Kologik Capital, LLC v. In Force Technology, LLC et al. (18-cv-11168).

Kologik sued In Force, Brandon-COPsync, LLC and Brandon Flanagan in 2018, accusing them of patent and trademark infringement, false designation of origin, dilution, unfair competition and several state law claims in connection with the use of Kologik’s “COPSYNC” and “COPSYNC911” trademarks for security software and two patents covering the software.  Kologik obtained the marks and software from COPsync, Inc. in bankruptcy.  Prior to bankruptcy, COPsync had utilized Brandon-COPsync LLC, run by Brandon Flanagan, as a licensed distributor for select parts of the country.  Kologic says that this license was terminated by COPsync in 2017 when Brandon-COPsync failed to make several required payments totaling over $600k. 

Kologic says that Brandon-COPsync filed a proof of claim during the bankruptcy seeking more than $1 million, but that at the time of the filing, Brandon-COPsync had been involuntarily dissolved, making the proof of claim invalid.  Kologic says that following the conclusion of the bankruptcy, Brandon-COPsync and Flanagan began selling a competing product under the COPsync trademark to now-Kologic customers and otherwise interfered with Kologic’s contractual relations with its customers.

In the ensuing litigation, Kologic filed a motion to compel, asserting that the Defendants had waived privilege on communications from defense counsel to customers of the defendants.  Prior counsel for the defendants had prepared a letter more than a year after litigation ensued, that appears to have been distributed to customers of the defendants’ “In Force” software, asserting (and setting forth the legal, but not factual details) that the patents cover unpatentable subject matter and thus will not preclude the defendants from selling and servicing its product.  Kologic asserted that this was effectively an opinion of counsel, and that defendants’ provision of this to its customers waived privilege both as to the letter and as to the general subject of patents’ “validity, enforceability and infringement.”    

Magistrate Judge Levenson denied Kologic’s motion to compel, finding the letter not to be an attorney-client communication.  The letter was not addressed to the defendants, and appears to have been written for the purpose of being sent to the defendants’ customers, as a part of their customer relations program.  The defendants had produced the letter and had not claimed privilege in it or claimed inadvertent disclosure.  Further, Defendants had not asserted an “advice of counsel” defense to willful infringement, and had not otherwise sought to use the letter in court.