obligations only for two years following the November 1988 meeting. As the November 1988 meeting took place three years before the Colorblaster toy appeared at the Toy Fair, AEB argues that the Confidentiality Agreement expired before its causes of action arose. The Court finds this argument unpersuasive.
While the Confidentiality Agreement provides that the defendant's obligation "shall extend . . . for two (2) years from the date of initial disclosure," see the Confidentiality Agreement at P 11, the Agreement provides further that its terms "shall be in perpetuity unless modified or terminated as specified herein." Id. Thus, the Confidentiality Agreement did not expire at the end of the two-year period. Rather, Kenner's obligation to keep information about the Jet Art submission confidential lapsed after two years from the date that the submission was presented to it. Accordingly, AEB's argument that the Confidentiality Agreement ceased to govern the Jet Art submission in November 1990 lacks merit.
AEB contends further that the Confidentiality Agreement does not apply because Kenner abandoned it. Specifically, AEB argues that Kenner ignored paragraph six of the Agreement, which required Kiscom to warrant that it did not represent a third party having a claim to any items submitted to Kenner. In addition, Kenner failed to enforce the procedures set forth in paragraph one for recording items presented to it.
"A mutual agreement to abandon a contract discharges any obligations under the contract and renders the contract unenforceable." Cauff, Lippman & Co. v. Apogee Fin. Group, Inc., 807 F. Supp. 1007, 1021 (S.D.N.Y. 1992). To establish that a party abandoned a contract, however, it must be shown that the party's conduct was mutual, positive, unequivocal, and inconsistent with an intent to be bound by the contract's terms. See Rosiny v. Schmidt, 185 A.D.2d 727, 587 N.Y.S.2d 929, 932 (1st Dep't 1992); Staebell v. Bennie, 83 A.D.2d 765, 443 N.Y.S.2d 487, 488 (4th Dep't 1981) (finding that a contract is not abandoned unless there is a repudiation of it and a refusal to perform). "The party who asserts abandonment has the burden of establishing it since the termination of a contract is not presumed." Rosiny v. Schmidt, 587 N.Y.S.2d at 932; see also United States v. International Bhd. of Teamsters, 816 F. Supp. 864, 870-71 (S.D.N.Y. 1992). In addition, the mere fact that a party breaches its agreement with another is insufficient to establish abandonment. See Carver v. Apple Rubber Prods. Corp., 163 A.D.2d 849, 558 N.Y.S.2d 379, 380 (4th Dep't 1990).
In the case at hand, it is clear that Kenner did not intend to abandon the Confidentiality Agreement. Thus, while Kenner failed to enforce certain provisions of the Agreement relating to documentation and warranty, Kenner's conduct cannot be considered "mutual, positive, unequivocal, and inconsistent with the intent to be bound." Rosiny v. Schmidt, 587 N.Y.S.2d at 932. Accordingly, AEB's argument that Kenner abandoned the Confidentiality Agreement lacks merit, and the Court finds that AEB's implied contract and unjust enrichment claims are precluded by the existence of the Confidentiality Agreement.
C. Misappropriation Claim
Tonka next moves for summary judgment on AEB's claim that Kenner misappropriated the Jet Art idea. According to Tonka, AEB's third cause of action fails because (1) the Jet Art concept is not novel; and (2) Kenner independently developed the Colorblaster toy.
The Court agrees.
A plaintiff asserting misappropriation of his idea must establish that his concept is sufficiently novel to be entitled to legal protection. See Kavanau v. Courtroom Television Network, 91 Civ. 7959, 1992 U.S. Dist. LEXIS 11472, at *11 (S.D.N.Y. Aug. 3, 1992); Robert Brian Assocs., Inc. v. Munsingwear, Inc., 74 Civ. 4648, slip op. at 3 (S.D.N.Y. May 17, 1978). 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 on these two elements." Downey v. General Foods Corp., 31 N.Y.2d 56, 334 N.Y.S.2d 874, 877, 286 N.E.2d 257 (1972); see also Bram v. Dannon Milk Prods., Inc., 33 A.D.2d 1010, 307 N.Y.S.2d 571 (1st Dep't 1970) ("Lack of novelty in an idea is fatal to any cause of action for its unlawful use."); Ed Graham Prods., Inc. v. National Broadcasting Co., 75 Misc. 2d 334, 347 N.Y.S.2d 766, 769 (Sup. Ct. N.Y. Co. 1973) (same). Whether an idea is novel is an issue of law which may properly be decided on a motion for summary judgment. Kavanau v. Courtroom Television Network, 1992 U.S. Dist. LEXIS 11472 at *12; Paul v. Haley, 183 A.D.2d 44, 588 N.Y.S.2d 897, 903 (2d Dep't 1992). In establishing an idea's originality, a plaintiff cannot rest on mere assertions, but must demonstrate some basis in fact for its claims. See Women Golfer, Inc. v. Meredith Corp., 792 F. Supp. 211, 214 (S.D.N.Y. 1992).
To establish novelty, a plaintiff's idea "need not reflect the 'flash of genius,' but it must show genuine novelty and invention, and not a merely clever or useful adaptation of existing knowledge." Educational Sales Programs, Inc. v. Dreyfus Corp., 65 Misc. 2d 412, 317 N.Y.S.2d 840, 844 (Sup. Ct. N.Y. Co. 1970). While even original ideas combine elements that are themselves not novel, novelty cannot be found where the idea consists of nothing more than a variation on a basic theme. Murray v. National Broadcasting Co., 844 F.2d 988, 993 (2d Cir. 1988), cert. denied, 488 U.S. 955, 102 L. Ed. 2d 380, 109 S. Ct. 391 (1988). In addition, a plaintiff may not claim that an idea is original if it was already in use in the industry at the time of the submission. McGhan v. Ebersol, 608 F. Supp. 277, 286 (S.D.N.Y. 1985).
In this case, AEB concedes that the Jet Art prototype was based on the design for commercial airbrush tools. It argues, however, that the mechanism for hand pumping air into a canister to build pressure for continuous air flow makes the Jet Art toy a novel concept. In response, Tonka contends that both the "Spray and Play" toy and the "Junior Airbrush" submission consist of manually-operated airbrush systems. While neither the "Spray and Play" toy nor the "Junior Airbrush" prototype utilize a system of hand pumping air into a canister to build air pressure, the Court finds that, in light of these similar designs for airbrush toys, the Jet Art idea consists of nothing more than a "clever or useful adaptation of existing knowledge." Educational Sales Programs, Inc. v. Dreyfus Corp., 317 N.Y.S.2d at 844. Accordingly, the requisite element of novelty is lacking.
2. Independent Development
Even if AEB could establish that the Jet Art toy is a novel concept, however, the Court finds that it has failed to rebut Tonka's evidence of independent development. A plaintiff cannot recover for misappropriation absent a showing that its ideas were actually used by the defendant. See Women Golfer, Inc. v. Meredith Corp., 792 F. Supp. at 214, n.6. Accordingly, even where a plaintiff's concept is novel and original, "recovery will be denied where it is established that the party alleged to have misappropriated another's concept, arrived on its own initiative or by wholly independent means at a concept similar to that devised by the party seeking recovery for misappropriation." Robert Brian Assocs., Inc. v. Munsingwear, Inc., slip op. at 3; see also Wolf v. Louis Marx & Co., 78 Civ. 2018, slip op. at 4 (S.D.N.Y. Feb. 20, 1980); Paul v. Haley, 588 N.Y.S.2d at 905 (finding that a defendant may rebut a prima facie case of misappropriation of ideas by showing that he or she independently created the work at issue).
In the case at hand, Tonka has demonstrated that Kenner independently developed the Colorblaster toy. First, Mayer conceived of the idea for the Colorblaster toy as early as March 1988, eight months prior to the November 1988 meeting. In addition, when Mayer developed a working model of the Colorblaster toy in the spring of 1989, he worked independently, and did not seek assistance from any individual other than Hayes, his supervisor.
Second, the Jet Art submission was presented to Bollinger in New York, and Mayer was not present at that meeting. While AEB contends that Kiscom sent the Jet Art materials to Kenner's Cincinnati office, Kenner's records indicate that the Jet Art submission was never received at the Cincinnati office. Moreover, as Mayer worked in a rival department from Bollinger, it is unlikely that Mayer spoke with Bollinger about the Jet Art idea or viewed the Jet Art submission prior to developing the Colorblaster toy.
In light of this evidence, the Court finds that plaintiff's conclusory and speculative assertions to the contrary are insufficient to avoid summary judgment. See Downey v. General Foods Corp., 334 N.Y.S.2d at 878 (finding that plaintiff's hope that he may be able to prove that defendant's witnesses lied is insufficient to defeat motion for summary judgment). Accordingly, Tonka's motion for summary judgment dismissing AEB's misappropriation claim is granted.
II. Motion to Amend the Complaint
AEB moves, pursuant to Rule 15(a) of the Federal Rules of Civil Procedure, for leave to amend its complaint to assert a cause of action for breach of contract. Tonka contends that leave should not be granted, however, as a cause of action for breach of contract will fail as a matter of law. For the reasons that follow, AEB's motion is denied.
A party may amend its pleading once as a matter of right before a responsive pleading has been served, otherwise it may do so by leave of the court, and such "leave shall be freely given when justice so requires." Fed. R. Civ. P. 15(a); see also Cortec Indus., Inc. v. Sum Holding L.P., 949 F.2d 42, 48 (2d Cir. 1991), cert. denied, 112 S. Ct. 1561 (1992). However, where a plaintiff is unable to allege any fact sufficient to support its proposed claim, leave should be denied. Id.; see also State of New York v. Cedar Park Concrete Corp., 741 F. Supp. 494, 496 (S.D.N.Y. 1990) (finding that leave may be denied where the amendment would be futile).
AEB argues that Kenner breached the Confidentiality Agreement by using the Jet Art concept in designing the Colorblaster toy. As the Court has determined that the Jet Art submission is not novel, however, AEB's proposed breach of contract claim would fail. See Apfel v. Prudential-Bache Sec. Inc., 600 N.Y.S.2d at 436 (finding that novelty establishes the value of the consideration necessary for a contract for the disclosure of ideas with payment based on use); Bram v. Dannon Milk Prods., Inc., 307 N.Y.S.2d at 571 ("Lack of novelty in an idea is fatal to any cause of action for its unlawful use.").
Even if the Jet Art submission could be considered novel, however, the Court finds that the terms of the Confidentiality Agreement preclude AEB from pleading a viable cause of action for its breach. The Confidentiality Agreement provided that Kenner would not be liable for the independent creation of a toy that was similar to an outside submission. See the Confidentiality Agreement at P 4(F). In addition, Kiscom did not have rights to ideas already known to Kenner or the public, and Kenner would not be liable if the idea had already been disclosed to a third party without restriction. Id. at P 4(A) - (D).
As set forth, supra, AEB has failed to rebut Kenner's evidence that it independently developed the Colorblaster toy. Moreover, Kenner was released from liability under the Confidentiality Agreement when Kiscom presented the Jet Art submission to Fisher-Price without restriction.
Accordingly, as the Court finds that a cause of action for breach of contract would be futile, AEB's motion to amend the complaint is denied.
For the reasons set forth above, Tonka's motion, pursuant to Federal Rule of Civil Procedure 56(b), for summary judgment dismissing the complaint is granted. AEB's motion, pursuant to Rule 15(a), for leave to amend the complaint is denied.
SHIRLEY WOHL KRAM
UNITED STATES DISTRICT JUDGE
Dated: New York, New York
May 25, 1994