memorandum of law in support of snyder's motion for reconsideration

8/14/2019 Memorandum of Law In Support of Snyder's Motion for Reconsideration

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We respectfully submit that the Court has relied on

flawed and questionable authority to support its finding

that Plaintiff's claims asserting Civil liability for false

or fraudulent registration under 15 USC 1120, Wrongful

Seizure under 15 USC 1116(d)(11), Constitutional

violations under 18 USC 1983/Bivens, Abuse of process

under Virginia State Law and Conversion/Trespass to

Chattels under Virginia State Law are barred by claim

preclusion.

For the reasons set forth below, Plaintiffs' contend

that they have stated viable claims for relief under 15

USC 1120, 15 USC 1116(d)(11), 18 USC 1983/Bivens under

Federal Law, Abuse of process, and Conversion/Trespass to

Chattels under Virginia State Law, and request that the

Court amend its Order to permit them to proceed on those

causes of action and to amend any deficiencies in their

causes of action so they might be fully heard and decided

upon their merits after the parties have had an opportunity

to conduct discovery and investigate their claims.

II. PROCEDURAL BACKGROUND

This action was originally filed on December 8, 2008

[Docket, No. 1]. Without having been served with a

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Diane Von Furstenberg, (the 188 mark) in 1999. Am.

Compl. 51. On December 4, 2006, DVF filed the prior case

against Catherine Snyder under seal. Am. Compl. 17;

Compl., [Docket No. 1], Diane von Furstenberg Studio v.

Snyder, No. 1:06-cv-1356.

As pled in the FAC, DVF, in a sworn declaration,

overstated it's use of the Diane von Furstenberg mark on

goods when procuring the '188 registration. DVF, in sworn

declarations, overstated it's use of the Diane von

Furstenberg mark on goods in both it's five year and ten

year renewal applications.1 Am. Compl. 52,53,56,5 58. DVF

knew when it signed its declaration 's for the registration

and renewal of the '188 registration, the mark was not used

on all of the goods listed in the notice of allowance. Am.

Compl 54,59. DVF knew when it signed its declaration 's

for the registration of and renewal for the '188

registration, overstatement of the marks use on goods would

jeopardize the validity of the registration.2 These

knowingly incorrect allegations of current use constitute

fraud on the Trademark office, as material misstatements

made with the intent of inducing the Trademark office to

rely on them and to register the trademark in a manner

1 [EXHIBIT No. 1]2 [EXHIBIT No. 2]

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which was not justified by the facts of the matter. Am.

Compl. 66. A registration procured in the USPTO by false

or fraudulent declaration or representation, oral or in

writing, or by any false means constitutes fraud on the

USPTO, rendering the resulting registration void ab

initio, Put another way, having nolegalforce. Am. Compl.

13

Upon an ex parte hearing before this Court on December

7, 2006, DVF obtained a Temporary Restraining Order against

Catherine Snyder and a search and seizure order for her

place of business, which was her residence. Compl. 17;

Order Dec. 7, 2006, [Docket No. 17], Diane von Furstenberg

Studio v. Snyder, No. 1:06-cv-1356. DVF and Law

Defendant's submitted the '188 registration to assert the

Courts jurisdiction over ex parte seizure Orders under 15

USC 1116(d) of the Lanham. Act. Am. Compl.13; [Docket

No.1, 3 - 10, 17], Diane von Furstenberg Studio v. Snyder,

No. 1:06-cv-1356. Additionally, DVF and Law Defendant's

submitted the '188 registration with the December 4, 2006

Complaint as a basis for statutory damages in the amount $1

Million Dollars per registered mark. Am. Compl. 49 [Docket

No. 1], Diane von Furstenberg Studio v. Snyder, No. 1:06-

cv-1356.

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Although Law Defendants and Von Furstenberg

represented that they had thoroughly investigated Catherine

Snyder, they made a number of false statements to this

Court in their request for the seizure order and TRO. Am.

Compl. 19, 20. Examples of these false statements, which

Law Defendants and Von Furstenberg could readily have

verified, include allegations that Catherine Snyder and

unnamed defendant's were all part of common operation,

operating from various locations in Virginia and

distributing products mainly through a store. Am. Compl.

21; [Docket No. 8] Diane von Furstenberg Studio v. Snyder,

No. 1:06-cv-1356. Moreover, DVF and Law Defendants

alleged that if provided advance notice of an impending

legal action, Catherine Snyder would dispose of, or hide

evidence and ignore an order restraining assets, while

simultaneously draining her bank account. Am. Compl. 22;

[Docket No. 8, 10, 17] Diane von Furstenberg Studio v.

Snyder, No. 1:06-cv-1356. DVF and Law Defendant's failed

to inform the Court that it's investigation of Mrs. Snyder

found that the Snyder's de facto, had assets worth going

after.3 Dvf and Law Defendant's made these false

statements in an intentional effort to mislead the Court,

3 [EXHIBIT No. 3]

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by characterizing Mrs. Snyder as a fly by night, who if

given advanced notice of an impending legal action, would

likely flee the Court's jurisdiction. Am. Compl. 22; Fed.

R. Civ. P. 65(a)(1); [Docket No. 8, 10, 17] Diane von

Furstenberg Studio v. Snyder, No. 1:06-cv-1356. In

September 2006, Diane Von Furstenberg, on behalf of

defendant Von Furstenberg Studio, stated in a Wall Street

Journal interview it is her belief that Laws are created

to intimidate people [with the threat of litigation]. Am.

Compl. 45.

During the course of the raid, the attorneys for DVF,

acting on DVFs behalf, having been authorized to assist in

the execution of the search and seizure,4 took control of

the operation,5 and not only exceeded the scope of the

seizure order in the items they seized, but did so in front

of a reporter that they brought into the Snyders home.

Am. Compl. 25, 29, 33, 35-36. About five months after the

home invasion, the Snyder's learned that the women

stationed in front of their door on Dec. 8, 2006, was a

reporter for the New Yorker Magazine. Am. Compl. 29, 32,

47.

Richard Snyder was not named in the Complaint, nor

4 [EXHIBIT No. 4]5 [EXHIBIT No. 5] [EXHIBIT No. 6]

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was he mentioned in any way on the search and seizure

order.[Docket No. 1, 17] The attorneys for DVF, acting on

DVFs behalf, froze assets in a bank account in which

Richard Snyder held sole ownership and two bank accounts in

which Mr. Snyder held half ownership rights, which were not

subject to this Courts asset freeze. Am. Compl. 48.

[Docket No. 134] Diane von Furstenberg Studio v. Snyder,

No. 1:06-cv-1356.6

Shortly after entering the Snyders home Law Defendant

Lewin, knowing that the Snyders were not represented by

counsel and knowing that Mr. Snyder was not a party to the

action, informed Mr. Snyder that there was a hearing before

this Court on December 22, 2006 in that matter, but that

the Snyders need not attend, and encouraged Mr. Snyder to

contact Law Defendants quickly to resolve the matter. Am.

Compl. 42 [Docket No. 1, 17] Diane von Furstenberg Studio

v. Snyder, No. 1:06-cv-1356. Before leaving the Snyders'

home Law Defendants left a stack of papers, which were

required to be personally served, in the Snyders kitchen.

Am. Compl. 42

On September 10, 2007, this Court entered partial

summary judgment, finding liability as to the claims

6 [EXHIBIT No. 7]

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against Catherine and entering a permanent injunction, but

denying summary judgment as to contributory infringement

against Richard Snyder and setting the issue of willfulness

and damages for trial. Mem. Op., [Docket No. 79], Order,

[Docket No. 80], Diane von Furstenberg Studio v. Snyder,

No. 1:06-cv-1356.

On September 20, 2007, DVF moved to voluntarily

dismiss it's claims for willfulness and contributory

infringement. On September 24, 2007 This Court issued it's

Order dismissing DVF's claims of willfulness and

contributory infringement with prejudice. SeeMot.

Voluntarily Dismiss, [Docket No. 89]; Supplemental Br.

Supp., [Docket No. 90]; Order September 24, 2007, [Docket

No. 93], Diane von Furstenberg Studio v. Snyder, No. 1:06-

cv-1356. Upon the hearing on damages, judgment was entered

against Catherine Snyder for infringement in the amount of

$100,000.00. Order Oct. 23, 2007, [Docket No. 106], Diane

von Furstenberg Studio v. Snyder, No. 1:06-cv-1356.

On October 9, 2008 DVF issued a Garnishment Summons to,

inter alia,Navy Federal Credit Union. A garnishment

hearing was held on November 7, 2008. At the November 7,

2008 hearing DVF argued, because Virginia Code 34-1,

excludes liability arising from an intentional tort that

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Mrs. Snyder was not entitled to her Virginia Homestead

Exemption. This Court issued an Order on November 12,

2008. [Docket No. 134], Diane von Furstenberg Studio v.

Snyder, No. 1:06-cv-1356. The November 12, 2008 Order

held: (a) That Richard Snyder's interests in the Snyder's

Navy Federal Credit Union accounts, attached on December

08, 2006 and on October 9, 2008, respectfully, were not

subject to garnishment by DVF; (b) after reviewing this

Court's October 23, 2007 memorandum and opinion Order on

damages and taking into consideration the fact that DVF

voluntarily dismissed it's claims that Catherine Snyder had

acted willfully and in bad faith, the Court ruled that Mrs.

Snyder was entitled to her Homestead exemption and, (c)

This Court ordered Navy Federal Credit Union to pay DVF

$2,588.17 from account [x] and $858.25 from account [y].

IV. ARGUMENT

A. This Motion to Reconsider Is Proper Pursuant to Fed. R.Civ. P. 58(a), 59(e) & 6(a)

The Fourth Circuit has held that a Rule 59(e) motion

should be granted only in one of three circumstances: "(1)

to accommodate an intervening change in controlling law;

(2) to account for new evidence not available at trial; or

(3) to correct a clear error of law or prevent manifest

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injustice." Pacific Life Ins. Co. v. American Nat'l Fire

Ins. Co., 148 F.3d 396, 403 (4th Cir. 1998).

Every judgment and amended judgment must be set forth

on a separate document. Fed. R. Civ. P. 58(a)(1).

Judgment is entered for purposes of the Federal Rules of

Civil Procedure when it is set forth on a separate

document. Fed. R. Civ. P. 58(b)(2). The Fourth Circuit

has determined that entry of judgment is not completed

until it is recorded on the docket pursuant to Rule 58.

Albert L. Wilson v. Edward Murray, 806 F.2d 1232 (4th Cir.

1986) (citing Berman v. Schweiker, 1293 n. 8 (7th

Cir.1983); 6A Moore's Federal Practice p 58.05, at 58-234

(2d ed. 1983); 11 Wright & Miller, Federal Practice and

Procedure 2785 (1973)). Judgment was entered, pursuant

to Rule 58 on October 29, 2009 [Docket No. 52,53], so this

motion is appropriate procedurally. Furthermore, it is

timely, having been filed within the ten-day deadline set

in Fed. R. Civ. P. 59(e). See also, Fed. R. Civ. P. 58(a);

Fed. R. Civ. P. 6(a); seeAlston v. MCI Telecom Corp. 84

F.3d 705; 68 Empl. Prac. Dec. P 44 (4th Cir. 1996); Under

the Federal Rules of Civil Procedure, the ten-day time

period does not include Saturdays, Sundays, or legal hol-

idays. Fed. R. Civ. P. 6(a).

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Plaintiff respectfully contends that, in dismissing

the FAC with prejudice, the Court committed clear errors of

law, and that if the Order is not amended, the Snyders will

suffer a manifestly unjust result.

B. Plaintiff (Snyder) In the Current Action Was theDefendant In the Previous Infringement Action

The Oct. 9, 2009 Order dismisses Plaintiffs' claims

with prejudice because they are barred by the doctrine of

claim preclusion.. We respectfully submit that these

holdings are legally erroneous, as the Court bases it's

analysis of claim preclusion, on the flawed premise that

Catherine Snyder was the Plaintiff in the previous action,

when in fact, she was the Defendant in DVF's previous

infringement action.

As we demonstrate below, the general rule of claim

preclusion is that aplaintiffwho has prosecuted one

action against a defendant and obtained a valid final

judgment is barred by res judicata from prosecuting another

action against the same defendant where (a) the claim in

the second action is one which is based on the same factual

transaction that was at issue in the first; (b) the

plaintiff seeks a remedy additional or alternative to the

one sought earlier; and (c) the claim is of such a nature

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as could have been joined in the first action.

In it's October 9, 2009 Order, This Court relies on

Supreme Court and Fourth Circuit caselaw for it's claim

preclusion argument. However, in each of the cases cited

by the Court in it's analysis7, the plaintiff in the second

action was also the plaintiff in the first action.

For example, in Dionne v. City of Baltimore,William

Dionne prosecuted claims against the Mayor and City Council

of Baltimore in a state administrative proceeding.

Subsequent to the state administrative proceeding, Dionne

filed Section 1983 claims against the Mayor and City

Council of Baltimore in Federal Court. Thus, for the

purposes of claim preclusion; Dionne was the plaintiff in

the Federal 1983 [second] action and he was the plaintiff

in the state administrative [first] action. Dionne v. City

of Baltimore, 40 F.3d 677 (4th Cir. 1994).

Further, in Meekins v. United Transp. Union, 946 F.2d

1054, 1057 (4th Cir. 1991) the plaintiff in the second

action was the plaintiff in the first action, in Pueschel

7 See Dionne v. City of Baltimore, 40 F.3d 677 (4th Cir. 1994); Rivet

v. Regions Bank of La., 522 U.S. 470, 476 (1998) (quoting FederatedDep't Stores, Inc. v. Moitie, 452 U.S. 394, 398 (1981))Pueschel, 369F.3d at 355 (quoting In re Varat Enters., Inc., 81 F.3d 1310, 1316(4th Cir. 1996)); Peugeot Motors of Am., Inc. v. E. Auto Distribs.,Inc., 892 F.2d 355, 359 (4th Cir. 1989) (quoting Brown v. Felson, 442U.S. 127, 131 (1979)). Pittston Co. v. United States, 199 F.3d 694,704 (4th Cir. 1999); Martin v. Am. Bancorporation Ret. Plan, 4 07F.3d 643, 650 (4th Cir. 2005)

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the plaintiff in the second action was the plaintiff in the

first action, in Pittstonthe plaintiff in the second

action was the plaintiff in the first action, in Brownthe

plaintiff in the second action was the plaintiff in the

first action, and so forth.

Thus, the cases This Court cites when making it's

claim preclusion argument are inapposite here, because

Catherine Snyder was the not the plaintiff in the first

action, she was, in fact, the defendant in the first action.

Accordingly, it is County Fuel v. Equitable Bank

Corporationthat is analogous to the case at bar. In

Countythe Fourth Circuit held that a defendant in a

previous action, between the same parties, was not barred

under res judicata principles, by it's failure to assert

an available claim against the plaintiff as a basis for

affirmative relief in the prior litigation. Moreover, the

Court found that although it certainly lay with the

defendant in the previous action, to object to the

plaintiff's claim as a matter of defense and to join with

its objection a counterclaim for declaratory relief in the

prior litigation, the "better and decidedly majority view

[was] that the failure to interpose such an available

counterclaim does not, as a matter of res judicata, bar its

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subsequent assertion as an independent claim for relief.

County Fuel v. Equitable Bank Corporation832 F.2d 290 (4th

Cir. 1987) (citingRestatement (Second) Judgments Sec.

22(a)). A compulsory counterclaim rule, of course would

have not have the same effect. Where a compulsory

counterclaim exists, it provides an exception to the basic

rule of non-preclusion. Restatement (Second) Judgments Sec.

22(2)(a).

Additionally, the preclusive result would occur had

Mrs. Snyder asserted a counterclaimagainst DVF in the

first action and then attempted to bring a subsequent

action against DVF based on the same transaction forming

the basis of her counterclaim. Wright & Miller, 18 Federal

Practice and Procedure 4414.

Although claim preclusion bars aplaintiffin the

previous action from bringing a claim against the same

defendant in a new litigation resolved by a prior judgment,

the doctrine does not, however apply to all claims that

were raised or could have been raised by a defendant in the

prior litigation. Canon, 2007 WL 1555394, (E.D. Va. May 21,

2007) (citing Pittston Co. v. United States, 199F.3d 694,

704 (4th Cir. 1999)). In such a situation, the defendant's

claims in the subsequent action are not precluded unless a

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statute required the defendant to bring his claims in the

original action. "Apart from compulsory counterclaim

rules, . . . the traditional conclusion has been that

purely defensive use of a theory does not preclude a later

action for affirmative recovery on the same theory.

Restatement (Second) of Judgments 22 (1982)

(Restatement); Wright & Miller, 18 Federal Practice and

Procedure 4414. Moreover, in Painterthe 4th Circuit

held "absent a compulsory counterclaim rule, a pleader is

neverbarred by res judicata from suing independently on a

claim that he refrained from pleading as a counterclaim in

a prior action" Painter, 863 F.2d at 331 (4th Cir. 1988).

(see also8)

The rationale for the general rule applying to

defendants who elected not to assert a counterclaim in the

prior action is that "the defendant should not be required

to assert his claim in the forum or the proceeding chosen

by the plaintiff but should be allowed to bring suit at a

8Claim Preclusion or res judicata is limited in its application to

those matters which the parties under their pleadings and the issuejoined in the former action might legitimately have controverted andhave had decided by the verdict and judgment and has never been soextended as to compel one party having several different causes of

action against another to join them in one action because they were of

such a character that the law would permit their union. Quoting 'ATreatise On The Law of Judgments: Including The Doctrine of ResJudicata; Vol 2 by Henry Campbell Black'

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time and place of his own selection." Restatement 22

cmt. a.

The Oct. 9, 2009 opinion, argues "Plaintiffs do not

argue that they were in some way denied the opportunity to

raise their claims in the previous action." October 9, 2009

Order *14. With all due respect to this Court, had Mrs.

Snyder raised a claim in the previous action, by necessity

it would have been raised in the form of a counterclaim.

As set out above, the proper analysis for the purpose

of preclusion in the instant case, is whether a statute

required Mrs. Snyder to interpose the Snyder's current

claims in DVF's previous infringement action. Put another

way, if the Snyder's current claims were to be interposed

in the prior proceeding, does Fed. R. Civ. P. 13(b) permit

an independent claim for relief, or does Fed. R. Civ. P.

13(a) bar the Snyder's instant action?

C. The Snyder's Claims Are Not Compulsory Under Fed. R.Civ. P. 13(a), Nor Are the Snyder's Claims Compulsory Under

Fourth Circuit Law

In the 4th circuit a compulsory counterclaim relates

back to the time of the filing of the plaintiff's

complaint. See Kirkpatrick v. Lenoir County Board216 F.3d

380 (4th Cir. 2000) (citing Burlington Indus. v. Milliken &

Co., 690 F.2d 380, 389 (4th Cir. 1982) (holding that "the

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institution of plaintiff's suit tolls or suspends the

running of the statute of limitations governing a

compulsory counterclaim"). Dvf filed its complaint in the

previous trademark action on December 4, 2006. Because the

set of facts forming the Snyder's claims did not exist on

December 4, 2006, under the 4th Circuits tolling analysis

the Snyder's claims were not compulsory.

Moreover, in Sue & Sam Mfg. Co. v. B-L-S Const. Co. ,

538 F.2d 1048, 1051- 1053 (4th Cir. 1976), the 4th circuit

identified four inquiries that help in determining whether

a counterclaim is compulsory: (1) Are the issues of fact

and law raised in the claim and counterclaim largely the

same? (2) Would res judicata bar a subsequent suit on the

party's counterclaim, absent the compulsory counterclaim

rule? (3) Will substantially the same evidence support or

refute the claim as well as the counterclaim? and (4) Is

there any logical relationship between the claim and

counterclaim? "A Court need not answer all these questions

in the affirmative for the counterclaim to be compulsory."

Painter, 863 F.2d at 331. Instead, the test works "less

like a litmus, more [like] a guideline." Id. Of course, the

"underlying thread" to each inquiry is "evidentiary

similarity," and "where . . . the same evidence will

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support or refute both the claim and counterclaim, the

counterclaim will almost always be compulsory." Q

International Courier, Inc. v. Smoak441 F.3d 214 (4th

Cir.2006) (citing Painter v. Harvey, 863 F.2d 329, 331 (4th

Cir.1988)). (internal citation omitted).

Here, likelihood of confusion was at the heart of

DVF's trademark infringement claim, whereas the heart of

the Snyder's current claim is the abusive manner in which

DVF and law defendants prosecuted DVF's previous action.

Therefore, the issues of fact and law in the instant case

are not similar, the evidence needed to sustain the

Snyder's claim does not overlap with the evidence needed to

sustain DVF's trademark claim, and there is no logical

relationship between the two actions. Thus, applying the

4th Circuit criteria, the Snyder's current claims were not

compulsory counterclaims to DVF's infringement action and

the Snyder's are not precluded from bringing their claims

in an action independent from DVF's previous action.

Painter, F.2d at 331-332 (4th Cir. 1988).

D. The Post Seizure Hearing Was Not The Proper

Venue To Raise The Snyder's Current Claims

Section 1116(d)(10) of the Lanham Acts provides that a

hearing with notice to the defendantmust be held no later

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than fifteen days after the order is issued. Vuitton v.

White 945 F.2d 569. Pursuant to subsection 1116(d)(9), the

defendant is to be served with the Order justbefore

execution of the seizure, service of the Order will

constitute notice to the defendant of the upcoming hearing.

(emphasis added) Joint Statement 1711[H 12082].

As pled in the Snyder's FAC, before leaving the

Snyders' home on December 8, 2006, Law Defendants left a

stack of papers, which were required to be personally

served, in the Snyders kitchen. Am. Compl. 42. Service

of process is the procedure employed to give legal notice

of a Courts 's exercise of its jurisdiction over that

person, so as to enable that person to respond to the

proceeding before the Court. Usually, notice is furnished

by delivering a set of Court documents (process) to the

person to be served. Proper service of process initially

establishes personal jurisdiction over the person served.

Personal service is service of process directly (in hand)

to the party named on the summons, complaint or petition.

In most lawsuits in the United States, personal service is

required to prove service. See Fed. R. Civ. P. 5(c)(d).

Catherine Snyder was not served with the Court's Dec.

7, 2006 Order before it's execution as mandated by section

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1116(d)(9) of the Lanham Act.9 Moreover, Mrs. Snyder was

not personally served with the The Court's Order on

December 8, 2006 as required by Fed. R. Civ. P. 5(b)(2)(A)

(i).10

As set out above, service of the seizure Order

constitutes notice to the defendant of the Post Seizure

hearing,11 thus DVF failed to provide Catherine Snyder with

notice of the December 22, 2006 post seizure hearing.

Richards v. Jefferson County, 517 US 793, 798 (1996). As

the Supreme Court explained in Mullane v. Central Hanover

Bank & Trust Co., 339 U.S. 306(1950), the right to be heard

ensured by the guarantee of due process "has little reality

or worth unless one is informed that the matter is pending

and can choose for himself whether to appear or default,

acquiesce or contest." Id., at 314; Phillips Petroleum Co.

v. Shutts, 472 U.S. 797, 812 (1985); Schroeder v. City of

New York, -21371 U.S. 208, 2123 (1962). Because Mrs.

Snyder did not receive notice of the impending post seizure

9 [EXHIBIT No. 8]10 See Docket Dianevon Furstenberg Studio v. Snyder, No. 1:06-cv-1356:No docket entry for Return Of Service of the Court's Dec. 7, 2006 Order.Notwithstanding that Mrs. Snyder was not personally served with the

Dec. 4, 2006 Complaint, RETURN OF SERVICE Executed as to CatherineSnyder served on 12/8/2006, answerdue, 12/28/2006 was entered ontothe docket on 12/22/2006 [Docket No. 22] Diane von Furstenberg Studiov. Snyder, No. 1:06-cv-1356.

11 See Docket Diane von Furstenberg Studio v. Snyder, No. 1:06-cv-1356:No docket entry for Notice of Hearing docketed as to the Dec. 22,2006 post seizure hearing

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hearing, she could not choose for herself whether to appear

at the Dec. 22, 2006 hearing or to waive that right by not

appearing. Moreover, as Mrs. Snyder was dressing herself

on Dec. 8th, Law Defendant Lewin, knowing that the Snyders'

were not represented by counsel and knowing that Mr. Snyder

was not a party to the action, informed Mr. Snyder that

there was a hearing before this Court on December 22, 2006

in that matter, but that the Snyders need not attend, and

encouraged Mr. Snyder to contact Law Defendants quickly to

resolve the matter. Am. Compl. 42.

The purpose of the post seizure hearing under the

Lanham Act is to restore due process to a defendant, who

has not had an opportunity to be heard previously, in the

matter. At the hearing, DVF had the burden of showing

that the seizure order was justified and that it continued

to be justifiable to hold Catherine Snyder's goods,

personal documents and bank accounts. If DVF were unable

to show that continuation of the seizure order and TRO with

asset freeze was justified, however, the seizure order and

TRO with asset freeze should have been dissolved. Id.

In Beltronics, the Court held the dissolution of the

seizure order [was] warranted on the grounds that the Court

was not satisfied that defendants would destroy, move,

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hide, or otherwise make the seized goods inaccessible, or

that an order other than an ex parte seizure order would

not be adequate to ensure that Beltronics would have

adequate remedies if defendants are ultimately found to

have infringed Beltronics trademark. Beltronics USA, Inc.

v. Midwest Distrib. LLC522 F.Supp.2d 1318b(D. Kan. 2007).

At the Post Seizure Hearing the Beltronics Court

dissolved the seizure on the grounds that Beltronics had

not made the showings required by 1116(d)(4)(B)(i) &

(vii), and directed Beltronics to return the seized goods

to defendants. Id. Defendants also contended that the

scope and conduct of the seizure was abusive and that

Beltronics violated the order in several respects in the

manner in which it was carried out. The Court stated as

such, defendant's remedy was a cause of action for wrongful

seizure as provided in 15 U.S.C. 1116(d)(11) (A person

who suffers damage by reason of a wrongful seizure under

this subsection has a cause of action against the applicant

for the order under which such seizure was made . . . .).

Id. See Waco Intl, Inc. v. KHK Scaffolding Houston Inc.,

278 F.3d 523, 531 (5th Cir. 2002) (noting that 1116(d)

(11) is the statute that governs whether a seizure order is

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wrongful);Martins Herend Imports, Inc. v. Diamond & Gem

Trading United States of Am. Co., 195 F.3d 765, 774-75 (5th

Cir. 1999). Thus, to the extent that defendants argued that

the wrongful seizure constituted grounds for any form of

affirmative relief other than dissolution of the seizure

order, their motion was denied at that procedural [post

seizure hearing] juncture. The Court went on to say

defendant's were, of course, free to pursue their

counterclaim against Beltronics for wrongful seizure

pursuant to 1116(d)(11). Id.

Further, the Court held that it is 15 U.S.C. 1116(d)

(11) that governs whether a seizure order is wrongful,

rather than section 1116(d)(4), which merely set forth the

factors a Court is to consider in determining whether to

grant an application for such an order. The wrongful

seizure provision of the Lanham Act is not in section

1116(d)(4) but in section 1116(d)(11). Thus, section

1116(d)(11) and its supporting legislative history

establish the standards by which wrongful seizure claims

may be pursued, and section 1116(d)(4) has nothing to do

with those standards. Id.Waco International vs. KHK

Scaffolding 278 F.3d 523.

E. CLAIMS II VII ARE NOT DEFENSES TO

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TRADEMARK INFRINGEMENT UNDER 15 U.S.C. 1115(b)

In it's Oct. 9, 2009 Order This Court argues;

Not only does res judicatabar counterclaims that were

raised and fully litigated, it prevents litigation of all

grounds for, or defenses to, recover that were previously

available to the parties, regardless of whether they were

asserted or determined in the prior proceeding. Canon

U.S.A., Inc. v. Lease Group Resources, Inc., 2007 WL

1555394, at (E.D. Va. May 21, 2007) (quoting Peugeot Motors

of Am., Inc. v. E. Auto Distribs., Inc., 892 F.2d 355, 359

(4th Cir. 1989)). The Snyder's wrongful seizure claim is

not a defense to trademark infringement, it is a separate

statutory cause of action under 15 U.S.C. 1116(d)(11)12 of

the Lanham Act. Likewise, none of the claims enumerated

in Counts III through VII in the current action are

defenses to trademark infringement under the Lanham Act.

See 15 USC 1115. Thus, the doctrine of claim preclusion

12 "A person who suffers damage by reason of a wrongful seizure underthis subsection has a cause of actionagainst the applicant for theorder under which such seizure was made, and shall be entitled torecover such relief as may be appropriate, including damages for lost

profits, cost of materials, loss of good will, and punitive damages ininstances where the seizure was sought in bad faith, and, unless the

Court finds extenuating circumstances, to recover a reasonableattorneys fee. The Court in its discretion may award prejudgmentinterest on relief recovered under this paragraph, at an annualinterest rate established under section 6621 (a)(2) of title 26,commencing on the date of service of the claimants pleading settingforth the claim under this paragraph and ending on the date suchrecovery is granted, or for such shorter time as the Court deemsappropriate."

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does not bar the Snyder's from asserting their claims in a

separate cause of action.

F. Fraud On The USPTO Is Not Only a Defense to TrademarkInfringement It Is An Affirmative Claim Under 15 U.S.C. 1120 And The Snyders Are Not Barred From Asserting Them In

An Independent Claim For Relief

Although Mrs. Snyder is barred in the present case

from asserting fraud as a defense, which might have been

interposed in the earlier litigation, it would not follow

that her claim for damages would likewise be barred.

Mercoid320 U.S. 680; 64 S.Ct. 278; 88 L.Ed. 396 (1944).

That claim for damages is more than a defense; it is a

separate statutory cause of action that is based on civil

liability for false or fraudulent registration under 15

U.S.C. 1120, which provides:

"Any person who shall procure registration in the

Patent and Trademark Office of a mark by a false or

fraudulent declaration or representation, oral or in

writing, or by any false means, shall be liable in a civil

action by any person injured thereby for any damages

sustained in consequence thereof."

Additionally, the fact that it might have been

asserted as a counterclaim in the prior suit by reason of

Rule 13(b) of the Rules of Civil Procedure, does not mean

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that the failure to do so renders the prior judgment res

judicata as respects it. MercoidUnited States Supreme

Court February 7, 1944 320 U.S. 680; 64 S.Ct. 278; 88 L.Ed.

396 (citingVirginia-Carolina Chemical Co. v. Kirven, 215

U.S. 252, 30 S.Ct. 78, 54 L.Ed. 179; Larsen v. Northland

Transportation Co., 292 U.S. 20, 54 S.Ct. 584, 78 L.Ed.

1096. And see Scott, Collateral Estoppel by Judgment, 56

Harv.L.Rev. 1, 26-28; Restatement of the Law of Judgments,

58). The case is then governed by the principle that

where the second cause of action between the parties is

upon a different claim the prior judgment is res judicata

not as to issues whichmight have been tendered but 'only

as to those matters in issue or points controverted, upon

the determination of which the finding or verdict was

rendered.' SeeMercoid (citing Cromwell v. County of Sac,

94 U.S. 351, 353, 24 L.Ed. 195. And see Russell v. Place,

94 U.S. 606, 24 L.Ed).

V. THE FOLLOWING MATTERS WERE NOT DETERMINED IN DVF'sPREVIOUS ACTION

Catherine and Richard Snyder respectfully move this

Court to amend the Oct. 9, 2009 Order and correct

erroneous findings of fact contained therein.

With all due respect to this Court, the Court in the

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Dec. 8, 2006, were in fact, counterfeit Diane von

Furstenberg dresses.

2. The Snyders did not argue, in the previous

action,that the "Diane von Furstenberg" mark registered

under Reg. No.2276188 was not currently used in commerce in

the previous action. See Oct. 9, 2009 Opinion *11, the

Snyders argued that the marks were not currently used in

commerce.14 Notwithstanding that DVF referenced a single

trademark registration number in both it's complaint15 and

it's memorandum of law in support of summary judgment,16 DVF

astonishingly demanded the Court award it $2 Million

dollars in damages- $1 Million dollars each for the 'Diane

von Furstenberg' mark registered under Reg. No.2276188 and

$1 Million dollars for the 'DVF' mark. The DVF mark is

registered with the USPTO under a wholly different

Registration number.17 More importantly, not one of the

dresses seized from the Snyder's home on December 8, 2006

bore the DVF mark.

It is in that context that Mrs. Snyder argued that not

only had Mrs. Snyder not used the DVF mark in commerce, but

it was her belief that DVF did not use the 'DVF' mark in

14[EXHIBIT No. 10]15[Docket No.1] Diane von Furstenberg Studio v. Snyder, No. 1:06-cv-1356

16[Docket No.65] Diane von Furstenberg Studio v. Snyder,No. 1:06-cv-135617[EXHIBIT No. 11]

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on dresses either.18

3. DVF did not "file[d] an action in this Court

against the Snyder's," DVF filed an action in this Court

against Catherine Snyder. Notwithstanding that DVF and law

defendants knew Richard Snyder's identity prior to filing

it's action on December 4, 2006, defendants failed to name

Mr. Snyder in it's action against Mrs. Snyder. Moreover,

DVF did not amend it's complaint to add a claim for

contributory infringement against Mr. Snyder, nor was Mr.

Snyder ever served with a Complaint in the previous

action.19 In fact, Mr. Snyder first learned of DVF's

contributory infringement claim against him when DVF moved

for Summary Judgment on August 15, 2007.

18[EXHIBIT No. 11]19 [Docket] Diane von Furstenberg Studio v. Snyder, No. 1:06-cv-1356 No

Docket Entry showing (1) an Amended Complaint, or (2) Return ofService as to Richard Snyder

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memorandum of law in support of snyder's motion for reconsideration

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