United States District Court, D. New Jersey
ENGAGE HEALTHCARE COMMUNICATIONS, LLC; GREEN HILL HEALTHCARE COMMUNICATIONS, LLC; and CENTER OF EXCELLENCE MEDIA, LLC, Plaintiffs,
INTELLISPHERE, LLC, MICHAEL J. HENNESSY & ASSOCIATES, INC., ARC MESA EDUCATORS, LLC, MICHAEL J. HENNESSY, JOHN DOES 1 TO 5; JANE DOES 1 TO 5, Defendants.
Freda L. Wolfson United States District Judge
before the Court is a motion by Defendants Intellisphere,
LLC, Michael J. Hennessy & Associates, Inc., Arc Mesa
Educators, LLC, and Michael J. Hennessy, individually
(collectively, “Defendants”) for an order
declaring this case exceptional under 15 U.S.C. §
1117(a) such that, for a defined period of time, reasonable
attorneys' fees and costs be awarded. Defendants seek
costs and fees after prevailing on their summary judgment
motion against Plaintiffs Engage Healthcare Communications,
LLC, Green Hill Healthcare Communications, LLC, and Center of
Excellence Media, LLC (collectively,
“Plaintiffs”). The First Amended Complaint
(“FAC”) alleged that Defendants infringed on 16
of Plaintiffs' trademarks. For the reasons that follow,
Defendants' motion is denied.
FACTUAL BACKGROUND AND PROCEDURAL HISTORY
present matter, a long-running and contentious dispute
between two medical publishing companies controlled by
competing members of the same family, stems from
Defendants' purported infringement of 16 trademarks that
Plaintiffs use as titles for medical-related magazines,
seminars, and continuing education courses. Summ. J. Op. at
3, November 29, 2018, ECF No. 300.
dispute began on December 7, 2011, when Plaintiffs, through
their counsel, sent a cease-and-desist letter to
Intellisphere and MJH & Associates regarding several of
Defendants' marks. Id. at 11. In response,
Intellisphere filed a cancellation proceeding before the
Trademark Trial and Appeal Board of the Patent and Trademark
Office (“PTO”), seeking the cancellation of
Plaintiffs' registration for the mark VALUE-BASED CANCER
CARE. Id. On February 9, 2012, Plaintiffs filed a
Complaint against Defendants, alleging, inter alia,
trademark infringement and unfair competition, and amended
their complaint shortly thereafter. ECF No. 1, 10. The FAC
asserted the following causes of action: (1) trademark
infringement under 15 U.S.C. § 1125(a); (2) trademark
infringement - unfair competition under 15 U.S.C. §
1125(a); (3) false designation of origin under 15 U.S.C.
§ 1125(a); (4) declaratory judgment under 28 U.S.C.
§2201, et seq; (5) an unfair competition claim
under N.J.S.A. 56:4-1l; (6) a New Jersey common law unfair
competition claim; 7) false advertising under 15 U.S.C.
§ 1125; and (8) tortious interference with prospective
contractual relationships. On April 20, 2012, Defendants
filed their first Counterclaim and Third-Party Complaint,
asserting the same causes of action that were asserted in the
FAC. ECF No. 12.
case proceeded through discovery, but the parties reportedly
reached a settlement on December 3, 2013, and the Court
administratively terminated the matter. ECF No. 69. However,
there was a dispute over the scope of the settlement terms,
and for almost all of 2014, this matter was the subject of a
number of failed mediation attempts. On March 15, 2015, the
case was reopened and assigned to this Court. ECF No. 118.
Various motions to dismiss and motions to enforce the
settlement were filed shortly thereafter, including a June
19, 2015 motion by Defendants to dismiss Counts One through
Four of the FAC for failure to state a cause of action. ECF
No. 135. On November 24, 2015, Defendants filed another
motion to amend their counterclaims to assert prior usage and
superiority of their trademarks. ECF No. 154.
December 2015, Defendants changed counsel to their present
counsel, Day Pitney. In a letter withdrawing their motion to
amend, Defendants' counsel wrote:
[W]e have evaluated the pleadings in this matter, including
the pending Motions. We believe the pending Motion to Amend
is deficient and cannot proceed as currently filed. By
withdrawing the Motion, we will seek to correct these
deficiencies and refile the Motion a later date, which will
streamline several issues related to the claims and parties
in this case.
ECF No. 164 at 1. Defendants' counsel also informed the
Court that Defendant would not be filing a motion to dismiss,
which had been discussed at a previous Court conference
Id. Instead, in May 2016, Defendants filed a Second
Amended Answer and Counterclaim, reducing the claims asserted
from eleven to three and withdrawing the pending Third-Party
Complaint. ECF No. 195. According to Defendants, the purpose
of this “streamlining” was to “focus[ ] the
attention on a threshold and dispositive issue: secondary
meaning.” ECF No. 173-1 at 5.
August 11, 2016, the Magistrate Judge appointed a Special
Master to handle discovery disputes. ECF No. 205. Discovery
was indeed contentious, and, over the course of the case, the
Special Master issued, by this Court's count, eighteen
orders and eight reports and recommendations. These disputes
• Plaintiffs' motion to enforce a subpoena served on
Shannon Hennessy Pulaski, co-counsel of record for Defendants
and the daughter of Michael J. Hennessy, which the Magistrate
Judge rejected. Hr'g Tr. 26:13-27:7, May 12, 2016, ECF
• What Defendants contend were “large document
dumps” involving 210 Gigabytes of ESI consisting of
approximately 200, 000 documents. Id. at 29:17-31:7.
• Disputes about Plaintiffs' interrogatory
responses, which Defendants contend Plaintiffs unreasonably
delayed and, once provided, consisted of boilerplate
explanations of why their marks were arbitrary or suggestive.
Declaration of Michael L. Fialkoff, dated January 4, 2018
(“Fialkoff Decl.”), Ex. B (Plaintiffs'
Interrogatory Responses) at 10.
• Plaintiffs' failure to produce a Rule 30(b)(6)
corporate representative who could testify on the issue of
when the marks had attained ...