Summary
In Horwitt v. Movado Watch Agency, Inc., 364 F. Supp. 687, 690-91 (S.D.N.Y. 1973) (Lasker, J.), the court held the counterclaims sufficient to inform the licensor of the alleged prior art and the way in which he was said to have committed a fraud upon the United States Patent Office where the prior art was identified as to the date and time of use, patent number, and designer's name.
Summary of this case from Papst Motrn GMbH amp; Co. KG v. Knemts-GSHOpinion
Plaintiff moved to amend complaint to allege defamation and interference with contract for royalties on patent. The District Court, Morris E. Lasker, J., held that proposed amendment which alleged that defendant attempted to interfere with contract between plaintiff and another but which did not allege that the contract was breached or terminated and which did not allege that plaintiff was damaged by the attempted interference failed to state a claim upon which relief could be granted; and that proposed amendment which sounded in defamation but which failed to allege that the contents of the allegedly defamatory advertisement were defamatory or untrue and which failed to allege actual damage to the plaintiff also failed to state a claim upon relief could be granted.
Motion to amend denied.
See also, D.C., 364 F.Supp. 687.
Eleanor Jackson Piel, New York City, for plaintiff.
Unterberg, Bandler & Goldstein, New York City, for defendant.
MEMORANDUM
LASKER, District Judge.
Although Rule 15, Federal Rules of Civil Procedure, states that leave to amend ‘ shall be freely given when justice so requires', the instant motion must be denied because the proposed additional causes of action fail to state claims under New York law.
The first claim is deficient since it does not allege the existence of a clearly valid contract, the procuring of an actual breach of the contract, or actual damages. Israel v. Wood Dolson Co., Inc., 1 N.Y.2d 116 at 120, 151 N.Y.S.2d 1, 134 N.E.2d 97 (1956). The contract referred to appears to be a royalty agreement. The design patent from which the royalties derive was issued in 1959. Section 173 of Title 35, U.S.C. sets a 14 year maximum term for design patents. It is, therefore, to be presumed that plaintiff's patent has expired. If this be the case and if, as plaintiff alleges in the proposed amendment to the complaint, royalties are still payable to him, a serious question would exist as to the validity of the agreement. While there may be cases where such post termination payments are permissible as true deferred compensation, nevertheless, the general rule is that:
‘ . . . any attempted reservation or continuation in the patentee or those claiming under him of the patent monopoly, after the patent expires, whatever the legal device employed, runs counter to the policy and purpose of the patent laws.’ Scott Paper Co. v. Marcalus Co., 326 U.S. 249, 256, 66 S.Ct. 101, 104, 90 L.Ed. 47 (1945) quoted with approval in Brulotte v. Thys Co., 379 U.S. 29, 32, 85 S.Ct. 176, 13 L.Ed.2d 99 (1964).
This deficiency alone might not be fatal since the motion to amend could be granted on condition that plaintiff plead and establish the permissibility of the post expiration payments and the validity of the contract. However, the first proposed additional claim is insufficient in any event since it does not allege that the contract referred to has been breached or terminated. Finally, and most important, the proposed amendment fails to allege that the plaintiff has been damaged by the attempted interference with his right to royalties. The claim that ‘ . . . Gerard Ditishein . . . attempted to interfere with said agreement . . . by informing [Miller] that he should not pay commissions to plaintiff to plaintiff's damage in a sum now unknown’ does not by any construction allege that the plaintiff has actually been damaged by the attempt. Nor can plaintiff fall back on the pleading theory of prima facie tort, because ‘ . . . when the acts relied on’, as they do here, ‘ give rise to specific torts recognized by law, then plaintiff's remedy lies in those ‘ classic’ categories, and may not be bottomed in prima facie tort.' Harris Diamond Co. v. Army Times Publishing Company, 280 F.Supp. 273, 275 (S.D.N.Y.1968) citing Ruza v. Ruza, 286 A.D. 767, 146 N.Y.S.2d 808 (1st Dept.1955) and Brandt v. Winchell, 283 A.D. 338, 127 N.Y.S.2d 865 (1st Dept.1954).
The second new claim (Paragraph 20 of proposed Amended Complaint) which appears to sound in defamation, is also insufficient because it fails to allege that the contents of the advertisement described were defamatory or untrue, Dolcin Corporation v. Reader's Digest Ass'n, Inc., 7 A.D.2d 449, 454, 183 N.Y.S.2d 342, 347-348 (1st Dept.1959, opinion of Breitel, J.) nor does the second claim allege actual damage to the plaintiff.
Where the proposed amendments are clearly defective, the motion to amend should not be granted. 3 Moore's Federal Practice (Second Edition) Paragraph 15.08[4] at pp. 904-5. See also Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962).
The motion to amend is denied.
It is to be noted that plaintiff's failure to submit a memorandum of law in support of his motion ‘ may be deemed sufficient cause for the denial of the motion’, Rule 9(b) of the General Rules of this court.
It is so ordered.