Trans Pacific Insurance v. Trans-Pacific Insurance

136 F.R.D. 385, 1991 U.S. Dist. LEXIS 1305, 1991 WL 66964
District Court, E.D. Pennsylvania·Decided February 5, 1991·No. Civ. A. No. 90-2531·Published·Cited by 15 cases

Opinion

MEMORANDUM

WALDMAN, District Judge.

Presently before the Court are defendant’s Motion for Reconsideration, defendant’s Motion for Protective Order, defendant’s Motion for Sanctions, plaintiff’s Motion to Extend Time for Service, plaintiff’s Motion to Compel, and plaintiff’s Motion for Sanctions.

I. DEFENDANT’S MOTION FOR RECONSIDERATION

On November 28, 1990, defendant filed a Motion for Reconsideration of the Court’s Order of September 12, 1990, granting leave to plaintiff to join additional parties. Plaintiff responded on January 8, 1991, arguing that defendant’s motion is untimely under E.D.Pa. Local Rule 20(g). Defendant’s motion is untimely. Because the motion and briefs in connection therewith, however, raise matters the clarification of which would appear better to focus the efforts of the parties and enhance the. efficiency of the litigation, the court will address defendant’s motion.

By its Order of September 12, 1990, the Court permitted plaintiff to amend its complaint to add four additional corporate defendants. The Court found that there were two viable theories of recovery against them. First, although plaintiff would carry a heavy burden in sustaining such a claim, the Court found that plaintiff could pursue a claim against these prospective defendants on an “alter-ego” theory of liability. Second, the Court found that plaintiff may have a claim against the additional defendants on an “inducement” theory-

Often a party asking a court to disregard the separate and distinct status of a corporate entity will attempt to show that the corporation was merely the alter ego of its officers. See Zubik v. Zubik, 384 F.2d 267, 271-72 (3d Cir.1967), cert. denied, 390 U.S. 988, 88 S.Ct. 1183, 19 L.Ed.2d 1291 (1968). More generally, a court may exert its equitable powers and disregard the corporate entity if it appears that piercing the corporate veil will prevent fraud, illegality, injustice, a contravention of public policy, or prevent the corporation from sheltering someone from criminal liability. Id. at 272. The court, however, will “start from the general rule that the corporate entity should be recognized and upheld, unless specific, unusual circumstances call for an exception.” Id. at 273. These general principles apply to cases involving intellectual property rights.1 See, e.g., A. Stucki Co. v. Worthington Industries, Inc., 849 F.2d 593 (Fed.Cir.1988); D.L. Auld Co. v. Park Electrochemical Corp., 553 F.Supp. 804 (E.D.N.Y.1982).

In Stucki, the plaintiff sued a second-tier subsidiary, the parent, and the president of the second-tier subsidiary, alleging infringement of plaintiff’s patent. The district court found the second-tier subsidiary and its president, but not the parent, to be [388] liable. The Circuit Court affirmed noting that general principles relating to piercing the corporate veil applied and holding that the parent could be held liable only if the “evidence revealed circumstances justifying disregard of the status of [the subsidiary] and [the parent] as distinct, separate corporations.” 849 F.2d at 596.

In Auld, the plaintiff sought to hold a parent corporation liable for the patent infringement activities of a subsidiary. Plaintiff relied on both “piercing the veil” and “direct liability” theories. Applying general piercing principles, the Court found that, although the parent held the subsidiary out as a “division” and provided its financing, the subsidiary ran its own day to day operations, determined its own budget, and maintained separate records. The court noted that there were no allegations that the subsidiary was grossly undercapi-talized, that corporate formalities were not followed or that the parent improperly used its assets. Thus, the court found that the plaintiff had failed to show that the subsidiary had no separate existence or that the plaintiff would suffer an “unjust loss” if the corporate entity were not disregarded. Id. at 807.2

There are cases in which courts have imposed patent infringement liability on a parent for acts of a subsidiary, relying on “piercing” principles. See, e.g., Milgo Electronic Corp. v. United Business Communications, Inc., 623 F.2d 645 (10th Cir. 1980); Radio-Craft Co. v. Westinghouse Electric & Manufacturing Co., 7 F.2d 432 (3d Cir.1925). In Milgo, the district court imposed patent infringement liability on a parent based on a finding that the infringing subsidiary was “the mere instrumentality, alter ego, or agency” of the parent. In affirming, the Tenth Circuit noted the existence of 100 percent stock ownership, the use of virtually the same directors, the financial dependence of the subsidiary, the subsidiary's undercapitalization, the substantial number of sales made by the parent, the parent’s review of virtually all decisions and its establishment of policy and pricing guidelines for the subsidiary.

In Radio-Craft, the plaintiff sued a subsidiary and its parent for patent infringement. The district court found for the plaintiff. In affirming, the Third Circuit found that the “evidence indicates that the [subsidiary] was a mere instrumentality of the [parent]” and that the “[subsidiary] was completely dominated by the [parent],” and stated that where a subsidiary is “used as a mere agency or instrumentality of the owning company, courts will look through the screen of separate corporate control and place the responsibility where it actually belongs.” 7 F.2d at 434-35.

In cases involving trademarks, courts have applied the same general piercing principles which place a heavy burden on the plaintiff. See, e.g., U-Haul International, Inc. v. Jartran, Inc., 793 F.2d 1034 (9th Cir.1986); Donsco, Inc. v. Casper Corp., 587 F.2d 602 (3d Cir.1978); Paper-craft Corp. v. Gibson Greeting Cards, Inc., 515 F.Supp. 727 (S.D.N.Y.1981).

Free access — add to your briefcase to read the full text and ask questions with AI

Trans Pacific Insurance v. Trans-Pacific Insurance, 136 F.R.D. 385, 1991 U.S. Dist. LEXIS 1305, 1991 WL 66964 (E.D. Pa. 1991).

136 F.R.D. 385 (Trans Pacific Insurance v. Trans-Pacific Insurance) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

Related

L.F. v. EF Educational Tours
M.D. Pennsylvania, 2024
Evadine Davis v. BP Consulting VI. LLC, Sklar Reso
Superior Court of The Virgin Islands, 2019
World Mission Society Church of God v. Colon
85 Va. Cir. 134 (Fairfax County Circuit Court, 2012)
Nu Image, Inc. v. Does 1-23,322
799 F. Supp. 2d 34 (District of Columbia, 2011)
Nu Image, Inc. v. Does
District of Columbia, 2011
Philadelphia Indemnity Insurance v. Federal Insurance
215 F.R.D. 492 (E.D. Pennsylvania, 2003)
In Re Consolidated Parlodel Litigation
22 F. Supp. 2d 320 (D. New Jersey, 1998)
Bank of New York v. Meridien BIAO Bank Tanzania Ltd.
171 F.R.D. 135 (S.D. New York, 1997)
Schofield v. Trustees of the University of Pennsylvania
161 F.R.D. 302 (E.D. Pennsylvania, 1995)
Mass v. Bell Atlantic Tricon Leasing Corp. (In Re Mass)
178 B.R. 626 (M.D. Pennsylvania, 1995)
Fort Washington Resources, Inc. v. Tannen
153 F.R.D. 78 (E.D. Pennsylvania, 1994)
Great West Life Assurance Co. v. Levithan
152 F.R.D. 494 (E.D. Pennsylvania, 1994)
Kopecky v. National Farms, Inc.
510 N.W.2d 41 (Nebraska Supreme Court, 1994)
Great Western Funding, Inc. v. Mendelson
159 B.R. 450 (E.D. Pennsylvania, 1993)
Payton v. Sears, Roebuck & Co.
148 F.R.D. 667 (N.D. Georgia, 1993)