United States District Court, E.D. Michigan, Southern Division
OPINION AND ORDER GRANTING DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND DENYING PLAINTIFFS' MOTION FOR
H. CLELAND UNITED STATES DISTRICT JUDGE.
three years ago, Plaintiffs brought suit against Defendant
Zoom TV Products (“Zoom TV”) for patent
infringement and breach of contract. That case settled a year
later, but its saga was not yet complete; now before the
court is Plaintiffs' action against Zoom TV and its
marketing affiliate, Defendant Ideavillage Products
Corporation (“Ideavillage”), for breach of the
settlement agreement and trademark and patent infringement.
Defendants and Plaintiffs have filed cross motions for
summary judgment. (Dkt. ##61, 62.) The motions are fully
briefed, and the court has determined that a hearing is
unnecessary. E.D. Mich. L.R. 7.1(f)(2). For the following
reasons, Defendants' motion will be granted, and
Plaintiffs' motion will be denied.
to the court's scheduling order (Dkt. #33), neither
motion begins with a statement of material
facts. The court, therefore, relies on the
complaint to set forth the factual background of this case.
David Hanson invented a product that allows users to create
stuffed food-most especially, stuffed hamburgers. He obtained
a patent for his efforts, which was assigned to his company,
Plaintiff Wesley Corporation. (Dkt. #1-3.) Wesley Corporation
also owns the federally-registered trademark “STUFZ,
” which it uses in the distribution and sales of
Hanson's product. (Dkt. #1-2; Hanson Decl., Dkt. #68 Pg.
2015, Plaintiffs brought suit against Zoom TV. Plaintiffs
alleged that they had entered into a licensing agreement with
Zoom TV whereby Zoom TV would have the right to manufacture
and sell the “Stufz” food maker-and use the
“Stufz” mark- while paying royalties. See
Wesley Corp. v. Zoom TV Prods., 15-12449 (Cleland, J.).
According to Plaintiffs, after the licensing agreement was
amended to account for Plaintiffs' new product
(“Stufz Sliders”), Zoom TV breached the
agreement. Plaintiffs sought to hold Zoom TV liable for
patent infringement and breach of contract.
case ended in a settlement agreement dated July 22, 2016.
(Dkt. #1-1.) Relevant here, the agreement provided that Zoom
TV and Ideavillage would “immediately cease all sales,
advertising and promotion of Stufz and/or Stufz Sliders
products (the ‘Products'), [including] any website
activities and/or advertisement.” (Dkt. #1-1 Pg. ID
14.) The agreement further provided that those products that
had already been sold to third parties-and for which a
royalty had been paid-“shall remain in the marketplace
and not subject to the foregoing as WESLEY's rights have
been exhausted on those particularly [sic] products based on
the royalty paid.” (Id.) The agreement also
contemplated the existence of “any molds, tools, or
other materials designed to manufacture the Products.”
(Id.) According to the agreement, “[t]o the
extent that such Tooling exists, ZOOM and IDEA VILLAGE shall
advise third-party Well-Bra[i]n, to either deal with WESLEY
exclusively or promptly destroy all Tools and provide a
certificate of destruction if such Tooling is or has been
destroyed.” (Id. at Pg. ID 14-15.)
settlement agreement was not the end of the matter.
Plaintiffs filed suit in January 2017, alleging that Zoom TV
and Ideavillage have breached the terms of the settlement
agreement and infringed on Plaintiffs' patent and
trademarks. In particular, Plaintiffs allege that Defendants
breached the agreement by continuing to sell, advertise, and
promote “Stufz” products via “buystufz.com,
” a website Defendants owned and controlled. And,
Plaintiffs say, the continued use of the website constitutes
trademark infringement. Plaintiffs further claim that
Defendants also took no action to destroy tooling used to
make the Stufz products.
judgment is proper “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.” Fed.R.Civ.P.
56(a). “In deciding a motion for summary judgment, the
court must view the evidence in the light most favorable to
the non-moving party, drawing all reasonable inferences in
that party's favor.” Sagan v. United
States, 342 F.3d 493, 497 (6th Cir. 2003).
movant has the initial burden of showing the absence of a
genuine dispute as to a material fact. Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). The burden then
shifts to the nonmovant, who must put forth enough evidence
to show that there exists “a genuine issue for
trial.” Horton v. Potter, 369 F.3d 906, 909
(6th Cir. 2004) (citation omitted). It is the parties'
responsibility to support their factual assertions by
citation to the record; the court is under no obligation to
search for materials in the record uncited by the parties.
move for summary judgment as to all of Plaintiffs'
claims. According to Defendants, there is no evidence that
they breached the terms of the settlement agreement. As to
Plaintiffs' allegations of patent and trademark
infringement, Defendants say that these claims were released
by the settlement agreement, and that these allegations
similarly lack supporting evidence. Plaintiffs both respond
and move for summary judgment on the basis that screenshots
of Defendant's website “buystufz.com” show
that Defendants continued marketing of Plaintiffs'
products without permission.
Breach of the ...