Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA863986
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`Filing date:
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`12/11/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92062811
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`Party
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`Correspondence
`Address
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`Defendant
`The Leaderâ##s Institute, LLC
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`S ROXANNE EDWARDS
`KLEMCHUK LLP
`8150 NORTH CENTRAL EXPRESSWAY10TH FLOOR
`DALLAS, TX 75206
`UNITED STATES
`Email: roxanne.edwards@klemchuk.com, ipdocketing@klemchuk.com
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Other Motions/Papers
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`S. Roxanne Edwards
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`Roxanne.edwards@klemchuk.com
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`/S. Roxanne Edwards/
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`12/11/2017
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`Attachments
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`2017.12.11_Motion to Resume and Enter Judgment .pdf(311590 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Magnovo Training
`Group, LLC
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`Cancellation No. 92062811
`Reg. Nos. 4,542,884 and 3,535,706
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`Petitioner,
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`v.
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`The Leader’s Institute, LLC
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`Registrant.
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`_____________________________ )
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`REQUEST TO RESUME PROCEEDINGS
`AND ENTER JUDGMENT
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`Pursuant to T.B.M.P §510.02(B), The Leader’s Institute, LLC (“Registrant”)
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`hereby notifies the Board of an Order issued in the civil action that occasioned
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`suspension of this proceeding and disposes of the issues involved this proceeding, and
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`hereby requests that the petition for cancellation of the subject registrations be denied
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`and judgment be entered in Registrant’s behalf.
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`1. On December 21, 2015, the Board granted Registrant’s Consent Motion
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`to Suspend this proceeding pending the disposition of a civil action between the parties,
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`specifically, The Leader’s Institute, LLC, et al v. Magnovo Training Group, LLC, et al,
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`N.D. Tex. Civil Action No. 3:14-CV-3572-B (the “Civil Action”).
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`2. On or around May 2017, Registrant moved for partial summary judgment
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`in the Civil Action requesting that the court enter summary judgment in its favor on
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`Magnovo Training Group, LLC’s (“Petitioner”) counterclaim, among others, for
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`cancellation of the subject registrations.
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`3. On November 22, 2017, the Court in the Civil Action issued a
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`Memorandum Opinion and Order granting Registrant’s motion for summary judgment
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`on Petitioner’s cancellation claim (See Exhibit 1).
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`4. As a result of the decision in the Civil Action, Registrant respectfully
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`requests that Petitioner’s petition for cancellation be denied, this proceeding be
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`dismissed with prejudice, and judgment be entered in Respondent’s behalf.
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` Dated: December 11, 2017
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`Respectfully Submitted
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` /S. Roxanne Edwards/
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`S. Roxanne Edwards
`KLEMCHUK LLP
`8150 North Central Expressway
`10Th Floor
`Dallas, Texas 75206
`roxanne.edwards@klemchuk.com
`Telephone: (214) 367.6012
`Facsimile: (214) 367.6001
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`Attorneys For Registrant
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`Page 2 of 3
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`PROOF OF SERVICE
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`The undersigned hereby certifies that a copy of this REGISTRANT’S REQUEST TO
`RESUME PROCEEDINGS AND ENTER JUDGMENT has been served upon all
`parties, at their email address of record by agreement on this 11th day of December, 2017.
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`By: /S. Roxanne Edwards/
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`Page 3 of 3
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` Case 3:14-cv-03572-B Document 195 Filed 11/22/17 Page 1 of 30 PageID 5238
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`EXHIBIT 1
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
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`§ § §
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`§ §
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`§ CIVIL ACTION NO. 3:14-CV-3572-B
`§
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`THE LEADER’S INSTITUTE, LLC, and
`DOUG STANEART,
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` Plaintiffs,
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`v.
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`§ § §
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`§
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`ROBERT JACKSON, and MAGNOVO
`TRAINING GROUP, LLC,
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` Defendants.
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`MEMORANDUM OPINION AND ORDER
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`This intellectual-property dispute arises between competitors in the team-building industry.
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`Defendant Robert Jackson worked for Plaintiff The Leadership Institute (TLI), but now he works
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`for Defendant Magnovo Training Group (Magnovo). Jackson’s departure from TLI triggered this
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`controversy because TLI and its owner, Plaintiff Doug Staneart, believe Jackson absconded with vital
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`trade secrets and that Jackson and Magnovo are using TLI’s federally registered trademarks. Jackson
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`and Magnovo respond that Staneart and TLI have abused the legal process, defamed Jackson, and
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`infringed Magnovo’s federally registered copyrights, and they ask the Court to cancel TLI’s
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`trademarks. Robert Jackson1 seeks partial summary judgment on the plaintiffs’ claims against him,
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`and the plaintiffs seek partial summary judgment on the defendants’ equitable defenses and
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`counterclaims. The Court DENIES Jackson’s motion for partial summary judgment (Doc. 180) and
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`GRANTS in part and DENIES in part the plaintiffs’ motion for partial summary judgment (Doc.
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`1 Magnovo has not moved for summary judgment on any of the plaintiffs’ claims against it.
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`- 1 -
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` Case 3:14-cv-03572-B Document 195 Filed 11/22/17 Page 2 of 30 PageID 5239
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`177).
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`A.
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`Factual Background
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`I.
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`BACKGROUND2
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`Doug Staneart created TLI, which, since 2002, has been in the business of organizing
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`corporate charity events and conducting corporate-leadership, team-building, and public-speaking
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`seminars. Doc. 30, Fourth Am. Compl., ¶¶ 29–30. For example, TLI conducts build-a-bike
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`events—to which businesses pay to send their employees for the opportunity to work together to
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`build bicycles that are donated to charity. Id. at ¶¶ 30–32. The experience simultaneously promotes
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`team work and charitable giving. Id. at ¶ 31.
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`Staneart registered “Build-A-Bike” and “BUILD-A-BIKE” as service marks3 with the United
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`States Patent and Trademark Office (USPTO) and subsequently assigned the build-a-bike marks to
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`TLI. Id. at ¶¶ 32–34. The USPTO put the marks on the Supplemental Register4 on November 18,
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`2008, Doc. 179-2, App’x to Pls.’ Mot. Partial Summ. J., Ex. 1, 47, and on the Principal Register5 on
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`June 3, 2014. Id. at 49. The plaintiffs have attempted to protect their trademark rights by sending
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`cease-and-desist letters, Doc. 179-12, App’x to Pls.’ Mot. Partial Summ. J., Ex. 11, 226, 271; Doc.
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`2 This factual history is drawn from the plaintiffs’ Fourth Amended Complaint, the defendants’ First
`Amended Answer and Counterclaims, and the parties’ briefing on the pending motions for summary
`judgment. The Court has noted when facts are in dispute.
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`3 The Court will refer to TLI’s registered marks as the “build-a-bike marks.”
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`4 The “supplemental register” contains marks “capable of distinguishing applicant’s goods or services
`and not registrable on the principal register.” 15 U.S.C. § 1091(a).
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`5 The “principal register” contains marks that have actually become distinctive. 15 U.S.C. § 1052(f).
`A mark is distinctive if consumers associate it with a particular source. 1 Trademark Registration Prac. § 7:9.
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`- 2 -
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` Case 3:14-cv-03572-B Document 195 Filed 11/22/17 Page 3 of 30 PageID 5240
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`30, Fourth Am. Compl., ¶ 89, and by recovering internet domain names resembling the build-a-bike
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`marks, Doc. 179-10, App’x to Pls.’ Mot. Partial Summ. J., Ex. 9. TLI also filed a lawsuit alleging
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`trademark infringement against a company TLI thought was using the build-a-bike marks. Doc. 186-
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`23, App’x to Defs.’ Summ. J. Resp., Ex. W.
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`The plaintiffs claim also to have spent substantial time, labor, and money in the development
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`of trade secrets—namely, customer lists. Doc. 30, Fourth Am. Compl., ¶¶ 39–41. On TLI’s customer
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`lists are over 400 Fortune 500 companies and contacts at those companies the plaintiffs say are
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`“extremely difficult and costly to identify.” Id. at ¶¶ 42–43. TLI keeps its customer lists secret by
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`storing them on a password-protected internal system. Id. at ¶ 46. Only employees with a specific
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`need can access TLI’s customer list, and TLI’s employees and independent contractors agree to non-
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`compete clauses prohibiting them from using TLI’s customer lists within fifteen months after they
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`leave TLI. Id. at ¶¶ 47–48.
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`Robert Jackson began to teach seminars for TLI in December 2006 as an independent
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`contractor. Doc. 30, Fourth Am. Compl., ¶ 52. Between then and January 2009, Jackson conducted
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`public-speaking seminars for TLI and became TLI’s Vice President of Instruction. Id. But in January
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`2009, TLI terminated its relationship with Jackson because it believed Jackson was operating a
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`company called Magnovo6 in direct competition with TLI. Id. at ¶ 54. Jackson nonetheless returned
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`in September, October, and November 2010, asking to rejoin TLI as an independent contractor. Id.
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`at ¶¶ 55–57. In November 2010, Staneart offered Jackson the opportunity to conduct a TLI seminar.
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`Id. at ¶ 57. Jackson agreed to become an independent contractor, and the plaintiffs allege that he
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`6 This entity is the predecessor to Defendant Magnovo.
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` Case 3:14-cv-03572-B Document 195 Filed 11/22/17 Page 4 of 30 PageID 5241
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`signed an independent-contractor agreement that stated
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`Any client list developed through advertising or marketing from TLI,
`the course materials and instructional techniques used, and the
`goodwill generated by this client list and instruction materials and
`techniques are the intellectual property of TLI. So by approving to the
`terms of this agreement, you also agree not to use the client list
`developed by you while working as an agent of TLI, or client lists
`developed by other TLI instructors, to compete with TLI for a period
`of 18 months after the termination of this agreement.
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`Id. at ¶¶ 58–60. Jackson claims he never signed this agreement. Doc. 180, Robert Jackson’s Mot.
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`Partial Summ. J., ¶ 5.7
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`The plaintiffs allege that Jackson wronged them in various ways after he signed the agreement
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`but before8 he left TLI in August 2013—a time period during which Jackson could access TLI’s
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`customer lists. Doc. 188-5, App’x to Pls.’ Summ. J. Resp., Ex. D, 33–34. While under agreement with
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`TLI, Jackson solicited TLI’s customers for business and invoiced them for seminars he would teach
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`in August 2013 after leaving TLI. Doc. 188-6, App’x to Pls.’ Summ. J. Resp., Ex. E, 56, 66–69, 82,
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`88, 90, 92. According to TLI, Jackson even emailed Colette Martin, who also left TLI for Magnovo,
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`a compilation of TLI’s customer-contact information. Doc. 188-2, App’x to Pls.’ Summ. J. Resp., Ex.
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`A.
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`Jackson denies the plaintiffs’ allegations. He says he never copied, downloaded, or used TLI’s
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`customer or pricing information to compete with TLI while under agreement with TLI. Doc. 151,
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`7 Jackson has not raised the absence of a contract as a ground for summary judgment on the plaintiffs’
`contract claim. See Doc. 180, Robert Jackson’s Mot. Partial Summ. J., ¶¶ 32–33 (discussing only the breach
`element of the plaintiffs’ contract claim). Whether Jackson signed the contract is thus irrelevant.
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`8 The plaintiffs also complain about conduct that occurred after Jackson left TLI, but these claims
`are not at issue in the parties’ current motions.
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` Case 3:14-cv-03572-B Document 195 Filed 11/22/17 Page 5 of 30 PageID 5242
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`App’x to Robert Jackson’s Mot. Partial Summ. J., 2. Rather, Jackson says Magnovo developed
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`websites and invested in search-engine optimization to gain clients. Id. at 4. Regarding Novartis and
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`Royal Caribbean, Jackson admits to agreeing to do presentations for them while he was still under
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`agreement with TLI but says the companies came to him; he claims not to have actively sought
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`speaking engagements with them while he was with TLI. Id. at 2–4. Jackson claims also that his
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`friend Bert Von Mitendorf introduced him to Larry Pimental, who worked for cruise lines including
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`Royal Caribbean, and that Pimental asked Jackson to provide workshops to the cruise lines. Id.
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`Jackson also complains that statements Staneart made to others, including Colette Martin, regarding
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`Jackson’s alleged use of TLI’s trade secrets defamed him. Doc. 186-1, App’x to Robert Jackson’s Mot.
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`Partial Summ. J., 3–4.
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`Magnovo also claims to have some intellectual property of its own and says the plaintiffs have
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`infringed it. Doc. 131, Defs.’ First Am. Answer, Defenses, & Countercls., ¶¶ 268–75. Magnovo has
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`registered copyrights pertaining to the Bicycle-Team-Building-Events.com website and “Magnovo
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`Photo 1.” Doc. 186-24, App’x to Defs.’ Summ. J. Resp., Ex. X, 254. The defendants allege that the
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`plaintiffs have caused TLI’s websites to “frame” Magnovo’s Bicycle-Team-Building-Events.com
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`website, which means the plaintiffs caused Magnovo’s website to appear within and under the
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`plaintiffs’ registered domain names. Id. at 255. The defendants accuse the plaintiffs also of
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`fraudulently applying to register “Magnovo” as a trademark. Doc. 186-16, App’x to Defs.’ Summ. J.
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`Resp., Ex. P., 115–16. But after the defendants challenged the plaintiffs’ application, the plaintiffs
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`withdrew it. Doc. 186-4, App’x to Defs.’ Summ. J. Resp., Ex. D., 59–60.
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` Case 3:14-cv-03572-B Document 195 Filed 11/22/17 Page 6 of 30 PageID 5243
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` B.
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`Procedural History
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`In September 2013, the plaintiffs sued the defendants in Texas state court. Doc. 179-16,
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`App’x to Pls.’ Mot. Partial Summ. J., Ex. 16, 323–24. But in May 2014, the plaintiffs nonsuited9 their
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`state-court action. Id. at 335–36. Subsequently, on October 2, 2014, the plaintiffs filed this lawsuit.
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`Doc. 1, Compl. In the plaintiffs’ Fourth Amended Complaint, filed on August 8, 2016, the plaintiffs
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`accuse the defendants of 1) infringing a federally registered service mark under 15 U.S.C. § 1114(1);
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`2) statutory infringement and false designation of origin under 15 U.S.C. § 1125; 3) violating the
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`Anticybersquatting Consumer Protection Act, specifically 15 U.S.C. § 1125(d); 4) unfairly
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`competing with the plaintiffs under 15 U.S.C. § 1125(a); 5)trademark infringement under Texas law;
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`6) unfair competition under Texas law; 7) unjust enrichment under Texas law; and 8) false
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`advertising under Texas law. Doc. 130, Fourth Am. Compl.,¶¶ 104–94. And the plaintiffs accuse
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`Jackson under Texas law of 1) unfair competition by misappropriation; 2) misappropriating trade
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`secrets; 3) breach of contract; and 4) tortious interference with prospective business relations. Id.
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`On April 21, 2017, the defendants filed their First Amended Answer, Defenses, and
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`Counterclaims in which they generally denied the plaintiffs’ factual allegations and raised numerous
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`legal and equitable defenses. Doc. 131, Defs.’ First Am. Answer, Defenses, & Countercls. The
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`defendants also counterclaimed that the plaintiffs committed 1) abuse of process, 2) tortious
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`interference with business relations, 3) defamation, and 4) federal copyright infringement. Id. at
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`¶¶ 230–74. The defendants also ask the Court to cancel TLI’s federally registered marks and for
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`9 In Texas courts, “[a]t any time before the plaintiff has introduced all of his evidence other than
`rebuttal evidence, the plaintiff may dismiss a case, or take a non-suit.” Tex. R. Civ. P. 162. A “non-suit” is
`a plaintiff’s voluntary dismissal of a suit without prejudice. Paselk v. Rabun, 293 S.W.3d 600, 605 n.3 (Tex.
`App.—Texarkana 2009, pet. struck).
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` Case 3:14-cv-03572-B Document 195 Filed 11/22/17 Page 7 of 30 PageID 5244
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`attorney fees. Id. at ¶¶ 258–67.10
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`Now, parties on both sides have defensively moved for partial summary judgment. Jackson
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`asks the Court to grant him summary judgment on the plaintiffs’ state-law claims against him. Doc.
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`180, Jackson’s Mot. Partial Summ. J. And the plaintiffs ask the Court to grant summary judgement
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`in their favor on the defendants’ counterclaims and equitable defenses. Doc. 177, Pls.’ Mot. Partial.
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`Summ. J.. The plaintiffs’ federal claims against the defendants are not the subject of either of the
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`motions before the Court.
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`II.
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`LEGAL STANDARD
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`Courts must grant summary judgment “if the movant shows that there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a). A dispute “is ‘genuine’ if the evidence is sufficient for a reasonable jury to return a verdict for
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`the non-moving party.” Burrell v. Dr. Pepper/Seven Up Bottling Grp., 482 F.3d 408, 411 (5th Cir.
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`2007). And a fact “is ‘material’ if its resolution could affect the outcome of the action.” Id.
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`The summary-judgment movant bears the burden of proving that no genuine issue of material
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`fact exists. Latimer v. Smithkline & French Labs., 919 F.2d 301, 303 (5th Cir. 1990). So the movant
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`must identify “those portions of the pleadings, depositions, answers to interrogatories, and admissions
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`on file, together with affidavits, if any, which it believes demonstrate the absence of a genuine issue
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`of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (internal quotation marks
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`omitted). Once the movant has produced evidence on an element or claim or alleged the non-
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`10 The defendants brought a free-standing counterclaim for attorney fees under 17 U.S.C. § 505, but
`they have dropped it.
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`movant has no evidence, the non-movant must “identify specific evidence in the record” and
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`“articulate the precise manner in which that evidence supports [its] claim” to show that a fact issue
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`exists. Ragas v. Tenn. Gas Pipeline Co., 136 F.3d 455, 458 (5th Cir. 1998). And although the Court
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`views evidence in the light most favorable to the non-movant when determining whether a genuine
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`issue exists, Munoz v. Orr, 200 F.3d 291, 302 (5th Cir. 2000), mere “metaphysical doubt as to
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`material facts,” “conclusory allegations,” “unsubstantiated assertions,” or a mere “scintilla of
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`evidence” will not save a non-movant from summary judgment, Little v. Liquid Air Corp., 37 F.3d
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`1069, 1075 (5th Cir. 1994) (per curiam)(internal citations and quotation marks omitted).
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`III.
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`ANALYSIS
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`A.
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`Robert Jackson’s Motion for Partial Summary Judgment on the Plaintiffs’ State-Law Claims Against
`Him
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`The plaintiffs claim that by using TLI’s customer lists and pricing information to compete
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`with TLI, Jackson committed
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`1.
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`2.
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`3.
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`4.
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`Unfair competition by misappropriation;
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`Misappropriation of trade secrets;
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`Breach of contract; and
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`Tortious interference with prospective business relations.11
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`Doc. 130, Fourth Am. Compl., ¶¶ 138–82.
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`But in his motion for summary judgment, Jackson claims the plaintiffs have failed to present
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`11 The plaintiffs accused Jackson also of conversion, but they dropped their conversion claim. Doc.
`178, Pl. Mot. Partial Summ. J. Br., 21.
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`evidence that Jackson used TLI’s customer list, Doc. 182, Jackson’s Mot. Partial Summ J. Br.,
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`¶¶ 26–36, and he presents as summary-judgment evidence his own sworn declaration in which he
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`denies that he used TLI’s customer lists and claims to have developed Magnovo’s business with TLI’s
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`clients via personal relationships, websites, and search engine optimization.12 Doc. 181, App’x to
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`Jackson’s Mot. Partial Summ. J., ¶¶ 6–12.
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`For their part, the plaintiffs respond with summary-judgment evidence that they claim creates
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`a fact issue regarding whether Jackson used TLI’s customer list. The plaintiffs have attached to their
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`motion evidence that
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`•
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`•
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`•
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`Colette Martin, a Magnovo colleague of Jackson’s who also left TLI, testified that, while
`Jackson was a TLI independent contractor, he had access to TLI’s customer list, customer-
`contact information, pricing list, training materials, and other confidential information, Doc.
`188-5, App’x to Pls.’ Summ. J. Resp., Ex. D, 33–34;
`while Jackson was a TLI independent contractor, Jackson arranged to conduct seminars for
`at least three of TLI’s customers—Novartis Consumer health, Inc., Royal Caribbean Cruise
`Line, and StatOil Gulf Services—after leaving TLI, Doc. 188-6, App’x to Pls.’ Summ. J.
`Resp., Ex. E, 45, 56–62, 66–69, 88–90, 92;
`two of the customers to which Jackson presented seminars shortly after leaving TLI are on
`TLI’s customer-list excerpt, Doc. 188-14, App’x to Pls.’ Summ. J. Resp., Ex. M, 310;
`after leaving TLI, Jackson emailed Colette Martin a list of his contacts, Doc. 188-2, App’x
`to Pls.’ Summ. J. Resp., Ex., A, all of which are on TLI’s customer list, Doc. 188-14, App’x
`to Pls.’ Summ. J. Resp., Ex. M;
`all of the customer contacts on the disclosed excerpt of TLI’s list, Doc. 188-13, App’x to Pls.’
`Summ. J. Resp., Ex. L, appear also on Magnovo’s customer list, Doc. 188-14, App’x to Pls.’
`Summ. J. Resp., Ex. M’
`on both TLI’s and Magnovo’s customer lists, one customer entry lists the individual contact
`only as Rachel, and on both TLI’s list, Doc. 188-13, App’x to Pls.’ Summ. J. Resp., Ex. L,
`293, and Magnovo’s list, Doc. 188-14, App’x to Pls.’ Summ. J. Resp., Ex. M., 309, the entry
`lacks a last name for Rachel; and
`proposals Jackson produced, Doc. 188-12, App’x to Pls.’ Summ. J. Resp., Ex. K, reveal that
`Jackson sent 500 proposals to over 200 companies on the plaintiffs’ customer list, Doc. 188-
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`12 The plaintiffs complain that Jackson’s declaration is not summary-judgment evidence. Doc. 189,
`Pls.’ Summ. J. Resp, 9–12. But resolving the plaintiffs’ objection would not change the outcome because fact
`issues remain even if the Court considers Jackson’s declaration.
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`14, App’x to Pls.’ Summ. J. Resp., Ex. M.
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`Accepting as true the parties’ summary judgment evidence and making all reasonable inferences in
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`favor of the non-movant plaintiffs, the Court concludes that the plaintiffs have created a fact issue
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`as to whether Jackson used TLI’s customer list.
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`Because a fact issue remains as to whether Jackson used TLI’s customer lists, fact issues
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`preclude summary judgment on all four of the plaintiffs’ state-law claims.13 Unfair competition by
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`misappropriation requires the plaintiff to show that the defendant used a product the plaintiff created
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`through time, labor, skill, and money in competition with the plaintiff, thereby gaining a special
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`advantage in that competition. Dresser-Rand Co. v. Virtual Automation, Inc., 361 F.3d 831, 839 (5th
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`Cir. 2014). And misappropriation of trade secrets requires the plaintiff to show that the defendant
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`used the plaintiff’s trade secret. Spear Mktg., Inc., v. Bancorp So. Bank, 791 F.3d 586, 600 (5th Cir.
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`2015). Because both misappropriation claims require evidence that the defendant used the plaintiff’s
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`trade secrets and there is a fact issue as to whether Jackson used TLI’s customer list, the Court denies
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`summary judgment on the plaintiffs’ misappropriation claims.
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`Breach of contract requires the plaintiff to show that the defendant breached a contract
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`between the plaintiff and defendant. Smith Int’l, Inc. v. Egle Grp., LLC, 490 F.3d 380, 387 (5th Cir.
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`2007). The TLI independent-contractor agreement forbade Jackson from using the customer list.
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`So because there is fact issue as to whether Jackson used TLI’s customer list, there is a fact issue as
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`to whether he breached his contract with TLI.
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`And tortious interference requires the plaintiff to show that the defendant engaged in
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`13 These four torts have other elements. The Court will discuss only the elements Jackson challenges.
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` Case 3:14-cv-03572-B Document 195 Filed 11/22/17 Page 11 of 30 PageID 5248
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`independently tortious or otherwise unlawful conduct. Coinmach Corp. v. Aspenwood Apartment
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`Corp., 417 S.W.3d 909, 923 (Tex. 2013). The plaintiffs have created a fact issue as to whether
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`Jackson wrongfully used TLI’s customer list to compete against TLI, which would arguably be
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`tortious and in breach of TLI’s independent-contractor agreement. Thus, a fact issue remains on the
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`plaintiffs’ tortious interference claim.14
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`B.
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`The Plaintiffs’ Motion for Partial Summary Judgment on the Defendants’ Counterclaims
`and Equitable Defenses
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`The defendants have raised counterclaims and equitable defenses against the plaintiffs. They
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`counterclaim that the plaintiffs have committed abuse of process, defamation, and federal copyright
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`infringement, and they counterclaim that the Court should cancel TLI’s build-a-bike trademarks,
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`which are the subject of the plaintiffs’ federal trademark claims against the defendants. And as
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`equitable defenses to the plaintiffs’ federal trademark claims, the defendants raise estoppel, waiver,
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`and unclean hands. The plaintiffs have moved for summary judgment on all of the defendants’
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`counterclaims and equitable defenses, contending that the defendants have presented insufficient
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`14Jackson also unpersuasively posits that TLI has failed to produce evidence that he used TLI’s
`customer list because TLI has not presented any direct evidence that he actually copied or downloaded TLI’s
`customer list. Doc. 182, Jackson’s Mot. Partial Summ J. Br., ¶¶ 27, 29, 33, 35. But, as TLI contends, courts
`have recognized that direct evidence of industrial espionage will rarely be available in trade-secret cases and
`have therefore allowed plaintiffs to show defendants used their trade secrets by showing that the defendants
`had access to the trade secret and that the defendants’ products were similar to the plaintiffs. Stratienko v.
`Cordis Corp., 429 F.3d 592, 600 (6th Cir. 2005). In other words, a non-movant can survive summary
`judgment by presenting circumstantial evidence that the movant used the non-movant’s trade secret. Vianet
`Group PLC v. Tap Acquisition, Inc., No. 3:14-cv-3601-B, 2016 WL 4368302, at *21 n.19 (N.D. Tex. August
`16, 2016).
`Although this case does not involve products, as did Stratienko, the reasoning in that case supports
`denying summary judgment here. Presenting evidence of access and similarity is just another way of
`presenting evidence from which a jury could reasonably infer that the defendant used the plaintiffs’ trade
`secret. And the plaintiffs have presented circumstantial evidence from which a jury could reasonably infer
`Jackson used TLI’s customer list. Thus, the Court denies Jackson’s motion for partial summary judgment.
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` Case 3:14-cv-03572-B Document 195 Filed 11/22/17 Page 12 of 30 PageID 5249
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`evidence to create fact issues on any of their counterclaims and defenses.
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`1.
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`Abuse of Process
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`To prevail on an abuse-of-process claim, one must prove that 1) the defendant made an
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`illegal, improper, or perverted use of the process, 2) the defendant had an ulterior motive or purpose
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`in exercising such illegal, improper, or perverted use of the process, and 3) the plaintiff suffered
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`damage as a result. Breitling v. LNV Corp., No. 3:15-cv-0703-B, 2015 WL 5896131, at *6 (N.D. Tex.
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`Oct. 5, 2015). To fulfill the damages element, the plaintiff must prove damages other than those
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`incidental to the filing of a lawsuit, which means asking for attorney fees alone will not suffice. RRR
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`Farms Ltd. v. Am. Horse Prot. Ass’n, 957 S.W.2d 121, 134 (Tex. App.—Houston [14th Dist.] 1997,
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`pet. denied). Rather, the plaintiff must show a wrongful seizure of property or an actual interference
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`with the person. Id.
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`Here, as the plaintiffs contend, the defendants have presented no evidence that they suffered
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`a special injury. They claim only attorney fees spent responding to the plaintiffs’ legal maneuvering.
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`Because a claimant cannot rely on damages incidental to the filing of a lawsuit to fulfill the damages
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`element of an abuse-of-process claim, the defendants’ abuse-of-process claim fails. Thus, the Court
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`grants the plaintiffs’ summary judgment on the defendants’ abuse-of-process counterclaim.
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`2.
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`Defamation
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`To prevail on a defamation claim one must prove that 1) the defendant published a statement
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`2) that was defamatory concerning the plaintiff 3) while acting with either actual malice if the
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`plaintiff was a public official or public figure, or negligence, if the plaintiff was a private individual,
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`regarding the truth of the statement. WFAA-TV, Inc. v. McLemore, 978 S.W.2d 568, 571 (Tex.
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`1998). Some statements are so obviously hurtful to a plaintiff’s reputation that they are considered
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`defamation per se—that is, defamatory as a matter of law. Hancock v. Variyam, 400 S.W.3d 59,
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`63–64 (Tex. 2013). Statements asserting that a person committed a crime are per se defamatory.
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`In re Lipsky, 460 S.W.3d 579, 596 (Tex. 2015). But if an ordinary reader could interpret a statement
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`in more than one way—such as a way in which the statement would be defamatory per se and a way
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`in which the statement would not—the statement is not defamatory per se. See Hancock, 400 S.W.3d
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`at 66 (“If the court determines that a statement is ambiguous or of doubtful import, the jury should
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`determine the statement's meaning.”). Whether a statement is defamatory per se is a question of law.
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`Lipsky, 460 S.W.3d at 596. If a court finds a statement to be defamatory per se, the jury may presume
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`general damages, including for loss of reputation and mental anguish. Burbage v. Burbage, 447 S.W.3d
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`249, 259 (Tex. 2014). But, unless the plaintiff proves actual damages, a finding that a statement is
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`defamatory per se entitles a plaintiff only to nominal damages. Id. Defamation that is not per se is per
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`quod. To prevail on claim of defamation per quod, a plaintiff must prove the statement actually
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`harmed the defendant’s reputation. In re Jennings, 203 S.W.3d 32, 36 (Tex. App.—San Antonio,
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`orig. proceeding). A person must bring a defamation claim within one year from the date on which
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`the defendant made the alleged defamatory statements. Tex. Civ. Prac. & Rem. Code § 16.002(a).
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`The plaintiffs contend that the applicable statute of limitations bars part of the plaintiffs
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`defamation claim, and they argue that, as a matter of law, the statements not barred by the statute
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`of limitations are not defamatory per se. And because the accused statements are not defamatory per
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`se, the plaintiff’s argument continues, the defendants’ defamation claim cannot proceed because
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`claims for defamation per quod require evidence of damages, none of which the defendants have
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`presented.
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`TLI is correct that the statute of limitations defeats most of the defendants’ defamation claim.
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`The defendants filed their counterclaims on September 16, 2015, Doc. 67, Answer, so they cannot
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`base a defamation claim on any statement made before September 16, 2014. But the defendants
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`complain of several statements made before September 16, 2014. Doc. 185, Defs.’ Summ. J. Resp.,
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`¶¶ 7–10. The Court grants the plaintiffs summary judgment on the defendants’ defamation claim
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`insofar as the claim relies on statements made before September 16, 2014.
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`After applying the statute of limitations, the only remaining alleged defamatory statements
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`are in an April 3, 2015 email from Staneart to Colette Martin, who, like Jackson, moved from TLI
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`to Magnovo. Doc. 186-6, App’x to Defs.’ Summ. J. Resp., Ex. F. In the email, Staneart recounts to
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`Martin investigations of Jackson and Magnovo’s conduct and discusses Staneart and TLI’s filing of
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`lawsuits against Jackson and Magnovo. Id. The defendants claim the following statements made by
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`Staneart defamed Jackson:
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`•
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`•
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`“[The FBI agents] were most inte