Case 2:19-cv-01224-PLD Document 311 Filed 02/06/24 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`Civil Action 19-1224
`Magistrate Judge Dodge
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`CHRISTOPHER M. WARMAN, et al.,
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`LOCAL YOKELS FUDGE, LLC, et al.,
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`Plaintiffs,
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`vs.
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`Defendants.
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`MEMORANDUM ORDER
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`Plaintiffs Christopher M. Warman (“Warman”), the Trust for Family of Christopher
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`Warman (the “Trust”) and Chocolate Moonshine, LLC (“Moonshine LLC”) brought this action
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`against Defendants Local Yokels Fudge, LLC (“Local Yokels”), Christine Falvo (“Falvo”),
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`Charles Brian Griffin (“Griffin”), Donald Konieczny (“Konieczny”) and CM Chocolatier, LLC
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`(“Chocolatier”). The Amended Complaint asserted various federal and state law claims arising out
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`of Defendants’ alleged use of Plaintiffs’ recipe for making fudge, which was asserted to be a trade
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`secret. In turn, Defendants asserted various counterclaims. This case was recently tried before a
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`jury and the jury rendered a verdict, as described below.
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`Pending before the Court is Plaintiffs’ Motion for Dismissal of Non-Tried Claims and
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`Counterclaims (ECF No. 294). For the reasons that follow, the motion will be denied.
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`I. Procedural History
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`Plaintiffs commenced this action in September 2019 and subsequently filed an Amended
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`Complaint on August 27, 2020 (ECF No. 51). Federal question jurisdiction, 28 U.S.C. §§ 1331,
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`1338, was invoked based on the trade secret, trademark and copyright claims, and supplemental
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`jurisdiction was asserted over the state law claims, 28 U.S.C. § 1367(a). The Amended Complaint
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`Case 2:19-cv-01224-PLD Document 311 Filed 02/06/24 Page 2 of 7
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`included thirteen counts: trade secret misappropriation in violation of the Defend Trade Secrets
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`Act, 18 U.S.C. §§ 1831-39 ( (Count I), and the Pennsylvania Uniform Trade Secrets Act, 12 Pa.
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`C.S. §§ 5301-08 ( (Count II); contributory trademark infringement in violation of the Lanham Act,
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`15 U.S.C. § 1125 (Count III); tortious interference with contractual relations by Falvo and Local
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`Yokels (Count IV) and by Griffin and Chocolatier (Count VI); trademark infringement (Count V);
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`breach of contract by Chocolatier (Count VII) and Falvo (Count VIII); unjust enrichment (Count
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`IX); civil conspiracy (Count X); defamation (Count XI); contributory copyright infringement by
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`Falvo, Local Yokels and Konieczny (Count XII); and copyright infringement by all Defendants
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`(Count XIII), with the last two claims based on violations of the Copyright Act, 17 U.S.C. § 501.
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`Defendants denied Plaintiffs’ allegations and asserted counterclaims against them. These
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`counterclaims included breach of contract, conspiracy, tortious interference with contract or
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`prospective beneficial commercial relationship and unfair competition.1
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`On December 27, 2022, an opinion and order were filed granting Defendants’ motion for
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`summary judgment as to Counts III, V, XII and XIII (the trademark and copyright claims) and
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`denying it in all other respects (ECF Nos. 159, 160).
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`As a result, Plaintiffs’ remaining claims were the federal (Count I) and state (Count II)
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`trade secret misappropriation claims; tortious interference with contractual relations by Falvo and
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`Local Yokels (Count IV) and by Griffin and Chocolatier (Count VI); breach of contract by
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`Chocolatier (Count VII) and Falvo (Count VIII); unjust enrichment (Count IX); civil conspiracy
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`(Count X); and defamation (Count XI). As Defendants note, the summary judgment opinion
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`determined that the state law claims in Counts IV, VI, VII and VIII survived only to the extent that
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`they related to the trade secret claims.
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`1 Certain other counterclaims were dismissed upon motion of the Plaintiffs (ECF Nos. 66, 67).
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`2
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`On August 1, 2023, Plaintiffs filed a Pretrial Statement (ECF No. 185), which discussed
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`only their trade secret misappropriation, unjust enrichment and defamation claims and associated
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`claimed damages. Defendants’ Pretrial Statement addressed only one of its counterclaims, which
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`sought $11,000.00 for breach of contract. (ECF No. 190 at 9.) On November 20, 2023, Plaintiffs
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`filed a Trial Brief (ECF No. 257). Their brief only discussed their trade secret misappropriation
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`and unjust enrichment claims.
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`After Plaintiffs’ Motion for Leave to File Second Amended Complaint and for Amendment
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`of the Court’s Pretrial Order (ECF No. 191) was denied (ECF No. 203), Plaintiffs sought leave to
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`file a Supplemental Pretrial Statement (ECF No. 204). Plaintiffs stated in their motion that the
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`purpose of their requested relief was to present their tortious interference claim in a manner
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`consistent with the Court’s ruling of Defendants’ motion for summary judgment and to clarify that
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`they intended to present at trial their breach of contract claims insofar as they were consistent with
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`the summary judgment decision. In an Order issued on October 25, 2023 (ECF No. 232), the Court
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`denied their motion, noting that to the extent that Plaintiffs merely represented that they intend to
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`pursue claims at trial that have been asserted in their Amended Complaint, amendment of their
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`Pretrial Statement was unnecessary. As the Court stated in its Order, “Plaintiffs are not precluded
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`from introducing evidence that supports their existing claims.” (ECF No. 232 at 5.) At the same
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`time, Plaintiffs’ motion was denied to the extent that Plaintiffs sought to assert claims that were
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`previously dismissed, or to interject new facts regarding their existing claims or expand existing
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`claims to include matters that took place long after the Amended Complaint was filed. As the Court
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`noted, these facts had not been subject to discovery, which closed in mid-2021.
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`Subsequently, and prior to the final pretrial conference on November 20, 2023, Plaintiffs
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`submitted a Trial Brief (ECF No. 257) which addressed only their misappropriation of trade secrets
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`3
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`and unjust enrichment claims. Similarly, their proposed verdict form (ECF No. 256) included only
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`these claims. The parties’ joint proposed jury instructions (ECF No. 255) only included
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`instructions regarding these claims. A final pretrial conference took place on November 20, 2023.
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`At this conference and in subsequent conferences, Plaintiffs indicated that they would be
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`proceeding at trial only with their claims of trade secret misappropriation and unjust enrichment.2
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`On November 27, 2023, a two-week jury trial commenced. During the trial, the testimony
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`and evidence presented related only to Plaintiffs’ trade secret misappropriation and unjust
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`enrichment claims. No testimony or evidence was introduced relating to Plaintiffs’ other claims or
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`Defendants’ counterclaims. The final verdict form, which was discussed at length with the parties,
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`only included the misappropriation and unjust enrichment claims, and only those claims were
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`submitted to the jury.
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`At the conclusion of the trial, the jury reached a verdict that found Defendants Falvo,
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`Konieczny and Local Yokels liable for trade secret misappropriation under federal and state law
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`(Counts I and II) and found Defendant Chocolatier liable for unjust enrichment (Count IX) (ECF
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`No. 288).
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`On January 8, 2024, Plaintiffs filed the motion for dismissal of the non-tried claims, which
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`has been fully briefed (ECF Nos. 294, 301).
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`II. Analysis
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`Plaintiffs acknowledge that they cannot proceed under Federal Rule of Civil Procedure
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`41(a), which discusses the circumstances in which a plaintiff may dismiss “an action.” By its plain
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`language, Rule 41(a) does not provide a path for the relief requested. As summarized by another
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`2 During several conferences before and throughout the trial, the Court asked the parties to dismiss
`the claims and counterclaims that they had elected not to pursue. While suggesting that they would
`do so, neither side did.
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`4
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`district court: “Rule 41(a), Fed. R. Civ. P., provides for a plaintiff’s dismissal of an entire case
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`against some or all defendants (with or without leave of court), but not for dismissal of some but
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`not all counts against a particular defendant.” Pagan v. Rivera, 2022 WL 2193491, at *1 (D.N.J.
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`June 17, 2022) (citations omitted).
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`Plaintiffs also indicate that: “Although some courts have indicated that a motion under Rule
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`41(a) to dismiss less than all claims against a defendant should be regarded as a motion to amend
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`the complaint under Rule 15, e.g., Pagan, a post-trial motion under Rule 15 is available only in
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`certain circumstances that are not present here.” (ECF No. 294 at 4.) Thus, as they admit, they
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`cannot proceed under Rule 15.
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`Instead, Plaintiffs contend that their motion is brought under Rule 41(b)(2), which refers
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`to dismissal of “the action or any claim.” They argue that this Rule allows them to move for
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`dismissal without prejudice of their non-tried claims (Counts IV, VI, VII, VIII, X and XI).
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`As Rule 41(b)(2) clearly states, however, “a defendant may move to dismiss the action or
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`any claim against it.”3 As the Supreme Court has stated: Rule 41(b) “is on its face appropriate only
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`as a defendant’s remedy.” Societe Internationale Pour Participations Industrielles Et
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`Commerciales, S. A. v. Rogers, 357 U.S. 197, 207 (1958). As summarized by a leading treatise on
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`civil procedure: “The Rule’s language makes it apparent that Rule 41(b) is solely a defendant’s
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`procedure, although it obviously may be invoked by a plaintiff who is defending against a
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`counterclaim.” 9 Charles Alan Wright & Arthur R. Miller, Fed. Prac. & Proc. Civ. § 2369 (4th
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`ed.) Plaintiffs could potentially utilize Rule 41(b)(2) to dismiss Defendants’ untried counterclaims,
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`but not with respect to their claims in the Amended Complaint which they elected not to pursue.
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`3 Although Defendants argue that the proposed dismissal should be with prejudice rather than
`without prejudice, they have not challenged Plaintiffs’ attempt to invoke Rule 41(b)(2) nor have
`they made a Rule 41(b)(2) motion.
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`5
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`Simply put, there is no procedural vehicle by which Plaintiffs can move to dismiss without
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`prejudice the claims that they failed to pursue at trial. Indeed, in the normal course of litigation, all
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`claims and issues in a civil action are presented for resolution in one trial. See, e.g., Lis v. Robert
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`Packer Hosp., 579 F.2d 819 (3d Cir. 1978). Presumably, Plaintiffs made a conscious and deliberate
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`choice about which claims to present to the jury and have provided no authority for their contention
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`that they can now seek dismissal without prejudice of the claims and counterclaims the parties
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`opted not to pursue, seemingly reserving the option to reassert the very same claims at some later
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`time. While there is a procedural mechanism to request separate trials for separate claims, namely
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`Rule 42(b), Plaintiffs never filed a motion seeking this relief.4 Therefore, Plaintiffs and Defendants
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`are bound by the strategic decisions they made at trial.
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`With the conclusion of the trial, all claims presented to the jury have been resolved. Any
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`remaining claims or counterclaims not presented to the jury are also resolved by the parties’ failure
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`to prosecute them. Because they are no longer pending, they are not subject to dismissal.5
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`III. Conclusion
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`Therefore, this 6th day of February, 2024, Defendants’ Motion for Dismissal of Non-Tried
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`Claims and Counterclaims (ECF No. 294) is DENIED because all claims and counterclaims
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`asserted in this action were either presented to the jury or were not prosecuted at trial. Thus, there
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`4 Claims may also be severed under Rule 21. “A severed claim proceeds as a discrete suit and
`results in its own final judgment from which an appeal may be taken.” U.S. ex rel. LaCorte v.
`SmithKline Beecham Clinical Labs., Inc., 149 F.3d 227, 231 (3d Cir. 1998). However, Rule 42(b)
`is more “appropriate where claims are factually interlinked, such that a separate trial may be
`appropriate, but final resolution of one claim affects the resolution of the other.” Karlo v.
`Pittsburgh Glass Works, LLC, 2015 WL 6134052, at *3 (W.D. Pa. Oct. 16, 2015) (quoting Gaffney
`v. Riverboat Servs. of Indiana, Inc., 451 F.3d 424, 442 (7th Cir. 2006)). While Plaintiffs suggested
`before trial that such a mechanism could be employed, they did not file a motion seeking relief
`under either Rule 21 or Rule 42(b).
`5 The Court takes no position at this time on any future claims that Plaintiffs may intend to pursue
`against one or more of the Defendants that were not asserted in the Amended Complaint.
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`are no remaining claims or counterclaims in this action.
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`BY THE COURT:
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`s/Patricia L. Dodge
`PATRICIA L. DODGE
`United States Magistrate Judge
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