Lewis & Lin recently won a dismissal of a lawsuit filed against our client, the founder and CEO of a Nevada ticketing company.
Plaintiff, a major online secondary marketplace for entertainment and sporting tickets, sued our client for alleged violation of a ticket data sharing agreement. Plaintiff alleged that the agreement provided defendant’s company access to plaintiff’s online database of tickets offered by ticket brokers, which defendant’s company could access for its customers. In exchange for the access, defendant’s company was to pay plaintiff the amount sought by the broker for any tickets purchased, plus an additional 3% fee. Plaintiff claimed that defendant owed over $2 million for unpaid fees. An arbitration was filed in Connecticut to enforce the terms of the agreement, which contained an arbitration clause and was signed by the defendant. In addition, plaintiff filed an action in Connecticut state court seeking a prejudgment remedy.
Both Plaintiff’s arbitration and court complaints named our client individually, but not the corporate entity. After removing the state court action to federal court, Lewis & Lin immediately filed a motion to dismiss for two reasons: (1) the fiduciary shield doctrine prevented a Connecticut court from exercising personal jurisdiction over the individual defendant for actions he took in Connecticut solely as an agent of the corporate entity, and (2) plaintiff failed to state a claim against the individual defendant because he did not sign the agreement that formed the basis for the parties’ dispute in his individual capacity.
The court agreed with our position, resolving both issues in our favor based on its determination that the defendant signed the contract only as a representative of a corporate entity. Analyzing the case under Connecticut law, the court ruled that in order to avoid personal liability on a contract on another’s behalf, an agent must disclose both the fact that he is acting in a representative capacity, and the identity of the principal. In this case, the legal name of the corporate entity was not disclosed in the contract; listed instead was its trade name (a “dba”), which was registered in New York. The issue thus turned on whether registering a trade name in New York provides constructive notice of that name’s user as a matter of Connecticut law—an issue of first impression.
After reviewing the purposes behind Connecticut’s and New York’s parallel statutes governing the registration of assumed business names, the court concluded that plaintiff had constructive notice that defendant was acting in a representative capacity on behalf of a known principal based in New York. Accordingly, the individual defendant, our client, “cannot be held personally liable on the contract he signed, because he contracted on behalf of a disclosed corporation.”
Shortly after the case was dismissed against our client, the parties resolved their differences amicably. The full decision is available here.
Lewis & Lin attorneys recently obtained two separate domain name victories for our clients in a single week.
In FPK Services, LLC v. Michael Dubendris, we represented the complainant. Our client owned the STDcheck.com website for the provision of online testing services for sexually-transmitted diseases. The respondent had registered STDchecks.com in a clear attempt to divert internet users to its own site, which provided similar services. While the complainant did not have a registered trademark, we were able to show by affidavit that it had used the STDCHECK mark associated with its website continuously and extensively in connection with online testing services. We further showed that the complainant had spent $150,000 on advertising and marketing its services every month. The respondent was a former affiliate of our client’s, and his website contained similarities to our client’s site that were clearly intended to divert our client’s customers. A single-member panel of the National Arbitration Forum agreed with our arguments, and awarded our client with the disputed domain name.
In Boston Private Financial Holdings, Inc. v. Eric Kuniholm, we represented the respondent in a dispute concerning the domain names bostonprivatewealth.com and bostonprivatewealthmanagement.com. The complainant, a national financial services organization managing over $30 billion of client assets, was the owner of websites located at bostonprivate.com and bostonprivatebank.com. It also owned a U.S. trademark registration for BOSTON PRIVATE BANK & TRUST COMPANY. In addition, complainant had allowed its U.S. trademark registration for BOSTON PRIVATE WEALTH MANAGEMENT GROUP to lapse, but had an active application for BOSTON PRIVATE WEALTH MANAGEMENT. Our client was a financial professional who owned a number of valuable domain names, including privatewealthmanagement.com. In pursuing a marketing policy of collecting generic and descriptive domain names for lead generation purposes, he also registered some 700 descriptive domain names containing the root “private wealth management” and similar phrases with geographic descriptors. For instance, the respondent registered: NewYorkPrivateWealthManagement.com, DubaiPrivateWealthManagement.com, PrivateWealthManagementAdvisor.com, and many more.
A majority of a three-member panel of the National Arbitration Forum ruled in favor of our client. The majority agreed with Lewis & Lin that the complainant failed to show that the disputed domain names were identical or confusingly similar to complainant’s trademarks. The panel noted that while there were similarities between the federal trademark registration and the disputed domain names, “the similar elements of both are generic and descriptive of financial services provided in the Boston area.” Moreover, as a trademark application does not establish a trademark right, the complainant failed to show it had rights to the term “Boston Private Wealth Management.” The panel accordingly ruled in favor of our client.
The Florida 4th District Court of Appeal has affirmed a lower court’s dismissal with prejudice of unfair trade practice claims against Lewis & Lin’s client, a leading digital marketing technology company.
The plaintiff had filed an action for violation of the Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”), seeking unspecified damages as well as declaratory and injunctive relief.
In the trial court, Lewis & Lin filed a Motion to Dismiss, arguing that the case belonged in arbitration pursuant to a mandatory arbitration clause in an unsigned licensing agreement. The court agreed with Lewis & Lin’s position, ruling that under Florida precedent, arbitration clauses can be enforced even when they are part of an unsigned agreement if the parties performed under the terms of the contract.
On appeal, plaintiff argued that the trial court erred by not holding an evidentiary hearing, that the FDUPTA claim was not governed by the licensing agreement, and that the arbitration clause was unenforceable as to its claims. Lewis & Lin argued that the trial court did not commit error, that the plaintiff’s claims were properly within the scope of plaintiff’s obligation to arbitrate, and that plaintiff had waived any right it may have had to litigate.
In a one-word per curiam decision, Judges Stevenson, May and Gerber affirmed the decision of the trial court, setting in place Lewis & Lin’s victory for our client.
Lewis & Lin Obtains $2 Million Arbitration Award in Contract Dispute Regarding Email Marketing Services
In a case heard before the American Arbitration Association, Lewis & Lin obtained for its client Datran Media Corp. (the predecessor to PulsePoint, Inc.) a major victory on Datran’s breach of contract claim.
Under the contract, Datran provided email marketing services to ModernAd Media LLC, with the contract renewing annually unless ModernAd provided notice of termination. ModernAd, however, stopped paying for the services beginning in August 2010, never providing the required notice of termination.
ModernAd asserted various defenses, including unconscionability, violation of New York General Obligations Law § 5-903 (regarding automatically renewing contracts), lack of authority of its Chief Operating Officer, and that an email sent by ModernAd’s CFO served as a termination notice. ModernAd also asserted a counterclaim for over $670,000, claiming that Datran unilaterally changed the pricing on a separate agreement between the parties regarding list management services.
The Arbitrator awarded Datran the full amount of damages sought for the 2010 and 2011 contract years, totaling $1,572,500. The Arbitrator also awarded over $324,000 in attorneys’ fees and expenses, and ordered ModernAd to pay $132,000 in costs associated with the proceedings. With respect to ModernAd’s counterclaim, the Arbitrator denied it in its entirety.
About PulsePoint, Inc.
Datran Media Corp, now known as PulsePoint, Inc. is an award-winning technology and marketing company that leading brands, agencies and publishers depend on to discover, reach and retain their ideal audiences across all digital media channels. PulsePoint’s top-ranked solutions for digital audience measurement, advertising, CRM, commerce and monetization have allowed thousands of companies to execute unparalleled advertising and communications campaigns across social, mobile, the Web and email. PulsePoint is headquartered in New York, with offices across the US and the UK. For more information, please visit www.pulsepoint.com.
About Lewis & Lin, LLC:
Lewis & Lin, LLC is an Internet and Intellectual Property law firm based in Brooklyn, New York. The firm’s highly experienced legal team has helped clients worldwide secure their IP rights, as well as anticipate and resolve a diverse range of Internet and IP issues. Lewis & Lin’s particular expertise lies in Internet transactions and disputes, including domain name licensing and sale agreements, domain name hijacking claims, Uniform Domain Name Dispute Resolution Policy (UDRP) disputes, and Anti-Cybersquatting Consumer Protection Act (ACPA) litigation. The team also expertly handles licensing agreements, website user agreements, service agreements and privacy policies, as well as Internet-related trademark and copyright litigation. For further information, visit www.ilawco.com.
In a broad decision, a state court in Florida has dismissed with prejudice all claims asserted against Lewis & Lin’s client, a leading digital marketing technology company. The case involved the licensure of a proprietary computerized database comprised of names, postal addresses, telephone numbers and associated email addresses of individuals who had agreed to receive marketing communications. Plaintiff alleged that our client unilaterally raised the fees it charged to send out every 1000 emails (the cost per mille, or “CPM” rate).
Plaintiff had asserted claims against our client for violation of the Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”), a so-called “Mini-FTC Act.” Plaintiff sought unspecified damages as well as declaratory and injunctive relief.
Lewis & Lin filed a Motion to Dismiss the Complaint, arguing that the case belonged in binding arbitration pursuant to the licensing agreement, which contained a mandatory arbitration clause—even though that agreement was never signed by the parties. The court agreed with Lewis & Lin’s position, ruling that under Florida precedent, arbitration clauses can be enforced even when they are part of an unsigned agreement if the parties performed under the terms of the contract.
The court also rejected defendant’s argument that FDUPTA claims are not subject to arbitration clauses due to the statute’s policy of protecting Florida consumers. The court ruled that nothing prohibited FDUPTA claims from being decided in an arbitration, and that, in any event, under the terms of the unsigned licensing agreement, it was New York law, not Florida law, that governed.
The court’s dismissal of the case with prejudice effectively means that our client has saved thousands of dollars worth of legal fees to litigate a case in a distant court, and extinguished a potentially expensive claim. David Lin argued the case for the firm.