Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 1 of 20
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`Civil Action No. 08-1122
`Judge Nora Barry Fischer
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`MEMORANDUM OPINION
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`DENNIS RIORDAN,
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`Plaintiff,
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`vs.
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`H.J. HEINZ COMPANY,
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`Defendant.
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`I.
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`Introduction
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`This action involves pro se Plaintiff Dennis Riordan’s (“Plaintiff”) claims against H.J. Heinz
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`Company (“Defendant” or “Heinz”) related to Defendant’s sale of its condiments in an upside-down
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`bottle. Plaintiff alleges that Defendant’s sales infringed upon his intellectual property rights and
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`constituted unlawful misappropriation. (Docket No. 25). Presently before this Court is Defendant’s
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`Motion to Dismiss (Docket No. 26) Plaintiff’s Amended Complaint (Docket No. 25) pursuant to
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`Rule 12(b)(6) of the Federal Rules of Civil Procedure. For the reasons discussed herein,
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`Defendant’s motion is GRANTED.
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`II.
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`Factual Background1
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`1 T
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`he following facts are gleaned from the record, are accepted as true for purposes of
`analyzing the instant motion, and taken in the light most favorable to Plaintiff, the non-moving
`party. Buck v. Hampton Twp. Sch. Dist., 452 F.3d 256, 260 (3d Cir. 2006)(citing Pryor v. NCAA,
`288 F.3d 548, 559 (3d Cir. 2002)); see also Leatherman v. Tarrant County Narcotics Intelligence
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 2 of 20
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`A.
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`Plaintiff’s Initial Contact with Defendant
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`Plaintiff alleges that he initiated contact with Defendant on January 28, 1999 by sending a
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`letter to Dan Vogus of Defendant’s legal department, informing him that he recently applied for a
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`patent on a container that would be “highly advantageous” to Defendant’s business. (Docket No.
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`25 at ¶ 7). Specifically, the letter stated that the device is a “unique innovation that allows you to
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`provide the consumer with two (2) products occupying the same vertical space (Space Saver), e.g.,
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`mustard and catsup.” (Docket No. 27-2). On February 1, 1999, Defendant responded that it does
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`not, as a matter of policy, accept any unsolicited submission of ideas from outside the company
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`absent a written understanding defining the conditions relating to such unsolicited submissions.
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`(Docket No. 25 at ¶ 8). Defendant informed Plaintiff that he must execute and return the “Request
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`for Consideration of Idea” form attached to the response letter from Defendant to consider Plaintiff’s
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`proposed device. (Docket No. 25 at ¶ 8).
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`Plaintiff signed, executed and mailed the “Request for Consideration of Idea” form on April
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`20, 1999 along with a minimal description of his idea and the drawings of his bottling concept. (Id.).
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`Plaintiff alleges that through all of his correspondence with Defendant, including the submission of
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`this form and its attachments, Plaintiff provided “confidential knowledge” to Heinz and introduced
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`the concept of an “upside-down” bottle to Defendant. (Docket No. 25 at ¶¶ 3, 7-8). Heinz
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`responded to Plaintiff in June of 1999, thanking him for his letter regarding a potential new bottle,
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`but ultimately rejecting his idea after reviewing the concept with the appropriate department. (Id.
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`at ¶ 10).
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`& Coordination Unit, 507 U.S. 163, 164 (1993).
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 3 of 20
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`B.
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`Plaintiff’s Idea
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`At various times throughout the Amended Complaint, Plaintiff describes his alleged
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`intellectual property interest as either a “concept/idea” (see Docket No. 25 (passim)), “innovative
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`concept/ideas towards a futuristic innovative invention” (Id. at ¶ 3), a “Bottling concept” (Id. at ¶
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`3), “Bottle art-work” (Id. at ¶ 6), “innovative terminology” (Id. at ¶ 9), and “verbal property.” (Id. at
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`¶ 22). Plaintiff does mention that the United States Patent and Trademark Office issued him the
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`patent number 6,105,812 (“the ‘812 Patent”) for a device described as a “dual chamber container.”
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`(Id. at ¶ 11). Plaintiff further avers that in a document captioned “The 2 Liter Flavor Saver,” he
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`“expressly referenced the bottling concept: [s]ymmetrical base allows identical 2 way [sic] spout.
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`Ultimately, this innovative shape is neither up-side down nor right-side up. Promotionally, 2
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`chances to win.” (Id. at ¶ 20).
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`C.
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`Defendant’s Introduction of its “Upside-Down” Bottle to the Consumer Market.
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`On August 28, 2002, Defendant issued a press release announcing the introduction of its “No
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`Wait, No Mess (TM), upside-down ketchup bottle.” (Docket No. 25 at ¶ 12). In January of 2006,
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`Plaintiff contacted Defendant’s legal department to request copies of their previous correspondence.
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`(Docket No. 25 at ¶ 15). Plaintiff alleges that Defendant informed him that he had been “red-
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`flagged” in their system and an attorney for Defendant asked Plaintiff if he was going to sue for any
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`reason. (Id.).
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`The crux of Plaintiff’s claim is that Defendant, without seeking Plaintiff’s permission,
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`misappropriated the ideas Plaintiff allegedly introduced in his earlier correspondence with
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`Defendant to develop an “upside-down” bottle. (See Docket No. 25 at ¶¶ 17-18, 21).
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`III.
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`Procedural History
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`3
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 4 of 20
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`Plaintiff initially commenced this action by filing his Complaint pro se in the United States
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`District Court for the Southern District of New York. (Docket No. 4). Thereafter, on August 11,
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`2008, that Court entered an order transferring the case to the United States District Court for the
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`Western District of Pennsylvania. (Id.). On August 22, 2008, Plaintiff moved for Leave to Proceed
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`in forma pauperis (Docket No. 5), which this Court denied. (Docket No. 6). After paying the proper
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`filing fee on August 25, 2008, Plaintiff filed his Complaint with this Court. (Docket No. 8).
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`On October 20, 2008, Defendant filed a Motion to Dismiss Pursuant to Rules 12(b)(6), 12(e),
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`and, in the alternative, Rule 12(d) and 56. (Docket No. 11). Plaintiff filed his response on
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`December 23, 2008. (Docket No. 18). Then, on December 30, 2008, upon consideration of the
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`parties’ submissions, this Court ordered Plaintiff to file an Amended Complaint. (Docket No. 22).
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`On February 17, 2009, Plaintiff filed his Amended Complaint. (Docket No. 25). In turn,
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`Defendant filed the instant Motion to Dismiss on March 5, 2009. (Docket No. 26). On April 20,
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`2009, after being granted an extension, Plaintiff filed his Response to Defendant’s Motion to
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`Dismiss and Brief in Support of same. (Docket Nos. 30 and 31). Defendant filed its Reply Brief
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`on May 4, 2009 (Docket No. 32). Plaintiff filed his Sur-Reply in Opposition to Defendant’s Motion
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`to Dismiss Plaintiff’s Amended Complaint on May 26, 2009. (Docket No. 33). As briefing has
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`concluded, Defendant’s motion is now ripe for disposition.
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`IV.
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`Legal Standard
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`A valid complaint requires only “a short and plain statement of the claim showing that the
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`pleader is entitled to relief.” FED. R. CIV. P. 8(a)(2). “To survive a motion to dismiss, a complaint
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`must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on
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`its face.’” Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009)(quoting Bell Atlantic Corp. v. Twombly,
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 5 of 20
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`550 U.S. 544 (2008)).
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`The Supreme Court in Iqbal clarified that the decision in Twombly “expounded the pleading
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`standard for ‘all civil actions.’” Iqbal, 129 S.Ct. at 1953. The court further explained that although
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`a court must accept as true all of the factual allegations contained in a complaint, that requirement
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`does not apply to legal conclusions; therefore, the pleadings must include factual allegations to
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`support the legal claims asserted. Id. at 1949, 1953. “Threadbare recitals of the elements of a cause
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`of action, supported by mere conclusory statements, do not suffice.” Id. at 1949 (citing Twombly,
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`550 U.S. at 555). The determination of whether a complaint contains a plausible claim for relief “is
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`a context-specific task that requires the reviewing court to draw on its judicial experience and
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`common sense.” Iqbal, 129 S.Ct. at 1950 (citing Twombly, 550 U.S. at 556). Accordingly, to
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`survive a motion to dismiss, a plaintiff must plead “factual content that allows the court to draw the
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`reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 129 S.Ct. at 1949
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`(citing Twombly, 550 U.S. at 556).
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`Additionally, because Plaintiff is proceeding pro se, his allegations are to be liberally
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`construed as he is held to a less stringent standard than attorneys. Erickson v. Pardus, 551 U.S. 89,
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`94 (2007); see also Washam v. Stesis, Civ. A. No. 08-3869, 2009 U.S. App. LEXIS 7768, at *3 (3d
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`Cir. Apr. 10, 2009).
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`When a motion to dismiss is granted, the grant or denial of opportunity to amend is within
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`the discretion of the district court. Shane v. Fauver, 213 F.3d 113, 115 (3d Cir. 2000) (quoting
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`Foman v. Davis, 371 U.S. 178, 182 (1962)). Futility is a ground that could justify a denial of leave
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`to amend. Id. “Futility” means that the complaint, as amended, “would fail to state a claim upon
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`which relief could be granted.” Id. (citing In re Burlington Coat Factory Sec. Litig., 114 F.3d 1410,
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 6 of 20
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`1434 (3d Cir. 1997)). In assessing “futility” the district court applies the same standard of legal
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`sufficiency as set forth under Rule 12(b)(6). See 2 JAMES WM. MOORE ET AL., MOORE’S FEDERAL
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`PRACTICE, § 15.15[3], at 15-47 to 15-48 (3d ed. 2000). Accordingly, “if a claim is vulnerable to
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`dismissal under Rule 12(b)(6) but the plaintiff moves to amend, leave to amend must generally be
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`granted unless the amendment would not cure the deficiency.” Shane, 213 F.3d at 115. The Court
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`now turns to its analysis of Plaintiff’s Amended Complaint.
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`V.
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`Discussion
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`In his Amended Complaint, Plaintiff brings claims of “Misappropriation of Intellect[ual]
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`Property (Count I),” “Theft of Terminology as a nexus to bottling concept/idea, and or futuristic art-
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`work (Count II),” and “Intrusion on Copyright Privileges as a State Violation (Count III).” (Docket
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`No. 25 at ¶¶ 16-26). Liberally construing Plaintiff’s Amended Complaint, Defendant reads it as
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`potentially asserting claims of misappropriation of ideas, misappropriation of trade secrets,
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`trademark infringement and federal copyright infringement. (Docket No. 27 at 7-15). Defendant
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`also recognizes that Plaintiff has voluntarily withdrawn any claim of patent infringement. (Id. at 7).
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`This Court agrees with Defendant’s analysis and will now address Defendant’s arguments as to each
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`of these claims, in turn, once it resolves the question of choice of law as to Plaintiff’s state law
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`claims.
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`A.
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`Choice of Law
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`Plaintiff is a citizen of New York who corresponded with Defendant, a Pennsylvania
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`corporation which has its principal place of business in Pittsburgh, Pennsylvania. In determining
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`the law applicable to Plaintiff’s state law claims, this Court applies Pennsylvania’s choice of law
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`rules. Klaxon Co. v. Stentor Elec. Mfg. Co., 313 U.S. 64, 78 (1941). Pennsylvania has combined
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 7 of 20
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`a “governmental interest analysis” with the Restatement (Second) of Conflicts theory, thereby
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`adopting a “hybrid” approach. Hammersmith v. TIG Ins. Co., 480 F.3d 220, 230 (3d Cir.
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`2007)(citing Melville v. American Home Assur. Co., 584 F.2d 1306 (3d Cir. 1978) and Griffith v.
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`United Airlines, Inc., 416 Pa.1, 203 A.2d 796 (Pa. 1964)).
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`This approach requires the Court to first determine whether there is a relevant difference
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`between the law of the states whose laws potentially apply, i.e., whether there is a conflict.
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`Hammersmith, 480 F.3d at 230. If their respective laws are the same, there is no conflict at all and
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`the choice of law analysis ends; Pennsylvania law would apply. Id. If the laws differ, the Court
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`must examine the policies underlying the law of each jurisdiction and determine whether the conflict
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`is “true,” “false,” or “unprovided for.” Id.
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`“A true conflict exists when the governmental interests of [multiple] jurisdictions would be
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`impaired if their law were not applied.” Budget Rent-A-Car Sys. v. Chappell, 407 F.3d 166, 170 (3d
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`Cir. 2005)(quoting Lacey v. Cessna Aircraft Co., 932 F.2d 170, 187 & n.15 (3d Cir. 1991)). If a true
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`conflict exists, the Court must then determine which state has the “greater interest in the application
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`of its law.” Cipolla v. Shaposka, 439 Pa. 563, 267 A.2d 854, 856 (1970).
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`A false conflict exists only if one jurisdiction’s governmental interests would be impaired
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`by the application of another jurisdiction’s law. Budget Rent-A-Car, 407 F.3d at 170. When there
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`is a false conflict, the court must apply the law of the only interested jurisdiction. Id. If no
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`jurisdiction’s interests would be impaired if its laws were not applied, there is an “unprovided for”
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`conflict and lex loci delicti (the law of the place of the wrong) continues to govern. Budget Rent-A-
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`Car Sys. v. Chappell, 407 F.3d 166, 170 (3d Cir. 2005)(citing Miller v. Gay, 323 Pa. Super. 466, 470
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`A.2d 1353 (1983)).
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 8 of 20
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`1.
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`Choice of Law: Misappropriation of Ideas
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`As this case involves state law claims of misappropriation of ideas and misappropriation of
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`trade secrets, the Court must compare Pennsylvania and New York law for each. Upon examination
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`of Pennsylvania and New York law for misappropriation of ideas, the primary difference is that New
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`York law requires a legal relationship between the plaintiff and defendant while Pennsylvania law
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`does not. See Blackmon v. Iverson, 324 F.Supp.2d 602, 607 (E.D. Pa. 2003)(citing Sorbee Int’l Ltd.
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`v. Chubb Custom Ins. Co., 735 A.2d 712 (Pa. 1999)) (elements of idea misappropriation are novelty
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`and misappropriation); Hogan v. DC Comics, 48 F.Supp.2d 298, 314 (S.D.N.Y. 1999) (elements of
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`idea misappropriation are novelty, misappropriation, and legal relationship). Because there is a
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`relevant difference between New York and Pennsylvania idea misappropriation laws, the Court must
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`determine whether there is an “actual” conflict, i.e. classify the conflict as “true,” “false” or
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`“unprovided-for.” Hammersmith, 480 F.3d at 230-31.
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`To classify the conflict, the Court looks to the policies underlying the laws of each state and
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`determines whether each state has a governmental interest in applying its own laws. Budget Rent-A-
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`Car, 407 F.3d at 170; Lejeune v. Bliss-Salem, Inc., 85 F.3d 1069, 1071 (3d Cir. 1996). Here, New
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`York idea misappropriation law requires a legal relationship between plaintiff and defendant,
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`thereby protecting defendants. See Hogan, 48 F.Supp.2d at 314. Pennsylvania idea
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`misappropriation law lacks the legal relationship requirement, thereby allowing any plaintiff who
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`may have a claim to bring a suit. Blackmon, 324 F.Supp.2d 607. The present action involves a
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`plaintiff from New York, a jurisdiction with a law protecting defendants, and a defendant from
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`Pennsylvania, a jurisdiction with a law protecting plaintiffs. Because no New York defendant is
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`involved, applying Pennsylvania law will not impair New York’s interest in protecting defendants.
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 9 of 20
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`As Plaintiff is from New York, applying New York law will not impair Pennsylvania’s interest in
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`protecting its plaintiffs. Therefore, the conflict is “unprovided-for” because neither state’s interest
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`would be impaired if its law is not applied. Hammersmith, 480 F.3d at 230-31. Since Plaintiff
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`submitted his idea to Defendant’s headquarters in Pennsylvania, where Defendant allegedly
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`reviewed same (Docket No. 25 at ¶ 10), the claimed misappropriation, if any, would have taken
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`place in Pennsylvania. Accordingly, the Court will apply Pennsylvania law. See Budget Rent-A-
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`Car, 407 F.3d at 170.
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`2.
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`Choice of Law: Misappropriation of Trade Secrets
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`New York and Pennsylvania misappropriation of trade secrets laws are very similar.
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`Compare FedEx Ground Package Sys., Inc. v. Application Int'l Group, 2008 WL 4279751, at * 11
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`(W.D. Pa. Sept. 12, 2008)(citing Moore v. Kulicke & Soffa Indus., Inc. 318 F.3d 561, 566 (3d Cir.
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`2003))(elements of misappropriation of trade secrets are existence and possession of a trade secret,
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`communication of trade secret pursuant to confidential relationship, use of trade secret in violation
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`of that confidence, and harm to plaintiff) with North Atlantic Instruments, Inc. v. Haber, 188 F.3d
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`28, 43-44 (2d Cir. 1999)(elements of misappropriation of trade secrets are possession and existence
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`of a trade secret and use of that trade secret in violation of a confidential relationship). The Court,
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`therefore, finds no relevant differences between the two states’ laws and will apply Pennsylvania
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`law. See Hammersmith, 480 F.3d at 230.
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`B.
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`Misappropriation of Ideas
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`In Count One of his Amended Complaint, Plaintiff alleges that Defendant misappropriated
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`his intellectual property. (Docket No. 25 at ¶¶ 16-18). While “misappropriation of intellectual
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`property” is not a specific cause of action, the Court finds that it is most analogous to the tort of
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 10 of 20
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`misappropriation of ideas as it exists under Pennsylvania law. Specifically, Plaintiff claims that
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`upon review of his “concept/ideas, and/or ‘art-work,’” Defendant misappropriated same. (Id. at ¶¶
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`14, 16). Defendant contends that Plaintiff’s misappropriation claim fails because Plaintiff has not
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`alleged an idea that is novel or concrete or that he has suffered any loss of competitive advantage
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`or other business loss. (Docket No. 27 at 7-10).
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`1.
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` Plaintiff’s Claim of Misappropriation of Ideas
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`Under Pennsylvania law, the tort of misappropriation of ideas has two elements: (1) the
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`plaintiff had an idea that was novel and concrete, and (2) his idea was misappropriated by the
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`defendant. Blackmon, 324 F.Supp.2d at 602. To determine whether an idea has been
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`misappropriated, a Pennsylvania court looks to the three elements of common law misappropriation:
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`(1) the plaintiff “has made substantial investment of time, effort, and
`money into creating the thing misappropriated such that the court can
`characterize the ‘thing’ as a kind of property right,” (2) the defendant
`“has appropriated the ‘thing’ at little or no cost such that the court
`can characterize the defendant’s actions as ‘reaping where it has not
`sewn,’” and (3) the defendant “has injured the plaintiff by the
`misappropriation.”
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`Sorbee, 735 A.2d at 716 (quoting LeBas Fashion Imports of USA, Inc. v. ITT Hartford Ins. Group,
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`50 Cal. App. 4th 548 (Ca. App. 1996)). A plaintiff may also be required to establish that there is
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`competition between the plaintiff and the defendant.2 Sorbee, 735 A.2d at 716 (quoting Atlantic
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`Mutual Ins. Co. v. Badger Medical Supply Co., 528 N.W. 2d 486 (Wis. 1999)(““[The] essence of
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`[a] cause of action of misappropriation is the defendant’s use of the plaintiff’s product, into which
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`2 T
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`here appears to be a legal issue as to whether a claim for misappropriation of ideas under
`Pennsylvania law requires competition between the plaintiff and defendant. See Blackmon, 324
`F.Supp.2d at 607. As Plaintiff’s claims are deficient for other reasons, the Court will not presently
`address this issue.
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 11 of 20
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`plaintiff has put time, skill and money; and the defendant’s use of the plaintiff’s product or a copy
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`of it in competition with the plaintiff and gaining an advantage in that competition because the
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`plaintiff, and not the defendant, has expended the energy to produce it.”)).
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`For an idea to be legally protected, the idea must meet the threshold requirement of novelty.
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`Blackmon, 324 F.Supp.2d at 607. An idea is novel and merits protection when it is truly innovative,
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`inventive, and new. Id. An idea is not novel if it is merely a clever version or variation of already
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`existing ideas. Id. Novelty and concreteness are required so that the court can identify an idea as
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`having been created by one party and stolen by another. Sorbee, 735 A.2d. at 714. As an example,
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`in Blackmon, the idea involved was the slogan “The Answer,” intended as an advertising brand for
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`professional basketball player Allen Iverson. Id. at 607. Also, the idea in M.H. Segan was
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`“Frankenstuff,” a child’s doll designed to look like a juvenile Frankenstein monster. M.H. Segan,
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`924 F.Supp. at 524.
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`In his Amended Complaint, Plaintiff uses only vague terms to describe the idea or
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`intellectual property he submitted to Defendant. Plaintiff describes his alleged intellectual property
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`interest as either a “concept/idea” (see Docket No. 25 (passim)), “innovative concept/ideas towards
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`a futuristic innovative invention” (Id. at ¶ 3), a “Bottling concept” (Id. at ¶ 3), “Bottle art-work” (Id.
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`at ¶ 6), “innovative terminology” (Id. at ¶ 9), and “verbal property.” (Id. at ¶ 22). Plaintiff does
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`mention that the United States Patent and Trademark Office issued him the patent number 6,105,812
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`for a device described as a “dual chamber container.” (Id. at ¶ 11). Plaintiff further avers that in a
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`document captioned “The 2 Liter Flavor Saver,” he “expressly referenced the bottling concept:
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`[s]ymmetrical base allows identical 2 way [sic] spout. Ultimately, this innovative shape is neither
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`up-side down nor right-side up.” (Id. at ¶ 20). Defendant also recognizes the same, arguing that
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 12 of 20
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`“[t]he Amended Complaint is. . .unclear as to the precise nature of Plaintiff’s intellectual property.”
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`(Docket No. 27 at 5). Given only these vague characterizations, the Court cannot evaluate Plaintiff’s
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`claim for misappropriation of ideas because the Court cannot ascertain the exact idea Plaintiff
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`presented to Defendant even under the most liberal reading of his Amended Complaint.
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`This Court’s confusion is exacerbated by Plaintiff’s response to Defendant’s motion to
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`dismiss. In his brief styled “Reply,” Plaintiff appears to clarify his idea through reference to the
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`documents he submitted to Defendant, the accompanying “art work,” and his patent. (Docket No.
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`30 at ¶¶ 5-6, 11, 13). However, Plaintiff’s Amended Complaint, the operative document for his
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`claims, does not sufficiently describe his idea nor does he allege what documents he submitted to
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`Defendant. Given the vague allegations relating to Plaintiff’s idea, Plaintiff has not sufficiently
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`alleged that he submitted to Defendant an idea that is novel or concrete, and the Court cannot
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`determine whether Defendant misappropriated said idea. Therefore, Plaintiff has not alleged
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`“enough factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”
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`Iqbal, 129 S.Ct. at 1949(quoting Twombly, 550 U.S. at 570). Accordingly, Defendant’s motion to
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`dismiss Plaintiff’s claim for misappropriation of ideas is granted, and said claim as pled in the
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`Amended Complaint is dismissed, without prejudice, given his pro se status.
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`2.
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`Statute of Limitations
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`Defendant alternatively argues that even if Plaintiff successfully alleged a claim for
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`misappropriation of ideas, the statute of limitations bars his claim. (Docket No. 27 at 11-13).
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`Having found that Plaintiff has not sufficiently pled a novel and concrete idea that he submitted to
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`Defendant and being currently unable to determine whether said idea was misappropriated by
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`Defendant, this Court finds that it is premature to determine whether the statute of limitations applies
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 13 of 20
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`to bar Plaintiff’s claim.
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`The Court is also mindful that Plaintiff is pro se and that a motion to dismiss may be granted
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`on statute of limitations grounds only if the bar is apparent on the face of the complaint. Robinson
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`v. Johnson, 313 F.3d 128, 134-35 (3d Cir. 2002)(“If the bar is not apparent on the face of the
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`complaint, then it may not afford the basis for a dismissal of the complaint under Rule 12(b)(6).”).
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`Accordingly, liberally construing the allegations in the Amended Complaint, dismissal is not
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`warranted on this basis.
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`3.
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`Conclusion as to Plaintiff’s Claim of Misappropriation of Ideas
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`Recognizing that the Plaintiff is pro se and considering that the allegations in his Amended
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`Complaint are to be construed liberally, the Court finds that amendment may cure the deficiencies
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`noted in his Amended Complaint and that he may be able to state a claim under this theory. See
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`Alston v. Parker, 363 F.3d 229, 234 (3d Cir. 2003)(pro se complaints should be construed liberally
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`and leave to amend should be granted absent bad faith, prejudice, undue delay, or futility); Shane,
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`213 F.3d at 115. Therefore, Plaintiff is granted leave to amend his Complaint as to the
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`misappropriation of ideas count a second time. Plaintiff is advised to describe his idea succinctly
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`and in plain English.
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`C.
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`Misappropriation of Trade Secrets
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`In addition to the claim of misappropriation of ideas, the Court also construes Plaintiff’s
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`Amended Complaint as potentially alleging a claim of misappropriation of trade secrets. The
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`elements of a misappropriation of trade secrets claim in Pennsylvania are (1) the existence of a trade
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`secret; (2) communication of the trade secret pursuant to a confidential relationship; (3) use of the
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`trade secret in violation of that confidence; and (4) harm to the plaintiff. See FedEx Ground
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 14 of 20
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`Package Sys., Inc. v. Application Int'l Group, 2008 WL 4279751, at * 11 (W.D. Pa. Sept. 12, 2008).
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`Plaintiff has not alleged that he actually possesses a trade secret or that any trade secret exists.
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`(Docket No. 25). He fails to allege the existence of any information or device that he used in
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`business for competitive advantage. (Id.). He also fails to allege that the subject matter embodying
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`any alleged trade secret is not generally known. (Id.).
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`To the extent that Plaintiff claims as a trade secret the subject matter of the published ‘812
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`Patent, such subject matter is no longer entitled to trade secret protection. Injection Research
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`Specialists, Inc. v. Polaris Indus., L.P., Civ. A. Nos. 97-1516, 97-1545, 97-1557, 168 F.3d 1320,
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`1998 WL 536585 (Fed.Cir. Aug. 13, 1998)(citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
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`489U.S. 141, 149 (1988)). “Once an inventor has decided to lift the veil of secrecy from his work,
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`he must choose the protection of a federal patent or the dedication of his idea to the public at large.”
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`Bonito Boats, 498 U.S. at 149.
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`Plaintiff also fails to allege facts that would support a claim that he made an effort to protect
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`any alleged trade secret. Plaintiff acknowledges in his Amended complaint that he (1) sent an
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`unsolicited letter to Defendant on January 28, 1999 (Docket No. 25 at ¶ 7); (2) received Defendant’s
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`February 1, 1999 response (Id. at ¶ 8); and (3) sent the Request for Consideration of Idea form and
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`supporting documentation to Defendant on April 20, 1999 (Id. at ¶¶ 8-9). These allegations clearly
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`evince conduct contrary to a confidential relationship. Finally, Plaintiff has not alleged that any
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`confidential relationship was created. (Id.).
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`For the above reasons, Plaintiff has failed to state a claim for misappropriation of trade
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`secrets. Accordingly, to the extent that Plaintiff’s Amended Complaint can be construed as alleging
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`a misappropriation of trade secrets claim, Defendant’s motion to dismiss same is granted.
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`Because Plaintiff has lifted the veil of secrecy from his ideas by disclosing them to
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`Defendant, amendment of his complaint as to any misappropriation of trade secrets claim is futile
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`because amendment would not cure this deficiency. Shane, 213 F.3d at 115. Therefore, to the extent
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`that Plaintiff’s amended complaint can be construed as alleging a misappropriation of trade secrets
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`claim,3 said claim is dismissed, with prejudice.
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`D.
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`Trademark Infringement
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`In Count Two of his Amended Complaint, Plaintiff alleges a claim of “Theft of Terminology
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`as a nexus to bottling concept/idea, and or [sic] futuristic art-work.” (Docket No. 25 at ¶¶ 19-22).
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`“Theft of Terminology” is not an actual cause of action under Pennsylvania or New York law.
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`Applying a liberal reading to the Amended Complaint, as this Court must, the Court construes this
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`claim as trademark infringement of the phrase “upside-down.”
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`Trademark infringement is defined and governed by the Lanham Act. See 15 U.S.C. §
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`1114(1). “The Lanham Act defines trademark infringement as use of a mark so similar to that of
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`a prior user as to be ‘likely to cause confusion, or to cause mistake, or to deceive.’” Kos
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`Pharmaceuticals, Inc. v. Andrix Corp., 369 F.3d 700, 711 (3d Cir. 2004). The mark must be owned
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`by Plaintiff and valid to be legally protectable. A & H Sportswear, Inc. v. Victoria’s Secret, 237
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`F.3d 198, 210-11 (3d Cir. 2000). If a plaintiff does not own a registered trademark, he must show
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`that “he was the first to adopt the mark in commerce, he has continuously used the mark in
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`commerce since its adoption, and his mark is inherently distinctive or has acquired secondary
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`3 P
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`laintiff has also apparently admitted that he “cannot prevail on a trade secrets claim because
`he “is not a company, nor a corporation to presume a competition between himself and defendant,
`(‘Heinz’) [sic].”).
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 16 of 20
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`meaning.” Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 292 (3d Cir. 1991).4 The
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`overall purpose of the act is to provide protection for the trademarks as well as the public, which
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`runs the risk of being confused or misled as the result of trademark infringement. U.S. Jaycees v.
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`Philadelphia Jaycees, 639 F.2d 134, 142 (3d Cir. 1981). The Act does not require that there be
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`actual confusion; instead, it requires only a likelihood of confusion. Family Circle, Inc. v Family
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`Circle Assocs., Inc., 332 F.2d 534, 539-40 (3d Cir. 1964).
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`Plaintiff admits that he “never pointedly acquired a registration trademark [sic]” for the
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`phrase “upside-down.” (See Docket No. 30 at ¶ 19). Therefore, Plaintiff must show that he was the
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`first to adopt the mark in commerce, continuous use of the mark, and the mark’s inherent
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`distinctiveness. Plaintiff makes no such allegations in his Amended Complaint. (Docket No. 25).
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`In addition, Plaintiff makes no allegations that he ever sold his device to anyone. (Id.). Given his
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`lack of success in marketing his dual-chambered container to Heinz. Plaintiff cannot show that he
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`has used the mark “upside-down” in relation to his product in commerce for any length of time.
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`Moreover, the term “upside-down” by itself is not inherently distinctive, and Plaintiff does not allege
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`4 C
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`entral to a claim for trademark infringement is a showing of a mark’s continuous use in
`commerce. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918); Ford Motor Co.,
`930 F.2d at 292. The United States Supreme Court has stated this principle as follows:
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`There is no such thing as property in a trade-mark except as a right
`appurtenant to an established business or trade in connection with
`which the mark is employed . . . the right to a particular mark grows
`out of its use, not its mere adoption; its function is simply to
`designate the goods as the product of a particular trader and to protect
`his good will against the sale of another’s product as his; and it is not
`the subject of property except in connection with an existing word or
`symbol.
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`United Drug Co., 248 U.S. at 97.
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`Case 2:08-cv-01122-NBF Document 35 Filed 08/12/09 Page 17 of 20
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`that the term has gained any secondary meaning. Without any use in commerce or any inherent
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`distinctiveness of the term in question, Plaintiff cannot show the likelihood of confusion necessary
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`for a claim of trademark infringement. See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1019 (3d
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`Cir. 2008).
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`Accordingly, Defendant’s motion to dismiss Plaintiff’s trademark infringement claim, to the
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`extent that Plaintiff has atte