Rosehoff, Ltd. v. Cataclean Am's., LLC

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ROSEHOFF, LTD., Plaintiff, v. CATACLEAN AMERICAS, LLC, et al., Defendants.

No. 21-CV-399-LJV-LGF

United States District Court, W.D. New York

February 9, 2024

DECISION & ORDER

LAWRENCE J. VILARDO, UNITED STATES DISTRICT JUDGE

On March 17, 2021, Rosehoff, Ltd. (“Rosehoff”) commenced this action under the Lanham Act, the New York General Business Law, and New York State common law against Cataclean Americas, LLC (“Cataclean Americas”) Truscott Terrace Holdings, LLC; Truscott Terrace Holdings Group, LLC; Truscott Terrace International Holdings Group LLC; and Gordon and Gregory Gannon. Docket Item 1; Docket Item 4 (amended complaint). Rosehoff alleged that the defendants “repeated[ly], willful[ly], and egregious[ly] misappropriat[ed]” and unlawfully used “intellectual property associated with the Cataclean [product].”^[1] Docket Item 4 at ¶ 8 (capitalization omitted).

On November 28, 2022, this Court denied both Cataclean Americas' motion to dismiss and Rosehoff's motion for summary judgment. Docket Item 26. About one month later, Rosehoff moved for reconsideration of the Court's denial of its motion. Docket Item 27. The defendants then responded, Docket Item 35, and Rosehoff replied, Docket Item 36.

For the reasons that follow, the Court denies Rosehoff's motion for reconsideration.

BACKGROUND^[2]

In July 2008, System Products and Cataclean Americas executed a license agreement. See Docket Item 17-10 at ¶ 8; Docket Item 22 at 4; Docket Item 17-5 at 419 (copy of agreement). Both parties say that agreement allowed Cataclean Americas to sell Cataclean, see Docket Item 17-10 at ¶ 8; Docket Item 22 at 2, but they disagree about other aspects of that agreement.

As the Court noted in its previous decision, the source of the parties' dispute lies in the fact that the license agreement apparently provides both that the agreement may be terminated and that it is irrevocable. See Docket Item 26 at 3. For instance, clause 4.2.5 provides that “[System Products] may terminate th[e] agreement” for a breach by Cataclean Americas. Docket Item 17-5 at 8. And clause 18 states that “[t]he contractual relationship can be dissolved prior to the expiry of the Term by either party without notice of termination if the other party materially breaches any term or provision of th[e] agreement or if compelling grounds are present.” See Docket Item 17-5 at 19 (listing five such compelling grounds). But the agreement also explicitly provides Cataclean Americas with an “exclusive irrevocable licence [sic].” See id. at 5 (emphasis added). The agreement does not explain how to reconcile those provisions.

Rosehoff contends that in August 2011, System Products invoked clauses 4.2.5. and 18 to terminate the agreement “due to [the] [d]efendants' breaches.” Docket Item 17-10 at ¶¶ 11-12. In fact, System Products sent a letter to Cataclean Americas informing it of that termination and stating that “the contractual relationship between [System Products] and Cataclean Americas . . . is hereby dissolved with immediate effect.” Docket Item 17-5 at 21. But despite that purported termination, the defendants continued to associate themselves with the Cataclean product and failed to comply with Rosehoff's request that they stop doing so. See Docket Item 17-10 at ¶¶ 17, 22-24; see also Docket Item 26 at 4 (summarizing that series of events).

In response, Rosehoff filed this action as described above, Docket Items 1, 4, and on September 13, 2021, it moved for summary judgment, Docket Item 17. Rosehoff argued that System Products had terminated the license agreement consistent with the terms of that agreement. Docket Item 17-9 at 10. It also argued that even if the Court found that Rosehoff had not established that the termination was indisputably proper, any “challenge” to it was “time[ ]barred.” Id. at 11. Noting that a “six-year statute of limitations” applied to breach of contract claims under the law of New York, England, and Wales,^[3] Rosehoff argued that the defendants were required to challenge the termination by August 2017 and that their failure to do so meant they could no longer assert rights under the license agreement. Id. at 11. Thus, Rosehoff concluded, the defendants were violating Rosehoff's trademark rights, and Rosehoff was “entitled to judgment as a matter of law.” Id. at 12; see also id. at 14-15.

This Court disagreed. Docket Item 26. First, it found that-despite Rosehoff's contentions to the contrary-the license agreement was ambiguous because the evidence offered could reasonably support both parties' interpretations. Id. at 12-14. In other words, the Court found that it could not determine, on a motion for summary judgment, that the agreement between System Products provided for “a revocable, nonexclusive license” rather than-as the defendants contended-“an exclusive, irrevocable license.” Id. And for that reason, the Court could not find that System Products had properly terminated the license agreement in 2011 as a matter of law. Id. at 10-14.

Moreover, because Rosehoff had not shown as a matter of law that the license was revocable, the Court found that Rosehoff's statute of limitations argument “misse[d] the mark.” Id. at 15. The Court reasoned that “[i]f the license agreement is truly irrevocable,” then it would have been legally impossible for System Products to terminate it in 2011, and the time to challenge any purported termination could not have expired. Id. at 14-15. Accordingly, it denied Rosehoff's motion for summary judgment.^[4]Rosehoff now asks this Court to reconsider its decision, arguing that the Court's determination of Rosehoff's statute of limitations argument was “incorrect.” Docket Item 27; Docket Item 27-1 at 2. More specifically, Rosehoff contends that System Products' “August 2011 termination letter constituted an anticipatory repudiation of the [l]icense [a]greement,” and that the “anticipatory repudiation” necessarily “triggered the commencement of the statute of limitations on any breach of contract claim [Cataclean Americas] might have [had] based on the [l]icense [a]greement.” Id. (underlining omitted). “In other words,” it says, “regardless of whether the [l]icense [a]greement was arguably ‘revocable' or ‘irrevocable,' [Rosehoff's] anticipatory repudiation of [that] [a]greement in 2011 triggered the [six-year] statute of limitations for [Cataclean Americas] to try to enforce any rights it had under the [l]icense [a]greement.” And because that statutory period has long “expired,” Rosehoff is entitled to summary judgment. Id. at 2-3.

The defendants disagree, arguing that Rosehoff's motion is procedurally flawed and that it offers only a “re-hash of the arguments . . . already advanced and . . . rejected.” Docket Item 35 at 2-3. For the reasons that follow, this Court agrees with the defendants.

LEGAL PRINCIPLES

Under Federal Rule of Civil Procedure 54(b):

[A]ny order or other decision, however designated, that adjudicates fewer than all the claims or the rights and liabilities of fewer than all the parties does not end the action as to any of the claims or parties and may be revised at any time before the entry of a judgment adjudicating all the claims and all the parties' rights and liabilities.

The Second Circuit has held that “[t]he major grounds justifying reconsideration are an intervening change of controlling law, the availability of new evidence, or the need to correct a clear error or prevent manifest injustice.” Virgin Atl. Airways, Ltd. v. Nat'l Mediation Bd., 956 F.2d 1245, 1255 (2d Cir. 1992) (citation and internal quotation marks omitted); see also Ifedigbo v. Buffalo Pub. Sch., 2018 WL 2901331, at *1 (W.D.N.Y. June 11, 2018) (reciting that standard).

Although “Rule 54(b) gives district courts broad discretion to reconsider, reverse, or modify interlocutory orders previously entered in a case,” Vornado Realty Tr. v. Marubeni Sustainable Energy, Inc., 987 F.Supp.2d 267, 275 (E.D.N.Y. 2013) (citing, inter alia, Parmar v. Jeetish Imports, Inc., 180 F.3d 401, 402 (2d Cir.1999)), “[t]he standard for granting . . . a motion [for reconsideration] is strict,” Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir. 1995). “The[] criteria [for granting such a motion] are strictly construed against the moving party so as to avoid repetitive arguments on issues that have been considered fully by the court.” United States v. Cottom, 2023 WL 6825281, at *1 (W.D.N.Y. Oct. 17, 2023). In fact, “reconsideration will generally be denied unless the moving party can point to controlling decisions or data that the court overlooked-matters, in other words, that might reasonably be expected to alter the conclusion reached by the court.” Shrader, 70 F.3d at 257.

“Motions for reconsideration are not to be used as a means to reargue matters already disposed of by prior rulings or to put forward additional arguments that could have been raised before the decision.” Ifedigbo, 2018 WL 2901331, at *1. As the Second Circuit has stated, “where litigants have once battled for the court's decision, they should neither be required, nor without good reason permitted, to battle for it again.” Virgin Atl. Airways, 956 F.2d at 1255.

DISCUSSION

Rosehoff appropriately moved under Federal Rule of Civil Procedure 54(b) for reconsideration of this Court's previous decision.^[5] See Docket Item 27; Docket Item 271 at 3. But because Rosehoff has not shown that reversal of that decision is warranted, its motion is denied.

As noted above, reconsideration may be justified when the moving party points to “an intervening change of controlling law,” “new evidence,” or “the need to correct a clear error or prevent manifest injustice.” Virgin Atl. Airways, 956 F.2d at 1255. But in its memorandum in support of the motion...