IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

TOLEDO MACK SALES & :

SERVICE, INC., :

:

Plaintiff, : Civil Action No. 2:02-CV-04373-RLB

:

v. :

: JURY TRIAL DEMANDED

MACK TRUCKS, INC., :

:

Defendant. :

_____________________________________________________________________________

MACK TRUCKS, INC., :

:

Plaintiff, :

:

v. :

:

TOLEDO MACK SALES & :

SERVICE, INC., and : JURY TRIAL DEMANDED

:

PAI INDUSTRIES, INC., :

950 Northbrook Parkway, Suwanee, GA, :

:

Defendants. :

ANSWER AND COUNTERCLAIMS OF DEFENDANT MACK TRUCKS, INC.

Defendant, Mack Trucks, Inc. (“Mack”), by and through its undersigned counsel, 

answers the Complaint in this action, responding in like numbered paragraphs and asserting 

affirmative defenses, and, further, asserting counterclaims against plaintiff, Toledo Mack Sales 

& Services, Inc. ("Toledo Mack"), and PAI Industries, Inc. ("PAI"), which is joined as a 

defendant in Mack's counterclaims. All averments of the Complaint not specifically admitted 

or denied below are hereby denied.

FIRST DEFENSE

Introduction

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Mack admits only that Toledo Mack is, and has been for twenty years, an 

authorized distributor of Mack's products and that Toledo Mack purports to sue as described. 

The remaining averments of the Introduction are either conclusions of law to which no response 

is required or are denied. 

1. It is admitted that Toledo Mack is an authorized Mack dealer. After 

reasonable investigation, Mack is without knowledge or information sufficient to form a belief as 

to the truth or falsity of the remainder of the allegations contained in Paragraph 1, which are 

accordingly denied.

2. Admitted.

3. The allegations contained in Paragraph 3 are conclusions of law to which 

no response is required.

4. The allegations contained in Paragraph 4 are conclusions of law to which 

no response is required.

5. The allegations contained in Paragraph 5 are conclusions of law to which 

no response is required.

6. Admitted, except for the allegations of fact as to Mack's market share, 

which are denied. 

7. Admitted only that such a network has been one of several channels of 

distribution utilized by Mack.

8. Admitted.

9. After reasonable investigation, Mack is without knowledge or information 

sufficient to form a belief as to the truth or falsity of the allegations contained in Paragraph 9, 

which are accordingly denied.

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10. Mack admits that among the Mack products that Toledo Mack sells or 

leases are new heavy-duty Mack truck chassis. After reasonable investigation, Mack is without 

knowledge or information sufficient to form a belief as to the truth or falsity of the remaining 

allegations contained in Paragraph 10, which are accordingly denied.

11. After reasonable investigation, Mack is without knowledge or information 

sufficient to form a belief as to the truth or falsity of the allegations contained in Paragraph 11, 

which are accordingly denied.

12. Mack admits only that it sells chassis directly to McClain Industries, Inc., 

Heil Environmental Industries, Ltd. and McNeilus Companies, Inc. The remaining allegations 

contained in Paragraph 12 are denied.

13. Mack admits only that some body manufacturers have purchased chassis 

from authorized Mack distributors. The remaining allegations contained in Paragraph 13 are 

denied.

14. Admitted except for the allegations that body manufacturers and their 

authorized distributors perform far more limited and less valuable distribution and support 

functions than Mack's authorized distributors, which are denied. 

15. Denied.

16. Denied.

17. Denied.

18. Admitted only that Mack sells directly to certain customers, including 

those listed by name, and that some of those customers lease and resell trucks to end users. The 

remaining allegations in Paragraph 18 are denied.

19. Denied.

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20. Admitted except for the allegations that National Accounts perform far 

more limited and less valuable distribution and support functions than Mack's authorized 

distributors, which are denied. 

21. Mack admits only that it sells directly to certain customers and that some 

of those customers lease and resell trucks to end users. The remaining allegations contained in 

Paragraph 21 are denied. 

22. Denied.

23. Denied.

24. Mack admits that it has previously sold Mack trucks and components to 

certain franchised Mack dealers at lower prices than Mack sells similar trucks and components to 

Toledo Mack. Mack denies that such prices resulted from any practice or program that was not 

equally available to Toledo Mack, or that such sales were on more favorable terms. Mack denies 

the remaining allegations in Paragraph 24.

25. Denied.

26. Denied.

27. Denied.

28. Mack admits only that the Distributor Agreement between Mack and 

Toledo Mack does not restrict the geographic area in which Toledo Mack may resell Mack 

products. The remaining allegations contained in Paragraph 28 are denied.

29. Denied.

30. Denied. 

31. Denied.

32. Denied.

33. Denied.

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34. Denied.

FIRST CLAIM FOR RELIEF

35. Mack incorporates its responses to Paragraphs 1-34 as if fully set forth 

herein. 

36. The allegations contained in Paragraph 36 are conclusions of law to which 

no response is required.

37. The allegations contained in Paragraph 37 are conclusions of law to which 

no response is required.

38. The allegations contained in Paragraph 38 are conclusions of law to which 

no response is required.

39. To the extent that the allegations contained in Paragraph 39 are 

conclusions of law, no response is required. The factual allegations contained in Paragraph 39 

are denied.

40. The allegations contained in Paragraph 40 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

41. The allegations contained in Paragraph 41 are conclusions of law to which 

no response is required. 

SECOND CLAIM FOR RELIEF 

42. Mack incorporates its responses to Paragraphs 1-41 as if fully set forth 

herein. 

43. The allegations contained in Paragraph 43 are conclusions of law to which 

no response is required.

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44. To the extent that the allegations contained in Paragraph 44 are 

conclusions of law, no response is required. Mack admits only that Toledo Mack's Area of 

Responsibility includes one county in Michigan. The remaining factual allegations are denied.

45. To the extent that the allegations contained in Paragraph 45 are 

conclusions of law, no response is required. Mack admits only that it sells its products to the 

types of customers described. The remaining factual allegations are denied.

46. The allegations contained in Paragraph 46 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

47. The allegations contained in Paragraph 47 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

THIRD CLAIM FOR RELIEF

48. Mack incorporates its responses to Paragraphs 1-47 as if fully set forth 

herein. 

49. The allegations contained in Paragraph 49 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

50. Mack sells some trucks and components across state lines in the United 

States, as well as some trucks and components which are sold in the state in which they are 

manufactured, and that Toledo Mack purchased Mack trucks from Mack for resale. The 

remaining allegations contained in Paragraph 50 are conclusions of law to which no response is 

required.

51. The allegations contained in Paragraph 51 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

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52. The allegations contained in Paragraph 52 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

53. The allegations contained in Paragraph 53 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

54. The allegations contained in Paragraph 54 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

55. The allegations contained in Paragraph 55 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

56. The allegations contained in Paragraph 56 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

57. The allegations contained in Paragraph 57 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

58. The allegations contained in Paragraph 58 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

59. The allegations contained in Paragraph 59 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

60. The allegations contained in Paragraph 60 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

61. The allegations contained in Paragraph 61 are conclusions of law to which 

no response is required.

FOURTH CLAIM FOR RELIEF

62. Mack incorporates its responses to Paragraph 1-61 as if fully set forth 

herein. 

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63. The allegations contained in Paragraph 63 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

64. The allegations contained in Paragraph 64 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

65. The allegations contained in Paragraph 65 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied. 

66. It is admitted only that LCOE trucks are made with the cab placed over or 

in front of the engine, and that heavy duty LCOE trucks are capable of carrying heavy payload 

capacities or gross vehicle weights and are used in some heavy hauling applications such as trash 

collection, home heating oil delivery, aircraft refueling concrete pumping and other vocational 

market applications. The remaining allegations contained in Paragraph 66 are conclusions of law 

to which no response is required. To the extent that they are allegations of fact, they are denied.

67. The allegations contained in Paragraph 67 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, Mack, after reasonable 

investigation, is without knowledge or information sufficient to form a belief as to their truth or 

falsity, and they are accordingly denied. 

68. The allegations contained in Paragraph 68 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

69. The allegations contained in Paragraph 69 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

70. The allegations contained in Paragraph 70 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

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71. The allegations contained in Paragraph 71 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

72. The allegations contained in Paragraph 72 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

73. The allegations contained in Paragraph 73 are conclusions of law to which 

no response is required. 

FIFTH CLAIM FO RELIEF

74. Mack incorporates its responses to Paragraphs 1-73 as if fully set forth 

herein.

75. Mack does not know what “business relationships and business 

expectancies with customers” are referenced in Paragraph 75 and, after reasonable investigation, 

is without knowledge and information sufficient to form a belief as to the truth or falsity of the 

allegations, which are accordingly denied.

76. Denied.

77. Denied.

78. The allegations contained in Paragraph 78 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

79. Denied.

SIXTH CLAIM FOR RELIEF

80. Mack incorporates its responses to Paragraph 1-79 as if fully set forth 

herein. 

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81. The allegations contained in Paragraph 81 are based on documents which 

speak for themselves, and no response is required.

82. The allegations contained in Paragraph 82 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, Mack admits only that it 

sells its products to customers who are not distributors. The remaining allegations of fact in 

Paragraph 82 are denied.

83. The allegations contained in Paragraph 83 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

84. The allegations contained in Paragraph 84 are based on documents which 

speak for themselves, and no response is required.

85. The allegations contained in Paragraph 85 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

86. The allegations contained in Paragraph 86 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

SEVENTH CLAIM FOR RELIEF

87. Mack incorporates its responses to Paragraphs 1-86 as if fully set forth 

herein. 

88. The allegations contained in Paragraph 88 are based on documents which 

speak for themselves, and no response is required.

89. Denied. 

90. The allegations contained in Paragraph 90 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, Mack admits only that it 

sells its products to customers who are not distributors. All other allegations of fact are denied.

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91. After reasonable investigation, Mack is without knowledge or information

sufficient to form a belief as to the truth or falsity of Toledo Mack's alleged expectations. The 

remaining allegations in Paragraph 91 are denied.

92. After reasonable investigation, Mack is without knowledge or information 

sufficient to form a belief as to the truth or falsity of Toledo Mack's alleged expectations. The 

remaining allegations in Paragraph 92 are denied.

93. After reasonable investigation, Mack is without knowledge or information 

sufficient to form a belief as to the truth or falsity of Toledo Mack's alleged expectations. The 

remaining allegations in Paragraph 93 are denied, and are deemed denied to the extent that they 

are conclusions of law.

94. The allegations contained in Paragraph 94 are conclusions of law to which 

no response is required. To the extent that they are allegations of fact, they are denied.

SECOND DEFENSE

The Complaint fails to state a claim upon which relief can be granted.

THIRD DEFENSE

Toledo Mack is barred from recovering damages or obtaining injunctive relief on 

the claims asserted in the Complaint by the doctrines of estoppel, waiver, laches and/or unclean 

hands.

FOURTH DEFENSE

Toledo Mack's claims are barred, in whole or in part, by the applicable statutes of 

limitation.

FIFTH DEFENSE

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Toledo Mack's claims are barred because it has not suffered any damages as a 

result of matters alleged in the Complaint.

SIXTH DEFENSE

Toledo Mack's claims for injunctive relief are invalid and improper in that Toledo 

Mack is incapable of demonstrating irreparable harm and/or the absence of any adequate remedy 

at law.

SEVENTH DEFENSE

There is no direct and proximate causal connection between any claim of harm or 

injury alleged by Toledo Mack and any acts alleged to have been committed by Mack.

EIGHTH DEFENSE

Toledo Mack is barred, in whole or in part, from pursuing damages for the claims 

asserted in the Complaint because it failed to mitigate its damages or to otherwise take 

commercially reasonable steps to limit any risks and losses.

NINTH DEFENSE

Mack has met the requirement of good faith conduct under the Ohio Motor 

Vehicle Law.

TENTH DEFENSE

Mack has not competed with Toledo Mack in the sale, lease or servicing of any 

motor vehicle and, even if it did so, any such competition was fair.

ELEVENTH DEFENSE

Mack has not engaged in any predatory or discriminatory conduct.

TWELTH DEFENSE

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Toledo Mack is not located in Michigan and thus has no claim for relief under the 

Michigan Franchise Investment Law.

THIRTEENTH DEFENSE

Any sales of new motor vehicles made directly by Mack were not to retail 

customers as the term "retail customers" is construed under the Michigan Franchise Investment 

Law. 

FOURTEENTH DEFENSE

Toledo Mack has suffered no antitrust injury.

FIFTEENTH DEFENSE

All of Mack's product prices and promotional programs were functionally 

available to Toledo Mack on equal terms with any other purchaser of the same quality and grade 

of goods. 

SIXTEENTH DEFENSE

If Mack sold goods to Toledo Mack at higher prices than other purchasers of the 

same quality and grade of goods, Toledo Mack was neither in competition with the allegedly 

“favored” purchasers nor suffered any competitive injury. 

SEVENTEENTH DEFENSE

Any difference in prices charged to Toledo Mack and another purchaser are 

covered by the meeting competition defense to the Robinson Patman Act.

EIGHTEENTH DEFENSE

 Any difference in prices charged to Toledo Mack and another purchaser are 

covered by the cost justification defense to the Robinson Patman Act.

NINETEENTH DEFENSE

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Any difference in prices charged to Toledo Mack and another pur chaser are 

covered by the functional discount defense to the Robinson Patman Act.

TWENTIETH DEFENSE

Any difference in prices charged to Toledo Mack and another purchaser are 

covered by the changing market conditions defense to the Robinson Patman Act.

TWENTY-FIRST

If Mack sold goods to a favored purchaser at discriminatory price, such sale was 

not in interstate commerce and thus is not subject to the Robinson Patman Act.

TWENTY-SECOND DEFENSE

Mack has not engaged in any concert, combination or conspiracy to restrain trade.

TWENTY-THIRD DEFENSE

Toledo Mack has failed to plead that it purchased Mack's products in any properly 

defined market or sub-market. 

TWENTY-FOURTH DEFENSE

Mack lacks market power in any relevant market or sub-market.

TWENTY-FIFTH DEFENSE

Toledo Mack's claims are barred, in whole or in part, because any conduct 

engaged in by Mack has been reasonable and based on independent, legitimate business and 

economic justifications.

TWENTY-SIXTH DEFENSE

Mack has never intentionally interfered with the performance of an existing 

contract, or the formation of a prospective contract, between Toledo Mack and a third party.

TWENTY-SEVENTH DEFENSE

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If Mack intentionally interfered with the performance of an existing contract, or 

the formation of a prospective contract, between Toledo Mack and a third party, its actions were 

privileged, justified and proper.

TWENTY-EIGHTH DEFENSE

If Mack engaged in any tortious conduct, its actions were not willful, malicious 

and intentional.

TWENTY-NINTH DEFENSE

Mack did not breach any contract with Toledo Mack and discharged all of its 

contractual obligations in good faith.

THIRTIETH DEFENSE

Toledo Mack's claims are barred due to its own material breach of contract.

THIRTY-FIRST DEFENSE

Toledo Mack lacks standing to sue for relief under the statutes as to which its 

claims are alleged. 

COUNTERCLAIMS

For its counterclaims against Toledo Mack and PAI, Mack alleges as follows:

Parties

1. Mack is a Pennsylvania corporation with its principal place of business at 

2100 Mack Boulevard, Allentown, Pennsylvania.

2. According to its Complaint, Toledo Mack is an Ohio corporation with its 

principal place of business at 2124 Front Street, Toledo, Ohio.

3. PAI is a Florida corporation with its principal place of business at 950 

Northbrook Parkway, Suwanee, Georgia.

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4. PAI is joined as a defendant to Mack's counterclaims pursuant to Rules 

13(h), 19(a) and/or 20(a) of the Federal Rules of Civil Procedure because Mack's claims against 

both Toledo Mack and PAI arise out of the same transaction and occurrence and Mack cannot be 

accorded complete relief without the presence of PAI in this action.

Jurisdiction and Venue

5. This Court has jurisdiction over Mack's counterclaim for copyright 

infringement pursuant to 28 U.S.C. §§ 1331 and 1338. This Court has jurisdiction over Mack's 

state law counterclaims pursuant to 28 U.S.C. § 1332 by virtue of the complete diversity of the 

parties and the fact that each state law counterclaim concerns an amount in controversy in excess 

of $75,000.00, exclusive of interests and costs. In the alternative, this Court has jurisdiction over 

Mack's state law counterclaims pursuant to 28 U.S.C. § 1367(a) because the state law 

counterclaims arise out of the same transaction and occurrence as Mack's counterclaims for 

copyright infringement.

6. Jurisdiction over Mack's counterclaims is further supported by Rule 13(b) 

of the Federal Rules of Civil Procedure, relating to permissive counterclaims. 

7. Venue is proper in the United States District Court for the Eastern District 

of Pennsylvania pursuant to 28 U.S.C. § 1391(a)(2), (b)(2), because the trade secrets, 

confidential business information and copyrights which are the subject of Mack's counterclaims 

are located at, and were stolen from, Mack's principal place of business in Allentown, 

Pennsylvania.

Factual Background

8. Mack is a leading manufacturer of truck chassis and truck parts in the 

United States, including after-market truck replacement parts. 

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9. Mack sells its after-market truck parts primarily through its network of 

authorized distributors, including Toledo Mack. 

10. The after-market is highly competitive and is comprised of name-brand 

manufacturers, like Mack, and copy cat manufacturers of generic parts, like PAI. The copy cat 

manufacturers can often undercut the price of the name-brand manufacturers, but only if they 

competently gather technical information about the parts and their applications. With “perfect” 

information, they could successfully take market share from the name-brand manufacturers 

because they could efficiently determine quantity and timing of large manufacturing runs and 

could provide superior customer service.

11. In order to improve its competitive position, Mack, through its contractor 

GGS Information Services, Inc. ("GGS"), developed a computerized parts databases for its 

dealers. 

12. The databases included the MACSPEC 2001© system, which is 

comprised of 28 CD ROM discs containing vehicle-specific parts configuration data for nearly 

every truck chassis manufactured by Mack since approximately 1966. The MACSPEC 2001© 

system contains special software source codes to permit a user to easily search the parts database 

vehicle identification number ("VIN Number"), part number, partial part number, arrangement 

number, partial arrangement number or major unit serial number 

13. This quick-search capability gives Mack and its distributors a significant 

edge in selling after-market truck parts because the distributors can search quickly and accurately 

for the parts necessary to meet a particular customer's needs. Without MACSPEC 2001©, Mack 

distributors would have to engage in detailed and time consuming investigations of which part is 

appropriate for which truck.

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14. The compilation of the data and the software codes is and always has been 

kept secret precisely because it gives Mack and its distributors a significant competitive edge. 

Mack’s secrecy is necessary because companies like PAI could use this information to steal 

Mack’s customers and market share without doing original market, products or design research. 

Competitors could also use this information to give customers the false but comforting illusion 

that the competitors have the capability of legally and quickly identifying what parts go into 

what Mack models.

15. Mack is the owner of the copyrights for the MACSPEC 2001© system's 

parts database and source code. Mack currently has an application pending to register its 

copyrights for the MACSPEC 2001© system with the United States Copyright Office. A copy 

of that application is attached hereto as Exhibit "A." 

16. In order to protect the secrecy of the MACSPEC 2001© system, Mack has 

developed a system of "unlock codes.” A third party other than Mack (or its contractor) cannot 

access the MACSPEC 2001© system without an unlock code. Each "unlock code" is specific to 

each copy of the MACSPEC 2001© system. Moreover, each “unlock code” integrates itself onto 

the computer hard drive on which it is first used, such that it can never be used on any other 

computer.

17. Mack has only authorized GGS, Mack's contractor which administers the 

MACSPEC 2001© system, to distribute unlock codes to dealers approved by Mack. As part of 

procedures to protect the confidentiality of MACSPEC 2001©, only two employees of GGS are 

authorized to distribute unlock codes. Similarly, at the end of each week, GGS submits a report 

to Mack detailing each distribution of a new unlock code for a copy of MACSPEC 2001©. 

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18. Dealers are permitted to order more than one copy of MACSPEC 2001©, 

but only for use by subdealers approved by Mack. 

19. For each new copy of the system, the dealer receives a new unlock code. 

Any replacement code for existing software can only be issued with Mack's explicit written 

approval.

Toledo Mack's Licensing of MACSPEC 2001

20. Toledo Mack possesses and operates its MACSPEC 2001© system 

pursuant to a license agreement with Mack. A copy of the license agreement is attached hereto 

as Exhibit "B." 

21. Under the terms of its license agreement with Mack, Toledo Mack agreed 

to the following restrictions on its use of the MACSPEC 2001© system:

You may use [MACSPEC 2001©] only in connection with your parts

and service business in accordance with your MACK distributor

agreement. You will treat [MACSPEC 2001©] and the information

 in [MACSPEC 2001©] as confidential and proprietary to [Mack]. You 

will not permit access to [MACSPEC 2001©] to anyone other than your 

authorized employees or [Mack's] authorized representatives without first 

obtaining written approval from [Mack].

22. Further, under the terms of its license agreement with Mack, Toledo Mack 

may not sublicense, rent, lend, lease, donate, sell, loan, pledge, encumber, transfer or distribute, 

even on a temporary basis, any of its copies of the MACSPEC 2001© system.

23. Under the agreement Toledo Mack may not copy the operating software 

for MACSPEC 2001© except for backup purposes.

Toledo Mack and PAI Conspire to Steal MACSPEC 2001

24. On July 24 and 25, 2002, Mack discovered that Toledo Mack had secretly 

conspired with PAI, Mack's competitor, to steal and misappropriate MACSPEC 2001©.

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25. On July 24, 2002, Bill Black, a GGS employee working the MACSPEC 

2001© Help Desk, received a telephone inquiry about the MACSPEC 2001© system. Mr. Black 

received the telephone call in York, Pennsylvania.

26. The woman who called Mr. Black identified herself as “Yolanda May” 

and she deliberately and fraudulently led Mr. Black to conclude that she was calling on behalf of 

a Mack dealer or subdealer who rightfully possessed MACSPEC 2001©. Ms. “May” 

represented that she was having difficulty using the Arrangement and VIN locator disc in the 

MACSPEC 2001© system.

27. After further discussion, Mr. Black, who continued to be tricked into 

believing Ms. May, agreed to send a replacement disc that would have no value to anyone who 

did not already possess the MACKSPEC 2001© system. 

28. Ms. May asked that GGS address the package containing the replacement 

disc to "Nancy's Trucking," which subsequent investigation has revealed not to be an authorized 

Mack distributor. Ms. May told Mr. Black that the said "Nancy's Trucking" had a mailing 

address of 950 Northbrook Parkway, Suwanee, Georgia 30024--which subsequent investigation 

has revealed to really be the address of PAI's principal place of business. Ms. May left a return 

telephone number of (770) 822-1000--which subsequent investigation has revealed to be PAI's 

telephone number. 

29. The next morning, Mr. Black telephoned Ms. “May” at the number that 

she had given him, in order to confirm that she had received the replacement disc and that it was 

functioning properly. During their conversation, Ms. May put Mr. Black on hold. While on 

hold, Mr. Black heard a message touting PAI and its products. 

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30. Suspicious, Mr. Black visited PAI's web page and learned that PAI and 

"Nancy's Trucking" had the exact same address and telephone number. 

31. Mr. Black called Ms. May back and asked for her dealer code. Ms. May 

said she did not know the dealer code, but replied that her company had received its MACSPEC 

2001© CD ROM discs from Toledo Mack.

32. Upon information and belief, Toledo Mack fraudulently and in violation 

of its license agreement with Mack, delivered MACSPEC 2001© to Mack’s competitor PAI in 

exchange for illegal payments or other surreptitious business favors.

MACK Continues to Suffer Irreparable Harm as a Result of PAI's Theft

33. The theft of the MACSPEC 2001© system causes Mack irreparable harm 

each and every day which its competitor PAI can use Mack's carefully guarded trade secrets to 

undercut Mack's products and services in the marketplace. Upon information and belief, PAI is 

now using Mack's own database and software--developed at considerable expense by Mack--to 

give it a crucial advantage in the marketplace and to destroy Mack’s after market parts business 

by unfairly developing generic substitutes for Mack parts, and to respond to customer inquiries 

with accuracy and alacrity possible only with a sophisticated database system like MACSPEC 

2001©.

34. Upon information and belief, PAI continues to distribute, copy and 

prepare derivative works based on MACSPEC 2001©, in violation of Mack's exclusive rights as 

a copyright holder.

35. Upon information and belief, PAI and Toledo Mack continue to conspire 

to steal Mack's trade secrets, confidential business information and intellectual property, causing 

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irreparable harm as PAI reaps illicitly the rewards of Mack's investments in producing superior 

products and service.

Count I (Misappropriation of Trade Secrets and Confidential Business Information)

(As Against Toledo Mack and PAI)

36. Mack incorporates Paragraphs 1 through 35 of its Counterclaims as if fully 

set forth herein.

37. Mack expended considerable expense and labor in developing the 

MACSPEC 2001© system, which consists of an intricate and sophisticated compilation of 

information about truck parts and computer software to search and use that compilation.

38. The information on the MACSPEC 2001© system, including particularly 

Mack's non-public compilation and organization of truck parts information, is confidential and 

proprietary to Mack. The information contained on the MACSPEC 2001© system is not 

disseminated to the general public. Mack goes to significant lengths to maintain the secrecy of 

the information contained in the MACSPEC 2001©, including, without limitation, binding 

licensees to strict confidentiality agreements and restricting access to copies of MACSPEC 

2001© through the distribution of individual copy-specific unlock codes.

39. The information contained on the MACSPEC 2001© system provides 

Mack with a competitive advantage in the marketplace since it permits Mack's dealers to 

determine what parts are needed to service particular trucks quickly and efficiently, resulting in 

higher parts sales for Mack. Mack's competitors lack the advantages of the comprehensive and 

easily searchable MACSPEC 2001© parts database. With this information, PAI can make major 

manufacturing and marketing decisions, and provide artificial “Mack-quality” service to its 

customers.

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40. Mack only authorized Toledo Mack to receive a copy of MACSPEC 

2001© and an unlock code on the express agreement that Toledo Mack was to maintain the 

secrecy and confidentiality of the MACSPEC 2001© system. Toledo Mack promised not to 

permit any person employed by a third party to have access to MACSPEC 2001©.

41. In breach of both that agreement and the confidence which Mack reposed 

in it, Toledo Mack distributed one of its copies of the MACSPEC 2001© system to PAI and 

provided PAI with the necessary unlock code to access the system.

42. PAI further perpetrated its theft by fraudulently representing itself to Mack 

as an authorized dealer named "Nancy's Trucking" so that it could trick Mack and its contractor 

into providing technical assistance to continue operating the stolen discs. 

43. PAI's improper acquisition of MACSPEC 2001© and Toledo Mack's 

distribution of MACSPEC 2001© to PAI in violation of Mack's confidence and its license 

agreement constituted a misappropriation of Mack's trade secrets and confidential business 

information.

44. PAI and Toledo Mack's actions were malicious, willful and outrageous.

45. Upon information and belief, Toledo Mack and PAI are continuing to 

conspire to use MACSPEC 2001© and other Mack confidential business information and trade 

secrets to develop parts products which will undercut Mack's own products and is using 

MACSPEC 2001© to deliver the same rapid response to customer service inquiries as an 

authorized Mack dealer using MACSPEC 2001©. 

Count II (Copyright Infringement)

(As Against Toledo Mack and PAI)

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46. Mack incorporates Paragraphs 1 through 45 of its Counterclaims as if fully 

set forth herein.

47. MACSPEC 2001© is a computer program consisting of original source 

code and a compilation of pre-existing information about individual truck parts in an original 

manner.

48. Mack is the owner of the copyright on the MACSPEC 2001© system's 

parts database and source code.

49. Mack has filed an application to register its copyrights on the MACSPEC 

2001© system's parts database and source code with the United States Copyright Office.

50. Upon information and belief, without authorization from Mack, Toledo 

Mack distributed the copyrighted MACSPEC 2001© system to PAI for its own direct or indirect 

commercial advantage.

51. Upon information and belief, PAI induced Toledo Mack to distribute the 

MACSPEC 2001© system to it by offering consideration to Toledo Mack.

52. PAI also fraudulently induced Mack to send it part of the MACSPEC 

2001© system by falsely claiming to be an authorized dealer, by providing the false name of 

"Nancy's Trucking," and by providing a false mailing address--all of which acts were designed to 

trick Mack into believing that PAI was an authorized licensee of Mack's copyrights in the 

MACSPEC 2001© system.

53. Upon information and belief, PAI continues to distribute, copy and 

prepare derivative works based on MACSPEC 2001©. Moreover, every time that PAI accesses 

its illicitly acquired copy of MACSPEC 2001©, PAI infringes on Mack's copyrights.

Case 2:02-cv-04373-RB Document 5 Filed 08/22/2002 Page 24 of 30
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54. These acts have all infringed on Mack's exclusive rights as the owner of 

the copyrights on the MACSPEC 2001© system's parts database and source code.

Count III (Breach of Contract)

(As Against Toledo Mack)

55. Mack incorporates Paragraphs 1 through 54 of its Counterclaims as if fully 

set forth herein.

56. Mack and Toledo Mack entered into a licensing agreement whereby 

Toledo Mack would receive a copy of the MACSPEC 2001© system and an unlock code in 

exchange for the payment of fees and an agreement to restrict access by third parties to the 

MACSPEC 2001© system and to maintain the confidentiality of the MACSPEC 2001© system.

57. In the license agreement, Toledo Mack promised that it would not 

distribute MACSPEC 2001© to third parties or permit any person other than a Toledo Mack or 

Mack authorized employee to access MACSPEC 2001© without Mack's prior written consent. 

58. In breach of this agreement Toledo Mack distributed MACSPEC 2001© 

to PAI without Mack's prior written consent.

59. In further breach of this agreement Toledo Mack permitted PAI employees 

to access the MACSPEC 2001© by providing the relevant unlock code to PAI. Toledo Mack 

never received prior written consent from Mack for distribution of the unlock code.

60. As a direct and proximate result of Toledo Mack's breach of contract 

Mack continues to lose the competitive advantages it derived from its investment in the 

development of the MACSPEC 2001© system as PAI exploits its trade secrets further each day, 

resulting in a loss of value in its trade secrets, intellectual property, goodwill and competitive 

position.

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Count IV (Tortious Interference with Existing Contractual Relations)

(As Against PAI)

61. Mack incorporates Paragraphs 1 through 60 of its Counterclaims as if fully 

set forth herein.

62. Mack and Toledo Mack have entered into a license agreement regarding 

Toledo Mack's receipt of the MACSPEC 2001© system, whereby, among other things, Toledo 

Mack agreed to maintain the secrecy and confidentiality of the MACSPEC 2001© system.

63. PAI either was aware or should have been aware of the contract between 

Mack and Toledo Mack.

64. PAI intentionally interfered with the license agreement between Mack and 

Toledo Mack by inducing Toledo Mack to distribute to PAI a copy of the MACSPEC 2001© and 

its unlock code, in violation Toledo Mack's agreement with Mack.

65. PAI's conduct, which constituted, among other wrongs, theft of trade 

secrets and confidential business information and copyright infringement, was improper, 

unjustified and unprivileged.

66. PAI's conduct was willful, malicious and outrageous.

67. As a direct and proximate result of PAI's tortious interference with its 

agreement with Toledo Mack, Mack continues to lose the competitive advantages it derived from 

its investment in the development of the MACSPEC 2001© as PAI exploits its trade secrets 

further each day, resulting in a loss of value in its trade secrets, intellectual property, goodwill 

and competitive position.

Count V (Fraudulent and Intentional Misrepresentation)

(As Against PAI) 

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68. Mack incorporates Paragraphs 1 through 67 of its Counterclaims as if fully 

set forth herein.

69. PAI acquired part of the MACSPEC 2001© system by falsely claiming to 

be an authorized distributor named "Nancy's Trucking" and by providing a false mailing address.

70. PAI knew that it was not, in fact, "Nancy's Trucking" when it made its 

representation to Mack.

71. PAI only claimed to be "Nancy's Trucking" so that it could induce Mack 

into distributing part of the MACSPEC 2001© system to it. PAI knew that Mack would not 

distribute MACSPEC 2001© to a competitor. 

72. Mack was justified in relying on PAI's representation that PAI was an 

authorized distributor named "Nancy's Trucking."

73. As a direct and proximate result of PAI's misrepresentation, Mack was 

induced to send a disc from the MACSPEC 2001© system to PAI.

74. PAI's conduct was willful, malicious and outrageous.

75. As a direct and proximate result of PAI's acquisition of the MACSPEC 

2001© system, Mack continues to lose the competitive advantages it derived from its investment 

in the development of the MACSPEC 2001© as PAI exploits its trade secrets further each day, 

resulting in a loss of value in its trade secrets, intellectual property, goodwill and competitive 

position.

Count VI (Civil Conspiracy)

(As Against Toledo Mack and PAI)

76. Mack incorporates Paragraphs 1 through 75 of its Counterclaims as if fully 

set forth herein.

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77. Toledo Mack and PAI agreed to work together to misappropriate Mack's 

trade secrets and confidential business information and to infringe its copyrights.

78. Toledo Mack and PAI entered into this agreement with the intent of 

injuring Mack.

79. Toledo Mack and PAI engaged in overt acts in furtherance of their 

conspiracy, including, without limitation, Toledo Mack's sending of a copy of the MACSPEC 

2001© system and relevant unlock code to PAI.

80. The fruits of the conspiracy have so far included, at a minimum, the theft 

of the MACSPEC 2001© system. Upon information and belief, Toledo Mack and PAI continue 

to act in furtherance of their conspiracy against Mack.

81. As a result of this conspiracy, Mack continues to lose the competitive 

advantages it derived from its investment in the development of the MACSPEC 2001© as PAI 

exploits its trade secrets further each day, resulting in a loss of value in its trade secrets, 

intellectual property, goodwill and competitive position.

PRAYER FOR RELIEF

WHEREFORE, Mack requests the following relief on all claims and 

counterclaims in this action:

1. That the claims of the Complaint be dismissed with prejudice;

2. That the Court award Mack relief on all of its counterclaims;

3. That the Court preliminarily and permanently enjoin Toledo Mack and 

PAI from their unlawful conduct, including, without limitation, their misappropriation of Mack's 

trade secrets and confidential business information and their infringement of Mack's copyrights;

Case 2:02-cv-04373-RB Document 5 Filed 08/22/2002 Page 28 of 30
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4. That the Court order the impounding and destruction of all goods 

infringing Mack's copyrights pursuant to 17 U.S.C. § 503;

5. That the Court order that Toledo Mack specifically perform its licensing 

agreement for the MACSPEC 2001 system;

6. That the Court award Mack compensatory damages as a result of Toledo 

Mack and PAI's unlawful conduct;

7. That the Court further award Mack punitive damages to punish Toledo 

Mack and PAI's willful, malicious and outrageous conduct and to deter others from engaging in 

such conduct in the future;

8. That the Court award Mack costs and attorney's fees pursuant to 17 U.S.C. 

§ 505;

9. For any such other or further relief which the Court deems just and proper.

JURY TRIAL DEMAND

Pursuant to Fed. R. Civ. P. 38(b), demand is hereby made for trial by jury on all 

issues so triable.

Respectfully submitted,

___________________________

Jon A. Baughman (14043)

Jeremy Heep (75607)

Barak A. Bassman (85626)

PEPPER HAMILTON LLP

3000 Two Logan Square

18th and Arch Streets

Philadelphia, PA 19103-2799

215.981.4000

Attorneys for Defendant Mack Trucks, Inc.

Case 2:02-cv-04373-RB Document 5 Filed 08/22/2002 Page 29 of 30
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Dated: ____________

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