IN THE UNITED STATES DISTRICT COURT

FOR THE 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,

 Defendants.

Civil Action No. 2:14-cv-13992-GAD-RSW

Honorable Gershwin A. Drain

GREGORY D. PHILLIPS (USB 4645)

JARED L. CHERRY (USB 11534)

PHILLIPS RYTHER & WINCHESTER

124 South 600 East 

Salt Lake City, Utah 84102

Tel: (801) 935-4935

Fax: (801) 935-4936

Attorneys for Plaintiffs 

KARA TERTZAG LIVIDINI (P63009)

FORD MOTOR COMPANY AND 

FORD GLOBAL TECHNOLOGIES LLC

330 Town Center Drive, Suite 800

Dearborn, MI 48126

Tel: (313) 323-8559

Fax: (313) 323-2647

FIRST AMENDED COMPLAINT

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

(collectively, “Ford”) for their First Amended Complaint against defendant ThermoAnalytics, 

Inc. (“TAI,” “Licensee” or “Defendant”) allege as follows:

PARTIES

1. Ford is a Delaware corporation with its principal place of business in Dearborn, 

Michigan. 

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2. FGTL is a Delaware limited liability company with its principal place of business 

in Dearborn, Michigan.

3. FGTL is a wholly owned subsidiary of Ford Motor Company and is the successor 

entity to Ford Global Technologies, Inc.

4. ThermoAnalytics, Inc. is a Michigan corporation with its principal place of 

business in Calumet, Michigan.

JURISDICTION AND VENUE

5. This Court has original jurisdiction over this action pursuant to 28 U.S.C. §§ 

1331, 1338(a), and 2201, and 15 U.S.C. §§ 1119 and 1121(a), in that this case arises under the 

trademark laws of the United States.

6. This Court also has supplemental jurisdiction over the counterclaims asserted 

herein under 28 U.S.C. §1367 because they are related to the claims brought by Ford and form a 

part of the same case and controversy.

7. This Court has personal jurisdiction over Defendant based on a forum selection 

clause included in a license agreement between Ford and Defendant dated December 31, 1998 

(the “License Agreement”), a copy of which is attached as Exhibit A. The License Agreement 

provides that all actions pertaining to the license agreement “shall be commenced in a state or 

federal court of competent jurisdiction located in Wayne County, Michigan to whose jurisdiction 

the parties hereto expressly consent.” Exhibit A, at ¶ 13.4.

8. Venue is proper in this district under 28 U.S.C. §§ 1391(b) and 1391(c) in that a 

substantial part of the events giving rise to the claims presented herein occurred in this judicial 

district and because Defendant is deemed to reside in this judicial district.

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SUBSTANCE OF THE ACTION

9. This is an action for false designation of origin or sponsorship pursuant to 15 

U.S.C. § 1125(a), for cancellation or transfer of federal trademark registration (no. 2,695,172) for 

RADTHERM pursuant 15 U.S.C. §§ 1064 and 1119, and for related claims relating to the rights 

of the parties under the License Agreement.

Ford Develops RADTHERM Software

10. Up through and including the year 1998, Ford invested substantial amounts of 

time and money to develop a specialized engineering analysis software program named 

RADTHERM, which was designed to perform complex thermal analysis for modeling the 

distribution and transfer of heat over complex component systems.

11. Up through the end of the year 1998, Ford assigned a value to the RADTHERM 

software of approximately $5,000,000.00.

12. Up through the end of the year 1998, Defendant provided consulting services to 

Ford in connection with the development of the RADTHERM software. 

13. At the end of the year 1998, the then-current version of the RADTHERM 

software was version 4.1.

14. In exchange for Defendant’s services, Ford paid Defendant approximately 

$800,000.00 prior to execution of the License Agreement for the consulting services provided by 

Defendant in connection with the development of the RADTHERM software. 

15. On or about May 10, 1996, ThermoAnalytics executed “Software Development 

Supplemental Terms and Conditions,” a copy of which is attached hereto as Exhibit I.

16. The “Software Development Supplemental Terms and Conditions,” provide:

“Any work of authorship created by Seller in performing the services hereunder shall be 

considered as a specially ordered or commissioned “Work for Hire” and all copyrights 

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for such works of authorship shall belong to Buyer. In the event any portion of the work 

of authorship created by Seller in performing the services hereunder does not qualify as 

“Work For Hire,” Seller shall quire title to the copyright for such portion, and assign all 

acquired title and interest to Buyer.” See Exhibit I, at ¶5.

17. Subsequent to TAI’s execution of the “Software Development Supplemental 

Terms and Conditions,” TAI delivered to Ford version 4.1.1 of the RadTherm Software.

18. Version 4.1.1. of the RadTherm Software constitutes “Work for Hire,” and as 

such, TAI is obligated to assign all copyrights associated with version 4.1.1 to Ford under the 

“Software Development Supplemental Terms and Conditions.”

19. Version 4.1.1 of the RadTherm Software includes 385 files in the TM Tools 

Library.

20. The TM Tools Library in version 4.1.1 contains 158 files that are identical to files 

included in version 3.1.0. A list of the 158 identical files is attached as Exhibit J.

21. The TM Tools Library set of functions in version 4.1.1 includes 90 unique files 

that are neither identical to any file in version 3.1.0 nor have the same file name as any file in 

version 3.1.0. A list of the 90 unique files in the TM Tools Library set of functions in version 

4.1.1 is attached as Exhibit K.

22. The 90 files listed in Exhibit K were created by TAI in performing the services 

under the Software Development Supplemental Terms and Conditions.

23. The 90 files listed in Exhibit K constitute “Work for Hire” under the “Software 

Development Supplemental Terms and Conditions” executed by TAI.

24. The remaining 137 files in version 4.1.1 of the TM Tools Library have file names 

that are the same as files in the TM Tools Library, but that have different content. A list of the 

139 files is attached as Exhibit L.

25. The 137 files listed in Exhibit L were created by TAI in performing the services 

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under the Software Development Supplement Terms and Conditions.

26. On June 8, 2015, TAI asserted that the TM Tools Library in version 4.1.1 of the 

RadTherm Software “is copyrighted by ThermoAnalytics and remains the property of 

ThermoAnalytics.”

27. Prior to June 8, 2015, TAI did not provide to Ford any written notice asserting 

that the TM Tools Library in version 4.1.1 is copyrighted by ThermoAnalytics and remains the 

property of ThermoAnalytics.”

Ford Licenses Defendant to Commercialize the RADTHERM Software and 

to use the RADTHERM Trademark for that Purpose

28. Under the License Agreement, Defendant received a license from Ford to use the 

trademark RADTHERM in connection with the sale of the RADTHERM software. Defendant 

also received the exclusive right to commercialize the RADTHERM software as a software 

product to be jointly owned by Ford and Defendant. 

29. Pursuant to the terms of the License Agreement, Ford and Defendant developed, 

utilized, and sold the RADTHERM software commercially for a period of fifteen (15) years.

30. For at least a period of 15 years, Defendant has used its relationship with Ford to 

promote the sale of the RADTHERM Software. For example, Defendant’s website states: “Ford 

pioneered the development of RadTherm and uses it extensively in heat management design and 

analysis.” A copy of the “Our Customers” page, from which the foregoing quotation was taken, 

is attached hereto as Exhibit B.

For more than 15 years Defendant Represents to Ford and 

Public that the RADTHERM Software is Jointly Owned by Ford and TAI.

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31. The License Agreement requires that Defendant “shall cause FGT[L]’s copyright 

notice to appear on all copies of FGT[L] Licensed Software Sold under this Agreement.” 

Exhibit A, at ¶ 8.1.

32. Version 5.0 of the RADTHERM software included the following “splash screen” 

that includes FGTL’s copyright notice, as required by Paragraph 8.1 of the License Agreement.

33. Version 9.3.1 of the RADTHERM software included the following “splash 

screen” that includes FGTL’s copyright notice, as required by Paragraph 8.1 of the License 

Agreement.

34. Version 10.0.2 of the RADTHERM software included the following “splash 

screen” that includes FGTL's copyright notice, as required by Paragraph 8.1 of the License 

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Agreement.

35. The “About RadTherm” information included in the commercial version of the 

RADTHERM software released in 2013, includes FGTL’s copyright notice, as required by 

Paragraph 8.1 of the License Agreement, as shown in the following screen capture.

36. On information and belief, Ford alleges that each of versions 6.0, 7.0, and 8.0 

included FGTL's copyright notice, as required by Paragraph 8.1 of the License Agreement.

37. The End User License Agreement associated with version 6.0 of the 

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RADTHERM Software, states:

RadTherm which accompanies this license (the "Software") is the property of Ford 

Global Technologies, Inc. ("FGTI") and ThermoAnalytics, Inc. ("ThermoAnalytics")

and is protected by copyright law. While FGTI and ThermoAnalytics continue to own the 

Software, you will have certain limited rights to use the Software after your acceptance of 

this license. 

38. A copy of the End User License Agreement associated with version 6.0 of the 

RADTHERM Software is attached hereto as Exhibit M.

39. On March 21, 2012, TAI executed a First Amendment to License Agreement, a 

copy of which is attached hereto as Exhibit N. 

40. The First Amendment to License Agreement provides: “Except as specifically 

modified or amended by the terms of this AMENDMENT, the LICENSE AGREEMENT and all 

provisions contained therein are, and shall continue, in full force and effect and are hereby 

ratified and confirmed.” Exhibit N, at page 2...

Ford Makes Substantial Investments in New Features to be included in the 

RADTHERM Software after execution of the License Agreement

41. On at least two occasions after execution of the License Agreement, Ford paid 

TAI to develop new features to be included in upcoming versions of the RADTHERM Software.

42. On or about June 29, 2000, TAI submitted to Ford a quotation for the “Addition 

of Climate Control Features into RadTherm.” A true and correct copy of the quote and related 

documents are attached hereto as Exhibit O.

43. The quotations reflect a price of $40,000.00 for the “Addition of Climate Control 

Features into RadTherm.” Exhibit O, at page 1.

44. The “Climate Control Features” paid for by Ford were “incorporated into 

RadTherm 5.1.” See Exhibit O, at page 6.

45. On or about February 22, 2001, TAI submitted a quotation for software 

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development services for a “Natural Convection Stratified Flow Solver.” A true and correct 

copy of the quotation and related documents are attached hereto as Exhibit P.

46. The quotations reflect a price of $135,000.00 for the development of the “Natural 

Convection Stratified Flow Solver.” 

47. The “Natural Convection Stratified Flow Solver” was to be implemented in 

version 7.0 of the RADTHERM Software. See Exhibit P, at page 3.

48. The development of the “Natural Convection Stratified Flow Solver” was never 

completed, and the only deliverable from the project produced by TAI was a written report.

Defendant “Leverages” Ford’s RADTHERM Software to 

Create MuSES with the Cooperation of Ford

49. In August 1998, Keith Johnson, the president of TAI, presented a paper at the 

GTMV98 conference titled: MuSES: A New Heat and Signature Management Design Tool for 

Virtual Prototyping (the “GTMV98 Paper”). A copy of the GTMV98 paper is attached as 

Exhibit C. 

50. In the GTMV98 Paper, Mr. Johnson explains that a software program titled 

MuSES is “patterned after Ford Motor Company’s RadTherm” Software. Specifically, the 

GTMV98 Paper states:

MuSES is patterned after Ford Motor Company’s RadTherm, a rapid prototyping thermal 

design tool. Thermal models can be rapidly constructed in RadTherm from commonly 

available geometric and material descriptions. This work has been accomplished in part 

under a Cooperative Research and Development Agreements (CRADA) between 

TACOM and Ford with ThermoAnalytics as the primary developer.

Exhibit C, at page 2.

51. The GTMV98 Paper further explains that “MuSES incorporates rapid prototyping 

techniques developed for commercial automotive applications....” See Exhibit C, at page 2

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(emphasis added). The “incorporation” of RadTherm into MuSES is also shown in Figure 1 of 

Mr. Johnson’s paper, which is reproduced below. 

52. The GTMV98 Paper repeatedly states that the RADTHERM Software provides “a 

Leveraged Advantage for Muses.” Exhibit C, at Figure 1, page 1, and page 2. 

53. The GMTV98 Paper explains that the “leverage” enjoyed by MuSES comes from 

the RADTHERM Software. Specifically, the GMTV98 Paper explains:

In developing MuSES, ThermoAnalytics is leveraging on experience gained from past 

and on-going thermal model development programs. The complementary attributes of 

these products are illustrated in Figure 1. Primarily, MuSES is patterned after Ford 

Motor Company’s RadTherm, a rapid prototyping thermal design tool. Thermal models 

can be rapidly constructed in RadTherm from commonly available geometric and 

material descriptions. 

Defendant Offers Software For Sale Under the RADTHERM Mark without 

Disclosing Such Software to Ford and Without Payment of Royalties on Such Sales

54. The License Agreement provides: “Licensee shall be limited to using the Marks 

exclusively to advertise and promote FGTI Licensed Software.” See Exhibit A, at ¶ 12.

55. The License Agreement further provides: “Licensee shall pay a Royalty to FGTI 

for each Sale of each copy of FGTI Licensed Software, Licensee Licensed Software and Jointly 

Owned Software at a rate that is 10% of the Reference Price for the corresponding Sales charged 

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to Customers by Licensee....” See Exhibit A, at ¶ 4.2.

56. In spite of the prohibition on use of the Marks for any software other than FGTI 

License Software, Defendant began offering for sale a product using the RADTHERM mark 

under the name RADTHERM IR.

57. Defendant has never paid royalties based on sales of software sold under the name 

RADTHERM IR.

58. Defendant never provided notice to Ford of its sale of the RADTHERM IR 

Software.

59. Defendant never obtained Ford’s consent to use the RADTHERM mark in 

connection with its sale of the RADTHERM IR Software.

Defendant Terminates the License Agreement and Claims Ownership 

of the RADTHERM Software and the RADTHERM Trademark

60. On November 14, 2013, Defendant provided a notice of termination of the 

License Agreement (the “Termination Notice), which was to be effective on March 1, 2014. A 

copy of the Termination Notice is attached hereto as Exhibit D.

61. On February 28, 2014, counsel for Ford wrote to Defendant regarding various 

obligations imposed on Defendant upon termination of the License Agreement, including 

cessation of use of the RADTHERM trademark, delivery of source code for the RADTHERM 

software, and assignment of Ford’s “undivided one-half interest in all copyrights to the joint 

works” created under the License Agreement. A copy of the letter dated February 28, 2014, is 

attached hereto as Exhibit E.

62. On March 4, 2014, counsel for TAI wrote to counsel for Ford and asserted that 

the “new” RADTHERM software—in spite of continuing use of the RADTHERM name—is not

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covered by the License Agreement. A copy of the letter dated March 4, 2014, is attached hereto 

as Exhibit F. Specifically, counsel for TAI asserted:

As TAI’s notice explains, [the] old RadTherm software developed sixteen years ago was 

replaced by new source code TAI developed in conjunction with the U.S. Army. The new 

software, also referred to as RadTherm, is jointly owned by TAI and the U.S. Army.

Exhibit F, at page 2.

63. Prior to November 14, 2013, TAI did not provide to Ford any written 

correspondence claiming that Ford had no ownership interest in version 5.0 of the RadTherm 

Software.

Defendant’s Claims of Ownership of the RADTHERM Software

and the RADTHERM Trademark Violate the Terms of the License Agreement

64. The License Agreement expressly precludes any transfer of rights by Defendant 

to any third party to the RADTHERM Software without prior written consent by Ford. 

Specifically, the License Agreement provides:

Licensee agrees that it will not assign any of its rights granted herein with respect to [or] 

in the FGT[L] Licensed Software, Licensee Licensed Software, or Jointly Owned 

Software to a party other than FGT[L] without obtaining written permission from FGT[L]

prior to such assignment.

Exhibit A, at ¶ 8.1. 

65. Defendant’s transfer of ownership rights of the RADTHERM Software to the 

U.S. Army—if such a transfer actually occurred—would constitute a violation of paragraph 8.1 

of the License Agreement.

66. Representatives from Ford and TAI met in person in Dearborn, Michigan on April 

11, 2014, to discuss the obligations of the parties under the License Agreement. 

67. On April 17, 2014, counsel for TAI wrote to counsel for Ford and provided a 

summary of the points discussed by the parties during the in-person meeting. A copy of the 

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letter dated April 17, 2014, is attached hereto as Exhibit G.

68. TAI’s letter of April 17, 2014, asserts:

3. At [the in person meeting] meeting, Keith [Johnson] provided an overview of how 

ThermoAnalytics developed a new thermal solver, funded by the U.S. Army. The new 

software, known as MUSES, carries government ITAR restrictions. MUSES is marketed 

by ThermoAnalytics for non-military use under the RadTherm name, as that name is 

familiar to the OEMs. MUSES, which was not a derivative work, supplanted RadTherm.

4. ThermoAnalytics requested FGTL’s acknowledgment that it claims no ownership 

rights to software developed after RadTherm 4.1.

Exhibit G, at page 2.

69. The assertions quoted in the foregoing paragraph regarding the relationship 

between MuSES and RADTHERM are contradicted by the GTMV98 Paper published by Mr. 

Johnson because the GTMV98 Paper repeatedly describes how MuSES “leverages” the 

RADTHERM software and “incorporates” the “rapid prototyping techniques developed for 

commercial automotive applications....” Exhibit C, at Figure 1, page 1, and page 2. 

70. Defendant’s contention that Ford has “no ownership rights to software developed 

after RadTherm 4.1” is expressly contradicted by the “About RadTherm” information displayed 

in the current commercial version, namely version 11.0.0, of the RADTHERM Software, which 

indicates that the copyright for the RADTHERM Software is jointly owned by Defendant and by 

Ford.

71. Defendant’s contention that Ford has “no ownership rights to software developed 

after RadTherm 4.1” is expressly contradicted by the terms of the License Agreement. 

Specifically, the License Agreement provides:

[A]ll works of authorship created or derivative works created with respect to Jointly 

Owned Software [i.e., the RADTHERM Software] under this Agreement shall be deemed 

‘joint works’ under the Copyright Act and that all copyrights for such works of 

authorship shall jointly belong to FGT[L] and Licensee....Upon completion of each new 

release of Jointly Owned Software or upon termination by either FGT[L] or Licensee, as 

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such events occur, the Parties each hereby assign their respective individual rights, title 

and interest in copyrights in the joint works then existing to FGT[L] and Licensee as joint 

owners. FGT[L] and Licensee shall each own an undivided one-half interest in all 

copyrights to the joint works then existing....

Exhibit A, at ¶ 8.1. 

72. Defendant’s contention that Ford has “no ownership rights to software developed 

after RadTherm 4.1” is contradicted by performance under the License Agreement for a period 

of at least fifteen (15) years, during which time Defendant never communicated that Ford’s 

rights in the RADTHERM software ended after version 4.1.

73. Defendant’s license to use the RADTHERM mark is expressly limited to software 

covered by the License Agreement. Specifically, the License Agreement provides:

All trademarks and trade names identifying FGT[L] Licensed Software or FGT[L] or 

Ford businesses (the “Marks”) are, and will remain the exclusive property of FGT[L] 

and Ford respectively. Licensee shall not take any action that jeopardizes the marks, 

and acquires no rights in the Marks except in the limited use rights specified below. 

Licensee shall be limited to using the Marks exclusively to advertise and promote 

FGT[L] Licensed Software.

Exhibit A, at ¶ 12.

74. Defendant’s contention that Ford has “no ownership rights to software developed 

after RadTherm 4.1” is contradicted by Defendant’s continuing use of the RADTHERM mark to 

identify its software up through and including version 11.0.0 of the RADTHERM Software.

Defendant Refuses to Comply with the 

Requirements of the License Agreement Governing Termination

75. The License Agreement provides: “the obligation to pay Royalties to FGT[L]

shall survive until Licensee ceases to market, Sell, and support the FGT[L] Licensed Software, 

Licensee Licensed Software or Jointly Owned Software.” Exhibit A, at ¶ 11.1.

76. In spite of the above-quoted requirement that payment of Royalties continue

following termination of the License Agreement, Defendant refuses to pay royalties after March 

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1, 2014. Specifically, counsel for Defendant asserted:

ThermoAnalytics will pay royalties up through March 1, 2014, and that will conclude all 

royalty obligations.

Exhibit G, at page 2.

77. Defendant’s refusal to pay royalties after March 1, 2014, violates Defendant’s 

obligation to pay royalties “until Licensee ceases to market, Sell, and support the FGT[L]

Licensed Software, Licensee Licensed Software or Jointly Owned Software.” License 

Agreement, at ¶ 11.1.

78. The License Agreement provides that upon termination of the License 

Agreement, Defendant is obligated to “return to FGT[L] all copies of and information related to 

FGT[L] Licensed Software, and Jointly Owned Software that were furnished to or prepared by 

Licensee in connection with the rights Licensed under this agreement.” Exhibit A, at ¶ 11.1. 

79. Ford has expressly requested that Defendant “provide source code and object 

code for all of the joint works now existing, including the most recent version of the RadTherm 

software.” Exhibit E, at page 2. 

80. Although not explicitly stated, counsel for Defendant’s reference to the alleged 

“ITAR restrictions” is presumably the rationale for Defendant’s failure and refusal to provide to 

Ford the materials required by the License Agreement.

81. In spite of the above-quoted requirement set forth in the License Agreement, 

Defendant has failed and refused to provide source code and object code for the RadTherm 

software. Specifically, counsel for Defendant asserted: “[t]he new software, known as MUSES, 

carries government ITAR [International Traffic in Arms Regulations] restrictions.” Exhibit E, at 

page 2. 

82. The License Agreement provides that upon termination, Defendant’s right to use 

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the RADTHERM mark terminates. Specifically, the License Agreement provides that:

Ford businesses (the “Marks”) are, and will remain the exclusive property of FGT[L] and 

Ford respectively. Licensee shall not take any action that jeopardizes the marks, and 

acquires no rights in the Marks except in the limited use rights specified below. Licensee 

shall be limited to using the Marks exclusively to advertise and promote FGT[L] 

Licensed Software.

Exhibit A, at ¶ 12.

83. In spite of the above-quoted requirement and Ford’s written demand that 

Defendant cease all use of the RADTHERM trademark, Defendant continues to use the 

RADTHERM trademark. Exhibit F, at page 2 (“Ford requires that TAI cease all use of the 

RadTherm trademark.”) Attached hereto as Exhibit H is a page from TAI’s website showing 

prominent use of the RADTHERM trademark on September 11, 2014.

84. The License Agreement provides that upon termination, the parties are obligated 

to assign all rights in the joint works then existing to Ford and Defendant as joint owners. 

Specifically, the License Agreement provides:

Upon completion of each new release of Jointly Owned Software or upon termination by 

either FGT[L] or Licensee, as such events occur, the Parties each hereby assign their 

respective individual rights, title and interest in copyrights in the joint works then existing 

to FGT[L] and Licensee as joint owners. FGT[L] and Licensee shall each own an 

undivided one-half interest in all copyrights to the joint works then existing....”

Exhibit A, at ¶ 8.1.

85. In spite of the above-quoted requirement and Ford’s written request for 

assignment of “all individual rights, title, and interest in copyrights in the joint works,” 

Defendant has failed and refused to comply. 

Defendant Violated the License Agreement by 

Failing to Pay Royalties Due to Ford

86. The License Agreement provides that: “Licensee shall pay a Royalty to FGTI for 

each Sale of FGTI Licensed Software, Licensee Licensed Software and Jointly Owned Software 

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which are included as part of consulting services or the development of third party software 

modules which operate in conjunction with any portion of FGTI Licensed Software, Licensee 

Licensed Software and Jointly Owned Software...” See Exhibit A, at ¶4.2.

87. Defendant created a “Human Module” that operates in conjunction with the 

RADTHERM Software.

88. Defendant created a “Battery Module” that operates in conjunction with the 

RADTHERM Software.

89. Defendant created an “Advanced Solver” that operates in conjunction with the 

RADTHERM Software.

90. Defendant created a “CAE Coupling” module that operates in conjunction with 

the RADTHERM Software.

91. In spite of the obligation to pay a royalty to Ford in connection with sales of 

“software modules which operate in conjunction with [the] FGTI Licensed Software,” Defendant 

has failed to pay royalties on sales of the “Human Module,” the “Battery Module,” the 

“Advanced Solver,” and the “CAE Coupling” module.

92. Ford is entitled to recover from Defendant royalties owned on sales of the 

“Human Module,” the “Battery Module,” the “Advanced Solver,” and the “CAE Coupling” 

module.

FIRST CLAIM FOR RELIEF

(FALSE DESIGNATION OF ORIGIN OR SPONSORSHIP UNDER 15 U.S.C. § 1125(a))

93. Ford realleges and incorporates herein the allegations above.

94. At all times following the execution of the License Agreement, Defendant was 

obligated to apply the RADTHERM mark solely to software jointly owned by Ford and 

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Defendant. 

95. Defendant has utilized the RADTHERM mark in connection with the 

RADTHERM IR Software without Ford’s knowledge or consent.

96. Following the termination of the License Agreement, Defendant has continued to 

use the RADTHERM mark in connection with Defendant’s products and services.

97. Defendant’s use of the RADTHERM mark prior to the termination of the License 

Agreement in connection with the RADTHERM IR Software is likely to confuse, mislead or 

deceive customers, purchasers, and members of the general public as to the origin, source, 

sponsorship, or affiliation of Defendant’s RADTHERM IR Software, and is likely to cause such 

people to believe in error that Defendant’s RADTHERM IR Software products and services have 

been authorized, sponsored, approved, endorsed, or licensed by Ford.

98. Defendant’s use of the RADTHERM mark after termination of the License 

Agreement is likely to confuse, mislead or deceive customers, purchasers, and members of the 

general public as to the origin, source, sponsorship, or affiliation of Defendant’s services and 

products, and is likely to cause such people to believe in error that Defendant’s products and 

services have been authorized, sponsored, approved, endorsed, or licensed by Ford or that 

Defendant is in some way affiliated with Ford. 

99. Defendant’s acts constitute false or misleading descriptions, false advertising, and 

false designations of the origin and/or sponsorship of Defendant’s goods in violation of Section 

43(a) of the Lanham Act, as amended, 15 U.S.C. § 1125(a).

100. By reason of Defendant’s actions, Ford has suffered irreparable harm. Unless 

Defendant is restrained from its actions, Ford will continue to be irreparably harmed. 

101. Ford has no remedy at law that will compensate for the continued and irreparable 

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harm that will be caused if Defendant’s acts are allowed to continue.

102. As a direct and proximate result of Defendant’s conduct, Ford is entitled to 

damages, treble damages, statutory damages, and the equitable remedy of an accounting for, and 

a disgorgement of, all revenues and/or profits wrongfully derived by Defendant from its false 

designations of origins, and Ford’s attorneys’ fees and costs pursuant to 15 U.S.C. § 1117.

SECOND CLAIM FOR RELIEF

(CANCELLATION OF TRADEMARK REGISTRATION PURSUANT TO 15 U.S.C. § 1064) 

103. Ford realleges and incorporates herein the allegations above.

104. At all times following the execution of the License Agreement, the RADTHERM 

mark has been applied solely to software jointly owned by Ford and Defendant. 

105. Following the termination of the License Agreement, Defendant has continued to 

use the RADTHERM mark in connection with Defendant’s products and services.

106. Defendant’s use of the RADTHERM mark is likely to confuse, mislead or 

deceive customers, purchasers, and members of the general public as to the origin, source, 

sponsorship, or affiliation of Defendant’s services and products, and is likely to cause such 

people to believe in error that Defendant’s products and services continue to be authorized, 

sponsored, approved, endorsed, or licensed by Ford. 

107. Defendant’s continued use of the RADTHERM mark misrepresents the source of 

Defendant’s goods and services in connection with which the RADTHERM mark is used.

108. By reason of Defendant’s actions, Trademark Registration No. 2,695,172 for 

RADTHERM should be cancelled.

THIRD CLAIM FOR RELIEF

(BREACH OF CONTRACT)

109. Ford realleges and incorporates herein the allegations above.

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110. Defendant has breached its obligations under the License Agreement to continue 

to pay royalties due to Ford following termination.

111. Defendant has breached its obligations under the License Agreement by 

continuing to use the RADTHERM trademark following termination. See Exhibit A, at ¶ 12 

(requiring that the RADTHERM mark be used only in connection with software offered under 

the License Agreement). 

112. Defendant has breached its obligations under the License Agreement by refusing 

to “return to FGT[L] all copies of and information related to FGT[L] Licensed Software, and 

Jointly Owned Software that were furnished to or prepared by Licensee in connection with the 

rights Licensed under this agreement.” Exhibit A, at ¶ 11.1.

113. Defendant has breached its obligations under the License Agreement by refusing 

to assign its “individual rights, title and interest in copyrights in the joint works then existing to 

FGT[L] and Licensee as joint owners.” Exhibit A, at ¶ 8.1. 

114. Defendant has breached its obligations under the License Agreement by failing to 

pay royalties on sales of software modules “which operate in conjunction with any portion of

FGTI Licensed Software,” as required by the License Agreement.

115. Defendant breached its obligations under the License Agreement by failing to pay

roytalies on sales of software sold under the name RADTHERM IR.

116. As a direct and proximate result of Defendant’s conduct, Ford has suffered 

damages in an amount to be proven at trial. 

FOURTH CLAIM FOR RELIEF 

(ESTOPPEL) 

117. Ford realleges and incorporates herein the allegations above. 

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118. TAI contends that changes to the RADTHERM Software that occurred prior to 

February 2000 terminated Ford’s ownership interest in the RADTHERM Software.

119. TAI waited until November 14, 2013, to communicate to Ford in writing its 

contention that Ford’s ownership interest in the RADTHERM Software was allegedly terminated 

in February 2000. 

120. TAI waiting until June 8, 2015, to communicate to Ford in writing its contention 

that the TM Tools Library of version 4.1.1 of the RADTHERM Software “is copyrighted by 

ThermoAnalytics and remains the property of ThermoAnalytics.” 

121. In spite of TAI’s contentions that Ford holds no copyright interest in version 5.0 

of the RADTHERM Software, TAI included a copyright notice identifying FGTL as the 

copyright owner on version 5.0 of the RADTHERM Software. 

122. In spite of TAI’s contentions that Ford holds no copyright interest in versions 6.0-

11.0 of the RADTHERM Software, TAI included copyright notices in each version identifying 

FGTL on each of versions 5.0-11.0 of the RADTHERM Software. 

123. In spite of TAI’s contentions that Ford holds no ownership interest in version 6.0

of the RADTHERM Software, TAI included an end user license agreement with version 6.0 of 

the RADTHERM Software expressly stating that the RADTHERM Software “is the property of 

Ford Global Technologies, Inc. ("FGTI") and ThermoAnalytics, Inc.”

124. In spite of TAI’s contentions, on March 22, 2012, TAI expressly “ratified and 

confirmed” all provisions of the License Agreement. See Exhibit N, at page 2. 

125. In reliance on Defendant’s representations, Ford permitted TAI to continue to use 

the RADTHERM Trademark. 

126. In reliance on Defendant’s representations, Ford entered into contracts to pay TAI 

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at least $175,000.00 to add new features to the RADTHERM Software. See Exhibits O and P. 

127. In view of Defendant’s delay in asserting its alleged ownership rights the 

RADTHERM Software, witnesses with potentially relevant information to Defendant’s claim are 

no longer available. 

128. In view of Defendant’s delay in asserting its alleged ownership rights the 

RADTHERM Software, information relevant information to Defendant’s claim is no longer 

available. 

129. In view of Defendant’s delay in asserting its alleged ownership rights the 

RADTHERM Software and Ford’s reliance on Defendant’s representations relating to the 

License Agreement, it would be inequitable to permit Defendant to retain ownership of the 

RADTHERM Software. 

FIFTH CLAIM FOR RELIEF

(DECLARATORY JUDGMENT OF OWNERSHIP OF RADTHERM SOFTWARE) 

130. Ford realleges and incorporates herein the allegations above. 

131. An actual and justiciable controversy exists between the parties as to the 

ownership of the RADTHERM Software. 

132. Defendant contends that it owns all copyrights to Versions 5.0-11.0 of the 

RADTHERM Software. 

133. Ford contends that Defendant and Ford jointly own all copyrights to Versions 5.0-

11.0 of the RADTHERM Software. 

134. Defendant contends that it owns all copyrights to the TM Tools Library of version 

4.1.1 of the RADTHERM Software. 

135. Ford is entitled to a declaratory judgment, pursuant to 28 U.S.C. §§ 2201 that 

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Defendant and Ford jointly own all copyrights to Versions 5.0-11.0 of the RADTHERM 

Software.

136. Ford is further entitled to a declaratory judgment, pursuant to 28 U.S.C. §§ 2201 

that Ford owns all copyrights to the TM Tools Library of version 4.1.1 of the RADTHERM 

Software.

137. Ford is further entitled to a declaratory judgment, pursuant to 28 U.S.C. §§ 2201 

that Defendant’s claims of ownership are barred under 17 U.S.C. § 507.

PRAYER FOR RELIEF

WHEREFORE, Ford prays for relief against Defendant as follows: 

1. That a permanent injunction be issued enjoining Defendant, its employees, agents, 

successors and assigns, and all those in active concert and participation with Defendant, and each 

of them who receives notice directly or otherwise of such injunctions, from:

(a) imitating, copying, or making unauthorized use of the RADTHERM mark, or any 

confusingly similar variations thereof;

(b) importing, manufacturing, producing, distributing, circulating, selling, offering 

for sale, advertising, promoting or displaying any service or product using any simulation, 

reproduction, counterfeit, copy, or any confusingly similar variation of the RADTHERM mark;

(c) using any simulation, reproduction, counterfeit, copy or confusingly similar 

variation of the RADTHERM mark in connection with the promotion, advertisement, display, 

sale, offering for sale, manufacture, production, circulation or distribution of any service or 

product;

(d) using any false designation of origin or false description (including, without 

limitation, any letters or symbols constituting the RADTHERM mark, or performing any act, 

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which can, or is likely to lead members of the trade or public to believe that any service or 

product manufactured, distributed or sold by Defendant is in any manner associated or connected 

with Ford, or is sold, manufactured, licensed, sponsored, approved or authorized by Ford;

(e) transferring, consigning, selling, shipping or otherwise moving any goods, 

packaging or other materials in Defendant’s possession, custody or control bearing a design or 

mark substantially similar to the RADTHERM mark;

(f) engaging in any other activity constituting unfair competition with Ford with 

respect to the RADTHERM mark; and

(g) instructing, assisting, aiding or abetting any other person or business entity in 

engaging in or performing any of the activities referred to in subparagraphs (a) through (f) above.

2. For an order directing that Defendant file with the Court and serve upon Ford’s 

counsel within thirty (30) days after entry of such judgment, a report in writing under oath, 

setting forth in detail the manner and form in which Defendant has complied with the above.

3. For an order permitting Ford or auditors for Ford to audit and inspect the books 

and records of Defendants for a period of six months after entry of final relief in this matter to 

determine the scope of Defendants’ past use of the RADTHERM trademark, including all 

revenues and sales related to Defendants’ use of the RADTHERM trademark, as well as 

Defendants’ compliance with orders of this Court.

4. For an order permitting auditors for Ford to audit and inspect the books and 

records of Defendants for a period of six months after entry of final relief in this matter for the 

purpose of auditing all royalties payable under the License Agreement pursuant to Paragraph 

13.2 of the License Agreement.

5. For the entry of judgment declaring that Defendant has used a false designation of 

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origin under the Lanham Act, 15 U.S.C. § 1125(a).

6. For an order requiring Defendant to assign its individual rights, title and interest 

in all copyrights in the RADTHERM Software to Ford and TAI as joint owners.

7. For an order requiring Defendant to deliver all information related to the 

RADTHERM software, including all source code and object code, that were prepared by 

Defendant in connection with the rights granted under the License Agreement. 

8. For an order requiring Defendant to pay royalties to Ford until Defendant ceases 

to market, sell, and support the RADTHERM Software.

9. For an award of damages, treble damages, statutory damages, and the equitable 

remedy of an accounting for, and a disgorgement of, all revenues and/or profits wrongfully 

derived by Defendant from its false designations of origins, and Ford’s attorneys’ fees and costs

pursuant to 15 U.S.C. § 1117.

10. For an award of Ford’s costs and disbursements incurred in this action, including 

Ford’s reasonable attorneys’ fees.

11. For an award of all royalties due under the License Agreement an wrongfully 

withheld by Defendant.

12. For an order transferring ownership of federal trademark registration (no. 

2,695,172) to Ford, or in the alternative, for an order cancelling federal trademark registration 

(no. 2,695,172).

13. For a declaratory judgment, pursuant to 28 U.S.C. §§ 2201 that that Defendant 

and Ford jointly own all copyrights to Versions 5.0-11.0 of the RADTHERM Software.

14. For a declaratory judgment, pursuant to 28 U.S.C. §§ 2201 that Ford owns all 

copyrights to the TM Tools Library of version 4.1.1 of the RADTHERM Software.

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15. For a declaratory judgment pursuant to 28 U.S.C. §§ 2201 that Defendant’s

claims of ownership of the RADTHERM Software and the TM Tools Library of version 4.1.1 

of the RADTHERM Software are barred under 17 U.S.C. § 507. 

16. For an award of all actual damages caused by the acts of Defendant forming the

basis of this Complaint. 

17. For an award of interest, including prejudgment interest on the foregoing sums.

18. For such other and further relief as the Court may deem just and proper

DATED this 14th day of August, 2015.

Gregory D. Phillips 

Jared L. Cherry 

PHILLIPS, RYTHER & WINCHESTER 

By: /s/ Gregory D. Phillips 

Gregory D. Phillips 

Attorneys for Plaintiff Ford Motor Company 

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