United States District Court, W.D. Washington, Seattle
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANT'S MOTION TO DISMISS IN PART
RICARDO S. MARTINEZ, CHIEF UNITED STATES DISTRICT JUDGE
matter comes before the Court on the Defendant Hyperion
Entertainment CVBA (“Hyperion”)'s Motion to
Dismiss in Part. Dkt. #52. Specifically, Hyperion moves under
Rule 12(b)(1) and (6) for the Court to dismiss: (1)
Plaintiffs' First Cause of Action (Breach of Contract) as
brought by Cloanto Corporation (“Cloanto”), (2)
Plaintiffs' Seventh Cause of Action (Lanham Act
§43(a)) as brought by Cloanto, and (3) Plaintiffs'
Eighth Cause of Action (Declaration of Trademark Ownership).
See Id. at 3. Plaintiffs Cloanto, Amiga, Inc., Itec,
LLC, and Amino Development Corporation oppose. Dkt. #54. For
the reasons set forth below, the Court GRANTS IN PART AND
DENIES IN PART Hyperion's Motion.
is a partial motion to dismiss primarily based on standing,
the Court will focus only on the relevant factual allegations
in the Second Amended Complaint (Dkt. #47), the 2009
Settlement Agreement at issue, attached to the Complaint, and
the following procedural history of this case. The Court will
not recount here the long history of the various software
versions, trademarks, copyrights, and transfers of such
between the parties. Suffice it to say that this case deals
with copyrights, trademarks, and the right to sell software
related to the Amiga operating system.
2009, Amiga, Itec, and Amino (collectively, the “Amiga
Parties”) entered into a Settlement Agreement with
Hyperion that sits at the center of the claims currently
before the Court. Dkt. #1-1. Cloanto was not a party to this
contract but was mentioned in an attachment as an existing
license holder. See Id. at 19. This Agreement
included a “Successor/Acquirer Agreement Form”
attached to the Settlement Agreement as “Exhibit
3.” See Id. at 22. In 2011 and 2012, Amiga,
Inc. transferred ownership to Cloanto of copyrights to
certain software mentioned in the Agreement. Dkt. #47 at 8.
On May 10, 2018, well after this dispute began, Cloanto
executed Exhibit 3, described further below, and delivered it
to Hyperion's counsel on the same day. See Id.
at 9. Plaintiffs allege that Hyperion breached the Agreement
by infringing on the copyrights and trademarks held by
case began as two separate lawsuits. Cloanto first filed
against Hyperion on December 14, 2017, in the Northern
District of New York. No. 2:18-cv-00535-RSM, Dkt. #1.
Hyperion later brought the instant action against Plaintiffs
on March 13, 2018. Dkt. #1. On July 30, 2018, these cases
were consolidated. No. 2:18-cv-00535-RSM, Dkt. # 40.
November 28, 2018, a new entity, C-A Acquisition Corporation,
was formed. See Dkt #61-1. C-A and Cloanto are both
owned by the same person, Michele “Mike” Console
Battilana. Dkt. #57-3 (“Battilana Declaration”),
December 28, 2018, the Court granted leave for the parties to
file a Second Amended Complaint to consolidate claims and
“reorganize the Parties' positions to reflect
Cloanto Corporation, Amiga, Inc., Itec, LLC, and Amino
Development Corporation as Plaintiffs, and Hyperion
Entertainment CVBA as Defendant.” Dkt. # 46. The Second
Amended Complaint was filed on December 29, 2018. Dkt. # 47.
January 14, 2019, Hyperion filed the instant Motion to
Dismiss in Part Plaintiffs' Second Amended Complaint.
February 1, 2019, weeks after Hyperion's Motion to
Dismiss was filed and a mere three days before
Plaintiffs' Response brief was due, C-A Acquisition
acquired all remaining intellectual property assets of
Plaintiff Amiga, Inc. and then granted Cloanto certain
rights. Battilana Declaration, ¶¶ 3-4. Plaintiffs
believe that “the rights granted to Cloanto resolve all
questions raised by Hyperion in its motion to dismiss in part
(Dkt. No. 52) as to Cloanto's standing to bring trademark
claims.” Dkt. #57 at 2.
March 6, 2019, Plaintiffs filed a Motion seeking to amend the
Complaint to add claims based on this transfer of rights and
to add C-A Acquisition as a new party. Dkt. #57. On April 8,
2019, the Court denied that Motion finding a lack of
diligence on the part of Plaintiffs. Dkt. #65.