4U Promotions, Inc. v. Excellence in Travel, LLC et al

Filing 101

OPINION AND ORDER denying 80 (redacted); 86 (unredacted) Second Motion for Partial Summary Judgment. Signed by Magistrate Judge Norah McCann King on 8/10/2017. (er)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION

4U Promotions, Inc.,

:

Plaintiff,

:

v.

:

Case No. 2:15-cv-1673
Magistrate Judge King

:
Excellence in Travel, LLC,
Defendant.

:

OPINION AND ORDER
This matter is before the Court, with the consent of the
parties under 28 U.S.C. § 636(c), on Plaintiff’s second motion
for partial summary judgment, (Doc. 80, redacted; Doc. 86,
unredacted). Defendants have responded and the motion has been
fully briefed.

For the following reasons, the motion for

partial summary judgment is DENIED.
Background
Briefly, Plaintiff 4U Promotions, Inc. (“4UP”) filed this
action under the Lanham Act, 15 U.S.C. 1125, alleging that
Defendants, Excellence in Travel, LLC’s (“EIT”) and its owner
and sole member, Colleen Gaier (“Ms. Gaier”) (collectively,
“Defendants”), infringed 4UP’s registered trademarks.

4UP also

asserted supplemental state law claims of breach of contract,
contempt under O.R.C. § 2705.01 et seq., and violation of the
Ohio Deceptive Trade Practices Act, O.R.C. § 4165.01 et seq.
The breach of contract claim arose out of the settlement of
a prior state court action filed by 4UP against EIT in the Court
of Common Pleas for Greene County, Ohio, asserting claims for

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breach of contract, unfair competition, intentional interference
with business relationships and conversion.

EIT filed a

counterclaim alleging claims for breach of fiduciary duty,
breach of joint venture, conversion, interference with
prospective contractual relations, defamation, false light
invasion of privacy and seeking declaratory judgment regarding
the ownership and validity of certain service marks.

The focus

of the state court action was a joint venture to organize and
promote a specialty cruise in 2012 that 4UP and EIT called the
“Decades of Rock & Roll Oldies Cruise.”
the use of two marks:

That action involved

(1) “Decades of Rock and Roll Oldies

Cruise” and (2) “Decades of Rock and Roll” (the “4UP marks”).
The state court action was mediated and the parties entered into
a settlement agreement.

Not quite a year later, 4UP filed this

action.
Facts
Following mediation of this case, the parties entered into
a settlement agreement on April 25, 2016, and the action was
dismissed upon stipulation. Stipulated Dismissal (Doc. 44). On
December 28, 2016, 4UP moved to enforce the parties’ settlement
agreement. Plaintiff’s Motion for Enforcement of the Parties’
Settlement Agreement (Doc. 45, redacted; Doc. 50, unredacted).
As it relates to the motion to enforce the settlement agreement
and to Defendants’ current motion, the settlement agreement
contains the following provision:
3. EIT’s and Gaier’s Cessation of Use of the 4UP
Mark. Within fourteen (14) days after the
Execution Date, EIT and Gaier shall completely
cease all uses of the 4UP Mark and any
substantially similar variation of the 4UP Mark.
EIT and Gaier expressly agree that ceasing all
uses includes, but is not limited to, removing
each previous and/or current use of the 4UP Mark
from all print media, electronic media and social
media over which 4UP and/or Gaier have direct or
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indirect control through EIT’s and Gaier’s
employees and/or agents. EIT and Gaier further
expressly agree that “uses of the 4UP Mark”
include any use of the 4UP Mark or any
substantially similar variation of the 4UP Mark
as a hashtag, a metatag, metadata of any sort
and/or in any way whatsoever, regardless of
whether it is used as a trademark or not.
If EIT or Gaier fail to comply with this Section
and that failure continues for fourteen (14) days
after written notice is provided as set forth in
Section 9, below, then 4UP may take all available
action at law. No action can be taken prior to
the expiration of this notice requirement. The
Parties agree that this Section 3 is a material
provision of this Agreement.
On May 2, 2016, i.e., one week prior to the expiration of
the initial fourteen-day period, counsel for 4UP sent an email
to Defendants’ counsel identifying uses of the 4UP mark. See
Declaration of Colleen Gaier (Doc. 93, Ex. 2). On May 10, 2016,
i.e., one day after the expiration of that initial period,
counsel for 4UP sent a first written notice of noncompliance
with the settlement agreement.

Id. (Doc. 93, Ex. 3).

This

notice purported to identify 2 confirmed and 4 unconfirmed uses
of the 4UP mark. Id.
the email dated May 2.

These uses had been identified by 4UP in
The next day, counsel for 4UP emailed

Defendants’ counsel highlighting three items identified in the
prior day’s letter that still needed to be corrected.

Id. (Doc.

93, Ex. 4).
On May 16, 2016, Defendants’ counsel responded to 4UP’s
counsel stating that her client had complied in response to the
May 10 written notice. Id. (Doc. 93, Ex. 5). On that same date,
4UP’s counsel sent a second notice of noncompliance identifying
9 Facebook posts and 4 tweets, all dating from 2011, and
demanding removal of those items.

Id. (Doc. 93, Ex. 6).

is no indication in this letter that these items had been
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There

included in the first letter notification of noncompliance.

On

May 31, 2016, Defendants’ counsel emailed 4UP’s counsel,
representing that the posts had been removed.

Id. (Doc. 93, Ex.

7). On August 1, 2016, 4UP’s counsel sent a third notice of
noncompliance.

Id. (Doc. 93, Ex.8).

Again, there is no

indication in this letter that these items had been included in
the first or second letter notifications of noncompliance.

The

third letter also requested payment of $10,000 for the alleged
material breach of the settlement agreement.

By letter dated

August 15, 2016, Defendants’ counsel responded to 4UP stating
that her clients had complied with the terms of the settlement
agreement.

Id. (Doc. 93, Ex. 10).

4UP filed its motion to enforce the settlement agreement
approximately four months later.

The motion identifies alleged

uses consisting of four Facebook posts and sixteen tweets
discovered on or around December 9, 2016.

See Affidavit of

Penny Greene (Doc. 50, Attachments B and D).

The motion also

asserts that Defendants had previously confirmed removal of
three of these tweets and one of these Facebook posts.

Id.

4UP now moves for partial summary judgment, contending that no
genuine issue of material fact exists as to whether Defendants
acted in breach of the settlement agreement by their failure to
timely remove 16 tweets containing the 4UP mark.
Legal Standard
Summary judgment is appropriate if the record establishes
that there exists no genuine issue of material fact.
Fed.R.Civ.P. 56; Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
247–48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The mere
existence of a scintilla of evidence in support of the opposing
party's position will be insufficient; there must be evidence on
which the jury could reasonably find for the opposing party.

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Anderson, 477 U.S. at 251. See also Celotex Corp. v. Catrett,
477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
Analysis
There is no question that a settlement agreement is a
binding contract. Edwards v. Hocking Valley Community Hosp., 87
Fed.Appx. 542, 550 (6th Cir. 2004).

According to the terms of

the parties’ settlement agreement, the provision is to be
construed in accordance with Ohio law.

The application of Ohio

law is consistent with choice of law provisions and the parties
do not contend that any law but Ohio’s governs their dispute.
“Under Ohio law, the elements of a breach of contract claim are:
(1) the existence of a contract; (2) performance by the
plaintiff; (3) breach by the defendant; and (4) damage or loss
to the plaintiff as a result of the breach.”

V & M Star Steel

v. Centimark Corp., 678 F.3d 459, 465 (6th Cir. 2012).
In its motion for partial summary judgment, 4UP contends
that Defendants acted in breach of the settlement agreement by
their failure to timely remove 16 tweets containing the 4UP
mark.

This alleged material breach, 4UP also argues, entitles

it to injunctive relief under the terms of the settlement
agreement.

In support of this position, 4UP relies on the

affidavit of Ms. Greene, its president, submitted in connection
with its motion to enforce.
Agreement (Doc. 50).

See Motion to Enforce Settlement

According to Ms. Greene, she checked EIT’s

Twitter posts in December 2016 for any use of the 4UP mark, and
discovered that EIT was using the 4UP mark in 16 tweets.
(Doc. 50, ¶¶ 9-10).

Id.

She reviewed 4UP’s second notice of

noncompliance, dated May 16, 2016, and noted that three of those
16 tweets had been previously reported to Defendants, who
represented in their May 31, 2016, email that the tweets had
been deleted.

Id. (Doc. 50, ¶11).

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Defendants respond that 4UP is not entitled to partial
summary judgment because there exist genuine issues of material
fact, including (1) whether 4UP provided the required notice
under the terms of the settlement agreement, and (2) whether
Defendants acted in material breach of the settlement agreement
with respect to the 16 tweets.
Plaintiff’s 2

nd

Memorandum in Opposition to

Motion for Partial Summary Judgment against

Defendants and, in the Alternative, Motion for Extension of Time
in Which to File Opposition (Doc. 89, redacted; Doc. 93,
unredacted)(“Memorandum in Opposition”). With respect to the
issue of notice, Defendants contend that 4UP notified them of
only four tweets in its May 16, 2016, notice.

After receipt of

that notice, Defendants explain, Ms. Gaier conducted a search
and found no tweets that had not already been removed by her
and, on May 31, 2016, notified 4UP of these actions.
Declaration of Colleen Gaier (Doc. 93, Ex. A, ¶¶ 4(g), 17, 18).
According to Defendants, 4UP did not alert them to the existence
of any additional tweets until the filing of the motion to
enforce the settlement agreement.

Upon receipt of the motion to

enforce the settlement agreement, Ms. Gaier conducted a new
search of the EIT Twitter account.

Id. (Doc. 93, Ex. A, ¶31).

This search uncovered 13 tweets dated from June 30, 2011 to
November 29, 2011, containing the 4UP mark.

Id.

However, these

tweets had not appeared in her previous searches. She deleted
them at that time.

Id.

Defendants state that, of the 16 tweets at issue here, 4UP
provided them prior written notice with respect to only three.
They argue that they satisfied their obligations under the
settlement agreement when they searched for and removed each
discovered use of the 4UP mark on Twitter and then removed all
uses of the 4UP mark on Twitter as brought to their attention by
4UP.

In Defendants’ view, there is a factual issue as to
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whether 4UP performed its contractual obligations required by
the settlement agreement in order to prevail on a breach of
contract claim.
In reply, 4UP asserts that it complied with its notice
obligations under the settlement agreement.

According to 4UP,

the settlement agreement does not specify the particular form or
content of the required notice, but requires only that the
notice indicate Defendants’ failure to comply with §3 of the
settlement agreement.

4UP argues that, consistent with the

agreement’s plain language, it provided clear, written notice of
Defendants’ noncompliance and it was not required to identify
every specific instance of such noncompliance. 4UP also
characterizes Ms. Gaier’s declaration as insufficient to raise a
genuine issue of material fact as to whether Defendants complied
with their obligation to cease using the 4UP mark by removing
the tweets.

In 4UP’s view, Ms. Gaier addresses only her

attempts to comply with the settlement agreement; she has not
established actual compliance.
4UP appears to take the position that its alleged discovery
of 16 tweets conclusively establishes that Defendants did not
remove those tweets. Significantly, the parties do not address
the definition of the term “removing” as set forth in the
settlement agreement.

4UP appears to define Defendants’

obligation in “removing each previous and/or current use” as
akin to Defendants’ guarantee that, once removed, a tweet will
never reappear in any subsequent search.

Defendants, on the

other hand, appear to focus on the actual physical act of
deleting a tweet, when uncovered through their own search or
when identified by 4UP, as sufficient to satisfy their
obligation. The Court previously addressed with the parties its
need to understand the technology relating to the effective
removal of social media posts.

For purposes of the current
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motion, the Court has no information from which it can conclude
that if, as 4UP contends, 16 tweets continued to exist in
violation of the settlement agreement, that existence was the
result of Defendants’ deliberate failure to remove the tweets.
4UP, as the party who bears the burden of proof on this issue,
simply has not established on this record that the mere
existence of a tweet necessarily resulted from Defendants’
deliberate failure to remove that tweet.
In short, and construing the facts in the light most
favorable to Defendants, as it must, the Court concludes that
Ms. Gaier has presented evidence in support of her contention
that she removed all tweets either located by her or identified
by 4UP.

At this stage, that is all that is required of

Defendants in order to raise a genuine issue of material fact
sufficient to defeat 4UP’s motion for partial summary judgment.
In light of the foregoing, the Court need not and will not
address the issue of the sufficiency of 4UP’s notice.
Conclusion
Based on the foregoing, the second motion for partial
summary judgment (Doc. 80 redacted; Doc. 86 unredacted) is
DENIED.

August 10, 2017

s/ Norah McCann King
United States Magistrate Judge

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