Lisseveld v. Marcus

173 F.R.D. 689, 1997 U.S. Dist. LEXIS 9314, 1997 WL 366053
CourtDistrict Court, M.D. Florida
DecidedJune 16, 1997
DocketNo. 96-336-CIV-FTM-17D
StatusPublished
Cited by3 cases

This text of 173 F.R.D. 689 (Lisseveld v. Marcus) is published on Counsel Stack Legal Research, covering District Court, M.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Lisseveld v. Marcus, 173 F.R.D. 689, 1997 U.S. Dist. LEXIS 9314, 1997 WL 366053 (M.D. Fla. 1997).

Opinion

ORDER DENYING DEFENDANTS’ MOTION TO DISMISS FOR FAILURE TO JOIN AN INDISPENSABLE AND PARTY, LACK OF PERSONAL JURISDICTION, AND IMPROPER VENUE.

KOVACHEVICH, Chief Judge.

This CAUSE comes before this Court on the following motions and responses:

(1) Defendants, ALEXANDER C. MARCUS’ and ENVIRONMENTAL SOLUTIONS INTERNATIONAL, INC.’s, Motion to Dismiss for Failure to Join an Indispensable and Necessary Party, Lack of Personal Jurisdiction and Improper Venue (Dkt.14), with Memorandum in support (Dkt.15) and individual defendant’s affidavit (Dkt.16).
(2) Plaintiffs, WOUTER H. LISSE-VELD’s and ENVIRO RESPONSE PRODUCTS, INC.’s, memorandum in response to defendants’ Motion to Dismiss and attached declaration, affidavits, and exhibits (Dkt.22);
(3) Deposition and brief of evidence of ALASTAIR McKENZIE BOYLE by plaintiffs, ENVIRO RESPONSE PRODUCTS, INC., and WOUTER H. LISSEVELD.

FACTUAL BACKGROUND

The following facts have been presented to the Court by the parties in support of or opposition to the pending motion. The Court assumes the truth of these factual allegations only for the purposes of resolving this motion. In January 1994, plaintiffs, ENVIRO RESPONSE PRODUCTS, INC., and WOUTER H. LISSEVELD (plaintiffs or LISSEVELD or ERPI), began negotiating with LINDSAY W. FORREST (FORREST) for the exclusive distribution rights to FORREST’S magnetic fluid conditioners1 (MFCs). Mr. FORREST, through his New Zealand corporation, WLCL DEBUG Inter-nationa], Ltd.,2 manufactures and sells MFCs. It is apparent that the name “DEBUG” has been associated with the MFCs manufactured in New Zealand since plaintiffs first began dealing with Mr. FORREST.

Upon plaintiffs’ first attempt to market the DE-BUG MFCs at a trade show in Miami, Florida, plaintiff LISSEVELD discovered that other enterprises were also marketing DE-BUG products at this show. Plaintiff LISSEVELD, contends that Mr. FORREST assured him that these other enterprises were no longer distributing the DE-BUG product and that DE-BUG International had not sold them its products for a long time. Plaintiff LISSEVELD asserts that these previous distributors continued to sell the DE-BUG product despite Mr. FORREST’s statements.

Plaintiffs continued to research and test market the MFCs in an effort to prepare for an extensive marketing effort of the DEBUG product line across North and South America in 1995. To insure that sufficient amounts of the DE-BUG MFCs could be obtained to meet expected demand, plaintiff LISSEVELD entered into an agreement with Mr. FORREST. Under this agreement, plaintiffs would exclusively distribute WLCL DEBUG International’s “DEBUG” [692]*692MFCs in North and South America excluding certain Caribbean Islands. See Deposition and Brief of Evidence of ALAST AIR McKENZIE BOYLE p. 2. The agreement gave plaintiffs the exclusive distribution rights of the DE-BUG MFCs for five (5) years and secured the supply of the product by allowing plaintiffs to manufacture the DE-BUG products in the United States. Id. This agreement is evidenced by a letter between LISSEVELD and DEBUG International, dated January 26, 1995. Id.

This agreement was short lived. On July 14, 1995, Mr. FORREST wrote a letter to LISSEVELD explaining that he was cancel-ling the DE-BUG distributorship previously agreed upon. In the letter, Mr. FORREST explained that he felt the plaintiffs had breached the agreement by not making payments in accordance with the terms of the agreement and by not meeting certain financial criteria. However, plaintiff LISSE-VELD contends that Mr. FORREST had improper motives for terminating the relationship.

In his affidavit, plaintiff LISSEVELD explains that in January 1995, KEVIN THOMPSON of Sarasota, Florida, was one his customers. LISSEVELD contends that after learning of the arrangement with Mr. FORREST, THOMPSON contacted FORREST in order to join in the DE-BUG MFC business in the United States. In August 1995, THOMPSON starting selling the New Zealand made DE-BUG MFCs in the United States using defendant ALEXANDER MARCUS (defendant or MARCUS) as his sales agent. Apparently, THOMPSON left the MFC business and subsequently, Mr. FORREST’s DE-BUG International was dissolved. In February 1996, Mr. FORREST and ROBIN DARLING formed DEBUG Worldwide Limited, a New Zealand corporation. Defendant MARCUS and his company, defendant ENVIRONMENTAL SOLUTIONS INTERNATIONAL, INC. (ESII), became DE-BUG Worldwide’s “exclusive” distributor in the United States.

Defendant ESII is currently the distributor for DE-BUG Worldwide Limited, which is the current manufacturer of the DE-BUG product in New Zealand. DE-BUG Worldwide Limited is a licensee of Forrest Scientific Research Limited, apparently still controlled by LINDSAY FORREST. ESII and MARCUS (defendants) contend that Forrest Scientific Research Limited owns the DEBUG trademark and the patents on the DEBUG MFCs. Accordingly, defendants assert that only defendants’ use of the DE-BUG mark is authorized.

Plaintiffs’ suit is based primarily on the theory that ENVIRO RESPONSE PRODUCTS, INC. owns the DE-BUG trademark. Plaintiff LISSEVELD claims that defendant MARCUS and defendant ESII have misappropriated, copied, and used plaintiffs stylized logo, trademark, advertising materials, business contracts, and other trade secrets. Count one alleges that the defendants have sold the DE-BUG product in the United States during plaintiffs’ exclusive distributorship and continue to sell using the mark which constitutes trademark infringement and unfair competition. Plaintiffs allege that the defendants are using the DE-BUG trademark without permission because plaintiffs own the DE-BUG trademark and a United States trademark application has been filed in order to register the mark. However, Forrest Scientific Research Limited, which has not been named in this action, is opposing plaintiff LISSEVELD’s registration pending before the Trademark Trial and Appeal Board.

In addition, plaintiffs allege that defendants have interfered with plaintiffs’ efforts to promote the product throughout the United States. Plaintiffs complain that defendants are contacting trade publications and trade show organizers in an effort to convince the industry that defendants, not plaintiffs, are entitled to use the DE-BUG mark. Aso, plaintiffs hired an advertising agency along with defendant ANN WELLS (WELLS) and defendant ANN WELLS Associates (ASSOCIATES)3 as their public relations agency. Defendants have communicated with the advertising agency and defendants WELLS and ASSOCIATES in an attempt to gain confidential, proprietary [693]*693trade secret business information disclosed by plaintiffs. Plaintiff LISSEVELD alleges that defendants WELLS and ASSOCIATES divulged vital information to defendants MARCUS and ESII.

Defendants MARCUS and ESII (hereinafter collectively as “defendants”) contend that plaintiffs no longer have the authority to use the DE-BUG name because Forrest Scientific Research Limited has effectively terminated plaintiffs’ distributorship and has given the rights to distribute to defendant ESII. Moreover, defendants contend that the DEBUG mark has been used in the United States as early as 1989 by Forest Scientific Research Ltd. Accordingly, defendants argue that Forrest Scientific Research is a necessary and indispensable party to this lawsuit.

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Cite This Page — Counsel Stack

Bluebook (online)
173 F.R.D. 689, 1997 U.S. Dist. LEXIS 9314, 1997 WL 366053, Counsel Stack Legal Research, https://law.counselstack.com/opinion/lisseveld-v-marcus-flmd-1997.