Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA327884
`ESTTA Tracking number:
`01/21/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92051381
`Plaintiff
`SecureUSA, Inc.
`Sanford J. Asman
`Law Office of Sanford J. Asman
`570 Vinington Court
`Atlanta, GA 30350
`UNITED STATES
`sandy@asman.com
`Other Motions/Papers
`Sanford J. Asman
`sandy@asman.com
`/sanford j. asman/
`01/21/2010
`Pleadings_in_Civil_Action_1_of_5.pdf ( 71 pages )(3027093 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 10 Filed 07/24/2008 Page 1 of 3
`
`
`Michael Murray (MM5996)
`MILBANK, TWEED, HADLEY & MCCLOY LLP
`1 Chase Manhattan Plaza
`New York, NY 10005-1413
`(212) 530-5000
`mmurray@milbank.com
`Attorneys for Plaintiff
`Universal Safety Response, Inc.
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`Civil Action No. 08-Civ-4851 (LTS)
`
`
`
`
`
`
`
`
`
`UNIVERSAL SAFETY RESPONSE, INC.
` Plaintiff,
`
`
`
` vs.
`
`
`SECURE USA, INC., et al.
` Defendants,
`
`NOTICE OF APPEARANCE
`
`
`
`
`
`
`
`PLEASE TAKE NOTICE that Frank A. Bruno of Milbank, Tweed, Hadley & McCloy
`
`LLP, hereby appears in the above-captioned action as counsel for Plaintiff Universal Safety
`
`Response, Inc. and requests electronic notification of all filings in the above-captioned action
`
`and that all other papers be sent to the address set forth below:
`
`Frank A. Bruno, Esq.
`Milbank, Tweed, Hadley & McCloy LLP
`One Chase Manhattan Plaza
`New York, NY 10005-1413
`212.530.5000
`212.822.5219 (facsimile)
`Email: fbruno@milbank.com
`
`
`
`Dated: July 24, 2008
`
`New York, New York
`
`
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 10 Filed 07/24/2008 Page 2 of 3
`
`MILBANK, TWEED, HADLEY & McCLOY LLP
`
`By: /s/ Frank A. Bruno
` Michael Murray (MM5996)
`
`Frank A. Bruno (FB6255)
` 1 Chase Manhattan Plaza
` New York, NY 10005
` Telephone: (212) 530-5000
` Facsimile: (212) 530-5219
`Attorneys for Plaintiff
`Universal Safety Response, Inc.
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 10 Filed 07/24/2008 Page 3 of 3
`
`
`
`CERTIFICATE OF FILING
`
`I hereby certify that on July 24, 2008, this Notice of Appearance was filed through the
`
`ECF system.
`
`
`
`
`
`
`
`
`
`
`
` /s/ Frank A. Bruno
`
`
`
`
`
`
`
`
`
`
`3
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 11 Filed 07/30/2008 Page 1 of 8
`Case 1:08-cv—04851-LTS—D.CF Document 11
`Filed 07/30/2008
`Page 1 of 8
`
`IN THE UNITED STATES DISTRICT COURT FOR.
`THE SOUTHERN DISRICT OF NEW YORK
`
`UNIVERSAL SAFETY RESPONSE,
`INC.
`
`Plaintiff,
`
`VS.
`
`SECUREUSA, INC., et als
`
`Defendants.
`
`%\./\J\)%/\/\/\./\&%/A
`
`Case No. 08-CIV—4851 LTS
`
`DEFENDANT’S STATEMENT OF INITIAL DISCLOSURE
`
`Pursuant
`to Fed. R. Civ. P. 26(a)(l), defendant SecureUSA,
`Inc.
`(“Defendant” or
`“SUSA”) hereby submits the following Statement of Initial Disclosures (“Statement”l in the
`
`above-captioned matter.
`
`These disclosures are based on information reasonably available and known to Defendant
`as of the date ofthis Statement. By making these disclosures, Defendant does not represent that it
`
`is identifying every document, individual, or other evidence that it may possibly use to support
`
`its positions in this lawsuit. Rather, Defendant has made good faith efforts to identify
`
`information subject to the disclosure requirements of Rule 26(a)(l).‘
`
`'
`
`Defendant will further supplement these disclosures as necessary pursuant to Rule 26(e)
`
`and any Scheduling Order entered by the Court. In addition, by identifying the following
`
`A
`
`individuals and documents, Defendant expressly reserves its rights to object to the admissibility
`
`of all or a portion of a witness’ testimony, or all or a portion of the documents identified.
`
`A. Individuals:
`
`The following is a list of individuals likely to have discoverable information that
`
`Defendant may use to support its defenses, claims, cross—claims, and/or counterclaims based on
`
`Defendant’s investigation to date.
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 11 Filed 07/30/2008 Page 2 of 8
`Case 1:08-cv-04851-LTS-DCF Document 11
`Filed 07/30/2008
`Page 2 of 8
`
`1. All present or former officers, directors, employees, representatives. or agents of
`
`Plaintiff Universal Safety Response, Inc., (“USR”) 277 Mallory Station Road, Suite
`
`112, Franklin, Tennessee 37067 having knowledge or information related to the
`
`instant suit and the matters relevant thereto, including but not limited to:
`
`(a) Matthew A. Gelfand President and CEO
`
`(b) Jerry D. Gibson, Vice President of Projects
`
`(0) Greg I-Iamby
`
`- (cl) Wesley M. Foss —Vice President
`
`(e) Adam Cothron
`
`(t) Howard White
`
`2. All present or former officers, directors employees, representatives or agents of
`
`‘Defendant SecureUSA, Inc., 4250 Keith Bridge Road, Cumming, Georgia 30041
`
`having knowledge or information related to the instant suit and the matters relevant
`
`thereto,
`
`including but not limited to:
`
`(a) Bevan Clark President
`
`(b) Mitch Morgan (former President)
`
`(0) Harford Field, III Director, Sales & Marketing
`
`((1) Ned Harrison
`
`(e) John Spurrier
`
`

`
`Case 1:08-cv—0;t851-LTS—DCF Document 11
`Filed 07/30/2008
`Page 3 of 8
`Case 1:08-cv-04851-LTS-DCF Document 11 Filed 07/30/2008 Page 3 of 8
`
`3. Thomas Niederburger of Capitol Technology Services, Inc. (allegedly “confused”
`
`about the manufacturer of the GRAB system)
`
`4. Frank A. Kelly, Kelly Pioneer Group, LLC, 601 Pennsylvania Avenue, NW
`
`Suite 900, Washington, DC 20004. (USR investigator)
`
`5. Brandon Morgan, independent IT contractor for SUSA.
`
`6. One or more representatives of the state government of the State of Florida.
`
`Tallahassee, Fla, to be identified.
`
`7. One or more representatives of Bank of America, Charlotte, North Carolina
`
`division, to be identified.
`
`8. Any individual
`
`identified by Plaintiff(s) or Defendant(s)
`
`in their respective
`
`pleadings, initial disclosures or discovery, and any materials in support of any
`
`motions,
`
`including but not
`
`limited to: other current and past employees of
`
`Plaintiff(s)
`
`and/or Defendant(s) with relevant
`
`information;
`
`customers of
`
`Plaintiff(s) and/or Defendant(s) with relevant information. The addresses and
`
`telephone numbers of these individuals have not yet been discovered, or the
`
`identity of such individuals has not yet been ascertained.
`
`B. Documents:
`
`The following is a list of documents and e—mail correspondence that Defendant may use
`
`to support
`
`its defenses, claims, cross~claims, and/or counterclaims based on Defendant’s
`
`investigation to date.
`
`1.
`
`Jerry D. Gibson personnel file,
`
`including signed SUSA Employment Agreement and
`
`signed SUSA Employment Handbook.
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 11 Filed 07/30/2008 Page 4 of 8
`Case 1:08-cv—04851-LTS—DCF Document 11
`Filed 07/30/2008
`Page 4 of 8
`
`2. Greg I-Iamby personnel file, including signed SUSA Employment Agreement and signed
`
`SUSA Employment Handbook.
`
`3. Any and all documents, including notes, written correspondence, e-mails, text messages
`
`and other tangible communications between Jerry D. Gibson and Wesley Foss relating to
`
`the December 7, 2005 meeting in Franklin, TN, between Gibson & Foss relative to the
`
`agreement granting SUSA permission to use approved photos of the GRAB sb Barrier
`
`System on SUSA’s website.
`
`4. All documents relating in any way to SUSA’s efforts to market and sell the GRAB
`
`system between December 2005 and February 2007.
`
`5. Any and all documents, including notes, written correspondence, e-mails, text messages
`
`and other tangible communications between SUSA and USR employees relating to the
`
`marketing of the GRAB Barrier System on SUSA’s website.
`
`6. Any and all documents, including notes, written correspondence, e-mails, text messages
`
`and other tangible communications between SUSA and prospective customers relative’-to
`inquiries about the GRAB Barrier system, specifically as to those involving Gibson and
`
`Hamby prior to leaving SUSA.
`
`7. Any and all documents, including notes, written correspondence, e~mails, text messages
`and other tangible communications between SUSA and USR including but not limited to
`
`Foss, Gibson and Hamby relative to Gibson and Hamby’s resignation from SUSA and
`
`employment with US.R.
`
`’
`
`8. Any and all documents, including notes, written correspondence, e-mails, text messages
`
`and other tangible communications between SUSA and USR including but not limited to
`
`Foss, Gibson and I-Iamby relative to USR’s decision in February 2007 to direct SUSA to
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 11 Filed 07/30/2008 Page 5 of 8
`Case 1:08-cv-04851-LTS—DCF Document 11
`Filed 07/30/2008
`Page 5 of 8
`
`withdraw all reference to USR products and company from the SUSA website
`
`and
`
`marketing materials.
`
`All documents relating in any way to SUSA’s removal of reference to the GRAB system
`
`from its website and marketing materials as of February 2007.
`
`All electronic mail to and from Jerry Gibson while employed at SUSA
`
`All electronic mail to and from Greg I-Iamby while employed at SUSA
`
`All “Confidential
`
`Information” as defined by the SUSA employment agreement,
`
`reviewed, created, modified, accessed or used by Gibson while employed by SUSA. ,
`
`10.
`
`ll.
`
`12.
`
`.All “Confidential
`
`Information” as defined by the SUSA employment agreement,
`
`reviewed, created, modified, accessed or used by Hamby while employed by SUSA.
`
`14.
`
`Records of sales calls or solicitations by Gibson on behalf of SUSA between December
`
`1, 2000 — January 26,2007.
`
`15.
`
`Records of sales calls or solicitations by Hamby on behalf of SUSA between December
`
`4, 2001- January 25, 2007."
`
`16.
`
`Records of Requests for Proposals, Invitations to Bids or other contract solicitations to
`
`SUSA fiom December 2000 onwards:
`
`17.
`
`18.
`
`Records reflecting contracts awarded to SUSA from December 2000 onwards.
`
`Records relating to projects for which SUSA’s proposal, bid or proposed contract was
`
`rejected from December 2000 onwards.
`
`19.
`
`Records relating to perimeter security equipment or materials purchased by SUSA from
`
`third party vendors for contracts awarded to SUSA from December 2000 onwards,
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 11 Filed 07/30/2008 Page 6 of 8
`Case 1:08-cv-04851-LTS—DCF Document 11
`Filed 07/30/2008
`Page 6 of 8
`
`SUSA, like USR, agrees that exchange of the parties’ respective documents undertaken pursuant
`
`to a protective order, as the majority of documents that SUSA will rely on are contain
`
`confidential and proprietary information.
`
`C. Damages:
`
`To the extent
`
`that Defendant has, or will, assert any claims, cross—claims, and/or
`
`counterclaiins, Defendant’s damages are as follows.
`
`SUSA employed Jerry D. Gibson (“Gibson”) and Greg Hamby (“Hamby”) pursuant to
`
`written confidentiality agreements. USR induced them to leave SUSA in order to gain access to,
`
`and ultimately misappropriate, certain confidential information Gibson and I-Iamby obtained
`
`during the course of their employment with SUSA. SUSA believes that USR misappropriated
`
`confidential SUSA information in order to obtain contracts from at least two existing SUSA
`
`customers, Bank of America and the State of Florida. SUSA believes that Gibson and/or Hamby
`slandered SUSA in order to divert these clients from SUSA to USR. SUSA also believes that
`
`USR has misappropriated proprietary information concerning SUSA’s crash—engineered bollards
`
`that USR is now wrongfully using to detract business from SUSA.
`
`SUSA has not yet computed the damages it has suffered as a result of the lost sales and loss of
`
`good will caused by USR. Computation of such damages may be based on documents within the
`
`custody of USR. As a result, SUSA is unable to accurately or fairly compute its damages prior to
`
`discovery.
`
`INSURANCE AGREEMENTS
`
`At this time SUSA is not aware of any insurance agreements that may be applicable.
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 11 Filed 07/30/2008 Page 7 of 8
`Case 1:08-cv—04851-LTS—DCF Document 11
`Filed 07/30/2008 ' Page 7 of 8
`
`Respectfully submitted,
`
`CARROLL MCNULTY & KULL LLC
`
`.".
`
`/-
`
`le, Esq. (GL2323)
`.
`"G
`120 Mountain View Boulevard
`P.O. Box 650
`
`Basking Ridge, NJ 07920
`Phone: (908) 848-6300
`Facsimile: (908) 848-6310
`Attorneys for Defendant SecuIeUSA, Inc.
`
`Dated: July 30, 2008
`I
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 11 Filed 07/30/2008 Page 8 of 8
`_ Case 1:08-cv-04851-LTS—DCF Document 11
`Filed 07/30/2008
`Page 8 of 8
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on July 30, 2008, I served the foregoing on counsel for the Plaintiff via
`
`facsimile and electronic mail.
`
`
`
` 1
`/oily
`'1‘e}GL2323)
`
`

`
`Case 1:.08—cv—04851-LTS—DCF Document 12
`Filed 07/30/2008
`Page 1 of 15
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 1 of 15
`
`CARROLL, MCNULTY & KULL L.L.C.
`570 Lexington Avenue 1o“‘ Floor
`New York, New York 10022
`(908) 8486300
`(908) 848-6310 (Fax)
`Attorneys for Defendant SecureUSA, Inc.
`(GL 2323)
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`Civil Act.ion.No. 08—Civ-4851 (LTS)
`
`ANSWER TO COMPLAINT,
`AFFIRMATIVE DEFENSES,
`COUNTERCLAIM & IURY DEMAND
`
`‘
`
`
`
`UNIVERSAL SAFETY RESPONSE, INC.
`Plaintiff,
`
`vs.
`
`
`
`SECUREUSA, 1NC., et als
`
`
`
`
`Defendants,
`
`Defendant SecureUSA, Inc. (“SUSA”), by way of Answer to the Complaint of Plaintiff,
`
`‘Universal Safety Response, Inc. (“USR”), does hereby respond as follows:
`
`THE PARTIES
`
`l.
`
`l\)
`
`SUSA lacks sufficient information as to the truth of the allegations in Paragraph 1,
`
`and leaves USR to its proofs.
`
`SUSA admits the allegationsbin the first sentence. As to the second sentence, SUSA
`
`denies that it has made, used or sold the vehicle barrier system which is the subj ect of
`
`the Complaint, but admits that it offered the subject USR product for sale on its
`
`website for a period of time with USR’s consent. SUSA further states that it is
`
`primarily in the business of a perimeter security consultant and systems integrator, in
`
`which business SUSA regularly recommends and offers to supply and install security
`
`equipment manufactured by third parties.
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 2 of 15
`Case 1:08-cv—04851-LTS—DCF Document 12
`Filed 07/30/2008
`Page 2 of 15
`
`U.)
`
`SUSA denies the allegations contained in Paragraph 3 to the extent SUSA is alleged
`
`to have participated with any “John Doe” defendants to be named in any actions
`
`alleged as violative of USR’s rights in the Complaint.
`
`JURISDICTION
`
`4.
`
`SUSA neither admits nor denies the characterization of the Complaint as same does
`
`not call for a response, but denies that it has infringed on any trademark, copyright or
`
`patent of USR, engaged in any unfair competition or otherwise violated any federal or
`
`state laws.
`
`5.
`
`SUSA neither admits nor denies the allegations in Paragraph 5 as to the issue of
`
`subject matter jurisdiction as same does not call for a factual response, except denies
`
`that there is any merit to any of the claims asserted therein.
`
`6.
`
`SUSA neither admits nor denies the allegations in Paragraph 6 as to the issue of
`
`general personal jurisdiction as same does not call for a factual response, but admits
`
`that it is currently registered with the New York Department of "State to conduct
`
`business in this state.
`
`7.
`
`SUSA denies that this Court has personal jurisdiction over it insofar as SUSA has
`
`never sold or offered for sale any infringing. vehicle barrier in this District or
`
`elsewhere in the United States.
`
`J
`
`8.
`
`Denied.
`
`USR’S TRADEMARKS AND GOODWILL
`
`9.
`
`SUSA lacks sufficient information as to the truth of the allegations in Paragraph 9,
`
`and leaves USR to its proofs.
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 3 of 15
`Case 1:08-cv-04851-LTS—DCF Document 12
`Filed 07/30/2008
`Page 3 of 15
`
`SUSA lacks sufficient information as to the truth of the allegations in Paragraph 10,
`
`and leaves USR to its proofs.
`
`ll.
`
`SUSA lacks sufficient information as to the truth of the allegations in Paragraph 11,
`
`and leaves USR to its proofs.
`
`USR’S COPYRIGHT
`
`SUSA lacks sufficient information as to the truth of the allegations in Paragraph 12,
`
`and leaves USR to its proofs.
`
`SUSA lacks sufficient information as to the truth of the allegations in Paragraph 13,
`
`and leaves USR to its proofs.
`
`USR’S PATENT
`
`SUSA lacks sufficient information as to the truth of the allegations in Paragraph 1,
`
`and leaves USR to its proofs.
`
`FIRST CLAIM FOR RELIEF
`
`SUSA repeats its answers to the allegations contained above.
`
`16.
`
`SUSA lacks sufficient information to form a belief as to the truth of the allegations in
`
`Paragraph 16, and leaves USR to its proofs.
`
`The allegations contained in Paragraph 17 are denied.
`
`The allegations contained in Paragraph 18 are denied.
`
`The allegations contained in Paragraph 19 are denied.
`
`The allegations contained in Paragraph 20.are denied.
`
`The allegations contained in Paragraph 21 are denied.
`
`SECOND CLAIM FOR RELIEF
`
`SUSA repeats its answers to the allegations contained above.
`
`18.
`
`19.
`
`21.
`
`22.
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 4 of 15
`Case 1:08-cv—04851-LTS—DCF Document 12
`Filed 07/30/2008
`Page 4 of 15
`
`23.
`
`The allegations contained in Paragraph 23 are denied.
`
`24.
`
`The allegations contained in Paragraph 24 are denied.
`
`25.
`
`The allegations contained in Paragraph 25 are denied.
`
`26.
`
`The allegations contained in Paragraph 26 are denied.
`
`THIRD CLAIM FOR RELIEF
`
`27.
`
`SUSA repeats its answers to the allegations contained above.
`
`28.
`
`The allegations contained in Paragraph 28 are denied.
`
`29.
`
`The allegations contained in Paragraph 29 are denied.
`
`FOURTH CLAIM FORRELIEF
`
`30.
`
`SUSA repeats its answers to the allegations contained above.
`
`31.
`
`SUSA lacks sufficient information to form a belief as to the truth of the allegations in
`
`Paragraph 31, and leaves USR to its proofs.
`
`32.
`
`As to the allegations contained in Paragraph 32, SUSA admits that it created the
`
`subject flyer which is attached to the Complaint as Exhibit 6, denies that the contents
`
`of the flyer were used without USR’s consent and denies that SUSA is distributing it
`
`to the public or that its contents are posted on the referenced website.
`
`33.
`
`The allegations contained in Paragraph 33 are denied.
`
`.34.
`
`As to the allegations contained in Paragraph 34, SUSA denies that it reproduced the
`
`text and photographs located on the referenced webpage or that it owns the referenced
`
`webpage. SUSA states further that the owner of the website in question, Secure Aus,
`
`is an independent foreign corporation, that the webmaster responsible for maintaining
`
`the secureauscom website, Brandon Morgan, is an independent contractor, not an
`
`owner, director, officer, employee. or agent of SUSA, and that any reproduction by
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 5 of 15
`Case 1:08-cv—04851-LTS—DCF Document 12
`Filed 07/30/2008
`Page 5 of 15
`
`Mr. Morgan of GRAB brochure text or photographs on the sec7.ufeaus.com website
`
`was purely inadvertent and Was immediately removed by Mr. Morgan when it was
`
`brought to his attention.
`
`35.
`
`The allegations contained in Paragraph 35 are denied.
`
`36.
`
`37.
`
`38.
`
`The allegations contained in Paragraph 36 are denied.
`
`The allegations contained in Paragraph 37 are denied.
`
`FIFTH CLAIM FOR RELIEF
`SUSA repeats its answers to the allegations contained above.
`
`39.
`
`The allegations contained in Paragraph 39 are denied.
`
`40.
`
`The allegations contained in Paragraph 40 are denied.
`
`41.
`
`The allegations. contained in Paragraph 41 are denied.
`
`42.
`
`The allegations contained in Paragrapli 42 are denied.
`
`43.
`
`The allegations contained in Paragraph 43 are denied.
`
`SIXTH CLAIM FOR RELIEF
`
`44.
`
`45.
`
`SUSA repeats its answers to the allegations contained above.
`
`The allegations contained in Paragraph 45 are denied.
`
`46.
`
`The allegations contained in Paragraph 46 are denied.
`
`47.
`
`The allegations contained in Paragraph 47 are denied.
`
`48.
`
`49.
`
`The allegations contained in Paragraph 48 are denied.
`
`The allegations contained in Paragraph 49 are denied.
`
`SEPARATE & AFFIRMATIVE DEFENSES
`
`Defendant SUSA, by way of separate and affirmative defenses, says as follows:
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 6 of 15
`Case 1:08-cv—04851-LTS—DCF Document 12
`Filed 07/30/2008
`Page 6 of 15
`
`FIRST AFFIRMATIVE DEFENSE
`
`The Complaint fails to state a claim upon which relief can be granted.
`
`SECOND AFFIRMATIVE DEFENSE
`
`This action is barred, in whole or in part, by the doctrines of waiver, estoppel and laches.
`
`THIRD AFFIRMATIVE DEFENSE
`
`USR’s claims are barred by its own unclean hands, unfair trade practices, interference
`
`with SUSA’s contractual relations, interference with SUSA’s prospective business advantages,
`
`unauthorized use of confidential, proprietary information and other unlawful business practices
`
`committed in conspiracy and active participation with former SUSA employees Jerry Gibson
`
`and Greg Hamby.
`
`FOURTH AFFIRMATIVE DEFENSE
`
`SUSA’s limited promotion of USR’s GRAB System on its website and through literature
`
`was incapable of creating consumer confusion insofar as SUSA did not
`
`attempt to market,
`
`advertise, promote, offer for sale or sell any net vehicle barrier system other than USR’s GRAB
`
`system during the time period in which SUSA was promoting USR’s GRAB system on the
`
`SUSA website.
`
`FIFTH AFFIRMATIVE DEFENSE
`
`This Court lacks personal jurisdiction over SUSA.
`
`SIXTH AFFIRMATIVE DEFENSE
`
`USR’s claims are barred as the result of its breach of the implied covenant of good faith
`
`and fair dealing as to the agreement reached in December 2005 granting SUSA permission to
`
`promote and market USR’s GRAB system on SUSA’s website and in brochures.
`
`

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`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 7 of 15
`Case 1:08-cv—04851-LTS—DCF Document 12
`Filed 07/30/2008
`Page 7 of 15
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`SEVENTH AFFIRMATIVE DEFENSE
`
`To the extent that the Complaint seeks to hold SUSA liable for activities ensuing from
`
`the lawful exercise of its rights of free association and free speech guaranteed by the First
`
`Amendment of the Constitution of the United States, the claims are invalid‘ and should be
`
`dismissed,
`
`COUNTERCLAIM
`
`Defendant SUSA, by way of Counterclaim against USR, says as follows:
`
`1.
`
`SUSA is a corporation of the state of Georgia, maintaining its principal place of business
`
`at 4250 Keith Bridge Road, Cumming, Georgia 30041. Since
`
`1999, SUSA has been an
`
`international leader in the business of perimeter defense consulting, project design, multi-vendor
`
`supply and installation as well as service and maintenance of all available barrier systems in the
`
`marketplace.-
`
`2.
`
`As a result of SUSA’s long-standing experience, leadership and innovation in this field,
`
`SUS A has developed an extensive worldwide base of governmental and private customers.
`
`3.
`
`Upon information and belief, USR is a designer and manufacturer of vehicle barrier
`
`systems, including but not limited to a net vehicle barrier system known as the “GRAB” system.
`
`SUSA’s Employment of Jerg; Gibson & Greg Hamby‘
`
`4.
`
`From December 1, 2000 until January 26, 2007, Jerry Gibson was employed by SUSA as
`
`a Project Manager, Account Manager, Director of Contracts & Customer Liaison, Director of
`
`Sales and Marketing and Director of Strategic Development.
`
`5.
`
`From December 4, 2001 until January 24, 2007, Greg Hamby was employed by SUSA as
`
`a Field Technician, Service Manager and Account Manager.
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 8 of 15
`Case 1:08-cv—04851-LTS—DCF Document 12
`Filed 07/30/2008
`Page 8 of 15
`
`6.
`
`Upon their employment with SUSA, Messrs. Gibson and I-Iamby received an Employee
`
`Handbook, a copy of which is attached as Exhibit “A”. In pertinent part, the handbook contained
`
`the following provision:
`
`CONFIDENTIAL INFORMATION
`
`Employees may, by virtue of their employment with the Company, obtain access to
`sensitive, confidential, restricted and proprietary information about the Company not generally
`known or made available to the public or competitors and which the Company has made
`reasonable efforts to keep confidential, including but not limited to financial records, customer or
`Vendor records and files, referral or mailing lists, credit card numbers and similar information
`whether stored electronically or as documents.
`
`Such confidential information shall be used solely by employees in the performance of
`their job duties for the Company and shall not be used in any other manner whatsoever during
`their employment. Employees shall not without the prior written consent of the Company use,
`disclose, divulge, or publish to others any such confidential information acquired in the course of
`their employment. Such confidential information is the exclusive property of the Company and
`under no ‘circumstances whatsoever shall employees have any rights to use, disclose or publish to
`others such confidential information subsequent to the termination of their employment.
`
`Unauthorized use or disclosure of confidential
`
`information
`
`in discipline, up to and including immediate
`may result
`discharge, prosecution, or other available action.
`
`Upon termination of employment, employees must deliver to the Company any and all
`confidential
`information whether stored electronically or as a document,
`including but not
`limited to all copies of such documents prepared or produced in connection with their
`employment with the Company that pertain to the Company’s business or the employee’s
`services for the Company, whether made or compiled by the employee or furnished to the
`employee in connection with such seivices to the Company.
`In addition, at
`termination,
`employees must return to the Company all of the Company’s non—conf1dential property,
`documents, or electronic information.
`
`This policy does not limit the common law and statutory rights of the Company.
`
`7.
`
`On or about April 21, 2003, SUSA updated its written employment agreements with its
`
`employees, including Gibson and Hamby. Copies of the agreements executed by Gibson and
`
`Hamby are attached hereto as Exhibit “B”.
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 9 of 15
`Case 1:08-cv-04851-LTS—DCF Document 12
`Filed 07/30/2008
`Page 9 of 15
`
`8.
`
`The agreements entered into by Messrs. Gibson and Hamby contain the following
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`covenants with respect to non—disclosure of confidential information acquired during the course
`
`of their employment with SUSA:
`
`DISCLOSURE OF CONFIDENTIAL INFORMATION. During the course of
`performing employment duties, Company, partner, business partners and/or client
`may disclose to Employee, or Employee may observe, certain Company, partner
`and/or client and proprietary information and/or techniques, in connection with
`carrying out the Purpose, including, but not limited to, technical and business
`information, processes, security methods,
`techniques,
`trade secrets, programs,
`vendor and potential vendor information, the nature of its business operations and
`its specialized requirements, intended uses of Company and pai'tner’s services,
`which information may be oral, written, machine readable, visual, conceptual or
`not otherwise embodied in written or
`tangible form (all of the foregoing
`hereinafter referred to as “Confidential Information”). To protect Company,
`partner and/or client confidential information and to not compromise its past,
`present, or future business development, Company, partner and Employee agree
`that
`the following procedures are applicable to any and all disclosures of
`Confidential Information by Company.
`
`(a) If Confidential Information is disclosed under Section
`CONFIDENTIALITY.
`1, Employee agrees that
`it shall keep the Confidential Information in strict
`confidence.
`Internal dissemination of the Confidential Information shall be
`limited to only those employees whose duties justify their need to know such
`Confidential Information, and who are under a legal obligation to maintain the
`Confidential Information in the strictest confidence.
`
`indirectly use any such Confidential
`Employee will not directly or
`(b)
`Information for any purpose other than the Purpose specifically contemplated
`hereunder, nor shall Employee make reproductions or copies of any portion of
`Confidential Information, or disseminate or disclose, orally or in writing, any
`Confidential Information to any third party, without the prior written consent or
`Company.
`
`Upon Company written demand, Employee shall return to Company all
`(c)
`documents or other
`tangible materials provided in connection with this
`Agreement, and Employee shall not retain any abstracts, copies, extracts, or other
`reproductions, in whole or in part, of such Confidential Information. Further,
`’ Employee shall destroy all memoranda, notes and other writings in its possession
`based on the Confidential Information.
`
`Any and all documents created by Employee for Company, including but
`(cl)
`limited to blueprints, and other design documents, shall be considered
`not
`Company°s Confidential Information and shall be subject to Section 2 (d) above.
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 10 of 15
`Case 1:08-cv—04851-LTS—DCF Document 12
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`Page 10 of 15
`
`9.
`
`The subject employment agreements entered into by Gibson and Hamby also contained a
`
`non—cor_npete clause which provided as follows:
`
`Employee hereby agrees that due to the
`NON COMPETE.
`technical
`training and confidential
`information provided by
`Company during the course of employment, as per section 2, not to
`enter into any employment, business venture or like that in any
`way could be termed competitive with Company or partners, for a
`period of one year from the termination of this employment
`agreement, for any cause whatsoever.
`
`SUSA’s Relationship’ With USR
`
`10.
`
`On December 15, 2005, SUSA received written permission from USR to promote,
`
`advertise and market the USR GRAB system on SUSA’s website, with the understanding that
`
`SUSA would purchase the GRAB system from USR for customers contracting SUSA to supply
`
`and install the GRAB system.
`
`11.
`
`Jerry Gibson was responsible for negotiating this agreement on behalf of SUSA with
`
`USR Vice President Wes Foss.
`
`12.
`
`On or about January 26, 2007, Jerry Gibson gave notice of his resignation fiom SUSA
`
`and requested that SUSA waive the non—compete clause in his employment agreement so that he
`could go to work for USR. SUSA’s then President, Mitch Morgan, gave Gibson permission to
`
`go to work for USR provided that he did not disclose to USR Confidential Information acquired
`during his employment with SUSA. Mr. Morgan did so consent based upon Mr. Gibson’s
`
`representation that he would strengthen the relationship between SUSA and USR.
`
`13.
`
`On or about January 24, 2007, Greg Hamby gave notice of his resignation from SUSA
`
`and indicated that he was going to open a business with his brother in a non—co1npetitive field.
`
`However, upon information and belief, Mr. Hamby also went to work for USR shortly after
`
`resigning from SUSA.
`
`'10
`
`

`
`Case 1:08-cv-04851-LTS-DCF Document 12 Filed 07/30/2008 Page 11 of 15
`Case 1:08-cv—04851-LTS—DCF Document 12
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`Page 11 of 15
`
`14.
`
`On February 15, 2007, little over one month after Messrs. Gibson and Hamby went to
`
`work for USR, USR’s Vice President, Wes Foss, sent two e~mails to Mitch Morgan requesting
`
`that SUSA remove all references to USR materials or the company from web sites and marketing
`
`brochures. The reason proffered by Mr. Foss was that several clients of USR had been
`
`“mistakenly confused that SecureUSA is able to provide them with USR products or services.”
`
`15.
`
`In response to Mr. Foss’ e-mails, Mr. Morgan replied via e~mail on that same date: “I
`
`guess I am confused as well. My feedback from Jerry [Gibson] and Russell was that USR was
`
`prepared to give SecureUSA a better discount on our next order in order to make it more
`
`profitable for SecureUSA to move USR product?” Mr. Morgan was understandably confused
`
`since SUSA had not sold or offered to sell or install any net vehicle barrier systems other than
`
`the USR GRAB system. However, Mr. Morgan never received a response to his e-mail nor was
`
`SUSA ever advised by USR that SUSA could no longer offer the GRAB system for sale as a
`
`normal industry vendor.
`
`16.
`
`Upon information and belief, USR retracted the agreement with SUSA reached in"
`
`December 2005 because Messrs. Gibson and/or Hamby provide