Clever Factory, Inc. v. Kingsbridge Int'l, Inc.
| Decision Date | 24 September 2013 |
| Docket Number | NO. 3:11-1187,3:11-1187 |
| Parties | THE CLEVER FACTORY, INC. v. KINGSBRIDGE INTERNATIONAL, INC., et al. |
| Court | U.S. District Court — Middle District of Tennessee |
Pursuant to the provisions of 28 U.S.C. § 636(c) and Rule 73(b) of the Federal Rules of Civil Procedure, the parties in this action have consented to have the Magistrate Judge conduct any and all proceedings in the action, including the entry of a final judgment. See Order entered February 22, 2012 (Docket Entry No. 24). The action is currently set for a jury trial on June 17, 2014. See Order entered April 22, 2013 (Docket Entry No. 89).
Presently pending before the Court is the motion for summary judgment filed by Defendant Kingsbridge International, Inc. (Docket Entry No. 53). The Plaintiff has responded to the Defendant's motion by filing a joint response in opposition and cross motion for partial summary judgment on the issue of liability as to its copyright infringement claim. (Docket Entry No. 60). For the reasons set out below, the Defendant's motion for summary judgment is denied in part and granted in part.
The Clever Factory, Inc. ("Clever Factory") is a Tennessee corporation having its principal place of business in Nashville, Tennessee. Clever Factory has all ownership interests in and holdscopyright registrations for visual artworks that are used in adaptations of eight different game cards known as "Crazy Eights," "Old Maid," "Go Fish," "Matching," "Bible Heroes," "Bible Trivia," "Build-a-Word," and "Puzzle Cards" ("the Works"). It also has all ownership interests in and holds copyright registrations for literary works that comprise original instructions on how to play the adaptions of the game cards for "Old Maid," "Crazy Eights," and "Build-a-Word" ("the Instructions"). Clever Factory uses the Works and Instructions to create original adaptations of flash card games ("Flash Card Games") that it manufactures, promotes, and sells throughout the United States. Clever Factory also holds a trademark registration for the phrase "Good Grades," which it uses in connection with its products.
On October 31, 2008, Clever Factory filed an action in the Middle District of Tennessee ("the First Lawsuit") against Rite Aid Corporation ("Rite Aid"), Kingsbridge International, Inc. ("Kingsbridge"), Jiande Bedding Articles Limited ("Jiande"), and twenty "John Doe" defendants alleging claims for copyright infringement in violation of 17 U.S.C. § 501 (the "Copyright Act"), claims for violations of 15 U.S.C. § 1125(a) of the Lanham Act (the "Lanham Act"), and various claims under Tennessee law. See The Clever Factory, Inc. v. Rite Aid Corporation, et al., 3:08-1056. Clever Factory alleged that Jiande, a Chinese corporation, manufactured flash card games that were substantially similar to or otherwise the same as Clever Factory's Flash Card Games and that copied the copyrighted Works and Instructions, as well as the unique design elements ("Design Elements") and the trade dress associated with Clever Factory's Flash Cards Games. Clever Factory alleges that approximately 48,000 units of the flash card games manufactured by Jiande ("the Knock-off Flash Card Games") were purchased and distributed by Kingsbridge to Rite Aid for sale to consumers in the United States during 2007 without the authorization of Clever Factory and in a manner thatviolated Clever Factory's legal rights. Shortly after the First Lawsuit was filed, Rite Aid and Kingsbridge made an offer of judgment for $36,000.00 that was accepted by Clever Factory, and final judgment was entered against Rite Aid and Kingsbridge by Order entered November 24, 2008. See Docket Entry No. 8 in First Lawsuit.1
On December 16, 2011, Clever Factory filed the instant lawsuit against Kingsbridge and twenty "John Doe" defendants alleging that, during 2011, Kingbridge had sold or distributed for sale 260,000 sets of Knock-off Flash Card Games of the "Crazy Eights," "Old Maid," "Go Fish," and "Matching" flash card games causing injury to Clever Factory and in violation of Clever Factory's legal rights. Clever Factory asserts seven counts: 1) copyright infringement in violation of 17 U.S.C. § 501; 2) false designation of origin and unfair competition in violation of 15 U.S.C. § 1125(a); 3) trade dress infringement in violation of common law; 4) unfair competition in violation of common law; 5) unfair competition in violation of Tennessee state law; 6) violation of Tenn. Code. Ann. § 47-25-513, the Tennessee anti-dilution statute; and 7) violation of Tenn. Code Ann. § 47-18-104, the Tennessee Consumer Protection Act ("TCPA"). See Complaint (Docket Entry No. 1). Clever Factory seeks injunctive relief and damages, including treble and punitive damages.
In a first amended complaint filed March 25, 2013 (Docket Entry No. 82), Clever Factory expounded on its allegations and added 13 businesses as defendants to the action based on allegations that Kingsbridge had sold and shipped Knock-off Flash Card Games of the "Crazy Eights," "Old Maid," "Go Fish," and "Matching" Flash Card Games to the 13 businesses, which inturn sold the Knock-off Flash Card Games to consumers in the United States.2 Judgments have been entered against each of the 13 newly added defendants, except for Rite Aid, after Clever Factory accepted offers of judgment from those defendants. See Docket Entry Nos. 114 and 118.
In its motion for summary judgment, Kingsbridge asserts that the pre-litigation cease-and-desist letter sent to Kingsbridge on December 13, 2007, other pre-litigation correspondence between Clever Factory and Kingsbridge during 2007 and 2008, and the First Lawsuit all focused on alleged infringement of Clever Factory's legal rights in the "Bible Heroes," "Bible Trivia," "Build-a-Word," and "Puzzle Cards" Flash Card Games and not upon infringements of the "Crazy Eights," "Old Maid," "Go Fish," and "Matching" Flash Card Games. Kingsbridge contends that the first notice from Clever Factory that it considered Kingsbridge's sale and distribution of Old Maid, Crazy Eights, Matching and Go Fish cards and their packaging and instructions to be infringements of Clever Factory's legal rights was a cease-and-desist letter sent to Kingsbridge on September 21, 2011.
Kingsbridge argues that Clever Factory's failure to protect its legal rights related to the Old Maid, Crazy Eights, Matching and Go Fish Flash Card Games prior to September 21, 2011, indicated to Kingsbridge that its continued sale of the Knock Off Flash Card Games in their existing packaging and with the existing instructions was not problematic. Therefore, Kingsbridge contends that CleverFactory should be barred from pursuing its claims in the instant action based on the doctrines of equitable estoppel, acquiescence, waiver, and/or forfeiture. Alternatively, Kingsbridge argues Clever Factory's failure to promptly act to protect its legal rights related to the Crazy Eights, Old Maid, Go Fish, and Matching Flash Card Games should prevent Clever Factory from recovering any damages for activity by Kingsbridge that occurred prior to the filing of the instant lawsuit on December 16, 2011, because of the doctrine of laches and that the applicable statue of limitations for the Plaintiff's various claims limit the recoverable damages in this action. Finally, Kingsbridge contends that Counts III-VII of the Plaintiff's action are pre-empted by the Copyright Act.
A motion for summary judgment is reviewed under the standard that summary judgment is appropriate if "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Rule 56(a) of the Federal Rules of Civil Procedure. See also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A "genuine issue of material fact" is a fact which, if proven at trial, could lead a reasonable jury to return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In considering whether summary judgment is appropriate, the Court must "look beyond the pleadings and assess the proof to determine whether there is a genuine need for trial." Sowards v. Loudon Cnty., 203 F.3d 426, 431 (6th Cir.), cert. denied, 531 U.S. 875, 121 S.Ct. 179, 148 L.Ed.2d 123 (2000). In reviewing a motion for summary judgment, the Court must view the evidence and all inferences drawn from underlying facts "in the light most favorable to the party opposing the motion." See Matsushita Elec. Indus. Co. v. ZenithRadio Corp., Ltd., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Gribcheck v. Runyon, 245 F.3d 547, 550 (6th Cir.), cert. denied, 534 U.S. 896, 122 S.Ct. 217, 151 L.Ed.2d 155 (2001).
The moving party has the burden of showing the absence of genuine factual disputes from which a reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 249-50. However, "[t]he moving party need not support its motion with evidence disproving the non-moving party's claim, but need only show that 'there is an absence of evidence to support the non-moving party's case.'" Hayes v. Equitable Energy Res. Co., 266 F.3d 560, 566 (6th Cir. 2001) (quoting Celotex Corp., 477 U.S. at 325).
"Once the moving party has presented evidence sufficient to support a motion for summary judgment, the nonmoving party is not entitled to trial merely on the basis of allegations; significant probative evidence must be presented to support the complaint." Goins v. Clorox Co., 926 F.2d 559, 561 (6th Cir. 1991). The party opposing the motion for summary judgment may not rely solely on the pleadings but must present evidence supporting the claims asserted by the party. Banks v. Wolfe Cnty. Bd. of Educ., 330 F.3d 888, 892 (6th Cir. 2003). Moreover, conclusory allegations, speculation, and...
To continue reading
Request your trial