Majorsky v. Douglas
58 A.3d 1250
| Pa. Super. Ct. | 2012Background
- Former business partners Majorsky and Douglas formed PBK Promotional Products in 1985; RMU was a key PBK customer.
- Majorsky brought Douglas into PBK as a 50-50 partner; in 2001 they formed DJH with Natale, equal ownership, while Majorsky did administrative work for extra pay.
- 2003 disputes led to dissolution efforts; PBK and DJH structures diverged; Majorsky sued Douglas and Natale in the Prior Action in 2003.
- In the Prior Action, a Consent Verdict resolved disputes with Majorsky receiving $10,000; no formal dissolution agreement or release was executed.
- In 2007 Majorsky and spouse filed a Praecipe to Settle; the present action was filed in 2008 alleging Majorsky was still being frozen out and that DJH website misrepresented him.
- The present case sought Lanham Act relief, related Pennsylvania law claims, Runoff Agreement breach, a Dragonetti Act claim, and other theories; the trial court granted summary judgment for defendants on all counts.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does res judicata bar pre-Prior Action claims? | Majorsky argues pre-settlement actions are actionable; res judicata should not bar all claims. | Defendants argue res judicata bars those pre-settlement claims and related relief. | Waived on appeal; res judicata issue not preserved; summary judgment affirmed on other grounds. |
| Are Lanham Act and related claims (Counts I-IV, VI) viable given the website listing? | Majorsky asserts the website listing is literally false and causes confusion, supporting Lanham Act/related claims. | DJH argues no protectable trademark in a personal name and no secondary meaning; no likelihood of confusion. | Rejected; no genuine issue of material fact on secondary meaning; Lanham Act claims fail; civil conspiracy tied to Lanham Act also fails. |
| Did Runoff Agreement breach claims survive? | Douglas breached the runoff agreement by acting contrary to its terms; the agreement should bind the parties. | No binding contract; unsigned document and counteroffers indicate no meeting of the minds; oral contract not properly preserved. | Runoff Agreement not binding as written; any oral contract theory waived; no breach found. |
| Was the Dragonetti Act claim proper given joinder and settlement terms? | Misuse of civil proceedings by defendants could be shown by improper joinder and consent verdict. | Consent Verdict did not constitute a favorable termination; no Dragonetti Act violation. | Filed claims barred; trial court properly granted summary judgment; no Dragonetti Act liability. |
Key Cases Cited
- Tillery v. Leonard & Sciolla, LLP, 437 F. Supp. 2d 312 (E.D. Pa. 2006) (secondary meaning requires substantial public association; tests protect distinctive marks)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (S. Ct. 1992) (unregistered marks may be protected on secondary meaning and likelihood of confusion)
- AFL Philadelphia LLC v. Krause, 639 F. Supp. 2d 512 (E.D. Pa. 2009) (nonexclusive list of factors for secondary meaning; absence of one factor not fatal)
- Johnny Blastoff v. L.A. Rams Football Co., 188 F.3d 427 (7th Cir. 1999) (secondary meaning framework; submerged primary meaning standard)
- D’Elia v. Folino, 933 A.2d 117 (Pa. Super. 2007) (favorable termination under Dragonetti Act not met by consent/settlement)
- Electronic Laboratory Supply Co. v. Cullen, 712 A.2d 304 (Pa. Super. 1998) (Dragonetti Act applicability when underlying action terminates non-litigiously)
- Bannar v. Miller, 701 A.2d 242 (Pa. Super. 1997) (factors in determining a final termination under Dragonetti Act)