180S, Inc. v. Gordini U.S.A., Inc.180S, Inc. v. Gordini U.S.A., Inc.
MEMORANDUM
Plaintiffs 180s, Inc. and 180s, LLC (collectively “180s”) bring suit for patent and trade dress infringement against Defendant Gordini U.S.A., Inc. (“Gordini”). Gordini asserts three counterclaims, two of which 180s has moved to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure. 180s seeks to dismiss Gordini’s counterclaims alleging intentional interference with contract and intentional interference with prospective economic advantage. 1 (Pis.’ Mot. to Dismiss 1.)
The issues have been fully briefed and no hearing is deemed necessary. Local Rule 105.6 (D.Md. 2008). For the reasons stated below, 180s’ motion to dismiss is granted as to Gordini’s second counterclaim and denied as to the third.
I.
180s is “a Baltimore-based maker of performance wear founded by two University of Pennsylvania Wharton Business School students who invented and patented the first-of-its-kind wrap-behind-the-head ear warmer.” (Pis.’ Mem. Supp. Mot. to Dismiss Counterclaims (“Pis.’ Mem.”) at 2.) 180s alleges that its successful invention has been followed by a flood of knockoff ear warmers, against which 180s has been vigorous in enforcing its intellectual property rights. (Id.) In this ease, 180s alleges patent and trade dress infringement on the basis of Gоrdini’s manufacture, use, and sale of a behind-the-head ear warmer sold under the name “Lobz®.” The parties do not dispute that Maryland law applies to Gordini’s counterclaims.
II.
Under Federal Rule of Civil Procedure 12(b)(6), a court may dismiss a claim upon motion of the оpposing party for failure to state a claim upon which relief may be granted. The purpose of a Rule 12(b)(6) motion is to test the sufficiency of a complaint, not to “resolve contests surrounding the facts, the merits of a claim, or the applicability of defenses.”
Republican Party v. Martin,
III.
180s has moved to dismiss Gordi-ni’s counterclaim of intentional interference with contract on the ground that Gor-dini has failed to allege any breach of contract. (Pis.’ Mem. 4.) In Maryland, the five elements of intentional interference with contract are: “1) existence of a contract between plaintiff and a third party; 2) defendant’s knowledge of that contract; 3) defendant’s intentional interference with that contract; 4) breach of that contract by the third party; 5) resulting damages to the plaintiff.”
Ultrasound Imaging Corp. v. Am. Soc’y of Breast Surgeons,
Gordini alleges in the counterclaim that 180s “pressur[ed] one or more retailers not to buy Lobz® ear wаrmers by falsely suggesting that Lobz® ear warmers infringe on 180s patents and trade dress and/or by suggesting that the retailers themselves may be liable for patent infringement if they sell Lobz®.” (Def.’s Counterclaims 14.) Gordini asserts that as a result of 180s’ alleged threats, “one or more retailers havе foregone additional orders of Lobz® ear warmers.” (Id.) 180s notes, however, that Gordini never alleges that any of these foregone additional orders involved the breach of a contract. (PL’s Mem. 3.)
Gordini concedes that it “has not specifically pled that Plaintiffs’ conduct induced one or more of Gordini’s customers to breach their contracts, which would ordinarily be an element of a breach of contract claim.” (Def.’s Response to Pis.’ Mot. to Dismiss (“Def.’s Response”) at 1-2.) Gordini therefore does not opрose the dismissal of this counterclaim, but instead “affirmatively seeks leave to withdraw it, subject to its right to seek leave to amend to include such a count should the evidence adduced in discovery demonstrate a contractual breach.” (Id. 2.)
180s contends that I should dismiss this counterclaim with prejudice on the basis of Gordini’s bad faith in submitting and subsequently acquiescing to withdrawal of this baseless pleading. (Pis.’ Reply Mem. Supp. Mot. to Dismiss Counterclaims (“Pis.’ Reply”) at 5.) 180s states that Gor-dini had no good-faith basis for bringing the claim because, as Gordini has conceded, it had no basis for alleging 180s’ conduct caused any third party to breach a contract with Gordini, which is a required element of the claim. (Id.) 180s also alleges that Gordini previously submitted a meritless motion to dismiss or transfer and only withdrew the motion after 180s “incur[red] expеnses for briefing that was unnecessary.” (Id.) In light of what 180s views as repeated baseless pleading by Gordini, 180s therefore seeks denial of Gordini’s request for an opportunity to later amend the answer to include the second counterclaim, as well as sanctions such аs the recovery of the costs incurred by 180s in connection with the instant motion to dismiss. (Id.)
The determination whether to dismiss with or without prejudice under Rule 12(b)(6) is within the discretion of the district court.
Carter v. Norfolk Cmty. Hosp.
IV.
180s has also moved to dismiss Gordini’s сounterclaim of intentional interference with prospective economic advantage. To state such a claim, Gordini must allege: “1) intentional and willful acts; 2) calculated to cause damage to [Gordini] in [its] lawful business; 3) done with an unlawful purpose to cause such damage and loss, without right or justifiable cause on the part of the defendants (which constitutes malice); and 4) actual damage and loss resulting.”
2
Audio Visual Assoc., Inc. v. Sharp Electronics Corp.,
Gordini’s third counterclaim incorporates by reference the allegations of the second counterclaim that:
180s has willfully, tortiously, wrongfully and without justification interfered with Gordini’s contracts by pressuring one or more retailers not to buy Lobz® ear wаrmers by falsely suggesting that Lobz® ear warmers infringe on 180s patents and trade dress and/or by suggesting that the retailers themselves may be liable for patent infringement if they sell Lobz®.
(Defi’s Counterclaims 14.) Gordini alleges damages “as a direct and proximate result of 180s’ ... wrongful interferenсe ... in that one or more retailers have foregone additional orders of Lobz® ear warmers on the basis of [180s’] threats.” (Id.)
180s raises two challenges to Gordini’s third counterclaim. First, 180s claims that Gordini has failed to allege the required element of unlawful or improper purpose. (Pis.’ Mem. 5). 180s contends that even if its statements to Gordini’s retailers that Gordini’s product infringed 180s’ patents were false, such statements alone would be insufficient to satisfy the third required element of this tort “because there is no allegation that 180s made the statemеnts with a malicious intent to harm Gordini’s business unjustifiably.” (Id. 6.)
At this stage of the litigation, I must draw all reasonable inferences in favor of Gordini,
Burbach,
180s’ second argument in support of its motion to dismiss this counterclaim is that the statements allegedly made by 180s are protected by the
Noerr-Penning-ton
doctrine, which provides immunity from liability for exercising one’s First Amendment right to petition the government оr the courts.
Baltimore Scrap Corp. v. David Joseph,
180s states that “Gordini’s tort claim [of intentional interference with prospective economic advantage] appears to be based on nothing more than the mere repetition by 180s representatives of the position set forth in 180s’ publicly-filed Complaint in this case.” (Pis.’ Reply 2.) 180s argues that because the
Noerr-Pennington
protections have been applied to pre-litigation communications, including warnings оf potential litigation and efforts to compromise the dispute,
see Globetrotter Software Inc. v. Elan Computer Group, Inc.,
Assuming, for the purposes of this motion, that Gordini’s allegations are true, the false statements made by 180s about Gordini’s products to retailers separate and apart from bringing the lawsuit against Gordini “are not the type of petitioning activity protected by the
Noerr-Pennington
doctrine.”
Black & Decker Inc. v. Pro-Tech Power Inc.,
No. 97-1123-A,
Gordini’s allegations in its third counterclaim are suffiсient to state a claim of tortious interference with prospective economic advantage. 180s motion to dismiss this counterclaim is therefore denied.
A separate order effecting the rulings made in this opinion is being entered herewith.
ORDER
For the reasоns stated in the memorandum entered herewith, it is, this 10th day of March 2009
ORDERED
1. Plaintiffs motion to dismiss counterclaims is granted in part and denied in part;
2. Count II of the counterclaim is dismissed without prejudice; and
3. Count III of the counterclaim is not dismissed.
Notes
. The first counterclaim, which 180s does not seek to dismiss, requests declaratory relief аs to the patents and trade dress claims asserted by 180s. (Def.'s Answer, Affirmative Defenses, and Counterclaims ("Def.'s Counterclaims") at 13.)
. The Federal Circuit has "held that federal patent law preempts state-law tort liability for a patentholder’s good faith conduct in cоmmunications asserting infringement of its patent and warning about potential litigation.”
Globetrotter Software, Inc. v. Elan Computer Group, Inc.,
. 180s relies heavily on
Melea
in its
Noar-Pennington
argument. While the facts of
Me-lea,
a patent infringement case, are somewhat similar to those of the present case,
Melea
is not controlling here. In
Melea,
the defendant’s counterclaim for intentional interference with business relations was based on letters sent by the plaintiff to the defendant's customers alerting them that several of their automotive components "appear to exhibit characteristics consistent" with the plaintiffs patent.