The opinion of the court was delivered by: Joel A. Pisano United States District Judge
In this action Plaintiffs Robert Barefoot ("Barefoot") and Deonna Enterprises, Inc. ("Deonna") (together, "Plaintiff") allege that Defendants Wellness Publishing, Holt M.D. Consulting Inc. ("Holt Consulting"), Nature's Benefit, Inc., and Stephen Holt ("Holt") breached a settlement agreement entered by the parties in 2004. Defendants have counterclaimed, alleging that Plaintiff has breached the settlement agreement and has infringed Defendants' trademark and trade dress. Presently before the Court is a motion by Plaintiff for partial summary judgment as to (i) Plaintiff's claim against Defendants for breach of the settlement agreement; and (ii) all counterclaims against Plaintiff.*fn1 Also before the Court are three motions for summary judgment by Defendants. Defendants have moved for summary judgment (i) "with regard to liability for the licensing for sale of Barefoot Coral Calcium Plus and receipt of royalties therefrom; (ii) as to any liability of Holt and Wellness Publishing; and (iii) with respect to Plaintiff's damages claim. For the reasons set forth below, Plaintiff's motion is granted in part and denied in part. Defendants motions as to damages and the sale of Coral Calcium Plus are denied, and the motion as to the liability of Holt and Wellness Publishing is granted.
Defendant Holt is "a medical doctor who owns all or most of several companies involved in the dietary supplement industry, including Holt Consulting." Pl. Rule 56.1 Statement ¶ 3. In 2001, an entity known as "Wellness Publishing.com," a wholly-owned affiliate of Holt Consulting, entered into an agreement with Plaintiff (the "Publishing Contract") with respect to a manuscript entitled "Barefoot on Coral Calcium" (the "Work") by which Plaintiff granted to Wellness Publishing.com certain exclusive rights in the Work. See Publishing Contract, attached to Nagel Aff. at Ex. B. The Publishing Contract gave Holt Consulting the right to use Barefoot's name and likeness to advertise and promote the sale of the Work as well as the sale of unspecified "associated items," and permitted Holt Consulting to sublicense the rights granted thereunder. Publishing Contract at 3.
Ultimately, Holt Consulting and other companies owned by Holt ended up in litigation in the District of Arizona (the "Arizona litigation") with Barefoot and companies owned by Barefoot over the respective rights and obligations of the parties under the Publishing Contract. Pl. R. 56.1 Statement ¶ 10. That matter was captioned Barefoot v. Holt MD Consulting, Inc., Civil Action No. 02-1332. Similarly, on October 9, 2002, Holt, among others, initiated the action Wellness Publishing , et al., v. Robert Barefoot, et al., Civil Action No. 02-3773, in this district against Barefoot and Deonna, as well as other defendants, alleging certain claims, among others, that arose from the Publishing Contract. In 2004, Holt and Barefoot reached a resolution of the claims between them, and the parties*fn2 entered into a Mutual Release and Settlement Agreement ("Settlement Agreement") on March 14, 2004. Affidavit of Ronald Nagel ("Nagel Aff."), Ex. D.
During the Arizona litigation, the parties had engaged in settlement discussions through their respective legal counsel. See Nagel Supp. Aff., Ex. C ("Sullivan Dep.") at 109. However, these attempts at settlement failed. At this time, Barefoot was introduced to Stephen Bailey, who represented to Barefoot that he was a "successful businessman" who wanted to assist Barefoot in reaching a settlement with Holt and his companies. Barefoot Decl. ¶ 4. Bailey negotiated the settlement between Barefoot and Holt, and drafted the Settlement Agreement entered by the parties. Deposition of Stephen Bailey ("Bailey Dep.") at 12. Legal counsel was expressly excluded from involvement in this settlement. According to the express terms of the Settlement Agreement, both parties "waived the right to attorney review of [the] agreement," and agreed not to "permit legal counsel to interfere with [the] settlement." Settlement Agreement at 4. Both parties warranted that there had been "no involvement of counsel involved in the litigation in the construction of [the] settlement agreement." Id.
The stated purpose of the Settlement Agreement was "to settle all matters relative to the [then-]current litigation between Robert Barefoot and Steven Holt and their respective corporations." Settlement Agreement at 1. The Agreement enumerated the respective responsibilities of each party to the agreement. As to Holt "through his corporations," the Agreement provided as follows:
* Wellness Publishing was to convey to Barefoot "the rights to the book Barefoot on Coral Calcium: An Elixir of Life," and all "escrowed book royalties" were to be paid to a notfor-profit foundation called "Coral For Life." Id. Further, the Settlement Agreement expressly stated that "the publishing contract in dispute is terminated." Id.
* Stephen Holt was to donate $100,000 in cash to "Coral for Life" in Nevada. Id.
* Holt was to "offer assistance to Mr. Barefoot through Mr. Stephen Bailey . . . regarding future business undertakings." Id.
* Holt was to "arrange to forward" ten thousand units of coral calcium (five thousand of the Barefoot Coral Calcium Plus formulation and five thousand Marine Coral Minerals) to "Coral For Life." Id.
* All litigation against Barefoot, Deonna and certain other parties would be dismissed. Id. at 2.
* Holt was to "discuss mutual strategies against" certain other parties that "may have infringed on the rights of" Barefoot and Holt or any of their corporations. Id.
* Natures Benefit was to "donate a five percent royalty on future sales of Barefoot Coral Calcium Plus to "Coral For Life" at retail pricing with pro-rated commissions in wholesale sales. Id.
* Barefoot would "receive the rights to use the trademark Barefoot on Coral Calcium Plus or variations thereof for the sale of coral calcium products," but Barefoot could "not own or reproduce on any labels or commercial materials the dress code of the product Barefoot Coral Calcium Plus for any commercial purpose" without Holt's written permission. Id.
* Holt was to "cease publishing all of his current books on coral calcium and each party agree[d] to strict terms of non-disparagement and mutual cooperation with all attempts to support each other's good standing." Id.
As to Barefoot "and his corporations," the Settlement Agreement provided:
* Barefoot was to "permit any of [Holt's] corporations or affiliates to manufacture all coral calcium products in an exclusive manner to be sold by an entity approved by Mr. Steven Bailey which must be endorsed by Mr. Barefoot, in a regulatory approved manner providing that Mr. Bailey accepts the specification of the products on behalf of Mr. Barefoot. Products must not contain toxic elements or amounts of ingredients." Id.
* Barefoot was to "make best effort to promote and endorse all dietary supplement products in good faith within the guidelines of regulatory control . . .. There must be no unfair competition." Id.
On June 28, 2006, Plaintiffs filed their complaint in this matter alleging that Defendants breached the Settlement Agreement "by, among other things, continuing to sell Barefoot's books, selling coral calcium products using Barefoot's name and likeness, failing to pay royalties, and using inferior calcium products." Compl. ¶ 12. The Complaint further alleges that Defendants "continued to sell Barefoot books and products to a company known as HBC Ventures LLC" ("HBC") and "HBC paid Holt millions of dollars from the sales of Barefoot books and products." Id. ¶ 13. The Complaint contains four counts against all defendants: (1) breach of the Settlement Agreement; (2) unjust enrichment; (3) breach of the implied covenant; and (4) Plaintiff seeks an accounting from defendants as to all coral calcium products sold using Barefoot's name, all royalties received pursuant "sublicensing agreements using Barefoot's name, and all sales of Barefoot's books. Id. at 3-6.
Defendants have counterclaimed against Plaintiffs, asserting that Defendants have complied with the Settlement Agreement and it is "Robert Barefoot and/or his corporations" who have failed to comply with their contractual obligations in accordance with the parties' Agreement." Counterclaim ¶ 7. Defendants allege that Barefoot failed to use best efforts to promote dietary supplements sold by Natures Benefit, and, further, "failed to permit Dr. Holt's corporations or affiliates to manufacture all coral calcium products in an exclusive manner." Id. ¶ 8-9. According to the counterclaims, Barefoot allegedly entered into a contract with a manufacturer to sell a competing coral calcium product known as Barefoot ...