United States District Court, W.D. Wisconsin
OPINION & ORDER
D. PETERSON District Judge
Epic Systems Corporation is suing defendants
YourCareUniverse, Inc., MEDHOST of Tennessee, Inc., and
MEDHOST Direct, Inc. under both state and federal law on the
grounds that defendants' YOURCAREEVERYWHERE mark
infringes Epic's trademark for CARE EVERYWHERE and
results in unfair competition. Defendants have moved for
summary judgment, Dkt. 113, arguing that no reasonable jury
could find that their mark is likely to confuse potential
customers, which is an element of all of Epic's claims.
In the alternative, defendants seek summary judgment on
Epic's request under 15 U.S.C. § 1117(a) for
attorney fees and enhanced damages.
primary fact in Epic's favor is that both marks include
the same words. But nearly all the other factors governing a
likelihood of confusion analysis favor defendants or are
neutral. Although Epic and MEDHOST offer some of the same
products, the marked products (an
“interoperability” application and a health and
wellness website) are very different. There is no evidence
that anyone has been confused by defendants' mark and
there is strong evidence that defendants did not intend to
copy Epic's mark or use YOURCAREEVERYWHERE to deceive
potential customers. Several other factors favor defendants
as well: the marks use commonplace words; the context of
defendants' mark generally makes its source clear;
prospective customers generally use a great deal of care in
choosing the relevant products and services; and the parties
have little overlap in their customers. Even if it is assumed
that potential customers associate CARE EVERYWHERE with
Epic's product, the possibility of customer confusion is
simply too remote and speculative to require a trial.
Accordingly, the court will grant defendants motion for
summary judgment, which makes it unnecessary to consider
defendants' alternative argument regarding Epic's
request for relief under § 1117(a).
other motions are before the court as well: (1)
defendants' motion to exclude the testimony of one of
Epic's experts, Michael Cohen, Dkt. 118; (2)
defendants' motion to strike Epic's jury demand, Dkt.
120; (3) Epic's motion to amend its damages report, Dkt.
194; and (4) defendants' motion for leave to amend their
answer to assert the affirmative defense of abandonment, Dkt.
202; (5) defendants' motion to compel discovery, Dkt.
224; (6) Epic's motion for an extension of time to
respond to defendants' motion to compel, Dkt. 226; and
(7) Epic's motion to compel discovery, Dkt. 228.
court will deny all of these motions as moot. Epic did not
rely on Cohen's testimony or opinions in its own proposed
findings of fact. Although Epic cited Cohen's testimony a
few times in responses to defendants' proposed facts,
none of that testimony makes any difference to the outcome of
defendants' summary judgment motion. The remaining
motions have no bearing on summary judgment, so it is
unnecessary to consider them.
undisputed facts are taken from the parties' proposed
findings of fact and the record. The court has disregarded
proposed facts that did not comply with the court's
procedures. For example, when responding to the other
side's proposed findings of fact, the parties often
included additional facts that were not responsive to the
original fact. Dkt. 45, at 14 (“When a responding
party disputes a proposed finding of fact, the response must
be limited to those facts necessary to raise a dispute. The
court will disregard any new facts that are not directly
responsive to the proposed fact.”). The court also
excluded vague or conclusory proposed facts and responses
that did not comply with the requirement to provide
“specific facts” at summary
judgment. Drake v. Minn. Mining & Mfg.
Co., 134 F.3d 878, 887 (7th Cir. 1998) (“Rule 56
demands something more specific than the bald assertion of
the general truth of a particular matter[;] rather it
requires affidavits that cite specific concrete facts
establishing the existence of the truth of the matter
Epic Systems Corporation
Epic Systems Corporation is a healthcare information
technology vendor with about 10, 000 employees. Epic's
primary product is “EpicCare, ” an electronic
health records (EHR) system. Epic provides one version of its
system to hospitals and another version to clinics.
other things, an EHR system such as EpicCare may include
medical information about a patient, allow access to
evidence-based tools that healthcare providers can use to
make decisions about a patient's care, and automate and
streamline scheduling and billing. One purpose of an EHR
system is to allow providers across more than one healthcare
organization to share and exchange patient information. This
sharing of digitized records across providers is sometimes
EVERYWHERE is Epic's interoperability
“application” used to exchange patient data
between and among healthcare institutions. It allows patient
data to be exchanged between various end points, which
include Epic facilities, non-Epic facilities, personal health
records, health information exchanges, and various
2004, Epic applied for federal registration of CARE
EVERYWHERE. In June 2005, the United States Patent and
Trademark Office registered the mark. In June 2011, the USPTO
accepted Epic's Section 8 and 15 application, rendering
Epic's mark “incontestable.” Epic has not
registered CARE EVERYWHERE in Wisconsin.
2009 to 2014, Epic also used CARE EPIC and CARE ELSEWHERE in
conjunction with CARE EVERYWHERE. Epic stopped using these
other two marks because some had expressed confusion about
the three marks. Some people referred to one or more of the
marks incorrectly as “Care Anywhere” and others
simply had difficulty remembering the CARE EVERYWHERE name.
purpose of CARE EVERYWHERE is to “help traveling
patients get care regardless of where they are.” Dkt.
169, ¶ 28. The name “Care Everywhere” is
meant to evoke “something to both patients and
providers, which is anywhere you get your care, there can be
[a] composite record of all of that care in one place. So
anywhere you go, we can pull information from CARE
EVERYWHERE.” Id., ¶ 29.
EVERYWHERE is part of EpicCare, which hospitals and clinics
must license to have access to CARE EVERYWHERE. Along the
same lines, a healthcare provider cannot gain access to CARE
EVERYWHERE unless he or she works at a facility that has a
license to use EpicCare. A provider using an EHR system other
than Epic's must gain access to CARE EVERYWHERE through
another Epic product. Epic uses the CARE EVERYWHERE mark in
the context of training, installation, implementation, and
maintenance related to the interoperability application.
Other Epic products used with CARE EVERYWHERE
EVERYWHERE's interoperability application may be used
“in connection with” individual modules that are
also part of EpicCare, including a personal health record
management tool, clinical and administrative modules used by
healthcare professionals, and a population health management
system. Dkt. 170, ¶ 23. One of the modules is an
application called MyChart, which is a “shared patient
record” or “patient portal.” MyChart
“offers patients personalized and secure online access
to portions of their medical records and permits patients to
include and share with providers disease/health and wellness
information.” Dkt. 170, ¶ 32. MyChart permits
patients to review their test results and visit summaries,
schedule appointments, download records, and communicate
directly with their physicians. MyChart is available only to
patients of healthcare providers who are affiliated with
Epic. Within the past three years, CARE EVERYWHERE
“functionality” was added to MyChart. This allows
for the exchange of records with a different provider. A
patient may see the CARE EVERYWHERE logo in MyChart when
using this functionality.
module is called “Lucy, ” which allows patients
to collect their records in one place. CARE EVERYWHERE allows
patients using Lucy to transfer records to different
providers or to a MyChart account.
Customer use of CARE EVERYWHERE
allows its customers to use its marks on their consent forms
and websites so long as they properly attribute the mark to
Epic and otherwise use the mark appropriately. Out of 18
customers for which Epic provided defendants relevant
documents, seven of those customers had used CARE EVERYWHERE
incorrectly, either not attributing the mark to Epic or
attributing the mark to the wrong products and
services. Epic relies on its employees to detect and
correct customer noncompliance.
has approximately 400 customers that obtain a license
directly through Epic. The vast majority of these customers
are large healthcare organizations. Other customers include
“community” hospitals, retail clinics, and
independent practices. Most of the smaller organizations
share patients with Epic's larger customers. The smallest
facility has 100 beds. Epic's direct customers are
“sophisticated” and they put “a lot of care
and resources” into choosing an EHR system. Dkt. 96
(Faulkner Dep., at 270); Dkt. 91 (DeVault Dep., at 222).
sales process often begins with a prospective customer
issuing a “request for proposal” to various
health IT vendors. After the customer narrows the list of
vendors, those on the short list will give product
demonstrations. The process for purchasing an EHR system
usually lasts six months to one year. During the sales
process, Epic typically interacts with high level executives
and representatives of practitioners. Many of Epic's
potential customers also use consultants who are familiar
with and experienced in the healthcare IT industry and the
request-for-proposal process. The chief information officer
and other high level executives are involved in the final
decision to purchase an EHR system from Epic because of the
significant cost of the system, the necessary hardware to
implement the system, and the training needed to use the
system. The licensing fee can range from $1.5 million for a
small customer to $20 million for a large customer. Because
CARE EVERYWHERE is included in EpicCare, there is no separate
fee for the application.
organization that has purchased Epic's EHR system has
elected to switch to a different vendor later.
Community Connect program
approximately 10 years, Epic has had the Community Connect
program, which allows smaller hospitals and physician
practices to use the Epic EHR System. Typically, Connect
participants are small independent practices with one to five
providers or small community hospitals with about one to 200
beds. At least 1, 500 organizations participate in the
Connect program. Under the program, a Connect participant is
able to use the Epic software through Epic's direct
customers in the same ways that Epic's direct customers
use the software. Connect participants can receive training
and support from Epic.
Connect participants have a contract with one of Epic's
larger customers rather than with Epic itself. However, Epic
may receive a financial benefit from Connect participants
because of increased usage by the direct customer. Connect
participants are ordinarily geographically near to a direct
customer and share patients with that customer. Prospective
Connect participants generally hear about Epic through
interactions with Epic's direct customers.
Epic's marketing and sales
and its CARE EVERYWHERE products and services are
“widely known” in the healthcare marketplace.
Dkt. 170, ¶ 46. Prospective customers
“often” mention CARE EVERYWHERE as an aspect of
the Epic EHR system that they have heard about and are
interested in. Most people in the industry, including
prospective customers, already know what CARE EVERYWHERE is
when they contact Epic. However, Epic has never conducted any
survey, poll, search, study, or other investigation to
determine whether CARE EVERYWHERE has acquired secondary
meaning in the minds of consumers.
does not have a marketing department. It does not buy
advertising space or cold call potential customers. Most
customers contact Epic first, often because of a
recommendation from another customer. Epic promotes its
products and services primarily through word of mouth and the
results from rating agencies and trade shows. Epic's
“Events and Design Team” promotes Epic's
products and services at user group meetings and industry
conferences. Since 2014, Epic has spent approximately $100
million on marketing and promotion of its products.
does have a sales team. Generally, the team responds to
inquiries made from prospective customers rather than the
other way around. Initial discussions are held by telephone
and then may lead to face-to-face meetings. When Epic meets
with a prospective customer, Epic may recommend the Community
Connect program if the customer is not the appropriate size
or does not have a large IT department.
Patients' exposure to CARE EVERYWHERE
does not market or sell the CARE EVERYWHERE product or any
other product or service to healthcare patients. Patients
might see the mark when completing consent forms regarding
the sharing of data, when using the MyChart patient portal,
or on an Epic customer's website. When the mark appears
on the MyChart portal, it appears along with the CARE
Defendants YourCareUniverse, Inc., MEDHOST of Tennessee, and
YourCareUniverse, Inc. is a subsidiary of MEDHOST Solutions
Corp., which is a subsidiary of MEDHOST, Inc.
YourCareUniverse “offers a range of software tools and
services that assist healthcare providers in managing the
business of healthcare.” Dkt. 169, ¶ 115.
MEDHOST of Tennessee, Inc. sells an EHR system called
Enterprise. Defendant MEDHOST Direct is a subsidiary that
provides hosting and managed services both internally to
MEDHOST affiliates and externally to customers of MEDHOST.
All of these companies are “related or affiliated
corporate entities.” Dkt. 160, ¶ 5.
2013, defendants began planning for products using different
marks beginning with “YourCare.” The first
product, launched in February 2014, was a patient portal
called YOURCARECOMMUNITY (since renamed YOURCAREHEALTH). This
was followed by YOURCARELINK, which is an “interface
engine” that allows the transfer of information to a
state health reporting agency. By October 2014,
YOURCAREEVERYWHERE was the proposed named for a health and
wellness website and related services.
learning that yourcareeverywhere.com was an available web
domain, defendants conducted a search for similar marks.
Defendants discovered Epic's CARE EVERYWHERE mark at that
hired an advertising agency to perform a survey to test the
name YOURCAREEVERYWHERE, along with two other names. Sixty
five percent of the respondents chose YOURCAREEVERYWHERE as
their preferred name.
launched the yourcareeverywhere.com website in March 2015. At
the same time, they executed a marketing campaign for the
website, spending approximately $2, 500, 000. When
advertising products and services for YOURCAREEVERYWHERE,
defendants use the YOURCAREEVERYWHERE mark. In most of the
advertisements, the mark appears alongside the
YOURCAREUNIVERSE mark, the MEDHOST mark, or other
has identified two instances in which the YOURCAREEVERYWHERE
mark has appeared without being clearly unaccompanied by one
of defendants' other marks. Dkt. 145-65 and 145-66. (Epic
cites two other documents, Dkt. 145-28 and Dkt. 145-29, but
either the MEDHOST mark or numerous YOURCAREUNIVERSE marks
are prominent.) One is a brochure for YOURCAREEVERYWHERE
“engagement services.” (The MEDHOST mark appears
at the bottom of the brochure, but it is not prominent.) The
other is a press release announcing the YOURCAREEVERYWHERE
website. (The YOURCAREUNIVERSE mark appears in the document,
but again, it is not prominently displayed.) In both
documents, the YOURCAREEVERYWHERE mark appears with a
YOURCAREEVERYWHERE logo. Epic has identified three documents
(two press releases and a brochure) in which the
YOURCAREEVERYWHERE mark did not appear with the logo. Dkt.
169, ¶ 144. In each document without the logo, the
MEDHOST mark, the YOURCAREUNIVERSE mark or both are
April 2015, the USPTO allowed defendants'
YOURCAREEVERYWHERE mark over Epic's CARE EVERYWHERE mark.
Other “YourCare” marks
defendants chose to brand a number of other products as part
of YOURCAREUNIVERSE and identify all of them with a different
“YourCare” mark. Defendants now use many other
marks with the “YourCare” prefix, including the
Trademark Trial and Appeal Board rejected defendant
YourCareUniverse's application to register
“YourCare” on the ground that it is descriptive.
The board also rejected YourCareUniverse's contention
that it owned a “family of marks.”
the “YourCare” products and services can be
purchased separately and function independently, both as to
each other and as to MEDHOST's EHR system. For example,
defendants' YOURCAREEVERYWHERE website can link with any
health portal, regardless whether the portal is affiliated
with defendants. Defendants' YOURCAREHEALTH patient
portal can be used without MEDHOST's EHR system. However,
when customers of YourCareUniverse purchase products and
services related to YOURCAREEVERYWHERE, they always purchase
at least one of defendants' other products as well,
though they are not required to do so.
Products and services associated with
is used on a free, publicly available website that contains
general information related to health and wellness, such as
diseases and conditions, healthcare news, pregnancy and
childbirth, child and teen care, heart care, mental health,
and exercise and nutrition. The mark is displayed with this
is a YOURCAREEVERYWHERE mobile app as well. On the app, the
mark is displayed with this logo:
of the website or app may register for an account, which
allows them to track certain health and wellness ...