United States District Court, D. Massachusetts
MEMORANDUM & ORDER
WILLIAM G. YOUNG, DISTRICT JUDGE
action for trademark infringement and false designation of
origin under the Lanham Act, WD Encore Software, LLC
(“WD Encore”) sued The Software MacKiev Company
(“MacKiev”) for unauthorized use of trademarks
relating to certain software products. WD Encore moved for
partial summary judgment on its trademark infringement claim,
as well as on MacKiev's counterclaim for quantum meruit.
After denying WD Encore's motion on its trademark
infringement claim from the bench, this Court now denies
summary judgment as to MacKiev's counterclaim for quantum
Encore filed a complaint against MacKiev on September 18,
2015, in the Western District of New York, seeking injunctive
relief and damages for trademark infringement. Compl. 1, ECF
No. 1. MacKiev moved to dismiss the complaint. Notice of
Mot., ECF No. 6. The case was instead transferred to the
District of Massachusetts, ECF No. 14, where MacKiev renewed
its motion to dismiss, The Software MacKiev Company's
Renewed Mot. Dismiss WD Encore Software, LLC's Compl.,
ECF No. 25. After a hearing on September 13, 2016, this Court
denied MacKiev's motion. Electronic Clerk's Notes,
ECF No. 36.
Amended Complaint includes three counts: federal trademark
infringement under 15 U.S.C. § 1114 (count I), false
designation of origin under 15 U.S.C. § 1125(a)(1)(A)
(count II), and unfair competition under New York law (count
III). Am. Compl. ¶¶ 34-50. In response, MacKiev
asserted eight affirmative defenses, and also filed
counterclaims for: implied contract/quantum meruit (count I),
false designation of origin under 15 U.S.C. §
1125(a)(1)(A) (count II), unfair competition under
Massachusetts law (count III), and violation of M.G.L. ch.
93A (count IV). Def. Software MacKiev Co.'s Answer Am.
Compl., Affirmative Defenses, and Countercls.
(“Answer”), ECF No. 47.
Encore has now filed a motion for partial summary judgment
on: 1) liability on WD Encore's trademark infringement
claim and 2) MacKiev's counterclaim against WD Encore
alleging quantum meruit/implied contract. Mot. Pl. WD Encore
Software, LLC Partial Summ. J., ECF No. 71. The parties have
briefed the issues and submitted accompanying statements of
fact. Pl.'s Mem. Law Supp. Mot. Partial Summ. J.
(“Pl.'s Mem.”), ECF No. 72; Pl.'s Local
Rule 56.1 Statement (“Pl.'s Facts”), ECF No.
73; Def. Software MacKiev Co.'s Mem. Law Supp. Opp'n
WD Encore Software, LLC's Mot. Partial Summ. J.
(“Def.'s Opp'n”), ECF No. 83; Def.
Software MacKiev Co.'s Resp. Pl.'s Local Rule 56.1
Statement (“Def.'s Resp. Facts”), ECF No. 84.
After a hearing, the Court denied WD Encore's motion as
to the trademark infringement claim, but took the quantum
meruit claim under advisement. Electronic Clerk's Notes,
ECF No. 92.
Encore is a New York limited liability company with its
principal place of business in Syracuse, New York. Am. Compl.
¶ 1; Answer ¶ 1. The company is a developer and
wholesale and retail distributor of software products.
Pl.'s Facts ¶ 1. From its formation in June 2014 to
the present, WD Encore has been a wholly-owned subsidiary of
WYNIT Distribution, LLC (“WYNIT”). Id.
WD Encore came about as part of an Asset Purchase Agreement
effective July 9, 2014 (“Asset Purchase
Agreement”), between WYNIT and certain of its
subsidiaries, including WD Encore, as buyers, and Speed
Commerce, Inc. and certain of its subsidiaries, including
Encore Software, Inc. (“ESI” or
“Encore”), as sellers. Id. ¶ 2. As
part of the transaction, WD Encore acquired certain of
ESI's assets, including specific licensing agreements
between ESI and third parties. Id.
Asset Purchase Agreement provides for the purchase of
“substantially all of the assets used by the Sellers in
connection with” certain aspects of the sellers'
business, including the “manufacture, development,
license or distribution . . . of software products developed
by [ESI] or licensed from Third Parties.” Id.
¶ 3. It also provides that the buyers assume the
liabilities specified in the “Assumed
Liabilities” section, which include all liabilities
under the enumerated “Assumed Contract, ” as well
as other liabilities relating to taxes, trade payables,
transferred employees, and other specified items.
Id. The “Assumed Contracts” are set
forth in an Assignment and Assumption Agreement effective
July 9, 2014 (“Assignment and Assumption
Agreement”). Id. ¶ 6. ESI was dissolved
in March 2016. Id. ¶ 8.
is a Nevada corporation with its principal place of business
in Boston, Massachusetts. Am. Compl. ¶ 2; Answer ¶
2. MacKiev is the owner and operator of the website
www.mackiev.com and sells software products. Pl.'s Facts
The Channel License Agreement
1, 2008, Riverdeep, Inc., HMH Consumer Company, and ESI
entered into a Channel License Agreement, which was amended
from time to time, with the latest amendment (Amendment No.
5) dated July 2, 2013. Id. ¶ 10. Pursuant to
the Assignment and Assumption Agreement, WD Encore became a
licensee under the Channel License Agreement. Id.
Houghton Mifflin Harcourt Publishing Company
(“HMH”) is the successor licensor to the Channel
Licensing Agreement. HMH IP owns the federal trademark
registrations for a number of trademarks related to software