Hedeen International LLC v. Zing Toys Inc et al

Filing 21

ORDER DENYING AS MOOT 9 MOTION to Dismiss filed by OzWest Inc. and directing plaintiff to file any response brief to 16 MOTION to Dismiss within 21 days of the date of this Order, signed by Chief Judge William C Griesbach on 07/09/2014. SEE ORDER FOR FULL DETAIL. (cc: all counsel)(Griesbach, William)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
HEDEEN INTERNATIONAL, LLC,
d/b/a FUN CITY USA,
Plaintiff,
v.

Case No. 14-C-304

OZWEST, INC, ZING TOYS, INC., and
PETER CUMMINGS,
Defendants.

ORDER DENYING [9] DEFENDANT’S MOTION TO DISMISS

Plaintiff Hedeen International, LLC brings this diversity action asserting claims for unpaid
royalties against defendants OzWest, Inc., its principal, Peter Cummings, and Zing, a trade name
that Cummings allegedly used while doing business for OzWest and Zing Toys, Inc., a now-defunct
entity. Hedeen alleges that it is a Wisconsin LLC with members who reside in Wisconsin, that
Cummings is an Oregon resident, and that OzWest and Zing Toys, Inc. were or are incorporated in
Oregon with principal places of business in Oregon. The dispute arises from a license agreement
between Hedeen and OzWest effectuated in February 2003 which required OzWest to pay quarterly
royalties to Hedeen in exchange for the exclusive opportunity to distribute the “Backfire Football”
in a given territory. Hedeen contends that the license agreement covers modifications to its
invention and that OzWest owes royalties for other products that substantially mimic the properties
of the Backfire Football.
OzWest filed a motion to dismiss on May 21, 2014, asserting that Hedeen’s initial
complaint fails to state a claim under Fed. R. Civ. P. 12(b)(6). (ECF No. 9). In its motion brief,

OzWest argued that the license agreement is void ab initio because the Backfire Football infringes
a patent issued in 2001. OzWest further argued that Hedeen’s state law breach of contract and
unjust enrichment theories are preempted by federal patent and copyright remedies. OzWest asked
the Court to take judicial notice of the 2001 patent as well as two other patents issued in 2011 and
2013. (ECF Nos. 11 & 13.) OzWest contends that some of the products identified in Hedeen’s
complaint are based on the 2011 and 2013 patents and not derivatives of the Backfire Football.
Hedeen subsequently amended its complaint pursuant to Fed. R. Civ. P. 15(a)(1)(B) on June
10, 2014, and attached a copy of the license agreement. (ECF No. 14). Hedeen contends that
OzWest’s motion is moot based on Hedeen’s amendments and also asserts that OzWest’s motion
impermissibly adds extrinsic evidence to a 12(b)(6) motion. (ECF No. 15.) OzWest did not file
a reply brief. Instead, OzWest filed a motion to dismiss the amended complaint on July 7, 2014,
on the same grounds.
Based on the foregoing, OzWest’s motion to dismiss the initial compliant (ECF No. 9) is
denied as moot. Hedeen should filed a response to OzWest’s second motion to dismiss (ECF No.
16) within 21 days of this order, and OzWest will have 14 days thereafter to file its reply. If Hedeen
objects to the court considering matters outside the pleadings, it should include its objection in its
response to OzWest’s motion.
SO ORDERED this

9th

day of July, 2014.
s/ William C. Griesbach
William C. Griesbach, Chief Judge
United States District Court

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