Aceto Corp. v. TherapeuticsMD, Inc.
953 F. Supp. 2d 1269
S.D. Fla.2013Background
- Aceto is an international distributor of pharmaceutical ingredients and Quatrefolic is a patented ingredient licensed to Aceto for U.S. marketing.
- Aceto asserts it has exclusive U.S. rights to Quatrefolic and its trademarks under a Gnosis exclusive distribution agreement.
- Defendants plan to launch a competing Prenatal line (Prenal) and sought Sub-Licensee rights to Quatrefolic products and the Quatrefolic Mark without Aceto’s approval.
- Pernix held a semi-exclusive supply agreement allowing sub-licensing, with Aceto retaining direct supply obligations and approval rights.
- Defendants allegedly obtained Quatrefolic products from Pernix and promoted Prenal with unauthorized use of the Quatrefolic Mark, prompting a cease-and-desist, and this suit followed.
- The Court granted in part and denied in part; Gnosis joinder questioned under Rule 19, and Pernix joinder denied; Aceto may amend.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Should Gnosis be joined under Rule 19(a)? | Aceto argues Gnosis must be joined as owner of the Quatrefolic Mark. | Defendants contend Gnosis is not necessary if Aceto has exclusive rights. | Gnosis must be joined or there must be an involuntary plaintiff/assignee mechanism. |
| Is Pernix a required party under Rule 19(a)? | Pernix rights affect sublicensing and supply; joinder not required. | Joinder unnecessary since Pernix’s rights are not at issue for complete relief. | Pernix not required; joinder denied. |
| Do Counts I, II, and V have standing to proceed without Gnosis? | Exclusive licensee status provides standing to enforce the mark. | Standing to sue under Lanham Act requires registrant or assignee; Aceto lacks assignment. | Counts I, II, and V dismissed for lack of standing without prejudice. |
| Does FDUTPA allow a non-consumer (Aceto) to sue? | Aceto is a legitimate business enterprise and may sue under FDUTPA. | Only consumers may sue monetary damages under FDUTPA. | Count IV survives; Aceto may plead as legitimate business enterprise. |
| Is Count VI unjust enrichment viable against an intermediary (Pernix) context? | Unjust enrichment can lie where benefit passes through an intermediary. | Need direct benefit to defendant; no direct conferral from Aceto. | Count VI survives; sufficient allegation of benefit conferred through intermediary. |
Key Cases Cited
- Independent Wireless Tel. Co. v. Radio Corp. of Am., 269 U.S. 459 (U.S. 1926) (exclusive licensee may need patent owner as party; joinder often required)
- Abbott Laboratories v. Diamedix Corp., 47 F.3d 1128 (Fed. Cir. 1995) (standing to sue typically requires owner; exclusive licensee context varies)
- Camp Creek Hospitality Inns, Inc. v. Sheraton Franchise Corp., 139 F.3d 1396 (11th Cir. 1998) (exclusive rights inquiry for standing; transfer vs. assignment analysis)
- Waterman v. Mackenzie, 138 U.S. 252 (U.S. 1891) (rights transfer and classification of license vs. assignment depend on legal effect)
- Textile Productions, Inc. v. Mead Corp., 134 F.3d 1481 (Fed. Cir. 1998) (exclusive licensee standing to sue third parties with patentee’s involvement discussed)
- Geberit AG v. Finance Inv. Co. (Bermuda) Ltd., 165 F.3d 526 (7th Cir. 1998) (exclusive licensee standing depends on license terms)