Carter v. Alk Holdings, Inc., Civil No. 1:06-CV-2080-JTC.
| Decision Date | 05 June 2007 |
| Docket Number | Civil No. 1:06-CV-2080-JTC. |
| Citation | 510 F.Supp.2d 1299 |
| Parties | Randall B. CARTER, Plaintiff v. ALK HOLDINGS, INC., d/b/a ACME Security; Michael D. Hassebrock; and John Doe I, Defendants. |
| Court | U.S. District Court — Northern District of Georgia |
Ashish D. Patel, Barry E. Kaplan, Joel D. Myers, Myers & Kaplan, Intellectual Property Law, LLC, Atlanta, GA, for Plaintiff.
Elizabeth G. Borland, Smith Gambrell & Russell, Atlanta, GA, for Defendants.
This matter is currently before the Court on Defendants ALK Holdings, Inc. and Michael D. Hassebrock's motion to dismiss [# 6].
Plaintiff Randall B. Carter is a Georgia resident and former employee of Defendant ALK Holdings, Inc., a Georgia corporation. Defendant Michael D. Hassebrock, also a Georgia resident, is the sole owner of Defendant ALK Holdings, which does business as ACME Security ("ACME"). ACME is a company that provides security systems and solutions to its customers through the use of third-party security products. For example, Defendant ACME provides and services the locks on safe-deposit boxes at banks.
Plaintiff Randall Carter is the former vice president and general manager of ACME. He alleges `that during his employment with ACME, he invented on his own time and with his own resources a new locking mechanism ("the Carter invention") for safe-deposit boxes that significantly decreases the possibility that one key can open multiple boxes in the same bank. According to Carter, ACME and Hassebrock initially declined interest in the invention when he presented them with the device. Hassebrock later approached Carter, however, and informed him that a bank was potentially interested in licensing the invention. Hassebrock proposed a "50/50 partnership" with Carter, and also retained a patent attorney, Defendant John Doe I, to draft a provisional, and later a non-provisional, patent application for the Carter invention. In addition to Plaintiff Carter, the patent applications listed Hassebrock as an inventor of the locking device.
After the patent application was filed, Hassebrock, over the course of several months and in conjunction with employment negotiations, demanded that Plaintiff Carter assign most or all of his rights in the invention to ACME. Carter consistently refused, and ACME eventually terminated his employment. This lawsuit followed. The gravamen of Carter's Complaint is that Defendants have attempted to steal his invention by misidentifying Hassebrock as an inventor on the patent application and by coercing Carter to assign the invention to ACME.
A motion under Federal Rule of Civil Procedure 12(b)(6) motion does not test whether Plaintiff will prevail on the merits; it tests merely whether the Complaint properly states a claim upon which relief may be granted. "The rule is not designed to strike inartistic pleadings or to provide a more definite statement to answer an apparent ambiguity, and the analysis of a 12(b)(6) motion is limited primarily to the face of the complaint and attachments thereto." Brooks v. Blue Cross & Blue Shield of Fla., Inc., 116 F.3d 1364, 1369 (11th Cir.1997). A claim should not be dismissed under Rule 12(b)(6) "unless it appears beyond doubt that the plaintiff can prove no set of facts" which would entitle him to relief. Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 102, 2 L.Ed.2d 80 (1957). In considering a motion to dismiss, the Court must accept the Complaint's allegations as true and `construe them in the light most favorable to Plaintiff. Powell v. United States, 945 F.2d 374, 375 (11th Cir.1991).
The Complaint charges Defendants with a plethora of claims, each of which is in some way related to Carter's claim that Defendants intentionally misidentified Defendant Hassebrock as a co-inventor on the patent application and then forced him to assign his rights in the invention. As discussed below, none of Plaintiff's claims states a claim under federal law upon which relief may be granted.
Count i of the Complaint charges Defendant John Doe I with "violation of Article I, Section 8, Clause 8 of the United States Constitution and 35 U.S.C. et seq."2 Carter's cause of action set forth in this count is puzzling, because the portion of the Constitution cited is the provision which gives Congress authority to regulate patents and copyrights. See U.S. Const. art. I, § 8, cl. 8 (). Nevertheless, Carter contends that:
Randall B. Carter is entitled to an order from this Court declaring that John Doe I, by acting as a licensed patent attorney under the authority of the United States Patent and Trademark Office and through the Patent Laws of the United States, has violated Randall B. Carter's Constitutional Rights by depriving Randall B. Carter of his right to join in the prosecution of his patent application and to secure his Constitutional right of the exclusive right to his invention, and moreover by continued, improper and oppressive threats of termination unless Randall B. Carter would acquiesce in such intimidation and hence assign his rights to Acme.
(Compl.¶ 36.)
Section 8 of Article I of the Constitution is directed to delimiting the scope of Congress's authority. Clause 8, the provision cited by Carter in support of his alleged constitutional rights, gives Congress the specific authority to promulgate laws relating to patents and copyrights. As should be obvious, this provision has absolutely nothing to do with Carter's purported constitutional "right to join in the prosecution of his patent application" or "right [to] the exclusive right to his invention." Simply put, there is no private cause of action for Carter under Article I, Clause 8, Section 8 of the U.S. Constitution.3 Count I is DISMISSED.
Plaintiff Carter charges Defendants in Count II with false designation of origin in violation of Section 43(a) of the Lanham Act. Prior to Carter's departure from ACME, Hassebrock and Carter, acting on behalf of ACME, engaged in discussions with Wachovia Corporation regarding a possible sale of locks made according to the Carter invention. Consequently, Carter argues that these discussions constitute a false designation of origin because Defendants represented to Wachovia "that [ACME], and not Randall B. Carter, was to be the source of the goods." (Compl. ¶ 41; see also id. ¶ 40.)
Section 43(a) prohibits a person from making any "false designation of origin ... which ... is likely to cause confusion ... as to the origin ... of his goods." 15 U.S.C. § 1125(a)(1)(A). Plaintiff misunderstands the nature of false designation of origin. As the Supreme Court recently made clear, the "origin" of "goods" is not "the author of any idea, concept, or communication embodied in those goods," but is instead "the producer of the tangible goods that are offered for sale...." Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37, 123 S.Ct. 2041, 2050, 156 L.Ed.2d 18 (2003).
Here, Plaintiff Carter alleges that Defendants ACME and Hassebrock offered to sell Wachovia locks based in whole or part on the Carter invention. It is clear from the Complaint, however, that should the sale to Wachovia ever materialize, the "origin" of the locking devices would be Defendants (or perhaps some other company contracted to manufacture the locks), who would be the "producer of the tangible goods." The origin would not be Carter, even though he may be "the author of [the] idea ... embodied in those goods." If, for example, Carter physically manufactured locks made according to his invention and Defendants repackaged them as their own and sold them to Wachovia, he would have a viable reverse passing off claim under the Lanham Act. But those are not the facts of this case. What Carter alleges is that Defendants are offering to sell locks to Wachovia and are not properly attributing the fact that Carter may have invented the underlying concept. This is not a cognizable claim under Section 43(a). Count II is DISMISSED.
Carter contends in Count III that Defendants have engaged in false advertising. Section 43(a) of the Lanham Act prohibits a person from making any "false or misleading description of fact ... or false or misleading representation of fact ... which ... in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities...." 15 U.S.C. § 1125(a)(1)(B). In this portion of the Complaint, Carter alleges that "through the unlawful listing of Michael D. Hassebrock as a, co-inventor on the patent application, [Defendants] continue to unlawfully state or misleadingly suggest sponsorship and/or approval to the goods by Randall B. Carter." (Compl.¶ 50.)
These allegations do not state a claim for false advertising. First, the Lanham Act prohibits false or misleading representations in connection with "commercial advertising or promotion." Plaintiff Carter's allegations revolve around his central charge that the patent application misidentifies Defendant Hassebrock as an inventor. Nowhere does the Complaint allege that Defendants have made commercial representations either that Hassebrock invented the invention or that Carter approves the locks made according to the invention. Second, because the alleged misrepresentations involve only the pending patent application, and not any product or service, they do not fall within the Lanham Act's proscriptions. Cf. Digigan, Inc. v. Ivalidate, Inc., 71 U.S.P.Q.2d 1455, 1459-60, 2004 WL 203010 (S.D.N.Y.2004) (...
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