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FRINK AMERICA, INC. v. CHAMPION RD. MACH.

April 8, 1997

FRINK AMERICA, INC., Plaintiff,
v.
CHAMPION ROAD MACHINERY LIMITED, Defendant. CHAMPION ROAD MACHINERY LIMITED, Counter-Claimant, -v- FRINK AMERICA, INC., Counter-Defendant. FRINK AMERICA, INC., Plaintiff, -v- CHAMPION ROAD MACHINERY LIMITED, Defendant.



The opinion of the court was delivered by: MCAVOY

 I. BACKGROUND

 A. Facts:

 Corporate Evolution

 The common corporate lineage of the parties involved in this action dates back to 1945, when Melvin O. Simpson founded Combined Enterprises Limited, a holding company later to become known as Compro Limited ("Compro"). Compro eventually acquired three companies relevant to the present discussion. In 1958, Compro acquired Hamilton Gear and Machine Company ("Hamilton"), a manufacturer of industrial gearing. (Aff. of S. Paul Battaglia ["Battaglia Aff."], Ex. A at 1). Also in 1958, Compro purchased Eastern Steel Products ("Eastern"), located in Cambridge, Ontario. (Id. ; Aff. of Mark Turpin ["Turpin Aff."] P1). In 1961, Compro purchased plaintiff Frink America ("Frink America"), a company headquartered in Clayton, New York and engaged in the manufacture of highway and airport snow plows in the United States. (Battaglia Aff., Ex. A at 1; Turpin Aff. P 2). At the time Compro acquired Eastern, Eastern was manufacturing Frink snow plows in Canada, (id.), and in fact later became known as "Frink Canada."

 In 1973, the Simpson family founded Melson Incorporated ("Melson"), a private Arizona corporation, fifty-percent of the stock of which was held by Simpson's son, Melvin Jr., and fifty-percent by the Dorothy C. Simpson Family Trust of Scottsdale, Arizona. (Battaglia Aff., Ex. A at 1). During the 1970's, Melson became the common owner of the outstanding stock of both Compro and Frink America. (Id. ; Aff. of Louis Montante ["Montante Aff."] P 3).

 The "Windrow" Plan

 By the early 1990's, Melson and its subsidiaries apparently began suffering considerable losses. In an effort to make Frink and Compro more competitive in the snow plow business, Melvin Sr. and his son Scott developed a plan ("Operation Windrow") that called for the combining of Compro and Frink America's manufacturing operations at one location in the United States. (Battaglia Aff. P 8 and Ex. A at 4). Before this consolidation occurred, however, the continuing financial losses forced Melson to cease Frink America's operations in Clayton and shift all production to the Eastern (Frink Canada) facility in Cambridge. (Battaglia Aff. P 9, Ex. A at 4; Turpin Aff. P 3). As part of this move, in August of 1991, certain of Frink America's product drawings, plans, jigs, machine tools and other items (the "intellectual property") were transferred to the Eastern facility so that Frink Canada could satisfy Frink America's outstanding obligations. The legal consequences of this transfer are the focus of this proceeding. *fn1"

 Compro's financial problems persisted, as did friction within the ranks of Melson and Compro's management. (Battaglia Aff. P 11-12). As a result, defendant contends, Compro's chief financial backer, the Royal Bank of Canada (the "Royal Bank"), forced Compro into a Canadian bankruptcy proceeding sometime in late 1991. (Id, P 11). Frink America followed suit in the summer of 1992 by filling for Chapter 11 protection in the Northern District of New York.

 Prior to filing Chapter 11, however, Frink America's manufacturing operations were recommenced at the Clayton facility. (Id. ; Turpin Aff. P 4). Thus, the intellectual property "loaned" to Frink Canada in connection with the failed Windrow operation was transferred from Cambridge back to the Clayton facility in June of 1992. (Battaglia Aff. P 13, Ex. C; Turpin Aff. P 5). This transfer additionally served a function in a larger scheme: since the Royal Bank actually was a creditor of both Compro and Frink America (Frink America having acted as guaranty on certain loans by the Royal Bank to Compro), the return of the intellectual property was part of an agreement *fn2" executed by the three parties which, plaintiff contends, was approved by the U.S. Bankruptcy Court in the Northern District. (Battaglia Aff. P 15 and Ex. B). *fn3"

 In October of 1992, Peat Marwick Thorne Inc. ("Peat Marwick") was appointed Compro's receiver in the Canadian bankruptcy proceeding. (Battaglia Aff. Ex. D at 1). Peat Marwick sold Compro's assets to 1004704 Ontario Inc., a corporation controlled by David Lowry. (Id. ; Compl. P 25). While Frink America was emerging from bankruptcy, Lowry transferred Compro's assets to an entity called Frink Environmental, Inc. ("FEI"), which the Royal Bank subsequently forced into bankruptcy in Canada. Ernst & Young Ltd. ("Ernst & Young") was appointed receiver of FEI in September of 1994. (Affidavit of Brian William Gray ["Gray Aff."] Ex. 1). Finally, as receiver, Ernst & Young sold FEI's assets to defendant Champion Road Machinery Limited ("Champion") ; defendant allegedly came to possess the intellectual property of Frink America by way of this final transfer. (Gray Aff. Ex. 6).

 The Prior Lawsuit

 Plaintiff alleges that in 1995, Champion began manufacturing snow removal equipment with FEI's assets. Although Champion owns the rights to the Frink trademark in Canada, plaintiff contends that Champion began marketing snow removal equipment in the United States in direct competition with Frink America. (Pl. Mem. of Law at 8). These marketing efforts allegedly included distributing product catalogs and quotations to U.S. customers, and making unsupported claims to such customers that Frink America was in financial straits and would not be able to fill its warranty obligations. (Id.). In addition to the unlawful use of the Frink trademark, plaintiff alleges that equipment in the Champion product line was identical to the equipment previously manufactured exclusively by Frink America based upon the American designs and plans. (Id.).

 On June 8, 1995, plaintiff filed suit in the Ontario Court of Justice (General Division) against the Royal Bank and Champion. (Gray Aff. Ex. 10). The lawsuit sought injunctive relief against Champion for the use of plaintiff's intellectual property, and damages against the Royal Bank for breach of contract, breach of confidentiality, conversion and breach of patent. (Id.). The parties subsequently consented to a dismissal of the action, (id. Ex. 14), but plaintiff contends that the dismissal was intended only against Royal Bank, and that Champion was dismissed as a defendant inadvertently. (Id. Ex. 15).

 B. Procedural History:

 Plaintiff filed its first action in this Court on March 22, 1996 alleging, inter alia, trademark infringement. Plaintiff filed the present action on September 25, 1996. This Complaint contains five claims: (1) misappropriation of trade secrets and conversion; (2) tortious interference with business relations; (3) trade dress infringement; (4) unfair competition; and (5) copyright infringement under Canadian law. While the present motion was pending, the two actions were consolidated by Order of Magistrate Judge Daniel Scanlon, Jr. dated March 21, 1997.

 Defendant filed this motion on December 23, 1996, and moves for dismissal of the member case on three grounds: (1) forum non conveniens ; (2) failure to state a claim upon which relief may be granted, based upon the doctrine of international comity; and (3) ...


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