MARCI'S FUN FOOD, LLC v. SHEARER'S FOODS, INC. et al
Filing
90
ORDER denying 84 Defendant's Motion to Strike; granting 73 Defendant's Motion for Summary Judgment. Signed by Judge Cathy Bissoon on 11/7/2011. (rtt)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
MARCI‟S FUN FOOD, LLC,
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Plaintiff,
v.
SHEARER‟S FOODS, INC.,
Defendant.
Civil Action No. 10-188
Judge Cathy Bissoon
MEMORANDUM AND ORDER
I.
MEMORANDUM
Pending before the Court are Defendant Shearer‟s Foods, Inc.‟s Motion for Summary
Judgment (Doc. 73) and Defendant Shearer‟s Foods, Inc.‟s Motion to Strike the Affidavit of Ron
Razete (Doc. 85). For the reasons stated herein, the Court will deny Defendant‟s motion to strike
and grant Defendant‟s motion for summary judgment.
BACKGROUND
A. Factual Background
Ron and Marci Razete formed Plaintiff Marci‟s Fun Food LLC in 2001, and began
making kettle corn. Def.‟s Concise Statement of Material Facts (“Def.‟s Facts”) ¶ 1 (Doc. 74);
Pl.‟s Responsive and Supplemental Concise Statement of Facts (“Pl.‟s Facts”) ¶ 1 (Doc. 80); see
also Ron Razete Dep. 18:22-19:24 (Doc. 76-1 at 6). Plaintiff sold kettle corn under the
trademark “Marci‟s Old Fashioned Kettle Korn” in New York, Ohio, Indiana, Pennsylvania and
West Virginia. See Ron Razete Dep. 82:8-15 (Doc. 76-1 at 22).
In 2006, Defendant Shearer‟s Foods, Inc. purchased Poppee‟s Popcorn, which gave
Defendant the ability to manufacture popcorn products. See Kohman Dep. 5:6-25, 7:4-17 (Doc.
1
76-3 at 3). In the fall of 2006, Todd Brahler of Defendant contacted Mr. Razete and offered to
produce kettle corn for Plaintiff. Ron Razete Dep. 112:16-113:14 (Doc. 76-1 at 29-30).
On April 17, 2007, Plaintiff and Defendant entered into a Production Agreement, in
which Defendant agreed to produce kettle corn for Plaintiff. Production Agreement (Doc. 1-2).1
In the Production Agreement, Plaintiff granted Defendant “a royalty-free license to the
trademarks and to all patents, processes, formulas, technology and know-how (the „Processes‟)
necessary to enable, and for the sole purpose of enabling, [Defendant] to meet its obligations
under this Agreement, such license to be co-extensive with the Term.” Production Agreement
¶ 7.a (Doc. 1-2 at 3).
In October 2007, Defendant sold its popcorn business, which became Poppee‟s Popcorn,
Inc. (“Poppee‟s”). Kohman Dep. 9:21-23 (Doc. 76-3 at 4). Plaintiff continued to purchase
kettle corn from Poppee‟s until April 2009. See Pl.‟s Facts ¶ 70 (Doc. 80); Def.‟s Facts ¶ 70
(Doc. 74).
Defendant formally terminated the Production Agreement in February 2008 due to
Plaintiff‟s failure to satisfy minimum requirements under the Production Agreement. Kohman
Dep. 30:11 – 31:5 (Doc. 76-3 at 7).
B. Procedural Background
Plaintiff brought this action against Defendant Shearer‟s Foods, Inc. (“Shearer‟s” or
“Defendant”) and Poppee‟s, asserting various causes of action related to the failed business
relationships between Plaintiff and Shearer‟s and between Plaintiff and Poppee‟s. See Compl.
(Doc. 1). On motions to dismiss, this Court dismissed certain counts of Plaintiff‟s complaint,
1
The copy of the Production Agreement attached to Plaintiff‟s complaint is unsigned, but
neither party disputes that the parties agreed to the terms of the Production Agreement.
2
Memorandum & Order, Oct. 8, 2010 (Doc. 45), and Plaintiff filed an amended complaint (Doc.
49).
Plaintiff‟s remaining claims are: (1) Misappropriation (Count I); (2) Intentional
Misrepresentation, Fraud, Deceit (Count IV); (3) Tortious Interference With a Business
Relationship (Count VI); (4) “Passing Off” Under the Lanham Act (Count VII); (5) False
Advertising Under the Lanham Act (Count VIII); (6) Violation and/or Usurpation of Common
Law Trademark Under the Lanham Act (Count IX); (7) Dilution by Blurring and/or Dilution by
Tarnishment Under the Lanham Act (Count X); (8) Unfair Competition/Unjust Enrichment
(Count XI); and (9) Violation of Pennsylvania Trade Secrets Act (Count XII). See Am. Compl.
(Doc. 49).
Defendant Shearer‟s filed a motion for summary judgment (Doc. 73) on all remaining
claims against it. Plaintiff and Poppee‟s reached a settlement, and all claims against Poppee‟s
were dismissed with prejudice. Order, July 6, 2011 (Doc. 78). After Plaintiff filed its response
(Doc. 79) to the motion for summary judgment, Defendant filed a motion to strike (Doc. 84) the
Affidavit of Ron Razete that was included in Plaintiff‟s summary judgment appendix.
ANALYSIS
To determine what evidence to consider on summary judgment, the Court will first
resolve Defendant‟s motion to strike. Defendant asserts that the Affidavit of Ron Razete (Doc.
82-22) contradicts Mr. Razete‟s deposition testimony, because the facts identified in
Mr. Razete‟s affidavit were not identified by Mr. Razete during his deposition when he was
asked to identify the factual basis for various claims asserted by Plaintiff. Def.‟s Br. in Support
of Mot. to Strike (Doc. 85). But Mr. Razete‟s testimony regarding his belief as to which facts
support Plaintiff‟s legal claims does not limit which facts Plaintiff‟s attorney may rely upon in
making legal arguments, and the facts identified in Mr. Razete‟s affidavit do not contradict any
3
of the facts identified by Mr. Razete during his deposition. The Court, therefore, will deny
Defendant‟s motion to strike and will consider Mr. Razete‟s affidavit as part of the summary
judgment record.
Federal Rule of Civil Procedure 56 provides that summary judgment shall be granted “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). The moving party bears the
initial responsibility of identifying portions of the summary judgment record which it believes
demonstrate the absence of a genuine dispute of material fact. Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986). The moving party may discharge this burden by showing that there is an
absence of evidence to support the nonmoving party‟s case. Id. at 325. To survive summary
judgment, the nonmoving party “must do more than simply show that there is some metaphysical
doubt as to the material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S.
574, 586 (1986). The nonmoving party must show that there is a genuine dispute as to a material
fact. See id. at 587; Fed. R. Civ. P. 56(c).
A. Misappropriation (Counts I and XII)
Plaintiff asserts the same cause of action for misappropriation of trade secrets under
Pennsylvania law in Counts I and XII of the Amended Complaint.2 For purposes of Defendant‟s
2
This Court previously declined to decide whether Counts I and XII of Plaintiff‟s original
complaint asserted distinct causes of action for misappropriation of trade secrets.
Memorandum & Order, Oct. 8, 2010, at 18 n.12 (Doc. 45). Plaintiff‟s brief makes apparent
that both Counts I and XII are claims for misappropriation of trade secrets under
Pennsylvania law. See Pl.‟s Br. 8-11, 13-16. To the extent Plaintiff asserted a claim for
“misappropriation” of equipment in Count I, Plaintiff concedes that Defendant purchased the
equipment from Plaintiff. See Pl.‟s Facts ¶ 32 (Doc. 80); Def.‟s Facts ¶ 32 (Doc. 74).
Further, Plaintiff did not respond to Defendant‟s assertion that there is no legal or factual
basis to support Plaintiff‟s claim for “misappropriation” of equipment. See Pl.‟s Br. 8-11
(Doc. 81). Thus, summary judgment will be granted in favor of Defendant on Plaintiff‟s
claim for “misappropriation” of equipment.
4
summary judgment motion, Defendant does not dispute that Plaintiff‟s recipe, production
process, and sales strategies constitute trade secrets. Def.‟s Br. 6 n.6 (Doc. 75). Defendant
contends that Plaintiff cannot establish that Defendant misappropriated any of those trade
secrets. Id. at 6-9.
Under the Pennsylvania Uniform Trade Secrets Act (“PUTSA”), 12 Pa. C.S. § 5301, et
seq., “misappropriation” includes: “disclosure or use of a trade secret of another without express
or implied consent by a person who . . . at the time of disclosure or use, knew or had reason to
know that his knowledge of the trade secret was . . . acquired under circumstances giving rise to
a duty to maintain its secrecy or limit its use.” 12 Pa. C.S. § 5302.3 Plaintiff‟s theory of
misappropriation appears to be that Defendant was obligated to keep Plaintiff‟s trade secrets
confidential, and that Defendant‟s sale of its popcorn business constituted a disclosure of those
trade secrets without Plaintiff‟s consent. See Pl.‟s Br. 13-16.
Plaintiff, however, identifies no evidence that Defendant made a disclosure “without
express or implied consent.” 12 Pa. C.S. § 5302. Plaintiff identifies no evidence that Plaintiff
objected to Defendant‟s sale of its popcorn business. See Pl.‟s Br. 13-16. Indeed, after
Defendant sold its popcorn business in October 2007, Plaintiff continued to purchase kettle corn
from Poppee‟s until April 2009. See Pl.‟s Facts ¶ 70 (Doc. 80); Def.‟s Facts ¶ 70 (Doc. 74).
Thus, there is no genuine dispute that Plaintiff provided at least implied consent for the
disclosure of its trade secrets by Defendant to Poppee‟s.
3
Plaintiff appears to suggest that it may assert a common law claim for misappropriation of
trade secrets, but PUTSA displaced Pennsylvania‟s common law tort for misappropriation of
trade secrets. 12 Pa. C.S. § 5308; Bimbo Bakeries USA, Inc. v. Botticella, 613 F.3d 102, 109
n.7 (3d Cir. 2010).
5
Because there is no genuine dispute that Defendant did not “misappropriate” Plaintiff‟s
trade secrets, summary judgment will be granted in favor of Defendant on Counts I and XII of
the amended complaint.
B. Intentional Misrepresentation, Fraud, Deceit (Count IV)
Plaintiff‟s fraud theory is not entirely clear, but appears to be based on allegations that
Defendant somehow deceived Plaintiff into entering into the Production Agreement when
Defendant‟s intent was to sabotage Plaintiff‟s product to eliminate Plaintiff from the market. See
Am. Compl. ¶¶ 39-42 (Doc. 49); Pl.‟s Br. 11-12 (Doc. 81). The elements of a common law fraud
claim are: (1) a representation, (2) which is material to the transaction at hand; (3) made falsely,
with knowledge of its falsity or recklessness as to whether it is true or false; (4) with the intent of
misleading another into relying on it; (5) justifiable reliance on the misrepresentation; and (6) the
resulting injury was proximately caused by the reliance. Ira G. Steffy & Son, Inc. v. Citizens
Bank of Pa., 7 A.3d 278, 290 (Pa. Super. Ct. 2010) (citing Heritage Surveyors & Eng‟rs, Inc. v.
Nat‟l Penn Bank, 801 A.2d 1248, 1250-51 (Pa. Super. Ct. 2002)). Defendant asserts that
Plaintiff has not identified any false representations, and that there is no evidence that Defendant
acted with fraudulent intent. Def.‟s Br. 4-6 (Doc. 75).
As alleged misrepresentations, Plaintiff identifies three pieces of information that
Defendant did not disclose to Plaintiff while negotiating the Production Agreement: (1) the
$400,000 to $500,000 estimate for reconfiguration of the layout at Defendant‟s manufacturing
facility; (2) mechanical problems endemic to Defendant‟s manufacturing facility; and (3) the fact
that Defendant would have “to clean out Poppee‟s management team” to make Defendant‟s
manufacturing facility profitable. Pl.‟s Br. 11-12 (Doc. 81). Plaintiff has provided evidence that
Defendant did not disclose any of this information to Plaintiff. See Ron Razete Aff. ¶¶ 2, 3, 5
(Doc. 82-22). Plaintiff, however, has not provided any evidence that Defendant made any false
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representations contrary to this information. See Pl.‟s Br. 11-12 (Doc. 81); Ron Razete Aff.
(Doc. 82-22).
Plaintiff also has not provided any explanation for why Defendant would have been
obligated to disclose any of this information to Plaintiff, or why this information would have
been material to Plaintiff‟s decision to enter into the Production Agreement. With respect to the
alleged $400,000 to $500,000 estimate to reconfigure Defendant‟s manufacturing facility and
Defendant‟s opinion that new management might be necessary to make its manufacturing facility
profitable, it is unclear why Defendant would have been obligated to disclose its internal
operating matters to Plaintiff, or how such matters would be material to Plaintiff‟s decision to
enter into the Production Agreement. With respect to the alleged mechanical problems at
Defendant‟s facility, Ron Razete visited Defendant‟s facility prior to entering into the Production
Agreement, concluded that Defendant‟s equipment would not make Plaintiff‟s product, then
agreed to sell Plaintiff‟s manufacturing equipment to Defendant. See Ron Razete Dep. 112:16119:24 (Doc. 76-1 at 29-31). Any alleged mechanical problems at Defendant‟s facility,
therefore, could not have been material to Plaintiff‟s decision to enter into the Production
Agreement.
Even if Defendant‟s failure to disclose this information amounted to material
misrepresentations, Plaintiff has not identified any evidence indicating that Defendant had intent
to mislead Plaintiff. Plaintiff‟s argument regarding fraudulent intent is unclear, but Plaintiff
appears to rely on several e-mails. See Pl.‟s Br. 11-12 (Doc. 81). The first is an e-mail from
Todd Brahler of Defendant to Tom Donelan of Defendant, sent on November 17, 2006, while the
Production Agreement was being negotiated. In that e-mail, Mr. Brahler stated:
With regard to Marci‟s, we need to be careful what we tell him.
He knows that we do not make kettle corn and that we do not know
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how to make it. When he originally called, we told him that we
did not have the equipment to make the product. He quickly
responded with ""yes you do, because we have the same
equipment"". Long story short, I do not have a problem with
eliminating the contract, but we need to be careful what we tell
him.
E-mail from T. Brahler to T. Donelan (Nov. 17, 2006) (Doc. 82-25). This e-mail is not evidence
of fraudulent intent. Plaintiff focuses on the statement, “I do not have a problem with
eliminating the contract.” See Pl.‟s Br. 11 (Doc. 81). The meaning of this statement is unclear,
but even drawing all reasonable inferences in Plaintiff‟s favor, the statement does not suggest
that Defendant intended to deceive Plaintiff into entering into the Production Agreement with the
intent to sabotage Plaintiff‟s product and eliminate Plaintiff from the market.
Plaintiff next cites to a string of e-mails with the subject line “Kettle Korn for Frito” from
June 2007, two months after Plaintiff and Defendant entered into the Production Agreement.
This string of e-mails among various employees of Defendant references potentially shipping
kettle corn samples to “Frito.” See E-mails (June 1, 2007 to June 4, 2007) (Doc. 82-13).
According to Plaintiff, this e-mail string “illustrates motivation to remove the Plaintiff‟s product
from the market.” Pl.‟s Br. 12 (Doc. 81). But nothing in the e-mail string suggests that
Defendant wanted to eliminate Plaintiff from the market. See E-mails (Doc. 82-13). Further, the
e-mail string does not indicate anything about Defendant‟s intent when Defendant negotiated the
Production Agreement with Plaintiff.
Plaintiff also notes that it was never informed of any interest Frito had in Plaintiff‟s
product. Pl.‟s Br. 12 (Doc. 81); Ron Razete Aff. ¶ 4 (Doc. 82-22). But this does not support
Plaintiff‟s fraud theory. From the limited evidence in the record, the nature of Frito‟s interest in
getting kettle corn samples is entirely unclear. Even assuming Frito was interested in Plaintiff‟s
product, nothing in the record suggests that Defendant was obligated to inform Plaintiff of any
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inquiries about Plaintiff‟s product. Even if Defendant‟s failure to inform Plaintiff of Frito‟s
alleged interest amounted to a false representation, this occurred after the parties entered into the
Production Agreement. Defendant, therefore, could not have made this purported
misrepresentation with the intent to mislead Plaintiff into entering the Production Agreement.
Because there is no evidence that Defendant made any false representations to Plaintiff,
and because there is no evidence that Defendant had any fraudulent intent in negotiating the
Production Agreement, summary judgment will be granted in favor of Defendant on Count IV of
the amended complaint.4
C. Tortious Interference With a Business Relationship (Count VI)
Plaintiff‟s tortious interference theory, like most of Plaintiff‟s legal theories, is not
entirely clear. Plaintiff‟s theory appears to be that Defendant fraudulently induced Plaintiff to
enter into the Production Agreement in order to gain access to Plaintiff‟s customers, then secretly
sold kettle corn directly to Plaintiff‟s customers, thereby destroying Plaintiff‟s relationship with
its customers. See Am. Compl. ¶¶ 43-46 (Doc. 49); Pl.‟s Br. 12-13 (Doc. 81). According to
Plaintiff, after Defendant discontinued distribution of Plaintiff‟s product, Plaintiff lost Martin‟s
Potato Chip Company, Troyer Cheese, and Strawberry Fields as customers. Pl.‟s Br. 13 (Doc.
81); Ron Razete Aff. ¶ 7 (Doc. 82-22).
Under Pennsylvania law, the elements of a cause of action for intentional interference
with a contractual relation are: (1) a contractual or prospective contractual relation between the
4
The Court applies Pennsylvania law because the parties apparently agree that Pennsylvania
law applies to Plaintiff‟s fraud claim. See Def.‟s Br. 4 (Doc. 75); Pl.‟s Br. 11 (Doc. 81). For
the same reasons Plaintiff‟s claim fails under Pennsylvania law, Plaintiff‟s fraud claim likely
would fail under Ohio law. Like a fraud claim under Pennsylvania law, a fraud claim under
Ohio law requires a false representation and intent to mislead. See Burr v. Bd. of Cnty.
Comm‟rs of Stark Cnty., 491 N.E.2d 1101, 1105 (Ohio 1986). As already explained,
Plaintiff has not identified any evidence that Defendant made any false representations or
that Defendant had any intent to mislead.
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complainant and a third party; (2) purposeful action on the part of the defendant, specifically
intended to harm the existing relation, or to prevent a prospective relation from occurring;
(3) absence of privilege or justification on the part of the defendant; and (4) legal damage as a
result of the defendant‟s conduct. Strickland v. Univ. of Scranton, 700 A.2d 979, 985 (Pa. Super.
Ct. 1997) (citing Pelagatti v. Cohen, 536 A.2d 1337, 1343 (Pa. Super. Ct. 1987); Small v. Juniata
Coll., 682 A.2d 350, 354 (Pa. Super. Ct. 1996)). Defendant asserts that there is no evidence of
any actions by Defendant that interfered with any of Plaintiff‟s existing or prospective business
relationships. Def.‟s Br. 18-21 (Doc. 75).
After Defendant stopped distributing Plaintiff‟s product, Plaintiff lost Martin‟s Potato
Chip Company, Troyer Cheese, and Strawberry Fields as customers. Ron Razete Aff. ¶ 7 (Doc.
82-22). Plaintiff, however, has not identified any existing or prospective contractual
relationships with those customers. Even assuming that Plaintiff‟s loss of “customers” means
that Plaintiff lost existing or potential contractual relationships with those customers, Plaintiff
has not identified any evidence to suggest that its loss of those customers resulted from
Defendant‟s purposeful action, specifically intended to harm Plaintiff‟s relationships with those
customers. See Pl.‟s Br. 12-13 (Doc. 81).
Because there is “a complete failure of proof concerning [] essential element[s] of”
Plaintiff‟s tortious interference claim, there is no genuine dispute as to any material fact.
Celotex, 477 U.S. at 323. Defendant is entitled to summary judgment on Count VI of Plaintiff‟s
amended complaint.5
5
The Court applies Pennsylvania law because the parties apparently agree the Pennsylvania
law applies to Plaintiff‟s tortious interference claim. See Def.‟s Br. 18-19; Pl.‟s Br. 12-13.
Plaintiff‟s claim would likely fail under Ohio law as well. Ohio law on tortious interference
appears to provide a broader definition of the tort compared to Pennsylvania law, in that Ohio
law is not limited to interference with contractual relationships. See Chandler & Assocs.,
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D. Lanham Act Claims (Counts VII, VIII, IX, and X)
1. Passing Off (Count VII) and False Advertising (Count VIII)
Lanham Act claims for passing off and false advertising are based on 15 U.S.C.
§ 1125(a). See Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)
(analyzing 15 U.S.C. § 1125(a) in reverse passing off case); Pernod Ricard USA, LLC v. Bacardi
U.S.A., Inc., 653 F.3d 241 (3d Cir. 2011) (analyzing 15 U.S.C. § 1125(a) in false advertising
case).
“Passing off (or palming off, as it is sometimes called) occurs when a producer
misrepresents his own goods or services as someone else‟s. „Reverse passing off,‟ as its name
implies, is the opposite: The producer misrepresents someone else‟s goods or services as his
own.” Dastar, 539 U.S. at 28 n.1 (citations omitted).
To establish a false advertising claim, a plaintiff must prove: (1) that the defendant has
made false or misleading statements as to a product; (2) that there is actual deception or a
tendency to deceive a substantial portion of the intended audience; (3) that the deception is
material in that it is likely to influence purchasing decisions; (4) that the advertised goods
traveled in interstate commerce; and (5) that there is a likelihood of injury to the plaintiff in
terms of declining sales or loss of good will. Pernod Ricard, 653 F.3d at 248 (citing WarnerLambert Co. v. Breathasure, Inc., 204 F.3d 87, 91-92 (3d Cir. 2000)).
Inc. v. America‟s Healthcare Alliance, Inc., 709 N.E.2d 190, 197-98 (Ohio Ct. App. 1997)
(recognizing tort for tortious interference with a “business” relationship, and noting
distinction between tortious interference with a contractual relationship and tortious
interference with a business relationship). Nonetheless, a tortious interference claim under
Ohio law, similar to a claim under Pennsylvania law, requires the defendant to purposely
cause a third party to discontinue a business relationship with the plaintiff. See id. at 197.
As already explained, Plaintiff has identified no evidence that Defendant did anything to
purposely cause Plaintiff‟s customers to end their relationships with Plaintiff.
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Plaintiff‟s passing off and false advertising theories are unclear, but both appear to be
based on the allegation that Defendant and/or Poppee‟s repackaged Plaintiff‟s product and sold it
as a Poppee‟s product. See Am. Compl. ¶¶ 47-49, 50-52 (Doc. 49); Pl.‟s Br. 16-19 (Doc. 81).
Plaintiff‟s theories based on this allegation appear to be that Defendant committed “reverse
passing off” by misrepresenting Plaintiff‟s product as a Poppee‟s product, and/or that Defendant
made a “false advertisement” by using a Poppee‟s brand name (“Jenny‟s”) on Plaintiff‟s product.
With respect to the reverse passing off claim, Defendant asserts that Plaintiff has
provided no evidence that Defendant produced or sold kettle corn under any brand name other
than Plaintiff‟s. Def.‟s Br. 13 (Doc. 75). With respect to the false advertising claim, Defendant
asserts that Plaintiff has provided no evidence to establish either of the first two elements of a
false advertising claim (i.e., false or misleading statements and actual deception or tendency to
deceive). Def.‟s Br. 15-16 (Doc. 75).
The only potentially relevant evidence cited by Plaintiff in response to Defendant‟s
assertions as to both the reverse passing off and false advertising claims is Mr. Razete‟s
testimony that: “And then I believe Shearer‟s may have actually distributed kettle corn that was
not my product after the sale to Poppee‟s that was under Jenny‟s brand. I don‟t know. But it
would have been the same product in a different package.”6 Ron Razete Dep. 190:21-191:1
(Doc. 76-1 at 49); see Pl.‟s Br. 16-18 (Doc. 81). The meaning of Mr. Razete‟s testimony is
unclear, but even assuming Mr. Razete meant that he believed Defendant was distributing
6
Plaintiff also cites evidence that Plaintiff lost customers after Defendant stopped distributing
Plaintiff‟s product, that Poppee‟s continues to supply products to Defendant, and that
Poppee‟s markets kettle corn to Plaintiff‟s former customers. See Pl.‟s Br. 16-19. It is
unclear how any of this evidence supports Plaintiff‟s reverse passing off or false advertising
claims.
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Plaintiff‟s product under Poppee‟s “Jenny‟s” brand name, Mr. Razete‟s unsupported speculation
is not evidence that Defendant sold Plaintiff‟s product under a Poppee‟s brand name.
Plaintiff, therefore, has not presented any evidence that Defendant misrepresented
Plaintiff‟s goods as Defendant‟s own (i.e., that Defendant committed reverse passing off), or that
Defendant made a false or misleading statement (i.e., that Defendant made a false
advertisement). Further, Plaintiff has not identified any evidence of actual deception or tendency
to deceive, which is required to establish a false advertising claim.
Because there is “a complete failure of proof concerning [] essential element[s] of”
Plaintiff‟s reverse passing off and false advertising claims, there is no genuine dispute as to any
material fact. Celotex, 477 U.S. at 323. Defendant is entitled to summary judgment on Counts
VII and VIII of Plaintiff‟s amended complaint.
2. Violation and/or Usurpation of Common Law Trademark (Count IX)
The parties appear to agree that Plaintiff‟s claim for “Violation and/or Usurpation of
Common Law Trademark Under Lanham Act U.C.S.A. [sic] 15 § 1125 et. seq [sic],” Am.
Compl. 18 (Doc. 49), is a claim for trademark infringement. See Def.‟s Br. 13-14 (Doc. 75);
Pl.‟s Br. 19 (Doc. 81). To prove trademark infringement, a plaintiff must show that: (1) the
mark is valid and legally protectable; (2) it owns the mark; and (3) the defendant‟s use of the
mark is likely to create confusion concerning the origin of the goods or services. E.T. Browne
Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 191 (3d Cir. 2008) (citing Freedom Card, Inc.
v. JPMorgan Chase & Co., 432 F.3d 463, 469-70 (3d Cir. 2005)).
Defendant asserts that Plaintiff cannot establish the likelihood of confusion prong of a
trademark infringement claim. Def.‟s Br. 14 (Doc. 75). From Plaintiff‟s response, the Court
cannot discern Plaintiff‟s theory of trademark infringement. In any event, Plaintiff has not
identified any evidence of likelihood of confusion. See Pl.‟s Br. 19-22; see also Sabinsa Corp. v.
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Creative Compounds, LLC, 609 F.3d 175, 182-83 (3d Cir. 2010) (listing factors that may
indicate likelihood of confusion).
Because there is “a complete failure of proof concerning an essential element of”
Plaintiff‟s trademark infringement claim, there is no genuine dispute as to any material fact and
Defendant is entitled to summary judgment on Count IX of Plaintiff‟s amended complaint.
Celotex, 477 U.S. at 323.
3. Dilution (Count X)
A Lanham Act claim for dilution is based on 15 U.S.C. § 1125(c). To establish a claim
for dilution, a plaintiff must prove: (1) the plaintiff is the owner of a “famous” mark; (2) the
defendant is making commercial use in interstate commerce of a mark or trade name; (3) the
defendant‟s use began after the plaintiff‟s mark became famous; and (4) the defendant‟s use
causes dilution by lessening the capacity of the plaintiff‟s mark to identify and distinguish goods
or services. Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 163
(3d Cir. 2000).
Defendant asserts that Plaintiff cannot establish that its “Marci‟s Old Fashioned Kettle
Korn” mark was “famous.” Def.‟s Br. 10-11 (Doc. 75). “[A] mark is famous if it is widely
recognized by the general consuming public of the United States as a designation of source of the
goods or services of the mark‟s owner.” 15 U.S.C. § 1125(c)(2)(A). “This is a rigorous
standard, as it extends protection only to highly distinctive marks that are well-known throughout
the country.” Green v. Fornario, 486 F.3d 100, 105 (3d Cir. 2007) (citing TCPIP Holding Co.,
Inc. v. Haar Commc‟ns, Inc., 244 F.3d 88, 99 (2d Cir. 2001)).
Plaintiff‟s kettle corn sales were limited to New York, Ohio, Indiana, Pennsylvania, and
West Virginia. Ron Razete Dep. 82:8-15 (Doc. 76-1 at 22). It is unlikely that a mark associated
with a product sold in such a limited geographic region would be “widely recognized by the
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general consuming public of the United States.” 15 U.S.C. § 1125(c)(2)(A); see Green, 486 F.3d
at 105, 101 (noting that “it seems several steps short of probable” that former professional athlete
with brief career “limited to one team in one area would have a name „widely recognized by the
general consuming public of the United States,‟” despite “some name recognition in the greater
Philadelphia community”). Further, Plaintiff has not identified any evidence that its “Marci‟s
Old Fashioned Kettle Korn” mark was well-known, even in this limited region.7 Plaintiff,
therefore, cannot establish that its mark was “famous.”
Because there is “a complete failure of proof concerning an essential element of”
Plaintiff‟s dilution claim, there is no genuine dispute as to any material fact and Defendant is
entitled to summary judgment on Count X of Plaintiff‟s amended complaint. 8 Celotex, 477 U.S.
at 323.
E. Unfair Competition/Unjust Enrichment (Count XI)
“A claim of unfair competition encompasses trademark infringement, but also includes a
broader range of unfair practices, which may generally be described as a misappropriation of the
skill, expenditures and labor of another.” Pa. State Univ. v. Univ. Orthopedics, Ltd., 706 A.2d
863, 867 (Pa. Super. Ct. 1998) (citing Murphy Door Bed Co. v. Interior Sleep Sys., 874 F.2d 95,
102 (2d Cir. 1989)). As with Plaintiff‟s other legal theories, Plaintiff‟s theory of unfair
7
In determining if a mark is “famous,” a court may consider: (1) the duration, extent, and
geographic reach of advertising and publicity of the mark; (2) the amount, volume, and
geographic extent of sales of goods or services offered under the mark; (3) the extent of
actual recognition of the mark; and (4) whether the mark is federally registered. 15 U.S.C.
§ 1125(c)(2)(A). Plaintiff has not identified any evidence related to any of these factors that
would indicate that its mark was famous.
8
Even if a genuine dispute of material fact existed as to whether Plaintiff‟s mark was famous,
Plaintiff has not presented any coherent theory of how Defendant‟s conduct diluted
Plaintiff‟s mark. See Pl.‟s Br. 22-25.
15
competition is unclear.9 Based on Plaintiff‟s amended complaint, Plaintiff‟s theory of unfair
competition appears to be based on the allegation that Defendant passed off Plaintiff‟s product as
one of Defendant‟s products. Am. Compl. ¶¶ 61-64 (Doc. 49). As already explained, there is no
evidence that Defendant committed reverse passing off. See supra Part D.1.
In its brief, Plaintiff cites a hodgepodge of the same evidence Plaintiff cited in support of
its various other claims, along with evidence that Defendant decided to terminate the Production
Agreement because Plaintiff‟s product was not meeting Defendant‟s sales goals. See Pl.‟s Br. 58 (Doc. 81). None of the evidence cited by Plaintiff demonstrates any “unfair practices, which
may generally be described as a misappropriation of the skill, expenditures and labor of another.”
Pa. State Univ., 706 A.2d at 867.
Plaintiff has not presented any coherent theory of how the random assortment of evidence
cited in its brief could support a claim for unfair competition. See Pl.‟s Br. 4-8 (Doc. 81).
Summary judgment, therefore, will be granted in favor of Defendant on Count XI of the
amended complaint.
CONCLUSION
For all of the reasons stated above, Defendant‟s motion to strike is denied and
Defendant‟s motion for summary judgment is granted.
9
Plaintiff titled Count XI of its amended complaint “Unfair Competition/Unjust Enrichment.”
The Court previously noted that unfair competition and unjust enrichment are distinct causes
of action. See Memorandum & Order, Oct. 8, 2010, at 23 n.16 (Doc. 45). From Plaintiff‟s
brief, it is apparent that Plaintiff is asserting a claim for unfair competition only. See Pl.‟s
Br. 4-8 (Doc. 75).
16
II.
ORDER
For the reasons stated above, the Court hereby ORDERS that Defendant Shearer‟s
Foods, Inc.‟s Motion to Strike the Affidavit of Ron Razete (Doc. 85) is DENIED, and Defendant
Shearer‟s Foods, Inc.‟s Motion for Summary Judgment (Doc. 73) is GRANTED.
IT IS SO ORDERED.
s/ Cathy Bissoon
Cathy Bissoon
United States District Judge
November 7, 2011
cc (via e-mail):
All counsel of record.
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