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UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

SOUTHERN DIVISION 

FORD MOTOR COMPANY, a Delaware 

corporation, and FORD GLOBAL TECHNOLOGIES 

LLC, a Delaware Limited Liability Company, 

Plaintiffs, 

v. 

THERMOANALYTICS, INC., a Michigan 

corporation, 

Defendant. 

 / 

Case No. 14-cv-13992 

UNITED STATES DISTRICT COURT JUDGE

GERSHWIN A. DRAIN

UNITED STATES MAGISTRATE JUDGE

R. STEVEN WHALEN

OPINION AND ORDER DENYING DEFENDANT’S MOTION FOR RECONSIDERATION AND DENYING 

DEFENDANT’S REQUEST FOR CERTIFICATION PURSUANT TO 28 U.S.C. § 1292(b) [48] 

I. INTRODUCTION

Ford Motor Company and Ford Global Technologies, LLC (collectively, “Plaintiffs”), 

commenced this action on October 16, 2014 against ThermoAnalytics, Inc. (“Defendant”). See 

Dkt. No. 1. On October 28, 2015, this Court granted Plaintiffs’ Motion for Partial Summary 

Judgment. See Dkt. No. 47. 

Presently before the Court is Defendant’s Motion for Reconsideration of the Court’s 

Opinion and Order or, in the alternative, for certification pursuant to 28 U.S.C. § 1292(b). See

Dkt. No. 48. For the reasons discussed below, Defendant’s Motion for Reconsideration is 

DENIED, and Defendant’s request for certification pursuant to 28 U.S.C. § 1292(b) is DENIED.

II. BACKGROUND

In October of 2014, Plaintiffs filed the instant action alleging, inter alia, false designation 

of origin as well as breach of contract. In July of 2015, Plaintiffs filed a motion for Partial 

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Summary Judgment on the breach of contract and false designation of origin claims. See Dkt. 

No. 25. Plaintiffs argued that under the terms of a License Agreement (“the Agreement”) 

between the parties, Plaintiffs were entitled to copyrights to the software code of a program, 

RadTherm, and damages for trademark infringement. Defendant argued in response that the 

source code sought by Plaintiffs was not covered under the Agreement, and further that Plaintiffs 

rights to the trademark never existed, or in the alternative, had been terminated. See Dkt. No. 33 

at 13, 22 (Pg. ID No. 617, 626). 

The Court ultimately granted partial summary judgment, finding that Defendant had 

infringed on the trademark, that Plaintiffs did have rights to the source code (“Disputed 

Software” or “New Software”), and that Defendant had breached the contract by failing to give 

the source code to Plaintiffs. See Dkt. No. 47. 

III. LAW AND ANALYSIS

Motions for Reconsideration are governed by Local Rule 7.1(g)(3) of the Local Rules of 

the United States District Court for the Eastern District of Michigan, which provides: 

[M]otions for rehearing or reconsideration which merely present the same issues 

ruled upon by the court, either expressly or by reasonable implication, shall not be 

granted. The movant shall not only demonstrate a palpable defect by which the 

court and the parties have been misled but also show that a different disposition of 

the case must result from a correction thereof. 

E.D. Mich. L.R. 7.1(g)(3). “A ‘palpable defect’ is ‘a defect that is obvious, clear, unmistakable, 

manifest, or plain.’” United States v. Lockett, 328 F. Supp. 2d 682, 684 (E.D. Mich. 2004) 

(quoting United States v. Cican, 156 F. Supp. 2d 661, 668 (E.D. Mich. 2001)).

A. Breach of Contract 

Defendant advances three arguments in its motion for the Court to reconsider the claim 

for breach of contract. The Defendant first argues that the Court imposed an unreasonable 

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interpretation on the relevant language of the Agreement. Next, Defendant argues that under the 

Court’s interpretation of the Agreement, the Defendant would not be liable for breach of 

contract. Finally, the Defendant argues the breach of contract claim is barred by the statute of 

limitations. 

a. Defendant’s First Argument: The Court has Imposed an Unreasonable 

Interpretation on the Relevant Language from the Agreement 

Defendant first argues that the Court has committed a palpable error by ascribing an 

“unreasonable” interpretation of the License Agreement. Dkt. No. 48 at 12 (Pg. ID No. 962). 

But, in reality, the argument boils down to a disagreement with the Court’s interpretation of the 

language of the Agreement. Defendant has not pointed to an “obvious, clear, unmistakable, 

manifest, or plain” defect in the Opinion. Therefore, the motion will not be granted on this point. 

Defendant then goes on to argue that the Disputed Software “was not created under the 

Agreement but, instead, under contracts with the U.S. Army without any reference to Ford.” Id.

at 15 (Pg. ID No. 965). The Court heard this exact argument before. See Dkt. No. 33 at 15 (“As 

previously explained, the New Software was not based on the Old Software but rather developed 

independently.”). That argument was rejected then, it will not be considered now. 

b. Defendant’s Second Argument: Under the Court’s Interpretation of The 

Agreement, The Disputed Software is Not a Joint Work 

Defendant next, albeit curiously, argues that the Court came to an incorrect result under 

the Court’s interpretation of the Agreement. The Defendant argues that the Court’s interpretation 

should be limited to “any brochures, web pages, manuals, and the like that TAI created to be 

used with the Old Software. . .” Dkt. No. 48 at 17 (Pg. ID No. 967). The Defendant goes on to 

explain why, under the Court’s interpretation of the Agreement, that the Court is wrong. 

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None of the reasons proffered by Defendant on this issue point to a palpable defect in the 

Court’s reasoning. Once again, Defendant merely demonstrates that the Defendant disagrees 

with the outcome of the claim and rehashes some old arguments. As such, the argument fails. 

c. Defendant’s Third Argument: Plaintiffs Lost Any Rights in the Disputed Software 

By Failing to Bring Suit Within The Limitations Period 

Defendant argues that Plaintiffs were “undeniably on notice that TAI considered itself to 

be the sole owner of the copyright in the New Software,” but nevertheless “failed to bring suit to 

enforce its supposed joint copyright in the New Software for seven more years.” Dkt. No. 48 at 

22–23 (Pg. ID No. 972–73). Defendant argues that the delay prevents the Plaintiffs from 

bringing an action to enforce copyright rights. 

The statute of limitations period for a claim under the Copyright Act is three years. 17 

U.S.C. § 507(b).1

 The claim accrues “when a reasonably diligent plaintiff would have been put 

on inquiry as to the existence of a right.” Kwan v. Schlein, 634 F.3d 224, 228 (2d Cir. 2011). 

Defendant points to an email response to Plaintiffs’ request for source code from 2007, 

specifically, the statement that “[Defendant] derived a new RadTherm solver from MuSES with 

the only thing being retained was the name RadTherm,” put the Plaintiffs on notice of the 

copyright issue. Id. The email was dated Tuesday, October 2, 2007, placing it outside of the 

temporal limits of the limitations period. The lone issue is notice. 

However, the referenced emails were not related to nor did they express ownership of the 

source code copyrights. See Dkt. No. 33 (Exhibit 4). If anything, it brought attention to a 

potential trademark issue as opposed to a copyright issue. Id. (“One solution to the source code 

issue would be to . . . continue developing and licensing the MuSES derivative software under a 

new brand name.”). As Plaintiffs point out, “TAI continued to pay royalties to Ford, TAI 

 

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 Both parties seem to be in agreement that this is the controlling limitations period. 

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continued to include Ford in the copyright notices displayed on the RadTherm Software, TAI 

continued to deliver object code for Ford’s use without charge, and TAI ‘ratified and confirmed’ 

all provisions of the License Agreement in 2012.” Dkt. No. 50 at 20–21 (Pg. ID No. 1162). 

A reasonably diligent Plaintiff would not have been put on notice that Defendant 

intended to claim exclusive ownership of the copyright to the Disputed Software because of this 

lone email. Accordingly, this argument fails. 

B. False Designation of Origin 

Defendant advances three principle arguments in its motion for the Court to reconsider 

the claim for false designation of origin. The Defendant first argues that the Court committed a 

palpable error in concluding that the agreement purported to transfer TAI’s trademark rights to 

Ford. See Dkt. No. 48 at 24 (Pg. ID No. 974). Next, Defendant argues that even if the agreement 

did purport to transfer trademark rights to Plaintiffs, the Court has committed a palpable error in 

holding that such a transfer is valid in the absence of a transfer of goodwill. Id. at 25. Finally, 

Defendant argues that even if the Agreement did transfer the rights to the RadTherm trademark 

to Plaintiffs, their 12-year delay in protesting Defendant’s trademark registration should have 

invalidated the claim. Id. at 27. 

a. Defendant’s First Argument: The Agreement Did Not Purport to Transfer TAI’s 

Trademark Rights to Ford 

Defendant argues that the language of the Agreement is “notably devoid of anything 

resembling language of transfer.” Id. at 24. However, this exact same argument has already been 

raised by Defendant. See Dkt. No. 33 at 25 (Pg. ID No. 629) (“As stated in the Johnson 

Declaration, TAI never assigned the RadTherm trademark and goodwill to Ford. Section 12, at 

most, confirms Ford’s ownership of its then-existing intellectual property rights.”). The Court 

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addressed this argument, and rejected it. See Dkt. No. 47 at 7–8 (Pg. ID No. 942–43). Defendant 

does not point to any obvious or clear defect that misled the Court originally, the argument 

merely disagrees with the way that the Court has interpreted the Agreement. Accordingly, this 

argument will not be considered again. 

b. Defendant’s Second Argument: The Agreement Did Not Validly Transfer Any 

Trademark Rights Because It Failed to Transfer Goodwill 

Defendant next argues that “[b]ecause the Agreement does not even purport to involve 

goodwill, no trademark transfer can possibly occurred.” Dkt. No. 48 at 25 (Pg. ID No. 975). 

Once again, this exact argument has already been made. See Dkt. No. 33 at 26 (Pg. ID No. 630) 

(“In fact, even if the Agreement had purported to transfer TAI’s rights in the RadTherm 

trademark to Ford, such a transfer would have been invalid.”). The Court addressed this 

argument. See Dkt. No. 47 at 8–9 (Pg. ID No. 943–44) (“However, while goodwill may not be 

explicitly spelled out within the terms of the Agreement, it is certainly captured impliedly by the 

broad property grant of Section 8.”). The Court will not consider it again. 

c. Defendant’s Third Argument: Ford’s 12-Year-Delay In Protesting TAI’s 

Trademark Registration Invalidates Ford’s Current Claims 

Defendant’s final argument with regard to the trademark states that “even if the 

trademark rights and goodwill had somehow been transferred from TAI to Ford by the 

Agreement in 1998, the Order does not address the effect of TAI’s registration of the RadTherm 

trademark in 2002.” Dkt. No. 48 at 27 (Pg. ID No. 977). Further, Defendant argues that Ford did 

not retain any quality control over the software quality under the Agreement, and thus “the mark 

is deemed abandoned due to the ‘naked licensing.’ ” Id. (citing Yellowbook v. Brandeberry, 708 

F.3d 837, 846 (6th Cir. 2013)). 

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The Court can sum up the effect of Defendant’s registration of the trademark on 

Plaintiff’s rights in one word: none. “A licensee’s use inures to the benefit of the licensor-owner 

of the mark and the licensee acquires no ownership rights in the mark itself.” 3 McCarthy on 

Trademarks and Unfair Competition § 18:52 (4th ed.). Defendant points to no law that concludes 

that registration of a trademark by a licensee would cut off the owner’s rights. Therefore, 

Defendant has failed to point to a palpable defect in this respect. 

Regarding Ford’s purported abandonment of the mark, this was not an argument raised 

on the initial motion. The Court refuses to consider the argument, as it does not point to a 

palpable defect in the opinion. See Hayes v. Norfolk Southern Corp., 25 Fed. Appx. 308, 315 

(6th Cir. 2001) (“It is well established . . . that a district court does not abuse its discretion in 

denying a Rule 59 motion when it is premised on evidence that the party had in its control prior 

to the original entry of judgment.”) (quoting Emmons v. McLaughlin, 874 F.2d 351, 358 (6th Cir. 

1989)). 

Accordingly, the Defendant has failed to point to a palpable defect in the Court’s opinion 

with regard to the claim of false designation of origin. 

C. Liability to Ford Motor Company 

Defendant next argues that the Opinion improperly granted Summary Judgment to Ford 

Motor Company because all of the claims are “based on the Agreement, to which only TAI and 

FGTL are parties.” Dkt. No. 48 at 29 (Pg. ID No. 979). Defendant further argues that “even if 

TAI were liable for the wrongdoing alleged, it would be liable only to FGTL and not to FMC.” 

Dkt. No. 48 at 29 (Pg. ID No. 979). 

Even if the judgment were limited to FGTL, it wouldn’t result in a different disposition of 

the case. As Plaintiffs correctly point out, Ford and FGTL can only recover once from TAI on 

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any judgment that results from this case. Dkt. No. 50 at 25 (Pg. ID No. 1166). The argument 

fails. 

D. Interlocutory Appeal 

Defendant, in the alternative, moves for certification for interlocutory appeal pursuant to 

28 U.S.C. § 1292(b). Dkt. No. 48 at 29 (Pg. ID No. 980). 

 A party seeking interlocutory appeal must demonstrate that “(1) the order involves a 

controlling question of law, (2) a substantial ground for difference of opinion exists regarding the 

correctness of the decision, and (3) an immediate appeal may materially advance the ultimate 

termination of the litigation.” In re City of Memphis, 293 F.3d 345, 350 (6th Cir. 2002); see also 

28 U.S.C. § 1292(b). Review under § 1292(b) is granted “sparingly and only in exceptional 

cases.” Id. (citing Kraus v. Bd. Of County Rd. Comm’rs, 364 F.2d 919, 922 (6th Cir. 1966)). “It 

is to be used only in exceptional cases where an immediate appeal may avoid protracted and 

expensive litigation and is not intended to open the floodgates to a vast number of appeals from 

interlocutory orders in ordinary litigation.” Kraus, 364. F.2d at 922. 

 Defendant has not demonstrated that an interlocutory appeal would materially advance 

the litigation. Defendant argues essentially to have the appeal now would save time as opposed 

to waiting to the final resolution of the case. Dkt. No. 48 at 31 (Pg. ID No. 981) (“Achieving a 

final appellate decision on these issues now would greatly speed up the process and very likely 

encourage the Parties to negotiate on the remaining claims afterward.). This argument is not 

persuasive. There is nothing stopping the parties from negotiating the remaining claims right 

now. The parties could resolve the issues then file a stipulation and order of dismissal of those 

claims, resolving all issues and allowing Defendant to appeal as of right. Furthermore, allowing 

an interlocutory appeal would be just as likely to prolong the litigation, as many months would 

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be required before the case would be reached for argument, and depending on what happens over 

the course of litigation, could lead to more issues. Instead it would be best to allow the Sixth 

Circuit to confront all of these issues in “a unified package.” Solomon v. Aetna Life Ins. Co., 782 

F.2d 58, 62 (6th Cir. 1986). 

 Moreover, Defendant has not demonstrated there is substantial ground for difference of 

opinion. Defendant argues that because “the Court, Ford, and TAI have come to three different 

conclusions on many of these issues,” that this element has been met. Dkt. No. 48 at 30 (Pg. ID 

No. 980). This argument is insufficient. 

A substantial ground for difference of opinion exists where “(1) the question is difficult, 

novel and either a question on which there is little precedent or one whose correct resolution is 

not substantially guided by previous decisions; (2) the question is difficult and of first 

impression; (3) a difference of opinion exists within the controlling circuit; or (4) the circuits are 

split on the question.” In re Miedzianowski, 735 F.3d 383, 384 (6th Cir. 2013) (internal quotation 

marks and citations omitted). Defendant is correct that there is disagreement on the outcome of 

the case. This is a common phenomenon in litigation. Whether the Plaintiff, Defendant, or the 

Court agree on the outcome of the case is not relevant to the finding of a substantial ground for 

difference of opinion. 

Accordingly, the certification for interlocutory appeal will be denied. 

IV. CONCLUSION

For the reasons discussed above, the Motion for Reconsideration is DENIED, and the 

request for certification pursuant to 28 U.S.C. § 1292(b) is also DENIED. 

IT IS SO ORDERED. 

Dated: February 2, 2016 /s/Gershwin A Drain 

Detroit, MI HON. GERSHWIN A. DRAIN 

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 United States District Court Judge

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