Nаnomedicon, LLC, Respondent, v Research Foundation of State University of New York, Defendant, and Pelagia-Irene Gouma, Defendant and Third-Party Plaintiff-Appellant-Respondent. Medicon, Inc., Third-Party Defendant-Respondent-Appellant; Anastasia Rigas, Third-Party Defendant-Respondent.
Supreme Court, Appellate Division, Second Department, New York
December 11, 2013
112 A.D.3d 594 | 976 N.Y.S.2d 191
Prior Case History: 2012 NY Slip Op 30604(U)
The defendant Research Foundation of State University of New York (hereinafter Research Foundation) established, prima facie, that the plaintiff materially breached its licensing agreement with Research Foundation by failing to procure the requisite insurance (see JT Queens Carwash, Inc. v 88-16 N. Blvd., LLC, 101 AD3d 1089, 1090 [2012]; WILJEFF, LLC v United Realty Mgt. Corp., 82 AD3d 1616, 1617-1618 [2011]; 166 Enters. Corp. v I G Second Generation Partners, L.P., 81 AD3d 154, 158 [2011]; Kyung Sik Kim v Idylwood, N.Y., LLC, 66 AD3d 528, 529 [2009]; Brainerd Mfg. Co. v Dewey Garden Lanes, 78 AD2d 365, 367 [1981]). The plаintiff failed to raise a triable issue of fact in opposition (see Newfield v General Motors Corp., 84 AD2d 548, 549 [1981], affd 56 NY2d 818 [1982]). Contrary to the plaintiff‘s contention, it was required to obtain insurance when it entered into the licensing agreement in November 2007. In any event, еven assuming that the plaintiff was not required to obtain insurance until June 1, 2010, as it claims, there is no dispute that after Research Foundation issued a June 24, 2010, notice of intent to terminate the licensing agreement based, intеr alia, on the plaintiff‘s failure to procure insurance, the plaintiff failed to obtain the mandated insurance within the 60-day cure period.
In light of the fact that the plaintiff committed a material breach, the Supreme Court erred in denying those branches of Research Foundation‘s motion which were for summary judgment dismissing the first, second, third, and fifth causes of action. Those causes of action include allegations that Research Foundation breached the licensing agreement, whereas the plaintiff did not. The plaintiff, however, is entitled to recovery only if it substantially performed under the terms of the licensing agreement (seе Hadden v Consolidated Edison Co. of N.Y., 34 NY2d 88, 96 [1974]; Miller v Benjamin, 142 NY 613, 617 [1894]; Kaye v Greenspan, 118 AD2d 831, 832 [1986]). Since the plaintiff materially breached the licensing agreement, it cannot establish substantial performance.
The plaintiff‘s remaining contentions are without merit.
Mastro, J.P., Angiolillo, Leventhal and Chambers, JJ., concur.
[976 NYS2d 191]
Ordered that the order is affirmed insofar as appealed from; and it is further,
Ordered that the order is reversed insofar as cross-appealed from, on the law, and that branch of the motion of the third-party defendant Medicon, Inc., which was pursuant to
Ordered that one bill of costs is awarded to the plaintiff and the third-party defendants appearing separately and filing separate briefs.
This appeal centers around various inventions of the defendant and third-party plaintiff, Pelagia-Irene Gouma, a faculty member of the State University of New York (hereinafter SUNY) at Stony Brook. Pursuant to
Nanomedicon commenced this action, inter alia, to recover damages for breach of contract, against Research Foundation and Gouma, and Gouma commenced a third-party action against Medicon and Anastasia Rigas, a Nanomedicon officer and employee.
Gouma contends that Medicon, Nanomedicon, and Rigas engaged in fraud, tortious interference with prospective economic advantage, and conversion in their efforts to benefit from her inventions, and were unjustly enriched by her inventions. Gоuma further alleges that Nanomedicon breached a confidentiality agreement pertaining to her inventions, and also seeks two declaratory judgments in connection with her inventions.
Nanomedicon аnd Rigas moved, and Medicon separately moved, to dismiss all of the counterclaims/causes of action in the third-party complaint insofar as asserted against each of them, and the Supreme Court grаnted their respective motions, with the exception of those branches of the motions which were to dismiss the counterclaim/cause of action alleging fraud. Gouma appeals from so much of thе order as granted those branches of the motions which were to dismiss six of her seven counterclaims/causes of action, while Medicon cross-appeals from so much of the Supreme Court‘s order аs denied that branch of its motion which was to dismiss Gouma‘s fraud counterclaim/cause of action insofar as asserted against it.
The Supreme Court properly granted those branches of the motions which were to dismiss Gouma‘s counterclaim/cause of action for a judgment declaring the licensing agreement null and void on the ground that Gouma lacked standing because she was not a party to, or third-party beneficiary of, the licensing agreement. “A party asserting rights as a third-party beneficiary must establish ‘(1) the existence of a valid and binding contract between other parties, (2) that the contract was intended for [her] benеfit and (3) that the benefit to [her] is sufficiently immediate, rather than incidental, to indicate the assumption by the contracting parties of a duty to compensate [her] if the benefit is lost‘” (State of Cal. Pub. Employees’ Retirement Sys. v Shearman & Sterling, 95 NY2d 427, 434-435 [2000], quoting Burns Jackson Miller Summit & Spitzer v Lindner, 59 NY2d 314, 336 [1983]). Gouma, who is not a party to thе licensing agreement, failed to allege that she is an intended third-party beneficiary of that agreement (see Superior Ice Rink, Inc. v Nescon Contr. Corp., 40 AD3d 963, 965 [2007];
For the same reasons, the Supreme Court also properly granted that branch of the motion of Nanomedicon and Rigas which was to dismiss Gouma‘s counterclaim/cause of action alleging breach of a confidentiality agrеement, asserted against only Nanomedicon. Gouma is not a party to the confidentiality agreement, she did not allege third-party beneficiary status with respect to that agreement, and, in any event, she cannot establish such status with respect to that agreement.
The Supreme Court properly granted those branches of the motions which were to dismiss Gouma‘s counterclaim/cause of action for a judgmеnt declaring that she owned certain inventions and that various individuals did not contribute to her inventions. Gouma lacks standing to seek any declarations regarding ownership of inventions that are the subject of the licensing agreement. As earlier noted, pursuant to SUNY‘s patents and inventions policy, Gouma assigned to SUNY her rights to the relevant inventions. To the extent that the Research Foundation returned to Gouma her rights to any of her inventions, no actual controversy exists as to ownership, and thus no declaration on that subject is warranted (see American Ins. Assn. v Chu, 64 NY2d 379, 383 [1985], cert denied 474 US 803 [1985]; Matter of Guild of Administrative Officers of Suffolk County Community Coll. v County of Suffolk, 126 AD2d 725, 728 [1987]).
Thе Supreme Court correctly determined that dismissal of Gouma‘s counterclaims/causes of action alleging tortious interference with prospective economic advantage (see Carvel Corp. v Noonan, 3 NY3d 182, 192 [2004]; Ferrandino & Son, Inc. v Wheaton Bldrs., Inc., LLC, 82 AD3d 1035, 1036 [2011]), conversion and/or misappropriation (see R.U.M.C. Realty Corp. v JCF Assoc., LLC, 51 AD3d 993, 995 [2008]; Barker v NYNEX Corp., 305 AD2d 233, 234 [2003]), and unjust enrichment (see Mandarin Trading Ltd. v Wildenstein, 16 NY3d 173, 182 [2011]; State of New York v Barclays Bank of N.Y., 76 NY2d 533, 540-541 [1990]; Edelman v Starwood Capital Group, LLC, 70 AD3d 246, 250 [2009]; Old Republic Natl. Tit. Ins. Co. v Cardinal Abstract Corp., 14 AD3d 678, 680 [2005]; see also Chou v University of Chicago, 254 F3d 1347, 1363-1364 [2001]) was warrаnted due to Gouma‘s failure to state a cause of action.
However, the Supreme Court erred in denying that branch of Medicon‘s motion pursuant to
In light of our determination, we need not address Gouma‘s remaining contentions.
Mastro, J.P., Angiolillo, Leventhal and Chambers, JJ., concur.