Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Mician v. Catanzaro

United States District Court, E.D. Virginia, Norfolk Division

June 13, 2018

RUDY MICIAN, et al., Plaintiffs,
v.
DAVID CATANZARO, et al., Defendants.

          MEMORANDUM OPINION AND ORDER

          ROBERT G. DOUMAR, UNITCD STATES DISTRICT JUDGE

         This matter comes before the Court on a Motion to Dismiss and Stay Amended Complaint filed by defendants David Catanzaro, Chris Catanzaro, HookCam, LLC, and Kuulei Holdings, Inc. (collectively, "Defendants"). In such motion, Defendants asks the Court to dismiss Counts I and V of the Amended Complaint for failure to state a claim ("Motion to Dismiss") and to stay all remaining claims pending the outcome of a related state action ("Motion to Stay"). ECF No. 22. For the reasons stated herein, Defendants' Motion to Dismiss is GRANTED as to Count I and DENIED as to Count V; and Defendants' Motion to Stay is DENIED.

         I. PROCEDURAL BACKGROUND

         This action arises from a dispute between business partners. On October 19, 2017, Rudy Mician ("Mician") individually and derivatively on behalf of Pacific Systems Solutions, LLC ("PSS") (collectively, "Plaintiffs") filed a complaint against David Catanzaro ("D.C."), Chris Catanzaro ("C.C."), HookCam, LLC, and Kuulei Holdings, Inc. ("Kuulei") alleging patent infringement, trademark infringement, accounting, breach of contract, civil conspiracy, misappropriation of trade secrets, and conversion. ECF No. 1. On January 5, 2018, Defendants moved to dismiss several counts of Plaintiffs' complaint and moved to stay the remaining counts pending the outcome of a related state action. ECF No. 19. On January 19, 2018, in lieu of a response, Plaintiffs filed an amended complaint ("Am. Compl."), which asserts the following claims:

• Count I - derivative action by Mician on behalf of PSS alleging direct and willful patent infringement against D.C., C.C., and HookCam, LLC;
• Count II - derivative action by Mician on behalf of PSS alleging trademark infringement against D.C., C.C., and HookCam, LLC;
• Count III - action for accounting by Mician against D.C.;
• Count IV - breach of contract claim by Mician, both individually and derivatively on behalf of PSS, against Kuulei;
• Count V - civil conspiracy claim by Mician, both individually and derivatively on behalf of PSS, against D.C. and C.C.; and
• Count VI - derivative action by Mician on behalf of PSS for damages under the Virginia Uniform Trade Secrets Act against D.C, C.C., and HookCam, LLC.

Am. Compl., ECF No. 20.

         On February 2, 2018, Defendants moved to dismiss Counts I and V of the amended complaint for failure to state a claim and moved to stay the remaining counts pending the outcome of a related state action. ECF No. 22; see also Memorandum in Support ("Def. Mem."), ECF No. 23. On February 16, 2018, Plaintiffs filed a response in opposition to Defendants' motion ("Resp."). ECF No. 24. On February 22, 2018, Defendants filed their reply. ECF No. 25. Defendants' Motion to Dismiss and Stay, ECF No. 22, is now before the Court.

         II. FACTUAL BACKGROUND

         A summary of the relevant facts alleged in Plaintiffs' amended complaint follows.[1]

         The Parties

         Plaintiff Mician is a citizen and resident of Florida. Am. Compl. ¶ 1. Plaintiff PSS is a Hawaii limited liability company with its principal place of business in Hawaii. Id. ¶ 2. At all times relevant to the amended complaint, Mician and defendant Kuulei have been the only members of PSS. Id. ¶ 6. Defendant Kuulei is a Hawaii corporation owned by defendant D.C. Id. ¶¶ c, 6. Kuulei is listed as the manager of PSS in PSS's Operating Agreement, but subsequent filings with the Secretary of State of Hawaii identify D.C. as the sole manager of PSS. Id. ¶ 6, n.2. Defendant HookCam, LLC is a Virginia limited liability company with its principal place of business in Henrico County, Virginia. Id. ¶ 5. Defendants D.C. and C.C. are both citizens and residents of Virginia and the only members of HookCam, LLC, each owning 50% of the company. Id. ¶¶ 3, 4, 17.

         PSS's Patented Crane Camera System

         PSS and its principals have worked toward the development of a video system for use by operators of large construction cranes. Id. ¶ 7. The goal of such video system is to provide a televised image from the perspective of the crane's hook, which is often obscured from the operator's view when working on a construction site. Id. In furtherance of these efforts, PSS obtained a patent, U.S. Patent No. 7, 656, 459 B2, entitled "Crane Hook and Trolley Camera System, " which issued on February 2, 2010 ("PSS Patent"). Id. ¶ 8. A copy of the PSS Patent is attached to the amended complaint as Exhibit A. PSS also obtained the trademark "HookCam, " which was registered with the United States Patent and Trademark Office on or about May 24, 2016, under registration number 4963471 ("PSS Trademark"). A copy of the PSS Trademark is attached to amended complaint as Exhibit B.

         Mician's Role at PSS

         From the inception of PSS, Mician provided services for PSS, including, without limitation, assembly of HookCam parts, installation services, and warranty work. Id. ¶ 10. At all relevant times, Mician was paid a nominal salary by or on behalf of PSS for such services. Id. ¶ 12. However, such salary payments to Mician dwindled in amount, and in late 2014, they ceased without explanation. Id. ¶ 13. Mician received no compensation from PSS for the year 2015. Id. In late 2015, Mician made a demand for an accounting for PSS from D.C., but no accounting was forthcoming. Id. ¶ 14. In March, 2016, Mician quit his salaried position with PSS. Id. ¶ 15. According to Mician, he remained a member of PSS and continued to demand an accounting. Id. Around this same time, D.C. moved the operations of PSS from Hawaii to Virginia over the objections of Mician. Id. ¶ 16.

         HookCam. LLC

         On or about July 27, 2016, D.C. formed HookCam, LLC. Id. ¶¶ 5, 17. D.C. and C.C. are the only members of HookCam, each owning 50% of the company. Id. ¶ 17. The PSS Patent and PSS Trademark were never assigned or transferred to D.C, C.C, or HookCam, LLC. Id. ¶ 19. Nevertheless, "from and after the formation of HookCam, [LLC, ]" D.C. and C.C have manufactured and installed the PSS patented crane camera system for customers of PSS and others using HookCam, LLC Id. ¶¶ 18, 26. D.C, C.C, and HookCam, LLC also "actively engaged in utilizing and duplicating the PSS Trademark in connection with the manufacture and sale of a crane camera system bearing the PSS Trademark." Id. ¶ 36.

         III. DEFENDANTS' MOTION TO DISMISS

         In the first part of their motion, Defendants move to dismiss Count I (patent infringement) and Count V (civil conspiracy) of the amended complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure ("Rule 12(b)(6)") for failure to state a claim.

         A. ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.