Primerano v. Vornado Air, LLC

VINCENT A. PRIMERANO, Plaintiff, v. VORNADO AIR, LLC, Defendant.

Case No. 16-2752-JAR

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS

July 25, 2017

MEMORANDUM AND ORDER

Plaintiff filed suit against Defendant alleging misappropriation of trade secret, breach of contract, unjust enrichment, and quantum meruit. Before the Court is Defendant's Motion for Summary Judgment (Doc. 47), seeking dismissal of all claims on various grounds. The motion is fully briefed and the Court is prepared to rule. For the reasons stated below, the Court partially grants the motion for summary judgment.

I. SUMMARY JUDGMENT STANDARD

Summary judgment is appropriate if the moving party demonstrates "that there is no genuine dispute as to any material fact" and that it is "entitled to judgment as a matter of law."¹ In applying this standard, the Court views the evidence and all reasonable inferences therefrom in the light most favorable to the nonmoving party.² "There is no genuine [dispute] of material fact unless the evidence, construed in the light most favorable to the non-moving party, is such that a reasonable jury could return a verdict for the non-moving party."³ A fact is "material" if,under the applicable substantive law, it is "essential to the proper disposition of the claim."⁴ A dispute of fact is "genuine" if "there is sufficient evidence on each side so that a rational trier of fact could resolve the issue either way."⁵

The moving party initially must show the absence of a genuine dispute of material fact and entitlement to judgment as a matter of law.⁶ In attempting to meet this standard, a movant who does not bear the ultimate burden of persuasion at trial need not negate the nonmovant's claim; rather, the movant need simply point out to the court a lack of evidence for the nonmovant on an essential element of the nonmovant's claim.⁷

Once the movant has met the initial burden of showing the absence of a genuine dispute of material fact, the burden shifts to the nonmoving party to "set forth specific facts showing that there is a genuine issue for trial."⁸ The nonmoving party may not simply rest upon its pleadings to satisfy its burden.⁹ Rather, the nonmoving party must "set forth specific facts that would be admissible in evidence in the event of trial from which a rational trier of fact could find for the nonmovant."¹⁰ In setting forth these specific facts, the nonmovant must identify the facts "by reference to affidavits, deposition transcripts, or specific exhibits incorporated therein."¹¹ Tosuccessfully oppose summary judgment, the nonmovant must bring forward more than a mere scintilla of evidence in support of his position.¹² A nonmovant may not create a genuine issue of material fact with unsupported, conclusory allegations."¹³

Finally, summary judgment is not a "disfavored procedural shortcut"; on the contrary, it is an important procedure "designed to secure the just, speedy and inexpensive determination of every action."¹⁴

II. UNCONTROVERTED FACTS

A. Motion to Strike

Plaintiff denied some of Defendant's statements of uncontroverted fact by referencing his letter to strike.¹⁵ In that letter, Plaintiff moved to strike: 1) paragraphs 5m. and 5n. and Exhibits M and N of attorney Neil Smith's affidavit for lack of foundation; and 2) Brian Cartwright's affidavit for Defendant's failure to disclose Cartwright as an individual likely to have discoverable information during initial disclosures as required by Fed. R Civ. P. 26(a)(1).¹⁶ Defendant opposed the letter to strike on procedural and substantive grounds.

When deciding a summary judgment motion, the Court may consider evidence submitted, if admissible in substance, even if it would not be admissible, in form, at the trial. A party may properly authenticate a document "through a supporting affidavit or deposition excerpt from anyone with personal knowledge of the facts contained in the exhibit."¹⁷

An affidavit is not required to authenticate every document submitted for consideration at summary judgment.¹⁸ "The appearance, contents, substance, internal patterns, or other distinctive characteristics of the item, taken together with all the circumstances" may also satisfy the authentication requirement.¹⁹ An exhibit may also qualify as "self-authenticated" under Fed. R. Evid. 902.

Plaintiff argues that contrary to paragraph 5m., Exhibit M is not the trademark registration for HoMedics MyBaby Ultrasonic Cool Mist Humidifier. He further argues that Exhibit M does not support Defendant's factual allegation that that product has been on the market since 2012.²⁰ The Court agrees with Plaintiff that Exhibit M is technically not a trademark registration, but it nonetheless substantiates the facts alleged. Exhibit M is an electronic search result for the word mark "MYBABY" from the United States Patent and Trademark website that indicates MYBABY "first use[d] in commerce" "humidifiers incorporating sound machine device" in July 2012.²¹ Because it is from a government website and is capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned, the Court finds Exhibit M a public record.²² Accordingly, the Court will not strike Exhibit M for lack of foundation.

Plaintiff argues that there is no foundation to assert that Exhibit N constitutes "official" advertising for any product, much less something called a Coway Air + Sound. He furtherargues that Ex. N does not support the factual allegation that the Coway Air + Sound product has been on the market since 2013²³ since there are no dates on Exhibit N. The Court disagrees. Exhibit N appears to be a brochure for Coway's 2 in 1 Air Purifier + Soothing Sounds. It contains a "JAN2013A" stamp, which suggests that it was published in January 2013. Given its appearance, content, and other characteristics, the Court finds Exhibit N would be admissible in evidence through a witness with personal knowledge of their contents, and therefore, for purposes of this motion only, the Court will not strike it for lack of foundation.

As to Cartwright's affidavit, Defendant disclosed Cartwright's contribution to the development of the BreesiLS in its Revised Initial Disclosures on March 11, 2016.²⁴ Although this disclosure was approximately four months after the initial disclosures deadline, it predated the factual discovery deadline by one month and the all-discovery deadline by four months. Plaintiff did not object to the revised disclosures or request clarification as to any perceived vagueness. Additionally, Plaintiff had sufficient time to schedule Cartwright for a deposition. Under these circumstances, the Court finds the delayed disclosure of Cartwright harmless.²⁵ Accordingly, the Court declines to strike Cartwright's affidavit.

The Court also overrules Plaintiff's objection to paragraph 16 of Cartwright's affidavit, which states: "During the ideation and design of the BreesiLS, the use of computer-generated, looping sound as a soothing sleep aid was well-known in the industry, and upon information andbelief, was also known by the general public."²⁶ As a director of brand marketing, Cartwright would be aware of product features in the industry. And under the doctrine of judicial notice, the Court may consider matters of common knowledge such as using a sound machine to aid with sleep. Finally, because the Court denies the motion to strike on the merits, the Court finds it unnecessary to address Defendant's procedural arguments.

B. Uncontroverted Facts

The following material facts are either uncontroverted or, if controverted, are construed in the light most favorable to Plaintiff, the nonmovant. Defendant, a manufacturer of fans, is currently and at all material times, a corporation headquartered in Andover, Kansas.

Plaintiff is currently and at all material times, a resident of New York.²⁷ Plaintiff has a GED and no other formal education. He has no medical or engineering training. Despite this, he has a history of developing and marketing consumer products.

In 1997, Plaintiff designed and introduced "TV Ears," a product that wirelessly transmits audio signals from a television to an individual headset so that hearing-impaired individuals may listen to a television program with non-hearing-impaired individuals. Plaintiff sold his interest in TV Ears in 2003, and briefly retired. In 2009-2010, Plaintiff and a business partner designed and introduced "DrQuickLook," an intra-oral camera system that permits dental patients to view their teeth, gums, and mouth before and after any dental work. Both products continue to be sold today.

Plaintiff's Development of his Sleep System Concept

In 2001-2002, Plaintiff became intrigued with white noise sound machines to aid concentration and sleep. At that time, he conceived the idea of combining a fan with a white noise sound machine, but did not act upon it until 2007.²⁸

In 2007, he scoured the internet, the available literature, and the commercial offerings at the time to see if any fans or other appliances had already incorporated such sound generation technology. Finding none, he conducted extensive internet research on sleep disorders, the severe harm caused by such disorders, as well as the lack of desirable, alternative ways to promote deep sleep. He also studied customer and market demographics. Additionally, he purchased three to four existing sound machines, analyzed their components, and evaluated how much it would cost to manufacture and integrate similar sound machines into a portable fan. He estimated the price range for such an integrated product from $89 to $139.²⁹ He discussed the concept with his then girlfriend (now wife), who helped him develop the concept and drew sketches of the product.

By mid-2008, Plaintiff estimated he spent approximately a couple of hundred hours researching and developing his product concept. He then prepared a power point presentation to present his idea to major fan manufacturers with the intent of...