EPIC TECH, LLC v. STHR GROUP, LLC et al
Filing
88
MEMORANDUM OPINION AND RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE signed by MAG/JUDGE L. PATRICK AULD on 12/07/2015; that the DDDDB Motion (Docket Entry 67 ), the Falcon Technologies Motion (Docket Entry 69 ), and the Schappel Motion (Docket Entry 78 ) be denied. (Garland, Leah)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
EPIC TECH, LLC,
)
)
)
)
)
)
)
)
)
Plaintiff,
v.
STHR GROUP, LLC, et al.,
Defendants.
1:15cv252
MEMORANDUM OPINION AND RECOMMENDATION
OF UNITED STATES MAGISTRATE JUDGE
This
case
comes
before
the
undersigned
United
States
Magistrate Judge for a recommendation on “Defendant DDDDB, LLC’s
Motion
to
Dismiss”
(Docket
Entry
67)
(the
“DDDDB
Motion”),
“Defendants Falcon Technologies, LLC and Richard Schappel’s Motion
to Dismiss” (Docket Entry 69) (the “Falcon Technologies Motion”),
and “Defendant Richard Schappel’s Motion to Dismiss Cross-Claims”
(Docket Entry 78) (the “Schappel Motion”).
follow,
the
Court
should
deny
the
DDDDB
For the reasons that
Motion,
the
Falcon
Technologies Motion, and the Schappel Motion (collectively, the
“Motions to Dismiss”).
STATEMENT OF THE CASE
I.
Preliminary Matters
On March 23, 2015, Epic Tech, LLC (“Epic”) sued STHR Group,
LLC (“STHR”) and Pryor Development Company, Inc. (“Pryor,” and
collectively with STHR, the “Store Defendants”) for, inter alia,
copyright
infringement,
trademark
infringement,
Lanham
Act
violations, conversion, misappropriation of trade secrets, and
unfair and deceptive trade practices in connection with their use
of the “Falcon” sweepstakes system.
to
Epic,
system”
this
“is
software.
a
(Docket Entry 1.)
According
“server-based,
electronic
sweepstakes
pirated
of
“Legacy”
copy”
(Id. at 2, ¶ 9.)1
Epic’s
software
sweepstakes
In March and April 2015, United
States District Judge Catherine C. Eagles granted Epic’s requests
for a temporary restraining order, orders of impoundment, and a
preliminary injunction against the Store Defendants.
Entry 27.)
(See Docket
Judge Eagles also granted Epic’s request for limited
expedited discovery to help determine other entities involved in
the alleged infringements. (See Docket Entry 21 at 1; Docket Entry
27 at 4-6.)
Thereafter, Epic filed an amended complaint (the
“Amended Complaint”) against the Store Defendants and various other
entities allegedly involved in the distribution and utilization of
the Falcon software.
(Docket Entry 39.)
The Amended Complaint
likewise asserts claims for, inter alia, copyright infringement,
trademark
infringement,
Lanham
Act
violations,
conversion,
misappropriation of trade secrets, and unfair and deceptive trade
practices.
(See id. at 23-35, ¶¶ 101-68.)
1
Citations herein to Docket Entry pages utilize the
document’s internal pagination if unified internal pagination
exists. In the absence of such pagination, the Docket Entry page
citations utilize the CM/ECF footer’s pagination.
2
II.
Amended Complaint
As relevant to the Motions to Dismiss, the Amended Complaint
makes the following allegations:
Epic owns Legacy, a proprietary gaming software system, and
various associated copyrights, trademarks, and patents.
Entry 39 at 10-18, ¶¶ 50-83; id. at 21-22, ¶ 98.)
Certain of these
copyrights and trademarks are federally registered.
16-18, ¶¶ 75-76, 78, 80.)
(Docket
(See id. at
Legacy operates across a network
consisting of a server, a management terminal, a point of sale
terminal, and computer terminals for customers’ use.
(Id. at 10,
¶ 52.) It features “highly confidential mathematical formulas” and
source code that neither individuals playing the Legacy games nor
businesses licensing the Legacy system may view.
¶ 53.)
(Id. at 11,
Instead, “[a]ccess to the server is only available to
high security level employees of Epic, via sophisticated password
protection mechanisms.” (Id.) Utilizing this code, Legacy creates
a “variety of games, which have proprietary names, themes, images,
sounds, and even music.”
(Id. at 11, ¶ 54.)
“With access to and
knowledge of the server-based core software, it is possible to
design new games with different images or modify the images of
existing games, while still relying upon the same game design and
mathematical formulas contained in the core software.” (Id. at 12,
¶ 56.)
3
The Store Defendants and identified “Distributor Defendants”
(collectively, “Defendants”) have jointly and individually violated
Epic’s rights by distributing Falcon, a pirated version of Legacy.
(Id. at 19-23, ¶¶ 84-100.)
which
they
offer
licensing
and
for
The Store Defendants acquired Falcon,
public
use
distribution
at
their
agreement
Solutions, LLC (“Prestige”).
stores,
with
through
Prestige
(Id. at 19, ¶¶ 85-86.)
a
Gaming
Through a
licensing and distribution agreement with Falcon Amusement, LLC
(“Falcon Amusement”), Prestige and TBW Management, LLC (“TBW”)
distribute,
install,
and
Carolina and Florida.
maintain
Falcon
at
(Id. at 19, ¶¶ 87-88.)
stores
in
North
Falcon Amusement in
turn acquired Falcon for distribution in North Carolina and Florida
through a licensing and distribution agreement purportedly with
DDDDB, LLC (“DDDDB”). (Id. at 19, ¶ 89.) Falcon Technologies, LLC
(“Falcon Technologies”) “is the sole member/manager of DDDDB.”
(Id. at 5, ¶ 21.)
Prestige, DDDDB, Falcon Technologies, Falcon
Amusement, STHR, and TBW are alter egos of certain individual
defendants.
(Id. at 4-8, ¶¶ 16-42.)
In particular, DDDDB and
Falcon Technologies are alter egos of Richard Schappel (“Schappel,”
and collectively with DDDDB and Falcon Technologies, the “DDDDB
Group”).
The
(Id. at 5, ¶¶ 21-22.)
Distributor
Technologies,
contributed
and
to”
the
Defendants,
Schappel,
Store
including
“induced,
Defendants’
4
DDDDB,
Falcon
encouraged,
and/or
“copyright
infringing
activity.”
(Id. at 24, ¶¶ 109-10.)
The Distributor Defendants
also “supplied materials, including servers” to “others, including
internet cafes,” who infringed Epic’s trademarks and committed
unfair competition in contravention of the Lanham Act and common
law.
¶
(Id. at 26, ¶ 117; see id. at 28, ¶¶ 128-29; id. at 30,
139.)
Finally,
the
Defendants
“have
taken
illegally
and
possessed” “the sole and exclusive property of Epic” (id. at 31,
¶¶ 143-44); have misappropriated Epic’s trade secrets, including
“formulas, methodologies, and other confidential information” in
the Legacy software (id. at 32-33, ¶¶ 152-53, 155); and have,
through these actions, committed “unfair and deceptive acts and
practices” in contravention of North Carolina General Statute
Section 75-1.1 (the “UDTPA”) (id. at 34-35, ¶¶ 165, 168).
III.
Crossclaims
In conjunction with answering the Amended Complaint, Falcon
Amusement and related individual defendants (the “Falcon Amusement
Parties”) brought crossclaims for breach of contract, fraud and/or
misrepresentation, and unfair or deceptive trade practices (the
“Crossclaims”) against DDDDB and Schappel (the “Schappel Group”).
(Docket Entry 73 at 16-21.)
As relevant to the Motions to Dismiss,
the Crossclaims assert:
5
Schappel
approached
Kevin
Frank
(“Frank”)2
“about
a
new
software [Schappel] wanted to put into operation at locations in
North
Carolina.”
(Id.
at
16.)
After
“several
months”
of
negotiations, the Schappel Group and Falcon Amusement entered into
a licensing and distribution contract for this Falcon software (the
“Agreement”).
(Id.
at
(Agreement).)
During
16-17;
the
see
also
negotiations,
Docket
Schappel
Entry
told
73-1
Falcon
Amusement that he and Gary Lantz (“Lantz”) had created the Falcon
software.
(See Docket Entry 73 at 17, 19-20.)
In entering into
the Agreement, the Falcon Amusement Parties relied on the Schappel
Group’s representation that the Falcon software was Lantz and
Schappel’s original work.
(See id. at 17, 19-20.)
The Falcon Amusement Parties had no access to the Falcon
source code.
(Id. at 17.)
During the period the Falcon Amusement
Parties used the Falcon software, Frank had multiple discussions
with
Schappel
software.
and
(Id.)
Lantz
“[T]o
regarding
comply
necessary
with
local
changes
law
to
the
enforcement
objections,” the Schappel Group made “several changes to the
software during the time that it was being operated in North
Carolina.”
(Id.)
These modifications included changes “to the
math, that is both the paytable and percentage of payouts,” and “to
the manner in which the software operated.”
(Id. at 18.)
2 Frank is an investor in Falcon Amusement.
at 2.)
6
(Docket Entry 73
The Agreement, which was attached to the Crossclaims, was
“entered into effective as of November 18, 2014 (the ‘Effective
Date’), by and between DDDDB, LLC (‘Manufacturer’), and Falcon
Amusement,
LLC[,]
a
North
Carolina
Limited
Liability
Company
(‘Licensee’)” “to facilitate the distribution of the SOFTWARE in
the State of NORTH CAROLINA (the ‘Territory’), subject to the terms
and conditions of this Agreement.”
(Docket Entry 73-1 at 1.)
Pursuant to the Agreement, “Manufacturer hereby grants to Licensee
an exclusive License of the SOFTWARE in the Territory, subject to
the terms and conditions hereof” (id.), including certain placement
targets (id. at 3).
Specifically, the Agreement mandated that
Falcon Amusement place “at least 50 terminals with the Software” in
North Carolina “each quarter of the first year of this Agreement,”
with at least 250 such terminals “placed within the first year.”
(Id.)
The Agreement had an initial one-year term, with automatic
24-month renewals.
(Id. at 3-4.)
The Agreement contained a North
Carolina choice of law provision and a mandatory North Carolina
forum selection clause, with corresponding consents to personal
jurisdiction
in
North
Carolina.
(Id.
at
7.)
Each
party
“warrant[ed] and represent[ed] to the other . . . that the officer
of each party executing this Agreement below is authorized to bind
his company to this Agreement.”
(Id. at 6.)
On November 20, 2014,
Schappel signed the Agreement on behalf of DDDDB.
Agreement does not mention Falcon Technologies.
7
(Id. at 7.)
(Id.)
The
IV.
Motions to Dismiss
In response to the Amended Complaint and the Crossclaims, the
DDDDB Group brought the Motions to Dismiss.
Motions
to
Dismiss
seek
dismissal
of
Collectively, the
Schappel
and
Falcon
Technologies from the lawsuit on personal jurisdiction grounds
and/or dismissal of Epic’s state-law conversion, trade secret
misappropriation, and UDTPA claims on copyright preemption grounds.
(See Docket Entries 67, 69, 78.)
The Falcon Technologies Motion
also maintains that the Amended Complaint presents insufficiently
particularized
Schappel.
allegations
against
(Docket Entry 69 at 2.)
Technologies
Motion
and
the
Falcon
Technologies
and
In support of the Falcon
Schappel
Motion,
Schappel
filed
affidavits attesting to his, and for the Falcon Technologies
Motion, Falcon Technologies’, lack of contacts with North Carolina.
(Docket
Entries
69-1,
78-1.)
Schappel
attached
Nevada
incorporation and licensure records for Falcon Technologies and
DDDDB to his affidavit in support of the Falcon Technologies
Motion.
(Docket Entry 69-1 at 8-16.)
Schappel initially maintained that he acted on behalf of DDDDB
in executing and implementing the Agreement.
(Docket Entry 79 at
4-6; see also Docket Entry 70 at 7 (“Schappel has no contacts with
North Carolina whatsoever. . . .
that
Schappel
purposefully
Plaintiff has not and cannot show
availed
himself
of
otherwise established minimum contacts . . . .”).)
8
the
State
or
In response,
Epic and the Falcon Amusement Parties emphasized that — according
to its Nevada incorporation records — DDDDB was not incorporated
until February 10, 2015, months after the Agreement’s execution and
implementation.
(Docket Entry 80 at 4-5, 8, 15; Docket Entry 82 at
2-3, 5-8; see also Docket Entry 69-1 at 13-15.)
In their reply
briefs, Falcon Technologies and Schappel asserted that Schappel
acted on behalf of Falcon Technologies prior to DDDDB’s formation.
(Docket Entry 86 at 1-5, 7; see generally Docket Entry 87.)
V.
Jurisdictional Evidence
As aforementioned, Schappel and Falcon Technologies offered
affidavits
and
Nevada
business
records
in
support
of
their
contention that the Court lacks personal jurisdiction over them.
In response, Epic presented testimony from the “30(b)(6) Deposition
of DDDDB, LLC, Richard A. Schappel” (Docket Entry 80-1) (the
“30(b)(6) Deposition”); deposition testimony from Frank (Docket
Entry 80-2) (the “Frank Deposition”); and Texas Secretary of State
business organizations inquiry results for DDDDB (Docket Entry 803) and Falcon Technologies (Docket Entry 80-4).
Collectively,
these materials reveal the following pertinent facts:3
In his affidavits, Schappel asserts that (1) neither he nor
Falcon Technologies has any assets in North Carolina and (2) he has
not “conducted business in North Carolina in [his] individual
3 The below summary only identifies sources where facts are
disputed.
9
capacity or on behalf of Falcon Technologies.”
(Docket Entry 78-1
at 2-3; see also Docket Entry 69-1 at 3-5.)
Instead, Schappel
maintains, “[a]ny actions [he] ha[s] taken regarding the software
at issue in this lawsuit were made on behalf of DDDDB, not in [his]
individual capacity.
Furthermore, any such actions took place in
either Texas or Nevada.”
(Docket Entry 78-1 at 4.)
Schappel has
physically traveled to North Carolina one time, for a wedding
twenty years ago.
(Docket Entry 69-1 at 3; Docket Entry 78-1 at
2.) Schappel asserts that he has (1) never commingled his personal
funds with DDDDB or Falcon Technologies nor (2) treated the assets
of DDDDB or Falcon Technologies as his own.
4; Docket Entry 78-1 at 3.)
(Docket Entry 69-1 at
He also maintains that DDDDB and
Falcon Technologies “follow all LLC formalities.”
69-1 at 4; Docket Entry 78-1 at 3.)
(Docket Entry
According to his affidavits,
Schappel is the manager of Falcon Technologies. (Docket Entry 69-1
at 4; Docket Entry 78-1 at 3.)
“A. T. Mathis,” however, is
identified as the manager of Falcon Technologies on the articles of
organization for Falcon Technologies and DDDDB. (Docket Entry 69-1
at 8, 10, 14.)
Schappel is the sole member of Falcon Technologies.
(Docket
Entry 80-1 at 32.) Schappel created Falcon Technologies in 2013 to
distribute Falcon software, “but it solely distributed Falcon
10
through DDDDB.”
(Id. at 12; see id. at 30, 45, 76.)4
Schappel
decided to create a wholly owned subsidiary of Falcon Technologies
to “distribute[] the Falcon software to Falcon Amusement[].”
at 32; see id. at 12, 45.)
purpose.
(Id.
Schappel created DDDDB for this
(Id. at 12, 32, 45; see also id. at 30-31.)
Although
“DDDDB was a pass-through” (id. at 33), as of April 2015, Frank had
never heard of Falcon Technologies (Docket Entry 80-2 at 56).
Franks maintains that Schappel approached him about the Falcon
software around April of 2014.
(Id. at 43.)
Schappel denies
approaching Frank “about distributing software in North Carolina.”
(Docket Entry 78-1 at 3.) Schappel further denies “enter[ing] into
an agreement to distribute software in North Carolina. Rather, the
agreement to distribute software was between DDDDB and Falcon
Amusement.”
(Id.)
Schappel is solely responsible for the management of DDDDB,
including its accounting needs, records, contracts, and invoices.
(Docket Entry 80-1 at 32-33, 40.)
If Falcon Amusement needed
technical support with the Falcon software, Frank would call
Schappel, who “would call a guy named Frank Lara” (“Lara”) and tell
him “we’re having this problem at this location, can you guys take
a look at it.”
(Id. at 37.)
On roughly a weekly basis, Schappel
accessed the distributed Falcon servers through the “LogMeIn”
4
As Schappel explained, “Falcon [Technologies] never
distributed [Falcon software]. DDDDB was the only way that I ever
distributed it.” (Docket Entry 80-1 at 12.)
11
remote access system to calculate DDDDB’s share of the profits from
each server under the Agreement.
Schappel
typically
named
the
(See id. at 40-43, 64-66.)
servers
in
the
LogMeIn
system
according to their locations. (Id. at 42.) Schappel mandated that
these locations be at least two miles apart.
(Id. at 68-69.)
The Falcon software distribution process was:
(1) Falcon
Amusement informed Schappel of the name and address of a store
needing a Falcon system; (2) Schappel created a server containing
the Falcon software from his master copy; (3) Schappel mailed the
server to Falcon Amusement5 or, occasionally, a store; (4) Falcon
Amusement installed the server and associated terminals at the
store; (5) Falcon Amusement notified Schappel upon installation of
the Falcon system; and (6) Schappel contacted Lara to activate the
server, which likely occurred through the LogMeIn system.
Entry 80-1 at 43, 49-58.)
(Docket
Between November 2014 and March 2015,
the public used the Falcon servers in at least 11 locations in
North Carolina.
(See id. at 147-56.)
Schappel does not know
whether the DDDDB Group or Falcon Amusement owns these servers, but
Schappel paid for the servers and did not charge Falcon Amusement
for them.
(Id. at 58-59.)
Falcon Technologies and DDDDB are registered in Nevada, but
DDDDB never conducted business there.
(Docket Entry 80-1 at 31;
5 The Agreement lists a Hickory, North Carolina address for
Falcon Amusement. (See Docket Entry 73-1 at 7.)
12
see Docket Entry 69-1 at 8-16.)
Neither Falcon Technologies nor
DDDDB is licensed to transact business in Texas.
80-3, 80-4.)
articles of
(Docket Entries
The Nevada office address listed for DDDDB on its
organization
and
in
the
Agreement
is
solely
for
incorporation purposes. (Docket Entry 80-1 at 31.) DDDDB’s office
address is 2009 RR 620 North, Suite 150, Austin, Texas 78734.
at 10.)
one
(Id.
Using the “ISWEEPSTAKES” name, Schappel mailed at least
server
from
this
address
to
“Reel
Adventures”
(a
store
utilizing Falcon software) in Archdale, North Carolina.
(See
Docket Entry 80-2 at 27-28, 119; see also Docket Entry 80-1 at 149,
151, 153-54, 156.)
Falcon Amusement sent DDDDB’s share of the
Falcon profits in checks made payable to DDDDB to a post office box
in Austin, Texas.
(See Docket Entry 80-1 at 22, 155.)
Invoicing
and payments under the Agreement began around December 3, 2014.
(See id. at 155-56).
Schappel received profits for Falcon systems
in North Carolina prior to DDDDB’s incorporation. (See id. at 14956; see also id. at 12, 45-46.)
Schappel maintains that “[i]t would be extremely inconvenient
and burdensome for [him] to have to defend this lawsuit in North
Carolina. In particular, it would be extremely costly for [him] to
maintain this action in North Carolina, as compared to Texas where
[he] live[s].”
(Docket Entry 69-1 at 5; Docket Entry 78-1 at 4.)
The DDDDB Group has, however, the same counsel (see, e.g., Docket
Entries 50, 60), and Schappel and Falcon Technologies relied on
13
DDDDB’s briefing in support of the Falcon Technologies Motion
(Docket Entry 86 at 9 (“The Movants incorporate by reference all
arguments made in the Reply Brief in Support of DDDDB’s Motion to
Dismiss
that
is
being
filed
substantially
contemporaneously
herewith, but do not duplicate them here.”)).
DISCUSSION
Pursuant to Rule 12(b)(6) of the Federal Rules of Civil
Procedure (the “Rules”), DDDDB seeks dismissal of Epic’s North
Carolina conversion,
trade
secret
misappropriation,
claims based on Copyright Act preemption.
and
UDTPA
(Docket Entry 67 at 1.)
Falcon Technologies and Schappel echo this contention and further
request dismissal of all claims under Rule 12(b)(6) on the grounds
that the Amended Complaint lacks particularized allegations against
them.
(Docket Entry 69 at 2.)
In addition, Falcon Technologies
and Schappel seek dismissal under Rule 12(b)(2) on the basis that
(1) they have insufficient contacts with North Carolina and (2)
Schappel is not “the alter ego of either Falcon Technologies or
DDDDB.”
(Id. at 1-2.)
Schappel makes the same Rule 12(b)(2)
arguments for dismissal of the Crossclaims. (Docket Entry 78 at 12.)
The undersigned will analyze the Rule 12(b)(2) contentions
before considering the Rule 12(b)(6) assertions.
I.
Jurisdiction Challenge
In
response
to
a
defendant’s
Rule
12(b)(2)
personal
jurisdiction challenge, the plaintiff must ultimately prove the
14
existence of personal jurisdiction by a preponderance of the
evidence.
Carefirst of Md., Inc. v. Carefirst Pregnancy Ctrs.,
Inc., 334 F.3d 390, 396 (4th Cir. 2003).
If a court considers a
pretrial personal jurisdiction challenge without conducting an
evidentiary hearing, however, the plaintiff need only “mak[e] a
prima facie showing in support of its assertion of jurisdiction.”
Universal Leather, LLC v. Koro AR, S.A., 773 F.3d 553, 558 (4th
Cir. 2014), cert. denied, ___ U.S. ___, 135 S. Ct. 2860 (2015).
In
such circumstances, the court “must construe all relevant pleading
allegations in the light most favorable to the plaintiff, assume
credibility,
and
draw
the
most
favorable
inferences
for
the
existence of jurisdiction.” Id. (quoting Combs v. Bakker, 886 F.2d
673, 676 (4th Cir. 1989)).
In so doing, the court must construe
all “conflicting facts in the parties’ affidavits and declarations
in the light most favorable to [the plaintiff].”
Id. at 560.
The Court may exercise jurisdiction over Schappel and Falcon
Technologies if (1) North Carolina’s long-arm statute authorizes it
and (2) the exercise of jurisdiction comports with due process
under the Fourteenth Amendment.
Christian Sci. Bd. of Dirs. of
First Church of Christ, Scientist v. Nolan, 259 F.3d 209, 215 (4th
Cir. 2001) [hereinafter, “Christian Sci.”].
As the Fourth Circuit
has explained,
The North Carolina long-arm statute provides, inter
alia, for jurisdiction over any validly-served defendant
who “is engaged in substantial activity within [North
Carolina],” see N.C. Gen. Stat. § 1-75.4(1)d, or whose
15
act or omission gave rise to an action claiming injury to
person or property in North Carolina, see N.C. Gen. Stat.
§ 1-75.4(3).
Like those of many other states, North
Carolina’s long-arm statute is construed to extend
jurisdiction over nonresident defendants to the full
extent permitted by the Due Process Clause. See Century
Data Systems, Inc. v. McDonald, 109 N.C. App. 425, 428
S.E.2d 190, 191 (1993). Thus, the dual jurisdictional
requirements collapse into a single inquiry as to whether
the defendant has such “minimal contacts” with the forum
state that “maintenance of the suit does not offend
‘traditional notions of fair play and substantial
justice.’” See Int’l Shoe Co. v. Washington, 326 U.S.
310, 316, 66 S. Ct. 154, 90 L.Ed. 95 (1945) (citations
omitted).
Christian Sci., 259 F.3d at 215 (alterations in original).
Since the Fourth Circuit decided Christian Sci., the North
Carolina Supreme Court has “emphasized that the two-step process
is, in fact, a two-step process, and that jurisdiction under North
Carolina’s long-arm statute, N.C. Gen. Stat. § 1-75.4, must first
be
determined.”
IHFC
Props.,
LLC
v.
APA
Mktg.,
Inc.,
850
F. Supp. 2d 604, 616 (M.D.N.C. 2012) (citing Brown v. Ellis, 363
N.C. 360, 363, 678 S.E.2d 222, 223 (2009) (per curiam)).
and
Falcon
Technologies
do
not,
however,
dispute
Schappel
that
North
Carolina’s long-arm statute authorizes jurisdiction over them;
instead, they assert that such exercise does not comport with due
process.
2.)
(See, e.g., Docket Entry 69 at 1-2; Docket Entry 78 at 1-
In any event, the facts presented satisfy North Carolina’s
long-arm
statute,
which
provides
for
jurisdiction
over
a
nonresident defendant where injury in North Carolina arose out of
the defendant’s actions outside of North Carolina, provided that at
16
the time of injury, “[p]roducts, materials or thing[s] processed,
serviced, or manufactured by the defendant were used or consumed”
in North Carolina.
N.C. Gen. Stat. § 1-75.4(4); see also N.C. Gen.
Stat. § 1-75.4(5)(c) (providing jurisdiction in any action arising
out of defendant’s promise to plaintiff to deliver within North
Carolina “goods, documents of title, or other things of value”);
N.C. Gen. Stat. § 1-75.4(5)(e) (authorizing jurisdiction over
actions “[r]elat[ing] to goods[] . . . or other things of value
actually received by the plaintiff in this State from the defendant
through a carrier without regard to where delivery to the carrier
occurred”).
Here,
Schappel
created
software-containing
servers
that
allegedly infringed Epic’s trademarks and copyrights and shipped
those servers
Carolina.
(via
UPS
Ground)
to
Falcon Amusement
in North
(See Docket Entry 80-1 at 43, 49-58, 147; Docket Entry
80-2 at 119.)
In so doing, Schappel purportedly acted on behalf of
Falcon Technologies.
Docket Entry 87.)
(Docket Entry 86 at 1-5, 7; see generally
These actions caused injury in North Carolina.
See, e.g., AARP v. American Family Prepaid Legal Corp., 604 F.
Supp. 2d 785, 799-801 (M.D.N.C. 2009) (concluding that North
Carolina distribution of infringing materials caused harm in North
Carolina).
Consequently,
North
Carolina’s
long-arm
statute
authorizes the exercise of jurisdiction over Schappel and Falcon
17
Technologies.
See
id.
(finding
jurisdiction
over
primary
participants in distribution of infringing materials).6
The
Court
still
must
determine
whether
exercise
of
jurisdiction over Schappel and Falcon Technologies comports with
due
process.
“A
court’s
exercise
of
jurisdiction
over
a
nonresident defendant comports with due process if the defendant
has ‘minimum contacts’ with the forum, such that to require the
defendant to defend its interests in that state ‘does not offend
traditional
notions
of
fair
play
and
substantial
justice.’”
Carefirst, 334 F.3d at 397 (quoting International Shoe, 326 U.S. at
316).
To satisfy the minimum contacts test, the plaintiff must
“show that the defendant ‘purposefully directed his activities at
the residents of the forum’ and that the plaintiff’s cause of
action ‘arise[s] out of those activities.’”
Corp.
v.
Geometric
Ltd.,
561
F.3d
273,
277
Consulting Eng’rs
(4th
Cir.
2009)
(alteration in original) (quoting Burger King Corp. v. Rudzewicz,
471 U.S. 462, 472 (1985)). This test “ensure[s] that the defendant
is not ‘haled into a jurisdiction solely as a result of random,
fortuitous,
or
attenuated
contacts,’”
and
thus
“protects
a
6 “A court . . . may exercise pendent personal jurisdiction
over any claim that arises out of a common nucleus of operative
facts as the claim over which the court has personal jurisdiction.”
Pan-American Prods. & Holdings, LLC v. R.T.G. Furniture Corp., 825
F. Supp. 2d 664, 678 (M.D.N.C. 2011) (internal quotation marks
omitted). Therefore, particularly in the circumstances of this
case, the undersigned deems it unnecessary to separately analyze
each of Epic’s and the Falcon Amusement Parties’ claims.
18
defendant from having to defend himself in a forum where he should
not have anticipated being sued.”
U.S. at 475).
Id. (quoting Burger King, 471
Hence, in the context of this case, due process
essentially asks whether Schappel and Falcon Technologies should
“reasonably anticipate being haled into court” in North Carolina
regarding the allegedly infringing Falcon software and its North
Carolina distribution.
Calder v. Jones, 465 U.S. 783, 790 (1984).
“In judging minimum contacts, a court properly focuses on the
relationship among the defendant, the forum, and the litigation.”
Id. at 788 (internal quotation marks omitted).
If, as here, the
defendants’ contacts with the forum give rise to the lawsuit, those
contacts may provide specific jurisdiction over the defendants.
Carefirst, 334 F.3d at 397.
“In determining whether specific
jurisdiction exists, [courts] consider (1) the extent to which the
defendant has purposefully availed itself of the privilege of
conducting activities in the state; (2) whether the plaintiffs’
claims arise out of those activities directed at the state; and (3)
whether
the
exercise
constitutionally
omitted).
of
personal
reasonable.”
Id.
jurisdiction
(internal
would
quotation
be
marks
In analyzing specific jurisdiction, a court must focus
on the nature and quality of the defendants’ contacts with the
forum.
Id.
Notably, however, a court “should not ‘merely . . .
count the contacts and quantitatively compare this case to other
preceding cases.’
Even a single contact may be sufficient to
19
create jurisdiction when the cause of action arises out of that
single contact, provided that the principle of ‘fair play and
substantial justice’ is not thereby offended.”
Id. (alteration in
original) (citation omitted).
A.
Primary Participant Jurisdictional Analysis
Falcon Technologies and Schappel maintain that the Court lacks
personal
jurisdiction
over
them
because
their
North
Carolina
contacts arose from their actions on behalf of, ultimately, DDDDB.
(Docket Entry 86 at 1-5, 7; see generally Docket Entry 87.)7
This
contention is known as the “fiduciary shield doctrine.”
See
Pittsburgh Terminal Corp. v. Mid Allegheny Corp., 831 F.2d 522, 525
(4th Cir. 1987).8
That doctrine does not apply where, as here, the
7
By contending that Schappel acted on behalf of Falcon
Technologies, which purportedly “acted as a promoter on DDDDB’s
behalf” (Docket Entry 86 at 2), Falcon Technologies necessarily
abandoned its contention of noninvolvement with North Carolina.
(Compare Docket Entry 70 at 6 (Epic’s “entire jurisdictional claim
rests on its contention that [Falcon Technologies] ‘participated’
in a purported illegal software distribution scheme in North
Carolina. This type of conclusory jurisdictional allegation cannot
not [sic] survive a motion to dismiss.”), with Docket Entry 86 at
3 (“Here, the Distribution Agreement executed by Falcon
Technologies on DDDDB’s behalf was clearly a reasonable means of
carrying out DDDDB’s corporate powers and authorized purposes:
DDDDB was created for the express purpose of distributing Falcon
software to Falcon Amusement, and that is precisely what the
Distribution Agreement entailed.”).)
8 Schappel and Falcon Technologies offer two versions of this
contention:
(1) they acted in their official capacities in
relation to their North Carolina contacts and (2) DDDDB ratified
the Agreement, thereby assuming liability for it.
(See Docket
Entry 78-1 at 3-4; Docket Entry 86 at 1-5, 7; see generally Docket
Entry 87.)
20
“forum state’s long-arm statute is coextensive with the full reach
of due process.”
Id. (internal quotation marks omitted); see also
Christian Sci., 259 F.3d at 215 (“North Carolina’s long-arm statute
is construed to extend jurisdiction over nonresident defendants to
the full extent permitted by the Due Process Clause.”).
question
remains
whether
Schappel’s
and
Falcon
actions satisfy the purposeful availment test.
The
Technologies’
See Calder, 465
U.S. at 790; AARP, 604 F. Supp. 2d at 799 (explaining that a court
can exercise jurisdiction over a nonresident “who is a ‘primary
participant[] in an alleged wrongdoing intentionally directed’ at
a resident in the forum state” (alteration in original)).
“The purposeful-availment test is flexible, and [the] analysis
proceeds on a case-by-case basis.”
Tire Eng’g & Distribution, LLC
v. Shandong Linglong Rubber Co., 682 F.3d 292, 302 (4th Cir. 2012).
In the context of intentional torts, courts may assess purposeful
availment through the so-called “effects test.”
F.3d at 397-98 & n.7.
Carefirst, 334
Under this test, the plaintiff must show
“that: (1) the defendant committed an intentional tort; (2) the
plaintiff felt the brunt of the harm in the forum, such that the
forum can be said to be the focal point of the harm; and (3) the
defendant expressly aimed his tortious conduct at the forum, such
that the forum can be said to be the focal point of the tortious
activity.”
Id.
at
398
n.7.
Copyright
infringement
is
an
intentional tort, which causes harm in the areas of distribution.
21
See Pan-American Prods. & Holdings, LLC v. R.T.G. Furniture Corp.,
825 F. Supp. 2d 664, 684 (M.D.N.C. 2011).9
In the contractual context,10 purposeful availment occurs if
“the contract has a substantial connection with the forum state.
The parties’ negotiations, contemplated future consequences, the
terms of the contract, and the parties’ actual course of dealing,
must
be
considered
in
determining
whether
the
defendant
purposefully established minimum contacts in the forum state.”
Tubular Textile Mach. & Compax Corp. v. Formosa Dyeing & Finishing,
Inc., No. 4:96CV00391, 1997 WL 33150812, at *4 (M.D.N.C. Jan. 29,
1997) (first citing McGee v. International Life Ins. Co., 355 U.S.
220, 223 (1957); then citing Burger King, 471 U.S. at 479).
In
this regard, it is significant if the defendant initiated the
forum-directed contractual relationship.
Pan-American, 825 F.
Supp. 2d at 682-83; see also Tubular Textile, 1997 WL 33150812, at
*5 (“It is well established that where a defendant deliberately
creates continuing obligations between itself and a forum entity,
it has availed itself of the privilege of conducting business
there, and where its ‘activities are shielded by the “benefits and
9
Trademark infringement, Lanham Act claims, unfair
competition and passing off, fraudulent inducement, and UDTPA
claims are also intentional torts that can justify the exercise of
jurisdiction over an individual who participates in those torts on
behalf of a corporation. See AARP, 604 F. Supp. 2d at 799-800.
10 As noted previously, the Crossclaims include a breach of
contract claim.
22
protections”
of
the
forum’s
laws
it
is
presumptively
not
unreasonable to require [it] to submit to the burdens of litigation
in that forum as well.”
(alteration in original) (quoting Burger
King, 471 U.S. at 475-76)).
Construed in the light most favorable to Epic and the Falcon
Amusement Parties, the evidence reveals the following facts:
Schappel created Falcon Technologies and its wholly owned
subsidiary, DDDDB, to distribute Falcon software.
Falcon software
infringes Epic’s trademarks and copyrights. Schappel created DDDDB
to distribute Falcon software to Falcon Amusement, a North Carolina
company, for further distribution in North Carolina.
Schappel
approached Falcon Amusement about this distribution around April of
2014.
To
induce
this
distribution,
Schappel
fraudulently
represented to Falcon Amusement that Falcon software was his and
his
colleague’s
original
creation.
Schappel
negotiated
an
Agreement with Falcon Amusement for distribution of at least 250
Falcon-containing terminals in North Carolina within one year.
November
20,
2014,
Schappel
effective November 18, 2014.
signed
the
Agreement,
which
is
governed
by
was
After an initial one-year term, the
Agreement automatically renews for successive two-year terms.
Agreement
On
North
Carolina
law
and
The
contains
a
mandatory North Carolina forum selection clause with accompanying
consents to jurisdiction in North Carolina.
23
Using his master drive, Schappel created Falcon servers for
each specific North Carolina distribution site.
Schappel mailed
these servers to North Carolina, either directly to the individual
stores
or
to
Falcon
Amusement,
for
use
in
North
Carolina.
Approximately once a week, Schappel remotely accessed each server
in North Carolina to determine the net profits for that server’s
utilization of Falcon software. After retrieving financial reports
from
these
percentage
accordingly.
servers,
of
the
Schappel
profits
calculated
and
the
invoiced
DDDDB
Falcon
Group’s
Amusement
Invoicing and payments under the Agreement began
around December 3, 2014.
The public used these Falcon servers in
North Carolina from November 2014 through at least the end of March
2015.
Schappel created DDDDB on February 10, 2015.
Prior to
creating DDDDB, Schappel acted on behalf of Falcon Technologies in
negotiating the Agreement, creating and distributing the servers,
and calculating and collecting payments under the Agreement.
This evidence establishes that — in both the intentional tort
and
contractual
context
—
Schappel
and
Falcon
Technologies
purposefully availed themselves of the privilege of conducting
activities in North Carolina.
Falcon
Technologies,
Schappel
To begin with, acting on behalf of
initiated
and
entered
into
an
Agreement to distribute allegedly copyright-infringing software in
North Carolina, and he personally created servers containing this
software that he shipped to North Carolina for distribution and use
24
within North Carolina. These actions satisfy each component of the
specific effects purposeful availment test.
See Christian Sci.,
259 F.3d at 216-17.
Moreover, the Agreement that Schappel, acting on behalf of
Falcon Technologies, initiated and entered into with a North
Carolina corporation:
(2)
contains
a
North
(1) is governed by North Carolina law,
Carolina
forum
selection
clause
with
corresponding consents to jurisdiction in North Carolina,11 and
(3)
governs
distribution
of
materials
in
North
Carolina.
Furthermore, in connection with the Agreement, Schappel created the
servers, shipped the servers to North Carolina, and then remotely
accessed12 the servers in North Carolina on roughly a weekly basis
to determine the DDDDB Group’s fees pursuant to the Agreement.
As
such, the Agreement has a substantial connection to North Carolina,
11 The forum selection clause could itself suffice to justify
the exercise of personal jurisdiction over Schappel and Falcon
Technologies.
See IHFC Props., 850 F. Supp. 2d at 619; CoStar
Realty Info., Inc. v. Field, 612 F. Supp. 2d 660, 667-69 (D. Md.
2009); cf. Burger King, 471 U.S. at 482 n.24 (“In addition, the
franchise agreement’s disclaimer that the ‘choice of law
designation does not require that all suits concerning this
Agreement be filed in Florida’ reasonably should have suggested to
[the defendant] that by negative implication such suits could be
filed there.” (emphasis in original) (citation omitted)). Under
North Carolina law, consent to jurisdiction clauses (1) are
generally valid and enforceable and (2) “do[] not violate the Due
Process Clause.” Strategic Outsourcing, Inc. v. Stacks, 176 N.C.
App. 247, 251, 625 S.E.2d 800, 803 (2006).
12 Schappel’s and Falcon Technologies’s failure to physically
enter North Carolina does not alter this analysis.
See Burger
King, 471 U.S. at 476.
25
and Schappel and Falcon Technologies can fairly be said to have
purposefully availed themselves of the privilege of conducting
activities
in
North
Carolina.
See,
e.g.,
IHFC
Props.,
850
F. Supp. 2d at 618-20, 622; Capstar Corp. v. Pristine Indus., Inc.,
768 F. Supp. 518, 524 (W.D.N.C. 1991); see also Christian Sci, 259
F.3d at 216-17.13
Having satisfied the purposeful availment test, the analysis
turns to the second element of the specific jurisdiction standard,
i.e.,
whether
Technologies’
the
lawsuit
activities
Amusement
allegedly
at
Schappel’s
North
claims
creation
and
relate
to
Falcon
Carolina.
See
Epic’s and the Falcon
Schappel’s
distribution
copyright-infringing materials.
second factor.
and
“The analysis here is generally not
Tire Eng’g, 682 F.3d at 303.
Parties’
Technologies’
from
directed
Carefirst, 334 F.3d at 397.
complicated.”
arose
to
North
This
and
Falcon
Carolina
of
satisfies the
See Christian Sci., 259 F.3d at 216-17; see also
Tire Eng’g, 682 F.3d at 303.
The third and final element of the specific jurisdiction
standard
asks
whether
exercise
constitutionally reasonable.
of
personal
jurisdiction
is
See Carefirst, 334 F.3d at 397.
In
analyzing this factor, a court “may evaluate ‘the burden on the
13
The Agreement’s initial one-year term with automatic
multiyear renewals bolsters this conclusion, as the Agreement
creates more than a singular or brief connection between the DDDDB
Group and North Carolina.
26
defendant, the forum State’s interest in adjudicating the dispute,
the plaintiff’s interest in obtaining convenient and effective
relief, the interstate judicial system’s interest in obtaining the
most efficient resolution of controversies, and the shared interest
of the several States in furthering fundamental substantive social
policies.’”
Christian Sci., 259 F.3d at 217 (quoting Burger King,
471 U.S. at 477). This factor “ensure[s] that jurisdictional rules
are not exploited ‘in such a way as to make litigation “so gravely
difficult and inconvenient” that a party unfairly is at a “severe
disadvantage” in comparison to his opponent.’” Id. (quoting Burger
King, 471 U.S. at 478).
The exercise of personal jurisdiction over Schappel and Falcon
Technologies is constitutionally reasonable.
Schappel maintains
that defending this action in North Carolina will be inconvenient,
burdensome, and costly. (See, e.g., Docket Entry 69-1 at 5.) This
generalized concern cannot defeat jurisdiction.
See Burger King,
471 U.S. at 477 (“[W]here a defendant who purposefully has directed
his activities at forum residents seeks to defeat jurisdiction, he
must present a compelling case that the presence of some other
considerations would render jurisdiction unreasonable.”).
Supreme
Court
long
ago
concluded
that
“because
The
‘modern
transportation and communications have made it much less burdensome
for a party sued to defend himself in a State where he engages in
economic activity,’ it usually will not be unfair to subject him to
27
the burdens of litigating in another forum for disputes relating to
such activity.”
Id. at 474 (quoting McGee, 355 U.S. at 223).
Moreover, Schappel will necessarily be involved in defending this
lawsuit in
North
Carolina because
he
authorized to act on DDDDB’s behalf.
is
the
only
individual
Any incrementally greater
burden for having to also defend Falcon Technologies and himself,
in his individual capacity, in North Carolina does not render North
Carolina’s
exercise
of
jurisdiction
Technologies unconstitutional.
over
Schappel
See id. at 482-84.14
and
Falcon
Put simply,
“[a]lthough defending a lawsuit in North Carolina [i]s, without
doubt, inconvenient for [Schappel and Falcon Technologies], the
inconvenience [i]s not so grave as to offend constitutional due
process principles.”
Christian Sci., 259 F.3d at 217; see also
Consulting Eng’rs, 561 F.3d at 278 (“[B]ecause [the defendant’s]
activities are shielded by the benefits and protections of the
forum’s laws it is presumptively not unreasonable to require him to
submit to the burdens of litigation in that forum as well.”
(alterations in original) (quoting Burger King, 471 U.S. at 476)).
In
addition,
North
Carolina
surely
has
an
interest
in
addressing copyright and trademark infringement within its borders,
Christian Sci., 259 F.3d at 218, and in assuring redress for its
14 Indeed, defending Schappel, Falcon Technologies, and DDDDB
in one lawsuit, rather than in separate lawsuits in Texas and North
Carolina, should only decrease the cost, burden, and inconvenience
to the DDDDB Group.
28
injured resident corporation, Burger King, 471 U.S. at 483.
See
id. at 482-83 (concluding that a state has a “‘legitimate interest
in holding [defendant] answerable on a claim related to’ the
contacts he had established in that State”).
Finally, resolving
all claims against Schappel and Falcon Technologies in North
Carolina promotes judicial efficiency and reduces the burdens on
Epic, the Falcon
Sci., 259
F.3d
Amusement Parties, and DDDDB.
at
218. Thus, “exercise of
See Christian
specific
personal
jurisdiction over [Schappel and Falcon Technologies] is consistent
with ‘traditional notions of fair play and substantial justice.’”
Id.
In short, Epic and the Falcon Amusement Parties have made a
prima facie showing that personal jurisdiction over Schappel and
Falcon Technologies exists.
Therefore, the Court should deny the
Rule 12(b)(2) motions.
B.
Veil Piercing Jurisdictional Analysis
Alternatively, exercise of personal jurisdiction over Schappel
and Falcon Technologies is proper under a veil-piercing analysis.
In conducting this analysis, this Court utilizes the test North
Carolina courts would apply in determining whether to pierce the
corporate veil for jurisdictional purposes.
v. Akzo, N.V., 2 F.3d 56, 61 (4th Cir. 1993).
See Mylan Labs., Inc.
Falcon Technologies
and Schappel contend that Nevada’s veil-piercing test applies
because Falcon Technologies and DDDDB are Nevada corporations.
29
(Docket Entry 70 at 8; Docket Entry 79 at 7.)
Conversely, Epic
maintains that, regardless of whether North Carolina or Nevada law
applies in these circumstances, veil-piercing is proper.
Entry 80 at 12-17.)
(Docket
The Court need not resolve which state’s test
North Carolina courts would apply because under either test, a
prima facie basis for piercing the corporate veil exists.
The
corporate
veil
may
be
pierced
“prevent fraud or to achieve equity.”
in North
Carolina
to
Strategic Outsourcing, Inc.
v. Stacks, 176 N.C. App. 247, 253, 625 S.E.2d 800, 804 (2006)
(quoting Glenn v. Wagner, 313 N.C. 450, 454, 329 S.E.2d 326, 330
(1985)).
More
specifically,
North
Carolina
adheres
to
the
instrumentality rule, which focuses on three elements:
(1) Control, not mere majority or complete stock control,
but complete domination, not only of finances, but of
policy and business practice in respect to the
transaction attacked so that the corporate entity as to
this transaction had at the time no separate mind, will
or existence of its own; and
(2) Such control must have been used by the defendant to
commit fraud or wrong, to perpetrate the violation of a
statutory or other positive legal duty, or a dishonest
and unjust act in contravention of plaintiff’s legal
rights; and
(3) The aforesaid control and breach of duty must
proximately cause the injury or unjust loss complained
of.
Glenn, 313 N.C. at 454-55, 329 S.E.2d at 330.
Relevant factors in
this analysis include non-compliance with corporate formalities,
inadequate capitalization, complete control and dominion so that
the
corporation
has
no
independent
30
identity,
“and
excessive
fragmentation of a single enterprise into separate corporations.”
Pan-American, 825 F. Supp. 2d at 687.
According to the North
Carolina Supreme Court,
[i]t is not the presence or absence of any particular
factor that is determinative.
Rather, it is a
combination of factors which, when taken together with an
element of injustice or abuse of corporate privilege,
suggest that the corporate entity attacked had no
separate mind, will or existence of its own and was
therefore the mere instrumentality or tool of the
dominant corporation.
Glenn, 313 N.C. at 458, 329 S.E.2d at 332 (internal quotation marks
omitted).
focused
“[T]he instrumentality rule is an equitable doctrine,”
“upon
reality,
not
form.”
Id.,
329
S.E.2d
at
332.
Accordingly,
if the affiliate is merely an agent through which the
foreign company conducts business in a particular
jurisdiction or its separate corporate status is formal
only and without any semblance of individual identity,
then the in-forum affiliate’s business will be viewed as
that of the foreign corporation and the latter will be
said to be doing business in the jurisdiction through the
affiliate
for
purposes
of
asserting
personal
jurisdiction.
Pan-American, 825 F. Supp. 2d at 688 (alterations and internal
quotation marks omitted).
Finally, it is relevant to the veil-
piercing analysis if “all entities alleged to be separate are
nevertheless represented by the same counsel.”
Id. at 688-89.
Under Nevada law, “the ‘essence’ of the alter ego doctrine is
to ‘do justice’ whenever it appears that the protections provided
by the corporate form are being abused.”
LFC Mktg. Grp., Inc. v.
Loomis, 116 Nev. 896, 903, 8 P.3d 841, 845-46 (2000).
31
In that
regard,
Nevada
has
adopted
three
veil-piercing
requirements:
“(1) The corporation must be influenced and governed by the person
asserted to be its alter ego[;] (2) There must be such unity of
interest and ownership that one is inseparable from the other; and
(3) The facts must be such that adherence to the fiction of
separate entity would, under the circumstances, sanction a fraud or
promote injustice.” Lorenz v. Beltio, Ltd., 114 Nev. 795, 807, 963
P.2d 488, 496 (1998) (alteration in original) (internal quotation
marks omitted). “Some factors to be considered when determining if
a unity exists in an alter ego analysis include, but are not
limited to, commingling of funds, undercapitalization, unauthorized
diversion
of
funds,
treatment
of
corporate
assets
as
the
individual’s own, and failure to observe corporate formalities. No
one of these factors alone is determinative to apply the alter ego
doctrine.”
Id. at 808, 963 P.2d at 497 (citation omitted).
Injustice occurs when a corporation is created or used to commit
tortious activities.
See DFR Apparel Co., Inc. v. Triple Seven
Promotional Prods., Inc., No. 2:11-CV-01406, 2014 WL 4828874, at *3
(D.
Nev.
Sept.
30,
2014);
Chase
Bank
USA,
N.A.
v.
Dispute
Resolution Arbitration Grp., No. 02:05-CV-1208, 2007 WL 1577853, at
*2 (D. Nev. May 31, 2007).
Finally, both Nevada and North Carolina permit reverse veil
piercing.
LFC Mktg., 116 Nev. at 903-04, 8 P.3d at 846; Strategic
Outsourcing, 176 N.C. App. at 254, 625 S.E.2d at 805.
32
Under
reverse veil-piercing, the corporation bears liability for the
individual’s actions and obligations.
Strategic Outsourcing, 176
N.C. App. at 254, 625 S.E.2d at 805.
Here, Epic and the Falcon Amusement Parties have made a prima
facie showing that DDDDB and Falcon Technologies are Schappel’s
alter egos.
Schappel exercises complete control over Falcon
Technologies and DDDDB.
He is admittedly the only employee of
DDDDB, and there is no indication that Falcon Technologies has any
other employees.
He created Falcon Technologies to distribute
Falcon software, but then decided that he wanted to have separate
subsidiary corporations for each Falcon distribution agreement, and
so he created DDDDB.
In its own words, DDDDB is simply a “pass-
through.”
Although Schappel maintains that he has never commingled his
personal funds with either organization nor treated their assets as
his own, the record reflects delivery of checks made payable to
DDDDB in Texas months before DDDDB’s creation.
Moreover, Falcon
Technologies, which lacks authority to do business in Texas, does
not appear to possess a bank account for receiving these funds.
Pursuant to the Agreement, Schappel created and shipped to North
Carolina servers containing the Falcon software.
Schappel did not
charge Falcon Amusement for these servers. Schappel paid for these
servers, which he provided to Falcon Amusement prior to DDDDB’s
creation and the DDDDB Group’s receipt of any money under the
33
Agreement.
Additionally, the only shipment label in the record
identifies a third corporation (ISWEEPSTAKES) as the sender of this
server, but shows DDDDB’s office address as the mailing address.
This evidence suggests commingling of assets by Schappel.15
Additionally,
Falcon
although
Schappel
maintains
that
DDDDB
and
Technologies follow corporate formalities, record evidence
supports a contrary conclusion.
Most significantly, Schappel
negotiated and entered into the Agreement on behalf of DDDDB in
November 2014, but did not create DDDDB until February 2015.
The
Agreement states that Schappel was authorized to execute the
Agreement on DDDDB’s behalf, but contains no indication that
Schappel executed it in his capacity as Falcon Technologies’
manager.
Moreover, although Schappel identifies himself as the
sole member and manager of Falcon Technologies, the article of
organization for both Falcon Technologies and DDDDB list “A. T.
Mathis” as the manager of Falcon Technologies, suggesting a certain
fluidity in corporate formalities.
The changing story regarding
the corporation on behalf of which Schappel acted in executing and
implementing the Agreement likewise undercuts the DDDDB Group’s
assertion
of
adherence
to
corporate
formalities
and
separate
15 That Schappel created these servers in and mailed them
from Texas, where neither DDDDB nor Falcon Technologies can
lawfully conduct business, further supports this conclusion.
34
corporate existences.16
The DDDDB Group’s representation by the
same counsel similarly militates towards an alter ego finding.
That Schappel and Falcon Technologies incorporate by reference and
rely upon DDDDB’s Rule 12(b)(6) arguments heightens this alter ego
impression.
See Avanti Hearth Prods., LLC v. Janifast, Inc., No.
3:10-CV-00019, 2010 WL 3081371, at *5 (W.D.N.C. Aug. 6, 2010)
(“‘[J]oint representation suggests that one corporation serves as
the alter ego of another.’” (alteration in original)).
Finally, Schappel created Falcon Technologies and DDDDB to
distribute
Falcon
software,
copyrights and trademarks.
which
allegedly
infringes
Epic’s
To secure the DDDDB distribution
Agreement, Schappel purportedly informed Falcon Amusement that the
Falcon software was his original creation, a representation that
ultimately led to a lawsuit against the Falcon Amusement Parties,
prompting their Crossclaims against DDDDB and Schappel.
Such
tortious actions satisfy the equitable aspects of North Carolina’s
and Nevada’s veil piercing tests. See Raleigh Flex Owner I, LLC v.
MarketSmart Interactive, Inc., No. 1:09-CV-699, 2011 WL 923356, at
*15 (M.D.N.C. Mar. 7, 2011); Chase Bank, 2007 WL 1577853, at *2.
16 This evolution strongly supports an alter ego finding, as
it appears designed to shield the individual from liability at the
expense of a corporation (1) not named on the Agreement, (2) not
heretofore identified as a defendant in the Crossclaims, and (3)
not known to the Falcon Amusement Parties as of Frank’s Deposition
in April 2015.
35
In sum, when viewed in the light most favorable to Epic and
the Falcon Amusement Parties, the record satisfies both North
Carolina’s and Nevada’s veil piercing tests.
See, e.g., Raleigh
Flex Owner, 2011 WL 923356, at *14-15; Lorenz, 114 Nev. at 807-09,
963 P.2d at 496-98; Strategic Outsourcing, 176 N.C. App. at 252-54,
625
S.E.2d
at
803-05.
The
Court
therefore
may
exercise
jurisdiction over Schappel and Falcon Technologies as alter egos of
DDDDB.
II.
Rule 12(b)(6) Challenges
The DDDDB Group also seeks dismissal of various claims in the
Amended Complaint pursuant to Rule 12(b)(6).
In reviewing a Rule
12(b)(6) motion to dismiss, a court must “accept the facts alleged
in the complaint as true and construe them in the light most
favorable to the plaintiff.” Coleman v. Maryland Court of Appeals,
626 F.3d 187, 189 (4th Cir. 2010), aff’d sub nom., Coleman v. Court
of Appeals of Md., ___ U.S. ___, 132 S. Ct. 1327 (2012).
Pursuant
to Rule 8(a), “a complaint must contain a short and plain statement
of the claim showing that the plaintiff is entitled to relief.”
Luna-Reyes v. RFI Constr., LLC, 57 F. Supp. 3d 495, 501 (M.D.N.C.
2014).
To survive a Rule 12(b)(6) motion, the complaint must
contain sufficient factual allegations “to state a claim to relief
that is plausible on its face.”
Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007)). To qualify as plausible, a claim needs sufficient factual
36
content to support a reasonable inference of the defendants’
liability for the alleged misconduct.
U.S. at 556).
Id. (citing Twombly, 550
Labels and formulaic recitations of the elements of
a claim do not suffice.
Id.
Finally, in considering a Rule
12(b)(6) motion, a court generally should not consider evidence
outside
the
complaint,
including
jurisdictional dismissal motions.
materials
related
to
See Luna-Reyes, 57 F. Supp. 3d
at 502.
A.
“Shotgun” Allegations
Schappel and Falcon Technologies request dismissal of all
claims
against
particularity.
“the
Amended
them
in
the
Amended
Complaint
(Docket Entry 70 at 10-12.)
Complaint
fails
to
allege
for
lack
of
They maintain that
any
specific
omissions committed by Falcon Technologies or Schappel.
act
or
Instead,
the Amended Complaint merely lumps each of the Defendants together
without identifying any particular parties.”
(Id. at 11-12.)
To
the contrary, the Amended Complaint does specifically identify
Falcon Technologies and Schappel as “Distributor Defendants” who,
inter alia, “supplied materials, including servers” to “others,
including internet cafes,” who infringed Epic’s trademarks and
committed unfair competition in contravention of the Lanham Act and
common law.
(Docket Entry 39 at 24, ¶ 109; id. at 26, ¶ 117; id.
at 28, ¶¶ 128-29; id. at 30, ¶ 139.)
Such allegations clearly
distinguish the Amended Complaint from the “shotgun” pleadings in
37
the cases Schappel and Falcon Technologies cite in support of their
dismissal
contention.
See,
e.g.,
Jarosiewicz
v.
County
of
Rutherford, No. 1:05CV211, 2005 WL 2000238, at *1 (W.D.N.C. Aug.
18, 2005) (analyzing a “Complaint[] involving eight causes of
action, against five defendants, all of whom appear to be lumped
into each claim,” and noting that “[w]ith eight causes of action
and five defendants, and two possible capacities for suit, there
now exist about 40 or more possible causes of action”); see also
Luna-Reyes, 57 F. Supp. 3d at 503 (explaining that the complaint
“is unclear both as to which Defendant each of those allegations
refers and which basis of [Fair Labor Standards Act] coverage
should
apply
to
each
allegation,”
and
observing
that
the
“allegations are equally consistent with the conclusion that only
one of the ‘Defendants’ . . . took the actions alleged in the
complaint”).
Accordingly,
the
Court
should
deny
Falcon
Technologies and Schappel’s 12(b)(6) request to dismiss the Amended
Complaint.17
17
Moreover, recognizing that “[d]ismissal is a drastic
step,” courts faced with shotgun pleadings may “convert a Rule
12(b)(6) motion to dismiss into a motion for a more definite
statement under Rule 12(e).” Luna-Reyes, 57 F. Supp. 3d at 504.
In such circumstances, courts “will direct [the p]laintiff to
timely submit a more definite statement that specifies which facts
relate to which particular [d]efendant such that each [d]efendant
is put on notice of the facts against it sufficiently to make an
assessment of whether a legal claim is stated against that
[d]efendant.”
Id.; accord Jarosiewicz, 2005 WL 2000238, at *1
(“grant[ing the] plaintiff leave to amend his Complaint to clarify
what claims he is attempting to assert against which defendants”).
(continued...)
38
B.
Copyright Preemption
The DDDDB Group contends the Court should dismiss Epic’s North
Carolina conversion,
trade
secret
misappropriation,
claims as preempted by the Copyright Act.
Docket Entry 69 at 2.)
and
UDTPA
(Docket Entry 67 at 1;
The Copyright Act exclusively governs any
“rights within the general scope of copyright” law under Copyright
Act Sections 102 and 103.
analyzing
copyright
See 17 U.S.C. § 301(a).
preemption,
courts
Accordingly, in
evaluate
whether
the
relevant causes of action, as defined by state law, “are being
asserted to protect rights that are equivalent to the rights
protected by federal copyright law.”
Madison River Mgmt. Co. v.
Business Mgmt. Software Corp., 351 F. Supp. 2d 436, 442 (M.D.N.C.
2005).
To do this, courts apply the “extra-element” test, which
this Court has described as follows:
[A] right which is ‘equivalent to copyright’ is one
which is infringed by the mere act of reproduction,
performance, distribution or display . . . . If
under
state
law
the
act
of
reproduction,
performance, distribution or display, . . . will in
itself infringe the state created right, then such
right is preempted.
But if other elements are
required, in addition to or instead of, the acts of
reproduction, performance, distribution or display,
in order to constitute a state created cause of
action, then the right does not lie ‘within the
general scope of copyright,’ and there is no
preemption.
17(...continued)
If the Court concludes that the Amended Complaint contains
insufficient factual allegations against Schappel and Falcon
Technologies, the Court should order Epic to provide a more
definitive statement rather than dismiss the Amended Complaint.
39
The extra element of the state cause of action must be
one which changes the nature of the action so that it is
‘qualitatively different’ from a copyright infringement
claim. If, however, the purported extra element of the
state law claim does not make it qualitatively different
from a copyright infringement claim, the state law claim
is preempted. Thus, the court must examine and compare
the ‘constituent elements of a claim for copyright
infringement and [the state law claim].’ To establish
copyright infringement, a party must prove ownership of
a valid copyright and encroachment upon one of the
exclusive rights the copyright conferred. The exclusive
rights conferred by a copyright are to reproduce the
copyrighted work, prepare derivative works, distribute
copies of the work, and perform or display the work
publicly.
Id. at 442-43 (alterations and emphasis in original) (citations
omitted).
Computer programs, such as Legacy and Falcon, fall “within the
general scope of copyright” law.
Rosciszewski v. Arete Assocs.,
Inc., 1 F.3d 225, 229 (4th Cir. 1993).
The determinative question
thus becomes whether the rights protected by North Carolina’s
conversion, trade secret misappropriation, and UDTPA laws are
equivalent to the rights protected by federal copyright law (i.e.,
to
reproduce,
distribute,
perform
derivative versions of Legacy).
1.
or
display,
and
prepare
See id.
Conversion Claim
North Carolina law defines conversion as “an unauthorized
assumption and exercise of the right of ownership over goods or
personal chattels belonging to another, to the alteration of their
condition
or
the
exclusion
of
an
owner’s
rights.”
Peed
v.
Burleson’s, Inc., 244 N.C. 437, 439, 94 S.E.2d 351, 353 (1956)
40
(internal quotation marks omitted).
“The essence of conversion is
not the acquisition of property by the wrongdoer, but a wrongful
deprivation of it to the owner . . . .”
Gallimore v. Sink, 27 N.C.
App. 65, 67, 218 S.E.2d 181, 183 (1975) (internal quotation marks
omitted).
Hence, “a state law action for conversion will not be
preempted if the plaintiff can prove the extra element that the
defendant
unlawfully
plaintiff’s work.
retained
the
physical
object
embodying
However, [Copyright Act] § 301(a) will preempt
a conversion claim where the plaintiff alleges only the unlawful
retention of its intellectual property rights and not the unlawful
retention of the tangible object embodying its work.”
Tire Eng’g,
682 F.3d at 310 (citation omitted) (quoting United States ex. rel
Berge v. Board of Trs. of the Univ. of Ala., 104 F.3d 1453, 1463
(4th Cir. 1997)).
The DDDDB Group maintains that Epic has not alleged the taking
of a tangible copy of its Legacy software, making preemption
proper.18
Epic
responds
that
its
“conversion
claim
18 In their reply briefs, the DDDDB Group asserts that Epic’s
conversion claim also fails as a matter of law. Because federal
preemption involves constitutional considerations, “when a party
provides alternative independent state law grounds for disposing of
a [claim], courts should not decide the constitutional question of
preemption before considering the state law grounds.” Columbia
Venture, LLC v. Dewberry & Davis, LLC, 604 F.3d 824, 828 (4th Cir.
2010). Therefore, the DDDDB Group’s belated state-law dismissal
contentions warrant consideration. According to the DDDDB Group,
Epic’s conversion claim fails because the Amended Complaint does
not allege that “Defendants prevented [Epic] from possessing its
Legacy software” or that “Defendants wrongfully failed to return”
(continued...)
41
is not so limited to the conversion of intangible property.”
(Docket Entry
81
at 6.)
Construing
the
Amended
Complaint’s
“allegations most favorably to [it],” Epic asserts, “the Amended
Complaint alleges[] . . . that a physical copy of its software was
obtained without permission.”
(Docket Entry 81 at 6.)
In support
of this assertion, Epic points to two paragraphs in the Amended
18(...continued)
“a copy of [Epic’s] Legacy software.”
(Docket Entry 85 at 3.)
These contentions are unavailing. The “demand-and-refusal-rule”
applies only if the defendants initially possessed the property
lawfully. Stratton v. Royal Bank of Can., 211 N.C. App. 78, 83-84,
712 S.E.2d 221, 227-28 (2011). The Amended Complaint asserts that
Defendants have illegally taken and possessed Epic’s property
without Epic’s consent. (Docket Entry 39 at 31, ¶ 144.) Thus, the
demand-and-refusal-rule does not apply. Furthermore, insofar as
Epic contends that Defendants have taken a copy of its Legacy
software, Defendants have prevented Epic from possessing that
Legacy copy, thereby satisfying the exclusion/alteration component
of a North Carolina conversion claim. See Springs v. Mayer Brown,
LLP, No. 3:09CV352, 2012 WL 366283, at *9 (W.D.N.C. Jan. 27, 2012).
Additionally, the DDDDB Group argues that software cannot be the
subject of a North Carolina conversion claim. Under North Carolina
law, conversion does not govern the taking of intangible interests.
See, e.g., Edmondson v. American Motorcycle Ass’n, Inc., 7 F. App’x
136, 148 (4th Cir. 2001) (“business expectancies and good will”);
Norman v. Nash Johnson & Sons’ Farms, Inc., 140 N.C. App. 390, 41415, 537 S.E.2d 248, 264 (2000) (“business opportunities and
expectancy interests”). The DDDDB Group maintains that software is
an intangible item that cannot be converted. (Docket Entry 85 at
2.) At least one federal court in North Carolina has upheld a
conversion claim for electronic computer files. Bridgetree, Inc.
v. Red F Mktg. LLC, No. 3:10-CV-00228, 2013 WL 443698, at *14-15
(W.D.N.C. Feb. 5, 2013); but see WJ Glob. LLC v. Farrell, 941 F.
Supp. 2d 688, 692-93 (E.D.N.C. 2013) (concluding, in copyright
preemption analysis, that electronic computer files are “intangible
property”). For Rule 12(b)(6) purposes, however, the Court must
construe Epic’s conversion claim as encompassing the taking of a
tangible copy of its software. Hence, regardless of whether North
Carolina law would permit a conversion claim for electronic
software, the DDDDB Group’s state-law dismissal contentions fail.
42
Complaint:
paragraph 144 (“Defendants have taken illegally and
possessed the infringing software without the express or implied
consent of Epic.”) and paragraph 152 (“Upon information and belief,
Defendants have misappropriated Legacy’s software for its own use
and distribution in violation of the North Carolina Trade Secrets
Protection Act, N.C. Gen. Stat. § 66-152.”).
(Id.)
The Amended Complaint outlines Epic’s conversion claim in
paragraphs 142 through 146.
(Docket Entry 39 at 31.)
In paragraph
143, Epic asserts that “[t]he infringing software being used by
Defendants is the sole and exclusive property of Epic and was not
conveyed or sold to Defendants.”
(Id. at 31, ¶ 143.)
This
description suggests that Epic’s conversion claim focuses on the
Falcon
software
Moreover,
rather
although
than
Epic’s
a
copy
conversion
of
the
claim
Legacy
software.
“incorporates
all
foregoing paragraphs” (id. at 31, ¶ 142), the incorporation does
not explicitly reach the subsequent allegation that “Defendants
have misappropriated Legacy’s software” (id. at 32, ¶ 152).
Nevertheless, when construed in the light most favorable to
Epic, this allegation of “misappropriation of Legacy software” does
encompass the taking of a physical copy of Legacy software.
In
addition, Epic alleges in its conversion claim that “Defendants
have exercised dominion and control over Epic’s property without
justification
or
excuse.”
(Docket
Entry
39
at
31,
¶
145.)
Juxtaposing this encompassing description of the converted property
43
with the Legacy software misappropriation allegation, the Amended
Complaint sufficiently alleges conversion of a physical copy of
Legacy software to survive the DDDDB Group’s preemption contention
at this stage of the litigation.
See Tire Eng’g, 682 F.3d at 310
(affirming denial of Rule 50 motion “because [plaintiff] was able
to ‘prove the extra element that the defendant unlawfully retained
the physical object embodying plaintiff’s work’”); cf. Madison
River,
351
F.
Supp.
2d
at
arising
444-45
from
(dismissing
remote
accessing
as
of
preempted
conversion
claims
computer
programs).
Accordingly, the Court should deny the DDDDB Group’s
motions to dismiss Epic’s conversion claim.
2.
Trade Secret Claim
In North Carolina, “[t]he owner of a trade secret shall have
remedy by civil action for misappropriation of his trade secret.”
N.C. Gen. Stat. § 66-153.
a two-part inquiry:
“Typically, trade secrets cases involve
first, whether the process in question is a
trade secret and second, if the process is a trade secret, whether
that process was misappropriated.” In re Wilson, 248 B.R. 745, 749
(M.D.N.C. 2000).
North Carolina law defines a trade secret as
business or technical information, including but not
limited to a formula, pattern, program, device,
compilation of information, method, technique, or process
that:
a.
Derives
independent
actual
or
potential
commercial value from not being generally known or
readily
ascertainable
through
independent
development or reverse engineering by persons who
44
can obtain economic value from its disclosure or
use; and
b. Is the subject of efforts that are reasonable
under the circumstances to maintain its secrecy.
N.C. Gen. Stat. § 66-152(3).
North Carolina further defines
“misappropriation” as “acquisition, disclosure, or use of a trade
secret of another without express or implied authority or consent,
unless such trade secret was arrived at by independent development,
reverse engineering, or was obtained from another person with a
right to disclose the trade secret.”
Id. § 66-152(1).
The
hallmarks of trade secret cases are the information’s secrecy,
Avtec Sys., Inc. v. Peiffer, 21 F.3d 568, 575 (4th Cir. 1994), and
its acquisition by wrongful means, Trandes Corp. v. Guy F. Atkinson
Co., 996 F.2d 655, 660 (4th Cir. 1993).
secret
claim
qualitatively
claims.
provide
the
distinguish
necessary
trade
secret
These aspects of a trade
“extra
claims
elements”
from
to
copyright
Id.; see also Avtec, 21 F.3d at 574 (holding Virginia
trade secret claim not preempted); Comprehensive Techs. Int’l, Inc.
v. Software Artisans, Inc., 3 F.3d 730, 736 n.6 (4th Cir. 1993)
(“We have recently held that § 301(a) does not preempt claims for
trade secret misappropriation under state law.”), vacated pursuant
to settlement (Sept. 30, 1993).19
19 In support of its preemption contention, the DDDDB Group
maintains that district courts outside the Fourth Circuit “have
dismissed misappropriation of trade secret claims related to
software as preempted by the Copyright Act by examining the
(continued...)
45
Accordingly, the Court should deny the DDDDB Group’s motions
to dismiss Epic’s trade secrets claim.
3.
UDTPA Claim
In North Carolina, “[u]nfair methods of competition in or
affecting commerce, and unfair or deceptive acts or practices in or
affecting commerce, are declared unlawful,” N.C. Gen. Stat. § 751.1, and individuals and businesses injured by such conduct possess
19(...continued)
allegations on a case-by-case basis, rather than applying a rigid
comparison of the elements.” (Docket Entry 68 at 7; see id. at 78.) Regardless of what those district courts do, district courts
in the Fourth Circuit must examine “the elements of the causes of
action” rather than “the facts pled to prove them” when dealing
with software-related misappropriation claims. Trandes, 996 F.2d
at 659. The DDDDB Group also contends that the secrecy element of
a trade secret claim is only relevant to whether the work comes
“within the scope of the subject matter of copyright,” not whether
the rights protected by trade secret law “are equivalent to any
exclusive rights within the scope of federal copyright.” (Docket
Entry 85 at 4 (internal quotation marks omitted).)
To the
contrary: the secrecy or lack thereof does not affect whether a
work falls within the scope of copyright law. More fundamentally,
however, trade secret law and copyright law protect distinct
rights. As the Fourth Circuit explained,
a claim for misappropriation of a trade secret does not
require the same proof as a claim for copyright
infringement. To establish the latter, a plaintiff must
prove that the defendant copied its expression. The law
of trade secrets, on the other hand, protects ideas,
without regard for the form of expression. Thus, two
computer programs may be sufficiently dissimilar on the
level of expression to defeat liability for copyright
infringement, but they may be sufficiently similar on a
more abstract or ideational level to establish liability
for trade secret misappropriation.
Comprehensive Techs., 3 F.3d at 736 n.7 (emphasis in original)
(citations omitted).
46
a right of action for such injury, id. § 75-16.
To prove a UDTPA
claim, a plaintiff must show that the defendant (1) engaged in a
“deceptive” or “unfair” practice or act, (2) in or affecting
commerce, (3) that harmed the plaintiff.
647, 656, 548 S.E.2d 704, 711 (2001).
Dalton v. Camp, 353 N.C.
The Fourth Circuit has held
that “[c]opyright infringement is not itself a violation of the
state [Unfair and Deceptive Trade Practices] Act.”
Nintendo of
Am., Inc. v. Aeropower Co., Ltd., 34 F.3d 246, 251 (4th Cir. 1994)
(recognizing, in light of Copyright Act preemption, that “state law
could not in fact make copyright infringement a violation of the
[UDTPA]”).
Thus, to survive a motion to dismiss, a UDTPA claim
must rely on allegations other than copyright infringement.
See
Andrews v. Daughtry, No. 1:12-CV-00441, 2013 WL 664564, at *11
(M.D.N.C. Feb. 22, 2013); see also Nintendo, 34 F.3d at 249
(affirming determination that “sales of [trademark and copyright]
infringing cartridges in North Carolina constituted violations of
the [Lanham Act, Copyright Act, and UDTPA]”).
asserted
claims
for
trademark
infringement
Here, Epic has
and
trade
misappropriation, both of which support a UDTPA claim.
secret
See Polo
Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987)
(trademark
infringement);
Medical
Staffing
Network,
Inc.
v.
Ridgway, 194 N.C. App. 649, 659-60, 670 S.E.2d 321, 329 (2009)
47
(trade secret misappropriation).20
Accordingly, the Copyright Act
does not preempt Epic’s UDTPA claim, and the Court should deny the
DDDDB Group’s motions to dismiss this claim.
CONCLUSION
Epic and Falcon Amusement have made a prima facie showing that
this Court possesses personal jurisdiction over Schappel and Falcon
Technologies in connection with the instant dispute.
Further, the
Amended Complaint contains specific allegations against Falcon
Technologies and Schappel.
Finally, the DDDDB Group has not shown
that the Copyright Act preempts Epic’s conversion, trade secret
misappropriation, and UDTPA claims.
IT IS THEREFORE RECOMMENDED that the DDDDB Motion (Docket
Entry 67), the Falcon Technologies Motion (Docket Entry 69), and
the Schappel Motion (Docket Entry 78) be denied.
December 7, 2015
/s/ L. Patrick Auld
L. Patrick Auld
United States Magistrate Judge
20 The DDDDB Group maintains that Epic’s “allegations would
constitute reverse passing off, instead of passing off” because
Defendants “allegedly reproduced and distributed software under the
name ‘Falcon,’ not ‘Legacy.’” (Docket Entry 85 at 7-8.) Regardless
of whether the Court deems the claim passing off or reverse passing
off, use of Epic’s trademarks under the Falcon label supports a
UDTPA claim based on trademark infringement. Polo Fashions, 816
F.2d at 148-49.
48
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