John C. Flood of Virginia, Inc. v. John C. Flood, Inc.

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

JOHN C. FLOOD OF VIRGINIA, INC., et ) ai, ) ) Plaintiff/Counter-Defendants, ) ) v. ) Civil Case No. 06-1311 (RJL) ) JOHN C. FLOOD, INC., et al., ) ) Defendants/Counter-Plaintiffs. )

Ia- MEMORANDUM ORDER (June'll), 2010) [#89]

The parties in this case are back before the Court requesting clarification of the

Court's March 31,2010 Order granting judgment to 1996 Flood on Virginia Flood's

trademark infringement and unfair competition claims. With the exception of 1996

Flood's counterclaim seeking a declaration that its right to the disputed trademarks has

priority over Virginia Flood, the Court has otherwise reserved judgment on 1996 Flood's

counterclaims. In granting declaratory relief to 1996 Flood, the Court specified that "no

Virginia Flood party has the right to register or to use beyond the terms of its license the

name and mark JOHN C. FLOOD or its abbreviated version FLOOD." (Order and

Partial Final Judgment [#87]). Virginia Flood now moves for certification that the partial

judgment entered in favor of 1996 Flood is in fact a final judgment under Federal Rule of

Civil Procedure 54(b) for purposes of appeal. The parties also request that the Court

clarifY its declaration that no Virginia Flood party has a right to use the FLOOD marks "beyond the terms of its license." (ld.). Virginia Flood takes that to mean that its license

to use the FLOOD marks is irrevocable. 1996 Flood, of course, disagrees.

Whether or not the license is irrevocable depends on its terms, about which the

parties are sure to disagree. In any event, nothing in the Court's Order or Memorandum

Opinion purports to convert an otherwise revocable license into an irrevocable one. Even

though a licensor's failure to exercise adequate control and supervision of the licensee

may estop the licensor "from challenging the use of the mark and business which the

licensee has developed during the period of such unsupervised use," Sheila's Shine

Prods., Inc. v. Sheila Shine, Inc., 486 F.2d 114, 124 (5th Cir. 1973) (emphasis added),

nothing prevents the licensor from reasserting control over the licensee's use of the mark

(consistent, of course, with the terms of the license), nor is the licensor precluded from

properly revoking a revocable license. In sum, if the Court were to accept Virginia

Flood's position that it is somehow entitled to perpetual use of the FLOOD marks

regardless of the terms of its license, then the unhappy state of affairs between the two

parties would persist. The Court has no intention of allowing that to happen. One side

must prevail. In this case, it is 1996 Flood.

Having denied Virginia Flood's claims and having granted 1996 Flood's

counterclaim for declaratory relief, the Court concludes that there is no just reason to

delay the entry of final judgment on those claims pursuant to Rule 54(b). Accordingly, it

is hereby

ORDERED that Virginia Flood's Motion for Certification is GRANTED; and it

is further

2 ORDERED that the Court's March 31,2010 Order and Partial Final Judgment is

indeed a final judgment under Rule 54(b) and that "there is no just reason for delay"

regarding the claims adjudicated therein.

SO ORDERED.