Micro System Engineering, Inc. v. Universal Instruments Corporation

Filing 10

MEMORANDUM-DECISION and ORDER - ORDERED that MSEI and MTAs motion to strike (Dkt. No. 107) is DENIED; and it is further ORDERED that MSEI and MTA's motion for judgment on the pleadings (Dkt. No. 80) is GRANTED IN PART and DENIED IN P ART as follows: GRANTED with respect to claims of unjust enrichment, unfair competition, and promissory estoppel against MSEI; and DENIED in all other respects; and it is further ORDERED that MSEI and MTA's motion to dismi ss (Dkt. No. 97) is DENIED AS MOOT; and it is further ORDERED that MSEI and MTA's motion for summary judgment (Dkt. No. 196) is DENIED; and it is further ORDERED that Universal's cross motion for partial summary judgment (Dkt. No. 209) is GRANTED IN PART and DENIED IN PART as follows: GRANTED with respect to MSEI's complaint in the member case; and it is further DENIED in all other respects; and it is further ORDERED that MSEI's complaint (Dkt. No. 1, 3:13-cv-1144) in the member case is DISMISSED; and it is further ORDERED that this case is deemed trial ready and the court, in due course, shall issue a trial scheduling order; and it is further ORDERED that the parties shall advise the court of their joint position regarding sealing within seven (7) days of the date of this Memorandum-Decision and Order. In particular, the joint submission shall address whether the parties are of the opinion that sealing is req uired, if so, why, and whether a redacted version of the Memorandum-Decision and Order, and precisely what those redactions would be, can be made available to the public; and it is further ORDERED that the Clerk provide a copy of this Memorandum-Decision and Order to the parties. IT IS SO ORDERED. Signed by Senior Judge Gary L. Sharpe on 2/24/2017. (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________
UNIVERSAL INSTRUMENTS
CORPORATION,
Plaintiff,

3:13-cv-831
(GLS/DEP)

v.
MICRO SYSTEM ENGINEERING,
INC. et al.,
Defendants.
________________________________
MICRO SYSTEM ENGINEERING,
INC.,
Plaintiff,

3:13-cv-1144
(GLS/DEP)

v.
UNIVERSAL INSTRUMENTS
CORPORATION,
Defendant.
________________________________
APPEARANCES:
OF COUNSEL:
FOR UNIVERSAL INSTRUMENTS CORPORATION:
Schmeiser, Olsen Law Firm
ARLEN L. OLSEN, ESQ.
22 Century Hill Drive
CHRISTOPHER E. BLANK, ESQ.
Suite 302
JARED L. DUJACK, ESQ.
Latham, NY 12110
VICTOR J. BARANOWSKI, ESQ.
FOR MISCROSYSTEMS ENGINEERING, INC. and MISSOURI TOOLING
AND AUTOMATION

Kolisch, Hartwell Law Firm
200 Pacific Building
520 Southwest Yamhill Street
Portland, OR 97204

DAVID P. COOPER, ESQ.
DESMOND J. KIDNEY, ESQ.
OWEN W. DUKELOW, ESQ.

Young, Sommer Law
Executive Woods
5 Palisades Drive
Albany, NY 12205

JEFFREY S. BAKER, ESQ.
JOSEPH F. CASTIGLIONE,
ESQ.

Gary L. Sharpe
Senior District Judge
MEMORANDUM-DECISION AND ORDER
I. Introduction
Plaintiff/consolidated defendant Universal Instruments Corporation
commenced this action against defendant/consolidated plaintiff Micro
System Engineering, Inc. (MSEI) and defendant Missouri Tooling and
Automation (MTA) for copyright infringement, breach of contract,
misappropriation of trade secrets, unfair competition, unjust enrichment,
and promissory estoppel. (See generally 3d Am. Compl., Dkt. No. 103.1)
MSEI commenced a separate action against Universal alleging breach of
the duty of confidentiality, unfair competition, misappropriation of trade
secrets, and “an injunction.” (See generally Compl., Dkt. No. 1, 3:13-cv-

1

Unless otherwise specified, citations are to 3:13-cv-831.

2

1144.) The two actions were consolidated, and the earlier-filed designated
as the lead. (Dkt. No. 26.) Pending are MSEI and MTA’s motions for
judgment on the pleadings, to dismiss, to strike, and for summary
judgment. (Dkt Nos. 80, 97, 107, 196.) Also pending is Universal’s cross
motion for partial summary judgment. (Dkt. No. 209.)
II. Background
A.

Facts2
MSEI manufactures and tests components used in pacemakers and

defibrillators that are implanted into patients’ chests. (Defs.’ Statement of
Material Facts (SMF) ¶ 1, Dkt. No. 200.) Universal develops automation
platforms for companies, like MSEI, in the electronic manufacturing
industry. (Pl.’s Supplemental (Supp.) SMF ¶ 1, Dkt. No. 213; 3d Am.
Compl. ¶¶ 3-4.) MTA is a competitor of Universal and also designs
machine automation and provides system upgrades, retrofits, and custom
tooling. (3d Am. Compl. ¶¶ 12, 247; Dkt. No. 67 ¶¶ 12, 74.)
MSEI owned machines that manually tested its products and wanted
to upgrade this equipment to operate automatically. (Defs.’ SMF ¶ 2.)
MSEI planned to introduce the upgraded machines in phases to gradually
2

Unless otherwise noted, the facts are undisputed.

3

create a fully automated system to be called the Test Handling System
(THS). (Id. ¶¶ 8, 10.) In order to do so, MSEI initially developed an
automation design in 2002. (Id. ¶ 3.) MSEI contends that this design
contained intellectual property consisting of trade secrets, some of which
were eventually implemented into the THS. (Id. ¶¶ 3, 4.) Universal,
however, disputes that MSEI created any intellectual property. (Pl.’s SMF
¶ 3.)
MSEI detailed its specifications for the THS and solicited bids to build
the first phase of the project. (Defs.’ SMF ¶¶ 8, 10; Pl.’s Supp. SMF ¶ 10.)
Interested suppliers, including Universal, signed a Confidential Disclosure
Agreement (CDA) and were provided access to MSEI’s specifications.
(Defs.’ SMF ¶¶ 133-34; Dkt. No. 196, Attach. 39.) The CDA outlined
Universal’s obligations to keep the specifications confidential under section
five of the agreement. (Dkt. No. 196, Attach. 39 § 5.) It also included a
sunset provision which stated that Universal’s “obligations under Section
5(a) stop at the end of the [p]rotection [p]eriod” and that the protection
period ended on December 30, 2012. (Id. § 4(a), (d).)
MSEI selected Universal to construct the first THS line (hereinafter
“THS1A”). (Defs.’ SMF ¶ 12.) MSEI and Universal memorialized their
4

contract in an Equipment Purchase Agreement (EPA) in June 2007. (Id.
¶ 17; Pl.’s Supp. SMF ¶ 16; Dkt. No. 196, Attach. 7.)
The EPA contained several provisions regarding intellectual property.
(Dkt. No. 196, Attach. 7.) The EPA defined the term “Pre-Existing
Intellectual Property” to mean “any trade secret . . . or protectable design
that ha[d] already been conceived or developed by anyone other than
MSEI before [Universal] render[ed] any services.” (Id. § 8.2(a).) If
Universal incorporated Pre-Existing Intellectual Property in the THS1A, it
“grant[ed] MSEI, MSEI’s subcontractors, or suppliers, a non-exclusive . . .
license” to use such property “for MSEI’s internal use only.” (Id. § 8.2(d).)
As also relevant, section 8.4 explained that Universal was not providing
customized equipment for MSEI. (Id. § 8.4.) The section also contained a
carve out provision permitting MSEI to keep previously created intellectual
property and any property created using MSEI’s intellectual property. (Id.)
Specifically, the section provided that if Universal customized “equipment”
for MSEI, MSEI owned the intellectual property created “during the course
of th[e EPA]” that would be “customized for MSEI” where Universal “[wa]s
given access to MSEI owned intellectual property to complete the
customization.” (Id.)
5

Universal had previously developed automated machines called the
Polaris MP and Polaris Jr. robots. (Pl.’s Supp. SMF ¶¶ 3-5.) These robots
contain software and source code developed by Universal’s employees.
(Id. ¶ 7, 9.) Universal contends that these robots were part of a standard
platform it used in automation lines that it supplied to its customers. (Id.
¶¶ 1-2.) MSEI asserts that Universal does not have a standard platform
and always customizes software and source code in the Polaris robots to
meet a customer’s needs. (Defs.’ Supp. SMF ¶¶ 2, 9; Dkt. No. 217,
Attach. 1; Defs.’ SMF ¶ 28.)
While Universal was developing the THS1A, MSEI requested that
Universal provide it with source codes upon delivery of the THS1A in order
to provide long-term support for the THS system. (Pl.’s Supp. SMF
¶¶ 133-34.) Universal initially refused because it contended that the EPA
did not require it to provide MSEI with access to its source codes. (Pl.’s
Supp. SMF ¶¶ 132, 135.) However, Universal ultimately provided MSEI
with the codes citing threats by MSEI to withhold payment for the project.
(Id. ¶¶ 136-38.) MSEI contests that it threatened to withhold payment.
(Defs.’ Supp. SMF ¶ 136.) Rather, MSEI asserts that Universal had an
obligation to provide the customized source codes, which it claims it owned
6

according to the terms of the EPA. (Id.; Defs.’ SMF ¶¶ 33-36, 48.)
Universal delivered the THS1A line to MSEI with the source codes, which
MSEI signed for in a Final Customer Acceptance letter (hereinafter “FCA
letter”). (Dkt. No. 209, Attach. 27.)
MSEI then requested bids for the THS1B and the THS2, the
subsequent phases of the THS. (Pl.’s Supp. SMF ¶¶ 49-50.) Universal bid
on these projects, but MSEI awarded the contracts to MTA, Universal’s
competitor. (Id. ¶¶ 49-50, 144.) Universal maintains that MSEI had
already promised it would award Universal the contracts in exchange for a
discounted quote for a separate project called the separate surface mount
line (hereinafter “SMT”). (3d Am. Compl. ¶ 292.)
In order to complete the THS1B and THS2, MSEI provided MTA with
all of the source code from the THS1A. (Pl.’s Supp. SMF ¶ 29.) MTA then
used the THS1A source code to build the THS2 and the source code from
the THS2 to build the THS1B. (Id. ¶ 30; Defs.’ Supp. SMF ¶ 32.) During
the course of this litigation, MSEI requested bids to build the THS3, which
Universal again bid on. (Pl.’s Supp. SMF ¶ 51.) MSEI awarded MTA the
contract and MTA used source code from the THS2 to build the THS3. (Id.
¶ 31, 144; Defs.’ Supp. ¶ 31.) The parties dispute whether the software
7

and source codes that were used in the THS1B, THS2, and THS3 were
identical to the software and source code created by Universal for the
THS1A. (Pl.’s Supp. SMF ¶¶ 29-31; Defs.’ Supp. SMF ¶¶ 29-31.) MSEI
asserts that the source code is different because it modified the software in
the THS1A before it provided it to MTA. (Defs.’ Supp. SMF ¶ 78.)
Universal acknowledges that MSEI modified the source code but contends
the modification was minor. (Pl.’s Supp. SMF ¶ 103.)
Universal has registered certificates with the United States Copyright
Office for its server and station software from the THS1A. (Pl.’s Supp.
SMF ¶¶ 68, 77.) Universal did not complete any of this copyrighted
software until 2008 or 2009, and the registrations do not identify the works
as derivative works. (Defs.’ SMF ¶¶ 63-64.) Universal did not register the
copyrights until after it filed this lawsuit, which were first registered in
September 2014. (Id. ¶ 67; 3d Am. Compl., Attachs. 3-10.) MSEI had
access to the copyrighted source code and software; however, the parties
dispute whether MTA had access to the same copyrighted works. (Pl.’s
Supp. SMF ¶ 78; Defs.’ Supp. SMF ¶ 78.) Additionally, MSEI disputes the
conclusion of Universal’s experts Terry Wolfe and Richard Hooper who
opine that the copyrighted material from the THS1A was copied or was
8

“predominately line-by-line identical” in the subsequent lines and server.
(Defs.’ Supp. SMF ¶¶ 79-102.) MSEI’s expert, Timothy Rickard, opines the
source code was customized for MSEI and is substantially different from
Universal’s pre-existing code. (Defs.’ SMF ¶ 15; Dkt. No. 208 ¶ 25, Item
Nos. 6, 8, 10, 18, 20, 22.)
B.

Procedural History
Universal commenced this action on July 15, 2013, alleging breach

of contract, misappropriation of trade secrets, unfair competition, unjust
enrichment, and promissory estoppel. (Compl., Dkt. No. 1.) MSEI
commenced a separate action against Universal on September 13, 2013,
alleging breach of the duty of confidentiality, unfair competition,
misappropriation, and “injunction.” (Compl., Dkt. No. 1, 3:13-cv-1144.)
The actions were then consolidated and as noted earlier, the instant action
was designated as the lead action. (Dkt. No. 26.)
Universal amended its complaint three times and included claims of
copyright infringement. (Dkt. Nos. 63, 93, 103.) MSEI and MTA answered
Universal’s first amended complaint and counterclaimed for a declaratory
judgment that MSEI and MTA either owned or had a license to the
intellectual property used in the THS1A and sought specific performance of
9

the EPA. (Dkt. No. 67.) In two currently pending motions, MSEI and MTA
move for partial judgment on the pleadings against the first amended
complaint and move to dismiss the entire second amended complaint.
(Dkt. Nos. 80, 97.) Following Universal’s third amended complaint, the
parties stipulated that the motions for partial judgment on the pleadings
and to dismiss would apply to Universal’s third amended complaint. (Dkt.
No. 106.) Also pending is MSEI and MTA’s motion to strike portions of
Universal’s third amended complaint. (Dkt. No. 107.)
Before the court resolved the above motions, MSEI and MTA moved
for summary judgment. (Dkt. No. 176.) Following an in-court conference,
the court denied that motion with leave to renew. (Minute Entry of Oct. 19,
2016.) Now pending is MSEI and MTA’s renewed motion for summary
judgment on Universal’s third amended complaint and its complaint in the
member case as well as Universal’s cross motion for summary judgment
on its complaint and MSEI and MTA’s complaint in the member case. (Dkt.
Nos. 196, 209.)
III. Standards of Review
“The standard for addressing a Rule 12(c) motion for judgment on
the pleadings is the same as that for a Rule 12(b)(6) motion to dismiss for
10

failure to state a claim.” Wright v. Monroe Cmty. Hosp., 493 F. App’x 233,
234 (2d Cir. 2012) (internal quotation marks and citation omitted). For a
full discussion of the governing standard, the court refers the parties to its
prior decision in Ellis v. Cohen & Slamowitz, LLP, 701 F. Supp. 2d 215,
218 (N.D.N.Y. 2010), abrogated on other grounds by J.C. Christensen &
Assocs., Inc., 786 F.3d 191 (2d Cir. 2015).
Additionally, the standard of review pursuant to Fed. R. Civ. P. 56 is
well established and will not be repeated here. For a full discussion of the
standard, the court refers the parties to its decision in Wagner v. Swarts,
827 F. Supp. 2d 85, 92 (N.D.N.Y. 2011), aff’d sub nom. Wagner v.
Sprague, 489 F. App’x 500 (2d Cir. 2012).
IV. Discussion
The court first addresses MSEI and MTA’s motion to strike portions
of the third amended complaint. (Dkt. No. 107.) Next, it addresses
arguments raised in MSEI and MTA’s Rule 12(b)(6) and 12(c) motions that
are not mooted by their subsequent motion for summary judgment. (Dkt.
Nos. 80, 97.) Finally, the court addresses the parties’ summary judgment
motions. (Dkt. Nos. 196, 209.)
A.

Motion to Strike
11

MSEI and MTA argue that the court should strike as redundant
certain copyright registrations that are attached to Universal’s third
amended complaint. (Dkt. No. 107, Attach. 1 at 2-4, 8-10.) In their reply,
MSEI and MTA also ask the court to strike certain copyright registrations
that purportedly falsely list the year that Universal created its software.
(Dkt. No. 119 at 1-2.) In addition, MSEI and MTA seek sanctions and
attorney’s fees against Universal. (Dkt. No. 107, Attach. 1 at 10-11.) In
response, Universal asserts that duplicative registrations do not render a
copyright invalid and that MSEI and MTA have not met their burden on this
motion. (Dkt. No. 116 at 4-12.)
In limited situations, a party may move the court to “strike from a
pleading an insufficient defense or any redundant, immaterial, impertinent,
or scandalous matter.” Fed. R. Civ. P. 12(f). To prevail on a motion to
strike, the movant must show, among other things, that allowing the
challenged allegations to stand would result in prejudice to the moving
party. See Roe v. City of New York, 151 F. Supp. 2d 495, 510 (S.D.N.Y.
2001). Additionally, the movant must demonstrate that “the allegations
have no bearing on the issues in the case.” Id. (internal quotation marks
and citation omitted). Moreover, “it is settled that the motion will be denied,
12

unless it can be shown that no evidence in support of the allegation would
be admissible.” Lipsky v. Commonwealth United Corp., 551 F.3d 887, 893
(2d Cir. 1976). Thus, “courts should not tamper with the pleadings unless
there is a strong reason for doing so.” Id.
Here, MSEI and MTA have not shown that the duplicative registration
certificates would be inadmissible. Rather, they assert that “[t]he
[duplicative] registrations cannot be infringed because they are invalid, and
so [they] are not admissible.” (Dkt. No. 119 at 3.) However, as Universal
correctly notes, multiple registrations of the same work do not render a
copyright invalid. See Iris Arc v. S.S. Sarna, Inc., 621 F. Supp. 916, 92021 (E.D.N.Y. 1985). While Universal ultimately cannot recover on multiple
claims of copyright infringement for the same work, see Sparaco v. Lawler,
Matusky, Skelly Eng’rs LLP, 313 F. Supp. 2d 247, 250 (S.D.N.Y. 2004) (“A
plaintiff is not entitled to recover twice for the same injury”), this does not
render the duplicative registrations inadmissible.
MSEI and MTA also argue that the court should strike certain
copyright registrations which purportedly contain false software creation
dates. These registrations are clearly relevant to the issue of copyright
infringement. Whether the creation dates are false is a matter for trial and
13

is not a ground to strike a pleading.3 See Roe, 151 F. Supp. 2d at 510.
Accordingly, MSEI and MTA’s motion to strike, (Dkt. No. 107), is denied
and their requests for sanctions and attorney’s fees are denied as moot.
B.

Motion for Judgment on the Pleadings
MSEI and MTA argue that Universal’s unfair competition, unjust

enrichment, and promissory estoppel claims should be dismissed because
they are precluded by either Universal’s breach of contract claim, or the
existence of a SMT line agreement. (Dkt. No. 80, Attach. 2 at 3-6.)
Alternatively, MSEI and MTA contend that Universal’s promissory estoppel
claim is barred by the statute of frauds. (Id. at 6-7.) Universal argues that
MSEI has breached duties independent of the EPA and SMT line
agreement, which do not foreclose its claims against MSEI. (Dkt. No. 81 at
3-9.) Additionally, Universal maintains that the statute of frauds does not
bar its promissory estoppel claim because it has suffered an
unconscionable injury. (Id. at 10.) Finally, Universal contends that it does
not have any contract with MTA and, therefore, its quasi-contract claims
against MTA should not be dismissed. (Id. at 4, 8.)

3

Additionally, the court rejects this argument because it was made for the first time in
MSEI and MTA’s reply papers. See Knipe v. Skinner, 999 F.2d 708, 711 (2d Cir. 1993).

14

A plaintiff is precluded from recovering on claims of unjust
enrichment, unfair competition, and promissory estoppel if there is an
enforceable contract and the allegations rest on obligations which arise
from that contract.4 See Randolph Equities, LLC v. Carbon Capital, Inc.,
648 F. Supp. 2d 507, 523 (S.D.N.Y. 2009) (applying New York law to
promissory estoppel claim); Labajo v. Best Buy Stores, L.P., 478 F. Supp.
2d 523, 530-31 (S.D.N.Y. 2007) (applying New York law to unjust
enrichment claim); Orange Cty. Choppers, Inc. v. Olaes Enters., Inc., 497
F. Supp. 2d 541, 558 (S.D.N.Y. 2007) (applying New York law to unfair
competition claim). A plaintiff may only recover on these theories if “a duty
[is] independent of the contract.” Poplar Lane Farm LLC v. Fathers of Our
Lady of Mercy, 449 F. App’x 57, 59 (2d Cir. 2011). That is why “a plaintiff
may proceed upon a theory of quasi-contract” in situations “where the
contract does not cover the dispute in issue.” Hochman v. LaRea, 14
A.D.3d 653, 655 (2d Dep’t 2005). Nevertheless, the statute of frauds may

4

While the EPA does not contain a choice of law provision and neither party
specifically addresses the question of what substantive law the court should apply, both parties
implicitly rely on New York law as evidenced by their citation to decisions primarily from the
courts of that state and their reference to the decisions of federal courts applying New York
law. (See, e.g., Dkt. No. 199 at iii-iv; Dkt. No. 210 at iii.) In light of the foregoing, the court
applies New York law. See Konikoff v. Prudential Ins. Co. of Am., 234 F.3d 92, 98 (2d Cir.
2000).

15

bar a quasi-contract claim unless a plaintiff can show that the application of
the doctrine would be unconscionable. See In re Estate of Hennel, 133
A.D.3d 1120, 1123 (3d Dep’t 2015).
With respect to the unfair competition and unjust enrichment claims,
Universal alleges that MSEI improperly disclosed its source code to MTA,
which MTA later used in subsequent lines. (3d Am. Compl. ¶¶ 253-61;
263-75.) The allegations that form the basis of these two claims do not
allege anything independent of Universal’s claim for breach of the EPA.
(Id. ¶¶ 163-81.) Accordingly, these claims against MSEI must be
dismissed.
With respect to promissory estoppel, Universal alleges that MSEI
represented that it would select Universal to install and develop the initial
THS, the THS2, and the SMT lines in exchange for a combined discounted
quote. (Id. ¶ 289.) The SMT line agreement, which MSEI and MTA
attached as an exhibit to their motion, acknowledges the discount but does
not mention the THS or THS2 lines. (Dkt. No. 80, Attach. 1 at 8.) Thus,
this agreement does not cover MSEI’s alleged representations, allowing
Universal to assert quasi-contract claims. See Hochman, 14 A.D.3d at
654-55. However, the statute of frauds bars Universal’s promissory
16

estoppel claim and such claim is not saved by the exception of
unconscionability. See N.Y. U.C.C. § 2-201(1); see In re Estate of Hennel,
133 A.D.3d at 1123; Bernard v. Langan Porsche Audi, 143 A.D.2d 495,
496 (3d Dep’t 1988). Accepting Universal’s allegations as true, it lost
business when MSEI selected MTA to build the subsequent THS lines and
lost monies by providing a discount to MSEI when it contracted to build the
SMT line. (3d Am. Compl. ¶¶ 307-10.) These circumstances, however,
are not so egregious as to be legally unconscionable. See In re Hennel,
133 A.D.3d at 1124-25 (Garry, J.P. dissenting) (collecting cases).
Accordingly, the court grants MSEI and MTA’s motion on this claim.
Finally, as Universal correctly notes, it does not have a contract with
MTA and, therefore, the unjust enrichment and unfair competition claims
survive. See Hochman, 14 A.D.3d at 654-55. As such, MSEI and MTA’s
motion for judgment on the pleadings, (Dkt. No. 80), is granted in part and
denied in part as set forth above.
C.

Summary Judgment
1.

MSEI & MTA’s Motion for Summary Judgment on Universal’s
Third Amended Complaint

MSEI and MTA argue that they are entitled to summary judgment on

17

all counts of the third amended complaint because, under the EPA, MSEI
owns all intellectual property contained in the source codes provided by
Universal in the THS1A. (Dkt. No. 199, Attach. 1 at 34-44.) In opposition,
Universal contends that MSEI does not own the source codes under the
EPA. (Dkt. No. 210, Attach. 1 at 25-42.)
MSEI’s ownership claim hinges on the interpretation of section 8.4 of
the EPA. In relevant part, section 8.4 reads “that, if during the course of
[the EPA], the EQUIPMENT is customized for MSEI [by Universal] . . . any
such intellectual property created as a result of such customization . . . will
be and remain the property of MSEI.” (Dkt. No. 196, Attach. 7 § 8.4.) At
the heart of this issue are the source codes provided by Universal to MSEI,
which was then given — in some altered form — to MTA. If “equipment”
under the terms of the EPA includes the source codes, MSEI can
reasonably argue that its disclosure of the source code to MTA was not a
breach so long as the source code was “customized for MSEI” and
Universal had “access to MSEI intellectual property” to customize the
source code. Naturally, if “equipment” excludes software, like the source
codes at issue, MSEI is unable to make that argument.
The EPA does not explicitly define “equipment.” MSEI and MTA
18

assert that the contract unambiguously includes software as “equipment,”
citing other provisions and exhibits to the EPA. (Dkt. No. 199 at 7 n.2, 36;
Dkt. No. 220 at 14-16.) Universal, on the other hand, contends that
“equipment” unambiguously and exclusively means hardware. (Dkt.
No. 210 at 25-28.) They cannot both be correct.
Where contractual language is clear and unambiguous, the court, as
a matter of law, enforces the provisions in accordance with their plain and
ordinary meaning. See Selective Ins. Co. of Am. v. Cty. of Rensselaer, 26
N.Y.3d 649, 655 (2016). Where ambiguity is absent from the contract,
extrinsic evidence generally cannot be considered in its interpretation. See
W.W.W. Assocs., Inc. v. Giancontieri, 77 N.Y.2d 157, 162 (1990). “To
determine whether a writing is unambiguous, language should not be read
in isolation because the contract must be considered as a whole.” Brad H.
v. City of New York, 17 N.Y.3d 180, 185 (2011). “Ambiguity is present if
language was written so imperfectly that it is susceptible to more than one
reasonable interpretation.” Id. at 186. That interpretation must be
reasonable as the court will not “strain[] to find an ambiguity which
otherwise might not be thought to exist.” Uribe v. Merchants Bank of N.Y.,
91 N.Y.2d 336, 341 (1998). Whether an agreement is ambiguous is a
19

question of law answered by the court, see Riverside S. Planning Corp. v.
CRP/Extell Riverside, L.P., 13 N.Y.3d 398, 404 (2009), and the mere fact
that the parties interpret language in a contract differently does not
necessarily make it ambiguous, see Mount Vernon Fire Ins. Co. v. Creative
Hous., 88 N.Y.2d 347, 352 (1996). Finally, “[w]hen the interpretation of an
ambiguous contract depends on extrinsic evidence, it presents a question
of fact for a jury.” Arrow Commc’n Labs., Inc. v. Pico Prods., Inc., 219
A.D.2d 859, 860 (4th Dep’t 1995); see Sutton v. E. River Sav. Bank, 55
N.Y.2d 550, 554 (1982).
Considering the contract as a whole, the term equipment is
susceptible to only one meaning, i.e., “equipment” is tangible hardware and
does not include software, and, by extension, source codes. See
Equipment, Merriam Webster’s Collegiate Dictionary (10th ed. 1997)
(defining equipment as, among other things, “the set of articles or physical
resources serving to equip a person or thing as the implements used in an
operation or activity”); see also Rosner v. Metro. Prop. & Liab. Ins. Co., 96
N.Y.2d 475, 479-80 (2001) (approving a court’s use of dictionaries as a
tool to decipher a word’s plain meaning). Most compelling, however, is that
in section 8.3, the parties contemplated the scenario in which Universal
20

“discontinues EQUIPMENT.” (Dkt. No. 196, Attach. 7 § 8.3.) Under such
a circumstance, MSEI could request, and Universal would grant, a nonexclusive license for “software source codes.” (Id.) The EPA, read as a
whole, suggests that the parties intended to treat software, like the source
codes, as separate from and outside of the term equipment. To interpret
the contract otherwise would also be unfaithful to the plain meaning of
equipment.
That having been said, the court rejects MSEI and MTA’s arguments
that “equipment” includes software. (Dkt. No. 199 at 7 n.2; Dkt. No. 220 at
14-16.) First, they point to section 1.2 which states that the parties will sell
and purchase “all EQUIPMENT as described in Exhibit A and B.” (Dkt.
No. 196, Attach. 7 § 1.2.) MSEI and MTA direct the court’s attention to
Exhibit A of the EPA which lists the equipment to be purchased, the
payment terms, and the delivery schedule.5 (Id. at 8.) Specifically, they
argue that, because Exhibit A lists that MSEI will purchase “all the [nonrecurring engineering]” including “(hardware, software and detailed test
methodology development),” equipment must also include software. (Id. at

5

The exhibits to the EPA have been expressly incorporated into the agreement. (Dkt.
No. 196, Attach. 7 § 16.2.)

21

8; Dkt. No. 199 at 7 n.2.) However, MSEI and MTA overlook that in Exhibit
B under the heading “Functional Requirements Specifications” the contract
states that “[s]ource code will not be provided.” (Dkt. No. 196, Attach. 7 at
10-11.) Thus, section 1.2 and Exhibit A do not support MSEI and MTA’s
interpretation in light of the conflicting contractual language.
Second, MSEI and MTA refer to the indemnification provision as
additional support that equipment includes both hardware and software.
(Dkt. No. 199 at 36.) MSEI and MTA argue that the provision required
Universal to indemnify MSEI if the equipment was accused of patent or
copyright infringement claims. (Dkt. No. 196, Attach. 7 § 8.7; Dkt. No. 220
at 14-15.) MSEI and MTA appear to argue that because patent and
copyright infringement claims necessarily pertain to software, the definition
of equipment must include software. (Dkt. No. 220 at 14-15.) This reading
is inconsistent with the EPA. As Universal notes, the provision only
required Universal to indemnify infringement claims against “goods or parts
contained in the EQUIPMENT.” (Dkt. No. 196, Attach. 7 § 8.7(a); Dkt.
No. 210 at 27.) The provision does not contemplate that Universal will
indemnify software and, consequently, does not support MSEI and MTA’s
interpretation that equipment includes software.
22

Finally, MSEI and MTA point to section 4.1 which states that the
equipment must perform certain specifications including “cycle time,
throughput, yield, uptime, [and] machine efficiency.” (Dkt. No. 196, Attach.
7 § 4.1(b).) They argue that, because hardware cannot perform these
functions without software, equipment must be interpreted to include
software. (Dkt. No. 220 at 15.) However, MSEI and MTA’s argument
requires the court to attach a meaning to equipment based on its
component parts rather than interpret the word as a whole. Accordingly,
this argument also fails to support MSEI and MTA’s interpretation.
Because equipment is interpreted to mean hardware, section 8.4
does not apply to the source codes. (Dkt. No. 196, Attach. 7 § 8.4.) As
such, MSEI cannot assert that it owned the source codes as a defense to
any of Universal’s claims, and MSEI and MTA’s motion for summary
judgment on this ground must be denied.
2.

MSEI’s Motion & Universal’s Cross Motion for Summary
Judgment on MSEI’s Complaint in Member Case

MSEI argues that it is entitled to summary judgment on all of its
claims in the member case because Universal violated the non-disclosure
provisions of the CDA by filing a complaint in the lead case which publically

23

disclosed confidential information. (Dkt. No. 199 at 49-50.) Universal
cross moves and contends that it is entitled to summary judgment because
the disclosed information was not subject to the CDA since the agreement
had expired before Universal filed its complaint. (Dkt. No. 210 at 45-50.)
MSEI filed a complaint alleging a breach of the duty of confidentiality,
unfair competition, misappropriation, and “injunction.” (Compl., 13-cv1144.) An injunction is not a proper claim but merely a remedy. See
Chiste v. Hotels.com L.P., 756 F. Supp. 2d 382, 408 (S.D.N.Y. 2010)
(“Injunction is not a separate cause of action; it is a remedy.”). MSEI
premises all of its remaining claims on Universal’s filings in the lead case.
(Compl. ¶¶ 12-23, 13-cv-1144.)
MSEI argues that Universal breached CDA §§ 2(b) and 5(b) and that
these sections survive the agreement’s sunset provision. (Dkt. No. 199 at
49-50; Dkt No. 220 at 20 n.10.) Specifically, MSEI contends that the
sunset provision only applies to CDA § 5(a). (Dkt No. 220 at 20 n.10.)
Universal maintains that the CDA has expired because the sunset
provision applies to the entire agreement. (Dkt. No. 210 at 46.) Universal
asserts that section 5(a) is the only provision that lists its contractual
obligations and, thus, the parties clearly contemplated that the sunset
24

provision would apply to the entire agreement. (Id. at 46-47.)
The CDA contains a choice of law provision which calls for the
agreement to be interpreted according to Oregon law. (Dkt. No. 196,
Attach. 39 § 10.) Oregon law employs the same rules of contract
interpretation as New York law, which are discussed above and will not be
repeated here. Compare Williams v. RJ Reynolds Tobacco Co., 271 P.3d
103, 109 (Or. 2011), with Brad H., 17 N.Y.3d at 186.
The sunset provision, in relevant part, provides that Universal’s
“obligations under Section 5(a) stop [on December 30, 2012].” (Dkt.
No. 196, Attach. 39 § 4(a).) While this language on its face appears only
to apply to section 5(a), when read in the context of the CDA as a whole,
MSEI’s interpretation would render the agreement nonsensical. Contrary
to MSEI’s contention, section 5(a) is the only section which describes
Universal’s duty to keep information confidential. Sections 2(b) and 5(b),
respectively, explain the purpose for which Universal may use the
confidential information and how Universal’s employees must treat the
confidential information. (Dkt. No. 196, Attach. 39 §§ 2(b), 5(b).) These
provisions are not themselves separate, independent duties. MSEI
maintains that these sections remain enforceable even though section 5(a)
25

would expire under the sunset provision. (Dkt. No. 220 at 20 n.10.)
However, this interpretation would lead to an absurd result because the
underlying duty from section 5(a) — on which sections 2(b) and 5(b) are
based — is no longer enforceable. Thus, the only plausible interpretation
of the sunset provision is that it applies to the entire CDA and not merely
section 5(a). Accordingly, the entire CDA expired on December 30, 2012.
(Dkt. No. 196, Attach. 39 § 4(d).)
As noted above, MSEI premises all of its claims on Universal’s filings
in the lead action. Universal filed its complaint in the lead action on July
15, 2013. (Compl., 13-cv-831.) This is well after the CDA expired. (Dkt.
No. 196, Attach. 39 § 4(d).) Therefore, MSEI’s motion is denied and its
complaint is dismissed and Universal’s cross motion on this ground is
granted.
3.

Universal’s Motion for Partial Summary Judgment

Universal argues that it is entitled to summary judgment on its claims
of copyright infringement, breach of contract, trade secret
misappropriation, unfair competition, and unjust enrichment. (Dkt. No. 210
at 10-23, 44-45.) As determined above, the court has already dismissed
Universal’s unfair competition, unjust enrichment, and promissory estoppel
26

claims against MSEI. (See supra Part.IV.A.) The court turns to the
remaining claims.
a.

Copyright Infringement

Universal argues that the court should enter judgment on its
copyright claim because it owns valid copyrights to its source code as
evidenced by its certificates of registrations, and MSEI and MTA copied
this source code when it was included in the subsequent THS lines. (Dkt.
No. 210 at 10-13.) MSEI and MTA, however, contend that Universal’s
certificates should not be presumed valid because they were filed more
than five years after the source code was published.6 (Dkt. No. 199 at 4445.) In response, Universal maintains that the source code was never
published under the Act’s definition and therefore the presumption of
validity still applies. (Dkt. No. 210 at 11-12.)
In order to prove a claim of copyright infringement, “two elements
must be proven: (1) ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original.” Feist Publ’ns, Inc. v.

6

MSEI and MTA also argue that Universal’s copyright claim is time barred. (Dkt.
No. 199 at 45; Dkt. No. 220 at 3-5.) However, this argument is premised on MSEI’s defense
that it owned the source codes which the court has now rejected in deciding MSEI and MTA’s
motion for summary judgment. See Part IV.B.1.

27

Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991); see Peter F. Gaito
Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir. 2010). A
statutory presumption of validity attaches to works registered with the
United States Copyright Office. See 17 U.S.C. § 410(c); Yurman Design,
Inc. v. PAJ, Inc., 262 F.3d 101, 109 (2d Cir. 2001). However, certificates
of registration filed after five years from the work’s first publication are not
presumed valid and courts exercise their discretion in what weight to afford
the certificates. See Troll Co. v. Uneeda Doll Co., 483 F.3d 150, 154 n.5
(2d Cir. 2007). To prove copying by a defendant, a plaintiff may rely on
“[e]vidence of access and substantial similarity . . . where actual copying
cannot be proven.” Zalewski v. T.P. Builders, Inc., 875 F. Supp. 2d 135,
141 (N.D.N.Y. 2012).
Universal’s copyright infringement theory is as follows: (1) Universal
created source code entitled to copyright protection before the MSEI
project; (2) Universal used this source code to build the THS1A line; (3)
MSEI then gave MTA Universal’s source code, which MTA copied in
subsequent THS lines that it built for MSEI. (Dkt. No. 210 at 10-13.) It is
undisputed, however, that Universal did not file certificates of registration
for its source code until sometime after September 2014, (3d Am. Compl.,
28

Attachs. 3-10), more than five years after it was created, (Defs.’ SMF ¶ 63).
Ordinarily, a work cannot be presumed valid if there is a five-year
registration delay. See 17 U.S.C. § 410(c). Nevertheless, Universal
argues that the source code should be entitled to the presumption because
it was never published under the Act’s definition. (Dkt. No. 210 at 11-12.)
Universal contends that the source code was subject to express
restrictions and has never been made publically available. (Id.)
“[C]ertificates of a registration made before or within five years after
first publication of the work shall constitute prima facie evidence of the
validity of the copyright.” 17 U.S.C. § 410(c) (emphasis added). Under the
Copyright Act, a “[p]ublication is the distribution of copies . . . of a work to
the public by sale or other transfer of ownership.” Id. § 101. However,
“[t]he showing of a work to a select group of people for a limited
purpose . . . does not constitute ‘publication’ within the meaning of the
copyright law, and is legally insufficient to place the work into the public
domain.” Penguin Books U.S.A., Inc. v. New Christian Church of Full
Endeavor, Ltd., 288 F. Supp. 2d 544, 555 (S.D.N.Y. 2003). This limited
publication is found if the creator showed the publication “(1) to a definitely
select group, (2) for a limited purpose, and (3) without the right of diffusion,
29

reproduction, distribution or sale.” Id.
Here, Universal satisfies its burden to show that the source code was
only subject to limited publication. Under the EPA, Universal licensed the
source code to MSEI for its “internal use only.” (Dkt. No. 196, Attach. 7
§ 8.2(d).) Thus, MSEI did not have the right to further reproduce or sell the
source code to another party. Because the publication was limited, it was
never “published” under the Act. See Penguin Books U.S.A., Inc., 288 F.
Supp. 2d at 555. Therefore, the presumption of validity still applies to
Universal’s certificates of registrations, which MSEI and MTA have failed to
rebut. See 17 U.S.C. § 410(c). As such, Universal satisfies the first
element of the infringement claim.
With regard to the second element of copying, however, material
questions of fact remain. It is undisputed that MSEI had access to
Universal’s source code. (Pl.’s Supp SMF ¶ 78.) By contrast, the parties
dispute whether MTA had access to this same source code because MSEI
modified the code before providing it to MTA. (Defs.’ Supp SMF ¶ 78.)
Additionally, the parties dispute the extent of the similarity between
Universal’s source code and the source code found on the subsequent
THS lines. In support of Universal’s position, it cites to its experts, Terry
30

Wolfe and Richard Hooper, who opine that software found in the THS1A
line existed before the MSEI project and is identical or “almost an exact
match” to the source code found in the subsequent THS lines. (Pl.’s Supp.
SMF ¶¶ 15, 79-102; Dkt. No. 209, Attach. 83 at 36 § 5; Dkt. No. 209,
Attach. 87 ¶ 24.) In support of MSEI’s position, it cites to the declaration of
its own expert Timothy Rickard who opines that the source code found in
the THS1A line was customized for MSEI and is substantially different from
that found in Universal’s pre-existing code. (Defs.’ Supp. SMF ¶ 15; Dkt.
No. 208 ¶ 25, Item Nos. 6, 8, 10, 18, 20, 22.) These differing opinions
present a battle of the experts, which must be resolved by a jury. See
Victory v. Hewlett-Packard Co., 34 F. Supp. 2d 809, 824 (E.D.N.Y. 1999)
(“Resolution of the battle of experts is a matter best suited for the trier of
fact.”). Accordingly, Universal’s motion for summary judgment on this
claim is denied.
b.

Breach of Contract

Universal contends that it is entitled to summary judgment because
MSEI breached the EPA by giving MTA access to its source code in
violation of section 8.2(d), which MTA then used to develop subsequent

31

THS lines for MSEI. (Dkt. No. 210 at 19-20.7) Universal asserts that the
source code is “Pre-Existing Intellectual Property” as defined under section
8.2(a) of the EPA. (Id.) MSEI first argues that Universal did not perform
under the terms of the EPA. (Dkt. No. 220 at 7-9.) In addition, MSEI
asserts that it did not breach section 8.2(d) of the EPA because Universal
did not use “Pre-Existing Intellectual Property” to create the source codes
for the THS1A line. (Id. at 6.) Rather, MSEI argues that Universal
completely customized the source codes for MSEI. (Id.; Dkt. No. 199 at
14-16, 38-39.)
Under New York law, “[t]he elements of a cause of action to recover
for breach of contract are (1) the existence of a contract, (2) the plaintiff’s
performance under the contract, (3) the defendant’s breach of contract,
and (4) resulting damages.” Palmetto Partners, L.P. v. AJW Qualified
Partners, LLC, 83 A.D.3d 804, 806 (2d Dep’t 2011); see Stonehill Capital
Mgmt., LLC v. Bank of the West, — N.Y.3d — , 2016 WL 7348990 (N.Y.
Dec. 20, 2016).

7

Universal contends that, despite no express obligation on MSEI, pursuant to the
doctrine of expressio unius est exclusio alterius MSEI was prohibited from using the source
codes outside the scope of the limited license it had. (Dkt. No. 210 at 19-20.) MSEI makes no
argument in opposition to this point; instead it focused on other reasons demonstrating that it
did not breach the EPA. (Dkt. No. 220 at 14-16.)

32

Here, it is undisputed that the EPA was a valid contract between the
parties. (Defs.’ SMF ¶ 12; Pl.’s Supp. SMF ¶ 16; Dkt. No. 196, Attach. 7.)
The parties’ contentions are directed to Universal’s performance and
MSEI’s alleged breach.
First, Universal asserts that it performed under the terms of the EPA
because MSEI accepted the THS1A as evidenced by the FCA letter. (Dkt.
No. 210 at 19; Pl.’s Supp. SMF ¶ 18.) MSEI contends that Universal failed
to perform because it refused to sell the THS1B for the price specified in
the EPA and refused to provide the Polaris Jr. robots to MTA. (Dkt.
No. 220 at 7-9.) The court agrees with Universal.
It is fundamental to contract law that “a condition precedent is an act
or event, . . . which, unless the condition is excused, must occur before a
duty to perform a promise in the agreement arises.” MHR Capital Partners
LP v. Presstek, Inc., 12 N.Y.3d 640, 645 (2009) (internal quotation marks
and citation omitted). “[T]erms such as ‘if,’ ‘unless’ and ‘until’ constitute[]
unmistakable language of condition.” Id. (internal quotation marks and
citation omitted). Furthermore, “[e]xpress conditions must be literally
performed.” Id.
Universal and MSEI agreed that Universal would sell the second
33

phase of the THS, which came to be known as the THS1B, to MSEI for
$350,000 “if there is no change in the specification” to the THS project.
(Dkt. No. 196, Attach. 7 at 8 ¶ 4.) Here, it is undisputed that changes in
the specifications occurred as evidence by change order invoices from
Universal to MSEI. (Dkt. No. 209, Attach. 70.) Because the price of the
THS1B was conditional and there were changes to the specifications,
Universal was excused from providing the THS1B at the price listed in the
EPA.
In addition, no provision in the EPA required Universal to provide
MTA with its Polaris Jr. robots. Section 8.4 of the EPA, upon which MSEI
relies, merely states that Universal’s equipment including the Polaris Jr. “is
readily available to third parties through [Universal’s] current published
specifications.” (Dkt. No. 196, Attach. 7 § 8.4.) A plain reading of this
provision in context with the entire EPA does not mandate that Universal
provide its Polaris Jr. robots to MTA. See Selective Ins. Co., 26 N.Y.3d at
655.
Despite the foregoing, a question of material fact remains regarding
whether MSEI breached the EPA. Universal maintains that MSEI
breached section 8.2 of the EPA by exceeding the scope of the license
34

when it gave MTA the source code. (Dkt. No. 210 at 19-20.) This section
provides that if Universal “uses any Pre-Existing Intellectual Property in
connection with [the EPA], [Universal] grants MSEI, MSEI’s
subcontractors, or suppliers, a non-exclusive, royalty-free, worldwide,
perpetual license to, use, reproduce, display, of the Pre-Existing
Intellectual Property for MSEI’s internal use only.” (Dkt. No. 196, Attach. 7
§ 8.2(d).) In order to determine whether MSEI breached, the court must
first assess whether Universal used “Pre-Existing Intellectual Property” in
the THS1A line. The agreement defines “Pre-Existing Intellectual Property”
to include trade secrets or protectable designs that “ha[ve] already been
conceived or developed by anyone other than MSEI before [Universal]
render[ed] any services.” (Id. § 8.2(a).)
The parties advance similar arguments to the copyright infringement
claim and dispute whether the THS1A line contains “Pre-Existing
Intellectual Property.”8 (Pl.’s Supp. SMF ¶¶ 14-15; Defs.’ Supp. SMF
¶¶ 14-15.) The parties cite to the same expert reports and contest whether

8

Universal asserts that MSEI has not properly denied its statement of material fact.
(Dkt. No. 224 at 3-4.) However, Universal does not address the opinion of MSEI’s expert,
upon which MSEI relies, and the court concludes that this expert’s opinion creates a genuine
issue of material fact.

35

source code found in the THS1A was pre-existing or customized for MSEI.
(Pl.’s Supp. SMF ¶ 15; Dkt. No. 209, Attach. 83 at 36 § 5; Defs.’ Supp.
SMF ¶ 15; Dkt. No. 208 ¶ 25, Item Nos. 6, 8, 10, 18, 20, 22.) As with the
copyright claim, the conflicting expert opinions must be resolved by a jury.
See Victory, 34 F. Supp. 2d at 824. Accordingly, Universal’s motion for
summary judgment on this claim is also denied.
c.

Misappropriation of Trade Secrets, Unfair Competition, &
Unjust Enrichment

Universal’s misappropriation of trade secrets, unfair competition, and
unjust enrichment claims rest on its contention that MSEI supplied its
source code to MTA, which MTA then used to develop the subsequent
THS lines. (3d Am. Compl. ¶¶ 174-79, 237-40, 255-57, 263, 266.)
However, MSEI and MTA dispute that MSEI supplied MTA with Universal’s
source code. (Defs.’ Supp. SMF ¶¶ 29-32.) Rather, they claim that MSEI
modified the code in the THS1A before it supplied it to MTA. (Id.)
Because Universal’s claims for misappropriation of trade secrets,
unfair competition, and unjust enrichment turn on the resolution of the
same general set of facts as its copyright and breach of contract claims,
Universal’s motion for summary judgment is denied on these claims as

36

well.
C.

Surviving Claims
In sum, the following claims survive and are deemed trial ready. As

against MSEI, Universal’s claims for breach of contract, misappropriation
of trade secrets, and copyright infringement. As against MTA, Universal’s
claims for unfair competition, unjust enrichment, misappropriation of trade
secrets, and copyright infringement.
D.

Filing Under Seal
The court notes that a protective order is in place, (Dkt. No. 32), and

the parties have redacted or filed nearly all of their submissions on these
motions under seal, (Dkt. Nos. 196, 209). In light of this, the court initially
files this Memorandum-Decision and Order under seal. The parties shall
advise the court of their joint position regarding sealing within seven days
of the date of this Memorandum-Decision and Order. In particular, the joint
submission shall address whether the parties are of the opinion that
sealing is required, if so, why, and whether a redacted version of the
Memorandum-Decision and Order, and precisely what those redactions
would be, can be made available to the public.
V. Conclusion
37

WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that MSEI and MTA’s motion to strike (Dkt. No. 107) is
DENIED; and it is further
ORDERED that MSEI and MTA’s motion for judgment on the
pleadings (Dkt. No. 80) is GRANTED IN PART and DENIED IN PART as
follows:
GRANTED with respect to claims of unjust enrichment, unfair
competition, and promissory estoppel against MSEI; and
DENIED in all other respects; and it is further
ORDERED that MSEI and MTA’s motion to dismiss (Dkt. No. 97) is
DENIED AS MOOT; and it is further
ORDERED that MSEI and MTA’s motion for summary judgment (Dkt.
No. 196) is DENIED; and it is further
ORDERED that Universal’s cross motion for partial summary
judgment (Dkt. No. 209) is GRANTED IN PART and DENIED IN PART as
follows:
GRANTED with respect to MSEI’s complaint in the member
case; and it is further

38

DENIED in all other respects; and it is further
ORDERED that MSEI’s complaint (Dkt. No. 1, 3:13-cv-1144) in the
member case is DISMISSED; and it is further
ORDERED that this case is deemed trial ready and the court, in due
course, shall issue a trial scheduling order; and it is further
ORDERED that the parties shall advise the court of their joint
position regarding sealing within seven (7) days of the date of this
Memorandum-Decision and Order. In particular, the joint submission shall
address whether the parties are of the opinion that sealing is required, if
so, why, and whether a redacted version of the Memorandum-Decision and
Order, and precisely what those redactions would be, can be made
available to the public; and it is further
ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.
IT IS SO ORDERED.
February 24, 2017
Albany, New York

39