Sköld v. Galderma Laboratories, L.P.
99 F. Supp. 3d 585
E.D. Pa.2015Background
- Plaintiff Thomas Sköld (Swedish citizen) developed "Restoraderm" technology and contracted with Collagenex (2002, 2004 agreements) under which Collagenex obtained and was to protect the Restoraderm trademark and, upon certain termination events, return assets to Sköld.
- Galderma Laboratories, Inc. (Delaware), Galderma Laboratories, L.P. (Texas), and Galderma S.A. (Switzerland) are alleged successors/owners who marketed Cetaphil® Restoraderm® products in the U.S.; Sköld alleges they failed to return the trademark after termination and used it for their own products.
- Sköld filed suit in the Eastern District of Pennsylvania asserting Lanham Act claims (trademark infringement, false advertising, unfair competition) and Pennsylvania claims (unfair competition, breach of contract, unjust enrichment); a TTAB cancellation proceeding was stayed pending this litigation.
- Defendants moved to dismiss on multiple grounds: failure to exhaust/comply with ADR clause, statute of limitations, gist-of-the-action barring tort claims, contract precluding unjust enrichment, and lack of personal jurisdiction over Galderma S.A.
- The Court (Beetlestone, J.) denied motions to stay as moot, granted in part and denied in part the motions to dismiss: dismissed breach-of-contract as to S.A.; dismissed unjust enrichment as to Inc.; limited dismissal of unfair competition to claims that merely recast contractual breaches; denied dismissal for lack of personal jurisdiction over S.A. (via forum-selection clause), but found Rule 4(k)(2) jurisdiction over S.A. inadequate.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Motion to stay pending TTAB | Stay unnecessary because TTAB stayed this matter; litigation should proceed | Move to stay pending TTAB outcome | Motions to stay denied as moot (TTAB stayed) |
| ADR/mediation clause | Mediation provision is permissive; plaintiff not required to mediate first; Inc. waived defense by litigating in TTAB | Defendants contend clause bars suit for failure to negotiate/mediate | Court: mandatory executive-level negotiation required; mediation permissive. Dismissal denied; Inc. waived right to enforce negotiation requirement through TTAB conduct |
| Breach of contract statute of limitations | Claim accrued Sept 14, 2010 (press release); suit filed Sept 15, 2014 (timely) | Defendants say accrual earlier (termination Nov 27, 2009 or media May 2010) and TTAB filing shows earlier knowledge | Under Third Circuit Rule, facts on complaint govern; Court declines to dismiss on statute ground at 12(b)(6) stage — breach claim not time-barred on face of complaint |
| Breach claim vs. S.A. | Asserts S.A. is ultimate owner and acted in concert | S.A. not a party to 2004 Agreement; insufficient factual allegations | Breach claim dismissed with prejudice as to S.A. for failure to plead S.A. was party/successor |
| Unjust enrichment | Sköld alleges benefits conferred and unjust retention by S.A. and L.P. | Defendants: contract governs and precludes quasi-contract recovery | Unjust enrichment dismissed as to Inc. (contract governs); survives as to S.A. and L.P. (not parties to contract) |
| Unfair competition (gist-of-action) | Some allegations describe post-termination deceptive conduct separate from contract breach | Defendants: tort claim merely repackages breach of contract | Court: tort claims based solely on failure to revert trademark dismissed; but unfair competition based on post-termination deceptive communications survives |
| Personal jurisdiction over Galderma S.A. (Rule 4(k)(2)) | S.A. has U.S. contacts (R&D facility) making Rule 4(k)(2) applicable | S.A. lacks sufficient contacts with U.S. as a whole; Rule 4(k)(2) not satisfied | Court: Rule 4(k)(2) general-jurisdiction test (Daimler standard) not met; cannot exercise jurisdiction under Rule 4(k)(2) |
| Personal jurisdiction over Galderma S.A. (forum-selection clause) | Forum-selection clause in 2004 Agreement binds S.A. as closely related non-signatory and claims arise out of agreement | S.A. says non-signatory cannot be bound and minimum-contacts still required | Court: forum-selection clause applies to S.A. (closely related, benefited, foreseeable); claims "arise out of" agreement; clause enforces consent to PA jurisdiction — personal jurisdiction over S.A. upheld |
Key Cases Cited
- Int'l Shoe Co. v. Washington, 326 U.S. 310 (minimum contacts test for due process jurisdiction)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (forum contacts and purposeful direction for specific jurisdiction)
- Goodyear Dunlop Tires Operations, S.A. v. Brown, 131 S. Ct. 2846 (limits on general jurisdiction)
- Daimler AG v. Bauman, 134 S. Ct. 746 ("essentially at home" standard for general jurisdiction)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading standard requiring factual plausibility)
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading rules and plausibility review)
- Schmidt v. Skolas, 770 F.3d 241 (Third Circuit Rule on statute-of-limitations defense at motion to dismiss)
- Bruno v. Erie Ins. Co., 106 A.3d 48 (Pa. 2014) (Pennsylvania Supreme Court summary of gist-of-action doctrine)
- Crescent Int'l v. Avatar Communities, Inc., 857 F.2d 943 (forum-selection clause applies to noncontractual claims that arise out of the contract)