1:20-cv-03395
E.D.N.YSep 24, 2024Background
- Full Circle United and Eric Pavony have run "Brewskee-Ball" leagues and events using the SKEE-BALL® trademark under a 2014 License Agreement with Skee-Ball, Inc., which was later assigned to Bay Tek Entertainment.
- Bay Tek and Full Circle discussed the "Skee-Ball Live" project, with Bay Tek building ten custom lanes and trademarking the phrase "Skee-Ball Live." No further custom lanes were delivered.
- Disputes over use of the mark, manufacturing of custom lanes, and Full Circle's attempt to use a third-party manufacturer led to litigation.
- Full Circle brought claims against Bay Tek, including for breach of contract, breach of a "Revenue Share Agreement," and tortious interference; Bay Tek counterclaimed, including for trademark-related violations and breach of contract.
- Full Circle moved to amend its complaint again to add fraud and trademark cancellation claims; Bay Tek moved for summary judgment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Leave to amend complaint | Sought to add fraud, trademark cancellation, and additional breach claims based on new facts | Amendments would be futile under New York law and unsupported by facts | Denied; amendment futile—claims could not survive a motion to dismiss |
| Breach of License Agreement (¶4.2, ¶5.3, ¶7.2, best efforts) | Bay Tek prevented use of "Skee-Ball Live," competed with, and failed to support plaintiff's events | No written approval for use; did not compete or act in bad faith against Full Circle | Summary judgment for Bay Tek on most claims; issue of good faith under best efforts clause goes to jury |
| Breach of Revenue Share Agreement | Oral contract existed for more machines/profits | No definite, enforceable oral contract—terms too indefinite | Summary judgment for Bay Tek; no enforceable contract |
| Tortious interference | Bay Tek interfered with deals for custom lanes and with investors | Withholding approval was within Bay Tek’s rights, no malice or improper means | Summary judgment for Bay Tek; no tortious conduct |
| Full Circle’s lost profits | Lost profits recoverable as consequential damages | Expert's methodology speculative; damages not foreseeable | Issue of lost profits must go to the jury |
| Bay Tek's breach of contract claims | Full Circle violated mark usage terms and best efforts clauses | Denies improper use, disputes control over some content | Only breach proven is unapproved streaming; other issues go to trial |
| Declaratory judgment (termination) | -- | License is terminable at will / for incurable breach | Denied; contract's termination provisions are exclusive and not met |
Key Cases Cited
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (standard for summary judgment)
- Lucente v. Int'l Bus. Machs. Corp., 310 F.3d 243 (futility standard for leave to amend)
- Bloor v. Falstaff Brewing Corp., 601 F.2d 609 (best-efforts contractual obligations)
- Schonfeld v. Hilliard, 218 F.3d 164 (standard for proof of lost profits)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (trademark use on websites by owners vs. third parties)
- Compania Embotelladora Del Pacifico, S.A. v. Pepsi Cola Co., 976 F.3d 239 (contract not terminable at will unless expressly stated)