Biosafe-One, Inc. v. Hawks, 07 Civ. 6764 (DC).
| Decision Date | 22 July 2009 |
| Docket Number | No. 07 Civ. 6764 (DC).,07 Civ. 6764 (DC). |
| Citation | 639 F.Supp.2d 358 |
| Parties | BIOSAFE-ONE, INC. d/b/a www.biosafeone.com and Christopher Jorgensen, Plaintiffs, v. Robert HAWKS et al., Defendants. |
| Court | U.S. District Court — Southern District of New York |
Vivian M. Williams & Associates, P.C., by Vivian M. Williams, Esq., New York, N.Y. for Plaintiffs.
Lessler & Lessler, by Arthur L. Lessler, Esq., South River, NJ, for Defendants.
Plaintiffs Bio-Safe One, Inc. ("Bio-Safe") and Christopher Jorgensen, Bio-Safe's owner, created a website, www.biosafeone.com, which they use to market Bio-Safe's industrial-strength septic system cleaning supplies. Plaintiffs have operated the website since 2001.
In 2005, Jorgensen was looking for a mortgage and hired defendants Robert Hawks and Brad Skierkowski, who at the time were mortgage brokers. Defendants' relationship with Jorgensen ended in late 2005. Approximately eighteen months later, in April 2007, Hawks and Skierkowski formed a company called Newtechbio, which sold industrial-strength septic system cleaning supplies, primarily through a new website they created, www.newtechbio.com.
Plaintiffs commenced this action against Hawks, Skierkowski, and their associated companies on July 26, 2007, asserting a variety of claims arising out of what plaintiffs claim was defendants' wholesale theft of plaintiffs' business. Shortly thereafter, plaintiffs moved for a preliminary injunction under Federal Rule of Civil Procedure 65(a).
In an opinion dated November 29, 2007 (the "Prior Decision"), I denied plaintiffs' motion for a preliminary injunction, holding that they were unlikely to succeed on the merits of their claims. See Biosafe-One, Inc. v. Hawks et al., 524 F.Supp.2d 452 (S.D.N.Y.2007). I also granted defendants' cross-motion for a preliminary injunction and barred plaintiffs from interfering in any way with defendants' website.
Defendants now move for summary judgment dismissing the complaint. Plaintiffs move for summary judgment dismissing defendants' counterclaim. Defendants move for leave to file a supplemental counterclaim. Both parties move for sanctions pursuant to Federal Rule of Civil Procedure 37.
For the reasons set forth below, defendants' motion for summary judgment dismissing the complaint is granted, plaintiffs' motion for summary judgment dismissing the counterclaim is granted, defendants' motion for leave to file an amended counterclaim is denied, plaintiffs' motion for sanctions is denied, and defendants' motion for sanctions is granted.
For a full recitation of the facts of this case, see the Prior Decision. Biosafe-One, Inc., 524 F.Supp.2d at 459-62. For the purposes of these motions for summary judgment, when considering each side's motion, I construe the facts in the light most favorable to the other party.
Plaintiffs filed the complaint on July 26, 2007, asserting, as the Court can best discern, the following twenty-five causes of action: (1) federal copyright infringement; (2) federal trade dress infringement; (3) federal trademark infringement; (4) federal trademark dilution; (5) breach of fiduciary duty; (6) misappropriation of corporate opportunities; (7) fraud; (8) intentional interference with prospective economic advantage; (9) breach of contract; (10) use of plaintiffs' name with intent to deceive; (11) infringement of plaintiffs' protected trade name and mark; (12) injury to plaintiffs' business reputation and dilution; (13) deceptive business practices; (14) state copyright infringement; (15) consumer fraud; (16) unfair competition; (17) false advertising; (18) identity theft; (19) improper acquisition and use of consumer report; (20) conversion; (21) trespass to chattels; (22) unjust enrichment; (23) common law unfair competition; (24) prima facie tort; and (25) civil conspiracy.1
Plaintiffs moved for a preliminary injunction on August 13, 2007. Defendants cross-moved for their own preliminary injunction on September 12, 2007.
On September 28, 2007, the defendants answered the complaint and asserted a counterclaim. The counterclaim concerned two notices plaintiffs sent to www.newtechbio.com's hosting companies pursuant to the notice provision of the Digital Millennium Copyright Act (the "DMCA"), 17 U.S.C. § 512(c)(3), informing the hosting companies that defendants' website violated plaintiffs' copyrights and trademarks. Defendants alleged that this notice violated the following provision of the DMCA:
Any person who knowingly materially misrepresents ... that material or activity is infringing ... shall be liable for any damages, including costs and attorneys' fees, incurred by the alleged infringer, by any copyright owner or copyright owner's authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.
I held an evidentiary hearing on the motions for a preliminary injunction on October 2, 2007, and issued my decision on November 29, 2007, denying plaintiffs' motion and granting defendants' cross-motion.
The parties engaged in discovery, with disagreements at every turn. The primary points of disagreement revolved around plaintiffs' refusal to meaningfully respond to defendants' discovery demands. For example, plaintiffs objected to providing such basic information as their tax returns and a list of their expected witnesses at trial. (5/12/08 Tr. at 13-15). In their response to defendants' interrogatories, plaintiffs stated that providing information regarding their damages "is not appropriate at this stage" and amounted to a "fishing expedition" that was "[o]utside scope of subject matter of litigation." (Pl. Interrog. Resp. at 4, 8).
There are five motions before the Court: (1) defendants' motion for summary judgment dismissing the complaint; (2) plaintiffs' motion for summary judgment dismissing defendants' counterclaim; (3) defendants' motion for leave to file a supplemental counterclaim; (4) plaintiffs' motion for sanctions; and (5) defendants' motion for sanctions. I first discuss the standard applicable to summary judgment, and then address each motion in turn.
The standards governing motions for summary judgment are well-settled. A court may grant summary judgment only where there is no genuine issue of material fact and the moving party is therefore entitled to judgment as a matter of law. See Fed R. Civ. P. 56(c); accord Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Summary judgment should be denied "if the evidence is such that a reasonable jury could return a verdict" in favor of the non-moving party. See NetJets Aviation, Inc. v. LHC Commc'ns, LLC, 537 F.3d 168, 178-79 (2d Cir.2008). In deciding a motion for summary judgment, the Court must construe the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in the non-moving party's favor. In re "Agent Orange" Prod. Liab. Litig., 517 F.3d 76, 87 (2d Cir.2008). The non-moving party cannot, however, "escape summary judgment merely by vaguely asserting the existence of some unspecified disputed material facts, or defeat the motion through mere speculation or conjecture." W. World Ins. Co. v. Stack Oil, Inc., 922 F.2d 118, 121 (2d Cir.1990) (internal citations and quotations omitted).
As to plaintiffs' claims for copyright infringement, trademark infringement, trade dress infringement, trademark dilution, breach of fiduciary duty, unfair competition, and misappropriation of corporate opportunities, plaintiffs have not adduced any evidence to alter my conclusion, set forth in the Prior Decision, that they are unlikely to succeed on the merits of these claims. Biosafe-One, Inc., 524 F.Supp.2d at 461-68. Plaintiffs only submit two additional pieces of evidence in support of their claim for trademark infringement, but they are insufficient to create a genuine issue for trial.
First, plaintiffs submit a September 26, 2007 email from one of plaintiffs' customers who inquired whether www.biosafeone.com and www.newtechbio.com were related. (Pl. Ex. I). Plaintiffs argue this email proves likelihood of confusion. Plaintiffs are mistaken, as the law is clear that "[i]nquiries about affiliation alone are not enough to find `actual confusion.'" Gross v. Bare Escentuals Beauty, Inc., 641 F.Supp.2d 175, ___ (S.D.N.Y.2008) (quoting Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114, 124 (2d Cir. 2001)). Moreover, plaintiffs have only submitted one such inquiry.
Second, in his declaration, Jorgensen states that "[a] number of Plaintiffs' customers and others in the industry called Plaintiffs explaining that Defendants' competing website caused them to confuse that site with Plaintiffs' website." (Jorgensen Decl. ¶ 16). Plaintiffs do not, however, submit affidavits from any of these customers. Without such affidavits the Court cannot consider these statements, which are classic hearsay, as they are out-of-court statements being offered for the truth of the matter asserted. See Feingold v. New York, 366 F.3d 138, 155 n. 17 (2d Cir.2004) ().
On the record before the Court, no reasonable jury could find for plaintiffs on any of these claims. Accordingly, the claims addressed in the Prior Decision are dismissed.
Defendants move for summary judgment dismissing the entire complaint, but do not address most...
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