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8/14/2019 Memorandum of Law In Support of Snyder's Motion for Reconsideration
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We respectfully submit that the Court has relied on
flawed and questionable authority to support its finding
that Plaintiff's claims asserting Civil liability for false
or fraudulent registration under 15 USC 1120, Wrongful
Seizure under 15 USC 1116(d)(11), Constitutional
violations under 18 USC 1983/Bivens, Abuse of process
under Virginia State Law and Conversion/Trespass to
Chattels under Virginia State Law are barred by claim
preclusion.
For the reasons set forth below, Plaintiffs' contend
that they have stated viable claims for relief under 15
USC 1120, 15 USC 1116(d)(11), 18 USC 1983/Bivens under
Federal Law, Abuse of process, and Conversion/Trespass to
Chattels under Virginia State Law, and request that the
Court amend its Order to permit them to proceed on those
causes of action and to amend any deficiencies in their
causes of action so they might be fully heard and decided
upon their merits after the parties have had an opportunity
to conduct discovery and investigate their claims.
II. PROCEDURAL BACKGROUND
This action was originally filed on December 8, 2008
[Docket, No. 1]. Without having been served with a
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Diane Von Furstenberg, (the 188 mark) in 1999. Am.
Compl. 51. On December 4, 2006, DVF filed the prior case
against Catherine Snyder under seal. Am. Compl. 17;
Compl., [Docket No. 1], Diane von Furstenberg Studio v.
Snyder, No. 1:06-cv-1356.
As pled in the FAC, DVF, in a sworn declaration,
overstated it's use of the Diane von Furstenberg mark on
goods when procuring the '188 registration. DVF, in sworn
declarations, overstated it's use of the Diane von
Furstenberg mark on goods in both it's five year and ten
year renewal applications.1 Am. Compl. 52,53,56,5 58. DVF
knew when it signed its declaration 's for the registration
and renewal of the '188 registration, the mark was not used
on all of the goods listed in the notice of allowance. Am.
Compl 54,59. DVF knew when it signed its declaration 's
for the registration of and renewal for the '188
registration, overstatement of the marks use on goods would
jeopardize the validity of the registration.2 These
knowingly incorrect allegations of current use constitute
fraud on the Trademark office, as material misstatements
made with the intent of inducing the Trademark office to
rely on them and to register the trademark in a manner
1 [EXHIBIT No. 1]2 [EXHIBIT No. 2]
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which was not justified by the facts of the matter. Am.
Compl. 66. A registration procured in the USPTO by false
or fraudulent declaration or representation, oral or in
writing, or by any false means constitutes fraud on the
USPTO, rendering the resulting registration void ab
initio, Put another way, having nolegalforce. Am. Compl.
13
Upon an ex parte hearing before this Court on December
7, 2006, DVF obtained a Temporary Restraining Order against
Catherine Snyder and a search and seizure order for her
place of business, which was her residence. Compl. 17;
Order Dec. 7, 2006, [Docket No. 17], Diane von Furstenberg
Studio v. Snyder, No. 1:06-cv-1356. DVF and Law
Defendant's submitted the '188 registration to assert the
Courts jurisdiction over ex parte seizure Orders under 15
USC 1116(d) of the Lanham. Act. Am. Compl.13; [Docket
No.1, 3 - 10, 17], Diane von Furstenberg Studio v. Snyder,
No. 1:06-cv-1356. Additionally, DVF and Law Defendant's
submitted the '188 registration with the December 4, 2006
Complaint as a basis for statutory damages in the amount $1
Million Dollars per registered mark. Am. Compl. 49 [Docket
No. 1], Diane von Furstenberg Studio v. Snyder, No. 1:06-
cv-1356.
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Although Law Defendants and Von Furstenberg
represented that they had thoroughly investigated Catherine
Snyder, they made a number of false statements to this
Court in their request for the seizure order and TRO. Am.
Compl. 19, 20. Examples of these false statements, which
Law Defendants and Von Furstenberg could readily have
verified, include allegations that Catherine Snyder and
unnamed defendant's were all part of common operation,
operating from various locations in Virginia and
distributing products mainly through a store. Am. Compl.
21; [Docket No. 8] Diane von Furstenberg Studio v. Snyder,
No. 1:06-cv-1356. Moreover, DVF and Law Defendants
alleged that if provided advance notice of an impending
legal action, Catherine Snyder would dispose of, or hide
evidence and ignore an order restraining assets, while
simultaneously draining her bank account. Am. Compl. 22;
[Docket No. 8, 10, 17] Diane von Furstenberg Studio v.
Snyder, No. 1:06-cv-1356. DVF and Law Defendant's failed
to inform the Court that it's investigation of Mrs. Snyder
found that the Snyder's de facto, had assets worth going
after.3 Dvf and Law Defendant's made these false
statements in an intentional effort to mislead the Court,
3 [EXHIBIT No. 3]
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by characterizing Mrs. Snyder as a fly by night, who if
given advanced notice of an impending legal action, would
likely flee the Court's jurisdiction. Am. Compl. 22; Fed.
R. Civ. P. 65(a)(1); [Docket No. 8, 10, 17] Diane von
Furstenberg Studio v. Snyder, No. 1:06-cv-1356. In
September 2006, Diane Von Furstenberg, on behalf of
defendant Von Furstenberg Studio, stated in a Wall Street
Journal interview it is her belief that Laws are created
to intimidate people [with the threat of litigation]. Am.
Compl. 45.
During the course of the raid, the attorneys for DVF,
acting on DVFs behalf, having been authorized to assist in
the execution of the search and seizure,4 took control of
the operation,5 and not only exceeded the scope of the
seizure order in the items they seized, but did so in front
of a reporter that they brought into the Snyders home.
Am. Compl. 25, 29, 33, 35-36. About five months after the
home invasion, the Snyder's learned that the women
stationed in front of their door on Dec. 8, 2006, was a
reporter for the New Yorker Magazine. Am. Compl. 29, 32,
47.
Richard Snyder was not named in the Complaint, nor
4 [EXHIBIT No. 4]5 [EXHIBIT No. 5] [EXHIBIT No. 6]
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was he mentioned in any way on the search and seizure
order.[Docket No. 1, 17] The attorneys for DVF, acting on
DVFs behalf, froze assets in a bank account in which
Richard Snyder held sole ownership and two bank accounts in
which Mr. Snyder held half ownership rights, which were not
subject to this Courts asset freeze. Am. Compl. 48.
[Docket No. 134] Diane von Furstenberg Studio v. Snyder,
No. 1:06-cv-1356.6
Shortly after entering the Snyders home Law Defendant
Lewin, knowing that the Snyders were not represented by
counsel and knowing that Mr. Snyder was not a party to the
action, informed Mr. Snyder that there was a hearing before
this Court on December 22, 2006 in that matter, but that
the Snyders need not attend, and encouraged Mr. Snyder to
contact Law Defendants quickly to resolve the matter. Am.
Compl. 42 [Docket No. 1, 17] Diane von Furstenberg Studio
v. Snyder, No. 1:06-cv-1356. Before leaving the Snyders'
home Law Defendants left a stack of papers, which were
required to be personally served, in the Snyders kitchen.
Am. Compl. 42
On September 10, 2007, this Court entered partial
summary judgment, finding liability as to the claims
6 [EXHIBIT No. 7]
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against Catherine and entering a permanent injunction, but
denying summary judgment as to contributory infringement
against Richard Snyder and setting the issue of willfulness
and damages for trial. Mem. Op., [Docket No. 79], Order,
[Docket No. 80], Diane von Furstenberg Studio v. Snyder,
No. 1:06-cv-1356.
On September 20, 2007, DVF moved to voluntarily
dismiss it's claims for willfulness and contributory
infringement. On September 24, 2007 This Court issued it's
Order dismissing DVF's claims of willfulness and
contributory infringement with prejudice. SeeMot.
Voluntarily Dismiss, [Docket No. 89]; Supplemental Br.
Supp., [Docket No. 90]; Order September 24, 2007, [Docket
No. 93], Diane von Furstenberg Studio v. Snyder, No. 1:06-
cv-1356. Upon the hearing on damages, judgment was entered
against Catherine Snyder for infringement in the amount of
$100,000.00. Order Oct. 23, 2007, [Docket No. 106], Diane
von Furstenberg Studio v. Snyder, No. 1:06-cv-1356.
On October 9, 2008 DVF issued a Garnishment Summons to,
inter alia,Navy Federal Credit Union. A garnishment
hearing was held on November 7, 2008. At the November 7,
2008 hearing DVF argued, because Virginia Code 34-1,
excludes liability arising from an intentional tort that
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Mrs. Snyder was not entitled to her Virginia Homestead
Exemption. This Court issued an Order on November 12,
2008. [Docket No. 134], Diane von Furstenberg Studio v.
Snyder, No. 1:06-cv-1356. The November 12, 2008 Order
held: (a) That Richard Snyder's interests in the Snyder's
Navy Federal Credit Union accounts, attached on December
08, 2006 and on October 9, 2008, respectfully, were not
subject to garnishment by DVF; (b) after reviewing this
Court's October 23, 2007 memorandum and opinion Order on
damages and taking into consideration the fact that DVF
voluntarily dismissed it's claims that Catherine Snyder had
acted willfully and in bad faith, the Court ruled that Mrs.
Snyder was entitled to her Homestead exemption and, (c)
This Court ordered Navy Federal Credit Union to pay DVF
$2,588.17 from account [x] and $858.25 from account [y].
IV. ARGUMENT
A. This Motion to Reconsider Is Proper Pursuant to Fed. R.Civ. P. 58(a), 59(e) & 6(a)
The Fourth Circuit has held that a Rule 59(e) motion
should be granted only in one of three circumstances: "(1)
to accommodate an intervening change in controlling law;
(2) to account for new evidence not available at trial; or
(3) to correct a clear error of law or prevent manifest
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injustice." Pacific Life Ins. Co. v. American Nat'l Fire
Ins. Co., 148 F.3d 396, 403 (4th Cir. 1998).
Every judgment and amended judgment must be set forth
on a separate document. Fed. R. Civ. P. 58(a)(1).
Judgment is entered for purposes of the Federal Rules of
Civil Procedure when it is set forth on a separate
document. Fed. R. Civ. P. 58(b)(2). The Fourth Circuit
has determined that entry of judgment is not completed
until it is recorded on the docket pursuant to Rule 58.
Albert L. Wilson v. Edward Murray, 806 F.2d 1232 (4th Cir.
1986) (citing Berman v. Schweiker, 1293 n. 8 (7th
Cir.1983); 6A Moore's Federal Practice p 58.05, at 58-234
(2d ed. 1983); 11 Wright & Miller, Federal Practice and
Procedure 2785 (1973)). Judgment was entered, pursuant
to Rule 58 on October 29, 2009 [Docket No. 52,53], so this
motion is appropriate procedurally. Furthermore, it is
timely, having been filed within the ten-day deadline set
in Fed. R. Civ. P. 59(e). See also, Fed. R. Civ. P. 58(a);
Fed. R. Civ. P. 6(a); seeAlston v. MCI Telecom Corp. 84
F.3d 705; 68 Empl. Prac. Dec. P 44 (4th Cir. 1996); Under
the Federal Rules of Civil Procedure, the ten-day time
period does not include Saturdays, Sundays, or legal hol-
idays. Fed. R. Civ. P. 6(a).
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Plaintiff respectfully contends that, in dismissing
the FAC with prejudice, the Court committed clear errors of
law, and that if the Order is not amended, the Snyders will
suffer a manifestly unjust result.
B. Plaintiff (Snyder) In the Current Action Was theDefendant In the Previous Infringement Action
The Oct. 9, 2009 Order dismisses Plaintiffs' claims
with prejudice because they are barred by the doctrine of
claim preclusion.. We respectfully submit that these
holdings are legally erroneous, as the Court bases it's
analysis of claim preclusion, on the flawed premise that
Catherine Snyder was the Plaintiff in the previous action,
when in fact, she was the Defendant in DVF's previous
infringement action.
As we demonstrate below, the general rule of claim
preclusion is that aplaintiffwho has prosecuted one
action against a defendant and obtained a valid final
judgment is barred by res judicata from prosecuting another
action against the same defendant where (a) the claim in
the second action is one which is based on the same factual
transaction that was at issue in the first; (b) the
plaintiff seeks a remedy additional or alternative to the
one sought earlier; and (c) the claim is of such a nature
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as could have been joined in the first action.
In it's October 9, 2009 Order, This Court relies on
Supreme Court and Fourth Circuit caselaw for it's claim
preclusion argument. However, in each of the cases cited
by the Court in it's analysis7, the plaintiff in the second
action was also the plaintiff in the first action.
For example, in Dionne v. City of Baltimore,William
Dionne prosecuted claims against the Mayor and City Council
of Baltimore in a state administrative proceeding.
Subsequent to the state administrative proceeding, Dionne
filed Section 1983 claims against the Mayor and City
Council of Baltimore in Federal Court. Thus, for the
purposes of claim preclusion; Dionne was the plaintiff in
the Federal 1983 [second] action and he was the plaintiff
in the state administrative [first] action. Dionne v. City
of Baltimore, 40 F.3d 677 (4th Cir. 1994).
Further, in Meekins v. United Transp. Union, 946 F.2d
1054, 1057 (4th Cir. 1991) the plaintiff in the second
action was the plaintiff in the first action, in Pueschel
7 See Dionne v. City of Baltimore, 40 F.3d 677 (4th Cir. 1994); Rivet
v. Regions Bank of La., 522 U.S. 470, 476 (1998) (quoting FederatedDep't Stores, Inc. v. Moitie, 452 U.S. 394, 398 (1981))Pueschel, 369F.3d at 355 (quoting In re Varat Enters., Inc., 81 F.3d 1310, 1316(4th Cir. 1996)); Peugeot Motors of Am., Inc. v. E. Auto Distribs.,Inc., 892 F.2d 355, 359 (4th Cir. 1989) (quoting Brown v. Felson, 442U.S. 127, 131 (1979)). Pittston Co. v. United States, 199 F.3d 694,704 (4th Cir. 1999); Martin v. Am. Bancorporation Ret. Plan, 4 07F.3d 643, 650 (4th Cir. 2005)
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the plaintiff in the second action was the plaintiff in the
first action, in Pittstonthe plaintiff in the second
action was the plaintiff in the first action, in Brownthe
plaintiff in the second action was the plaintiff in the
first action, and so forth.
Thus, the cases This Court cites when making it's
claim preclusion argument are inapposite here, because
Catherine Snyder was the not the plaintiff in the first
action, she was, in fact, the defendant in the first action.
Accordingly, it is County Fuel v. Equitable Bank
Corporationthat is analogous to the case at bar. In
Countythe Fourth Circuit held that a defendant in a
previous action, between the same parties, was not barred
under res judicata principles, by it's failure to assert
an available claim against the plaintiff as a basis for
affirmative relief in the prior litigation. Moreover, the
Court found that although it certainly lay with the
defendant in the previous action, to object to the
plaintiff's claim as a matter of defense and to join with
its objection a counterclaim for declaratory relief in the
prior litigation, the "better and decidedly majority view
[was] that the failure to interpose such an available
counterclaim does not, as a matter of res judicata, bar its
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subsequent assertion as an independent claim for relief.
County Fuel v. Equitable Bank Corporation832 F.2d 290 (4th
Cir. 1987) (citingRestatement (Second) Judgments Sec.
22(a)). A compulsory counterclaim rule, of course would
have not have the same effect. Where a compulsory
counterclaim exists, it provides an exception to the basic
rule of non-preclusion. Restatement (Second) Judgments Sec.
22(2)(a).
Additionally, the preclusive result would occur had
Mrs. Snyder asserted a counterclaimagainst DVF in the
first action and then attempted to bring a subsequent
action against DVF based on the same transaction forming
the basis of her counterclaim. Wright & Miller, 18 Federal
Practice and Procedure 4414.
Although claim preclusion bars aplaintiffin the
previous action from bringing a claim against the same
defendant in a new litigation resolved by a prior judgment,
the doctrine does not, however apply to all claims that
were raised or could have been raised by a defendant in the
prior litigation. Canon, 2007 WL 1555394, (E.D. Va. May 21,
2007) (citing Pittston Co. v. United States, 199F.3d 694,
704 (4th Cir. 1999)). In such a situation, the defendant's
claims in the subsequent action are not precluded unless a
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statute required the defendant to bring his claims in the
original action. "Apart from compulsory counterclaim
rules, . . . the traditional conclusion has been that
purely defensive use of a theory does not preclude a later
action for affirmative recovery on the same theory.
Restatement (Second) of Judgments 22 (1982)
(Restatement); Wright & Miller, 18 Federal Practice and
Procedure 4414. Moreover, in Painterthe 4th Circuit
held "absent a compulsory counterclaim rule, a pleader is
neverbarred by res judicata from suing independently on a
claim that he refrained from pleading as a counterclaim in
a prior action" Painter, 863 F.2d at 331 (4th Cir. 1988).
(see also8)
The rationale for the general rule applying to
defendants who elected not to assert a counterclaim in the
prior action is that "the defendant should not be required
to assert his claim in the forum or the proceeding chosen
by the plaintiff but should be allowed to bring suit at a
8Claim Preclusion or res judicata is limited in its application to
those matters which the parties under their pleadings and the issuejoined in the former action might legitimately have controverted andhave had decided by the verdict and judgment and has never been soextended as to compel one party having several different causes of
action against another to join them in one action because they were of
such a character that the law would permit their union. Quoting 'ATreatise On The Law of Judgments: Including The Doctrine of ResJudicata; Vol 2 by Henry Campbell Black'
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time and place of his own selection." Restatement 22
cmt. a.
The Oct. 9, 2009 opinion, argues "Plaintiffs do not
argue that they were in some way denied the opportunity to
raise their claims in the previous action." October 9, 2009
Order *14. With all due respect to this Court, had Mrs.
Snyder raised a claim in the previous action, by necessity
it would have been raised in the form of a counterclaim.
As set out above, the proper analysis for the purpose
of preclusion in the instant case, is whether a statute
required Mrs. Snyder to interpose the Snyder's current
claims in DVF's previous infringement action. Put another
way, if the Snyder's current claims were to be interposed
in the prior proceeding, does Fed. R. Civ. P. 13(b) permit
an independent claim for relief, or does Fed. R. Civ. P.
13(a) bar the Snyder's instant action?
C. The Snyder's Claims Are Not Compulsory Under Fed. R.Civ. P. 13(a), Nor Are the Snyder's Claims Compulsory Under
Fourth Circuit Law
In the 4th circuit a compulsory counterclaim relates
back to the time of the filing of the plaintiff's
complaint. See Kirkpatrick v. Lenoir County Board216 F.3d
380 (4th Cir. 2000) (citing Burlington Indus. v. Milliken &
Co., 690 F.2d 380, 389 (4th Cir. 1982) (holding that "the
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institution of plaintiff's suit tolls or suspends the
running of the statute of limitations governing a
compulsory counterclaim"). Dvf filed its complaint in the
previous trademark action on December 4, 2006. Because the
set of facts forming the Snyder's claims did not exist on
December 4, 2006, under the 4th Circuits tolling analysis
the Snyder's claims were not compulsory.
Moreover, in Sue & Sam Mfg. Co. v. B-L-S Const. Co. ,
538 F.2d 1048, 1051- 1053 (4th Cir. 1976), the 4th circuit
identified four inquiries that help in determining whether
a counterclaim is compulsory: (1) Are the issues of fact
and law raised in the claim and counterclaim largely the
same? (2) Would res judicata bar a subsequent suit on the
party's counterclaim, absent the compulsory counterclaim
rule? (3) Will substantially the same evidence support or
refute the claim as well as the counterclaim? and (4) Is
there any logical relationship between the claim and
counterclaim? "A Court need not answer all these questions
in the affirmative for the counterclaim to be compulsory."
Painter, 863 F.2d at 331. Instead, the test works "less
like a litmus, more [like] a guideline." Id. Of course, the
"underlying thread" to each inquiry is "evidentiary
similarity," and "where . . . the same evidence will
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support or refute both the claim and counterclaim, the
counterclaim will almost always be compulsory." Q
International Courier, Inc. v. Smoak441 F.3d 214 (4th
Cir.2006) (citing Painter v. Harvey, 863 F.2d 329, 331 (4th
Cir.1988)). (internal citation omitted).
Here, likelihood of confusion was at the heart of
DVF's trademark infringement claim, whereas the heart of
the Snyder's current claim is the abusive manner in which
DVF and law defendants prosecuted DVF's previous action.
Therefore, the issues of fact and law in the instant case
are not similar, the evidence needed to sustain the
Snyder's claim does not overlap with the evidence needed to
sustain DVF's trademark claim, and there is no logical
relationship between the two actions. Thus, applying the
4th Circuit criteria, the Snyder's current claims were not
compulsory counterclaims to DVF's infringement action and
the Snyder's are not precluded from bringing their claims
in an action independent from DVF's previous action.
Painter, F.2d at 331-332 (4th Cir. 1988).
D. The Post Seizure Hearing Was Not The Proper
Venue To Raise The Snyder's Current Claims
Section 1116(d)(10) of the Lanham Acts provides that a
hearing with notice to the defendantmust be held no later
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than fifteen days after the order is issued. Vuitton v.
White 945 F.2d 569. Pursuant to subsection 1116(d)(9), the
defendant is to be served with the Order justbefore
execution of the seizure, service of the Order will
constitute notice to the defendant of the upcoming hearing.
(emphasis added) Joint Statement 1711[H 12082].
As pled in the Snyder's FAC, before leaving the
Snyders' home on December 8, 2006, Law Defendants left a
stack of papers, which were required to be personally
served, in the Snyders kitchen. Am. Compl. 42. Service
of process is the procedure employed to give legal notice
of a Courts 's exercise of its jurisdiction over that
person, so as to enable that person to respond to the
proceeding before the Court. Usually, notice is furnished
by delivering a set of Court documents (process) to the
person to be served. Proper service of process initially
establishes personal jurisdiction over the person served.
Personal service is service of process directly (in hand)
to the party named on the summons, complaint or petition.
In most lawsuits in the United States, personal service is
required to prove service. See Fed. R. Civ. P. 5(c)(d).
Catherine Snyder was not served with the Court's Dec.
7, 2006 Order before it's execution as mandated by section
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1116(d)(9) of the Lanham Act.9 Moreover, Mrs. Snyder was
not personally served with the The Court's Order on
December 8, 2006 as required by Fed. R. Civ. P. 5(b)(2)(A)
(i).10
As set out above, service of the seizure Order
constitutes notice to the defendant of the Post Seizure
hearing,11 thus DVF failed to provide Catherine Snyder with
notice of the December 22, 2006 post seizure hearing.
Richards v. Jefferson County, 517 US 793, 798 (1996). As
the Supreme Court explained in Mullane v. Central Hanover
Bank & Trust Co., 339 U.S. 306(1950), the right to be heard
ensured by the guarantee of due process "has little reality
or worth unless one is informed that the matter is pending
and can choose for himself whether to appear or default,
acquiesce or contest." Id., at 314; Phillips Petroleum Co.
v. Shutts, 472 U.S. 797, 812 (1985); Schroeder v. City of
New York, -21371 U.S. 208, 2123 (1962). Because Mrs.
Snyder did not receive notice of the impending post seizure
9 [EXHIBIT No. 8]10 See Docket Dianevon Furstenberg Studio v. Snyder, No. 1:06-cv-1356:No docket entry for Return Of Service of the Court's Dec. 7, 2006 Order.Notwithstanding that Mrs. Snyder was not personally served with the
Dec. 4, 2006 Complaint, RETURN OF SERVICE Executed as to CatherineSnyder served on 12/8/2006, answerdue, 12/28/2006 was entered ontothe docket on 12/22/2006 [Docket No. 22] Diane von Furstenberg Studiov. Snyder, No. 1:06-cv-1356.
11 See Docket Diane von Furstenberg Studio v. Snyder, No. 1:06-cv-1356:No docket entry for Notice of Hearing docketed as to the Dec. 22,2006 post seizure hearing
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hearing, she could not choose for herself whether to appear
at the Dec. 22, 2006 hearing or to waive that right by not
appearing. Moreover, as Mrs. Snyder was dressing herself
on Dec. 8th, Law Defendant Lewin, knowing that the Snyders'
were not represented by counsel and knowing that Mr. Snyder
was not a party to the action, informed Mr. Snyder that
there was a hearing before this Court on December 22, 2006
in that matter, but that the Snyders need not attend, and
encouraged Mr. Snyder to contact Law Defendants quickly to
resolve the matter. Am. Compl. 42.
The purpose of the post seizure hearing under the
Lanham Act is to restore due process to a defendant, who
has not had an opportunity to be heard previously, in the
matter. At the hearing, DVF had the burden of showing
that the seizure order was justified and that it continued
to be justifiable to hold Catherine Snyder's goods,
personal documents and bank accounts. If DVF were unable
to show that continuation of the seizure order and TRO with
asset freeze was justified, however, the seizure order and
TRO with asset freeze should have been dissolved. Id.
In Beltronics, the Court held the dissolution of the
seizure order [was] warranted on the grounds that the Court
was not satisfied that defendants would destroy, move,
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hide, or otherwise make the seized goods inaccessible, or
that an order other than an ex parte seizure order would
not be adequate to ensure that Beltronics would have
adequate remedies if defendants are ultimately found to
have infringed Beltronics trademark. Beltronics USA, Inc.
v. Midwest Distrib. LLC522 F.Supp.2d 1318b(D. Kan. 2007).
At the Post Seizure Hearing the Beltronics Court
dissolved the seizure on the grounds that Beltronics had
not made the showings required by 1116(d)(4)(B)(i) &
(vii), and directed Beltronics to return the seized goods
to defendants. Id. Defendants also contended that the
scope and conduct of the seizure was abusive and that
Beltronics violated the order in several respects in the
manner in which it was carried out. The Court stated as
such, defendant's remedy was a cause of action for wrongful
seizure as provided in 15 U.S.C. 1116(d)(11) (A person
who suffers damage by reason of a wrongful seizure under
this subsection has a cause of action against the applicant
for the order under which such seizure was made . . . .).
Id. See Waco Intl, Inc. v. KHK Scaffolding Houston Inc.,
278 F.3d 523, 531 (5th Cir. 2002) (noting that 1116(d)
(11) is the statute that governs whether a seizure order is
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wrongful);Martins Herend Imports, Inc. v. Diamond & Gem
Trading United States of Am. Co., 195 F.3d 765, 774-75 (5th
Cir. 1999). Thus, to the extent that defendants argued that
the wrongful seizure constituted grounds for any form of
affirmative relief other than dissolution of the seizure
order, their motion was denied at that procedural [post
seizure hearing] juncture. The Court went on to say
defendant's were, of course, free to pursue their
counterclaim against Beltronics for wrongful seizure
pursuant to 1116(d)(11). Id.
Further, the Court held that it is 15 U.S.C. 1116(d)
(11) that governs whether a seizure order is wrongful,
rather than section 1116(d)(4), which merely set forth the
factors a Court is to consider in determining whether to
grant an application for such an order. The wrongful
seizure provision of the Lanham Act is not in section
1116(d)(4) but in section 1116(d)(11). Thus, section
1116(d)(11) and its supporting legislative history
establish the standards by which wrongful seizure claims
may be pursued, and section 1116(d)(4) has nothing to do
with those standards. Id.Waco International vs. KHK
Scaffolding 278 F.3d 523.
E. CLAIMS II VII ARE NOT DEFENSES TO
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TRADEMARK INFRINGEMENT UNDER 15 U.S.C. 1115(b)
In it's Oct. 9, 2009 Order This Court argues;
Not only does res judicatabar counterclaims that were
raised and fully litigated, it prevents litigation of all
grounds for, or defenses to, recover that were previously
available to the parties, regardless of whether they were
asserted or determined in the prior proceeding. Canon
U.S.A., Inc. v. Lease Group Resources, Inc., 2007 WL
1555394, at (E.D. Va. May 21, 2007) (quoting Peugeot Motors
of Am., Inc. v. E. Auto Distribs., Inc., 892 F.2d 355, 359
(4th Cir. 1989)). The Snyder's wrongful seizure claim is
not a defense to trademark infringement, it is a separate
statutory cause of action under 15 U.S.C. 1116(d)(11)12 of
the Lanham Act. Likewise, none of the claims enumerated
in Counts III through VII in the current action are
defenses to trademark infringement under the Lanham Act.
See 15 USC 1115. Thus, the doctrine of claim preclusion
12 "A person who suffers damage by reason of a wrongful seizure underthis subsection has a cause of actionagainst the applicant for theorder under which such seizure was made, and shall be entitled torecover such relief as may be appropriate, including damages for lost
profits, cost of materials, loss of good will, and punitive damages ininstances where the seizure was sought in bad faith, and, unless the
Court finds extenuating circumstances, to recover a reasonableattorneys fee. The Court in its discretion may award prejudgmentinterest on relief recovered under this paragraph, at an annualinterest rate established under section 6621 (a)(2) of title 26,commencing on the date of service of the claimants pleading settingforth the claim under this paragraph and ending on the date suchrecovery is granted, or for such shorter time as the Court deemsappropriate."
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does not bar the Snyder's from asserting their claims in a
separate cause of action.
F. Fraud On The USPTO Is Not Only a Defense to TrademarkInfringement It Is An Affirmative Claim Under 15 U.S.C. 1120 And The Snyders Are Not Barred From Asserting Them In
An Independent Claim For Relief
Although Mrs. Snyder is barred in the present case
from asserting fraud as a defense, which might have been
interposed in the earlier litigation, it would not follow
that her claim for damages would likewise be barred.
Mercoid320 U.S. 680; 64 S.Ct. 278; 88 L.Ed. 396 (1944).
That claim for damages is more than a defense; it is a
separate statutory cause of action that is based on civil
liability for false or fraudulent registration under 15
U.S.C. 1120, which provides:
"Any person who shall procure registration in the
Patent and Trademark Office of a mark by a false or
fraudulent declaration or representation, oral or in
writing, or by any false means, shall be liable in a civil
action by any person injured thereby for any damages
sustained in consequence thereof."
Additionally, the fact that it might have been
asserted as a counterclaim in the prior suit by reason of
Rule 13(b) of the Rules of Civil Procedure, does not mean
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that the failure to do so renders the prior judgment res
judicata as respects it. MercoidUnited States Supreme
Court February 7, 1944 320 U.S. 680; 64 S.Ct. 278; 88 L.Ed.
396 (citingVirginia-Carolina Chemical Co. v. Kirven, 215
U.S. 252, 30 S.Ct. 78, 54 L.Ed. 179; Larsen v. Northland
Transportation Co., 292 U.S. 20, 54 S.Ct. 584, 78 L.Ed.
1096. And see Scott, Collateral Estoppel by Judgment, 56
Harv.L.Rev. 1, 26-28; Restatement of the Law of Judgments,
58). The case is then governed by the principle that
where the second cause of action between the parties is
upon a different claim the prior judgment is res judicata
not as to issues whichmight have been tendered but 'only
as to those matters in issue or points controverted, upon
the determination of which the finding or verdict was
rendered.' SeeMercoid (citing Cromwell v. County of Sac,
94 U.S. 351, 353, 24 L.Ed. 195. And see Russell v. Place,
94 U.S. 606, 24 L.Ed).
V. THE FOLLOWING MATTERS WERE NOT DETERMINED IN DVF'sPREVIOUS ACTION
Catherine and Richard Snyder respectfully move this
Court to amend the Oct. 9, 2009 Order and correct
erroneous findings of fact contained therein.
With all due respect to this Court, the Court in the
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Dec. 8, 2006, were in fact, counterfeit Diane von
Furstenberg dresses.
2. The Snyders did not argue, in the previous
action,that the "Diane von Furstenberg" mark registered
under Reg. No.2276188 was not currently used in commerce in
the previous action. See Oct. 9, 2009 Opinion *11, the
Snyders argued that the marks were not currently used in
commerce.14 Notwithstanding that DVF referenced a single
trademark registration number in both it's complaint15 and
it's memorandum of law in support of summary judgment,16 DVF
astonishingly demanded the Court award it $2 Million
dollars in damages- $1 Million dollars each for the 'Diane
von Furstenberg' mark registered under Reg. No.2276188 and
$1 Million dollars for the 'DVF' mark. The DVF mark is
registered with the USPTO under a wholly different
Registration number.17 More importantly, not one of the
dresses seized from the Snyder's home on December 8, 2006
bore the DVF mark.
It is in that context that Mrs. Snyder argued that not
only had Mrs. Snyder not used the DVF mark in commerce, but
it was her belief that DVF did not use the 'DVF' mark in
14[EXHIBIT No. 10]15[Docket No.1] Diane von Furstenberg Studio v. Snyder, No. 1:06-cv-1356
16[Docket No.65] Diane von Furstenberg Studio v. Snyder,No. 1:06-cv-135617[EXHIBIT No. 11]
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on dresses either.18
3. DVF did not "file[d] an action in this Court
against the Snyder's," DVF filed an action in this Court
against Catherine Snyder. Notwithstanding that DVF and law
defendants knew Richard Snyder's identity prior to filing
it's action on December 4, 2006, defendants failed to name
Mr. Snyder in it's action against Mrs. Snyder. Moreover,
DVF did not amend it's complaint to add a claim for
contributory infringement against Mr. Snyder, nor was Mr.
Snyder ever served with a Complaint in the previous
action.19 In fact, Mr. Snyder first learned of DVF's
contributory infringement claim against him when DVF moved
for Summary Judgment on August 15, 2007.
18[EXHIBIT No. 11]19 [Docket] Diane von Furstenberg Studio v. Snyder, No. 1:06-cv-1356 No
Docket Entry showing (1) an Amended Complaint, or (2) Return ofService as to Richard Snyder
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