Fremantlemedia North America, Inc. v. Benelux Corporation et al

Filing 6

Response in Opposition to Motion, filed by Fremantlemedia North America, Inc., re MOTION to Dismiss filed by Defendant Benelux Corporation, Defendant Athanases Stamatopoulos (Attachments: # 1 Exhibit A to Plaintiff's Response, # 2 Exhibit B to Plaintiff's Response, # 3 Exhibit C to Plaintiff's Response, # 4 Exhibit D to Plaintiff's Response, # 5 Exhibit E to Plaintiff's Response, # 6 Proposed Order)(Matheny, Anthony)

Not Reported in F.Supp. Not Reported in F.Supp., 1995 WL 17217153 (S.D.Tex.) (Cite as: 1995 WL 17217153 (S.D.Tex.))

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Only the Westlaw citation is currently available. United States District Court, S.D. Texas, Houston Division. DERRICK MANUFACTURING CORP., Plaintiff v. SOUTHWESTERN WIRE CLOTH, INC., Defendant No. Civ.A. H-94-135. May 5, 1995. ORDER HARMON, J. *1 Pending before the Court in the above referenced action for patent infringement, trademark and trade name infringement, and unfair competition are Defendant Southwestern Wire Cloth, Inc.'s motion for partial summary judgment (instrument # 13), Defendant's motion for leave to file first amended answer and counterclaim (# 15), Plaintiff Derrick Manufacturing Corporation's motion for leave to amend (# 16), a joint motion for submission (# 21), and Defendant's motion for leave to compel (# 22). Defendant moves for partial summary judgment that Plaintiff is barred from recovery of damages in the '421 patent prior to February 12, 1993. Plaintiff responds that it will not seek damages from Defendant occurring prior to that date, when it gave actual notice of patent infringement, in compliance with 35 U.S.C. § 287. Thus the Court finds that the motion is moot. Because Plaintiff has not responded to Defendant's motion for leave to amend, and because such failure is construed as nonopposition under Local Rule 6E, the Court concludes that it should be granted. Plaintiff moves for leave to amend its complaint to add two Defendants, Southwestern Wire Cloth Oilfield Screens, Inc., which, Plaintiff claims it has discovered, continued the infringing conduct of Defendant, and the sole shareholder, president and director of both Defendant corporations, Robert E. Norman ("Norman"). Plaintiff also seeks to add allegations relating to infringement by these parties of additional

trade names and trademarks exclusively owned by Plaintiff. Defendant responds that it objects only to the addition of Norman. It argues that because Plaintiff has not shown grounds for piercing the corporate veil, i.e., that the corporation is an alter ego of Norman, the mere fact that he is the sole shareholder should not support his joinder. Manville Sales Corporation v. Paramount Systems, Inc., 917 F.2d 544 (Fed.Cir.1990). Defendant maintains that Norman was acting within the scope of his employment and should enjoy protection under the corporate veil. Plaintiff replies that such arguments are premature and that the standard for a Fed.R.Civ.P. 15(a) motion is not whether a plaintiff can prevail on the merits but rather that announced in Foman v. Davis, 371 U.S. 178, 182 (1962): If the underlying facts or circumstances relied upon by a plaintiff may be a proper subject of relief, he ought to be afforded an opportunity to test his claim on the merits. In the absence of any apparent or declared reason--such as undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party by virtue of allowance of the amendment, futility of amendment, etc.--the leave sought should, as the rules require, be "freely given." An officer or director of a company can be held personally liable for direct patent infringement and for inducing infringement of a patent by the corporate defendant. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1579 (Fed.Cir.1986); Power Lift, Inc. v. Lang Tools, Inc, 774 F.2d 478, 480- 82 (Fed.Cir.1985). Such personal liability can be established without lifting the corporate veil. Orthokinetics, 806 F.2d at 1578-79. Moreover it is well settled that individuals can infringe a trademark and be personally liable while their corporations may be liable at the same time under a theory of vicarious liability. Mead Johnson & Co. v. Baby's Formula Service, Inc., 402 F.2d 19, 23 (5th Cir.1968). Plaintiff points out that Norman was notified of the suit in February 1993 and as the sole shareholder, president and director, may be presumed to be familiar with the details and actively participating in the defense, so there is no surprise or

EXHIBIT C
© 2008 Thomson Reuters/West. No Claim to Orig. US Gov. Works.

Not Reported in F.Supp. Not Reported in F.Supp., 1995 WL 17217153 (S.D.Tex.) (Cite as: 1995 WL 17217153 (S.D.Tex.))

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prejudice here. Plaintiff further maintains that there is no bad faith here. *2 After reviewing the record, the Court concludes that Plaintiff should be allowed to amend its complaint. Accordingly the Court ORDERS the following: (1) Defendant's motion for summary judgment is MOOT; (2) Defendant's unopposed motion for leave to file an amended answer and a counterclaim is GRANTED; (3) Plaintiff's motion for leave to amend complaint is GRANTED; (4) Plaintiff's motion to compel is REFERRED to United States Magistrate Judge Frances Stacy for swift resolution; and (5) the joint motion for submission is MOOT. SIGNED at Houston, Texas, this 4th day of May, 1995. Not Reported in F.Supp., 1995 WL 17217153 (S.D.Tex.) END OF DOCUMENT

© 2008 Thomson Reuters/West. No Claim to Orig. US Gov. Works.