Yager v. Vignieri

Filing 97

OPINION AND ORDER.....Yagers September 8, 2017 motion for summary judgment and Vignieris September 9, 2017 motion for summary judgment are denied. (Signed by Judge Denise L. Cote on 10/12/2017) (gr)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------X
:
JEFFREY S. YAGER, M.D. d/b/a YAGER
:
ESTHETICS/ESTETICA,
:
Plaintiff,
:
:
-v:
:
ITALIA VIGNIERI and TS COSMETIC SURGERY :
& SKIN CLINIC SPA,
:
Defendants.
:
:
--------------------------------------- X

16cv9367(DLC)
OPINION AND ORDER

APPEARANCES:
For the Plaintiff:
Richard M. Mahon, II
Lia E. Fierro
Catania, Mahon, Milligram & Rider, PLLC
One Corwin Court
Newburgh, New York 12550
For Defendant Italia Vignieri:
Nicole J. Coward
Comrie & Coward LLP
148 South Long Beach Avenue
Freeport, New York 11520
DENISE COTE, District Judge:
Jeffrey S. Yager, M.D. d/b/a Yager Esthetics/Estetica
(“Yager”) brought this action against Italia Vignieri
(“Vignieri”), asserting that Vignieri appropriated his trade
secrets and is using them for the benefit of her competing
business.

Each party has now moved for summary judgment.

Vignieri asserts that this Court lacks subject matter

jurisdiction over the case.1

Yager argues that partial summary

judgment is appropriate on his claim under the Defend Trade
Secrets Act (“DTSA”), 18 U.S.C. § 1836(b).

For the following

reasons, both motions are denied.
BACKGROUND
The following facts are undisputed, except where noted.
Yager operates a plastic surgery practice in New York City,
which serves patients from at least New York and New Jersey.
Vignieri began working for Yager in 2011, principally to help
market Dr. Yager’s practice.

Vignieri sometimes would work at

Yager’s office, but primarily worked from home.

During the

course of her association with Yager, Vignieri e-mailed many
work documents from her Yager work e-mail account,
[e-mail], to personal e-mail accounts under her
control.

Vignieri claims that she did this to enable her to

work from home, as Yager’s systems were not set up to provide
her with remote access.

According to Yager, some of the

documents Vignieri was e-mailing contained his trade secrets,
such as his patient list, which Vignieri was not authorized to
e-mail.

In 2015 or early 2016, while still affiliated with

A September 13, 2017 Order denied Vignieri a nunc pro tunc
extension of the deadline to file her motion for summary
judgment, except for the portion of her motion addressing
subject matter jurisdiction. Her motion is being considered
only to that extent.
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Yager, Vignieri became involved with a business called “TS Skin
Clinic Spa.”

According to Yager, Vignieri used and is using his

trade secrets for the benefit of her new venture.
Importantly for Yager’s motion, however, of the e-mails he
claims contained his trade secrets, only two of them were sent
after May 11, 2016, the effective date of the DTSA.

On May 31,

2016, Vignieri e-mailed a file called “Patient Email Export
9.10.14.csv” from her work e-mail account, [e-mail],
to that same account, [e-mail].

She did this again on

July 19, 2016.
Yager filed the instant action on December 5, 2016,
asserting a claim under the DTSA as well as related state law
claims.

On April 6, 2017, Yager amended his complaint to add TS

Cosmetic Surgery & Skin Clinic Spa (“TS Cosmetic”) as a
defendant.

Yager claims that Vignieri was instrumental in the

creation and operation of TS Cosmetic, and that TS Cosmetic is
using his trade secrets.

TS Cosmetic has not answered, the

Clerk has entered a certificate of default, and a default
hearing is scheduled for October 27, 2017.
Yager filed his motion for summary judgment on September 8,
2017.

It became fully submitted on September 29, 2017.

Vignieri’s motion became fully submitted that same day.

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DISCUSSION
I.

Subject Matter Jurisdiction

Vignieri asserts that this Court does not have subject
matter jurisdiction over Yager’s suit for lack of a federal
question.
For the purpose of determining whether a district
court has federal question jurisdiction pursuant to
Article III and 28 U.S.C. § 1331, the jurisdictional
inquiry depends entirely upon the allegations in the
complaint and asks whether the claim as stated in the
complaint arises under the Constitution or laws of the
United States.
Southern New England Telephone Co. v. Global NAPs Inc., 624 F.3d
123, 132 (2d Cir. 2010) (citation omitted).

Provided that it

does, the court has jurisdiction unless “the purported federal
claim is clearly immaterial and made solely for the purpose of
obtaining jurisdiction or is wholly insubstantial and
frivolous.”

Id. (citation omitted.)

Subject matter jurisdiction exists here.

The DTSA provides

a federal cause of action for “an owner of a trade secret that
is misappropriated . . . if the trade secret is related to a
product or service used in, or intended for use in, interstate
or foreign commerce.”

18 U.S.C. § 1836(b)(1).

The amended

complaint invokes this cause of action, and thus arises under
the laws of the United States.

Nor is it frivolous.

Yager’s

position that the DTSA covers trade secrets related to his
plastic surgery practice, which he contends serves clients in
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interstate commerce, is at least colorable.
Vignieri contends that Yager’s trade secrets do not “relate
to a product or service used in, or intended for use in,
interstate or foreign commerce,” thus depriving this Court of
subject matter jurisdiction.

18 U.S.C. § 1836(b)(1).

For the

reasons stated above, that argument does not implicate subject
matter jurisdiction.

It is also unpersuasive on its merits,

because Yager’s plastic surgery practice provides “service[s]
used . . . in interstate commerce.”

At least some of Dr.

Yager’s patients travel from New Jersey into New York to use his
services, and therefore those services are used in interstate
commerce.

Cf. Patsy’s Italian Restaurant, Inc. v. Banas, 658

F.3d 254, 268 (2d Cir. 2011) (provision of restaurant services
to interstate customers sufficient to show that services were
“rendered in [interstate] commerce” for purposes of the Lanham
Act).

This interpretation of the DTSA is particularly

appropriate because, as the Second Circuit has recognized,
Congress specifically crafted the commerce language in the DTSA
to “reach broadly in protecting against the theft of trade
secrets.”

United States v. Agrawal, 726 F.3d 235, 244 n.7 (2d

Cir. 2013).

II.

Therefore, Vignieri’s motion to dismiss is denied.

Yager’s DTSA Claim

Yager asserts that he is entitled to summary judgment on
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liability for his claim under the DTSA.

Summary judgment is

appropriate 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 of law.”

Fed. R. Civ. P. 56(a).

Yager

bears the burden of demonstrating the absence of a material
factual question, and, in making this determination, all the
facts are viewed in the light most favorable to Vignieri and all
reasonable inferences are drawn in Vignieri’s favor.

See

Eastman Kodak Co. v. Image Technical Servs., 504 U.S. 451 456
(1992); Holcomb v. Iona Coll., 521 F.3d 130, 132 (2d Cir. 2008).
The DTSA provides a remedy for the owner of a trade secret
that is “misappropriated.”

“Misappropriation” is defined to

mean either “acquisition of a trade secret by a person who knows
or has reason to know that the trade secret was acquired by
improper means,” or “disclosure or use of a trade secret of
another without express or implied consent,” in specified
circumstances.

18 U.S.C. § 1839(5).

“Improper means” is

defined to include “theft, bribery, misrepresentation, breach or
inducement of a breach of duty to maintain secrecy, or espionage
through electronic or other means,” and to exclude “reverse
engineering, independent derivation, or any other lawful means
of acquisition.”

18 U.S.C. § 1839(6).

The statute only applies

to conduct occurring on or after its effective date, May 11,
2016.

See Pub. L. 114-153, set out in the notes following 18
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U.S.C. § 1836 (DTSA “applicable with respect to any
misappropriation of a trade secret . . . for which any act
occurs on or after May 11, 2016.”).
There is a question of fact regarding whether any of
Yager’s putative trade secrets were improperly acquired or
disclosed on or after May 11, 2016.

This precludes summary

Yager’s motion focuses on whether Vignieri “acquired”

judgment.

a trade secret, as that term is defined under 18 U.S.C. §
1839(5)(A), and not whether any acquisition occurred after the
statute’s effective date.

There are only two alleged

“acquisitions” occurring on or after May 11, 2016.
Yager has not adequately shown how Vignieri’s conduct on
those two particular occasions amounted to acquisition via
“improper means.”

On neither occasion were the files at issue

sent to Vignieri’s personal e-mail accounts; they apparently
remained on Yager’s computer systems.

Yager’s briefing fails to

meaningfully address this particular activity.

As a result,

there are fact questions remaining, including the reasons why
Vignieri sent these two e-mails and whether, given her
explanation, these e-mails amounted to a breach of a duty of
secrecy.
record.

Those questions cannot be resolved on the present
Therefore, Yager’s motion is also denied.

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CONCLUSION
Yager’s September 8, 2017 motion for summary judgment and
Vignieri’s September 9, 2017 motion for summary judgment are
denied.
Dated:

New York, New York
October 12, 2017

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