Geologic Computer System, Inc. Release AgreementTHE CITY OF
DUB E MEMORANDUM
Masterpiece on the Mississippi
BARRY LINDAHL
CITY ATTORNEY
To: Mayor Roy D. Buol and
Members of the City Council
and
Chairperson and Members of the
DMASWA Board
DATE: August 26, 2013
RE: Agreement for Reimbursement for Attorney's Fees, Geologic Computer
Systems, Inc. vs. City of Dubuque, et al.
In 2010, the Dubuque Metropolitan Solid Waste Agency (DMASWA) purchased a GPS
Landfill System called GeoSite for $122,500.00. The system is described as "a density
monitoring, fill- management tool." The GeoSite System was purchased from Product
Support International, Inc.
The GeoSite System has been in use at the Landfill since the time it was purchased and
is considered to be an effective product performing to its expectations.
On September 7, 2010, a lawsuit was filed by Geologic Computer Systems, Inc., a
Michigan corporation, naming as defendants John D. MacLean, one of the principles of
Product Support International, Inc., and others, including the City of Dubuque. The
lawsuit was filed in federal court in Michigan. Geologic alleged that it owned the
copyright to GeoSite and, as a result, the City had purchased copyrighted software.
Geologic has made a significant monetary damage claim from the City for infringement
of its copyright. The foregoing is a very brief summary of the allegations in this case
which are factually complex. In response to the lawsuit, the City denied any knowledge
that anyone other than Product Support International, Inc. was the owner of the GeoSite
System or that any other party had a claim to the copyright for the system. Defendants
MacLean and Product Support International Inc. also denied that Geologic owned the
system or that any other party had a copyright claim to the system.
Because the lawsuit was filed in Michigan, it was necessary for the City to retain
Michigan counsel to defend the City. Because this is a copyright infringement case, it
OFFICE OF THE CITY ATTORNEY DUBUQUE, IOWA
SUITE 330, HARBOR VIEW PLACE, 300 MAIN STREET DUBUQUE, IA 52001 -6944
TELEPHONE (563) 583 -4113 / FAX (563) 583 -1040 / EMAIL balesq @cityofdubuque.org
was also necessary that the Michigan attorney have expertise in that technical area of
the law. We retained Alan Harris of Bodman PLC in Ann Arbor, Michigan. Mr. Harris is
an intellectual property expert and trial lawyer.
Mr. Harris was successful in obtaining an order from the Michigan court dismissing the
City as a defendant. The costs incurred by the City, paid by DMASWA up to that point
in time, was $27,500.00.
AMW Machine Control, Inc. (AMW), a successor to Product Support International, Inc.,
has agreed to reimburse the City and DMASWA for those fees pursuant to the attached
Agreement for Reimbursement of Costs and Release Agreement. Pursuant to that
Agreement, the City and DMASWA will release AMW from any further claim for the
costs of the lawsuit incurred to date.
My recommendation is that the City Council and the Board approve the Agreement for
Reimbursement of Costs and Release Agreement.
BAL:tls
Attachment
cc: Michael C. Van Milligen, City Manager
Don Vogt, Public Works Director
Chuck Goddard, Agency Administrator
F VUSERSVLaserfiche LegalAGeologic Computer Systems vs MacLean et alA MayorCounal& DMASWABoard_A genda_A greementReimbursementFees &Release_o82613. doc
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REIMBURSEMENT OF COSTS AND RELEASE AGREEMENT
1. Parties; Effective Date. This Reimbursement of Costs and Release Agreement ( "Agreement ")
is between the Dubuque Metropolitan Area Solid Waste Agency (the "Agency "), the City of
Dubuque, an Iowa municipal corporation, with offices at 50 West 13th Street, Dubuque, Iowa
52001 (the "City ") (collectively, "Dubuque ") and AMW Machine Control, Inc., a Michigan
corporation, with offices at 6963 Cherrywood Lane, Saranac, Michigan 48881 ( "AMW ")
(Dubuque and AMW are collectively referred to as "the parties" ). This Agreement is effective
on the Effective Date as defined below.
2. Background of Dispute and Purpose of Agreement.
(a) The Agency purchased software from AMW in the field of landfill compaction and
management.
(b) Thereafter, GeoLogic Computer Systems, Inc. ( "GeoLogic ") sued AMW, numerous
other individuals and entities, and the City (collectively, "the Defendants ") in a lawsuit
captioned Geologic Computer Systems, Inc. v. MacLean et al., EDMI, No. 2:10 -cv-
13569 (the "Litigation "). In the Litigation, GeoLogic alleged, inter alia, that the
Defendants infringed certain rights of Geologic. Defendants deny GeoLogic's
allegations and, at present, the Litigation has not been resolved.
(c) The City was dismissed from the Litigation for lack of personal jurisdiction; however,
Dubuque incurred attorneys' fees of approximately $27,500, for representation in the
Litigation through its dismissal ( "Fees ").
(d) AMW expressly denies that it or any other Defendant has any legal responsibility for
the Fees or any other costs or fees incurred by Dubuque in connection with the
Litigation. Notwithstanding this, AMW has agreed to reimburse Dubuque for the Fees
as described in Section 3.
(e)
In exchange for the reimbursement of Fees, Dubuque agrees to release AMW and all
other Defendants in the Litigation as described in this Agreement.
3. Consideration. In satisfaction of Dubuque's claim for the Fees, AMW shall pay to the Agency
the sum of Twenty Seven Thousand Five Hundred Dollars ($27,500). There will be an initial
payment of $5,000 on September 30, and the remainder shall be paid in monthly installments of
$5,000 per month for four months, and a final payment of $2,500. Such payments will be paid
on the last date of each month (October 31, 2013, November 30, 2013, December 31, 2013
January 31, 2014, and February 28, 2014) , unless the last day of the month is on a holiday or
weekend, in which case the first day thereafter. Payment shall be by check, made payable to
the Agency. AMW shall have the right to increase the amount of the monthly installments or to
pay earlier.
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City of Dubuque AMW
AnnArbor 231758 1
4. Limited Release and Covenant Not To Sue. Other than for a breach of this Agreement,
Dubuque hereby releases, forever discharges, and agrees not to sue AMW or any other
Defendant for the Fees or any other fee or cost that Dubuque has incurred to date in connection
with its defense of the Litigation brought by GeoLogic. Dubuque further agrees that it will not
make any further demand or request to AMW or any other Defendant for any fee or cost it has
incurred to date in connection with its defense of the Litigation brought by GeoLogic. Nothing
in this Agreement shall be construed as an agreement by AMW or any other Defendant to
reimburse Dubuque for any future fees, costs, expenses and/or damages or as a waiver by
AMW or any other Defendant to object to future request(s) or demand(s) for fees, costs,
expenses and/or damages made by Dubuque, if any. However, Dubuque does not, through this
Agreement, agree that Defendants are not obligated to defend and indemnify it from costs,
expenses and /or damages that may arise in the future in connection with the Litigation or any
related claims asserted against Dubuque and does not hereby waive any such claims. Each
party agrees to bear all of its own costs and attorneys' fees incurred in connection with the
negotiation and preparation of this Agreement.
5. Governing Law. This Agreement shall be governed by the laws of the State of Michigan.
6. Legal Power. Each party represents and warrants that it has the legal power to enter into this
Agreement, to undertake the obligations, and to grant the rights set forth.
7. General. This Agreement constitutes the entire understanding of the parties with respect to the
stated subject matter and replaces any previous or contemporaneous written or oral
communications, promises, or understandings. The Agreement may be amended only by a
writing signed by each party.
8. Effective Date. This Agreement may be executed in multiple originals and shall be effective
as of the date on which it has been executed by the parties.
AGREED AND ACCEPTED:
Dubuque tropolitan Area Solid Waste AMW Machine Control, Inc.
Agen
Signature Signature
Printed Name
C—Lt Aa A
Title
Printed Name
Title
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AnnArbor 231758_1
City of Dpbuque
Signature
Roy D. Buol
Printed Name
Title
Mayor
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