14-976-cv Big Vision Private Limited v. E.I. Du Pont Nemours and Co.

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT



## SUMMARY ORDER

Rulings by summary order do not ha ve precedential effect. Citation to a summary order filed on or after January 1, 2007, is permitted and is governed by Federal Rule of Appellate Procedure 32.1 and this Court’s Local Rule 32.1.1. When citing a summary order in a document filed with this Court, a party must cite either the Federal Appendix or an electronic database (wit h the notation “summary order”). A party citing a summary order must serve a copy of it on any party not represented by counsel.

At a stated term of the United States Court of Appeals for the Seco nd Circuit, held at 1 the Thurgood Marshall United States Courthou se, 40 Foley Square, in the City of New York, 2 on the 21 st day of May, two thousand fifteen. 3 4 PRESENT: 5 R OBERT D. S ACK , 6 B ARRINGTON D. P ARKER , 7 S USAN L. C ARNEY , 8 Circuit Judges

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_____________ _______________ _____________ 10 11 B IG V ISION P RIVATE L IMITED , 12 13 Plaintiff-Appellant
, 14 15 v. 14-976-cv 16 17 E.I. DU P ONT DE N EMOURS AND C OMPANY , 18 19 Defendant-Appellee

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_____________ _______________ ______________ 21
22 FOR PLAINTIFF-APPELLANT: J EFFREY A. L AMKEN (Michael G. Pattillo, 23 Jr., on the brief ), MoloLamken LLP, 24 Washington, D.C. 25 26 FOR DEFENDANT-APPELLEE: A DAM H. C HARNES (Thurston H. Webb, 27 on the brief ), Kilpatrick Townsend & 28 Stockton LLP, Winston-Salem, NC; 29 (Michael J. Berchou and Anna R. 30 Mercado, on the brief ), Phillips Lytle LLP, 31 Buffalo, NY. 322 1 Appeal from a judgment of the United States District Court for th e Southern District 2 of New York (Failla, J. ). 3
UPON DUE CONSIDERATION WHEREOF, IT IS HEREBY ORDERED, 4 ADJUDGED, AND DECREED that the judgment entered on March 4, 2014 is 5
AFFIRMED

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Plaintiff Big Vision Private Limited (“ Big Vision”), a digital printing company 7 incorporated in India, appeals the District Court’s award of summary judgment in favor of 8 defendant E.I. du Pont de Nemours and Comp any (“DuPont”), a Delaware corporation. 9 The case arises from Big Vision’s efforts to develop a new recyclable banner material to use 10 for its own printing and to sell to others. In pursuit of that goal, Big Vision conducted joint 11 laboratory trials with Davis-Standard, an equipment manufacturer. With Big Vision’s 12 consent, DuPont was invited to participate in those trials because of its technical expertise 13 and because Big Vision was inte rested in testing a particular recyclable resin, known as 14 Entira, developed by DuPont. 15
Three laboratory trials were held at Davis- Standard in 2008 and 2009. Thereafter, Big 16
Vison’s relations with DuPont and Davis-Standard soured, and in late 2009 Big Vision 17 terminated both relationships. In November 2011, Big Vision filed the instant action against 18 DuPont, claiming (1) breach of contract, (2) mi sappropriation of trade secrets, and (3) unfair 19 competition. In essence, Big Vision asserted that, having learned Big Vision’s technical 20
know-how and confidential busine ss information during the laboratory trials, one division of 21 DuPont shared Big Vision’s information with another division of DuPont, which then 22 improperly used it to comp ete with Big Vision. 23
DuPont moved for summary judgment. In a careful and detailed opinion, the 24 District Court granted summary judgment to Du Pont on all three claims. Big Vision timely 25 appealed the grant of summary judgment on it s unfair competition claim only. We assume 26 the parties’ familiarity with the underlying fact s and procedural history of the case, to which 27 we refer only as necessary to ex plain our decision to affirm. 283 We review a grant of summary judgment de novo , and we will affirm only if there is no 1 genuine issue of material fact and the moving part y is entitled to judgment as a matter of law. 2 See Robinson v. Concentra Health Servs., Inc. , 781 F.3d 42, 44 (2d Cir. 2015). In conducting our 3 review, we view the record in the light most favorable to th e non-moving party, Big Vision, 4
and draw all reasonable inferences in its favor. See id. 5
Under New York law (which the parties agr ee governs here), the tort of unfair 6 competition is a “broad and fl exible doctrine” that has been described as “encompassing any 7 form of commercial immorality, or simply as en deavoring to reap where one has not sown; it 8 is taking the skill, expenditures and labors of a competitor, and misappropriating for the 9 commercial advantage of one person a benefit or property right belonging to another.” Roy 10 Export Co. Establishment of Vaduz, Liec htenstein v. Columbia Broad. Sys., Inc. , 672 F.2d 1095, 1105 11 (2d Cir. 1982) (internal alterations, citations, and quotation marks omitted). The essence of 12
the tort “is that the defendant misappropriated the fruit of plai ntiff’s labors and expenditures 13 by obtaining access to plaintiff’ s business idea either through fr aud or deception, or an abuse 14 of a fiduciary or confidential relationship.” Telecom Int’l Am., Ltd. v. AT & T Corp. , 280 F.3d 15 175, 197 (2d Cir. 2001). A claim will fail wher e a plaintiff cannot demonstrate “the bad faith 16 misappropriation of a commercial advantage which belonged exclusively to him.” LoPresti v. 17 Mass. Mut. Life Ins. Co. , 820 N.Y.S.2d 275, 277 (App. Div. 2d Dep’t 2006). 18
Big Vision argues primarily that the Distri ct Court erred in conc luding that “sharing 19 information about Big Vision be tween divisions at DuPont did not constitute a breach of 20 contract or misappropriation of a trade secret , and on that basis, cannot constitute bad 21
faith.” Big Vision Private Ltd. v. E. I. DuPont De Nemours & Co. , 1 F. Supp. 3d 224, 276 22 (S.D.N.Y. 2014). Big Vision notes, correctly, that a claim of unfair competition requires 23 neither a finding of breach of contract nor the misappropriation of a trade secret. It 24 contends that the District Court mistakenly believed otherwise and wrongly dismissed its 25
claim on that basis. 26
Read in context, the Dist rict Court’s statements on this count do not imply a 27 misperception that a claim of unfair competition alway s requires a breach of contract or 28 misappropriation of trade secrets or that resolu tion of Big Vision’s unfair competition claim 294 turned exclusively on the court’s resolution of Big Vision’s othe r tort and contract claims. 1 Rather, reviewing the actions of DuPont th at Big Vision alleges support its unfair 2 competition claim, the court first found that in this case there was neither a breach of contract 3 nor misappropriation of a trade secret—reasoni ng that it therefore could not ground the 4 necessary finding of bad faith on such a brea ch or misappropriation. The court then 5 properly proceeded to consider other candidate acts, such as DuPont’s “sharing information 6 within [the] company,” as possibly supporting Big Vision’s allegations of bad faith. Id. 7 Understandably, the District Court focused on the question whether DuPont demonstrated 8 bad faith by breaching a contract or misappropr iating trade secrets, because that was an 9 approach presented by Big Vision in its pleadings and throughout the litigation. See J.A. 36- 10 37, ¶¶ 71-73. 11
Even if Big Vision did not rest its unfair competition claim on the success of its other 12 claims, DuPont would be entitled to summary ju dgment on this count, for a simple reason: 13 Big Vision failed to adduce eviden ce sufficient to raise a genuine issue of material fact as to 14 whether DuPont actually “misappropriated the fruit of [Big Vision’s] labors and 15 expenditures.” Telecom , 280 F.3d at 197. New York law is clear that, “[w]hatever the breadth 16 and flexibility” of New York’s unfair compet ition tort, “it depends upon the allegation of 17 facts that, if true, would constitute misuse of plaintiffs’ property.” Dow Jones & Co. v. Int’l 18 Sec. Exch., Inc. , 451 F.3d 295, 302 n.8 (2d Cir. 2006). Although a plaintiff need not establish 19 misappropriation of a trade secret , then, to state a claim for un fair competition, it must 20 establish that a defendant misappropriated or mi sused the plaintiff’s property or the fruit of 21 its labors and expenditures. Big Vision asse rts that DuPont misused confidential 22 information that fell into two broad categories : technical and business. But Big Vision has 23 failed to adduce evidence that DuPont actually utilized any of Big Vision’s confidential 24 information at all. Thus, even if Big Vision ’s internal sharing of information could be 25
deemed to have been undertak en in bad faith, Big Vision’s claim would nonetheless fail 26
because there is no evidence that the fruit of Big Vision’s labors or expenditures was 27 misappropriated or misused. 285 First, despite its protestations to the c ontrary, Big Vision h as not adduced evidence 1 demonstrating that DuPont used any confidential technical in formation revealed by Big 2 Vision. In its opinion, the Di strict Court demonstrates that none of the products that 3 DuPont sells utilizes Big Vision’s confidential information or techni cal know-how; and even 4 if internal product testing conducted by Du Pont can give rise to a claim of unfair 5 competition—an uncertain premis e—the record contains no evid ence that DuPont actually 6 conducted internal testing using any confiden tial information gleaned from Big Vision. 7 Indeed, the record shows that th e technical “innovations” claimed by Big Vision in its suit 8 against DuPont were in fact publicly known. DuPont therefore could not be said to have 9 misused or misappropriated those purported innovations. 10
Second, Big Vision contends that DuPont “misappropriated its business information, 11 including its business model, its recycling loop, the global banner market, and pricing 12 strategies for banner sales.” Appellant’s Repl y Br. at 24 (internal quotation marks omitted). 13 But in this category, too, Big Vision has not proffered evidence of any such 14 misappropriation. The evidence reflects that DuPont does not use a “recycling loop.” See 15 Big Vision , 1 F. Supp. 3d at 245 n.24. Big Vision adduces no evidence that the pricing of 16 DuPont’s banners was affected by Big Vision ’s pricing strategies. And while there is 17 evidence that Big Vision may have caused DuP ont to realize that the “global banner market” 18 was “much larger than [DuPont] expected,” J.A. 1634-35, Big Vision has failed to adduce 19
evidence that DuPont acted on this insight in any way. Accordin gly, Big Vision has failed to 20 raise a genuine issue of fact as to whether DuPont “misappropriated the fruit of [Big 21 Vision’s] labors and expenditures,” Telecom , 280 F.3d at 197, and its claim for unfair 22 competition must fail. 23
We have considered Big Vision’s remainin g arguments and find them to be without 24 merit. For the reasons set out above, the judgment of the District Court is AFFIRMED

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FOR THE COURT: 26 Catherine O’Hagan Wolfe, Clerk of Court 27