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Edward F. Richards v. Burgett

December 12, 2011

EDWARD F. RICHARDS, PLAINTIFF,
v.
BURGETT, INC., BURGETT BROTHERS, INC., AMERICA SEJUNG CORPORATION, AND WELKIN SOUND, INC. DEFENDANTS.



The opinion of the court was delivered by: Judge George W. Lindberg

MEMORANDUM OPINION AND ORDER

Plaintiff Edward F. Richards' amended complaint alleges claims against defendants Burgett, Inc. ("Burgett"), Burgett Brothers, Inc. ("Burgett Brothers"), America Sejung Corporation ("ASC"), and Welkin Sound, Inc. ("Welkin"). Before the Court are the parties' cross-motions for summary judgment, and plaintiff's motion to strike. For the reasons stated below, defendants' motions for summary judgment are granted, and plaintiff's motion to strike and motion for summary judgment are denied.

I. Factual Background

As an initial matter, the Court notes that all the parties submitted replies in support of their statements of material facts. The local rules do not provide for such replies, and accordingly the Court disregards them. See Miller v. Ameritech Corp., No. 02 C 2286, 2005 WL 2266614, *1 n.2 (N.D. Ill. Sept. 14, 2005).

In addition, plaintiff has moved to strike paragraph 47 of ASC's and Welkin's statement of material facts on the basis that the paragraph improperly references offers of compromise, which are inadmissible under Federal Rule of Evidence 408. The Court did not consider this paragraph in ruling on the parties' motions for summary judgment. The motion to strike is denied as moot.

Unless otherwise noted, the following facts are undisputed. In October 2000, defendant Burgett offered to sell its rights in its GEORGE STECK trademarks (collectively, the "STECK marks"), used in connection with pianos, to plaintiff. Plaintiff and Burgett's negotiations regarding the marks continued through 2001 and into 2002. In 2001, plaintiff gave Burgett a check for $33,500 as a first installment payment prior to an agreement, and Burgett cashed the check.

Meanwhile, plaintiff and Burgett also had been negotiating an agreement under which plaintiff would buy Burgett's SOHMER trademark. However, in early 2001 plaintiff ended negotiations for the SOHMER mark and filed his own Intent to Use the SOHMER mark with the U.S. Patent and Trademark Office.

In a sworn declaration later filed in litigation between plaintiff and Burgett relating to the SOHMER mark,*fn1 plaintiff stated that his negotiations with Burgett regarding the STECK marks "broke down entirely when, in early 2002, Burgett demanded that [he] abandon [his] trademark application for the SOHMER mark as a condition for Burgett to complete the sale of the GEORGE STECK mark to [him]." On February 15, 2002, a Burgett executive assistant sent an e-mail to plaintiff that stated that Burgett's president, Gary Burgett: has received the Agreements for his signature and called to ask me to check our files and make sure we had received your retraction of the Sohmer Trademark Application. I don't see anything in our files documenting your willingness to do so. If you could forward to me a brief letter confirming that you are doing so, I will let Gary know we have it and get the Agreements signed and back to you for your signature.

On February 19, 2002, Gary Burgett, while on vacation in Hawaii, signed the sales agreement and assignment documents for the STECK marks, and had the assignment documents notarized. On February 21, 2002 or shortly thereafter, Burgett executive Tom Lagomarsino told plaintiff that if plaintiff did not withdraw his SOHMER trademark application, Burgett would not send him the STECK assignments.

Plaintiff did not withdraw his application for the SOHMER mark. Burgett did not send the STECK assignment documents to plaintiff, and plaintiff never signed the STECK sales agreement. Burgett destroyed the original documents in 2002. Burgett never returned the $33,500 to plaintiff, and plaintiff did not make any additional payments to Burgett for the STECK marks. Plaintiff later stated in a April 27, 2010 sworn declaration in the SOHMER litigation that when he refused to abandon his application for the SOHMER mark in 2002, his negotiations with Burgett relating to the STECK marks "ceased, without any agreement ever having been executed."

In 2002 or 2003, Burgett licensed use of the STECK marks to defendant ASC. ASC began advertising and selling pianos bearing the STECK marks in the United States in 2003. Defendant Welkin also has distributed pianos bearing the STECK marks.

Years passed. In September 2010, during discovery in the SOHMER litigation, plaintiff received copies of the STECK assignment documents that Gary Burnett had signed in Hawaii in 2002. According to plaintiff, upon seeing these documents for the first time in 2010, he realized that unbeknownst to him the assignment of the STECK marks to him had in fact been completed eight years earlier. On November 24, 2010, plaintiff recorded the STECK assignment documents with the U.S. Patent and Trademark Office, and filed this action.

Plaintiff's amended complaint in this case alleges various claims based on his contention that he holds the rights to the STECK marks: trademark infringement, unfair competition, and deceptive trade practices under the Lanham Act and state law against all defendants (Counts I through VI). In the alternative, in the event that his claims in Counts I through VI fail, plaintiff asserts claims of unjust enrichment and promissory estoppel against Burgett and Burgett Brothers, relating to Burgett's retention of the $33,500 plaintiff paid it in 2001 (Counts VII and

VIII). Burgett asserts counterclaims for declaratory relief against plaintiff, seeking a declaratory judgment that it did not assign trademark rights in the STECK marks to plaintiff. The ...


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