Craig P. Nadel, Plaintiff-Counter-Defendant-Appellant-Cross-Appellee v. Play-By-Play Toys & Novelties, Inc., Defendant-Counter-Claimant-Appellee

Plaintiff-appellant Craig P. Nadel (“Na-del”) brought this action against defendant-appellee Play-By-Play Toys & Novelties, Inc. (“Play-By-Play”) for breach of contract, quasi contract, and unfair competition. The thrust of Nadel’s complaint was that Play-By-Play took his idea for an upright, sound-emitting, spinning plush toy and that, contrary to industry custom, Play-By-Play used the idea in its “Tornado Taz” product without paying him compensation. Play-By-Play also filed several counterclaims against Nadel, alleging that Nadel falsely told other members of the toy industry that Play-By-Play had stolen his idea, thereby harming its ability to receive toy concepts from toy industry members.

For the reasons that follow, we vacate that part of the district court’s order granting Play-By-Play’s motion for summary judgment and dismissing Nadel’s complaint and affirm that part of the district court’s order dismissing Play-ByPlay’s counterclaims.

BACKGROUND

Nadel is a toy idea man. Toy companies regularly do-business with-independent inventors such as Nadel in order to develop and market new toy concepts as quickly as possible. To facilitate the exchange of ideas, the standard custom and practice in the toy industry calls for companies to treat the submission of an idea as confidential. If the company subsequently uses *372 the disclosed idea, industry custom provides that the company shall compensate the inventor, unless, of course, the disclosed idea was already known to the company.

In 1996, Nadel developed the toy concept at issue in this case. He transplanted the “eccentric mechanism” 1 found in several hanging Halloween toys then on the market — such as “Spooky Skull” and “Shaking Mutant Pumpkin” — and placed the mechanism inside of a plush toy monkey skin to develop the prototype for a new table-top monkey toy. This plush toy figure sat upright, emitted sound, and spun when placed on a flat surface.

In October 1996, Nadel met with Neil Wasserman, an executive at Play-By-Play who was responsible for the development of its plush toy line. According to Nadel, he showed his prototype monkey toy to Wasserman, who expressed interest in adapting the concept to a non-moving, plush Tazmanian Devil toy that Play-ByPlay was already producing under license from Warner Bros. Nadel contends that, consistent with industry custom, any ideas that he disclosed to Wasserman during their October 1996 meeting were subject to an agreement by Play-By-Play to keep such ideas confidential and to compensate Nadel in the event of their use.

Nadel claims that he sent his prototype monkey toy to Wasserman as a sample and awaited the “Taz skin” and voice tape, which Wasserman allegedly said he would send, so that Nadel could make a sample spinningdaughing Tazmanian Devil toy for Play-By-Play. Wasserman never provided Nadel with the Taz skin and voice tape, however, and denies ever having received the prototype monkey toy from Nadel.

Notwithstanding Wasserman’s denial, his secretary, Melissa Rodriguez, testified that Nadel’s prototype monkey toy remained in Wasserman’s office for several months. According to Ms. Rodriguez, the monkey toy was usually kept in a glass cabinet behind Wasserman’s desk, but she remembered that on one occasion she had seen it on a table in Wasserman’s office. Despite Nadel’s multiple requests, Wasser-man did not return Nadel’s prototype monkey toy until February 1997, after Play-by-Play introduced its “Tornado Taz” product at the New York Toy Fair.

The parties do not dispute that “Tornado Taz” has the same general characteristics as Nadel’s prototype monkey toy. Like Nadel’s toy, Tornado Taz is a plush toy that emits sounds (including “screaming,” “laughing,” “snarling,” and “grunting”), sits upright, and spins by means of an internal eccentric vibration mechanism.

Nadel claims that, in violation of their alleged agreement, Play-By-Play used his idea without paying him compensation. Play-By-Play contends, however, that it independently developed the Tornado Taz product concept and that Nadel is therefore not entitled to any compensation. Specifically, Play-By-Play maintains that, as early as June or July of 1996, two of its officers — Wasserman and Slattery — -met in Hong Kong and began discussing ways to create a spinning or vibrating Tazmanian Devil, including the possible use of an eccentric mechanism. Furthermore, Play-By-Play claims that in late September or early October 1996, it commissioned an outside manufacturing agent — Barter Trading of Hong Kong — to begin developing Tornado Taz.

Play-By-Play also argues that, even if it did use Nadel’s idea to develop Tornado Taz, Nadel is not entitled to compensation because Nadel’s concept was unoriginal and non-novel to the toy industry in October 1996. In support of this argument, Play-By-Play has submitted evidence of various toys, commercially available prior to October 1996, which used eccentric motors and allegedly contained the same *373 characteristics as Nadel’s prototype monkey toy.

In connection with its counterclaims, Play-By-Play alleges that Nadel falsely told other members of the toy industry that Play-By-Play had stolen his toy idea, thereby damaging its ability to receive new toy concepts from toy industry members. Play-By-Play claims, for example, that Nadel frustrated its business negotiations with a company called Wow Wee. Specifically, Play-By-Play alleges that because of Nadel’s false statements, Wow Wee broke off its business negotiations with Play-ByPlay and approached other toy manufacturers before ultimately returning to Play-By-Play to conclude a deal. Play-ByPlay contends that it suffered damages because of the resultant delay in bringing Wow Wee’s toy concept to market.

Similarly, Play-By-Play alleges that Na-déis false statements damaged its business relationship with Andrew Ferber, a toy developer. Ferber was a former business associate of Nadel who attended Na-del’s October 1996 meeting with Wasser-man so that he could pitch his “conductive ink” technology to Play-By-Play for possible use in a Looney Tunes pillow. ■ A follow-up meeting between Wasserman and Ferber was scheduled, but Wasserman never appeared for that meeting. Ferber testified that he learned of Nadel’s lawsuit from Nadel and that he would be less willing to do business with Play-By-Play as a result. Ferber and Play-By-Play have not done business together.

DISCUSSION

1. NADEL’S CLAIMS

On January 21, 1999, the district court granted Play-By-Play’s motion for summary judgment dismissing Nadel’s claims for breach of contract, quasi contract, and unfair competition. 2 Interpreting New York law, the district court stated that “a party is not entitled to recover for theft of an idea unless the idea is novel or original.” Nadel v. Play By Play Toys & Novelties, Inc., 34 F.Supp.2d 180, 184 (S.D.N.Y.1999). Applying that principle to Nadel’s claims, the district court concluded that, even if the spinning toy concept were novel to Play-By-Play. at the time Nadel made the disclosure to Wasserman in October 1996, Nadel’s claims must nonetheless fail for lack of novelty or originality because “numerous toys containing the characteristics of [Nadel’s] monkey were in existence prior to [ ] October 1996.” Id. at 186. In essence, the district court interpreted New York law to require that, when a plaintiff claims that a defendant has either (1) misappropriated his idea (a “property-based claim”) or (2) breached an express or implied-in-fact contract by using such idea (a “contract-based claim”), the idea at issue must be original or novel generally. See id. at 184 n. 1. Thus, according to the district court, a finding that an idea was novel as to Play By Play — i.e., novel to the buyer — cannot suffice to sustain any of Nadel’s claims. See id.

On appeal, Nadel challenges the district court’s conclusion that a showing of novelty to the buyer — i.e., that Nadel’s idea was novel to Play-By-Play at the time of his October 1996 disclosure — cannot suffice to sustain his claims for breach of contract, quasi contract, and unfair competition under New York law. Nadel claims, moreover, that the record contains a genuine issue of material fact concerning whether his toy idea was novel to Play-By-Play at the time of his October 1996 disclosure to Wasserman and that the district court therefore erred in granting Play-ByPlay’s motion for summary judgment.

Nadel’s factual allegations present a familiar submission-of-idea case: (1) the *374 parties enter into a pre-disclosure confidentiality agreement; (2) the idea is subsequently disclosed to the prospective buyer; (3) there is no post-disclosure contract for payment based on use; and (4) plaintiff sues defendant for allegedly using the disclosed idea under either a contract-based or property-based theory. For the reasons that follow, we conclude that a finding of novelty as to Play-By-Play can suffice to provide consideration for Nadel’s contract claims against Play-By-Play. Accordingly, because we also find that there exists a genuine issue of material fact as to whether Nadel’s idea was novel to Play-By-Play at the time of his October 1996 disclosure, we vacate the district court’s grant of summary judgment on Nadel’s contract claims. With respect to Nadel’s misappropriation claim, we similarly vacate the district court’s grant of summary judgment and remand for further proceédings to determine whether Nadel’s idea was original or novel generally.

A. Submission-of-Idea Cases Under New York Law

Our analysis begins with the New York Court of Appeals’ most recent discussion of the law governing idea submission cases, Apfel v. Prudential-Bache Securities, Inc., 81 N.Y.2d 470, 600 N.Y.S.2d 433, 616 N.E.2d 1095 (1993). In Apfel, the Court of Appeals discussed the type of novelty an idea must have in order to sustain a contract-based or property-based claim for its uncompensated use. Specifically, Apfel clarified an important distinction between .the requirement of “novelty to the buyer” for contract claims, on the one hand, and “originality” (or novelty generally) for misappropriation claims, on the other hand.

Under the facts of Apfel, the plaintiff disclosed his idea to the defendant pursuant to a confidentiality agreement and, subsequent to disclosure, entered into another agreement wherein the defendant agreed to pay a stipulated price for the idea’s use. See id. at 474, 600 N.Y.S.2d 433, 616 N.E.2d 1095. The defendant used the idea but refused to pay plaintiff pursuant to the post-disclosure agreement on the asserted ground that “no contract existed between the parties because the sale agreement lacked consideration.” Id. at 475, 600 N.Y.S.2d 433, 616 N.E.2d 1095. The defendant argued that an idea could not constitute legally sufficient consideration unless it was original or novel generally and that, because plaintiffs idea was not original or novel generally (it had been in the public domain at the time of the post-disclosure agreement), the idea provided insufficient consideration to support the parties’ post-disclosure contract. See id. at 474-75, 600 N.Y.S.2d 433, 616 N.E.2d 1095.

In rejecting defendant’s argument, the Court of Appeals held that there was sufficient consideration to support plaintiffs contract claim because the idea at issue had value to the defendant at the time the parties concluded their post-disclosure agreement. See id. at 476, 600 N.Y.S.2d 433, 616 N.E.2d 1095. The Apfel court noted that “traditional principles of contract law” provide that parties “are free to make their bargain, even if the consideration exchanged is grossly unequal or of dubious value,” id. at 475, 600 N.Y.S.2d 433, 616 N.E.2d 1095, and that, so long as the “defendant received something of value” under the contract, the contract would not be void for lack of consideration, id. at 476, 600 N.Y.S.2d 433, 616 N.E.2d 1095. See also id. at 478, 600 N.Y.S.2d 433, 616 N.E.2d 1095 (“[T]he buyer knows what he or she is buying and has agreed that the idea has value, and the Court will not ordinarily go behind that determination.”).

The Apfel court explicitly rejected defendant’s contention that the court should carve out “an exception to traditional principles of contract law” for submission-of-idea cases by requiring that an idea must also be original or novel generally in order to constitute valid consideration. Id. at 477, 600 N.Y.S.2d 433, 616 N.E.2d 1095. *375 In essence, the defendant sought to impose a requirement that an idea be novel in absolute terms, as opposed to only the defendant buyer, in order to constitute valid consideration for the bargain. In rejecting this argument, the Apfel court clarified the standards for both contract-based and property-based claims in submission-of-idea cases. That analysis guides our decision here.

The Apfel court first noted that “novelty as an element of an idea seller’s claim” is a distinct element of proof with respect to both (1) “a claim based on a property theory” and (2) “a claim based on a contract theory.” Id. at 477, 600 N.Y.S.2d 433, 616 N.E.2d 1095. The court then proceeded to discuss how the leading submission-of-idea case — Downey v. General Foods Corp., 31 N.Y.2d 56, 334 N.Y.S.2d 874, 286 N.E.2d 257 (1972) — treated novelty with respect to property-based and contract-based claims. 3 First, the Apfel court explained that the plaintiffs property-based claims for misappropriation were dismissed in Downey because “the elements of novelty and originality [were] absent,” ie., the ideas were so common as to be unoriginal and known generally. Apfel, 81 N.Y.2d at 477, 600 N.Y.S.2d 433, 616 N.E.2d 1095 (quoting Downey, 31 N.Y.2d at 61, 334 N.Y.S.2d 874, 286 N.E.2d 257) (alteration in original); accord Downey, 31 N.Y.2d at 61-62, 334 N.Y.S.2d 874, 286 N.E.2d 257 (holding that the submitted idea — marketing Jell-0 to children under the name “Mr. Wiggle” — was “lacking in novelty and originality” because the idea was merely the “use of a word (‘wiggley’ or ‘wiggle’) descriptive of the most obvious characteristic of Jell-O, with the prefix ‘Mr.’ added”). Second, the Apfel court explained that the plaintiffs contract claims in Dovmey had been dismissed on the separate ground that the “defendant possessed plaintiffs ideas prior to plaintiff’s disclosure [and thus], the ideas could have no value to defendant and could not supply consideration for any agreement between the parties.” Apfel, 81 N.Y.2d at 477, 600 N.Y.S.2d 433, 616 N.E.2d 1095; accord Downey , 31 N.Y.2d at 62, 334 N.Y.S.2d 874, 286 N.E.2d 257 (finding that, where defendant had used the words “wiggles” and “wigglewam” in prior advertising, defendant could “rel[y] on its own previous experience” and “was free to make use of ‘Mr. Wiggle’ without being obligated to compensate the plaintiff’).

By distinguishing between the two types of claims addressed in Dovmey and the different bases for rejecting each claim, the New York Court of Appeals clarified that the novelty requirement in submission-of-idea cases is different for misappropriation of property and breach of contract claims. The Court of Appeals underscored this important distinction by citing Ferber v. Sterndent Corp., 51 N.Y.2d 782, 433 N.Y.S.2d 85, 412 N.E.2d 1311 (1980), which also refers to the two different types of novelty, ie., novelty to the buyer and novelty generally. See Apfel, 81 N.Y.2d at 477, 600 N.Y.S.2d 433, 616 N.E.2d 1095 (citing Ferber, 51 N.Y.2d at 782, 433 N.Y.S.2d 85, 412 N.E.2d 1311). In Ferber, the Court of Appeals affirmed the lower court’s grant of summary judgment in favor of the defendant because “[p]laintiff failed to produce any evidence to support his claim that the idea which he disclosed to defendants was novel either in the abstract or as to them.” Ferber, 51 N.Y.2d at 783, 433 N.Y.S.2d 85, 412 N.E.2d 1311 (emphasis added); see also Bram v. Dannon Milk Prods., Inc., 33 A.D.2d 1010, 307 N.Y.S.2d 571 (1st Dep’t 1970) (holding that summary judgment should have been *376 granted to defendants on all claims where plaintiffs idea was both “lacking in novelty” and “had been utilized by the defendants ... prior to its submission”).

Thus, the Apfel court refused to read Downey and “similar decisions” 4 as requiring originality or novelty generally in all cases involving disclosure of ideas. See Apfel, 81 N.Y.2d at 476-77, 600 N.Y.S.2d 433, 616 N.E.2d 1095 (“These decisions do not support [the] contention that novelty [in absolute terms] is required in all cases involving disclosure of ideas.”). Rather, the Apfel court clarified that the longstanding requirement that an idea have originality or general novelty in order to support a misappropriation claim does not apply to contract claims. See Oasis Music, Inc. v. 900 U.S.A., Inc., 161 Misc.2d 627, 614 N.Y.S.2d 878, 881 (1994) (noting that “the Apfel court did not repudiate the long line of cases requiring novelty in certain situations^] ... the Apfel court merely clarified that novelty is not required in all cases”). For contract-based claims in submission-of-idea cases, a showing of novelty to the buyer will supply sufficient consideration to support a contract.

Moreover, Apfel made clear that the “novelty to the buyer” standard is not limited to cases involving an express post-disclosure contract for payment based on an idea’s use. The Apfel court explicitly discussed the pre-disclosure contract scenario present in the instant case, where “the buyer and seller contract for disclosure of the idea with payment based on use, but no separate postdisclosure contract for the use of the idea has been made.” Apfel, 81 N.Y.2d at 477-78, 600 N.Y.S.2d 433, 616 N.E.2d 1095. In such a scenario, a seller might, as Nadel did here, bring an action against a buyer who allegedly used his ideas without payment, claiming both misappropriation of property and breach of an express or implied-in-fact contract. 5 The Apfel court recognized that *377 these cases present courts with the .difficult problem of determining “whether the idea the buyer was using was, in fact, the seller’s.” Id. at 478, 600 N.Y.S.2d 433, 616 N.E.2d 1095. Specifically, the court noted that, with respect to a misappropriation of property claim, it is difficult to “prove that the buyer obtained the idea from [the seller] and nowhere else.” Id. With respect to a breach of contract claim, the court noted that it would be inequitable to enforce a contract if “it turns out upon. disclosure that the buyer already possessed the idea.” Id. The court then concluded that, with respect to these cases, “[a] showing of novelty, at least novelty as to the buyer” should address these problems. 6 Id.

We note, moreover, that the “novelty to the buyer” standard comports with traditional principles of contract law. While an idea may be unoriginal or non-novel in a general sense, it may have substantial value to a particular buyer who is unaware of it and therefore willing to enter into contract to acquire and exploit it. See Apfel, 81 N.Y.2d at 475-76, 600 N.Y.S.2d 433, 616 N.E.2d 1095; Robert Unikel, Bridging the “Trade Secret” Gap: Protecting “Confidential Information” Not Rising to the Level of Trade Secrets, 29 Loy. U. Chi. L.J. 841, 877 n. 151 (1998) (noting that, if a valuable idea is already known to an industry but has not yet been acquired by a prospective buyer, one of two circumstances may exist: “(1) the person[ ] ha[s] not identified the potential value of the easily acquired information; or (2) the person! ] ha[s] not identified the means, however easy or proper, for obtaining the valuable information”). As the. Apfel court emphasized, “the buyer may reap benefits from such a contract in a number of ways — for instance, by not having to expend resources pursuing the idea through other channels or by having a profit-making idea implemented sooner rather than later.” Apfel, 81 N.Y.2d at 478, 600 N.Y.S.2d 433, 616 N.E.2d 1095.

In fact, the notion that an unoriginal idea may still be novel' (and valuable) to a particular buyer is not itself a novel proposition. In Keller v. American Chain Co., 255 N.Y. 94, 174 N.E. 74 (1930)—which is cited by Apfel —the parties entered into a verbal pre-disclosure contract whereby the plaintiff allegedly agreed to disclose money-saving information to the defendant in exchange for one-third of the savings realized. See id. at 96-97, 174 N.E. 74. The disclosed idea—that the defendant could use a more favorable freight rate classification for his auto chains — was not original or novel to the industry, as several railroads already adhered to the lower rate. See id. at 97-98, 174 N.E. 74. Nonetheless, the Keller court stated that, where the defendant used and benefited from information otherwise unknown to it, there can be sufficient consideration to enforce *378 the parties’ pre-disclosure contract. 7 See id. at 98, 174 N.E. 74.

In contrast to contract-based claims, a misappropriation claim can only arise from the taking of an idea that is original or novel in absolute terms, because the law of property does not protect against the misappropriation or theft of that which is free and available to all. See Murray v. National Broad. Co., 844 F.2d 988, 993 (2d Cir.1988) (“Since ... non-novel ideas are not protectible as property, they cannot be stolen.”); cf. Ed Graham Prods., Inc. v. National Broad. Co., 75 Misc.2d 334, 347 N.Y.S.2d 766, 769 (1973) (“Ideas such as those presented by the plaintiff are in the public domain and may freely be used by anyone with impunity.”); Educational Sales Programs, Inc. v. Dreyfus Corp., 65 Misc.2d 412, 317 N.Y.S.2d 840, 843 (1970) (“An idea is impalpable, intangible, incorporeal, yet it may be a stolen gem of great value, or mere dross of no value at all, depending on its novelty and uniqueness.”).

Finally, although the legal requirements for contract-based claims and property-based claims are well-defined, we note that the determination of novelty in a given case is not always clear. Cf. AEB & Assocs. Design Group, Inc. v. Tonka Corp., 853 F.Supp. 724, 734 (S.D.N.Y.1994) (“In establishing an idea’s ■ originality, a plaintiff cannot rest on mere assertions, but must demonstrate some basis in fact for its claims.”). The determination of whether an idea is original or novel depends upon several factors, including, inter alia, the idea’s specificity or generality (is it a generic concept or one of specific application?), its commonality (how many people know of this idea?), its uniqueness (how different is this idea from generally known ideas?), and its commercial availability (how widespread is the idea’s use in the industry?). Cf. Murray, 844 F.2d at 993 (“In assessing whether an idea is in the public domain, the central issue is the uniqueness of the creation.”); AEB & Assocs., 853 F.Supp. at 734 (“[N]ovelty cannot be found where the idea consists of nothing more than a variation on a basic theme.”); Educational Sales Programs,