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Funnelcap, Inc. v. Orion Indus.

United States District Court for the District of Delaware

April 10, 1975

Civil Action No. 74-217


 [***51]   [*940]  STAPLETON, District Judge:

The complaint in this case asserts claims of patent infringement, deceptive trade practices, unfair competition, and common law trademark infringement. Defendant has moved to transfer this case to the Central District of California pursuant to 28 U.S.C. § 1404(a), or, in the alternative, to dismiss the case for lack of jurisdiction. Plaintiff, in addition to opposing the transfer motion, has countermoved to add a defendant, to enjoin an action which has already been commenced by the proposed new defendant in the Central District of California, to strike certain of plaintiff's affidavits, and for an award of attorneys' fees for the work necessitated by defendant's transfer motion.


 [**2]  Plaintiff, FunnelCap, Inc., (hereinafter "FunnelCap") commenced this action on October 21, 1974. At the time, the sole named defendant was Orion Industries, Inc. (hereinafter "Orion"), a Delaware corporation. The complaint charged that "defendant, through its Hollywood Accessories Division, has heretofore made, used, and/or sold funnel devices . . . which infringe [plaintiff's] letters patent. . . ." 1

On January 21, 1975, an affidavit was filed by Alan Krauss, the President of Orion. In his affidavit, Mr. Krauss alleged that, on June 1, 1973, Orion sold its Hollywood Accessories Division to Cal Custom Accessories, Inc. 2 (hereinafter "Cal Custom"). Accompanying the affidavit was a purported agreement of sale, dated June 30, 1973. 3 In a supplementary affidavit filed the same day as the Krauss affidavit, Frederick Gibbons, identified as the President of Hollywood, asserted that Hollywood Accessories was a "division of Cal [**3]  Custom Accessories, Inc." 4 Shortly thereafter, FunnelCap moved to amend its complaint to add Cal Custom Accessories, Inc. as a party defendant.

Rule 15, F.R.C.P. dictates that leave to amend pleadings be freely given when "justice so requires." That the interests of justice require allowing the amendment in this case can best be understood from a sketch of the circumstances which led FunnelCap to sue Orion  [*941]  in the first place. Plaintiff FunnelCap has submitted uncontradicted affidavits from its President, Vice-President, as well as [**4]  its attorneys, along with accompanying documents, which tend together to establish that Hollywood Accessories has in the past held itself out as a division of Orion Industries and continues to do so. Hollywood Accessories, according to the affidavits and documents, was so identified in a March, 1971 letter from its President to FunnelCap inquiring about samples and a license 5 [**5]  and was so identified by Hollywood sales representatives at an October, 1973 trade convention, 6 as well as in an October 1974 trade journal, 7 as well as in Hollywood Accessories' 1974 and 1975 catalogues. 8 Moreover, according to plaintiff's affidavits, products of Hollywood Accessories currently being marketed in Delaware and Illinois bear labels identifying Hollywood as a "division of Orion Industries, Inc." 9 Further, the initial notice of infringement sent by FunnelCap's attorney in October of 1973 was addressed to "Hollywood Accessories, Division of Orion Industries," and despite a number of subsequent  [***52]  contacts between the parties, Orion had never, prior to the time of suit, advised FunnelCap that Hollywood had at any point ceased to be a division of Orion. 10

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392 F. Supp. 938 *; 1975 U.S. Dist. LEXIS 12913 **; 186 U.S.P.Q. (BNA) 50 ***

FUNNELCAP, INC., Plaintiff, v. ORION INDUSTRIES, INC., Defendant


infringement, Accessories, venue, patent

Civil Procedure, Pleadings, Amendment of Pleadings, Leave of Court, General Overview, Venue, Motions to Transfer, Preliminary Considerations, Special Venue, Copyright Law, Civil Infringement Actions, Jurisdiction, Patent Law, Jurisdiction & Review, Personal Jurisdiction & Venue, Federal Venue Transfers, Convenience Transfers