Nadel v. Play by Play Toys & Novelties, Inc.

• Decision Date: 21 January 1999
• Docket Number: No. 97 Civ. 9368(SHS).,97 Civ. 9368(SHS).
• Citation: 34 F.Supp.2d 180
• Parties: Craig P. NADEL, Plaintiff, v. PLAY BY PLAY TOYS & NOVELTIES, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

34 F.Supp.2d 180

Craig P. NADEL, Plaintiff, v. PLAY BY PLAY TOYS & NOVELTIES, INC., Defendant.

No. 97 Civ. 9368(SHS).

United States District Court, S.D. New York.

January 21, 1999.

COPYRIGHT MATERIAL OMITTED

Catriona Collins, New York, NY, for plaintiff.

Frank J. Colucci, New York, NY, for defendant.

OPINION

STEIN, District Judge.

This action for breach of contract and unfair competition arises out of the development of "Tornado Taz," a children's toy based on the "Tazmanian Devil" cartoon character, by defendant Play By Play Toys & Novelties, Inc. Presently before the Court is Play By Play's motion for summary judgment dismissing the complaint pursuant to Fed.R.Civ.P. 56(b) and plaintiff Craig P. Nadel's motion for summary judgment dismissing Play By Play's counterclaims for violations of the Lanham Act, unfair competition, deceptive trade practices, false advertising, injury to business reputation, and tortious interference with prospective business relations. For the reasons set forth below, both motions for summary judgment are granted.

BACKGROUND

Play By Play is engaged in the design, development, marketing, and sale of toys and other novelty products. In June of 1996, Play By Play acquired the Ace Novelty Co. Inc., which had been selling plush toys based on characters from the "Looney Tunes" cartoons, including the "Tazmanian Devil," under license from Warner Bros. (Deposition transcript of Mark Gawlik, July 1, 1998, at 17-18). Ace Novelty's Tazmanian Devil toy did not move and was designed to be standing. (Id.).

Nadel is an originator of new toy ideas. Plaintiff claims, and for the purposes of defendant's motion the Court accepts as true, that he met with Neil Wasserman, an executive from Play By Play, in October 1996. At this meeting, plaintiff presented to Wasserman samples of his new product concepts, including a sample of a "vibrating, spinning, screaming monkey." (Deposition transcript of Craig Nadel, July 7-8, 1998 ("Nadel Dep.") at 239). Nadel had created this sample by inserting a vibration mechanism from a commercially available Halloween toy into a commercially available plush monkey. (Id. at 203-05, 293-94, 297-98).

According to Nadel, Wasserman indicated that he was interested in using the "vibrating, spinning, screaming" concept in a toy based on the Tazmanian Devil character and asked Nadel to aid him in developing such a toy. (Id. at 241-43). Specifically, Nadel claims that Wasserman promised to send him an audio compact disk with the voice of the Tazmanian Devil and a Tazmanian Devil "skin" into which Nadel could insert a mechanism to make the toy vibrate and spin. Plaintiff further claims that, although he provided Wasserman with a sample of his "vibrating, spinning, screaming" monkey and stopped by Play By Play's offices "numerous" times to retrieve the promised Tazmanian Devil skin and audio disk, Wasserman never supplied him with the promised items. (Id. at 242-44, 261).

At the New York Toy Fair in February 1997, which was four months after Nadel's initial meeting with Wasserman, Play By Play introduced "Tornado Taz" to the toy trade. Tornado Taz is a plush toy in the form of the Tazmanian Devil character which, when squeezed, spins around, vibrates, and says "Me, Tazmanian Devil" followed by a "snarling and grunting" sound. (Tornado Taz is Exh. A to the Declaration of Celine Jimenez Crowson dated September 14, 1998 ("Crowson Decl.")).

Simply put, Nadel claims that Play By Play stole his idea of a vibrating and spinning soft toy that makes sounds. The parties do not dispute that Tornado Taz fits the description of a soft toy which contains an internal vibration mechanism that causes the toy to spin around when placed on a flat surface and make a sound described as "screaming," "laughing," "snarling," or "grunting." Play By Play, however, contends that it, and not Nadel, developed the concept for Tornado Taz. In addition, Play By Play claims that even if it did use Nadel's idea in developing Tornado Taz, Nadel is not entitled to any compensation because Nadel's concept was not novel. In support of its argument, Play By Play has submitted evidence of various toys that it alleges contain the very characteristics Nadel claims as his concept.

Play By Play further alleges that Nadel has told three inventors—namely (1) Joe Diresta, (2) a company called "Wow Wee," and (3) Sheldon Goldberg—that Play By Play stole Nadel's idea and refused to compensate him for it and, as a result, those inventors are not providing Play By Play with their "best" toy ideas (Deposition transcript of Rod Spongberg, July 1, 1998, ("Spongberg Dep."), at 41, 45-46, 77-78), although they are continuing to bring some ideas to it. (Id. at 45, 62-63, 84). Play By Play's Vice President, Rod Spongberg, testified that he had no further information that Nadel made any false or misleading statements to anyone other than the three inventors noted above, although he harbored "suspicions" that such statements may have been made. (Id. at 78-82).

Diresta testified that he had independently concluded that Play By Play had stolen Nadel's concept based on (1) his involvement in introducing Nadel to Wasserman for the purpose of Nadel making his presentation and (2) an advertisement for Tornado Taz that Diresta saw at the New York toy fair. (Deposition transcript of Joseph Diresta, July 8, 1998, ("Diresta Dep.") at 35-36, 69-70). He also testified that Wasserman had called him seeking advice in connection with this lawsuit, (Id. at 39), and that he has not withheld showing products to Play By Play on the basis of Nadel's lawsuit. (Id. at 103).

Play By Play also alleges that Wow Wee broke off licensing negotiations with it over a product that Wow Wee had previously submitted to Play By Play, and subsequently submitted this product idea to two other toy companies after learning of Nadel's accusations. (Spongberg Dep. at 51, 58, 66-67). However, after the other two toy manufacturers rejected Wow Wee's toy concept, Wow Wee resumed negotiations with Play By Play, and Play By Play ultimately bought Wow Wee's concept. (Id. at 63, 69). Play By Play nevertheless contends that it has suffered damages because of the resultant delay in bringing Wow Wee's toy to market supposedly caused by Nadel's falsehoods. (Id. at 70-71).

Andrew Ferber, a toy developer, testified that he had accompanied Nadel to his meeting with Wasserman. (Deposition transcript of Andrew Ferber, July 15, 1998, at 35, 54-55, 61-61). He also testified that he knew, from a source other than Nadel, that a company in Hong Kong claimed that Play By Play had stolen a toy idea from it (Id. at 23, 26-27), and that as a result of what he has heard in connection with both the Hong Kong company and Nadel's lawsuit, he would have "concerns" about doing business with Play By Play in the future (Id. at 27-28), although he has never done business with it in the past. (Id. at 37, 79).

Finally, Play By Play relies on the fact that Nadel disclosed his lawsuit to David Berko of Mattel Toys in support of its claims. Nadel asserts, however, that he mentioned the lawsuit to Berko in connection with his search for an expert witness. (Nadel Dep. at 144-46).

As a result of Nadel's alleged statements, Play By Play claims that its reputation has been harmed and that present and future customers have or will cease to do business with Play By Play. Based on these allegations, Play By Play counterclaims against Nadel for (i) violations of the Lanham Act; (ii) unfair competition; (iii) deceptive trade practices and false advertising; (iv) injury to business reputation; and (v) interference with prospective business relations.

DISCUSSION

Pursuant to Fed.R.Civ.P. 56(c), summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 2509-10, 91 L.Ed.2d 202 (1986); Adams v Department of Juvenile Justice of N.Y., 143 F.3d 61, 65 (2d Cir.1998) (citation omitted). In considering a motion for summary judgment, this Court must view the facts in the light most favorable to the non-moving party. Allen v. Coughlin, 64 F.3d 77, 79 (2d Cir. 1995) (citing Consarc Corp. v. Marine Midland Bank, 996 F.2d 568, 572 (2d Cir.1993)). The party opposing the motion, however, cannot rely simply on the allegations or denials of its pleadings, but must demonstrate, by sufficient evidence, specific facts showing that there are genuine issues of material fact. Corselli v. Coughlin, 842 F.2d 23, 25 (2d Cir.1988).

I. Defendant's Motion For Summary Judgment Dismissing Plaintiff's Complaint

Nadel claims that Play By Play violated its oral contract with him when it used his idea for a vibrating, spinning plush toy that makes sounds in developing Tornado Taz without compensating him. Under New York law, a party is not entitled to recover for theft of an idea unless the idea is novel and original. AEB & Assocs. Design Group, Inc. v. Tonka Corp., 853 F.Supp. 724, 733-34 (S.D.N.Y.1994); Ring v. Estee Lauder, Inc., 702 F.Supp. 76, 77 (S.D.N.Y.1988), aff'd, 874 F.2d 109 (2d Cir.1989); Ed Graham Prods., Inc. v. National Broad. Co., Inc., 75 Misc.2d 334, 337, 347 N.Y.S.2d 766, 769 (N.Y.Sup.Ct. 1973). Thus, "when one submits an idea to another, no promise to pay for its use may be implied, and no asserted agreement enforced, if the elements of novelty and originality are absent, since the property right in an idea is based upon these two elements." Downey v. General Foods Corp., 31 N.Y.2d 56, 61, 286 N.E.2d 257, 259, 334 N.Y.S.2d 874, 877 (1972).¹

The question of whether an idea is sufficiently novel to merit protection under New York law may be determined on a motion for summary judgment. M.H. Segan Ltd. Partnership v....