SPSS Inc. v. Nie, No. 08 C 66, Slip Op. (N.D. Ill. Apr. 2, 2009) (Darrah, J.).
Judge Darrah denied the parties’ cross-motions for summary judgment. Plaintiff SPSS sought a declaratory judgment that defendants, SPSS’s founders and former officers, were estopped from asserting any rights pursuant to the parties’ Trademark Agreement. Defendants countersued for trademark infringement. While still officers of SPSS, defendants entered a Trademark Agreement with SPSS by which defendants gave SPSS rights to use the SPSS trademark. Defendants argue that SPSS’s continued use of the SPSS mark is an infringement. SPSS argued that it owns the mark and, as proof, cited various documents signed by a defendant when SPSS went public. In those documents, defendants allegedly made assurances that SPSS owned its trademarks and otherwise failed to disclose the Trademark Agreement.
The Court denied plaintiff’s summary judgment motion because the parties disputed defendant’s state of mind when the documents at issue were signed. Because estoppel required a finding as to defendant’s intent when he signed the documents, summary judgment was not appropriate. Similarly, the Court denied the parties’ cross-motions regarding SPSS’s trademark infringement claim. There were factual disputes regarding defendant’s conduct during the public offering, which party made the first sale using the SPSS mark, and SPSS’s knowledge of the Trademark Agreement.