Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Merino v. Cool Gear International, LLC

United States District Court, S.D. California

January 19, 2017

JAIME MERINO, Plaintiff,
v.
COOL GEAR INTERNATIONAL, LLC, a Delaware Limited Liability Company, et al., Defendants.

          ORDER GRANTING MOTION TO DISMISS

          HON. ROGER T. BENITEZ United States District Judge.

         Pending before the Court is the Motion to Dismiss filed by Defendants Cool Gear International, LLC (“Cool Gear”) and Igloo Products Corporation. (Docket No. 10.) The motion is fully briefed. The Court finds the Motion suitable for determination on the papers without oral argument, pursuant to Civil Local Rule 7.1 .d. 1. For the reasons set forth below, the Motion is GRANTED with leave to amend.

         BACKGROUND[1]

         Plaintiff Jaime Merino is the inventor and sole owner of the right, title, and interest in U.S. Patent No. 8, 549, 492 (the “ '492” Patent), which is in essence “a straw accessory for a beverage container.” (Compl. 113.) The '492 Patent was filed on June 24, 2011, and issued on June 11, 2013. The '492 Patent is valid, enforceable, and currently in full force and effect Sometime between late June and early July in 2013, Plaintiff contacted Cool Gear “to introduce Cool Gear to the [']492 Patent and to propose a potential product line, ideas, and marketing concepts to Cool Gear.'' (Id. at ¶ 21.) Cool Gear's Marketing Manager appeared receptive and requested more information from Plaintiff about his invention. Subsequently, on or about July 30, 2013, Plaintiff sent via e-mail a link to a custom video. The video depicted “product line and marketing concepts” featuring the '492 Patent, and ways it could be “implemented and applied to Cool Gear's products.” (Id. at ¶ 22.)

         On or about August 6, 2013, Cool Gear's Marketing Manager advised Plaintiff that “she received the link and that she forwarded it to the appropriate department for evaluation.” (Id. at 1 23.) On the same day, Cool Gear's Senior Product Designer, John Mason, contacted Plaintiff “regarding working together on Plaintiffs potential product line and marketing concept involving the [']492 Patent.” (Id. at 24) Specifically, Mr. Mason stated, “[t]he Owner of [the] company wanted me to reach out and see what Patent you hold and see [i]f you would like to talk about your Product, maybe there is something we can Work together on [sic]?” (Id)

         Following these communications, Plaintiff unsuccessfully attempted to arrange a conference call with Cool Gear, and communications between the parties ceased. At an unidentified time following the correspondence between Plaintiff and Cool Gear, Cool gear “used the marketing concepts, designs, and technology and began manufacturing, offering to sell, importing and selling the Accused Products.” (Id. at 1 26.)

         LEGAL STANDARD

         Under Federal Rule of Civil Procedure 12(b)(6), dismissal is appropriate if, taking all factual allegations as true, the complaint fails to state a plausible claim for relief on its face. Fed.R.Civ.P. 12(b)(6); Bell Ad. Corp. v. Twombly, 550 U.S. 544, 556-57 (2007); Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (requiring plaintiff to plead factual content that provides “more than a sheer possibility that a defendant has acted unlawfully”); accord Anticancer Inc. v. Xenogen Corp., 248 F.R.D. 278, 282 (S.D. Cal. 2007) (holding Twombly's plausibility standard applies to claims, counterclaims, cross-claims, and third-party claims). Under this standard, dismissal is appropriate if the complaint fails to state enough facts to raise a reasonable expectation that discovery will reveal evidence of the matter complained of, or if the complaint lacks a cognizable legal theory under which relief may be granted. Twombly, 550 U.S. at 556. “A claim is facially plausible ‘when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.'" Zixiang Li v. Kerry, 710 F.3d 995, 999 (9th Cir. 2013) (quoting Iqbal, 556 U.S. at 678). “Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Iqbal, 556 U.S. at 678.

         DISCUSSION

         Defendants' move to dismiss Plaintiffs Second Claim for Relief for failure to state a claim. The Second Claim for Relief alleges Cool Gear and Plaintiff entered into an implied-in-fact contract governed by California law, [2] which Cool Gear breached when it “misappropriated [Plaintiffs] ideas, concepts, prototype designs, and marking proposals.” (Compl.¶ 41.)

         In California, to prevail in an action for breach of an implied-in-fact contract, a plaintiff must show: (1) that he or she prepared the work, (2) that he or she disclosed the work to the offeree for sale, (3) it can be concluded, under all of the circumstances attending disclosure, that the offeree voluntarily accepted the disclosure knowing the conditions on which it was tendered (i.e. the offeree must have the opportunity to reject the attempted disclosure if the conditions were unacceptable), and (4) the reasonable value of the work. Aliotti v. Dakin & Co., 831 F.2d 898, 902 (9th Cir. 1987) (citing Faris v. Enberg, 97 Cal.App.3d 309, 318 (1979)). The parties dispute whether the Complaint sufficiently alleges the first, second, and third elements. The Court finds the third element is alleged inadequately.

         As set forth above, the first element requires a showing that Plaintiff prepared the disputed work.[3] Aliotti, 831 F.2d at 902; Faris, 97 Cal.App.3d at 318. The Complaint alleges that Plaintiff is the inventor and sole owner of the right, title, and interest in the “'492” Patent. (Compl. 13.) Sometime in 2013, “Plaintiff contacted Cool Gear to introduce Cool Gear to the '492 Patent and propose a potential product line, ideas, and marketing concepts.” (Id. at 21.) Cool Gear allegedly used Plaintiffs “marketing concepts, designs, and technology.” (Id. at 26.) The Court finds these facts satisfy the pleading requirement for the first element (i.e. that Plaintiff prepared the disputed work).

         The second element requires a showing that Plaintiff disclosed his work for sale. Aliotti, 831 F.2d at 902; Faris, 97 Cal.App.3d at 318. The Complaint alleges that Plaintiff sent Cool Gear's Marketing Manager the video link “in expectation of return of fair compensation.” (Compl. 22.) Plaintiff also alleges he “provid[ed] Cool Gear information regarding the '492 Patent on expectation of fair compensation.” (Compl. f 25.) The information included Plaintiffs “prototypes, marketing concepts or ideas.” (Id.) Defendants argue that “[t]here was no reason for Cool Gear to think the asserted work - the video - was an offer for sale to Defendants.” (Defs.' Reply at 4.) Defendants also argue that Plaintiffs disclosure “was an invitation and enticement to enter into a future business relationship, e.g. a license for his purportedly patented device.” (Id. at at 2.)

         Defendants' arguments are misplaced. Defendants cite two cases, Alitotti v. R. Dakin & Co, supra, and Faris v. Enberg, supra, for the proposition that “the mere hope[] of entering into a future business relationship” is not sufficient to demonstrate that the disclosure was made for sale. (Id. at 3.) The Court's reading of those cases results in a different conclusion. In Alitotti, the court upheld summary judgment for defendant after reviewing the record and finding evidence that the plaintiff “made her presentation to Dakin not to sell her designs herself, but to help persuade Dakin to buy Favorite Things” (the toy manufacturer she worked for). Id., 831 F.2d at 899, 902. In Faris, the court upheld summary judgment for the defendant because the evidence demonstrated that the plaintiff “never intended to submit the property for sale and did not tell [the defendant] that he was submitting it for sale.” Id., 97 Cal.App.3d at ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.