (hereinafter referred to as “the University” or 

“UO”) is a special government body organized and existing under Chapter 768, Oregon Laws 

2013. It has a principal place of business at 1585 E. 13th Avenue, Eugene, OR 97403. 

Although the University may at one time have been a state agency, by enactment of Chapter 768, 

Oregon Laws 2013, which took effect on July 1, 2014, and by virtue of the provisions of ORS 

352.033 and 174.112(1)(c), the Oregon legislature deliberately recast the University as a public 

body that that would no longer be considered an arm of the State of Oregon and thus may be the 

object of actions such as the instant case. 

3. Defendant Mia Tuan (“Dr. Tuan”) is, according to plaintiff’s information and 

belief, a citizen or resident of the State of Oregon. She is the Interim Dean of the University’s 

College of Education. 
COMPLAINT - 3 

4. Defendant Edward J. Kame’enui (“Dr. Kame’enui”) is, according to plaintiff’s 

information and belief, a citizen or resident of the State of Oregon. He is Co-Director, with 

defendant Hank Fien, of the University’s Center on Teaching and Learning. 

5. Defendant Francis J. Fien IV, also known as Hank Fein (“Dr. Fien”), is, according 

to plaintiff’s information and belief, a citizen or resident of the State of Oregon. He is CoDirector, with Dr. Kame’enui, of the University’s Center on Teaching and Learning. 

6. Defendant Brad Shelton is, according to plaintiff’s information and belief, a 

citizen or resident of the State of Oregon. He is Interim Vice President for Research and 

Innovation at the University of Oregon. 

7. Defendant Hop Skip Technologies Inc. (“Hop Skip Technologies”) is an Oregon 

corporation with its principal place of business at 2324 Olive Street, Eugene, OR 97405. 

JURISDICTION AND VENUE 

8. This Court has jurisdiction over the Lanham Act claims in this action under 28 

U.S.C. §1331, over the copyright and copyright management information claims in this action 

under 28 U.S.C. § 1338, and over the state law claims in this action under general principles of 

ancillary jurisdiction. 

9. Venue is proper in this Court as all parties are resident in the State of Oregon and 

the events giving rise to plaintiff’s claims occurred in this District. 

FACTS COMMON TO ALL CLAIMS 

The Origins and Evolution of DIBELS®

10. Since the early 1990s, the founders of plaintiff DMG, Dr. Ruth Kaminski and Dr. 

Roland Good, have been engaged in the business of researching, developing, administering, 

distributing and publishing materials known as Dynamic Indicators of Basic Early Literacy Skills 
COMPLAINT - 4 

(“DIBELS”), and in training teachers in the use of these materials. DIBELS is designed to 

enable teachers in grades K-6 to assess the literacy skills of their students, and thus to focus 

remedial help where it is needed. 

11. In February of 2002, Drs. Good and Kaminski established DMG as a for-profit 

company to carry on the work of developing, publishing, and administering DIBELS and 

training teachers in the use of DIBELS. They assigned to DMG all their rights in those materials 

including the DIBELS mark. 

12. DMG’s DIBELS products have been used throughout the United States for many 

millions of students. They are perhaps the most widely used and best known literacy assessments 

in the United States for grades K-6. Roughly 25% of all students in the United States are 

assessed using DIBELS. 

13. Dr. Kaminski first conceived of and developed the early versions of the DIBELS 

assessment measures as a graduate student in or about 1988-1992 in connection with her doctoral 

dissertation at the University of Oregon. Prior to defending her dissertation in 1992, Dr. 

Kaminski also came up with the name “Dynamic Indicators of Basic Early Literacy Skills” and 

its acronym DIBELS – although she did not use them in her dissertation. 

14. Dr. Kaminski obtained her Ph.D. from the University in 1992, and thereafter until 

August of 2003 was employed by the University, as a part-time Research Associate from 1992-

1993 and thereafter until mid-2003 as a Research Associate with the title of Assistant Professor 

in the College of Education. 

15. Dr. Kaminski’s doctoral advisor was Dr. Good, at that time an assistant professor 

at the University, and he supervised her research in the field of early childhood literacy 

assessment. As their confidence in the efficacy of Dr. Kaminski’s early DIBELS literary 
COMPLAINT - 5 

assessment measures and its various iterations grew, they moved beyond academic research and 

together began to make DIBELS materials available to elementary schools around the country, 

and to offer DIBELS training to schools for a fee on their own time. Their commercial use of the 

DIBELS mark in connection with these activities began at least as early as 1994, when they were 

paid by the Shasta County, California Board of Education located in Redding, California to 

conduct on-site training in the use of DIBELS. (See Exhibit A.) They were hired by Shasta 

County in their individual capacities, and they paid the expenses associated with that training out 

of their own pockets. Over the years since then, Drs. Good and Kaminski have personally 

conducted hundreds of paid DIBELS trainings. 

16. As DIBELS gained in stature and popularity, it became the focus of extensive 

academic research, both at UO and at several other universities, and the subject of numerous 

academic studies and papers. During the years 1996-2001, UO faculty and staff conducted 

considerable academic research on the effectiveness of the DIBELS measures. 

17. At the same time and throughout the 1990’s, Drs. Good and Kaminski devoted 

considerable efforts to building widespread acceptance and use of DIBELS assessments, and by 

2000, hundreds of schools had to one degree or another adopted the DIBELS measures as an 

integral part of their early childhood literacy programs. 

18. In addition to the DIBELS assessment measures, in the late 1990s Dr. Good 

began offering schools the support service of analyzing and reporting their DIBELS assessment 

results. He provided a data template to schools, which they could populate with their data and 

return to him for analysis. He would then use a detailed program he had developed to analyze 

the data and create a report that the schools could use to keep track of their students’ individual 

and collective progress. 
COMPLAINT - 6 

19. However, as DIBELS grew in popularity, it became clear that there was both a 

need and opportunity for a more robust service that would allow schools to enter their own data 

online and generate automated reports and analysis, and the University took on that role. 

Beginning in April or May of the 2000 academic year, Dr. Good in collaboration with certain 

staff members of the University’s Center on Teaching and Learning developed an online system 

for that purpose, housed on the University’s servers. This system was, with Dr. Good’s 

encouragement and consent, named the DIBELS Data System, with the understanding that its 

purpose was solely to provide a service to schools using the DIBELS product. The DIBELS 

Data System was at all times conceived and understood as an ancillary service to users of the 

Good and Kaminski DIBELS literacy assessment materials. At first, there was generally no 

charge to schools for using the system, although the University later instituted a charge of $1 per 

year per student. 

20. The year 2001 was a pivotal one in the evolution of DIBELS. In that year Drs. 

Good and Kaminski released a new version of DIBELS that they identified, somewhat 

arbitrarily, as the “5th edition.” (Previous iterations of DIBELS had not been numbered.) They 

made it available to schools upon request, or as part of a package price that included their teacher 

training services. Also, Dr. Good provided the University’s Center on Teaching and Learning 

with a copy of DIBELS 5th for posting on a UO website so that schools could download it 

without charge. In both contexts, the DIBELS 5th materials bore copyright notice in the form “© 

2001 Good and Kaminski” and used the symbol “TM” next to the DIBELS mark to signify Drs. 

Good and Kaminski’s ownership of the trademark, as shown on Exhibit B. 

21. DIBELS 5th was also the first iteration of DIBELS to contain commercially 

created content. Prior to its release, Drs. Good and Kaminski had been using texts created by an 
COMPLAINT - 7 

unaffiliated nonprofit organization to test children’s oral reading fluency. For DIBELS 5th

edition, Drs. Good and Kaminski decided to create new oral reading texts of their own. They 

hired and supervised independent contractors to write 24 new texts, which they called the 

DIBELS Oral Reading Fluency or “DORF” passages, and paid these contractors from their 

personal funds pursuant to written agreements that vested copyright in Drs. Good and Kaminski. 

22. Also in 2001, Drs. Good and Kaminski came to the realization that without 

substantially more oral reading fluency measures, and without a commercial publisher to 

disseminate the product, DIBELS was not going to achieve its full potential as an accurate 

assessment of childhood literacy. They also decided to expand the coverage of DIBELS from 

grades K-3, which it had been until that time, to include grades 4-6. 

23. Given the significant expense they had incurred to create the first 24 DORF 

passages, the significant additional funding needed to create DORF passages for grades 4-6, and 

the fact that they had no experience with commercial publishers, Drs. Good and Kaminski 

originally approached the University for help. They hoped that some arrangement could be 

made whereby they would cede to UO their rights to DIBELS, UO would reimburse them for 

the DORF passages, UO would make a deal with a publisher for funding and distribution of an 

expanded DIBELS product, royalties would be reinvested in further DIBELS development, and 

Drs. Good and Kaminski would retain control over that development. 

24. The University, however, was unwilling or unable to enter into such an 

arrangement. Instead, the University itself suggested that Drs. Good and Kaminski should create 

a private “start-up” – i.e., a for-profit corporation – to fund further development of the DIBELS 

assessment materials privately and to pursue the wide distribution of DIBELS through 

commercial publishers. 
COMPLAINT - 8 

25. Discussions of these and other possible arrangements occurred sporadically over a 

two-month period in May and June of 2001, mostly between Drs. Good and Kaminski on one 

hand and UO’s Office of Technology Transfer (OTT) on the other. At no time did OTT or 

anyone else speaking for UO so much as suggest that UO had any claim to the DIBELS mark, or 

to the DORF passages that Drs. Good and Kaminski had paid for. OTT did assert that it should 

own copyright in some non-DORF DIBELS content, on the grounds that development had been 

funded by a grant administered by the University. However, it did not make this claim by way of 

stopping Drs. Good and Kaminski from commercializing DIBELS; on the contrary, its proposal 

was that it would assign its alleged copyrights to the start-up, presumably in exchange for some 

share of any revenue that might be generated, although what that revenue share might be was 

never made clear. OTT said it would generate documentation to put its proposed plan into effect. 

26. Without necessarily agreeing with the University’s proposal and the premises 

underlying it, Drs. Good and Kaminski decided to wait and see what sort of legal document UO 

might present. But the University did not follow through with any draft paperwork, and by the 

start of the 2001-2002 academic year it was clear to Drs. Good and Kaminski that the discussions 

with UO were at a dead end. 

27. Drs. Good and Kaminski were concerned that without further development of 

DORF passages for grades 4-6, which the UO clearly did not wish to fund, DIBELS would die. 

Accordingly, Drs. Good and Kaminski decided to develop and commercialize DIBELS 

independently and with their own personal resources. They decided to take the University’s 

suggestion that they create a private start-up company, and to develop completely new and 

additional DIBELS assessment materials so as to avoid any future dispute with the University 

regarding the copyright to the non-DORF portions of the DIBELS content. 
COMPLAINT - 9 

28. In late 2001 Drs. Good and Kaminski began negotiations with a commercial 

educational publisher, Sopris West Educational Services, Inc. (“Sopris”), for publication of 

DIBELS. 

29. In January, 2002, Drs. Good and Kaminski incorporated their start-up, plaintiff 

DMG. From that point forward, DMG was the exclusive vehicle for the development and 

commercialization of DIBELS products. 

30. On February 6, 2002, shortly after its incorporation, DMG entered into a 

publishing agreement with Sopris to publish DIBELS. In that agreement DMG granted Sopris 

exclusive publication rights in DIBELS and also gave Sopris the right to use the DIBELS mark 

in connection with its sale of those materials. Originally, the contract was for DIBELS 5th. 

However, in the end the parties decided not to publish DIBELS 5th but instead to launch the new 

DIBELS product that DMG was working on. 

31. On February 13, 2002, a few days after signing the Sopris contract, DMG applied 

to the United States Patent and Trademark Office to register the DIBELS mark. Registration of 

that mark issued in 2003. UO did not file any objection to DMG’s application to register the 

DIBELS mark, and DMG informed the UO when it received the registration. From that point 

forward, DMG displayed the DIBELS mark on its products with the registration symbol 

attached, thus: DIBELS®. 

32. Development of the new DIBELS product, funded entirely by DMG using 

personal funds invested by Drs. Good and Kaminski, began in 2001 and continued through 2002 

into early 2003. This new product was first advertised by Sopris in its Fall/Winter 2002 

catalogue – see Exhibit C hereto – and the first sales occurred in early 2003. Market response 
COMPLAINT - 10 

was significant: in the first eight months of 2003 sales exceeded $1,100,000, an explosion of 

interest due in large part to Sopris’s sales and marketing efforts. 

33. DMG and Sopris styled this new product “DIBELS 6th edition” or “DIBELS 6th,” 

but despite what that name might appear to imply, this DIBELS product was in fact almost 

entirely new. The only materials carried over from DIBELS 5th were 20 of the 24 DORF 

passages that Drs. Kaminski and Good and DMG had personally commissioned and paid for 

earlier. An additional 151 new DORF passages were added, commissioned from outside 

contractors, and the rest of the DIBELS measures were written from the ground up, by Drs. 

Good and Kaminski on their own time as employees of DMG and by an independent contractor 

hired and paid by DMG. 

34. Far from objecting to these commercial activities of Drs. Good and Kaminski, UO 

sought to take advantage of them. At least as early as June 2003, UO provided on the UO 

Website a link to Sopris’s website to enable teachers to purchase printed copies of the DIBELS 

materials. See Exhibit D. Immediately below this link, UO advertised the DIBELS Data System 

service, which for $1 per student would analyze schools’ DIBELS test scores. Clearly, and with 

good reason, UO expected traffic to the DIBELS Data System to increase as commercial sales of 

DIBELS increased. 

35. And far from asserting any claim to the DIBELS mark or DIBELS 6th content, 

UO acknowledged DMG’s ownership of this intellectual property on the UO Website, most 

explicitly by means of a user agreement (the “Educational Use Agreement”). (The foregoing 

Exhibit D contains a reference, in the “Download for Free” box, to the Educational Use 

Agreement.) 
COMPLAINT - 11 

36. The Educational Use Agreement that UO posted for DIBELS 6th had its origins in 

a new set of commercial negotiations that DMG commenced in the spring of 2003. These 

negotiations were aimed at a three-way publishing agreement for DIBELS 6th that would include 

not only Sopris but also a new party, Wireless Generation, Inc. (“Wireless Generation”), a 

commercial digital educational publisher. Under the agreement that arose from these 

negotiations, Wireless Generation published DIBELS 6th edition on portable electronic devices 

that permitted teachers to administer and score the assessment, and Sopris undertook all other 

publication of DIBELS 6th , including in book form. 

37. In its negotiations with Sopris and Wireless Generation, DMG insisted, and 

Sopris and Wireless Generation agreed, that UO should continue to be allowed to distribute 

copies of the DIBELS 6th edition for free on the http://dibels.uoregon.edu website (the “UO 

Website”) for the benefit of school districts that could not afford the commercial versions sold by 

Sopris or Wireless Generation or otherwise did not wish to purchase them. However, it was 

important to DMG and its publishing partners that (i) free access not lead to unauthorized 

downstream uses; (ii) DMG maintain quality control over the DIBELS product to ensure the 

integrity of the DIBELS mark; and (iii) the public be on notice that the DIBELS mark and 

DIBELS materials were proprietary to Drs. Good and Kaminski and DMG. 

38. Accordingly, DMG undertook to secure the UO’s cooperation on an Educational 

Use Agreement and to ensure that any teacher who downloaded a free copy of DIBELS 6th from 

the UO Website would have to accept the Educational Use Agreement. 

39. On May 23, 2003, Dr. Good sent a draft Educational Use Agreement to, among 

others, defendant Dr. Edward J. Kame’enui, who at that time was Director of UO’s Institute for 

the Development of Educational Achievement (IDEA), later renamed the Center on Teaching 
COMPLAINT - 12 

and Learning, and Dr. Deborah C. Simmons, at that time the Associate Director of IDEA. This 

draft Educational Use Agreement began with the critical sentence, “DIBELSTM is a proprietary 

name referring to the work of Roland Good, Ruth Kaminski, and select colleagues (Dynamic 

Measurement Group, Inc., DMG).” Dr. Good’s email continued: 

I believe this Educational Use Agreement is consistent with all current understandings 

and agreements that we have made. Please let me know if you see any concerns, issues, 

or potential misunderstandings. The intent of the agreement is to include it in the 

Administration and Scoring Guide on page 5, and to make it a screen on the download 

section that all users encounter as they access the materials. 

 

The University representatives expressed no objection. 

40. A final version of this Educational Use Agreement, incorporating some edits 

proposed by Sopris and Wireless Generation, was attached to the DIBELS Administration and 

Scoring Guide, which was downloadable from the UO Website, at least as early as July 2, 2003. 

See Exhibit E. 

41. The University accepted this final version of the Educational Use Agreement and 

posted it on the UO Website on the download page for DIBELS 6th edition at least as early as 

March 2, 2004. As agreed with DMG, the University constructed the download page – where 

teachers could download the proprietary DIBELS 6th materials for free – in such a way that any 

user would have to accept the Educational Use Agreement as a condition of the download. 

42. The text of the Education Use Agreement as accepted and posted by the 

University on the UO Website in early 2004 was as follows: 

Educational Use Agreement 

 DIBELSTM is a proprietary name referring to the work of Roland Good, Ruth 

Kaminski, and select colleagues (Dynamic Measurement Group, Inc., DMG). The intent 

of DMG is to make the DIBELS assessment tools available to the educational entities 

listed below. Such use, however, is not intended to and does not place the materials in 

the public domain. Photocopy masters of the materials are available at 

(dibels.uoregon.edu). Schools, school districts and multi-district agencies may make 
COMPLAINT - 13 

unlimited photocopies of these materials for internal educational use. In addition, Sopris 

West publishes a print version of the measures (www.sopriswest.com), and Wireless 

Generation provides a Palm application (www.wgen.net). These materials may not be 

resold on a for-profit basis without the express written consent of DMG and Sopris West. 

As a part of our program to provide the free photocopy masters and permission to 

photocopy described above, we do require all users to register on the website so that we 

may document usage as we pursue additional research and development funding, and so 

that we may notify users when new and improved materials are available. We also 

require that users copy the DIBELS materials without modification except as agreed to in 

advance and in writing by DMG. Modifications that would be agreed to include 

changing color or font of materials. Modifications that would not be permitted include 

removing logos or acknowledgements for contributions to the DIBELS materials. Any 

uses of our DIBELS materials that are inconsistent with the provisions of this 

Educational Use Agreement are strictly prohibited. 

43. Thus, as early as March, 2004, the University publicly acknowledged and publicly 

promulgated the fact that the DIBELS mark belonged to DMG and that the DIBELS materials 

were proprietary to DMG. The Educational Use Agreement also makes clear that the University 

was fully aware of, and had no objection to, the commercial publication of DIBELS 6th edition 

by DMG’s licensees, Sopris and Wireless Generation. 

44. When DMG obtained its federal registration of the DIBELS mark, the University 

at DMG’s request duly amended the Educational Use Agreement to replace “DIBELSTM” with 

“DIBELS®.” When technology changed, the reference to “Palm” was replaced with “handheld 

computer software and related products.” With those exceptions, the Educational Use Agreement 

for DIBELS remained in place and essentially unaltered for almost ten years on the UO Website. 

45. After the Educational Use Agreement was agreed to by the University, Dr. 

Kaminski began devoting herself full time to DMG, although she maintained a courtesy 

appointment as Assistant Professor in the College of Education. 

46. In early 2004, senior UO officials undertook an internal investigation of DMG’s 

use, ownership and registration of the DIBELS copyrights and trademark. The reason for this 

investigation was, apparently, that the public announcement of DMG’s contract with commercial 
COMPLAINT - 14 

publishers Sopris and Wireless Generation had caused one or more UO staff to question whether 

UO policy was being complied with. (As noted earlier, DMG’s negotiations with these 

publishers had been well known to several key University officials.) 

47. According to DMG’s information and belief, a summary of this investigation was 

provided to the Vice President, Research & Graduate Studies, and in February 2005 a meeting 

regarding the investigation took place between the University General Counsel’s Office and 

several senior administrative officials of the University, including but not limited to: 

 the Vice President, Research & Graduate Studies, 

 the Associate Vice Provost, 

 the Director, Office for Responsible Conduct of Research, and 

 a representative of the Office of Professional Research and Development. 

In short, the question of who owned the DIBELS intellectual property received the full attention 

of the University at a very high level, making the results as described below all the more 

significant and the conduct that has given rise to this Complaint all the more incomprehensible. 

48. In 2005, evidently as a result of the aforesaid investigation, the University decided 

(and DMG readily agreed) that it would be prudent to set down in writing their understanding as 

to the ownership of, and usage rights in, DIBELS intellectual property. The Office of 

Technology Transfer (OTT) was tasked with drafting this agreement, and in October 2005 

forwarded to DMG’s counsel a first draft of what it called an Intellectual Property Agreement. 

49. This draft, prepared by the staff of the University most knowledgeable concerning 

intellectual property, stated among other things that: 

 DMG owned the DIBELS mark; 

 DMG owned the copyright to the DIBELS 6th edition; and 
COMPLAINT - 15 

 DMG would continue to make DIBELS 6th edition available for free via 

the UO Website to users accepting the Educational Use Agreement 

described above. 

50. This Intellectual Property Agreement went through several subsequent drafts, but 

the basic terms just described were at all times agreed in principle, and by the end of 2005 both 

DMG and the OTT believed they had a contract ready to be signed. DMG is informed and 

believes that the agreed-upon final draft Intellectual Property Agreement was vetted by the 

University General Counsel’s office and the Oregon Department of Justice. Randolph Geller, 

then an attorney in the General Counsel’s Office and later UO General Counsel, confirmed to 

DMG’s representatives that the content of the agreed-upon final draft Intellectual Property 

Agreement was acceptable but advised DMG that certain standard disclosures from Dr. Good 

(regarding work outside the University) would need to be submitted in order for UO to be able to 

sign the agreement. Dr. Good accordingly submitted the standard written disclosures to the 

University. After some discussion regarding the scope of additional financial information 

required, Dr. Good provided such financial information to Lynette Shenkel at the UO Office for 

Responsible Conduct of Research as requested. The University indicated no dissatisfaction with 

the information provided. 

51. A copy of the final draft of that contract, showing in “redlined” form a final round 

of changes that the University itself had requested, and that DMG had agreed to include, is 

attached hereto as Exhibit F. It was this redlined draft, or a clean version of it, that was 

circulated among University officials and to the Oregon Department of Justice for approval. 
COMPLAINT - 16 

52. The terms of the contract included the following: 

 The parties agreed that DMG was the exclusive owner of the DIBELS 

trademark, the DIBELS 6th measures, and the DORF passages (§3.2). 

 DMG granted to the University and to all users generally a non-exclusive 

license to use the DIBELS 6th measures and the DORF passages “pursuant 

to the terms and conditions of the Educational Use Agreement” -- 

namely, the Educational Use Agreement described above, which was 

attached as an exhibit to the contract. (§4.1)

 DMG granted to the University a non-exclusive license to “use the 

DIBELS Trademark in connection with the operation, maintenance, and 

promotion of the UO DIBELS Data System.” (§4.3) 

 The University and DMG each agreed not to take any action detrimental to 

the goodwill associated with the DIBELS Trademark. (§4.3) 

53. In addition, the contract provided that within three months following execution 

the parties would “jointly write a statement describing the origins of the DIBELS assessment 

measures, and stating that DIBELS® is a registered trademark of DMG.” This joint statement 

was to appear on the opening page or other appropriate page of the DMG website and the UO 

Website. (§3.4.b) 

54. After the Intellectual Property Agreement had been worked out with University 

officials, Dr. Good reduced his time commitment to the University and began working part time 

at DMG, with the full knowledge and consent of the University. 

55. For reasons that have never been fully explained to DMG, and despite numerous 

inquiries by DMG, the University never physically signed the 2005 agreement that it had largely 
COMPLAINT - 17 

drafted, extensively negotiated, and had assured DMG was completely acceptable. However, 

notwithstanding its failure to sign the agreement, the University continued for the next seven 

years to act in accordance with the basic terms and tenets of the agreement, as did DMG. Most 

critically, the University continued to post the Educational Use Agreement, acknowledging 

DMG’s ownership of DIBELS, and to condition downloads of DIBELS assessment materials 

from its website on user acceptance of the Educational Use Agreement. (See Exhibit G.) Other 

conduct by the University that was consistent only with its acceptance of the terms of the 

unsigned agreement include, without limitation, the following: 

 The DIBELS materials it disseminated via the UO Website bore the ® symbol next to the 

DIBELS mark, acknowledging DMG’s registration. (See Exhibits H and I.) 

 The UO Website in multiple instances used the ® symbol next to the DIBELS mark in 

public-facing text prepared by UO’s own staff. Examples include (i) a statement on 

UO’s home page that “DIBELS® 6th edition” materials were available for download; (ii) 

announcements on the UO Website that, “A new edition of DIBELS®, DIBELS Next, 

became available for users this fall (2010-2011 school year)”; and (iii) UO’s FAQ 

webpage. (See Exhibits I, J, and K.) 

 UO provided links from its website not only to DMG’s website – see Exhibit L hereto – 

but also to the websites of Sopris and Wireless Generation for those school districts 

wishing to purchase print or wireless-enabled copies of DIBELS. See, e.g., Exhibit M. 

In effect, a license with respect to the DIBELS mark and DIBELS 6th materials was granted by 

DMG and accepted by the University, and honored in practice by the parties. 

56. As the links just described make clear, the University was well aware from the 

start of the investment being made in DIBELS by third parties under license from DMG. In fact, 
COMPLAINT - 18 

DMG and its publishing licensees made enormous investments of time and capital in developing, 

producing, marketing, and distributing the DIBELS materials, including Wireless Generation’s 

development and refinement of software to score DIBELS assessments on a handheld device. 

57. Since 2003, DMG’s publishers have distributed DIBELS throughout the United 

States to thousands of schools and school systems, serving many millions of children. Sample of 

early DIBELS materials from Sopris and Wireless Generation are attached hereto as Exhibits N 

and O, and these publishers’ most recent DIBELS offerings may be seen at 

http://www.iamvoyager.com/assessment/dibels-next and 

http://www.amplify.com/assessment/mclass-dibels-next, respectively. A significant share of 

DMG’s royalties from its publishers has been plowed back into development of new and 

additional DIBELS assessment tools. 

58. These links from the UO Website to the websites of Sopris and Wireless 

Generation were not selfless acts on the University’s part. UO itself benefitted substantially 

from sales by DMG’s commercial licensees because school district purchasers frequently used 

the DIBELS Data System to display and analyze their students’ test scores, thus providing both 

income and research data to the University. According to DMG’s information and belief, since 

the Intellectual Property Agreement was negotiated and mysteriously put aside in 2005, UO has 

made tens of millions of dollars from schools using the Data System service to enter their 

students’ DIBELS scores and generate automated online reports and analysis. And until the 

unlawful acts of the University that gave rise to this Complaint, as described below, all those 

schools came into the DIBELS ecosystem either by accepting the terms of the Educational Use 

Agreement on the UO Website and downloading the DIBELS materials, or by purchasing 

DIBELS materials from Sopris or Wireless Generation. 
COMPLAINT - 19 

59. As a result of all the conduct just described, for a decade it was clear beyond 

doubt to any member of the public who came in contact with DIBELS products that these 

products and the trademarks attached to them came from a single source, namely DMG. 

Substantial goodwill accrued to DMG as a result. 

60. During that time DMG obtained federal registrations for numerous trademarks in 

the United States Patent and Trademark Office, without any interference or complaint from the 

University. 

61. DMG owns registrations for the following marks for use in connection with the 

following goods and services: 

Mark Reg. No. 

Date of 

Reg. Goods/Services 

DIBELS 2,729,165 6/24/03 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. 

DIBELS 2,750,275 8/12/03 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. 

DIBELS 2,771,559 10/07/03 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 
COMPLAINT - 20 

Mark Reg. No. 

Date of 

Reg. Goods/Services 

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. 

DIBELS 

NEXT 

3,970,666 05/31/11 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 

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, 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. 

DIBELS 

NEXT 

4,084,850 1/10/12 Computer software for instructional and educational 

testing. 
COMPLAINT - 21 

Mark Reg. No. 

Date of 

Reg. Goods/Services 

DIBELSNET 4,164,609 6/26/12 Providing online non-downloadable software for 

monitoring and assessment data reporting services 

in the area of literacy and early literacy skills. 

IDEL 3,446,832 6/10/08 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 outcomes, skill 

and progress. 

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 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 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. 

62. DMG’s registration of the basic DIBELS mark, Reg. No. 2,729,165, is now 

incontestable under 15 U.S.C. §1065. On June 25, 2008, DMG filed the necessary declarations 
COMPLAINT - 22 

under Sections 8 and 15, and on July 25, 2008, the trademark office recognized DIBELS as an 

incontestable mark. 

63. DMG renewed its registration in the DIBELS mark as of July 26, 2012. 

The IDEL® Mark 

64. The only mark listed above that does not include “DIBELS” is the mark IDEL. 

This mark is an acronym for Indicadores Dinámicos del Éxito en la Lectura, and applies to a 

product designed to provide young Spanish language readers the same sort of assistance that 

DIBELS provides to English language readers. IDEL is not a mere translation of DIBELS, but 

rather a new product based on similar underlying principles. Drs. Good and Kaminski, and later 

DMG, created IDEL in the period 2001-2003 by hiring independent contractors who were 

literacy scholars fluent in Spanish. These independent contractors were paid by Drs. Good and 

Kaminski, and later DMG, out of personal funds invested by Drs. Good and Kaminski, and 

worked solely under their direction pursuant to written agreements that vested copyright in 

DMG. IDEL was first made available for sale to the public by DMG’s licensee Wireless 

Generation in or around 2004, and in print by DMG’s licensee Sopris in 2005. 

65. As with DIBELS, DMG made the IDEL assessment measures available to the 

University for free download to school districts on the UO Website, beginning in 2003. At first 

the product was known by a slightly different acronym, “BIDEL” – see Exhibit P – which mark 

was changed to IDEL when DMG discovered that BIDEL had negative connotations in some 

Spanish-speaking countries. 

66. IDEL was available for free download at the UO Website in the same manner as 

DIBELS 6th edition. The IDEL materials bore a trademark registration notice (®) to protect 

DMG’s ownership of the mark, and were accessible only upon acceptance of a version of the 
COMPLAINT - 23 

Educational Use Agreement identical to that used for DIBELS, except that references to 

“DIBELS” were replaced with references to “IDEL”. 

67. The University also posted the IDEL Administration and Scoring Guide, with the 

Educational Use Agreement attached and with the ® symbol next to the IDEL mark, on the UO 

Website without alteration or complaint, thus acknowledging DMG’s trademark rights in IDEL. 

See Exhibit Q. 

68. The DIBELS Data System did not at first offer a paid service for reports on IDEL 

results. Such a service was provided beginning in 2007, with DMG’s consent and for the sole 

purpose of providing an ancillary service that supported DMG’s IDEL product. 

The DIBELS NEXT® Mark and DIBELSNet® Service 

69. In 2011, DMG launched its latest literacy assessment product, DIBELS Next. 

(“DIBELS Next” is yet another mark shown on the chart above.) DIBELS Next is a complete 

and total rewrite from the ground up of the DIBELS 6th Edition , and, as with DIBELS 6th, its 

development and creation were funded entirely by DMG. At present DIBELS Next is available 

only from DMG and its licensees Sopris (since renamed Voyager Sopris Learning) and Wireless 

Generation (since renamed Amplify). 

70. Until recently, the University publicly acknowledged that DIBELS Next was a 

registered trademark on its FAQ web page. See Exhibit K. 

71. After DMG released DIBELS Next, DMG and its licensees’ school district 

customers encountered a series of difficulties with the University’s DIBELS Data System. 

Despite extensive support and information provided by DMG, and despite assurances from 

University staff that the DIBELS Data System would support DIBELS Next for the 2010-2011 

academic year, the Data System provided almost no reporting capabilities for DIBELS Next 
COMPLAINT - 24 

throughout the 2010-2011 school year, resulting in multiple complaints to DMG from school 

districts. Frustrated that the Data System was harming its brand, DMG decided to start its own 

parallel data service to run automated reports and analyze results for school districts. In the first 

half of 2011, DMG offered free DIBELS Next reporting to districts that complained about the 

University’s Data System. For the 2011-2012 school year, DMG rebranded its data system 

“DIBELSNet” and launched it as a commercial service, advertising it as a “new data reporting 

service from the authors of DIBELS.” Among other products, DIBELSNet supports the DIBELS 

NEXT, DIBELS 6th Edition, and IDEL products. DMG has obtained a federal registration for 

the DIBELSNet mark, as shown in the above chart. 

UO’s Sudden Change of Tune: Harassment and Infringement 

72. On April 4, 2012, without warning and without any attempt at prior consultation, 

outside counsel to the University sent DMG a demand letter, a copy of which is attached as 

Exhibit R. This letter, contrary to all prior dealings between the parties, bizarrely asserted that 

UO had been using the DIBELS mark in commerce since 1980 (which was at least eight years 

before Dr. Kaminski even began writing the DIBELS measures), and that UO owned all DIBELS 

intellectual property. Counsel claimed that DMG’s use of that intellectual property had “recently 

come to our attention” – which may technically have been true as to the writer, but was utterly 

false as to the University. The letter demanded that DMG assign all DIBELS intellectual 

property to the University. 

73. The same outside counsel wrote similar demand letters to Sopris and Wireless 

Generation. 

74. After DMG rejected this demand, the University filed an application with the 

U. S. Patent and Trademark Office on July 20, 2012, seeking itself to register the DIBELS mark 
COMPLAINT - 25 

for the very goods and services covered by DMG’s existing registrations. See Exhibit S. Apart 

from the obvious groundlessness of this application, two things about it are worth noting. First, 

the application was signed by Randolph Geller, the very same University counsel who had been 

involved in negotiating the unsigned 2005 agreement described above and who had assured 

DMG that its terms were acceptable. Second, the application was filed on a “Section 1(b)” basis 

(see 15 U.S.C. §1051(b)), meaning that it was based on an “Intent to Use” the mark rather than 

on actual use – contrary to the allegations of prior use made in the April 2012 letter. 

75. The Patent and Trademark Office rejected UO’s application for the DIBELS mark 

on November 15, 2012, citing DMG’s existing registrations. 

76. On June 3, 2013, the University filed two applications to register the IDEL mark, 

one alleging actual use and the other intent to use, for various goods and services essentially 

identical to DMG’s. 

77. Four days later the University filed a petition to cancel DMG’s IDEL registration, 

alleging that DMG’s use of the IDEL mark was likely to cause confusion with UO’s alleged 

IDEL mark, and that DMG had obtained its registrations by fraud. 

78. The University’s applications to register IDEL were rejected by the Patent and 

Trademark Office on September 23, 2013. Its cancellation proceedings are pending but are 

expected to be stayed once the Patent and Trademark Office is advised of the filing of this 

Complaint. 

79. On November 19, 2013, the University filed cancellation proceedings with respect 

to DMG’s DIBELS, DIBELS Next, and DIBELSNet registrations, alleging that DMG’s use of 

those marks is likely to cause confusion with the University’s alleged DIBELS mark, and that 

DMG had obtained its registrations by fraud. Those cancellation proceedings are pending but 
COMPLAINT - 26 

are expected to be stayed once the Patent and Trademark Office is advised of the filing of this 

Complaint. 

80. Moreover, while the University has not succeeded to date in getting any relief 

from the Patent and Trademark Office and the trademarks remain the DMG’s name, the 

University has been engaged in a steady, creeping campaign to infringe DMG’s rights and inflict 

actual damage on DMG, as more fully described in Counts I through IX below. After sitting 

back and watching Drs. Good and Kaminski and DMG develop DIBELS and IDEL for many, 

many years, and after more than a decade of consistently recognizing DMG’s ownership of the 

DIBELS and IDEL trademarks, the University is seeking to appropriate their value for itself.  

WITH REFERENCE TO THE FOREGOING, DMG asserts the following claims against 

defendants: 

COUNT I 

INFRINGEMENT OF THE DIBELS 

TRADEMARK IN VIOLATION OF THE LANHAM ACT 

81. DMG incorporates herein by reference the allegations contained in paragraphs 1 - 

80 above. 

82. The University has begun using the DIBELS mark in a manner likely to cause 

confusion or mistake on the part of customers, and to deceive customers as to the origin, 

sponsorship, and authenticity of DIBELS materials. Without limitation, the University has 

engaged in the following conduct: 

83. In violation of the license described above and of its entire course of dealing with 

DMG, and despite the fact that DIBELS is an incontestable registered mark, the University has – 

without warning to DMG – taken numerous steps to eradicate all acknowledgement of DMG’s 

trademark rights from its website and to create the impression that it is the owner of the mark. 
COMPLAINT - 27 

First, it has unilaterally replaced the Educational Use Agreement posted on its website in 

connection with downloads of DIBELS 6th edition with a new, short agreement that makes 

absolutely no reference to DMG, DMG’s proprietary rights in DIBELS, or DMG’s registered 

trademark in DIBELS. See Exhibit T hereto. Despite repeated protests by DMG, the University 

has continued to provide free distribution of DMG’s product, DIBELS 6th edition, while refusing 

to restore the correct Educational Use Agreement to its website that identifies the product as 

DMG’s. 

84. Second, the University has removed the ® symbol from the DIBELS and 

DIBELS Next marks used on its website. It has done so although DIBELS is an incontestable 

mark, and although the University’s recent efforts to register that mark have been rejected by the 

U.S. Patent and Trademark Office. 

85. Third, despite the above, the University has whited out the ® symbol from the 

actual DIBELS materials that it makes available to schools for free download, and removed all 

references to DMG from those materials. For an example, compare Exhibit U with Exhibit J. In 

other words, it has taken the DIBELS 6th edition provided to it by DMG, and literally covered up 

the trademark symbols of the registered trademark owner, and anything that would tie the 

materials to registered owner. 

86. By removing from its website these acknowledgments of DMG’s ownership of 

the DIBELS mark, the University is attempting to mislead the public into believing that it, not 

DMG, is the owner of the mark and the ultimate source of DIBELS products. 

87. By so misleading the public, UO is apparently also trying to undermine DMG’s 

competitive DIBELSNet service by casting doubt on DMG’s legitimacy as the ultimate source of 

DIBELS products. 
COMPLAINT - 28 

88. Furthermore, the University has been making deliberately misleading statements 

attempting to divert to itself the goodwill accruing to the DIBELS mark. For example, it has 

taken to publicly referring to the product as “University of Oregon DIBELS 6th Edition.” The 

opening page of the University’s DIBELS Data System website currently proclaims under 

“News and Announcements”: “University of Oregon DIBELS 6th Edition Better Than Ever!” – 

and other promotional materials use this same moniker. See, e.g., Exhibit V attached hereto. 

There is only one DIBELS 6th edition, and that belongs to DMG, not the University. At no time 

did DMG authorize the University to use the name of the University as a composite mark with 

DMG’s registered DIBELS mark. 

89. This public confusion is exacerbated by the fact that the metadata on the 

University’s DIBELS Data System website (i) causes a Google search for “DIBELS” to identify 

UO as its first hit, and (ii) identifies the University’s website as the “Official DIBELS Home 

Page” (emphasis added). See Exhibit W. The only legitimate “official” DIBELS home page is 

DMG’s own home page, www.dibels.org. 

90. Most recently, the University in collaboration with defendant Hop Skip 

Technologies released an “app,” available on iTunes, which is advertised as supporting the 

administration of “the University of Oregon's DIBELS 6th edition Oral Reading Fluency 

assessments.” See the web page located at 

https://itunes.apple.com/WebObjects/MZStore.woa/wa/viewSoftware?id=868388314&mt=8, a 

printout of which is attached as Exhibit X. Not only is there no such thing as “the University of 

Oregon’s DIBELS 6th edition,” but DMG has never authorized the University to use the DIBELS 

mark on anything other than an unaltered download of the DIBELS 5th or 6th edition from the 

UO Website. This use of the DIBELS mark on an app for a tablet designed to score the DORF 
COMPLAINT - 29 

passages is far beyond the scope of the license granted by DMG to the University. Indeed, this 

app – advertised as being “all about mobile technology in the classroom” and as “leverag[ing] 

the convenience of a tablet to make administering of DIBELS assessment easier than ever” (see 

Exhibit Y) – competes in a misleading fashion with DMG’s authorized licensee, Wireless 

Generation (since renamed Amplify), which likewise provides schools with the software to 

administer the DIBELS assessment on tablets and other mobile devices. 

91. The University is actively engaged in marketing this HiFi app, as may be seen in 

Exhibit Z, a printout from its website at https://dibels.uoregon.edu/market/HiFi.

92. The University’s conduct as described above has caused widespread confusion 

among DIBELS customers and has had a negative impact on the image of DIBELS in the 

marketplace, causing serious damage to DMG. 

93. The University’s conduct as described above constitutes an infringement of 

DMG’s exclusive rights to the DIBELS trademark, in violation of the Lanham Act, 15 U.S.C. § 

1114(1)(a). 

94. The infringement described herein will cause irreparable injury to DMG not fully 

compensable in monetary damages unless promptly enjoined. In the absence of injunctive relief, 

DMG will have no adequate remedy at law. A remedy in equity is warranted considering the 

balance of hardships, and the public interest in avoiding consumer confusion will be served by an 

injunction. 

 
COMPLAINT - 30 

COUNT II 

INFRINGEMENT OF THE IDEL TRADEMARK 

IN VIOLATION OF THE LANHAM ACT

95. DMG incorporates herein by reference the allegations contained in paragraphs 1 - 

80 above. 

96. UO has begun using the IDEL mark in a manner likely to cause confusion or 

mistake on the part of customers, and to deceive customers as to the origin, sponsorship, and 

authenticity of IDEL materials. Without limitation, UO has engaged in the following conduct: 

97. In violation of the license described above and of its entire course of dealing with 

DMG and DMG’s trademark registration for IDEL, UO has without warning to DMG taken 

several steps to eradicate all acknowledgment of DMG’s trademark rights from its website and to 

create the impression that it is the owner of the mark. First, it has unilaterally replaced the 

Educational Use Agreement posted on its website that had been distributed with the IDEL 

materials with a new, short agreement that makes no reference to DMG, DMG’s proprietary 

rights in IDEL or DMG’s registered trademark in IDEL. See Exhibit T. Despite repeated 

protests by DMG, UO has continued to provide free distribution of DMG’s product IDEL, while 

refusing to restore the correct Educational Use Agreement to its website that identifies the 

product as DMG’s. 

98. Second, UO has whited out the ® symbol from the actual IDEL materials it 

makes available to schools for public download, as well as the copyright notice that appeared in 

DMG’s name: compare Exhibit AA with Exhibit BB. In other words, it has taken the IDEL 

product provided to it by DMG and literally covered up the trademark and copyright symbols of 

the trademark owner. 
COMPLAINT - 31 

99. By removing from its website these acknowledgments of DMG’s ownership, UO 

is attempting to mislead the public into believing that it, not DMG, is the owner of the IDEL 

mark and the ultimate source of IDEL products. 

100. By so misleading the public, UO is also apparently trying to undermine DMG’s 

competitive DIBELSNet service by casting doubt on DMG’s legitimacy as the ultimate source of 

IDEL products. 

101. UO’s conduct as described above has caused widespread confusion among IDEL 

customers and had a negative impact on the image of IDEL in the marketplace, causing serious 

damage to DMG. 

102. UO’s conduct as described above constitutes an infringement of DMG’s exclusive 

rights to the IDEL trademark, in violation of the Lanham Act, 15 U.S.C. § 1114(1)(a). 

103. The infringement described herein will cause irreparable injury to DMG not fully 

compensable in monetary damages unless promptly enjoined. In the absence of injunctive relief, 

DMG will have no adequate remedy at law. A remedy in equity is warranted considering the 

balance of hardships, and the public interest in avoiding consumer confusion will be served by an 

injunction. 

COUNT III 

INFRINGEMENT OF THE DIBELS NEXT TRADEMARK 

IN VIOLATION OF THE LANHAM ACT 

104. DMG incorporates herein by reference the allegations contained in paragraphs 1 - 

103 above. 

105. In addition to sowing confusion as to the DMG products that it is authorized to 

distribute, UO has also been spreading confusion regarding DMG’s latest product, DIBELS 

Next, which it is not authorized to distribute. As noted above, DIBELS Next was launched in 
COMPLAINT - 32 

2010 and is an entirely new product, not made available through UO. The UO DIBELS Data 

System offers to provide schools with scoring of DIBELS Next assessment results, which any 

third party can do provided it does not confuse customers as to the ownership of the DIBELS 

Next mark and the sponsorship of the services concerned. But the UO Website has gone so far as 

to identify the benchmark goals that DMG has set – for DMG’s own product – as the “DIBELS 

Next Former Goals” and to identify UO’s unauthorized set of benchmark goals as the “DIBELS 

Next Recommended Goals” (emphasis added) – including under a headline proclaiming that 

DIBELS Data System offers “More Options, More Accurate Results.” See, e.g., the web page 

located at https://dibels.uoregon.edu/market/assessment/recommendedgoals/, a printout of which 

is attached as Exhibit CC. 

106. A consumer seeing the term “Recommended” will naturally assume that these 

goals are recommended by the company that is the source of both DIBELS Next and the 

“former” goals – which of course is not true. This is an improper and infringing use of the 

DIBELS Next mark, and is calculated to confuse and deceive consumers as to the origin, 

sponsorship, and authenticity of DIBELS Next materials. It is also calculated to mislead school 

districts into using the University’s DIBELS Data System service instead of DMG’s DIBELSNet 

service to process assessment results. 

107. UO’s conduct has in fact caused widespread confusion among DIBELS Next 

customers and had a negative impact on the image of DIBELS Next in the marketplace, causing 

serious damage to DMG. 

108. Furthermore, UO has been misusing the DIBELS Next mark in connection with 

teacher training. DMG has the exclusive nationwide right to conduct teacher training under the 

DIBELS Next mark, as shown in the trademark chart in Par. 61 above. While UO has the same 
COMPLAINT - 33 

right as anyone else to train teachers in the use of DIBELS Next materials, it cannot lawfully do 

so in a manner calculated to lead teachers to believe that its training is authorized or official 

DIBELS Next training. Yet that is precisely what UO is doing, as exemplified by the pages of its 

training materials shown in Exhibit DD. 

109. To make matters yet worse, in its training materials UO presents as coming from 

DIBELS Next, numerous passages that are in fact from DIBELS 6th, thus misrepresenting and 

mislabeling the product in which it purports to offer training, and undermining the quality of the 

DIBELS Next product. 

110. UO’s conduct constitutes an infringement of DMG’s exclusive rights to the 

DIBELS Next trademark, in violation of the Lanham Act, 15 U.S.C. § 1114(1)(a). 

111. The infringement described herein will cause irreparable injury to DMG not fully 

compensable in monetary damages unless promptly enjoined. In the absence of injunctive relief, 

DMG will have no adequate remedy at law. A remedy in equity is warranted considering the 

balance of hardships, and the public interest in avoiding consumer confusion will be served by an 

injunction. 

COUNT IV 

INFRINGEMENT OF THE DIBELS TRADEMARK 

IN VIOLATION OF O.R.S. 646.608

112. DMG incorporates herein by reference the allegations contained in paragraphs 1 - 

111 above. 

113. UO’s conduct as described above has created, and if not stopped will continue to 

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

of the DIBELS product, as well as likelihood of confusion or misunderstanding as to affiliation, 

connection, or association between UO and the DIBELS mark or certification by DMG. Further, 
COMPLAINT - 34 

UO has represented that its good or services have sponsorship, approval, characteristics, and 

qualities that they do not have. Finally, UO has disparaged the goods and services of DMG by 

false and misleading representations of fact. As such UO’s conduct constitutes an infringement 

of DMG’s exclusive rights to the DIBELS trademark and/or an unlawful practice in violation of 

state law, including without limitation Oregon Rev. Statutes 646.608(1)(b), 646.608(1)(c), 

646.608(1)(e) and 646.608(1)(h). 

114. The infringement described herein will cause irreparable injury to DMG unless 

promptly enjoined. In the absence of injunctive relief, DMG will have no adequate remedy at 

law. A remedy in equity is warranted considering the balance of hardships, and the public 

interest in avoiding consumer confusion will be served by an injunction. 

COUNT V 

INFRINGEMENT OF THE IDEL TRADEMARK 

IN VIOLATION OF O.R.S. 646.608

115. DMG incorporates herein by reference the allegations contained in paragraphs 1 - 

114 above. 

116. UO’s conduct as described above has created, and if not stopped will continue to 

create, confusion or misunderstanding as to the source, sponsorship, and approval of the IDEL 

product, as well as likelihood of confusion or misunderstanding as to affiliation, connection, or 

association between the UO and the IDEL mark or certification by DMG. As such it constitutes 

an infringement of DMG’s exclusive rights to the IDEL trademark and/or an unlawful practice in 

violation of state law, including without limitation Oregon Rev. Statutes 646.608(1)(b) and 

646.608(1)(c). 

117. The infringement described herein will cause irreparable injury to DMG unless 

promptly enjoined. In the absence of injunctive relief, DMG will have no adequate remedy at 
COMPLAINT - 35 

law. A remedy in equity is warranted considering the balance of hardships, and the public 

interest in avoiding consumer confusion will be served by an injunction. 

COUNT VI 

INFRINGEMENT OF THE DIBELS NEXT TRADEMARK 

IN VIOLATION OF O.R.S. 646.608

118. DMG incorporates herein by reference the allegations contained in paragraphs 1 - 

117 above. 

119. UO’s conduct as described above has created, and if not stopped will continue to 

create, confusion or misunderstanding as to the source, sponsorship, and approval of the DIBELS 

Next product and DIBELS Next training, as well as likelihood of confusion or misunderstanding 

as to affiliation, connection, or association between the UO and the DIBELS Next mark or 

certification by DMG. As such it constitutes an infringement of DMG’s exclusive rights to the 

DIBELS Next trademark and/or an unlawful practice in violation of state law, including without 

limitation Oregon Rev. Statutes 646.608(1)(b) and 646.608(1)(c). 

120. The infringement described herein will cause irreparable injury to DMG unless 

promptly enjoined. In the absence of injunctive relief, DMG will have no adequate remedy at 

law. A remedy in equity is warranted considering the balance of hardships, and the public 

interest in avoiding consumer confusion will be served by an injunction. 

COUNT VII 

UNFAIR COMPETITION 

121. DMG incorporates herein by reference the allegations contained in paragraphs 1 - 

120 above. 

122. UO’s conduct as described constitutes unfair competition as a matter of common 

law. 
COMPLAINT - 36 

123. This unfair competition will cause irreparable injury to DMG unless promptly 

enjoined. In the absence of injunctive relief, DMG will have no adequate remedy at law. A 

remedy in equity is warranted considering the balance of hardships, and the public interest in 

avoiding consumer confusion will be served by an injunction.

COUNT VIII 

COPYRIGHT INFRINGEMENT

124. DMG incorporates herein by reference the allegations contained in paragraphs 1 - 

123 above. 

125. The license granted by DMG to UO for reproduction and distribution of the 

DIBELS materials permits the distribution of such materials only on the UO Website and 

pursuant to the Educational Use Agreement. (Indeed, the Educational Use Agreement that UO 

itself distributed for years specifically acknowledged that for-profit exploitation of DIBELS 

would require DMG”s consent.) The materials covered by that license include the DORF 

passages described above. 

126. The DORF passages were created by DMG in collaboration with commissioned 

third parties pursuant to written agreements vesting the copyright in DMG. DMG has registered 

its copyright in the DORF passages. 

127. The United States Copyright Office has issued the following registrations which 

encompass such material: 

Dibels 5th Edition 

Copyright 

Number Title 

TXu001619550 Dynamic Indicators of Basic Early Literacy Skills 5th Edition. 
COMPLAINT - 37 

Dibels 6th Edition

Copyright 

Number Title 

TX0006989892 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition First 

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency. 

TX0006989918 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition First 

Grade Student Materials Benchmark Assessment. 

TX0006989907 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition First 

Grade Student Materials Progress Monitoring Oral Reading Fluency. 

TX0006993551 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Second 

Grade Scoring Booklet Benchmark Assessment. 

TX0006993557 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Second 

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency. 

TX0006993539 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Second 

Grade Student Materials Benchmark Assessment. 

TX0006993530 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Second 

Grade Student Materials Progress Monitoring Oral Reading Fluency. 

TX0006993564 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Third 

Grade Scoring Booklet Benchmark Assessment. 

TX0006993548 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Third 

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency. 

TX0006993542 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Third 

Grade Student Materials Benchmark Assessment. 

TX0006993535 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Third 

Grade Student Materials Progress Monitoring Oral Reading Fluency. 

TX0006993554 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fourth 

Grade Scoring Booklet Benchmark Assessment. 

TX0006993593 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fourth 

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency. 

TX0006993377 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fourth 

Grade Student Materials Benchmark Assessment. 

TX0006993376 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fourth 

Grade Student Materials Progress Monitoring Oral Reading Fluency. 

TX0006993575 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fifth 

Grade Scoring Booklet Benchmark Assessment. 

TX0006993559 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fifth 

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency. 
COMPLAINT - 38 

TX0006993536 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fifth 

Grade Student Materials Benchmark Assessment. 

TX0006993541 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Fifth 

Grade Student Materials Progress Monitoring Oral Reading Fluency. 

TX0006993576 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Sixth 

Grade Scoring Booklet Benchmark Assessment. 

TX0006993583 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Sixth 

Grade Scoring Booklet Progress Monitoring Oral Reading Fluency. 

TX0006993550 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Sixth 

Grade Student Materials Benchmark Assessment. 

TX0006993547 

Dynamic Indicators of Basic Early Literacy Skills 6th Edition Sixth 

Grade Student Materials Progress Monitoring Oral Reading Fluency. 

See Exhibit EE hereto. 

128. Notwithstanding DMG’s copyright ownership of the DORF passages, UO and 

defendant Hop Skip Technologies have jointly developed, and begun to market and sell, an app 

called “HiFi Reading” that is designed to “facilitate[] the administration, scoring, and 

management of DIBELS 6th Edition assessments.” See Exhibit Y. As of the date of filing of this 

Complaint, the app only includes the DORF passages, and not the other measures contained in 

DIBELS 6th edition. The app contains verbatim copies of all 171 DIBELS Oral Reading Fluency 

(DORF) 6th edition passages, without any authorization from DMG. 

129. Publication of this “HiFi Reading” app with the DORF passages constitutes 

infringement of the exclusive rights of reproduction and distribution with respect to those 

passages, in violation of 17 U.S.C. §106(1) and (3), and the exclusive right to create a derivative 

work based on the copyrighted work in violation of 17 U.S.C. §106(2). DMG is the beneficial 

owner of the rights of reproduction and distribution and the owner of the derivative work right, 

with respect to all those passages. 
COMPLAINT - 39 

130. The University and Hop Skip Technologies are jointly and severally liable for 

such willful infringement. 

131. The exact nature of the University’s involvement in this copyright infringement is 

unclear at this time. To the extent that the University is not a direct infringer of DMG’s 

copyright, it is a contributory infringer, for it has, with full knowledge of Hop Skip 

Technologies’ direct infringement, caused, assisted, and materially contributed to that 

infringement, or alternatively has induced that infringement. 

132. The copyright infringement described herein will cause irreparable injury to DMG 

not fully compensable in monetary damages unless promptly enjoined. In the absence of 

injunctive relief, DMG will have no adequate remedy at law. A remedy in equity is warranted 

considering the balance of hardships, and the public interest will be served by an injunction. 

COUNT IX 

VIOLATION OF THE COPYRIGHT MANAGEMENT INFORMATION 

PROVISIONS OF THE COPYRIGHT ACT

133. DMG incorporates herein by reference the allegations contained in paragraphs 1 - 

132 above. 

134. The DORF passages, as originally provided by DMG to UO for download, and as 

made available by UO to the public for nearly a decade, contained copyright notice in the name 

of DMG. See Exhibit FF hereto. Such copyright notice constitutes copyright management 

information within the meaning of 17 U.S.C. § 1202(c). 

135. The Educational Use Agreement that for nearly a decade was used by UO as 

described earlier in this Complaint also constituted “copyright management information” with 

respect to DIBELS 6th within the meaning of 17 U.S.C. § 1202(c), as it included (without 
COMPLAINT - 40 

limitation) the name of, and other identifying information about, the copyright owner of the 

work, and terms and conditions for use of the work. 

136. Defendants UO and Hop Skip Technologies have removed all the foregoing 

copyright management information from the DORF passages as republished in their “HiFi 

Reading” app. They have done so knowing, or having reasonable grounds to know, that such 

removal would induce, enable, facilitate, or conceal infringement of DMG’s copyright in the 

DORF passages. Such conduct violates Section 1202(b) of the Copyright Act, 17 U.S.C. 

§1202(b). 

137. Furthermore, UO and Hop Skip Technologies have provided false copyright 

management information to the public in connection with the “HiFi Reading” app, consisting of 

(without limitation) copyright notice in the name of the University, intended to indicate to 

consumers that the contents of the app are copyrighted works of the University. See, e.g., 

Exhibit X. Such action was taken with the intent to induce, enable, facilitate, or conceal 

defendants’ infringement of DMG’s copyright, in violation of Section 1202(a) of the Copyright 

Act, 17 U.S.C. §1202(a). 

138. The violations of §1202 of the Copyright Act described herein will cause 

irreparable injury to DMG unless promptly enjoined. In the absence of injunctive relief, DMG 

will have no adequate remedy at law. A remedy in equity is warranted considering the balance 

of hardships, and the public interest in avoiding consumer confusion will be served by an 

injunction. 

139. The University and Hop Skip Technologies are jointly and severally liable for 

such violations. 
COMPLAINT - 41 

 ON THE BASIS OF THE FOREGOING, plaintiff DMG demands the following: 

INJUNCTIVE RELIEF 

A. The actions of UO in eradicating references to DMG’s trademark rights from the 

UO Website and other contexts requires corrective action that goes beyond restoring the status 

quo ante. DMG respectfully demands that an order enter enjoining defendants, during the 

pendency of this litigation, from continuing infringement of DMG’s trademarks, and specifically 

but without limitation, requiring defendants and all those acting at their direction or pursuant to 

their control to: 

(1) Restore the former, agreed-upon Educational Use Agreements (as exemplified in 

Exhibits G and Q) to the download pages for DIBELS and IDEL on the UO 

Website at https://dibels.uoregon.edu/; 

(2) Restore the ® symbol to the DIBELS, IDEL, and DIBELS Next marks as used on 

the UO Website and on any DIBELS and IDEL materials downloaded from that 

website; 

(3) Restore the “©2002 Dynamic Measurement Group, Inc.” notice on DIBELS 6th 

Ed. materials available for download and DMG’s © notices on the IDEL materials 

available for download. 

(4) Add a prominent and explicit statement to the UO Website stating that DMG is 

the registered trademark owner of the DIBELS, IDEL and DIBELS Next marks; 

(5) Restore the former link that the UO had provided to DMG’s website on the UO 

Website; 
COMPLAINT - 42 

(6) Take whatever technical measures are required to ensure that search results for 

any and all search engines will no longer identify the UO Website as the “Official

DIBELS Home Page”; 

(7) Cease all use of the phrase “University of Oregon DIBELS 6th Edition”; 

(8) Cease all references to DMG-approved DIBELS Next goals as “former” goals and 

to UO-developed goals as “recommended” goals; 

(9) In the alternative, if the UO does not comply with the above-listed conditions, that 

UO be enjoined from (i) distributing the DIBELS and IDEL assessment measures 

in any medium and (ii) using the DIBELS, IDEL and DIBELS Next trademarks in 

connection with any educational materials and the UO Website. 

B. That an order enter enjoining defendants, during the pendency of this litigation, 

from continuing to advertise, support and distribute the “HiFi Reading” app containing the 

DORF passages described above. 

C. That a permanent order enter enjoining defendants from continuing infringement 

of DMG’s trademarks, and specifically but without limitation requiring defendants and all those 

acting at their direction or pursuant to their control to: 

(1) Restore the former, agreed-upon Educational Use Agreements (as exemplified in 

Exhibits G and Q) to the download pages for DIBELS and IDEL on the UO 

Website at https://dibels.uoregon.edu/ or any other website affiliated with the UO 

related to DIBELS, IDEL or the DIBELS Data System (collectively, the “UO 

Websites”); 
COMPLAINT - 43 

(2) Restore the ® symbol to the DIBELS, IDEL, and DIBELS Next marks as used on 

the UO Websites and on the DIBELS and IDEL materials downloaded from those 

websites; 

(3) Restore the “©2002 Dynamic Measurement Group, Inc.” notice on DIBELS 6th 

Ed. materials available for download and DMG’s © notices on the IDEL 

materials available for download. 

(4) Add a prominent and explicit statement to the UO Websites stating that DMG is 

the registered trademark owner of the DIBELS, IDEL and DIBELS Next marks; 

(5) Restore the former link that the UO had provided to DMG’s website on the UO 

Websites; 

(6) Take whatever technical measures are required to ensure that search results for 

any and all search engines will no longer identify the UO Websites as the 

“Official DIBELS Home Page”; 

(7) On all other documents, services and media created, distributed or induced by the 

UO that reference the DIBELS, IDEL or DIBELS Next marks, restore the ® 

symbol in connection with these marks; 

(8) Cease all use of the phrase “University of Oregon DIBELS 6th Edition”; 

(9) Cease all references to DMG-approved DIBELS Next goals as “former” goals and 

to UO-developed goals as “recommended” goals. 

(10) In the alternative, if the UO does not comply with the above-listed conditions, that 

UO be enjoined from (i) distributing the DIBELS and IDEL assessment measures 

in any medium and (ii) using the DIBELS and IDEL trademarks in connection 

with any educational materials and the UO Websites. 
COMPLAINT - 44 

D. That a permanent order enter (i) enjoining defendants from continuing to 

advertise and distribute the “HiFi Reading” app containing the DORF passages described above; 

(ii) requiring all copies of such app in their possession or subject to their control, and all masters 

from which such app can be reproduced, to be destroyed; and (iii) taking whatever technical 

measures are possible to disable the app for all prior purchasers. 

E. That the foregoing injunctive relief be granted not only against the University of 

Oregon and Hop Skip Technologies, but also against the individual named defendants, for the 

reason that: 

 Defendant Dr. Tuan, as Interim Dean of the College of Education, has 

direct oversight and supervisory responsibility over the actions of the 

Center on Teaching and Learning, a division of the College of Education, 

and thus the authority to prevent continued wrongdoing; 

 Dr. Kame’enui, as co-Director of the Center on Teaching and Learning, 

has direct oversight and supervisory responsibility over the actions of that 

Center, which is the locus of the infringement, and thus the authority to 

prevent continued wrongdoing. Indeed it is likely, and DMG expects that 

discovery will reveal, that Dr. Kame’enui was directly involved in the 

wrongful conduct described in this Complaint; 

 Dr. Fien, as co-Director of the Center on Teaching and Learning, has 

direct oversight and supervisory responsibility over the actions of that 

Center, which is the locus of the infringement, and thus the authority to 

prevent continued wrongdoing. Indeed it is likely, and DMG expects that 
COMPLAINT - 45 

discovery will reveal, that Dr. Fien was directly involved in the wrongful 

conduct described in this Complaint; 

 Brad Shelton, as Interim Vice President for Research and Innovation at the 

University of Oregon has oversight and supervisory responsibility over the 

actions of the Center on Teaching and Learning, and thus the authority to 

prevent continued wrongdoing. 

DAMAGES 

F. That defendants UO and Hop Skip Technologies be ordered jointly and severally 

to pay DMG statutory damages for their infringement of DMG’s copyright in the DORF 

passages in their “HiFi” app, in an amount to be determined by the Court in its discretion, as 

provided in Section 504(c) of the Copyright Act, 17 U.S.C. § 504(c). 

G. That defendants UO and Hop Skip Technologies be ordered jointly and severally 

to pay DMG statutory damages for their wrongful removal of copyright management 

information, and dissemination of false copyright management information, in their “HiFi” app 

in the maximum amount permitted by law, pursuant to 17 U.S.C. §1023(c)(3). 

OTHER RELIEF 

H. That defendants UO and Hop Skip Technologies be ordered jointly and severally 

to pay DMG’s attorney’s fees incurred in connection with their violations of Sections 106 and 

1202 of the Copyright Act in connection with their “HiFi” app, as provided in Section 505 and 

1203(b) of the Copyright Act, 17 U.S.C. §§505, 1203(b). 
COMPLAINT - 46 

I. That Defendants file with this Court within 30 days after the entry of final 

judgment a written statement, under oath, setting forth in detail the manner in which they have 

complied with the Judgment of the Court; and 

J. That the Court award such further relief as it deems just and reasonable. 

Respectfully submitted, 

Date: August 12, 2014 DYNAMIC MEASUREMENT GROUP, INC. 

By its attorneys, 

/s/ Fredrick A. Batson 

Frederick A. Batson, OSB 821887 

batson@gleaveslaw.com

GLEAVES SWEARINGEN LLP

P. O. Box 1147 

Eugene, OR 97440 

Phone: (541) 686-8833 

Fax: (541) 345-203 

OF COUNSEL: 

William S. Strong 

wstrong@kcslegal.com

KOTIN, CRABTREE & STRONG, LLP 

One Bowdoin Square 

Boston, MA 02114 

Phone: (617) 227-7031 

Fax: (617) 367-2988