UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

AMERIPOP, L.L.C.,

CASE NO. 2:09-CV-10592

Plaintiff, JUDGE ARTHUR J. TARNOW

MAGISTRATE JUDGE PAUL J. KOMIVES

v.

CATALYST TECHNOLOGY SERVICE

and DETROIT ELECTRONIC MUSIC

FESTIVAL, INC.,

Defendants, 

 /

ORDER DEEMING MOOT PLAINTIFF’S MOTION TO COMPEL DEFENDANTS TO

IDENTIFY THE OWNER OF DEMF.COM DOMAIN NAME (Doc. Ent. 24)

A. This case was dismissed on August 13, 2009.

On February 17, 2009, plaintiff AmeriPOP, L.L.C., filed this lawsuit against defendants 

Catalyst Technology Service and Detroit Electronic Music Festival, Inc. (DEMF), alleging (I)

federal trademark infringement under 15 U.S.C. § 1114 (¶¶ 25-29); (II) federal unfair

competition under 15 U.S.C. § 1125(a) (¶¶ 30-36); (III) dilution of famous mark under 15 U.S.C.

§ 1125(c) (¶¶ 37-41); (IV) violation of Michigan commercial law and consumer protection act

(¶¶ 42-47); and (V) counterfeiting of a federal trademark registration under 15 U.S.C. § 1114 (¶¶

48-53). Doc. Ent. 1.

On March 26, 2009, defendants filed an answer to the complaint, affirmative defenses

and jury demand. Doc. Ent. 10 at 1-11, 11-12. Defendants also filed a counter-complaint and

jury demand. Doc. Ent. 10 at 13-19. Plaintiff filed an answer and affirmative defenses to

defendants’ counterclaim. Doc. Ent. 18.
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A hearing on plaintiff’s motion for preliminary injunction (Doc. Ent. 9) was noticed for a

May 15, 2009 hearing (Doc. Ent. 19). However, the hearing was not held, because the case

settled. See Doc. Ent. 05/18/2009. 

On June 8, 2009, defendants filed a motion for summary judgment (Doc. Ent. 21), and

plaintiff’s motion for preliminary injunction (Doc. Ent. 9) was re-noticed for a June 18, 2009

hearing (Doc. Ent. 22). During the June 18, 2009 hearing, the Court mentioned an order of

dismissal that would retain jurisdiction. Doc. Ent. 31 at 17. Furthermore, counsel for the parties

and the Court discussed ownership, transferring and assignment of the domain name. See Doc.

Ent. 31 at 23-24 (Transcript 06/18/2009). 

A “Release and Settlement Agreement,” dated June 29, 2009, is part of the record. Doc.

Ent. 24-3. It provides, in part, that the June 18, 2009 transcript “is incorporated into this

Agreement and made part of hereof and is attached as Exhibit A.” Doc. Ent. 24-3 at 6 ¶ 8

(emphasis in original).

Thereafter, on August 13, 2009, Judge Tarnow entered an order of dismissal. Doc. Ent.

23. 

B. Plaintiff has since filed a motion to compel.

On March 17, 2010, plaintiff filed a motion to compel defendants to identify the owner of

DEMF.COM domain name. Doc. Ent. 24. On March 31, 2010, defendants filed a response. 

Doc. Ent. 25. According to defendants, “[p]laintiff did not bother to ask the right person before
1

On April 22, 2010, plaintiff filed a motion for an order requiring specific performance. Doc.

Ent. 27. Therein, plaintiff seeks a court order requiring defendant to “[d]issolve the corporate entity

[DEMF][,]” and “[a]ssign the domain name www.demf.com to [p]laintiff.” Doc. Ent. 27 at 1. This

motion has not been referred to me and, therefore, is pending before Judge Tarnow.

2

The Notice of Electronic Filing (NEF) of the April 22, 2010 order of reference sent to

mnovaklaw@aol.com was not deliverable. Doc. Ent. 30. At this time, the docket lists attorney

Michael A. Novak’s electronic mail address as mnovak@gmhlaw.com. 

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filing its motion. After receiving the motion, [d]efendants promptly answered [p]laintiff’s

question.” Doc. Ent. 25 at 1.1

 

Judge Tarnow has referred this motion to me for hearing and determination. Doc. Ent.

28.2

 A hearing on this motion was noticed for May 12, 2010. Doc. Ent. 29.

C. Analysis

1. As an initial matter, I note plaintiff’s statement that attorney Favaro and Novak “continue

to represent the [d]efendants to this day.” Doc. Ent. 24 at 5. In support of its claim that attorney

Novak still represents defendant Catalyst Technology Services, plaintiff provides a copy of the

website www.mnovaklaw.com, “Representative Clients I” (Doc. Ent. 24-7); a copy of attorney

Michael A. Novak’s profile from the website www.gmhlaw.com (Doc. Ent. 24-8); and a copy of

attorney Novak’s member directory profile from the website www.michbar.org (Doc. Ent. 24-9). 

To be sure, attorneys Elizabeth A. Favaro and Michael A. Novak of the GIARMARCO,

MULLINS & HORTON, P.C., law firm entered appearances on behalf of defendants on March

4, 2009. Doc. Entries 6 & 7. On March 31, 2010, the date on which defendants filed their

response to the instant motion, attorney Brian D. Wassom of the Honigman Miller Schwartz and

Cohn LLP law firm entered an appearance on behalf of defendants. Doc. Ent. 26.

Plaintiff sought concurrence in this motion from Attorney Favaro on March 11, 2010.

Doc. Ent. 24 at 2. Attorney Favaro’s March 12, 2010 electronic mail to plaintiff’s counsel states
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Defendants contend that E.D. Mich. LR 7.1 and Fed. R. CIv. P. 37(a)(1) required plaintiff

to seek concurrence “directly from the then-unrepresented Defendants[.]” Doc. Ent. 25 at 2.

4

that the law firm of Giarmarco, Mullins & Horton, P.C., “no longer represents any of the

[d]efendants in this matter.” Doc. Ent. 24-6.3

 

Attorney Wassom’s March 18, 2010 letter to plaintiff’s counsel states that the law firm of

Honigman Miller Schwartz and Cohn L.L.P. “now represents [DEMF] and [Catalyst] with

respect to this closed lawsuit.” Doc. Ent. 25-3. In their March 31, 2010 response, defendants

represent that the law firm of GIARMARCO, MULLINS & HORTON, P.C. does not represent

defendants. Doc. Ent. 25 at 2. 

Still, attorneys Favaro and Novak are still listed as defense counsel. This is so, because,

attorney Wassom’s notice of appearance was not a substitution of counsel, attorneys Favaro and

Novak have not filed a motion to withdraw, etc. In other words, attorneys Favaro and Novak

have not been terminated as counsel of record.

2. Next, there is plaintiff’s allegation that “[a]s a consequence of the Defendants’ failure to

obtain the basic information required of them, they have breached the settlement agreement.” 

Doc. Ent. 24 at 5. Defendants respond that they “have fully complied with their obligations

under the parties’ June 29, 2009 settlement agreement, which itself contains a broad release of

all claims and says nothing about the Domain Name.” Doc. Ent. 25 at 1. 

The Court need not resolve the issue of whether the settlement agreement requires

defendants “to disclose the owner of the domain name[,]” Doc. Ent. 24 at 5, because plaintiff

now knows the owner of the www.demf.com domain name. In a letter to attorney Favaro dated

November 17, 2009, plaintiff’s counsel “request[ed] that [she] abide by [her] [June 18, 2009]
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agreement and provide [plaintiff] with the requisite information so that [plaintiff] can proceed to

acquire this domain name.” Doc. Ent. 24-4. On November 20, 2009, in response to attorney

Favaro’s same-day electronic mail, plaintiff’s counsel stated, “[a]t the very least you can give us

the name and the address of the lessor to comport to the settlement terms.” Doc. Ent. 24-5 at 2. 

The March 18, 2010 letter from attorney Wassom to plaintiff’s counsel states that “the

present owner of the Domain is Catalyst[,]” and notes defense counsel’s expectation that

plaintiff’s counsel will withdraw the instant motion. Doc. Ent. 25-3. In an March 21, 2010

electronic mail, defense counsel asked, “[a]ren’t you dismissing your motion?” Plaintiff’s

counsel responded, “[n]o–part and parcel was the transfer and it was implicit in the dialog with

the Court.” Doc. Ent. 25-4. Then, in its March 31, 2010 response, defendants state, “[p]laintiff

is on notice that is motion is now moot, yet it refuses to withdraw the motion.” Doc. Ent. 25 at

1.

On the date set for hearing, attorneys Arnold S. Weintraub and Brian D. Wassom

appeared in my courtroom. A hearing was not held because, during counsel for the parties’ prehearing discussion with my law clerk, plaintiff’s counsel represented that this motion has been

rendered moot. 

D. Order

Accordingly, plaintiff’s motion to compel defendants to identify the owner of

DEMF.COM domain name (Doc. Ent. 24) is DEEMED MOOT. 

IT IS SO ORDERED.
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The attention of the parties is drawn to Fed. R. Civ. P. 72(a), which provides a period of

fourteen (14) days from the date of receipt of a copy of this order within which to file objections

for consideration by the district judge under 28 U.S.C. § 636(b)(1).

s/Paul J. Komives 

PAUL J. KOMIVES

UNITED STATES MAGISTRATE JUDGE

Dated: May 13, 2010

I hereby certify that a copy of the foregoing document was served upon counsel of record

on May 13, 2010, by electronic and/or ordinary mail.

s/LaShawn R. Saulsberry 

Case Manager