Business/Corporate

BKK SUCCESSFULLY COMPELS ENFORCEMENT OF AN ARBITRATION PROVISION BETWEEN PARTIES AND NON-PARTIES TO A CONTRACT

In an action between signatories and non-signatories to a government contract, BKK Attorney Arianna S. Gleckel successfully argued what the court called a novel issue under Virginia law—compelling a signatory to the original contract to resolve its disputes with a non-signatory through arbitration.

The decision of Fairfax County Circuit Court Judge Randy Bellows, which is linked here, compels arbitration of both contract and tort claims between the parties. The rationale of the decision and the arguments made by BKK is that while one of the defendants in this case was a non-signatory to the contract, the plaintiff’s claims would not exist but for the existence of the contract which contains the arbitration provision. Thus, the non-signatory party could enforce the arbitration provision that was a part of the contract under which the plaintiff brought its claims.

Many commercial contracts include provisions requiring disputes arising out of the agreement to be resolved through arbitration. There is no dispute that such agreements typically are enforceable, although potential parties are cautioned that the precise language of such agreements is critically important and determinative of the scope of the arbitration. 

BEAN, KINNEY & KORMAN CLIENTS WIN SUMMARY JUDGMENT IN TRADEMARK INFRINGEMENT CASE

Bean, Kinney & Korman attorneys recently obtained summary judgment in favor of our clients who had been accused of infringing on the trademarks of a competitor. Our clients manufacture and distribute recreational board and DVD games. In 2007 they introduced a generic dice game they called "Left Center Right." The plaintiff manufactured and distributed the same generic dice game which it sold under the registered trademark "LCR." The plaintiff claimed that defendants’ use of "Left Center Right" infringed on plaintiff’s registered trademark of "LCR" and its asserted common law trademark rights to the term "Left Center Right."

The parties engaged in extensive discovery in the United States District Court for the Eastern District of Virginia and, at the close of discovery, the plaintiff moved for summary judgment on the issue of liability. The defendants, represented by Bean, Kinney & Korman, opposed plaintiffs’ motion and filed their own motion for summary judgment as to all issues. We argued, among other things, that LCR was a protected trademark only because it was suggestive of the dice game in which chips are passed to the left, center or right depending upon the result of the throw of the die. However, the name "Left Center Right" is not a protectable trademark because it was merely descriptive of the play of the underlying game.

Moreover, we disputed the plaintiff’s argument that, since "LCR" is an abbreviation for Left Center Right, the LCR mark extended to and included the longer phrase. Instead, we contended that "Left Center Right" can not be confused with LCR because it did not look or sound like "LCR." In addition, we contended that in order for "LCR," to be protected under trademark law, it could only be suggestive of "Left Center Right," but not its functional equivalent. Indeed, if "LCR" were interchangeable with "Left Center Right," then LCR would be merely descriptive of the game play - - the same logic that we utilized to contend "Left Center Right" was not legally protectable.

We also challenged plaintiff’s argument that it had common law trademark rights to the name "Left Center Right" noting that, at best, plaintiff had abandoned the use of that term more than 15 years previously. Moreover, we asserted that, in addition to the descriptive nature of the mark, the plaintiff’s failure to use that phrase in a trademark capacity on its packaging undercut plaintiff’s common law trademark claims for that name.

On July 25, 2008, U. S. District Court Judge Leonie M. Brinkema issued a lengthy written opinion in which she agreed with our positions, denied plaintiff’s motion for partial summary judgment and granted summary judgment to the defendants. Accordingly, the Court entered final judgment in favor of the defendants as to all issues and dismissed the case.

The defendants were represented in this case by Bean, Kinney & Korman attorneys William F. Krebs, Christopher A. Glaser and Heidi E. Meinzer.

George & Company, LLC, v. Imagination Entertainment Limited, et al., E.D. VA. Case No. 1:07cv498 (July 25, 2008).

Click here for Memorandum Opinion