United States District Court, D. Connecticut
SUPPLEMENTAL RULING GRANTING IN PART AND DENYING IN
PART MOTION FOR SUMMARY JUDGMENT
Jeffrey Alker Meyer, United States District Judge.
case concerns a dispute about contract and intellectual
property rights involving the building and sale of the
popular “Laser” racing sailboat. Now before me is
a motion for summary judgment by defendants LaserPerformance
(Europe) Limited (LPE) and Quarter Moon, Inc. (QMI) to
dismiss four of the claims alleged by plaintiffs Bruce Kirby
and Bruce Kirby, Inc. For the reasons set forth below, I will
grant in part and deny in part the motion for summary
facts of this case are set forth at length in my earlier
ruling on the parties' motions for summary judgment.
See Bruce Kirby, Inc. v. Laserperformance (Europe)
Ltd., 2016 WL 4275576, at *1 (D. Conn. 2016). In 1969,
Bruce Kirby designed a small sailboat that became very
popular for racing competitions. During the early 1980s,
plaintiffs entered into an agreement, called the Head
Agreement, with two international sailing bodies-the
International Sailing Federation (ISAF, formerly known as the
International Yacht Racing Union) and the International Laser
Class Association (ILCA)-to regulate the manufacture, sale,
and registration of sailboats using the Bruce Kirby sailboat
design and sold under the brand name “Laser.”
Doc. #219-6 at 2-23 (Head Agreement).
also entered into “Builder Agreement” contracts
with sailboat manufacturers for them to build the sailboats
in conformity with the Head Agreement. The Builder Agreements
granted LPE and QMI (as successors to the original parties to
the Builder Agreements) a license to manufacture, sell, and
market the Kirby-designed Laser sailboat. Docs. #228-11 at
2-26 (1983 Agreement); #228-12 (1989 Agreement). In exchange
for this license, LPE and QMI owed plaintiffs royalties in an
amount of 2% of the dealer wholesale price.
to each Kirby sailboat were two small plaques, which the
parties refer to as an “ISAF plaque” and a
“builder's plaque.” The ISAF plaque was
issued by ILCA to authorized builders and was required for a
boat to compete in certain racing events. The ISAF plaque
included the Laser name and logo, the International Sailing
Federation logo, a unique “hull number” that
identified the boat, as well as the phrase “AUTHORISED
BY THE INTERNATIONAL SAILING FEDERATION, THE INTERNATIONAL
LASER CLASS ASSOCIATION, BRUCE KIRBY INC. & TRADE MARK
OWNER.” Doc. #228 at 16. The builder's plaque
included the Laser name and logo as well as the phrase
“LASER SAILBOAT DESIGNED BY BRUCE KIRBY.” Doc.
#228 at 17.
2008, Kirby decided to sell his rights in the Laser boat. He
and his company entered into a sales contract with a New
Zealand company called Global Sailing Limited (GSL) to
receive $2.6 million for all of his interest in the Kirby
Sailboat design, including certain intellectual property
rights and all rights under agreements entered into between
plaintiffs and third parties relating to the Kirby Sailboat.
In January 2009, GSL informed LPE and QMI that the rights had
been assigned and to send all royalty payments to GSL.
See Doc. #228-15. But, citing the lack of
documentation to show that plaintiffs had assigned rights to
GSL, LPE and QMI continued to send royalties to plaintiffs;
when plaintiffs refused to accept the payments, defendants
made the payments in escrow. See Docs. #228-16,
2010, GSL attempted to terminate the Builder Agreement with
LPE. See Doc. #219-5. QMI remained an authorized
builder. In 2011, plaintiffs and GSL entered another
agreement that purported to revise the parties'
relationship in light of the lack of consent by the builders
to the plaintiffs' transfer of their rights to GSL.
Following entry into that agreement, plaintiffs then
purported to terminate the Builder Agreements with QMI and
LPE in 2012 on the basis of their non-payment of royalties
that plaintiffs claimed were owed under the Builder
Agreements. See Docs. #228-24, #228-25, #228-26,
#228-27. The terminations advised that QMI and LPE were no
longer entitled to obtain plaques for their sailboats.
Plaintiffs also provided written notice to ISAF and ILCA of
the terminations. Nonetheless, ISAF and the builders
continued to issue the plaques and did not discontinue the
use of the Bruce Kirby name on plaques until shortly after
this lawsuit was filed in 2013.
lawsuit, plaintiffs allege seven causes of action. Doc. #23.
Count I alleges a Lanham Act claim for trademark
counterfeiting; Count II alleges a Lanham Act claim for
trademark infringement; Count III alleges a violation of the
Connecticut Unfair Trade Practices Act (CUTPA); Count IV
alleges misappropriation of Bruce Kirby's publicity
rights; and Counts V, VI, and VII allege contract-related
causes of action that were previously dismissed by the
Court's prior summary judgment ruling and are not
relevant to the instant ruling.
noted in an order granting reconsideration (Doc. #312 at
3-4), my prior summary judgment ruling dismissed Counts I to
IV on the basis of a mistaken conclusion that plaintiffs had
sold the BRUCE KIRBY® trademark to GSL. Because of that
error, I concluded that plaintiffs did not have standing to
maintain their non-contract claims as alleged in Counts I to
IV. In light of my grant of reconsideration, I now consider
on the merits those arguments advanced by defendants for
dismissal of Counts I to IV of the amended complaint.
principles governing the Court's review of a motion for
summary judgment are well established. Summary judgment may
be granted only if “the movant shows that there is no
genuine dispute as to any material fact and the movant is
entitled to a judgment as a matter of law.”
Fed.R.Civ.P. 56(a). I must view the facts in the light most
favorable to the party who opposes the motion for summary
judgment and then decide if those facts would be enough-if
eventually proved at trial-to allow a reasonable jury to
decide the case in favor of the opposing party. See
generally Tolan v. Cotton, 134 S.Ct. 1861, 1866 (2014)
(per curiam); Pollard v. New York Methodist
Hosp., 861 F.3d 374, 378 (2d Cir. 2017).
Act (Counts I and II)
Lanham Act protects against the counterfeiting or
infringement of trademarks. See 15 U.S.C. §
1114(1) (counterfeiting); id. § 1125(a)(1)
(infringement); Kelly-Brown v. Winfrey, 717 F.3d
295, 304 (2d Cir. 2013). According to plaintiffs, LPE and QMI
engaged in counterfeiting and infringement by continuing to
use the Bruce Kirby name on both the builder's plaques
and the ISAF plaques even after Kirby had terminated their
respective builder agreements. Defendants raise three
arguments seeking dismissal of the Lanham Act claims: (1)
that LPE is a British company that did not engage in any
violation of the Lanham Act inside the United States and that
the Lanham Act may not be applied to the extraterritorial
conduct of LPE; (2) that a “fair use” defense