Alexsam, Inc. v. Mastercard International Incorporated

Filing 243

ORDER directing the parties on how to proceed in light of the Court's 237 Memorandum and Order, and having considered the parties' competing 241 and 242 letter proposals. Ordered by Judge I. Leo Glasser on 8/18/2020. (Schneyer, David)

Case 1:15-cv-02799-ILG-SMG Document 243 Filed 08/18/20 Page 1 of 3 PageID #: 6120

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
---------------------------------------------------------x
ALEXSAM, INC.,
Plaintiff,

ORDER

v.

15-CV-2799 (ILG) (SMG)

MASTERCARD INTERNATIONAL
INCORPORATED,
Defendant.
---------------------------------------------------------x
GLASSER, Senior United States District Judge:
In a June 17, 2020 Memorandum & Order, this Court granted partial summary judgment
in favor of Defendant, on the ground that Plaintiff was judicially estopped from seeking royalties
under the parties’ license agreement. AlexSam, Inc. v. Mastercard Int’l. Inc., 15-CV-2799 (ILG)
(SMG), 2020 WL 3286785, at *8 (E.D.N.Y. June 17, 2020). The parties now report that they are
unable to agree on how this case should proceed in light of that ruling. (ECF Nos. 241, 242).
Having read their conflicting proposals, the Court orders the following:
Plaintiff shall promptly file its contemplated motion for reconsideration.1 (See ECF No.
241 at 2). Such motion should be based solely on the issue of whether the Court’s finding of
judicial estoppel is limited by any rule regarding retroactivity,2 as articulated in “controlling

As a technical matter, Plaintiff requests leave to file a “motion for clarification.” (ECF No. 241
at 2). But given what Plaintiff intends to argue—that this Court’s finding of judicial estoppel is not
retroactive—a motion for clarification would not be appropriate. The June 17, 2020 Memorandum
& Order was unambiguous that Plaintiff is judicially estopped from seeking any royalties under
the license agreement. See AlexSam, 2020 WL 3286785 at *8. If Plaintiff believes that this finding
is in error, then a motion for reconsideration is the appropriate vehicle.
1

Plaintiff also seeks clarification on what it believes to be “inconsistencies” between footnote 18
this Court’s Memorandum & Order and Magistrate Judge Gold’s belief that, in light of that order,
no claims remain in this case. (ECF No. 241 at 2). Defendant responds that this “footnote simply
2

1

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decisions which [Plaintiff] believes the Court has overlooked.” Local Rule 6.3. The motion should
also address the reason why, in the interest of fairness and justice, the 14-day limitation period
should be waived. See Id. (“Unless otherwise provided by the Court or by statute or rule . . . a
notice of motion for reconsideration or reargument of a court order determining a motion shall be
served within fourteen (14) days after the entry of the Court’s determination of the original
motion[.]”) (emphasis added). Defendant shall have the opportunity to respond, and the parties
shall advise the Court of the briefing schedule they have agreed upon.
Concurrently with its motion for reconsideration, Plaintiff shall file its contemplated
motion to amend and/or supplement its complaint. (ECF No. 241 at 2 (seeking to add claims for
indemnification, quantum meruit and unjust enrichment)). In responding to such motion,
Defendant is not precluded from reiterating arguments made in its letter to this Court dated July
29, 2020. (See ECF No. 242 at 2–3). In particular, the parties’ briefing should address whether a
motion to amend or supplement the complaint would be appropriate at this late juncture. See
Arrowood Indem. Co. v. King, 699 F.3d 735, 742 (2d Cir. 2012) (“Appellants did not act until after
the summary judgment motions had been decided adversely to them. Then, with the legal mine
field mapped in the district court’s decision, Appellants sought leave to steer a new course hoping
to snatch away the victors’ success. Denial of additional time to amend in those circumstances was
hardly an abuse of the discretion accorded the district court[.]”); see also Zsa Zsa Jewels, Inc. v.
BMW of N.A., LLC, 15-CV-6519 (ILG), 2020 WL 3403116, at *2 (E.D.N.Y. June 18, 2020)

noted that the Court was only addressing Mastercard’s judicial estoppel arguments related to
royalty payments, not that Alexsam has an additional valid count pending.” (ECF No. 242 at 2).
Defendant’s interpretation is entirely correct. Accordingly, no clarification is necessary. Any
lingering questions AlexSam has regarding what “other breaches by Mastercard are covered by or
included in the Complaint” (See ECF No. 241 at 2) will be addressed in resolving Mastercard’s
contemplated motion to dismiss, discussed infra.
2

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(“Plaintiff offers no compelling justification for why it had to wait until now to pursue this new
[theory of relief].”).3 But see Tissue Tech. LLC v. Tak Investments LLC, 320 F. Supp. 3d 993, 998
(E.D. Wis. 2018), aff’d, 907 F.3d 1001 (7th Cir. 2018) (permitting late amendment to add an
indemnification claim, because “the indemnification provision of the [contract] speaks directly to
the only claims remaining in the case”).4
Defendant may file its contemplated motion to dismiss (see ECF No. 242 at 1), but only
after this Court decides the motion for reconsideration and motion to amend and/or supplement
the complaint. Before considering dismissal of this case, it would be prudent to first determine
what actually remains left of it.
The parties are expected to promptly agree on a briefing schedule after any notice of motion
is filed.
SO ORDERED.
Dated: Brooklyn, New York
August 18, 2020
/s/
I. Leo Glasser

U.S.D.J.

3

Plaintiff also argues that the complaint in its present form sufficiently claims breaches of material
provisions other than royalty and reporting obligations. (ECF No. 241 at 2). The appropriate place
to argue this point would be in a memorandum of law opposing Defendant’s contemplated motion
to dismiss, discussed infra.
4

While not necessarily dispositive of the issue, the Court sees a distinction between adding claims
which further articulate or elaborate upon the existing breach of contract claim, such as a claim for
contractual indemnification, and adding claims which do not logically flow from the existing
breach of contract claim, such as claims for quantum meruit and unjust enrichment. For instance,
in Tissue Technology v. Tak Investments, the court conceded that it was “well past the time when
a party may amend as a matter of course.” 320 F. Supp. at 998. But in granting the motion to amend
the complaint to add a claim for indemnification, the court reasoned that “the [underlying contract
which contained the indemnification clause] . . . has been central to this case since its inception.”
Id. Of course, the Court is mindful that it is not bound by the reasoning in that case, and welcomes
arguments to the contrary.
3