Tri-State Energy Solutions LLP v. KVAR Energy Savings Inc.

Filing 223

MEMORANDUM OPINION re 191 SEALED MOTION for Summary Judgment, and 193 MOTION for Summary Judgment. Signed by Judge Richard G. Andrews on 8/13/2012. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
TRI-STATE ENERGY SOLUTIONS,
LLP, CHIEFFO ELECTRIC, INC.,
LAWRENCE GILLEN, and JOSEPH
J. CHIEFFO,
Plaintiffs,

v.

Civil Action No. 08-209-RGA

KV AR ENERGY SAVINGS INC.,
STEVEN B. FISH, and
GREGORY G. TAYLOR,
Defendants.

MEMORANDUM OPINION
Leo John Ramunno, Esq. (argued), Wilmington, DE, Attorney for Plaintiffs.
Alisa E. Moen, Esq., Wilmington, DE; Ian M. Cominsky, Esq., Jason A. Snyderman, Esq.
(argued), William R. Cruse, Esq., Rosemary McKenna, Esq., Philadelphia, PA, Attorneys for
Defendants KV AR Energy Savings Inc. and Steven B. Fish.

August~, 2012

j
Presently before the Court are the motions for summary judgment submitted by Plaintiffs

I
l
I

Tri-State Energy Solutions, LLP, Chieffo Electric, Inc., Lawrence Gillen, and Joseph Chieffo
(D .I. 193) and related briefing (D .I. 193, 195, 200, 201, 206), and by Defendants KV AR Energy
Savings, Inc. and Steven B. Fish (D.I. 191) and related briefing (D.I. 192, 197, 199, 207). The
Court has heard oral argument on both motions. (D.I. 221 ).
For the reasons discussed, Plaintiffs' Motion is granted as to Counterclaims I, IV, and IX,
and denied as to Counterclaims III, V, VI, VIII, XI, and XII. Defendants' Motion is granted as to
Tri-State's Counts V and VII; denied as to Plaintiffs' Counts III and IV; and denied as to
KVAR's Counterclaims VI and VIII. Plaintiffs' Counts I, II and VI are dismissed, and
Defendants' Counterclaims VII (Good Faith and Fair Dealing), X (Deceptive Trade Practices
Act), and Count XIII (Declaratory Judgment) are dismissed.

BACKGROUND
This action arises out of a regional distribution agreement ("RDA'') executed between
KVAR and Tri-State, whereby Tri-State was to distribute KVAR's energy-saving products in
Delaware, Maryland, and Pennsylvania. Gillen and Chieffo were Tri-State's co-presidents.
Gregory Taylor founded KVAR, and Fish was brought on as KVAR's CEO. The relationship
fell apart; the details will be addressed as necessary to adjudicate the claims here.
Tri-State filed its initial complaint against KV AR in the Delaware Court of Chancery on
November 19,2007, and served it on March 5, 2008. (D.I. 192, Ex. EE, FF). In the interim, on
January 18, 2008, KVAR filed a complaint against Tri-State, Gillen, Chieffo, and Chieffo
Electric, Inc., in the Middle District of Florida, which transferred the case to this Court on
1

January 21, 2009. (Civil Action No. 09-cv-41, D.I. 1) ("Florida Action"). KVAR removed TriState's Chancery case to this Court on April11, 2008, thereby initiating this action. (D.I. 1).
In April2009, KVAR reasserted its claims from the Florida Action as counterclaims in
this one, and Fish entered the case as a counterclaim plaintiff. (D.I. 22, Florida Action D.l. 1).
The parties have proceeded under this case. (D.I. 192 at 17; D.l. 205). 1 On March 29, 2010,
Plaintiffs amended their original complaint, adding claims against Fish. (D.I. 80). KV AR and
Fish renewed their counterclaims in response. (D.I. 82).

Plaintiffs amended again on April 30,

2010, and KVAR and Fish again renewed their counterclaims. (D.I. 83, 84). Plaintiffs' claims
against Taylor were resolved against Plaintiffs on summary judgment. (D.I. 209, 210).
Tri-State asserts breach of the implied covenant of good faith and fair dealing by KVAR
Energy (Count II); Tri-State and Chieffo Electric, Inc. assert trade libel by all defendants (Count
III); all plaintiffs assert deceptive trade practices by all defendants (Count IV); Tri-State seeks
declaratory relief regarding express and implied warranties against KV AR Energy (Count V); all
Plaintiffs seek declaratory relief regarding trademark rights against KV AR Energy (Count VI);
and Gillen asserts intentional infliction of emotional distress by Fish (Count VII). (D.I. 83). The
Court previously struck Count I of Tri-State's Revised Amended Complaint, (D.I. 184), and it
will now be formally dismissed. KV AR and Fish have moved for summary judgment on all of
Plaintiffs' asserted claims, i.e., Counts II-VII. (D.I. 191).
KVAR asserts counterclaims of Lanham Act trademark infringement (Counterclaim I),
1

Plaintiffs did not answer the Florida Action claims on the merits. (Florida Action D.l.
22). KV AR and Fish have suggested that dismissing the transferred Florida action as moot
would be appropriate while Plaintiffs contend they are entitled to reimbursement of attorneys'
fees from the Florida Action. (D.I. 192 at 17 n.8; D.l. 205). The Court need not reach this
question today.
2

I

l

Lanham Act certification mark infringement (Counterclaim II), Lanham Act false advertising and
unfair competition (Counterclaim III), misappropriation of confidential information
(Counterclaim IV), trade libel (Counterclaim V), breach of contract (Counterclaim VI),
intentional interference with contract, prospective economic advantage, and advantageous
business relationships (Counterclaim VIII), common law unfair competition (Counterclaim IX),
and trade secret misappropriation (Counterclaim XI) against all Plaintiffs. (D.I. 22, 82, 84).
KV AR and Fish assert abuse of process against Gillen (Counterclaim XII). !d. KV AR has
withdrawn counterclaims VII (good faith and fair dealing), X (deceptive trade practices), and
XIII (declaratory judgment). (D.I. 200 at 14, 219). KVAR moved for summary judgment on its
breach of contract counterclaim (Counterclaim VI) and intentional interference counterclaim
(Counterclaim VIII). (D.I. 191). Plaintiffs moved for summary judgment on all ofKVAR's
counterclaims. (D.I. 193).

DISCUSSION
A. LegalStandard
"The court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter oflaw."
FED.R.CIV.P. 56(a). The moving party has the initial burden of proving the absence of a
genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477
U.S. 317, 330 (1986). Material facts are those "that could affect the outcome" of the proceeding,
and "a dispute about a material fact is 'genuine' if the evidence is sufficient to permit a
reasonable jury to return a verdict for the non-moving party." Lamont v. New Jersey, 637 F.3d
177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)).

3

I

The burden on the moving party may be discharged by pointing out to the district court that there
is an absence of evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323.
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue
for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986);

Williams v. Borough ofWest Chester, Pa., 891 F.2d 458,460-61 (3d Cir.1989). A non-moving
party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to
particular parts of materials in the record, including depositions, documents, electronically stored
information, affidavits or declarations, stipulations ... , admissions, interrogatory answers, or other
materials; or (B) showing that the materials cited [by the opposing party] do not establish the
absence ... of a genuine dispute .... " FED.R.Crv.P. 56(c)(1). 2
When determining whether a genuine issue of material fact exists, the court must view
the evidence in the light most favorable to the non-moving party and draw all reasonable
inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476
F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only ifthe evidence is such that a
reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49;

see Matsushita Elec. Indus. Co., 475 U.S. at 586-87 ("Where the record taken as a whole could
not lead a rational trier of fact to find for the non-moving party, there is no 'genuine issue for
trial."'). If the non-moving party fails to make a sufficient showing on an essential element of its
case with respect to which it has the burden of proof, the moving party is entitled to judgment as
a matter of law. See Celotex Corp., 477 U.S. at 322.
2

There is an extensive record in this case. To the extent a party does not properly
oppose factual assertions, the Court considers the factual assertion to be undisputed, and a basis
on which to grant summary judgment. FED.R.Crv. P. 56(e)(2) & (3).
4

B. Decision
1. KVAR 's Motion need not be decided as to Tri-State's Breach of the Implied Covenant
of Good Faith and Fair Dealing Claim (Count II); that Count will be dismissed..

Tri-State alleged that "[a]n implied covenant of good faith and fair dealing exists under
the Regional Agreement between Tri-State and KV AR Energy" and that KV AR breached that
implied covenant. (D.I. 83, ~ ~ 59-60). The parties agreed to construe and enforce the Regional
Agreement "in accordance with the laws ofthe State ofFlorida." (D.I. 192 Ex.

A,~

24). Florida

law permits a claim of the implied covenant of good faith and fair dealing only in tandem with a
valid breach of contract claim. Centurion Air Cargo, Inc. v. UPS Co., 420 F .3d 1146, 1151-52
(11th Cir. 2005) ("[A] claim for a breach of the implied covenant of good faith and fair dealing
cannot be maintained under Florida law in the absence of a breach of an express term of a
contract."). Where a court has denied a claim of a breach of express contractual terms, Florida
law precludes a finding of breach of the implied covenant of good faith and fair dealing. !d. The
Court struck Tri-State's breach of contract claim and prohibited Tri-State from presenting
evidence in its defense to KVAR's breach of contract counterclaim. (D.I. 184).
KVAR argues that because this Court struck Tri-State's breach of contract claim, TriState cannot maintain a claim for breach of the implied covenant of good faith and fair dealing
under Florida law. (D.I. 192 at 19-20). In opposition, Tri-State asserts a more conservative
interpretation ofthis Court's order, arguing Tri-State can still present evidence ofKVAR's
alleged breach of contract in support ofTri-State's other claims, including Count II. (D.I. 199 at
2-3). The Court explicitly "str[uck] Count I ofthe Tri-State parties' revised amended complaint,
[and] prohibit[ed] the Tri-State parties from presenting evidence in their defense to Count VI of

5

KVAR's counterclaims." (D.I. 184 at 33). The Court's Order was specific to certain counts; it
did not, as KV AR asserts, preclude Tri-State "from even alleging ... that KV AR breached any
express term of the RDA." (D.I. 192 at 20). If the only basis for KVAR's motion was this
Court's order, it would not succeed.
Count Two was not properly pled as a separate cause of action. "A breach ofthe implied
covenant of good faith and fair dealing is not an independent cause of action, but attaches to the
performance of a specific contractual obligation." Centurion Air Cargo, 420 F .3d at 1151.
Defendants have advanced the argument with support. Plaintiffs have responded with argument
but no authority. The Court will dismiss Count II. Thus, the Court need not decide the summary
judgment as to Count II.
2. KVAR 'sand Fish's Motion is DENIED as to Tri-State's and Chieffo Electric's Trade
Libel Claim (Count III).
Tri-State and Chieffo Electric claim that KV AR and Fish intentionally made and
disseminated false and malicious statements about Tri-State and Chieffo Electric with the intent
to disparage those parties and their products and services. (D.I. 83, ,, 63-68). The statements at
issue are: a) the "Impostor List" posted on KVAR's website that identifies Plaintiffs and their
product as entities with which KV AR asserts it is not affiliated and that are manufacturing and

lor marketing KVAR's product under another name; and b) oral statements by Fish to
distributors about Plaintiffs' business practices, specifically that Gillen and/or Tri-State were
overcharging, price gouging, or stealing money from distributors; that they were crooks and
thieves; and that their products caused fires. (D.I. 192 at 26, Exh. GGG, Exh. Nat 454-464; D.I.
199 at 5).

6

I

KV AR applies the general elements of defamation, drawn from the context of a false
warrant. (D.I. 200 at 10, citing Adams v. Selhorst, 779 F.Supp.2d 378 (D. Del. 2011)). Even
assuming Adams shapes Tri-State's "trade libel" claim, 3 KVAR fails to show there is a genuine
issue of material fact.
KV AR and Fish moved for summary judgment on the basis that Plaintiffs cannot show
that any statement in the Impostor List is false and defamatory. (D.I. 192 at 27). In response,
Plaintiffs assert the Impostor List's claims that KV AR holds a patent on the product, and that
some of Plaintiffs' units sold have caused damage and fires, are false. (D.I. 199 at 5). KVAR
and Fish reply that even if these statements were false, they do not specifically refer to any one
party listed as an "impostor," including Plaintiffs. (D.I. 207 at 4-5). Gillen testified that the

f

r

Impostor List is false because only KV AR' s product, not his own, caught fire; and that the falsity
with regard to him and his coplaintiffs is "implied" in the "whole document." See (D .I. 192 Exh.
Nat 464-66, 471-73). The narrative portion ofthe Impostor List can be reasonably read to refer
to each listed "impostor," including Plaintiffs. There remains a genuine issue of material fact as
to whether Defendants made false, defamatory statements about any or all of the Plaintiffs in the

f

I

I

Impostor List.
KV AR and Fish also request summary judgment on Claim III because Plaintiffs have not
shown that the Impostor List or the oral statements caused Tri-State any pecuniary loss or other
injury, which KVAR and Fish assert is an element of"trade libel." (D.I. 192 at 26-27). KVAR

J

I

i

3

Both sides have assumed that Delaware law recognizes a claim for "trade libel."
Plaintiffs cite New Jersey law, while KVAR cites the elements of defamation generally in the
context of a false warrant. (D .I. 193 at 11-12, citing Mayflower Transit, LLC v. Prince, 314
F.Supp.2d 362 (D.N.J. 2004); D.l. 200 at 10, citing Adams v. Selhorst, 779 F.Supp.2d 378 (D.
Del. 2011)).
7

I

I

f

I

I

I
t

l

and Fish argue that Gillen testified that he could not point to any economic harm resulting from
the alleged defamation. (D.I. 192, Exh. Gat 343). Plaintiffs did not respond to this argument.

See (D.I. 199 at 5).
Assuming injury is required, while Gillen testified that he could not point to any
"economic harm resulting from the alleged defamation," he also testified that his reputation was
damaged ("[If] somebody Googles me right now, the first thing pops up that I'm impostor and I
sell a product that burns down people's homes."); that his name had been "slandered"; and that
he and his family had been threatened to the point that his "kid hid[] underneath a table every
time somebody knocked on the door." !d. at 342-44. KVAR and Fish's argument, focused on
the lack of economic harm, does not demonstrate the absence of a genuine issue of material fact
with regard to the element of injury, and does not justify summary judgment in their favor on
Claim III.
3. KVAR and Fish's Motion is DENIED as to Plaintiffs' Deceptive Trade Practices
Claim (Count IV).
In Count IV, Plaintiffs allege Defendants made misleading and disparaging statements to
take Plaintiffs' customers and goodwill surrounding KVAR's products in violation ofthe
Delaware Deceptive Trade Practices Act, 6 Del. C. § 2531 et seq. ("DTPA") and that those
statements "and other deceptive conduct" damaged Tri-State, "including but not limited to a loss
of customers, revenue and goodwill." (D .I. 83 ,-r ,-r 71-7 6). The statements at issue are the
"Impostor List" and tape-recorded statements by Fish to distributors about Plaintiffs' business
practices, calling Gillen a "thief." (D.I. 192 at 27-29).
KVAR and Fish moved for summary judgment on Count IV, arguing: a) calling someone

8

I

t
l

a "thief' is better redressed by a defamation claim, and Tri-State cannot prove the damages
required for such a claim; b) as a matter of law, the DTPA cannot redress wrongs between parties
in the "vertical" business relationship that existed among Defendants (supplier), Plaintiffs
(distributor), and the third party sub-distributors to whom Fish made the comments; and c)
Plaintiffs lack standing to bring their DTPA claim because they have not sought injunctive relief.
(D.I. 192 at 27-29). Plaintiffs do not separately respond to Defendants' Count IV arguments,
instead lumping Count IV together with their Count III arguments that the Impostor List falsely
claims that KVAR holds a patent on their product, and that some of Plaintiffs' units sold have
caused damage and fires. (D.I. 199 at 5).
KV AR and Fish rightly note that the DTPA cannot redress wrongs between parties in a
"vertical" relationship. See Grand Ventures, Inc. v. Whaley, 632 A.2d 63, 65 (Del. 1993). A
"vertical" relationship is one between a customer and a seller, while a "horizontal" relationship is
between various business interests. !d. Horizontal relationships exist "among sellers and
producers." Crosse v. BCBSD, Inc., 836 A.2d 492, 497 n.13 (Del. 2003). KV AR and Fish argue
that the relationship between KVAR, Plaintiffs (as KVAR's distributors), and Tri-State's subdistributors comprises the "classic 'vertical' relationship which is not covered by the DTPA."
(D.I. 192 at 29).
This argument fails to demonstrate an absence of a genuine issue of material fact with
regard to the DTPA's application to the relationship among Plaintiffs, Defendants, and the third
party distributors. According to the RDA, Tri-State was KVAR's Distributor, with the
"exclusive right ... to purchase, inventory, promote and resell" KVAR's products. (D.I. 192
Exh. A). KVAR conceded at oral argument that KV AR and Plaintiffs competed, at least for an

9

account with Continental Power. (D.I. 221 at 112). A reasonable jury could find KVAR and TriState were in a horizontal relationship.
Defendants correctly assert that a party lacks standing to bring a DTP A claim where the
harm occurred in the past and the party did not seek an injunction. See HSMY, Inc. v. Getty
Petroleum Marketing, Inc., 417 F.Supp.2d 617, 623 (D. Del. 2006). KVAR's and Fish's

argument that "the Tri-State Parties have never sought injunctive relief against KV AR" is not
supported by the record; in their DTPA claim, Plaintiffs alleged that "Defendants' deceptive
conduct is continuing, and will continue to harm Plaintiffs, unless preliminar[il]y and
permanently enjoined." (D.I. 83, ~ 74). Plaintiffs concluded the Revised Amended Complaint
by asking this Court to "[p ]reliminarily and permanently enjoin[] Defendants ... from further
disparagement of Plaintiffs ... and from further deceptive or misleading conduct, including but
not limited to on websites owned, operated, or maintained by Defendants, such as its 'Impostor
List' and through any other means by which Plaintiffs [sic] have deceptively or inaccurately
misrepresented Plaintiffs." Id p. 18.
Gillen testified that his reputation continues to suffer because of the Impostor List's
continued presence online- "[If] somebody Googles me right now, the first thing pops up that
I'm an impostor and I sell a product that burns down people's homes." (D.I. 194 Ex. Gat 342).
The fact that the parties are no longer in a business relationship does not undermine that
testimony. On the record here, a reasonable jury could find at least Gillen is subject to ongoing
and future harm, and Defendants have not proven that Plaintiffs' request for injunctive relief is
moot.
Because Defendants have not shown an absence of a genuine issue of material fact as to
10

I
t

l

whether Plaintiffs (specifically Gillen) were injured by any defamatory statement, Defendants'
motion as to the "thief' statements must be denied even if those statements are analyzed under a
defamation rubric, as Defendants assert is proper. See Adams v. Selhorst, 779 F.Supp.2d 378,
395 (D. Del. 2011) (requiring injury under a defamation claim).

4. KVAR 's Motion is GRANTED as to Tri-State's Warranty Declaratory Relief Claim
(Count V).
Tri-State's Count V asks this Court to declare that Defendants must honor express and
implied warranty claims for the KV AR Energy products Plaintiffs sold under the RDA, alleging
Tri-State has demanded KV AR honor such warranty claims and KV AR has refused to do so.
(D.I. 83

~~

78-81, p. 18). KV AR moved for summary judgment on the basis that Tri-State

waived these warranty claims under the RDA. (D.I. 192 at 30). The RDA contains the following
provlSlon:
In the event that any of KV AR Products are proved to KV AR satisfaction to
have been defect[ive] at time of sale to Distributor, KV AR will make an appropriate
adjustment in the original sales price of such product or, at KVAR's election, replace
the defective product. KVAR shall provide to Distributor information with respect to
KVAR's limited warranty extended to the original consumer of Single-Motor Units
and Panel Units. KVAR MAKES NO WARRANTY TO DISTRIBUTOR WITH
RESPECT TO THE PRODUCTS, EITHER EXPRESS OR IMPLIED,
INCLUDING, WITHOUT LIMITATION, THE IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
(D.I. 192 Ex.

A~

11) (emphasis in original). The RDA provided this language was to be

construed and enforced in accordance with Florida law.

!d.~

24.

KVAR contends the emphasized language comprises an express waiver by Tri-State of
any claim that KVAR breached any warranty to Tri-State, and that such a waiver is enforceable
under Florida law. KV AR also argues that Tri-State lacks standing to seek declaratory relief on

I

11

I

I

any warranty claim because Tri-State has not suffered any injury relating to any warranty claim
so no actual controversy exists. Tri-State did not respond to KVAR's motion for summary
judgment on Count V; specifically, Tri-State has not offered any interpretation ofthe first
sentence ofthe RDA's warranty provision, nor any record evidence of injury from the breach of
any such warranty. (D.I. 199). Taking KVAR's undisputed arguments as true for purposes of its
Motion, summary judgment is granted.
5. Tri-State's Trademark Declaratory Relief Claim (Count VI) is DISMISSED WITH
PREJUDICE.

Tri-State's Count VI asked this Court for declaratory judgment as to the scope and
enforceability ofKVAR's trademark rights in the term "KVAR." (D.I. 83
counterclaimed against Tri-State for trademark infringement. (D.I. 22,

~~

~~

82-87). KVAR had

80-93). KVAR moved

for summary judgment on Tri-State's Count VI. (D.I. 192 at 32-33). Tri-State did not respond to
KV AR' s motion on Count VI, and at oral argument conceded that the claim was brought as a
form of defense against KV AR' s trademark infringement claim (on which KV AR is granted
summary judgment in any case, see infra) and that the claim could be dismissed. (D.I. 199, D.I.
221 at 60-61). Count VI is hereby dismissed with prejudice.
6. Fish's Motion is GRANTED as to Gillen's Intentional Infliction of Emotional Distress
Claim (Count VII).
In Count VII, Gillen claims Fish intentionally inflicted emotional distress upon Gillen by
threatening him via voice mail. (D.I. 83

~~

48-51, 88-92). Fish moved for summary judgment

on Count VII, asserting that even assuming he had left threatening voicemail messages for
Gillen, Gillen's claim was barred by the statute of limitations; the messages did not comprise the
"extreme conduct" necessary to support an intentional infliction of emotional distress claim; and

12

the messages did not cause Gillen the requisite level of distress. (D .I. 192 at 34-36). In response,
Gillen argued only that the voicemails were sufficiently outrageous to sustain his claim. (D.I.
199 at 5-6).
Under Delaware law, to establish a claim for intentional infliction of emotional distress,
the plaintiff must prove "(1) extreme and outrageous conduct; (2) an intent to cause severe
emotional distress or reckless disregard with respect to causing emotional distress; and, (3) the
conduct actually caused severe emotional distress." Jordan v. Delaware, 433 F.Supp.2d 433,
444 (D.Del. 2006). A two-year limitations period applies to claims for emotional distress.
E.E.O.C. v. Avecia Inc., 2003 WL 22432911, *2 (D. Del. Oct. 23, 2003) (applying 10 Del. C. §
8119).
It is undisputed that Count VII is based on Fish's phone calls in the summer and
November of2007. (D.I. 192 Ex. Nat 477:11-478:12; D.I. 221 at 58). Plaintiffs first alleged
this conduct, and claimed it comprised intentional infliction of emotional distress, in their March
29, 2010, Amended Complaint- over two years after the conduct allegedly occurred. (See D.I.
80, ~~ 48-53, 103-07). The allegations and claim were first made over two years after the
conduct, beyond the statute of limitations. See 10 Del. C. § 8119.
Gillen has not shown that the statute of limitations was tolled in any way, or that the
Amended Complaint relates back to any earlier pleading under FED. R. CIV. P. 15(c). Plaintiffs'
original complaint from the Court of Chancery, verified on November 16, 2007, filed on
November 19,2007, and removed to this Court in April2008, does not allege Fish's alleged
conduct underlying Count VII, and thus it does not appear the claims could relate back under
Rule 15(c) as the conduct, transaction, or occurrence was not set out in the original pleadings.
13

(D.I. 1 Ex. A). Fish was not added as a party until he brought his own counterclaims in April
2009. (D.I. 22). Fish has shown the absence of a genuine issue ofmaterial fact in dispute with
regard to the statute of limitations on Count VII. The Court need not reach Fish's other
arguments.
7. Plaintiffs' Motion is GRANTED as to Trademark Infringement (Counterclaim I), but
DENIED as to Certification Mark Infringement (Counterclaim II) and False Advertising and
Unfair Competition (Counterclaim III).
Counterclaim I asserts Plaintiffs' sale ofKVAR products under a different name,
"Kilowatt Nanny," without KVAR's authorization created confusion as to the affiliation,
connection, or association of Plaintiffs with KVAR. (D.I. 22, ,-r,-r 80-93). It also asserts Plaintiffs
used marks on their own products that were identical and/or confusingly similar to the KV AR
mark. Counterclaim II asserts that KVAR obtained Underwriters Laboratories (UL) and CSA
certifications on its product, and that Plaintiffs improperly used KVAR's ULand CSA
certifications on the Kilowatt Nanny products. (Id ,-r,-r 94-1 09). Counterclaim III alleges
generally that the Kilowatt Nanny, UL, and CSA allegations comprise false advertising and
unfair competition under the Lanham Act. (Id ,-r,-r 110-14).
Plaintiffs argue that KV AR authorized Plaintiffs to sell KV AR products under the
Kilowatt Nanny name. (D.I. 193 at 8, 10). Taylor testified he told Gillen to rename his product
as "Kilowatt Nanny" to deflect some of the calls for KVAR products. (D.I. 193-19 at 197).
While KV AR argues in opposition that Tri-State used Kilowatt Nanny "without KV AR's
knowledge or advance approval," Gillen's deposition testimony that KVAR attached also
indicates KVAR told Tri-State to change the name to deflect phone calls to Tri-State, who would
bundle the KV AR unit with other energy-saving devices and services and sell the bundle as the
14

"Kilowatt Nanny." (D.I. 200 at 7; Ex. 7, 35:8-39:24). This record is undisputed: KVAR told
Tri-State to change the name, causing KVAR's claim that Tri-State did so without KVAR's
authorization to fail. KVAR's unsupported argument to the contrary does not rescue KVAR's
claims. Summary judgment for Plaintiffs is granted on Counterclaim I.
Plaintiffs do not meet their burden on Counterclaims II and III; there is insufficient
evidence for the Court to conclude that KVAR's permission to rename the product encompassed
permission to use KVAR's certifications on those products. Plaintiffs' motion is denied on
Counterclaims II and III.
10. Plaintiffs' Motion is GRANTED as to KVAR 's Misappropriation of Confidential
Information Claim (Counterclaim IV).
The parties agreed to a nondisclosure agreement (NDA) before entering into the
Distributor Agreement that governed "KVAR Confidential Information." (D.I. 22 ~ 38; D.I. 200,
Exh. 11, 12). KV AR claims Plaintiffs disclosed and/or used KV AR Confidential Information in
competition with KVAR. (D.I. 22,

~~

115-20).

Plaintiffs seek summary judgment on the bases that KV AR has not shown damages or
identified what information was misappropriated. (D.I. 193 at 10). In order to withstand
summary judgment, KV AR must specifically identify the information appropriated. See Rimmax
Wheels LLC v. RC Components, Inc., 477 F.Supp.2d 670, 675 (D. Del. 2007). It is undisputed

that Joe Chieffo shared KV AR's "theories ... on marketing and sales" with Ed Kimmel, head of
a company called PowerwoRx that manufactures an energy savings device, at an "introductory
meeting." Chieffo also showed Kimmel KVAR's "patented piece of equipment called a sizer"
that was "the primary piece of equipment that they used to install KVAR product," and explained

15

how it was utilized to sell and install KV AR units. (D.I. 193-19, Ex. I, p. 395-99; D.I. 200, Ex.
10 at 70:15-72:6).
Plaintiffs argue that when Gregory Taylor (head of KV AR and signatory to the NDA) was
asked about this conversation between Chieffo and Kimmel, Taylor said he did not intend for the
NDA to cover that sort of information because Kimmel did not compete with KV AR. (D.I. 19319 and 193-20, pp. 398-402). In response, KV AR points to other testimony by Taylor that the
NDA was to protect the types of information spelled out in the NDA. (D.I. 200, Ex. 13, at 39093). Regardless of the NDA's scope, which very well may be a disputed issue, KVAR must
specifically identify the appropriated information. See Rimmax, 477 F.Supp.2d at 675. KVAR
has failed to sufficiently identify that information; marketing and sales "theories," and explaining
a patented piece of equipment, are not sufficiently specific, nor has KV AR asserted that they are
sufficiently proprietary. KVAR does not address Plaintiffs' argument that they have not shown
damages. (D.I. 200 at 8-10). Plaintiffs' Motion is granted.
11. Plaintiffs' Motion is DENIED as to KVAR 's Trade Libel Claim (Counterclaim V).
KVAR claims that Plaintiffs' circulation of their first Delaware complaint to potential
KV AR customers, and other statements to those potential customers, comprises common law
trade libel. Plaintiffs cite New Jersey law and argue generally that KV AR has "fail[ed] to
identify even one statement or claim that are false and willfully, maliciously made," and failed to
prove special damages. (D .I. 193 at 11-12, citing Mayflower Transit, LLC v. Prince, 314
F.Supp.2d 362 (D.N.J. 2004)). Plaintiffs have failed to show the absence of a genuine disputed

16

I
I

l

material fact relative to KVAR's asserted Delaware "trade libel" claim. 4 Plaintiffs' motion is
denied.
12. Plaintiffs' Motion and KVAR 's Motion are DENIED as to KVAR 's Breach of
Contract Claim (Counterclaim VI).
As a threshold matter, Plaintiffs' attempt to defend against and move for summary
judgment on KVAR's breach of contract counterclaim (D.I. 193 at 12-13, D.l. 199 at 3-4)
violates the Order prohibiting presentation of a defense to that counterclaim. (D .I. 184). The
Court found that key discoverable documents may have been destroyed by Plaintiffs, and that
Plaintiffs had previously ignored Court Orders compelling discovery responses and payment of
sanctions, concluding that Plaintiffs had "refused to cooperate in discovery and their conduct
evince[d] a contempt for this Court's Orders and rules, a sorry record that demand[ed] a
punishment which will deter them and others from such behavior in the future" and that had
prejudiced KVAR. (D.I. 184 at 31-33). The Court "str[uck] Count I of the Tri-State parties'
revised amended complaint, prohibit[ed] the Tri-State parties from presenting evidence in their
defense to Count VI ofKVAR's counterclaims, and order[ed] the Tri-State parties to pay
KVAR's fees and costs associated with responding to the Tri-State parties'" dispositive motions
and most recent round of discovery motions.
The Court therefore denies Plaintiffs' motion for summary judgment on KVAR's

4

Neither party has convinced the Court that Delaware recognizes a "trade libel" claim.
See footnote 3, supra.
Further, upon review ofKVAR's cited record, it appears the only statement Plaintiffs
agreed was inaccurate in the original complaint was about the dates when Tri-State agreed to
become a regional distributor for KV AR. (D.I. 200, Ex. 14, 729-730). These factual
inaccuracies alone do not appear to be defamatory. Nor does it appear that the fact that Tri-State
amended their factual pleadings as the case progressed makes those statements defamatory.
17

I

Counterclaim VI, and will not consider their arguments opposing KVAR's motion on that claim.
The Court has reviewed KVAR's motion for summary judgment on its breach of contract
counterclaim to see if KV AR has shown the absence of a genuinely disputed material fact
relative to the claims in question. See Celotex, 477 U.S. at 330.
The RDA provides it should be construed under Florida law. (D.I. 192 Ex.

A,~

24). In

Florida, "[t]he elements of a breach of contract action are: (1) a valid contract; (2) a material
breach; and (3) damages." Schiffman v. Schiffman, 47 So.3d 925, 926 (Fla. Dist. Ct. App. 2010).
KV AR alleged the RDA was a valid contract, and the notarized contract dated May, 2006
appears to be valid and enforceable. (D .I. 192 at 21; id. Ex. A; id. Ex. C).
As for the second element, KV AR argues on summary judgment that Tri-State breached
the contract in three ways: by failing to meet the contract's minimum quarterly sales
requirements, by violating the covenant not to compete, and by failing to get KVAR's approval
for advertising. (D.I. 192 at 21-25). "KVAR recognizes that the direct damages it can prove
resulting from these breaches [are] nominal. Indeed, the only calculable damages that ... can be
linked to these breaches are the lost profits that KVAR would have enjoyed but for Tri-State's
breach of its covenant not to compete." (D .I. 192 at 25). As damages, KVAR seeks profits on
competing units Tri-State sold before the termination of the RDA. (D.I. 221 at 99). KVAR does
not seek any damages because of the termination. !d.
KV AR indicates there is a dispute as to when the RDA was terminated, with the parties
arguing for September 7, 2007 (Plaintiffs) and November 15,2007 (Defendants). (D.I. 192 at
23). KVAR's measure of damages for the asserted breach of the non-compete comprises "at
least 30 sales of ... competing products as a result of actions [Tri-State] took while still under
18

contract with KV AR." (D.I. 192 at 25, citing Exs. Y, BB). The sales evidenced in the cited
record are all dated October 2007 or later (except for one sale which is not dated). (!d. Exs. Y,
BB). The dispute over the termination date therefore puts all of the sales comprising KVAR's
asserted damages in dispute; it is possible that all the sales comprising KVAR's asserted
damages occurred after termination. In other words, there is a dispute of material fact as to
whether Tri-State's alleged breach ofthe non-compete clause damaged KVAR, which is an
essential element ofKVAR's breach of contract claim. See Schiffman, 47 So.3d at 926. Further,
because KVAR agrees it has not suffered any damages from Tri-State's other asserted breaches
(failure to meet the RDA's minimums and failure to get approval for advertising), those actions
cannot underlie KVAR's breach of contract claim. KVAR's Motion is denied.
13. Plaintiffs' Motion is DENIED as to KVAR 's Claims ofIntentional Interference with
Contract, Prospective Economic Advantage and Advantageous Business Relationships
(Counterclaim VIII) and GRANTED as to Common Law Unfair Competition (Counterclaim IX);
KVAR 's Motion as to Counterclaim VIII is DENIED.
KVAR's eighth and ninth counterclaims rely on their allegations that Plaintiffs disrupted
a business relationship between KVAR and EcoQuest. (D.I. 22, ~~ 135-49). "To state a claim for
unfair competition, a plaintiff must allege a reasonable expectancy of entering a valid business
relationship, with which the defendant wrongfully interferes, and thereby defeats the plaintiffs
legitimate expectancy and causes him harm. Similarly, to state a claim for tortious interference
with a prospective business opportunity, a plaintiff must allege: 1) the reasonable probability of a
business opportunity; 2) the intentional interference by defendant with that opportunity; 3)
proximate causation; and 4) damages." Agilent Techs., Inc. v. Kirkland, 2009 WL 119865, *5
(Del. Ch. Jan. 20, 2009) (internal citations and quotation omitted).

19

t
f

I

I

It is undisputed that KV AR and EcoQuest had a valid business relationship that Tri-State
knew about, and that Tri-State distributed information about Tri-State's litigation with KVAR
and an alleged safety recall ofKVAR's products to kill EcoQuest's deal with KVAR. 5 (D.I. 221
at 71-72; D.l. 192 at 41-42). It is also undisputed that the relationship between KVAR and
EcoQuest fell apart after EcoQuest received the information Tri-State distributed.
Plaintiffs moved for summary judgment on Counterclaims VIII and IX, asserting in two
sentences without citing any evidence that KV AR, rather than EcoQuest, terminated the
relationship. (D.I. 193 at 13, 14). This argument falls far short of Plaintiffs' burden for
Counterclaim VIII.
Plaintiffs also assert that KV AR has not proven damages for Counterclaim IX, unfair
competition. In response, KV AR proffers an alternative standard that does not require damages
"due to the amorphous nature of the tort." (D.I. 200 at 15, citing State ex rei Brady v. Wellington
Homes, Inc., 2003 WL 22048231, *2 (Del. Super. 2003)). In fact, the tort clearly requires harm.
See Agilent, 2009 WL 119865 at *5. Plaintiffs have pointed out a lack of evidence of that harm,
and KV AR failed to show a genuine issue of material fact with regard to it in response to
Plaintiffs' motion. 6 Plaintiffs motion is granted as to Counterclaim IX.
KV AR moved for summary judgment on Counterclaim VIII, arguing that as to the only

5

Whether the complaint contains false statements may also be a material issue of fact see Section II, supra. It appears to be undisputed that the circulated information about the
potential safety recall was false. (D.I. 192 at 42-43; D.l. 193 at 13-14).
6

The Court notes that KV AR asserted lost sales of 20,000 units at $100 apiece in its own
motion for summary judgment on Counterclaim VIII, but did not raise this argument in response
to Plaintiffs motion that KV AR suffered no damages from Counterclaim IX. The Court is not
required to hunt through the record on KVAR's behalf. See Davis v. Correctional Med Serv 's,
760 F.Supp.2d 469, 472 n.4 (D. Del. 2011).
20

disputed element - proximate causation - Michael Jackson of EcoQuest "put a stop to its
negotiations" with KVAR because of the information Tri-State circulated. (D.I. 192 at 43-44).
Reviewing the correspondence between Jackson and Fish, and Jackson's testimony, in the light
most favorable to Plaintiffs, there appears to be a genuine issue of material fact as to whether
Jackson ofEcoQuest, or Fish ofKVAR, terminated the relationship; in other words, whether
Jackson terminated the relationship, or Jackson put the deal "on hold" and Fish terminated it.
(D.I. 221 at 62-66; D.I. 192, Ex. JJ at 103-107; id. Ex. LL). The Court particularly notes the
following testimony by Jackson:
Q.
A.
Q.
A.

And you called the deal off; correct?
No.
You put it on stop.
I put it on hold.

(D.I. 192, Ex. JJ at 103). Because there is a genuine issue of material fact with regard to
proximate causation, KVAR's Motion is denied. See Agilent, 2009 WL 119865 at *5.
14. Plaintiffs' Motion is DENIED as to KVAR 's Trade Secrets Claim (Counterclaim XI).
Plaintiffs state the elements of a trade secret claim but do not set forth any basis for
summary judgment or cite any record evidence. (D.I. 193 at 13-14). While it seems unlikely that
KV AR can prove that the information Chieffo shared with Kimmel was a trade secret, as it
argues (see Section 10, supra), Plaintiffs have not shown the absence of any material fact and
summary judgment is denied.
15. Plaintiffs' Motion is DENIED as to KVAR 's Abuse of Process Claim (Counterclaim
XII).

KVAR alleges that before a January 26, 2009 mediation teleconference with Judge Stark,
the parties were very close to settlement and KV AR recommended finishing the settlement

21

negotiations, whereas Plaintiffs insisted on going forward with the mediation, with a KV AR
principal to appear in person. (D.I. 22, ~~ 65-79, 174-81). Gillen had sworn out a citizen's
warrant for Fish's arrest based on alleged telephonic threats Fish made against Gillen. !d. At the
lunch break of the mediation conference, courthouse marshals arrested Fish. !d. KV AR asserts
that these actions comprise an abuse of process, motivated to give Gillen an advantage in this
litigation.
On summary judgment, Plaintiffs argue that "KVAR has not averred a [coercive] act."
(D.I. 193 at 15). Plaintiffs also point out this Court's March 29,2010, opinion denying Fish's
motion for fees stemming from the mediation and stating that Fish's "theory- even if we take
[his] version of the facts as true- is preposterous." (D.I. 79 at 3). In opposition, KVAR cites
testimony by Edward Kimmel in which KV AR asserts "Gillen himself admitted to Kimmel that
his 'sole purpose' in insisting that Fish attend the parties' April2, 2009 mediation was to 'throw
[Fish] in jail."' (D.I. 200 at 19; see D.l. 221 at 102-03). KVAR failed to attach the cited pages to
their exhibit. (See D.l. 200, Ex. 10). But, taking KVAR's citation as true in light of Plaintiffs'
Motion, KV AR has raised a genuine issue of material fact as to whether Gillen had an ulterior
improper purpose and committed a willful act (the mediation) improperly used in the regular
conduct of proceedings. See STMicroelectronics NV v. Agere Sys., Inc., 2009 WL 1444405, *4
(Del. Super. May 19, 2009). Plaintiffs' Motion is denied.
An appropriate order will be entered.

22