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BRANDWYNNE v. COMBE INTERN.

October 19, 1999

JACQUELINE BRANDWYNNE, AND BRANDWYNNE CORPORATION, PLAINTIFFS,
v.
COMBE INTERNATIONAL, LTD. COMBE INCORPORATED, THOMAS SMITH AND CHAPIN NOLEN, DEFENDANTS.



The opinion of the court was delivered by: Scheindlin, District Judge.

OPINION AND ORDER

TABLE OF CONTENTS

    I. Introduction .......................................................................... 366
   II. Background ............................................................................ 367
       A. Brandwynne's Product Concept ....................................................... 367
       B. Brandwynne's Negotiations With Defendants .......................................... 368
       C. Brandwynne's Commercialization of "Very Private Intimate Moisture" ................. 369
       D. Combe's Commercialization of "VAGISIL® Intimate Moisturizer" ....................... 370
       E. The Market for Vaginal Moisturizers/Lubricants Prior to September 1993 ............. 371
          1. ASTROGLIDE® ..................................................................... 372
          2. COMFORT® ........................................................................ 373
          3. SUMMER'S EVE® ................................................................... 373
  III. Legal Standard for Summary Judgment ................................................... 373
   IV. Discussion ............................................................................ 374
       A.  Plaintiffs' Misappropriation, Breach of Contract and Fraud Claims ................. 374
           1. The Threshold Requirement of "Novelty" ......................................... 374
           2. Plaintiffs' Claims Arising From Misappropriation Theory ........................ 375
              a.  Lack of "Novelty" Prior to Brandwynne's Disclosure to Defendants ........... 375
              b.  Defendants' Own Research and Development ................................... 377
              c.  Marketing of Very Private Defeats "Novelty" ................................ 378
              d.  Conclusion Regarding Plaintiffs' Misappropriation Claims ................... 378
           3. Plaintiffs' Claims Arising From Various Contract Theories ...................... 378
              a. Lack of Property Rights Defeats Plaintiffs' Contract Claims ................. 378
              b. Claim Arising Under the Secrecy Agreement ................................... 378
              c. Claims Asserting Breach of Implied Contracts ................................ 379
           4. Plaintiffs' Claims Arising From Defendants' Alleged Fraud ...................... 379
        B. Plaintiffs' Claims for Common Law Trademark and Trade Dress Infringement .......... 380
           1. Common Law Trademark Infringement .............................................. 380
              a. Is Plaintiffs' Mark Entitled to Protection? ................................. 380
                  i.  The Term "Intimate" Is Generic and Not Entitled to Protection .......... 381
                 ii.  Plaintiffs Cannot Establish Secondary Meaning .......................... 382
           2. Trade Dress Infringement ....................................................... 383
        C. Plaintiffs' Claims for False Advertising Under the Lanham Act and New York General
           Business Law ...................................................................... 383
    V.  Conclusion ........................................................................... 384

I. Introduction

Jacqueline Brandwynne ("Brandwynne") and Brandwynne Corporation, ("Bran.Corp.") (collectively "Brandwynne" or "plaintiffs") sued Combe Incorporated ("Combe Inc."), Combe International, Ltd. ("Combe Int'l"), a wholly-owned subsidiary of Combe Inc., Chapin Nolen, the former President of Combe Inc., and Thomas Smith, the former Vice President of Combe Int'l (collectively "Combe" or "defendants") in April 1998, alleging various claims of misappropriation of trade secrets, unfair competition, fraud, breach of contract, unjust enrichment, breach of fiduciary duty, common law trademark infringement and violations of the Lanham Act, 15 U.S.C. § 1125(a). Jurisdiction is based on the Lanham Act, 15 U.S.C. § 1051 et seq., 28 U.S.C. § 1331 (federal question), 1332 (diversity of citizenship), 1338 (jurisdiction to adjudicate cases involving trademark infringement and accompanying claims of unfair competition) and 1367(a) (supplemental jurisdiction).

This case arises out of Brandwynne's dashed hopes for a joint venture with defendants to produce and market her concept for a non-medicinal vaginal moisturizer. Brandwynne, a newcomer to the feminine hygiene industry, lacked the capital to effectively introduce her product into the national marketplace. Combe, by contrast, the health and beauty aid giant, possessed the financial capability and preexisting national distribution network to establish a prominent name brand vaginal moisturizer.

Brandwynne alleges that after confidentially revealing her concept for a "unique" niche product, defendants rejected her joint venture proposal and, despite the parties' secrecy agreement, misappropriated and successfully marketed plaintiffs' concept. Defendants now move for summary judgment on all of plaintiffs' claims.*fn1 Defendants argue that plaintiffs' claims for misappropriation of certain ideas or breach of the secrecy agreement are fatally flawed because plaintiffs' concept was neither novel nor original and, therefore, already in the public domain. Second, defendants contend that plaintiffs do not possess protectable trademark or trade dress rights in the product, thereby defeating any trademark and trade dress claims. Finally, defendants note that plaintiffs' false advertising claims are unsupported by any evidence. For the reasons that follow, defendants motion for summary judgment is granted in its entirety.

II. Background

Plaintiffs manufacture and market a vaginal moisturizer called "Very Private Intimate Moisture".*fn2 See Plaintiffs' Local Civil Rule 56.1 Statement of Undisputed Facts ("Pls.' 56.1") ¶ 1.*fn3 Combe Inc. manufactures and markets a competing line of feminine hygiene products sold under the registered VAGISIL ® trademark. See Defendants' Local Civil Rule 56.1 Statement of Undisputed Facts ("Defs.' 56.1") ¶ 4.

A. Brandwynne's Product Concept

Prior to September 1993, Brandwynne recognized that as many as 80 million American women between the ages of 37 and 79 experience vaginal dryness for a variety of physiological and psychological reasons, such as menopause, chemotherapy, lactation, stress, or poor self-image. See Pls.' 56.1 ¶¶ 8 & 9; Amended Complaint ("Amended Compl.") ¶¶ 12 & 13. To tap this enormous potential market, Brandwynne conceived a line of vaginal moisturizer products to relive dryness and enhance sexual pleasure. Brandwynne alleges that prior to her development of this concept, other vaginal lubricants were marketed exclusively as sexual lubricants or for medical purposes. See Amended Compl. at ¶ 14. Although vaginal suppositories were available, Brandwynne considered them awkward and unnatural. Id. ¶ 16. According to plaintiffs, the product concept for an "intimate moisturizer, so natural, it functions and feels like [a] woman's own moisture" was unique at that time. See Pls.' 56.1 ¶¶ 10 & 11.

  ? Clear, clean and natural, feels and functions like
    a woman's own moisture.
  ? Provides lubrication, desirable "slip" for
    intimacy.

? Safe, long lasting lubrication and comfort.

  ? All ingredients in formulation safe, (inactive,
    cosmetic classification) in market use for many
    years.

? Gynecologist tested and approved.

  ? Thinner than existing lubricants, better slip,
    better moisturization.
  ? Non-sticky, non-greasy, odorless, tasteless,
    stainless.

? Leaves no residue, discreet, not visible.

? Hypo-allergenic, unscented.

? Compatible with condoms.

Report at 16. Brandwynne believed that the above features, as well as the packaging and marketing of her product combined to create a unique idea. See Pls.' 56.1 ¶ 11. Specifically, Brandwynne's Report touted the following features relevant to "product uniqueness":

  ? Very Private is positioned as a quality bodycare
    product, not a medical or quasi-medical gel like KY
    or Ortho Lubricant.
  ? Very Private is the first intimate moisturizer that
    feels and functions like a woman's own moisture. It
    was formulated specifically to moisturize
    instantly and enhance sexual intimacy.
  ? Very Private is totally clear. No fragrance, no
    taste, no visible residue or "crusting" like
    current vaginal products.
  ? Very Private can be used during the day, every day,
    to ease dryness and the symptoms of dryness in the
    intimate area, to make a woman feel more
    comfortable all day long.
  ? Very Private can also be used before intimacy, to
    relive dryness instantly and enhance intimacy.
  ? Very Private has the look and presentation of an
    elegant, cosmetic product and is gynecologist
    tested and approved, unlike current quasi-medical
    lubricants that are presented in a functional,
    low-cost way.

Report at 15 (emphasis in original). In the Spring of 1993, Brandwynne filed an application for the registration of the phrase "So Natural, Like a Woman's Own Moisture" with the United States Patent and Trademark Office ("PTO").*fn5 Amended Compl. at ¶ 22.

B. Brandwynne's Negotiations With Defendants

In September 1993, Brandwynne and Smith agreed to discuss Brandwynne's Very Private brand. Approximately three weeks prior to their first meeting, Brandwynne sent Combe, Inc. a copy of her Report, the first sentence of which states "the information contained herein shall be kept confidential." Pls.' 56.1 ¶ 18; Report at 3. Also prior to the first meeting, Brandwynne sent Smith a proposed "Confidentiality Agreement". Pls.' 56.1 ¶ 16. Defendants declined to sign the "Confidentiality Agreement" and instead sent Brandwynne their standard "Secrecy Agreement" which she executed. Pls.' 56.1 ¶ 20. That Secrecy Agreement provides in pertinent part:

  COMBE agrees to retain in confidence and not to
  disclose to third parties any CONFIDENTIAL
  INFORMATION received from [Brandwynne] in accordance
  with the terms of this agreement. . . . The foregoing
  obligation of confidentiality shall not apply to any
  portion of the disclosed CONFIDENTIAL INFORMATION
  which:
    (a) at the time of disclosure is in the public
  domain;
    (b) after disclosure is disclosed to third parties
  without obligations of confidentiality, or is
  published, or otherwise becomes part of the public
  domain, through no fault or action of COMBE;
    6. The parties understand and agree that nothing
  herein shall obligate [Brandwynne] to sell, nor COMBE
  to purchase, the subject PRODUCT. Nor shall the
  parties be obligated in any way to enter into any
  further agreements. The parties recognize and agree
  that the disclosure being made hereunder is for
  purposes of COMBE'S evaluation only.
    8. This agreement contains the entire understanding
  of the parties and supersedes all prior agreements
  and understandings relative to the transactions
  contemplated herein, whether written, oral, expressed
  or implied, and the provisions of this agreement may
  not be altered, modified, amended or waived except by
  a writing which is executed by both parties.

Secrecy Agreement, September 10, 1993, attached to Defs.' 56.1, Ex. 31. After executing the Secrecy Agreement, Brandwynne made her presentation to Nolan on September 29, 1993. Pls.' 56.1 ¶ 20. In the ensuing several months, Combe did not contact Brandwynne to express an interest in pursuing a joint venture. In the meantime, Brandwynne launched her product without Combe's assistance.

  C. Brandwynne's Commercialization of "Very Private Intimate
    Moisture"

In April 1994, seven months after meeting with Combe, Brandwynne began marketing and selling "Very Private Intimate Moisture" in interstate commerce. The product is contained in a white plastic bottle, designed to stand on its top with the dispenser at the bottom, with a beige and white label with green lettering. The brand name "Very Private" appears in enlarged white capital letters within a green rectangle; the remainder of the text, separated from the name, includes the words "intimate moisture" in green lettering on a white and beige background. The bottle is packaged in a box measuring 4-5/8" high by 1-7/8" wide by 1-3/8" deep and featuring the identical lettering and color motif of the bottle. See Defs.' 56.1, Exs. 74 & 75. The front of the box features, in part, the following text:

Relieves intimate dryness Instantly, enhances intimacy

Gynecologist tested and approved

Defs.'s 56.1, Ex. 75 (emphasis in original). The back of the box states, in part:

  Very Private Intimate Moisture feels and functions
  like a woman's own moisture to relieve vaginal
  dryness instantly and enhance intimacy. . . . Very
  Private is a thin, clear liquid providing excellent
  slip. Unlike sticky, greasy gels and lubricants, it
  leaves no residue. Odorless, ...

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