PAINAWAY AUSTRALIA PTY LIMITED ACN 151 146 977 v. MAXRELIEF USA, INC.

CourtDistrict Court, E.D. Pennsylvania
DecidedMay 24, 2023
Docket2:18-cv-03854
StatusUnknown

This text of PAINAWAY AUSTRALIA PTY LIMITED ACN 151 146 977 v. MAXRELIEF USA, INC. (PAINAWAY AUSTRALIA PTY LIMITED ACN 151 146 977 v. MAXRELIEF USA, INC.) is published on Counsel Stack Legal Research, covering District Court, E.D. Pennsylvania primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
PAINAWAY AUSTRALIA PTY LIMITED ACN 151 146 977 v. MAXRELIEF USA, INC., (E.D. Pa. 2023).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA

MAXRELIEF USA, INC.,

Counter-Plaintiff, Civil Action

v. No. 18-cv-3854

PAINAWAY AUSTRALIA PTY LIMITED CAN 151 146 997 and MUCH SHELIST P.C.,

Counter-Defendants.

MEMORANDUM OPINION GOLDBERG, J. May 24, 2023

This lawsuit involves two sellers of topical pain-relief sprays and originated over a dispute as to which seller was actually “Australia’s #1.” On September 7, 2018, Painaway Australia Pty Limited Can 151 146 997 (“Painaway”) sued MaxRelief USA, Inc. (“MaxRelief USA”) under the Lanham Act for false advertising. On March 30, 2022, the Honorable Petrese Tucker determined that “Australia’s #1” is puffery and dismissed Painaway’s Lanham Act claim. (ECF Nos. 56, 57.) The case has been reassigned to my docket to resolve the remaining claims, which are MaxRelief USA’s counterclaims against Painaway and its former counsel, Much Shelist, P.C. (“Much Shelist”), for intentional interference with current and prospective business relations and for abuse of process. MaxRelief USA alleges that Painaway initially pursued the wrong “MaxRelief” entity by suing an Australian company, non-party Natures Investments Holding Pty. Ltd. (“Natures Investments”), that previously sold a pain-relief spray under the brand name “MaxRelief.” Through that suit, Painaway obtained what MaxRelief USA contends was an improper default judgment that forced retailers to drop MaxRelief USA’s products. Painaway and Much Shelist have moved for summary judgment on MaxRelief USA’s counterclaims. For the reasons stated below, that motion will be granted in part and denied in part. I. FACTS The following facts are viewed in the light most favorable to MaxRelief USA as the party opposing summary judgment. Where these facts are materially disputed, those disputes are noted. A. Natures Investments and MaxRelief USA 1. 2011 to 2014: Natures Investments Manufactures “MaxRelief’-Branded Products Non-party Natures Investments was founded in Australia in 2011 by Dale Abbott and Thomas Warren to manufacture topical pain relief products. Natures Investments sold its products under the brand name “MaxRelief.” Its registered place of business was a gym owned by Warren located in Avalon Beach, Australia. (Painaway’s Facts 7, 9'; MaxRelief USA’s Response to Painaway’s Facts §] 6; Spoto Dep. 74:4-13.) In September 2011, Natures Investments applied to trademark the “MaxRelief” name and logo in Australia. In January 2012, Natures Investments registered “MaxRelief” products with the United States Food and Drug Administration (FDA), where Natures Investments was listed as the “labeler” of those products. The following month, Natures Investments filed a trademark application with the United States Patent and Trademark Office for a “MaxRelief” logo, . (Painaway’s Facts 9] 10, 21-22; Painaway’s Exhibits L, M.) That application was abandoned and never issued.

' MaxRelief USA’s response that this and other facts are “disputed as stated” because the cited document “speaks for itself” is improper and will be disregarded. See Fed. R. Civ. P. 56(c), (e); Boyle v. Penn Dental Med., No. 15-cv-4716, 2016 WL 9447031, at *1 n.1 (E.D. Pa. Aug. 16, 2016), aff'd, 689 F. App’x 140 (3d Cir. 2017).

In 2012, an individual named Peter Spoto created MaxRelief USA as a Delaware- incorporated business. Spoto described Natures Investments’ founders Abbot and Warren as his “associates,” and Spoto even lived with Abbot for about a month upon moving to the United States. (MaxRelief USA’s Response to Painaway’s Facts ¶¶ 4-5; Spoto Dep. 52:17-20, 69:18-24, 83:10- 12.) Abbott, Warren, and Spoto agreed that Natures Investments would manufacture “MaxRelief”-

branded products and Spoto would sell those products in the United States. This arrangement was memorialized in January 2012 by way of a “License & Distribution Agreement” and a “Services” agreement. The “License & Distribution Agreement” identified Natures Investments as the owner of the trademark “Maxrelief [sic].” As planned, MaxRelief USA imported and sold Natures Investments’ “MaxRelief”-branded products and invoiced Natures Investments for “overseas representation and expenses.” (Spoto Dep. 70:3-8, 78:23-79:15; Painaway’s Exhibits C, J at MAX000227; Painaway’s Facts ¶¶ 17-18, 23; MaxRelief USA’s Response to Painaway’s Facts ¶ 6.) 2. 2014 Onward: MaxRelief USA Starts Manufacturing “MaxRelief”- Branded Products In 2014, MaxRelief USA “t[ook] over manufacturing” and began selling its own “MaxRelief”-branded pain relief products in the United States. (Spoto Dep. 75:14-76:6, 85:4-10, 88:21-89:6; MaxRelief USA’s Response to Painaway’s Facts ¶ 6.)2 MaxRelief USA did not pay Natures Investments for the right to make and sell “MaxRelief”-branded products. For some reason, MaxRelief USA’s accounting system continued to show payments between MaxRelief

2 The parties dispute whether Natures Investments’ “MaxRelief” products were the “same” as MaxRelief USA’s “MaxRelief” products. (See MaxRelief USA’s Response to Painaway’s Facts ¶ 6.) While that dispute may be relevant to Painaway’s supposition that MaxRelief USA was a “phoenix operation” designed to thwart Natures Investments’ creditors, it is not material to any issue presented by Painaway’s motion for summary judgment. USA and Natures Investments through 2016, although Spoto testified that these transactions were “a wash” because the same amount was paid in both directions. Sometime between 2014 and 2017, Natures Investments ceased operations and was dissolved. (See Painaway’s Exhibit Q; Spoto Dep. 84:2-85:10, 126:21-127:3; Painaway’s Facts ¶ 33.) B. Painaway’s First Lawsuit Against “Natures Investments d/b/a MaxRelief USA” (the “California Lawsuit”) Painaway is an Australian company that also sells topical pain relief products. Much Shelist is a Chicago-based law firm that represented Painaway throughout the underlying facts. (Painaway’s Facts ¶¶ 1-2.)3 In July 2015, Painaway filed a lawsuit (the “California Lawsuit”) in the United States District Court for the Northern District of California against a company called “Natures

Investments Holding [sic] Pty Ltd. d/b/a MaxRelief USA.” Painaway alleged that this company was violating the Lanham Act by advertising a “MaxRelief”-branded pain relief spray as “Australia’s #1 Pain Relief Spray.” (Painaway’s Facts ¶ 35; Painaway’s Exhibit S ¶ 1.) Painaway apparently deduced that Natures Investments was “doing business as” MaxRelief USA based on Natures Investments’ 2012 trademark application (which was later abandoned) for the “MaxRelief” name and logo, as well as the fact that the same name and logo appeared on the “MaxRelief” website at maxrelief.us.4 Painaway’s attorney Martin O’Hara testified that he believed at the time that Natures Investments and MaxRelief USA were “one and the same.” There

3 Nearly all of the relevant actions undertaken by Painaway were done through Much Shelist acting as Painaway’s agent. Neither party argues that Painaway and Much Shelist should be treated separately for purposes of the present motion for summary judgment. Accordingly, this opinion uses the name “Painaway” in reference to actions taken by Much Shelist in its representative capacity. 4 This website was later changed to maxrelief.com, but that change does not appear to be material to the present motion for summary judgment. are no facts of record indicating that Painaway conducted a corporate records search for a “MaxRelief” entity in the United States prior to initiating the California Lawsuit. (Painaway’s Exhibit S ¶ 8; O’Hara Dep. 30:8-24, 63:12-20.) Painaway attempted to serve “Natures Investments Holding Pty Ltd. d/b/a MaxRelief USA” at a San Francisco, California address listed on the website https://maxrelief.us/contact.

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PAINAWAY AUSTRALIA PTY LIMITED ACN 151 146 977 v. MAXRELIEF USA, INC., Counsel Stack Legal Research, https://law.counselstack.com/opinion/painaway-australia-pty-limited-acn-151-146-977-v-maxrelief-usa-inc-paed-2023.