Curtis Evans v. PlusOne Sports, LLC

UNPUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 16-1672
CURTIS A. EVANS; WHIPGOLF, LLC,
Plaintiffs - Appellants,
v.
PLUSONE SPORTS, LLC, a Massachusetts limited liability company; ALEX
VAN ALEN,
Defendants - Appellees.
No. 16-1720
CURTIS A. EVANS; WHIPGOLF, LLC,
Plaintiffs - Appellees,
v.
PLUSONE SPORTS, LLC, a Massachusetts limited liability company; ALEX
VAN ALEN,
Defendants - Appellants.
Appeals from the United States District Court for the Eastern District of Virginia, at
Alexandria. Claude M. Hilton, Senior District Judge. (1:15-cv-00683-CMH-TCB)
Argued: January 25, 2017 Decided: April 26, 2017
Before GREGORY, Chief Judge, and THACKER and HARRIS, Circuit Judges.
Affirmed by unpublished opinion. Judge Harris wrote the opinion, in which Chief Judge
Gregory and Judge Thacker joined.
ARGUED: Laurin Howard Mills, LECLAIR RYAN, PC, Alexandria, Virginia, for
Appellants/Cross-Appellees. Bernard Joseph DiMuro, DIMUROGINSBERG, P.C.,
Alexandria, Virginia, for Appellees/Cross-Appellants. ON BRIEF: Jonathan R. Mook,
DIMUROGINSBERG, P.C., Alexandria, Virginia, for Appellees/Cross-Appellants.
Unpublished opinions are not binding precedent in this circuit.
2
PAMELA HARRIS, Circuit Judge:
The parties to this breach of contract dispute are in the business of selling sports
equipment for the new sport of “fling golf” or “throw golf.” In 2014, PlusOne Sports,
LLC, and its owner, Alex Van Alen, learned that Curtis Evans was seeking a patent for a
“throw golf stick” – the throwing apparatus that is the key piece of equipment in this
modified version of golf. Van Alen reached out to Evans, and after negotiations, the
parties signed a “Term Sheet” roughing out an agreement under which PlusOne would
utilize Evans’s patent in exchange for royalty payments. But although the Term Sheet
provided that the parties would “work in good faith” toward a “binding” licensing
agreement, negotiations broke down, and the contemplated final agreement was never
executed.
When PlusOne, located in Massachusetts, refused to make the royalty payments
outlined in the Term Sheet, Evans sued for breach of contract in federal district court in
Virginia, home to Evans and his company, WhipGolf, LLC. The district court granted
summary judgment to PlusOne, applying Virginia law and finding that the Term Sheet
was not a binding contract. We now affirm that holding. Although the parties dispute
whether Virginia or Massachusetts law applies, the Term Sheet is unenforceable under
the law of either state as a provisional “agreement to agree.” We also find that the district
court properly granted summary judgment to Evans on PlusOne’s counterclaims against
him. Accordingly, we affirm the district court’s judgment in all respects.
3
I.
A.
To play “throw golf” or “fling golf,” 1 participants use a “stick” similar to a
lacrosse stick – rather than the standard set of golf clubs – to “fling” a golf ball around a
standard golf course; once the ball has advanced to the green, players may use the end of
the stick to putt the ball into the hole. Throw golf incorporates many of the rules of
traditional golf. But unlike traditional golf, throw golf allows the inexperienced to play,
given that little practice is needed to throw a golf ball down a fairway.
Both Evans and Van Alen were early entrants to the field, and each independently
conceived of and developed their respective versions of throw golf and throwing sticks.
Evans, for his part, began work in Virginia in 2011 on a prototype of his throwing
apparatus, and in 2012 filed a provisional application with the United States Patent and
Trademark Office (“USPTO”). A year later, Evans filed a patent application; published
in May of 2014, it was that patent application that caught the attention of Van Alen and
brought the parties together.
Meanwhile, Van Alen had himself been working in Massachusetts on a throwing
device that he called the “FlingStick,” used to play a game he termed “FlingGolf.” After
forming PlusOne in Massachusetts, Van Alen filed a provisional application for the
FlingStick in 2013 and a patent application in 2014. PlusOne began selling the
1
The parties have adopted different names for this new sport. To avoid confusion
with the trademarked term “FLINGGOLF,” we will refer to the sport as “throw golf.”
4
FlingStick in July of 2014, and to avoid the possibility of a dispute over Evans’s earlier
patent application, it contacted Evans to discuss a licensing agreement.
Discussions began in August of 2014 and were in full swing by September and
October. The parties communicated primarily by phone and email, but also met once in
person over a game of throw golf in Virginia, using PlusOne’s FlingStick. During these
negotiations, PlusOne shared information with Evans regarding the FlingStick, including
sample products, projected earnings, and a marketing plan. Unbeknownst to PlusOne,
Evans was communicating simultaneously with a mechanical engineer, to whom he
provided pictures of the FlingStick, along with product specifications, in an effort to
develop a competing throwing apparatus.
On November 2, 2014, after exchanging several drafts, the parties executed the
Term Sheet that is the basis for Evans’s breach of contract claim. The four-page
document lays out certain terms for a non-exclusive licensing agreement, under which
PlusOne would utilize Evans’s patent to sell the FlingStick, a “Licensed Product,” in
exchange for the payment of royalties. J.A. 285. Royalties are set at “7.5% of gross
sales” for the years from November 1, 2014 to November 1, 2016 – an initial period
during which PlusOne would be the only licensee – and range from 5% to 7%, depending
on the number of sales, for “each year after Nov. 1, 2016.” J.A. 284. The Term Sheet
does not define “gross sales” or specify a time period for the contemplated license – that
is, the number of “year[s] after Nov[ember] 1, 2016” during which PlusOne would be
required to pay royalties to Evans. Id. But for each year during which the license was in
5
effect, PlusOne would be required to make a minimum royalty payment of $10,000 by
January 5.
The Term Sheet also outlines other contemplated terms, including certain
covenants and default provisions, restrictions on assignment rights, and clauses covering
acceleration of payments, confidentiality, arbitration, and choice of law. Several of those
provisions, however, are either rudimentary or altogether lacking in content. The
arbitration clause, for example, appears to be a placeholder, stating only: “Arbitration
clause, attorneys’ fees and costs to party prevailing in event of breach.” J.A. 287.
Similarly, as to severability, the Term Sheet leaves space for a “standard severability
provision.” Id.
Critically, the Term Sheet closed with the following: “The undersigned parties
agree to work in good faith to record the terms of this Term Sheet in a binding Non-
Exclusive License Agreement.” Id. And following execution of the Term Sheet, the
parties indeed began to negotiate and draft a binding licensing agreement. Those
negotiations stalled, however, when the parties could not agree on new terms not
previously included in the Term Sheet. Evans prepared a twenty-page draft that added
several new provisions and sought to fill in some of the Term Sheet’s gaps, providing a
definition of “gross sales,” specifying a term (twenty years) for the license, and spelling
out a detailed arbitration clause. PlusOne objected to many of these terms, including the
twenty-year license period (which, it argued, could extend beyond the term of Evans’s
6
patent) and the calculation of royalties without an offset for any licensing fees paid by
PlusOne to other parties.
Negotiations further deteriorated when Evans revealed that immediately after
executing the Term Sheet, he had filed a design patent application – seeking legal
protection for a design that PlusOne believed to be a copy of its own product. Unable to
bridge their differences, the parties reached an impasse in late November of 2014, and a
final licensing agreement was never executed.
Nonetheless, on January 1, 2015, Evans emailed PlusOne, demanding the annual
minimum royalty payment of $10,000 described in the Term Sheet. When PlusOne
refused to make the payment and officially terminated any further negotiations, Evans
declared PlusOne in breach of the Term Sheet and subsequently invoked the Term
Sheet’s acceleration clause, demanding that PlusOne pay $50,000 to cure the alleged
default.
During this same period, Evans was keeping close watch on PlusOne’s
“FLINGGOLF” and “FLINGSTICK” trademark applications, filed in 2013. As part of
the trademark registration process, an applicant must file a “statement of use” to verify
that its trademark is being used in commerce. See 15 U.S.C. § 1051(d). But PlusOne
failed to file the requisite statement, and when the USPTO notified PlusOne that it had
two months to petition to revive its application for the marks, PlusOne overlooked that
filing, as well. Evans, on the other hand, did not miss a thing, and contacted his attorney
in January 2015 to inquire about “pick[ing] up” the marks that PlusOne seemed to have
7
abandoned. J.A. 1805. Just after PlusOne’s deadline for petitioning to revive its
application expired, Evans filed to register the “FLINGGOLF” and “FLINGSTICK”
marks himself. In his application, Evans declared both that he had a “bona fide intention
to use” those marks in commerce and that “no other person has the right” to do so. J.A.
1872. Just a few days later, PlusOne filed new trademark applications and subsequently
initiated proceedings in the USPTO to oppose Evans’s applications.
B.
Evans and his company, WhipGolf, filed suit against PlusOne and Van Alen for
breach of the Term Sheet, seeking damages that included the minimum royalty payment.
PlusOne counterclaimed, challenging Evans’s applications for the “FLING” marks and
his alleged “deceptive business practices” throughout the negotiations. J.A. 203.
The district court granted summary judgment to PlusOne on Evans’s claim for
breach of contract. Evans v. PlusOne Sports, LLC, No. 1:15-CV-683, 2016 WL 2901553
(E.D. Va. May 16, 2016) (unpublished). The court began by resolving the parties’
dispute over choice of law, holding that Virginia rather than Massachusetts law should
govern. Applying Virginia choice of law principles, see Seabulk Offshore, Ltd. v. Am.
Home Assurance Co., 377 F.3d 408, 418 (4th Cir. 2004) (in diversity action, federal court
applies choice of law rules of state in which it sits), the court determined that the parties’
dispute turned on contract performance, not validity, so that the law of the place of
performance should apply. That place was Virginia, the district court concluded, given
8
that licensing fee payments would have occurred in that state, as well as the delivery of
sample products and certain business information to Evans.
The court then turned to the question at the heart of Evans’s breach of contract
claim: whether the Term Sheet constituted a binding and enforceable contract. Under
Virginia law, the district court explained, “agreements to agree” are not binding
contracts. And a document that refers to the parties’ intent to draw up a future, more
formal contract is treated as “strong evidence” that the parties “did not intend the
previous negotiations to amount to an agreement which is binding.” Evans, 2016 WL
2901553, at *2 (quoting Cyberlock Consulting, Inc. v. Info. Experts, Inc., 939 F. Supp. 2d
572, 580 (E.D. Va. 2013), aff’d, 549 F. App’x 211 (4th Cir. 2014)). That principle, the
court found, applied squarely to the Term Sheet, which closed by providing that “[t]he
undersigned parties agree to work in good faith to record the terms of the Term Sheet in a
binding Non-Exclusive License Agreement,” and thus indicated that the Term Sheet itself
was not intended as a binding contract. Evans, 2016 WL 2901553, at *2; J.A. 287.
Moreover, the court reasoned, the Term Sheet failed to “incorporate all the material terms
of a binding agreement,” in light of the “informality, imprecision, and provisional nature”
of its language. Evans, 2016 WL 2901553, at *2. Accordingly, the district court
concluded that the Term Sheet is an unenforceable “agreement to agree” that cannot give
rise to a breach of contract claim. Id.
9
The court next considered PlusOne’s counterclaims, granting summary judgment
to Evans on all three. 2 First, PlusOne alleged slander of title arising from Evans’s
“FLING” trademark applications, claiming that Evans made false statements to the
USPTO when he declared that he had a bona fide intent to use the marks and that nobody
else had such a right. The court rejected that claim, emphasizing that PlusOne had
produced no evidence that the complained of statements actually were false, and – given
Evans’s consultation with two attorneys before filing his applications – no evidence that
they were made with malice, both essential elements of a slander of title claim.
Also in connection with Evans’s trademark applications, PlusOne sought a
declaratory judgment that it did not intentionally abandon its applications for the
“FLING” marks. The district court explained, however, that under both the Lanham Act,
see 15 U.S.C. § 1051(d), and USPTO rules, PlusOne’s “subjective intent” in abandoning
its applications “is not relevant.” Evans, 2016 WL 2901553, at *3. Instead, PlusOne’s
“failure to make certain showings, or to request extensions . . . results in automatic
abandonment regardless of intent.” Id.
Finally, PlusOne alleged that Evans violated Massachusetts General Laws Chapter
93A by engaging in “unfair methods of competition and unfair and deceptive business
practices,” see Mass. Gen. Laws ch. 93A §§ 2 & 11 – specifically, by negotiating in bad
2
In its counterclaim, PlusOne also raised four counts in direct opposition to
Evans’s breach of contract claim. The district court dismissed those counterclaims as
moot after it determined that there was no enforceable contract and granted summary
judgment to PlusOne on the breach of contract claim.
10
faith, “appropriat[ing]” the FlingStick design, and “maliciously” filing his applications
for the “FLING” marks. J.A. 232–33. But a claim may be asserted under Chapter 93A,
the court observed, only when the allegedly unfair conduct occurs “primarily and
substantially” in Massachusetts. Evans, 2016 WL 2901553, at *3 (quoting Mass. Gen.
Laws ch. 93A § 11). Given that the conduct in question was committed by Evans, who
resided in Virginia and had contact with Massachusetts only via email and telephone, the
court held that PlusOne could not prove a violation of Chapter 93A.
This timely appeal and cross-appeal followed.
II.
A.
We review de novo the district court’s grant of summary judgment, viewing the
evidence in the light most favorable to the nonmoving party and drawing all reasonable
inferences in its favor. Poindexter v. Mercedes-Benz Credit Corp., 792 F.3d 406, 409
(4th Cir. 2015). Summary judgment is appropriate when “there is no genuine issue as to
any material fact and the moving party is entitled to judgment as a matter of law.” Fed.
R. Civ. P. 56(a).
B.
We begin with Evans’s breach of contract claim, on which the district court
awarded summary judgment to Van Alen and PlusOne. Evans argues that the district
court erred at the outset by applying Virginia law, which Evans contends is especially
11
hostile to preliminary agreements. Because the dispute in this case is fundamentally
about contract validity, Evans asserts, Virginia choice of law principles point not to the
place of performance but to the place of contract formation – here, to Massachusetts,
where Van Alen placed the second and final signature on the Term Sheet and where,
according to Evans, the law is more favorable to the enforcement of preliminary
agreements.
We need not resolve this choice of law dispute. Under either Virginia law or
Massachusetts law, the outcome is the same: The Term Sheet is not a binding contract.
While there are differences between Virginia and Massachusetts law at the margins, this
is not a marginal case. The Term Sheet’s qualification that the parties would work
toward a subsequent “binding” agreement, J.A. 287, combined with its open-ended and
imprecise nature, render the Term Sheet unenforceable under both Virginia and
Massachusetts law.
In Virginia, as the district court explained, it is “well settled” that “agreements to
negotiate at some point in the future are unenforceable.” Navar, Inc. v. Fed. Bus.
Council, 784 S.E.2d 296, 300 (Va. 2016) (quoting Cyberlock Consulting, 939 F. Supp. 2d
at 578); see W.J. Schafer Assocs. v. Cordant, Inc., 493 S.E.2d 512, 515 (Va. 1997). And
– critically in this case – a document that refers to a “later, more formal agreement” and
commits the parties to negotiate toward that later agreement is presumed to be an
unenforceable “agreement to agree.” Virginia Power Energy Mktg., Inc. v. EQT Energy,
LLC, No. 3:11cv630, 2012 WL 2905110, at *4 (E.D. Va. July 16, 2012) (unpublished);
12
see Navar, 784 S.E.2d at 300. That is precisely what the final sentence of the Term Sheet
does, and the district court properly construed the Term Sheet as an “agreement to agree”
rather than a valid contract. Indeed, even Evans does not dispute that the Term Sheet is
unenforceable under Virginia law.
Instead, Evans argues that the result would be different under Massachusetts law.
But Massachusetts law has more in common with Virginia law than Evans suggests.
Most fundamentally, the bottom line is the same: In Massachusetts as in Virginia, “[a]n
agreement to reach an agreement is a contradiction in terms and imposes no obligation on
the parties thereto.” Rosenfield v. U.S. Trust Co., 195 N.E. 323, 326 (Mass. 1935). And
in distinguishing an unenforceable “agreement to agree” from a binding contract,
Massachusetts law makes use of the exact same presumption as Virginia law, affording a
“strong inference” against enforceability of a document that includes “language looking
to execution of a final written agreement.” Goren v. Royal Invs. Inc., 516 N.E.2d 173,
175 (Mass. App. Ct. 1987). That “strong inference” is warranted here, id., where the
Term Sheet expressly contemplates that the parties will “work in good faith” toward a
future agreement – underscoring the ongoing nature of negotiations – and that this future
agreement will be “binding,” in seeming contrast to the Term Sheet itself, J.A. 287.
It is true, as Evans argues, that under Massachusetts law, this inference may be
overcome when the terms of a document are “sufficiently complete and definite” that the
parties appear to have intended to be bound. Duff v. McKay, 52 N.E.3d 203, 208–09
(Mass. App. Ct. 2016) (enforceable agreement requires “terms sufficiently complete and
13
definite” and “a present intent of the parties . . . to be bound”); see Goren, 516 N.E.2d at
175 (“If [] the parties have agreed upon all material terms, it may be inferred that the
purpose of a final document which the parties agree to execute is to serve as a polished
memorandum of an already binding contract.”). But here again, the district court’s
analysis under Virginia law carries over to Massachusetts law, as well. As the district
court observed, the non-binding nature of the Term Sheet is evidenced not only by the
parties’ commitment to “work in good faith” toward a “binding” agreement, but also by
the Term Sheet’s failure to “incorporate all the material terms” of an enforceable
contract. Evans, 2016 WL 2901553, at *2.
Evans disagrees with the district court’s assessment, arguing that the primary
“sticking points” in negotiations – the royalty rate and whether the FlingStick would be a
licensed product – were addressed in the Term Sheet. Appellant Br. at 32–33 & 33 n.8.
But the fact that some key points are resolved by a preliminary document does not mean
that other issues are immaterial. And here, several of the terms left open in the Term
Sheet are indeed material, going well beyond the “subsidiary matter[s]” that “may, on
occasion” be left to future bargaining by a binding contract under Massachusetts law.
See Goren, 516 N.E.2d at 176 (finding preliminary agreement binding where only
“subsidiary matter[s]” remained unresolved).
First, the Term Sheet fails to resolve a number of issues regarding the royalty
payments themselves, perhaps the most essential aspect of the contemplated agreement.
The Term Sheet does identify royalties as a designated percentage of gross sales, as
14
Evans emphasizes. But it does not indicate how “gross sales” are to be calculated, and as
PlusOne explains, that is not a matter free of doubt: “Gross sales” could be defined as the
total of all sales without any deductions, or as the total amount received by PlusOne after
deductions for discounts, returns, or rebates – and the choice could make a significant
difference in the sum total of royalty payments. Moreover, the parties disagreed as to
whether PlusOne would be entitled to an offset provision, allowing PlusOne to reduce its
royalty payments to Evans if it were required to pay licensing fees to other parties; when
PlusOne sought to add the offset to its post-Term Sheet draft agreement, Evans rejected
the new provision. Cf. Blomendale v. Imbrescia, 516 N.E.2d 177, 179 (Mass. App. Ct.
1987) (concluding that because “[t]he buyer introduced new elements which had not been
discussed, let alone agreed upon[,] . . . the parties did not intend to be bound by the
preliminary document”).
We doubt that the Term Sheet’s imprecision regarding royalty payments could be
resolved by recourse to “professional norms,” as Massachusetts law sometimes permits,
Duff, 52 N.E.3d at 209; indeed, PlusOne claims that the offset provision rejected by
Evans is itself an “industry standard.” J.A. 185. But even if it could, other open issues
would remain. Nowhere, for instance, does the Term Sheet specify the duration of the
proposed licensing agreement, so it is unclear for how long PlusOne would be required to
make royalty payments to Evans. That this key term remained unresolved by the Term
Sheet is reflected in the parties’ subsequent negotiations, as Evans added a twenty-year
term for the agreement and PlusOne rejected it because it could extend royalty payments
15
beyond the term of the patent. See Rosenfield, 195 N.E. at 326 (relying on later
negotiations between the parties to show that “many material terms had not been
settled”). Similarly, the Term Sheet “visibly reserve[s]” for the final agreement the
contents of an arbitration provision, with a placeholder reading only “[a]rbitration clause,
attorneys’ fees and costs to party prevailing in event of breach.” J.A. 287; see Targus
Grp. Int’l, Inc. v. Sherman, 922 N.E.2d 841, 848 (Mass. App. Ct. 2010) (preliminary
writings are incomplete and thus non-binding where “participants visibly reserved their
commitment for the later documents”). An arbitration agreement can be essential to the
resolution of future disputes, but the Term Sheet leaves open virtually every essential
component of such an agreement, including under what circumstances arbitration may be
invoked, the applicable rules, and how an arbitrator is to be selected.
In short, we agree with the district court that in light of the “informality,
imprecision, and provisional nature” of the Term Sheet, that document “does not
incorporate all the material terms of a binding agreement.” Evans, 2016 WL 2901553, at
*2. To put it in terms of Massachusetts law, the Term Sheet simply left open too much
for it to be said that execution of a subsequent “binding Non-Exclusive License
Agreement,” J.A. 287, would be “hardly more than a formality,” Goren, 516 N.E.2d at
176 (quoting Coan v. Holbrook, 97 N.E.2d 649, 651 (Mass. 1951)). Accordingly, under
Massachusetts law as well as the Virginia law applied by the district court, the Term
Sheet is an unenforceable “agreement to agree,” and we affirm the district court’s award
of summary judgment to PlusOne and Van Alen on Evans’s breach of contract claim.
16
C.
We also affirm the district court’s award of summary judgment to Evans on
PlusOne’s counterclaims, the first two of which relate to Evans’s applications for
registration of the “FLINGGOLF” and “FLINGSTICK” marks. In its slander of title
claim, PlusOne focuses on two statements made by Evans in seeking registration: that
Evans had a “bona fide intention” to use the marks, and that to “the best of [his]
knowledge and belief, no other person has the right” to the marks. J.A. 1872. The
district court held that as to both statements, PlusOne failed to establish slander of title as
a matter of law, and we agree.
As the district court explained, to succeed on its slander of title claim, PlusOne
must show not only that Evans’s statements were false, but also that they were made
“with malice or in reckless disregard of the truth.” Poindexter, 792 F.3d at 411 (quoting
Wright v. Castles, 349 S.E.2d 125, 129 (Va. 1986)). But PlusOne has introduced no
evidence that Evans did not have a “bona fide intention” to use the “FLING” marks. On
the contrary, as the district court found, the record shows the opposite; when he filed his
declarations and soon thereafter, Evans was actively engaged in developing and
marketing a game and product nearly identical to those for which PlusOne sought
registration, and through WhipGolf, he had the capacity to make and distribute a product
that would bear the “FLING” marks at issue. Nor is there any record evidence that Evans
knew, at the time of his filing, that another person – PlusOne – had the right to the
“FLING” marks and declared otherwise with the requisite malice, or “wanton or willful
17
disregard” of PlusOne’s rights. See Poindexter, 792 F.3d at 411 (citation omitted). As
the district court emphasized, Evans consulted with two attorneys about whether he could
apply for the trademarks after PlusOne failed to file a timely statement of use. Evans was
advised that he could proceed if PlusOne abandoned its applications, and that is exactly
what he did, waiting until after PlusOne’s two-month period to revive its applications had
expired. Because PlusOne cannot establish that Evans knew of any falsity or displayed
reckless disregard for the truth of his statements, the district court properly awarded
summary judgment to Evans on PlusOne’s counterclaim for slander of title.
In its next counterclaim, PlusOne seeks a declaratory judgment that it did not
“intentionally abandon its applications” for registration of the “FLING” marks. J.A. 231.
The district court granted summary judgment to Evans on the ground that PlusOne’s
subjective intent is irrelevant to the abandonment of a trademark application, and again,
we agree. On this point, the Lanham Act is clear: “The failure to timely file a verified
statement of use . . . or an extension request” by itself results in “abandonment of the
application[.]” 15 U.S.C. § 1051(d)(4). Although an applicant who has missed a
deadline may petition to revive its application if the delay was unintentional, that petition
must be filed within two months of a notice of abandonment from the USPTO. See 37
C.F.R. § 2.66(a)(1). It is undisputed that PlusOne did not file a timely statement of use,
see 37 C.F.R. § 2.88(a)(1); did not file an extension request, see 37 C.F.R. § 2.89; and did
not petition to revive its applications by the two-month deadline of February 1, 2015, see
37 C.F.R. § 2.66(a)(1). As the district court explained, the result under the statutory and
18
regulatory scheme is “automatic abandonment [of the trademark applications] regardless
of intent,” rendering irrelevant PlusOne’s allegation that it inadvertently failed to file the
necessary documents. 3 Evans, 2016 WL 2901553, at *3.
Finally, PlusOne broadens its scope to allege that Evans’s general pattern of
dealings with it constituted unfair methods of competition and deceptive business
practices in violation of Massachusetts General Laws Chapter 93A. As the district court
explained, Chapter 93A requires that the allegedly unfair conduct occur “primarily and
substantially” in Massachusetts. Evans, 2016 WL 2901553, at *3; see Mass. Gen. Laws
ch. 93A § 11. Because that standard is not met here, we affirm the district court’s grant
of summary judgment to Evans on this last counterclaim, as well.
Under Chapter 93A, Massachusetts courts consider the facts in their totality in
deciding whether “the center of gravity of the circumstances” giving rise to a claim is
“primarily and substantially” in Massachusetts. Kuwaiti Danish Comput. Co. v. Dig.
Equip. Corp., 781 N.E.2d 787, 799 (Mass. 2003). The burden is on the defendant – here,
Evans – to show that the complained of actions did not occur primarily and substantially
within Massachusetts. See Auto Shine Car Wash Sys., Inc. v. Nice ‘N Clean Car Wash,
Inc., 792 N.E.2d 682, 685 n.7 (Mass. App. Ct. 2003) (citing Mass. Gen. Laws ch. 93A
3
On appeal, PlusOne contends that its subjective intent is relevant to a different
question: not whether it abandoned its trademark applications, but whether it abandoned
the marks themselves, through discontinued use. We need not address that issue, because
PlusOne’s counterclaim is limited to a request for a declaratory judgment that PlusOne
“did not intentionally abandon its applications for registration[.]” J.A. 231 (emphasis
added).
19
§ 11). But “[w]hen ‘virtually all the conduct that can be said to be unfair or deceptive’
occurs outside the Commonwealth, there can be no Chapter 93A liability.” Kenda Corp.,
Inc. v. Pot O’Gold Money Leagues, Inc., 329 F.3d 216, 236 (1st Cir. 2003) (quoting
Kuwaiti, 781 N.E.2d at 800).
Like the district court, we think this is just such a case. The gravamen of
PlusOne’s allegation is that Evans deceived PlusOne throughout the parties’ negotiations,
making false statements and assurances that allowed Evans to misappropriate PlusOne’s
product designs, and then compounded the offense by demanding licensing fee payments
to which he was not entitled and maliciously seeking to register the “FLING” marks as
his own. The “center of gravity” of those actions is not in Massachusetts. The allegedly
deceptive statements made to secure PlusOne’s design and competitive information were
made in Virginia, where Evans resided throughout negotiations. The allegedly wrongful
use of that information – including the manufacture of a competing product; the demand
for royalty payments; the attempt to register the “FLING” marks – all occurred in
Virginia. And while PlusOne argues that it received the deceptive statements in
Massachusetts and experienced its injury in that state, the place of loss is but one factor
considered under the “center of gravity” test. See Auto Shine, 792 N.E.2d at 685. Here,
it is not enough to shift the “center of gravity” of exclusively Virginia-based misconduct
to Massachusetts for purposes of a Chapter 93A claim.
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III.
For the foregoing reasons, the judgment of the district court is affirmed.
AFFIRMED
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