Clever Factory, Inc. v. Kingsbridge Int'l, Inc.
| Decision Date | 16 May 2014 |
| Docket Number | NO. 3:11-1187,3:11-1187 |
| Court | U.S. District Court — Middle District of Tennessee |
| Parties | THE CLEVER FACTORY, INC. v. KINGSBRIDGE INTERNATIONAL, INC., et al. |
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 partial summary judgment filed by Defendants Kingsbridge International, Inc. and Rite Aid Corporation (Docket Entry No. 140). Also before the Court is the Plaintiff's motion for reconsideration (Docket Entry No. 148) of the Court's Order entered January 14, 2014 (Docket Entry Nos. 138-139), denying the Plaintiff's own motion for partial summary judgment (Docket Entry No. 60).
The factual background of this action is fully set out in the Court's Memorandum entered September 25, 2014 (Docket Entry No. 129), and need not be recounted herein. A summary of the background is as follows.
Clever Factory, Inc. ("Clever Factory") has all ownership interests in and holds copyright 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 December 16, 2011, Clever Factory brought this action against Kingsbridge International, Inc. ("Kingsbridge") and Rite Aid Corporation ("Rite Aid") seeking injunctive relief and damages.1 Clever Factory alleges that, during 2011, Kingsbridge sold or distributed for sale 260,000 sets of "Crazy Eights," "Old Maid," "Go Fish," and "Matching" flash card games ("Knock-off 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 the Defendants' actions caused it injury and violated its legal rights. Specifically, Clever Factory asserts seven counts: 1) copyright infringement in violation of17 U.S.C. § 501 (the "Copyright Act"); 2) false designation of origin and unfair competition in violation of 15 U.S.C. § 1125(a) of the Lanham Act (the "Lanham Act"); 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) and Amended Complaint (Docket Entry No. 82).2
Kingsbridge initially moved for summary judgment arguing that Clever Factory failed to protect its legal rights related to the Old Maid, Crazy Eights, Matching and Go Fish Flash Card Games prior to September 21, 2011, and, thus indicated to Kingsbridge that its continued sale of the Knock Off Flash Card Games in its existing packaging and with the existing instructions was not problematic. Kingsbridge contended that Clever Factory's claims were barred by the doctrines of equitable estoppel, acquiescence, and forfeiture, that the damages claims were barred due to laches and/or implied waiver or were limited by the applicable statute of limitations, and that Counts III-VII were preempted by the Copyright Act to the extent that they were brought under state law. See Docket Entry No. 53. By Memorandum and Order entered September 24, 2013 (Docket Entry Nos. 129 and 130), the Court denied Kingsbridge's motion for summary judgment in all respects except as to Count V, which was dismissed as preempted by the Copyright Act.
Clever Factory also moved for partial summary judgment arguing that the uncontested evidence showed that Kingsbridge undisputedly distributed and sold products that it knew infringed upon Clever Factory's protected copyrights and, thus, partial summary judgment should be entered in favor of Clever Factory on the issue of liability under the Copyright Act. See Docket Entry No. 60. By Memorandum and Order entered January 14, 2014 (Docket Entry Nos. 138 and 139), the Court denied Clever Factory's motion for partial summary judgment, finding that Clever Factory had not supported its motion in a sufficient manner to warrant granting partial summary judgment in its favor on the issue of liability under the Copyright Act.
In their second motion for summary judgment, Kingsbridge and Rite Aid seek partial summary judgment arguing that: 1) Clever Factory is barred from an award of statutory damages and attorney's fees under the Copyright Act and may only seek actual damages because the alleged infringements commenced prior to Clever Factory's registrations; and 2) Clever Factory's claims for trade dress infringement under the Lanham Act, unfair competition, dilution, and violations of the TCPA should be dismissed as a matter of law because genuine issues of material fact do not exist on these claims. In support of their motion, the Defendants rely on their Statement of Undisputed Facts (Docket Entry No. 144), the Declaration of Edward R. Schwartz (Docket Entry No. 146), and the declarations and attached exhibits thereto of Robert Sommer (Docket Entry No. 140-3 to 140-8), Paul Foster (Docket Entry No. 140-1), and Nancy Bortz (Docket Entry No. 140-2).
In response to the Defendants' argument regarding damages under the Copyright Act, Clever Factory argues that the infringements at issue in the instant action occurred in 2011 and aresufficiently removed from the 2007 infringements so as to constitute new and separate infringements that can support an award of statutory damages and attorney's fees under the Copyright Act. With respect to the arguments for summary judgment on its remaining claims, Clever Factory argues that genuine issues of material fact exist as to each of these claims that requires the denial of summary judgment. See Memorandum in Opposition (Docket Entry No. 155). In support of its response, Clever Factory relies on the declarations and attached exhibits thereto of Andy Hyde (Docket Entry No. 150) and Tedd Levine (Docket Entry No. 151) and its response to the Defendants' Statement of Undisputed Facts (Docket Entry No. 156).
Clever Factory argues that Defendant Kingsbridge, in its recently filed motion for partial summary judgment and supporting declaration of Robert Sommer, has unequivocally admitted to having copied and sold game cards that are identical to the Flash Game Cards that are protected by valid copyright registrations owned by Clever Factory. Thus, Clever Factory argues that, pursuant to Rule 54(b) of the Federal Rules of Civil Procedure, the Court should reconsider its prior finding that genuine issues of material fact exist on the Copyright Act claim and should grant summary judgment to Clever Factory on the issue of Kingsbridge's liability under the Copyright Act. See Memorandum in Support (Docket Entry No. 152). In support, Clever Factory relies upon the declarations and attached exhibits thereto of Andy Hyde and Tedd Levine.
In response, Kingsbridge contends that Clever Factory does not rely upon a change in the law or "new evidence" in support of its request for reconsideration but merely presents essentially a re-argument of its original motion. Accordingly, Kingsbridge asserts that Clever Factory has notsatisfied the standards required for reconsideration of the Court's prior ruling that genuine issues of material fact existed on the issue of Kingsbridge's liability under 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. Zenith Radio 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...
To continue reading
Request your trial