Pretrial Practice and Civil Procedure Category Archives — Page 8 of 10 — The Virginia Business Litigation Blog Published by Virginia and Washington, D.C. Litigation & Appeals Attorney

May 23, 2012

Weak Mark, Lack of Confusion Leads to Summary Judgment for Defendant

Judge Leonie M. Brinkema was not impressed with the trademark infringement case filed by Wag’N Enterprises, a pet-safety company based in Herndon, Virginia, against a California nonprofit known as Redrover. Entering summary judgment in favor of Redrover, she essentially found that no reasonable jury could find that Wag’N’s mark, “Wag’N Rover Respond’R” was confusingly similar to RedRover’s “RedRover Responder.”

Trademark infringement exists where a valid and protectable mark is used by the defendant in a way that causes a likelihood of confusion in consumers. If the plaintiff does not hold a federally registered trademark, a valid and protectable mark may still exist where “the mark is used in commerce and is distinctive.” In determining the likelihood of confusion, some factors that a court may consider are: (1) the strength or distinctiveness of the mark (i.e., whether it is generic, descriptive, suggestive, arbitrary, or fanciful); (2) the similarity of the marks; (3) the similarity of the goods/services the marks identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant’s intent; and (7) actual confusion.

The court found that although Wag’N held valid and protectable marks in the registered name Wag’N Rover Respond’R and the unregistered but distinctive mark Rover Respond’R, there was no evidence that the RedRover Responders actually confused consumers. Specifically rejecting the Plaintiff’s argument that RedRover’s product “incorporates the essential essence” of its mark, the court noted that the marks do not share any identical words, the marks are not similar in meaning, and the companies have completely different logos with different typefaces, designs, and emphasis. Even if the names are similar, the court found, consumers do not see them in the same contexts, since Wag’N Rover Respond’R only has its name on its emergency kits and the mark RedRover Responders is found only on volunteer t-shirts and a brochure explaining the program.

May 2, 2012

Virginia Court Denies Judgment on the Pleadings in Domain Name Dispute

by Lee E. Berlik

As noted previously on this blog, the Anticybersquatting Consumer Protection Act (“ACPA”) permits litigation to be filed against an infringing domain name itself, not just against the owner of the domain name. Which entity should file responsive pleadings in such a case, the domain name or its owner? In Sauikit LLC v. Cydia.com, the Eastern District of Virginia opined that form should not prevail over substance.

Saurikit brought an action against the domain name cydia.com alleging violations of the ACPA. Defendant’s Answer stated that Cykon Technology (“Cykon”) owned the domain name, but the defendant’s attorney signed the answer “Counsel for Cydia.com” instead of “Counsel for Cykon.” Saurikit moved for judgment on the pleadings, arguing that there was no answer on file by a claimant since the property rather than the owner of the property filed the Answer.

A successful judgment on the pleadings requires the moving party to demonstrate that no issues of material fact exist and that it is entitled to judgment as a matter of law. In deciding a motion for a judgment on the pleadings, courts view the facts in the light most favorable to the non-moving party.

April 17, 2012

Summary Judgment Reversed Due to Ambiguity in Contract

by Lee E. Berlik

Swiftships Shipbuilders and its defense contract procurement consultant, Lion Associates, are currently in a dispute over a $181 million contract awarded to Swiftships by the United States Navy. In February 2009, Swiftships, which specializes in military vessels, submitted a capability summary to the Naval Sea Systems Command (NAVSEA) in response to a Navy announcement seeking coastal patrol boats to supply to the Iraqi government. After not receiving a response in two months, Swiftships hired Lion Associates to provide marketing and promotion services to attract potential Swiftships clients. In exchange, Swiftships would pay Lion Associates $7,500 a month for 12 months and “3% of each new contract obtained by Lion.” Swiftships later revised the contract so that the 3% commission was limited to “each new contract brought to Swift[ships], which was obtained by Lion.” In the meantime, Admiral Lyons, the CEO, President, and sole member of Lion Associates, worked on procuring the Navy contract for Swiftships by assuring a high-ranking NAVSEA admiral that Swiftships could manage the entire job by itself. The contract was awarded to Swiftships a few months after the singing of the revised contract between Lion Associates and Swiftships, but Swiftships refused to pay Lion Associates the 3% commission on the Navy contract because it did not think that Lion Associates had brought the Navy contract to Swiftships.

Lion Associates sued for breach of contract and unjust enrichment. It argued that it was entitled to a little over $6 million in compensatory damages because the 3% payment provision applied to any contract that Swiftships was unable to obtain without Lion Associates assistance. The Eastern District of Virginia granted summary judgment in favor of Swiftships on both claims, but the United States Fourth Circuit Court of Appeals remanded the case after finding that the contract was ambiguous and that evidence should have been considered to determine its meaning and whether it was breached.

In a breach of contract claim, a court must determine if contractual provisions have been violated by looking at the actual language of the document. If the contract language is ambiguous, the trier of fact can look to extrinsic parol evidence to determine the parties’ intent as to certain provisions. However, resort to extrinsic evidence is limited to situations where language is “susceptible to more than one reasonable construction,” when considered in the context of the contract as a whole.

April 10, 2012

Copyright Infringement Claim Against Builder Dismissed

by Lee E. Berlik

Although it is true that architects are entitled to copyright protection, a complaint alleging infringement of a copyright must contain sufficient factual allegations for the court to infer that the defendant is liable, or the case will be dismissed. This is what happened recently in Home Design Services, Inc. v. Schoch Building Corporation, in which the United States District Court for the Eastern District of Virginia dismissed the plaintiff’s threadbare complaint for failure to allege facts sufficient to support a copyright infringement claim.

Home Design Services (“HDS”) owned several architectural copyrights and filed suit against Schoch Building Corporation (“SBC”), a custom home builder, under the Federal Copyright Act alleging that SBC infringed its copyrights. To establish copyright infringement, a plaintiff must plead (1) ownership of a valid copyright and (2) that defendant copied the protected work. HDS submitted its copyright registration certificates which created the presumption of copyright validity and ownership. However, it failed to state facts alleging that SBC copied the protected work.

A plaintiff may establish copying by showing (1) that defendant had access to the copyrighted work and (2) that substantial similarity exists between the protected work and the allegedly infringing work. A plaintiff can show access by direct evidence arch drawing.jpg that the defendant had the opportunity to view the protected works or by showing that the works are so strikingly similar that there is no reasonable probability that they were independently created.

March 27, 2012

Former Virginia Attorney Enjoined from Frivolous Litigation

by Lee E. Berlik

When former attorney Ann Marie Miller had a bone to pick with Jennifer Ann Kelley, Miller used her knowledge of the legal system to represent herself in numerous suits of questionable merit against Kelley, according to Judge Wilson of the Western District of Virginia. In Miller v. Kelley, the court held that although it could not award Kelley attorney’s fees nor impose Rule 11 sanctions, it could enjoin Miller from filing any future frivolous pro se lawsuits in its district against Kelley.

After the court dismissed Miller’s state-law libel claim for failure to prosecute, Kelley sought attorney’s fees under 28 U.S.C. § 1927, sanctions under Federal Rule of Civil Procedure 11, and an order enjoining Miller from filing future suits against Kelley without prior judicial leave. The court found that it could not award fees because 28 U.S.C. § 1927 does not apply to pro se litigants, and it refused to impose sanctions because the “safe harbor” provisions of Rule 11 preclude the filing of any Rule 11 motion after the conclusion of a case. However, the court issued an injunction prohibiting Miller from filing future pro se actions against Kelley, relying on the All Writs Act, 28 U.S.C. § 1651(a) (2006) and four factors set forth by the Fourth Circuit.

The All Writs Act authorizes the sparing use of pre-filing injunctions when a litigant repeatedly files frivolous suits. The Fourth Circuit has set forth factors to evaluate in determining whether a pre-filing injunction is warranted: 1) the party’s history of litigation, in particular whether she has filed vexatious, harassing, or duplicative lawsuits; 2) whether the party filed her cases on a good faith basis or only to harass; 3) the extent of the burden on the courts and other parties resulting from the party’s filings; and 4) the adequacy of alternative sanctions.

January 18, 2012

Copyright Co-Owner Not Indispensable Party in Lawsuit Over YouTube Video

by Lee E. Berlik

“Grandma Got Run Over by a Reindeer” is one of the most popular holiday songs around and is played on radio stations across the country every Christmas season. It is also now the subject of contentious copyright litigation after a federal judge ruled recently that litigation over an allegedly unauthorized YouTube video containing audio of the song can continue despite the absence of a co-owner of the copyright.

Elmo Shropshire owns the copyright to the song along with Patsy Trigg d/b/a Kris Publishing. The copyright was registered with the U.S. Copyright Office on December 27, 1979. The defendant posted a video on YouTube–which has since been removed due to the pending litigation–which combined Christmas-related pictures with audio of a Canadian musical group, “The Irish Rovers,” singing the Grandma song. Shropshire contacted the poster and requested that he either pay the licensing fee or immediately remove the video. The poster refused.

Shropshire filed a copyright infringement suit in federal court, but his first (amended) complaint was dismissed because, among other reasons, Shropshire did not name Trigg or Kris Publishing in the lawsuit. The court gave him permission to amend, however, and the second time around, Shropshire named Kris Publishing as a defendant, but Kris Published settled out and was promptly dismissed. The defendant then filed a motion to dismiss, claiming that Patsy Trigg d/b/a Kris Publishing was a necessary and indispensable party and thus the suit could not go forward without her. The Court disagreed.

October 17, 2011

Fraud Claim Knocked Out by Statute of Limitations for Negligence Actions

by Lee E. Berlik

A Swedish law firm has failed in its effort to sue a director of a former client for “misrepresentation” in Virginia federal court after the court ruled the claim was barred by Virginia’s two-year statute of limitations applicable to negligence claims. The law firm had conceded that it would be unable to maintain a cause of action for fraud under the laws of Virginia, and the court opted to analyze the viability of the claim as a negligence action.

The law firm, Andersson Gustafsson Advokatbyra KB, sued eSCRUB Systems, Inc., a Virginia company, and three people associated with the company, claiming that eSCRUB had failed to pay the firm’s legal bills after it hired the law firm in 2007 to help it resolve a dispute. The law firm alleged that John Packard, a former director of eSCRUB, committed fraud in that he breached a “continuing obligation to notify Andersson of the risks of non-payment it ran in performing services for eSCRUB.” The allegation was essentially that Packard was part of a scheme to induce the law firm to provide legal services to eSCRUB with the full knowledge that the company would never pay the firm’s legal fees.

In Virginia, negligence claims carry a two-year statute of limitations. Virginia follows the general rule that the event that starts the limitations clock ticking is the negligent act itself. There is no “discovery exception” that starts the clock at a later date, such as the date the plaintiff actually discovers that the alleged negligence occurred or that he has been damaged. Statutes of limitation can expire before a potential plaintiff even learns of the grounds for a lawsuit.

October 10, 2011

Copyright Troll Lawyer’s Tactics Criticized by Virginia Judge

by Lee E. Berlik

United States District Judge John A. Gibney, Jr., sitting in Richmond, Virginia thought so little of the well-publicized shakedown tactics of the new wave of “copyright troll” lawyers–in this case practiced by Richmond lawyer Wayne O’Bryan–that he took it upon himself (without any Defendant asking for it) to issue a show-cause order against the lawyer demanding that he explain why his conduct should not be punished with Rule 11 sanctions.

The subject of the lawsuit at issue is Gangbang Virgins, a pornographic film allegedly downloaded by 85 unnamed “John Doe” defendants using popular peer-to-peer network BitTorrent. The Court initially granted the plaintiff permission to issue subpoenas to Internet Service Providers to learn the identities of the people behind the accused I.P. addresses. Later, however, Judge Gibney was apparently moved by some of the letters he received from the John Doe defendants. Several of the defendants, for example, notified the Court that the plaintiff made harassing telephone calls to them as soon as their identities were revealed, asking for a payment of $2,900 to end the litigation.

What the Court found particularly troubling was the lawyer’s behavior after certain defendants filed motions challenging their inclusion in the case. Rather than proceed to argue the merits of the motions in court, he routinely dismissed them, apparently to ensure the Court did not actually rule on any of the motions so that he could continue to threaten others. That, the Court found, amounted to nothing more than a “shake down” and an abuse of the Court’s resources.

October 4, 2011

Virginia Court Rejects “Stream of Commerce” Theory of Jurisdiction

by Lee E. Berlik

The United States Supreme Court recently held that a foreign manufacturer that places a product into the stream of commerce in the United States does not automatically subject itself to jurisdiction in each of the states where the product might foreseeably end up. Relying on this decision, a Roanoke Circuit Court judge has dismissed a Japanese manufacturing company from a product-liability case brought against it in Virginia.

Janet May was employed by Progress Press in 2006 and was operating a stitching machine made by Osako & Co., a Japanese company. She alleged that she was injured because the machine had an improper conveyor belt. She sued Osako and others for negligence and breach of warranty.

Osako sold its products in the United States through Consolidated International Corp., its exclusive distributor, which was a company independent of Osako. Osako knew that its products would be sold in the United States generally and made some product changes for the U.S. market but did not take any actions to specifically target Virginia. Osako has no physical locations in the United States. On these facts, Osako moved to dismiss May’s suit for lack of jurisdiction.

September 26, 2011

Law of Fraudulent Conveyances Outlined by Virginia Supreme Court

by Lee E. Berlik

Once a plaintiff has introduced evidence to establish a “badge of fraud,” a prima facie case of fraudulent conveyance is established and the burden shifts to the defendant to establish that the transaction was not fraudulent. So held the Virginia Supreme Court, in reversing the Henrico County Circuit Court’s decision to strike the plaintiff’s evidence and enter judgment in favor of the defendant.

Fox Rest Associates, L.P. v. Anne B. Little involved a dispute between George B. Little, an attorney and the general partner of Fox Rest Apartments, and the limited partners of Fox Rest Apartments, arising out of an alleged sale of the apartments by the general partner without the consent or knowledge of the limited partners. After learning that the limited partners planned to sue him, Mr. Little made various transfers, including transfers into an account at SunTrust Bank held jointly with his wife. The limited partners filed a derivative action against Fox Rest for malpractice, double billing, and other claims. The limited partners obtained a judgment but were unable to collect approximately $856,400. They then proceeded to file a fraudulent conveyance action to attempt to set aside various transfers as fraudulent.

The trial court struck the limited partners’ evidence, finding that they had produced insufficient evidence of fraudulent intent. The Supreme Court, however, reversed. Under Virginia law, it pointed out, to survive a motion to strike, a plaintiff need only introduce evidence of “badges of fraud.” Badges (or presumptions) of fraud include: