ST. LOUIS – A business specializing in the design and production of labels, commercial printing, mailers and business forms recently filed a countersuit against a competing business alleging that an underlying lawsuit breached a covenant not to sue.
Ward Kraft Inc. filed its countersuit Oct. 10 against Zebra Technologies Corp., Zebra Technologies International LLC, Laser Band LLC and ZIH Corp. in the U.S. District Court for the Eastern District of Missouri claiming the defendants' lawsuit filed against Ward Kraft in the U.S. District Court for the Northern District of Illinois over alleged trademark infringement and intellectual property is improper. The trademark infringement suit involves an agreement related to self-laminating patient identification wristband forms.
In the lawsuit filed in Illinois, Ward Kraft says it is pleading the covenant not to sue as an affirmative defense to Laser Band’s and Zebra’s claims, but has not asserted any affirmative cause of action for breach or to enforce an agreement the businesses had earlier reached.
"Ward Kraft performed all of its material obligations required under the agreement, including payment of all royalty amounts to Laser Band for the sale of licensed products throughout the life of the agreement and satisfaction of all other promises and obligations listed in the agreement," the suit claims. "Per the terms of the agreement, Laser Band’s promise not to sue Ward Kraft is valid and subsisting and survives either expiration or termination of the agreement. ... The agreement makes clear that it inures to the benefit of the parties and their ‘successors and assigns,’ including a successor who acquires substantially all of the business of a party.”
Represented by Matthew A. Jacober of Lathrop Gage in Clayton, and Travis W. McCallon and Luke M. Meriwether of Lathrop Gage in Kansas City, Ward Kraft seeks declaratory judgment, compensatory and punitive damages, a preliminary and permanent injunction in its favor, costs and attorneys’ fees and disbursements incurred in defending the lawsuit “improperly” filed in Illinois, as well as assessment of interest, both pre- and post-judgment, on the damages awarded.