Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Engage Healthcare Communications, LLC. v. Intellisphere, LLC.

United States District Court, D. New Jersey

March 28, 2019

ENGAGE HEALTHCARE COMMUNICATIONS, LLC; GREEN HILL HEALTHCARE COMMUNICATIONS, LLC; and CENTER OF EXCELLENCE MEDIA, LLC, Plaintiffs,
v.
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.

          OPINION

          Hon. Freda L. Wolfson United States District Judge

         Pending 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.

         I. FACTUAL BACKGROUND AND PROCEDURAL HISTORY

         The 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.[1]

         The 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.

         The 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.

         In 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.

         On 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 included:

• 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 No. 199.
• 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 ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.