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Curcio Webb LLC v. National Benefit Programs Agency, Inc.

United States District Court, S.D. Ohio, Eastern Division
Jan 9, 2006
Case No. C2-03-559 (S.D. Ohio Jan. 9, 2006)

Opinion

Case No. C2-03-559.

January 9, 2006


OPINION AND ORDER


I. INTRODUCTION

This matter is before the Court on cross-motions for summary judgment. On March 14, 2005, Plaintiff, Curcio Webb LLC ("Curcio Webb"), and Defendant, National Benefit Programs, Inc. ("National Benefit"), each filed a motion for summary judgment. For the reasons set forth herein, Plaintiff's Motion for Summary Judgment is GRANTED in part and DENIED in part, and Defendant's Motion for Summary Judgment is GRANTED in part and DENIED in part.

Defendant avers in its answer that its correct name is National Benefit Programs, Inc. and not National Benefit Programs Agency, Inc., the name that Plaintiff, Curcio Webb LLC, provides in its complaint.

II. BACKGROUND A. Facts

Curcio Webb LLC ("Plaintiff" or "Curcio Webb") is an Illinois company and has a place of business in San Francisco, California. Plaintiff is an employee benefits and human resources consultant that specializes in assisting companies in the selection of providers to administer the companies' health, payroll and other employee benefit plans, negotiation of contracts with providers, implementation and management of the companies' benefit plans, and design and selection of technology to manage and monitor benefit plans. Plaintiff creates and prepares what it deems to be a confidential and proprietary Request for Proposal document on behalf of each of its client companies. These Request for Proposal documents help Plaintiff's clients identify and contract with independent providers to administer, among other things, the company's health and welfare benefit services. They also solicit detailed information from various providers and allow Plaintiff's clients to obtain competitive bids from benefits providers to administer the company's benefit services.

In March 2001, Plaintiff prepared and distributed a 28-page Request for Proposal document ("Plaintiff's RFP") on behalf of one of its clients, Worthington Industries, Inc. Plaintiff's RFP was distributed to benefits providers in hard copy and electronic form. A company named SHPS was one of several providers that received Plaintiff's RFP. Plaintiff's name and a legal copyright notice appear at the bottom of each page on Plaintiff's RFP. Also, Plaintiff owns a registered copyright for Plaintiff's RFP.

Plaintiff's RFP contains a "Use of Information" section on page 4 that purports to set forth the confidential and proprietary nature of Plaintiff's RFP and restricts the use of that document. Additionally, on page 2 of Plaintiff's RFP, Curcio Webb includes its contact information, including an e-mail address for one of its principals, Jamie L. Curcio, which is "jcurcio@curciowebb.com."

The "Use of Information" section states, in relevant part:

The work products produced by Curcio Webb for this search are considered proprietary and are fully owned by Curcio Webb, LLC. . . . Providers and their employees are not permitted to use or distribute these work products — even after sanitizing sensitive or [client]-specific information out of them for any purposes other than for this search. The work products in question, most of which are marked with a copyright notice, include this RFP [Request for Proposal] and any other written materials, regardless of format (e.g. hardcopy, electronic, etc.) produced by Curcio Webb.

Compl. Exhibit A at 5.

National Benefit Programs, Inc. ("Defendant" or "National Benefit") is an Ohio corporation that has its principal place of business in Columbus, Ohio. Defendant is also an employee benefits consultant. Defendant assists companies in the selection of providers to administer the companies' health and other employee benefit plans, negotiation of contracts with providers, and implementation and management of company benefit plans. At some point, Defendant received an electronic copy of Plaintiff's RFP from SHPS, one of the benefits providers from which Plaintiff had sought to obtain a competitive bid. In November 2002, using Plaintiff's RFP as a base, Defendant prepared and distributed a 53-page Request for Information document ("Defendant's RFI") on behalf of one of its clients, Caterpillar, Inc. The name, "National Benefit Programs," appears on the bottom of each page of Defendant's RFI. On page 5 of Defendant's RFI, National Benefit includes its contact information, including an e-mail address for one of its principals, Joseph Concheck, which is "JConcheck@NBPGlobal.com."

Upon reviewing Defendant's RFI in electronic form, Jamie Curcio's e-mail address, "jcurcio@curciowebb.com," would appear visible to a user when the user held the cursor over the "JConcheck@NBPGlobal.com" hyperlink. If the user clicked on the hyperlink, a new e-mail message box appeared on the computer screen with Jamie Curcio's e-mail address written in the "To" section. This allowed the user to e-mail Plaintiff directly in response to Defendant's RFI.

B. Procedural History

On June 19, 2003, Plaintiff filed a complaint (the "Complaint") alleging the following claims against Defendant: (1) copyright infringement in violation of 17 U.S.C. § 101 et seq. ("Count I"); (2) false designation of origin in contravention of § 43(a) of the Lanham Act of 1946, (codified as amended at 15 U.S.C. § 1125(a)) ("Count II"); (3) misappropriation of trade secrets under OHIO REV. CODE ANN. § 1333.62 and common law ("Count III"); and (4) unfair competition and misappropriation of proprietary and confidential business information in violation of § 43(a) of the Lanham Act of 1946, (codified as amended at 15 U.S.C. § 1125(a)) and common law ("Count IV"). On September 8, 2003, Defendant filed an answer (the "Answer") to the Complaint, in which it generally denied all of Plaintiff's claims.

On July 9, 2004, Defendant filed a Motion for Judgment on the Pleadings pursuant to Rule 12(c) of the Federal Rules of Civil Procedure. In ruling on that Motion, this Court found that: (1) Plaintiff is not entitled to recover punitive damages in connection with Count I because the law does not permit an award of punitive damages in a statutory copyright infringement action; (2) Plaintiff is not entitled to recover attorney's fees under Count II because Plaintiff failed to allege that Defendant's acts were willful; (3) Plaintiff is not entitled to recover treble damages under Count II because Plaintiff failed to allege that Defendant's acts were willful; (4) Plaintiff stated a valid statutory trade secret misappropriation claim under Count III; and (5) all three of Plaintiff's claims in Count IV were dismissed. Court's Opinion, No. 03-559 (S.D. Ohio Mar. 31, 2005).

The Court found that Plaintiff's common law misappropriation of trade secrets claim was preempted by statute. Opinion and Order for Judgment on the Pleadings ("Court's Opinion"), No. 03-559 at 20 n. 21 (S.D. Ohio Mar. 31, 2005).

The Court found that Plaintiff did not state a valid claim of statutory unfair competition, id. at 29, that Plaintiff's common law theory of unfair competition was preempted by statute, id. at 37, and that Plaintiff failed to plead adequately the elements of common law misappropriation, id. at 38.

On March 14, 2005, Plaintiff and Defendant each filed a motion for summary judgment on liability for all of the remaining claims ("Plaintiff's Motion" and "Defendant's Motion," respectively). On April 7, 2005, Plaintiff filed a Memorandum in Opposition to Defendant's Motion, and Defendant filed a Memorandum in Opposition to Plaintiff's Motion. On April 21, 2005, Plaintiff filed a Reply Memorandum, and Defendant filed a Reply Memorandum. Accordingly, the parties' cross-motions for summary judgment are ripe for adjudication.

III. STANDARD OF REVIEW

Summary judgment is appropriate "[i]f the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law." FED. R. CIV. P. 56(c). The movant has the burden of establishing that there are no genuine issues of material fact, which may be accomplished by demonstrating that the non-moving party lacks evidence to support an essential element of its case. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Barnhart v. Pickrel, Schaeffer Ebeling Co., 12 F.3d 1382, 1388-89 (6th Cir. 1993). In response, the non-moving party must then present "significant probative evidence" to show that "there is [more than] some metaphysical doubt as to the material facts." Moore v. Philip Morris Cos., 8 F.3d 335, 339-40 (6th Cir. 1993) (citations omitted).

In evaluating a motion for summary judgment, the evidence must be viewed in the light most favorable to the non-moving party. Adickes v. S.H. Kress Co., 398 U.S. 144, 157 (1970). The Court also must interpret all reasonable inferences in the non-movant's favor. United States v. Diebold, Inc., 369 U.S. 654, 655 (1962); see also Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000) (stating that the court must draw all reasonable inferences in favor of the non-moving party and must refrain from making credibility determinations or weighing the evidence). The existence of a mere scintilla of evidence in support of the non-moving party's position will not be sufficient; however, there must be evidence from which the jury reasonably could find for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251 (1986); Copeland v. Machulis, 57 F.3d 476, 479 (6th Cir. 1995); see also Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (finding summary judgment appropriate when "the record taken as a whole could not lead a rational trier of fact to find for the non-moving party").

IV. ANALYSIS A. Count I — Copyright Infringement Under 17 U.S.C. § 101 et seq.

Both parties allege that they are entitled to summary judgment on Plaintiff's claim of copyright infringement. To establish a claim of copyright infringement, a plaintiff must prove two elements: (1) ownership of a valid copyright and (2) that the defendant copied protectable elements of the work. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); Lexmark Int'l. v. Static Control Components, Inc., 387 F.3d 522, 534 (6th Cir. 2004); Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir. 2003). The first prong tests the originality and non-functionality of the work, both of which are presumptively established by the plaintiff's copyright registration. Lexmark, 387 F.3d at 534. The second prong "tests whether any copying occurred (a factual matter) and whether the portions of the work copied were entitled to copyright protection (a legal matter)." Id.

At the outset, the Court is aware that "granting summary judgment [in copyright infringement cases], particularly in favor of a defendant, is a practice to be used sparingly, but a court may compare the two works and render a judgment for the defendant on the ground that as a matter of law a trier of fact would not be permitted to find substantial similarity." Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir. 2003) (quoting Wickham v. Knoxville Int'l Energy Exposition, Inc., 739 F.2d 1094, 1097 (6th Cir. 1984) (internal quotations omitted)).

The critical issue before this Court is whether Defendant copied, without permission, portions of Plaintiff's RFP that were entitled to copyright protection. Plaintiff has a valid copyright on Plaintiff's RFP, establishing the first prong of Plaintiff's copyright infringement claim. With respect to the second prong, Defendant admits that it copied portions of Plaintiff's RFP to create Defendant's RFI. Plaintiff never gave Defendant permission to copy any part of Plaintiff's RFP. The only remaining question is whether Defendant copied portions of Plaintiff's RFP that were entitled to copyright protection. Since this question has been expressly designated as a question of law, see Lexmark, 387 F.3d at 534, the Court finds it appropriate to resolve this claim on summary judgment.

See Complt. Ex. C.

Def.s Mem. Opp'n at 2; see also Deposition of Joseph Concheck ("Concheck Dep.") at 37:25-38:4.

1. Plaintiff's Motion

Plaintiff argues that it satisfies both elements of a copyright infringement claim. Plaintiff asserts that it has a registered copyright on Plaintiff's RFP, establishing the first prong of its copyright infringement claim. As for the second prong, Plaintiff claims that Defendant admitted to copying text from Plaintiff's RFP. Having established both prongs of a copyright infringement claim, Plaintiff argues that it should be awarded summary judgment on Count I.

Defendant, while admitting to copying some text, argues that it did not copy any portion of Plaintiff's RFP that was subject to copyright protection. It argues that Plaintiff is precluded from copyright protection on the basis of both the merger doctrine and scenes a faire. Furthermore, National Benefit maintains that Plaintiff's RFP and Defendant's RFI do not contain an "identical selection and arrangement of information." Accordingly, Defendant contends that there is no copyright infringement.

It is well-established in copyright law that not all copying is actionable; rather, "a plaintiff bringing an infringement claim must prove `copying of constituent elements of the work that are original.'" Kohus, 328 F.3d at 853 (quoting Feist, 499 U.S. at 361). The Sixth Circuit recently adopted a two-step approach for determining similarity between works in copyright infringement cases: the first step requires identifying which aspects of the artist's work, if any, are protectible by copyright; the second involves determining whether the allegedly infringing work is "substantially similar" to protectible elements of the artist's work. Kohus, 328 F.3d at 855 (quoting Sturdza v. United Arab Emirates, 281 F.3d 1287 (D.C. Cir. 2002)). In explaining this new approach, the court stated:

(1) The essence of the first step is to filter out the unoriginal, unprotectible elements — elements that were not independently created by the inventor, and that possess no minimal degree of creativity . . .;
(2) Next, in cases that involve a functional object rather than a creative work, it is necessary to eliminate those elements dictated by efficiency [the merger doctrine] . . .;
(3) It is also important to filter out scenes a faire: those elements that follow naturally from the work's theme, rather than from the author's creativity, or elements that are dictated by external factors such as particular business practices . . .; and
(4) Once the unprotectible elements have been filtered out, the second step is to determine whether the allegedly infringing work is substantially similar to the protectible elements of the original. . . .
Kohus, 328 F.3d at 855-56 (citations omitted).

In applying the approach set out in Kohus to the facts of this case, the Court finds that Defendant's RFI is substantially similar to Plaintiff's RFP, at least with respect to the document's selection and arrangement. Notably, the Court does not find that any element of Plaintiff's RFP should be filtered out from copyright protection due to the merger doctrine or scenes a faire. One need only compare the respective tables of contents from Plaintiff's RFP and Defendant's RFI to detect substantial similarity in overall selection and arrangement: both documents begin with an "Introduction," followed by "Key Selection Criteria," an explanation of the "Benefit Plans," "Plan Statistics," "Scope of Services," and a "Questionnaire." These similarities are too suspicious to overlook.

This issue will be more thoroughly discussed in the Court's analysis of Defendant's Motion on Count I.

In Defendant's RFI, see Complt. Ex. B. at Table of Contents, this section is labeled "Description of Services," but Defendant even acknowledges that this difference is negligible. Def.'s Mem Opp'n at 5 n. 5 ("Of course, the Scope of Services section in [Plaintiff's] RFP is very similar to the Description of Services in [Defendant's] RFI").

Compare Complt. Ex. A (Plaintiff's RFP) at Table of Contents and Complt. Ex. B (Defendant's RFI) at Table of Contents.

Particularly concerning to the Court is the similarity between the content in Plaintiff's RFP's "Scope of Services" section and Defendant's RFI's "Description of Services" section. There, Defendant adopted Plaintiff's grid, not to mention nearly all of its text, wholesale. The Court is hard-pressed to conceive of a more blatant manifestation of copyright infringement. Defendant's use of the material in its "Description of Services" section alone, without first receiving permission from Plaintiff, is impermissible under copyright law.

Furthermore, the Court is not persuaded by National Benefit's argument that since Defendant's RFI is longer than Plaintiff's RFP, there is no substantial similarity between the documents. "Where there is literal similarity (though not necessarily, completely word for word) between plaintiff's and defendant's works," substantial similarity is not difficult to prove. In comparing two documents for infringement, the Court looks to two criteria to identify similarity: (1) how closely the second author tracked the first author's particular language and structure of presentation; and (2) how much of the first author's language and structure has the second author appropriated. Here, as to the first criterion, there are multiple examples of Defendant incorporating entire paragraphs from Plaintiff's RFP without change. Comparing the two documents' "Table of Contents," as discussed above, reveals how closely Defendant tracked the structure of presentation in Plaintiff's RFP. As to the second criterion, a comparison of the two documents shows that the major difference between them is that Defendant's RFI is longer than Plaintiff's RFP, a point which Defendant reiterates throughout its argument. Making minor changes to Plaintiff's RFP and adding twenty-five pages of text, however, does not absolve Defendant from liability for its unlawful copying in the first instance. If the Court were to accept that it did, it would be ruling, in essence, that an infringer could escape liability by making immaterial variations to a copyright-protected work. The Court, of course, does not take that view. Accordingly, Defendant's argument that there is no substantial similarity on the basis of the documents' differing lengths, fails.

4 NIMMER ON COPYRIGHT (2004) § 13.03 [A][2] at 13-53 (citing Eng'g Dynamics, Inc. v. Structural Software, Inc., 46 F.3d 408, 410 (5th Cir. 1995) ("[T]he more exact a duplication of constituent pieces of a work the less overall similarity that may be required")).

Plaintiff cites this inquiry as controlling Supreme Court precedent. Pl.'s Reply Mem. at 5 (citing Harper Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 583 (1985)) (italics in case opinion) ("Second, infringement must be based on a substantial appropriation of literary form. . . . Not surprisingly, the test for infringement has defied precise formulation. In general, though, the inquiry proceeds along two axes. . . .") (Brennan, J., dissenting). While the Court acknowledges that this rule was not part of the majority opinion in that case, it will apply the rule here since no other test has been clearly stated.

Defendant even concedes this point. See Concheck Dep. at 115:20-23 ("several sections of [Defendant's RFI] contain text that's virtually identical to text in [Plaintiff's RFP]").

Plaintiff's RFP is 28 pages long whereas Defendant's RFI is 53 pages long. Compare Complt. Ex. A (Plaintiff's RFP) and Complt. Ex. B (Defendant's RFI).

For the foregoing reasons, Plaintiff's Motion with respect to Count I is GRANTED.

2. Defendant's Motion

Defendant maintains that it is entitled to summary judgment on the copyright infringement claim for three reasons. First, Defendant asserts that Plaintiff's RFP is only copyrightable as a compilation of facts. Second, Defendant alleges that scenes a faire precludes copyright protection for the parts it copied. Third, Defendant argues that the merger doctrine precludes copyright protection for the parts it copied. Each argument will be addressed seriatim.

If, as Defendant asserts, Plaintiff's RFP is merely a compilation of facts, then the RFP is only subject to limited copyright protection. Three elements are required for a work to qualify as a copyright compilation: "(1) the collection and assembly of pre-existing material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination, or arrangement, of an `original' work of authorship." Feist, 499 U.S. at 357; see also 17 U.S.C. § 101. If a work qualifies as a copyrightable factual compilation, it receives only thin copyright protection: "the facts contained in [the] existing work may be freely copied because copyright protects only the elements that owe their origin to the compiler — the selection, coordination and arrangement of facts." Feist, 499 U.S. at 359 (holding that a telephone directory that contains absolutely no protectible written expression, but only facts, "meets the constitutional minimum for copyright protection if it features an original selection or arrangement."). In this case, Plaintiff's RFP does not qualify as a compilation of facts because it is not a collection and assembly of pre-existing material, facts, or data. Plaintiff's RFP is a document that "provides information about the services Curcio Webb's client is seeking to outsource and then requests a broad range of information regarding each potential provider's ability to provide the needed services." The information communicated in Plaintiff's RFP is nothing like the phone book listings at issue in Feist. Since it does to meet the first element of a compilation under copyright law, Plaintiff's RFP is not subject to limited copyright protection, and the regular "substantial similarity" test applies here.

The Court is not persuaded by Defendant's argument that Plaintiff's RFP is analogous to recipes, which have been held to constitute statements of unprotected facts. Def.'s Reply Mem. at 3 (citing Lambing v. Godiva Chocolatier, 142 F.3d 434, 1998 WL 58050, *1 (6th Cir. 1998) ("[I]dentification of ingredients necessary for the preparation of food is a statement of facts.").

Pl.'s Mem. Opp'n at 10. But see Complt. Ex. C.

While the Court does not subject Plaintiff's RFP to the heightened standard of "virtually identical copying" that other circuits apply to factual compilations, see Ets-Hopkins v. Skyy Spirits, 323 F.3d 763, 769 (9th Cir. 2003) ("[Plaintiff] is left with only a `thin' copyright, which protects only against virtually identical copying."); Mitek Holdings, Inc. v. Arce Eng'g Co., 89 F.3d 1548, 1558 (11th Cir. 1996) ("Today, we join the Ninth Circuit in adopting the `bodily appropriation of expression' or `virtual identicality' standard."), it notes that Plaintiff's claim would likely survive even that exacting scrutiny because of the extent to which Defendant copied the language and structure of Plaintiff's RFP.

Second, the Court rejects Defendant's assertion that scenes a faire precludes copyright protection for the portion of Plaintiff's RFP that Defendant copied. In a literary context, "the doctrine means that certain phrases that are standard, stock, or that necessarily follow from a common theme or setting may not obtain copyright protection." Lexmark, 387 F.3d at 535 (citation omitted). Stated another way, scenes a faire refers to "incidents, characters, or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic." 4 NIMMER ON COPYRIGHT (2004) § 13.03 [B][4] at 13-78.6. Generally, "[i]t is inappropriate to grant summary judgment on the basis of scenes a faire without independent evidence, unless the allegation of scenes a faire is uncontested." Swirsky v. Carey, 376 F.3d 841, 850 (9th Cir. 2004) (citation omitted). The doctrine of scenes a faire becomes a valid issue "when external factors constrain the choice of expressive vehicle[.]" Lexmark, 387 F.3d at 535.

Here, Defendant argues that since Curcio Webb developed Plaintiff's RFP in accordance with Plaintiff's view of the "best practices in the marketplace," and since Plaintiff works at the direction of its clients, then Plaintiff's RFPs are based on external factors and are scenes a faire. This Court disagrees. The Court has not identified any industry guidelines or standards that required Defendant's RFI to have the same organization and text as Plaintiff's RFP. In fact, Defendant has not established that there is even a custom within the industry or that such organization and language is advisable. Accordingly, Defendant's argument based upon scenes a faire fails.

Nor has Defendant convinced the Court that the merger doctrine applies with respect to Plaintiff's RFP. In Lexmark, the Sixth Circuit the merger doctrine:

Where the expression is essential to the statement of the idea, or where there is only one way or very few ways of expressing the idea, the idea and expression are said to have merged. In these instances, copyright protection does not exist because granting protection to the expressive component of the work necessarily would extend protection to the work's uncopyrightable ideas as well.
387 F.3d at 535. In this case, when Defendant invokes the merger doctrine with respect to Plaintiff's RFP, its argument falls short. There is nothing explicit or implicit in the process of requesting proposals for administering an entity's health and welfare benefit programs indicating that proposals can only be expressed in a few ways. If that were the case, the proposals from every employee benefits consulting company would look exactly the same. Surely, they do not. There are a variety of methods of eliciting and conveying necessary information in a proposal document to benefits providers. Defendant is not justified in adopting, without permission, the structure and language that Plaintiff uses simply because Plaintiff has been successful using it. Therefore, the merger doctrine is not applicable here.

For the foregoing reasons, Defendant's Motion with respect to Count I is DENIED.

B. Count II — False Designation of Origin Under 15 U.S.C. § 1125(a)

In relevant part, 15 U.S.C. § 1125(a) states:

Any person who, on or in connection with any goods or services, . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damages by such act.

Next, Plaintiff and Defendant each contend that they are entitled to summary judgment under Count II of the Complaint, the false designation of origin claim. A Lanham Act claim for false designation of origin contains two core elements: (1) the false designation must have a substantial economic effect on interstate commerce; and (2) the false designation must create a likelihood of confusion. Johnson v. Jones, 149 F.3d 494, 502 (6th Cir. 1998). "Although the jurisdictional interstate commerce element is necessary, likelihood of confusion is the essence of an unfair competition claim." Id. (citing Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1123 (6th Cir. 1996)).

Plaintiff alleges that it meets both elements of false designation of origin and they are entitled to summary judgment. As to the first element, Plaintiff is an Illinois company with an office in, among other locations, San Francisco, California. The record indicates that Defendant, an Ohio company, distributed Plaintiff's RFP to a number of different benefits providers, including SHPS, which is headquartered in Kentucky. To the extent that any false designation of origin hindered Plaintiff's ability to conduct its interstate consulting business, it affected interstate commerce and the first element of Plaintiff's claim is met.

To the extent Plaintiff argues that it is entitled to prevail here because Defendant took Plaintiff's RFP, repackaged it, and sold it as its own, the Court rejects that argument. As Defendant indicates, Plaintiff's alternative theory for recovery is not properly before the Court because it was not adequately pleaded in the Complaint. Def.'s Mem. Opp'n at 10 n. 33 (citing Bender v. Southland Corp., 749 F.2d 1205, 1215 (6th Cir. 1984)).

Plaintiff argues that it meets the "likelihood of confusion" element because any person reading an electronic version of Defendant's RFI will see a reference to Curcio Webb. When a computer user viewing the electronic version points the cursor at the e-mail address provided for Defendant's President, Joseph Concheck, the user will see a highlighted box providing the e-mail address of a Curcio Webb principal instead. Furthermore, clicking on Joseph Concheck's e-mail address will prompt an email message to be sent to Curcio Webb. Plaintiff contends that this may lead to "a false suggestion of affiliation, connection, or association" between Defendant and Plaintiff.

Defendant, on the other hand, maintains that the inclusion of the Plaintiff's embedded e-mail link on Defendant's RFI was a mere oversight. Defendant claims that Plaintiff has not proved the "likelihood of confusion" element of Count II, and as such, Defendant is entitled to summary judgment. Also, Defendant alleges that Plaintiff, in order to recover monetary damages on its claim in Count II, must meet a heightened standard and show actual consumer confusion. See Shonac Corp. v. Amko Int'l, Inc., 763 F.Supp. 919, 934 (S.D. Ohio 1991). Defendant argues that Plaintiff has not presented any evidence to meet the higher standard; hence, Plaintiff is not entitled to anything more than injunctive relief.

The Court will not address Defendant's argument that Plaintiff's e-mail address does not function as a trademark under Interactive Prods. v. A2Z Mobile Office Solution, 326 F.3d 687 (6th Cir. 2003) and Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002). Both of those cases involve domain names on websites, not e-mail addresses. As such, they are inapplicable.

The Court does not reach this issue since it finds that Plaintiff fails to meet the lower standard of "likelihood of confusion."

The resolution of Count II turns on the outcome of the "likelihood of confusion" element. The question of whether there is a likelihood of confusion is a mixed question of fact and law. Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991). The critical inquiry is "whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way." Id.

In this case, the Court finds that the relevant consumers are the purchasers and potential purchasers of employee benefits consulting services. These companies are more sophisticated with respect to the purchase of the consulting services at issue here than a typical buyer exercising ordinary caution. Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 638 (6th Cir. 2002) ("A higher degree of care is appropriate where the buyer in question has a particular expertise or sophistication, or is making an expensive or unusual purchase.") (citing Homeowners, 931 F.2d at 1111). This expectation of greater attention diminishes the likelihood of confusion, and a heightened standard is appropriate. See Homeowners, 931 F.2d at 1111. The mere presence of a Curcio Webb e-mail address, in embedded form on one line of a multi-page document, is insufficient to prove a likelihood of confusion, given the sophistication of the relevant consumer base. That scant evidence, without more, is not enough to convince the Court that a genuine issue of material fact exists. Since Plaintiff cannot provide sufficient evidence to prove an essential element of their claim of false designation of origin, Plaintiff's Motion as to Count II is DENIED, and Defendant's Motion as to Count II is GRANTED.

C. Count III — Misappropriation of Trade Secrets Under OHIO REV. CODE § 1333.61 et seq.

Finally, Curcio Webb and National Benefit each argue that the Court should grant them summary judgment on Plaintiff's claim of misappropriation of trade secrets. According to the definition provided in the Uniform Trade Secrets Act,

`Trade secret' means information, including the whole or any portion or phase of any scientific or technical information, design, process, procedure, formula, pattern, compilation, program, device, method, technique, or improvement, or any business information or plans, financial information, or listing of names, addresses, or telephone numbers, that satisfies both of the following:
(1) It derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use.
(2) It is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

OHIO REV. CODE § 1333.61(D). This court has held that "there is no specific subject matter criterion for a trade secret. As long as the definitional elements are met, virtually any type of information can be a trade secret." Hoffman-La Roche Inc. v. Yoder, 950 F.Supp. 1348, 1357 (S.D. Ohio 1997). Ohio courts, when deciding whether a trade secret exists, focus on two major requirements: "the extent to which information is known outside the business and the precautions taken to guard against the secrecy of the information." Id. at 1357-58 (citations omitted). Significantly, under Ohio law, "[t]he question of whether a particular knowledge or process is a trade secret is a question of fact to be determined by the trier of fact upon the greater weight of the evidence." Id. at 1357; Hoover Transp. Servs. v. Frye, 2002 WL 31409888, at *7 (S.D. Ohio 2002) (Marbley, J.) (quoting Valco Cincinnati, Inc. v. ND Machining Serv., 492 N.E.2d 814, 819 (Ohio 1986)).

After a court finds that information is subject to trade secret protection, it must decide whether the protected information has been misappropriated. "Misappropriation," under the Ohio statute, is defined as, among other things:

. . . use of a trade secret of another without the express or implied consent of the other person by a person who . . . [a]t the time of disclosure or use, knew or had reason to know that the knowledge of the trade secret that the person acquired . . . was derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use[.]

OHIO REV. CODE § 1333.61(B).

Plaintiff asserts it has demonstrated that Plaintiff's RFP is a "trade secret" under Ohio law. More specifically, Plaintiff maintains that Plaintiff's RFP had independent economic value because it reflected Plaintiff's knowledge about, and experience with, the health and welfare benefit administration industry that other consultants did not have. This knowledge, Plaintiff contends, gave Curcio Webb an advantage over less-experienced competitors. To maintain the secrecy of Plaintiff's RFP, Curcio Webb states that it did not share Plaintiff's RFP with any party outside of its client, Worthington Industries, Inc., and potential benefits providers. Plaintiff also notes that it included a copyright notice on each page of Plaintiff's RFP. Furthermore, Plaintiff argues it included language in Plaintiff's RFP that effectively forms a unilateral contract between Plaintiff and each of the various benefits providers who received the document. That contract prohibits a provider from disclosing the contents of the document for any reason.

Plaintiff's RFP provides:

This RFP is not intended to constitute an offer or binding agreement to negotiate or consummate a contract between [client] and any provider relating to the services proposed, nor is it an agreement to enter into a binding agreement and should not be regarded as imposing any obligation or liability on [client]. Any legal obligations between the parties shall be noted in an executed contract. [Client] reserves the right to refuse any offer made to it, at its sole discretion.
By submitting a proposal, a provider is agreeing to be bound by the terms and conditions, specifications, and provisions stated herein, including those in the appendices attached hereto. In the event of conflict between the terms and conditions in the provider's proposal and those contained in this RFP, the terms and conditions of the RFP shall control.

Complt. Ex. A at 4. The document further states, "Providers and their employees are not permitted to use or distribute these work products — even after sanitizing sensitive or [client]-specific information out of them — for any purposes other than for this search." Id. at 5.
Plaintiff claims that the above-cited provisions in Plaintiff's RFP contractually bind providers that submit proposals, including SHPS, the benefits provider that sent Plaintiff's RFP to Defendant, to keep Plaintiff's RFP confidential.

Defendant counters that Plaintiff has not shown the Court that Plaintiff's RFP is a trade secret. Defendant argues that Plaintiff has presented no evidence that Plaintiff's RFP provided Plaintiff any economic advantage from its alleged secret nature. Additionally, Defendant points to the absence of a confidentiality agreement between Plaintiff and SHPS to indicate that Plaintiff did not take reasonable steps to maintain the secrecy of Plaintiff's RFP. Therefore, according to Defendant, Plaintiff is not entitled to summary judgment on Count III, and National Benefit is.

The Court has already considered, and rejected, Defendant's theory that since Curcio Webb attached Plaintiff's RFP to the Complaint, it is in the public domain and should not be afforded trade secret status. Court's Opinion, No. 03-559 at 20 n. 21 (S.D. Ohio Mar. 31, 2005). Using the same analysis, the Court now rejects Defendant's argument that Plaintiff's RFP should not be afforded trade secret status because Plaintiff attached an unredacted version of Plaintiff's RFP in its copyright application to the U.S. Copyright office. Plaintiff filed its copyright application more than a year after Defendant's alleged misappropriation.

Summary judgment, for either of the moving parties, is not appropriate here. "Where information is alleged to be a trade secret, a factfinder may consider, e.g., the amount of effort or money expended in obtaining and developing the information, as well as the amount of time and expense it would take for others to acquire and duplicate the information." Fred Siegel Co., L.P.A. v. Arter Hadden, 707 N.E.2d 853, 862-63 (Ohio 1999) (citing State ex rel. The Plain Dealer v. Ohio Dept. of Ins., 687 N.E.2d 661, 672 (Ohio 1997)). Here, Plaintiff asserts that it derived independent economic value from Plaintiff's RFP, but Plaintiff has not produced sufficient evidence at the summary judgment phase to prove that fact successfully. Also, the Court has identified a factual issue as to whether Plaintiff made reasonable efforts to maintain the secrecy of Plaintiff's RFP. The question of whether the provisions in Plaintiff's RFP, and specifically the language restricting a provider's use and disclosure of the document, constitute a valid unilateral contract is as yet unresolved. Since genuine issues of material fact remain as to whether Plaintiff's RFP meets the statutory definition of a trade secret, both parties are precluded from a grant of summary judgment with respect to Count III. Accordingly, Plaintiff's Motion at to Count III is DENIED and Defendant's Motion as to Count III is DENIED.

As the Court has not found that Plaintiff's RFP is a "trade secret," is does not reach the issue of misappropriation.

V. CONCLUSION

For the foregoing reasons, Plaintiff's Motion is GRANTED with respect to Count I (copyright infringement), but DENIED with respect to Counts II (false designation of origin) and III (misappropriation of trade secrets). Defendant's Motion is GRANTED with respect to Count II (false designation of origin), but DENIED with respect to Count I (copyright infringement) and Count III (misappropriation of trade secrets).

IT IS SO ORDERED.


Summaries of

Curcio Webb LLC v. National Benefit Programs Agency, Inc.

United States District Court, S.D. Ohio, Eastern Division
Jan 9, 2006
Case No. C2-03-559 (S.D. Ohio Jan. 9, 2006)
Case details for

Curcio Webb LLC v. National Benefit Programs Agency, Inc.

Case Details

Full title:CURCIO WEBB LLC, Plaintiff, v. NATIONAL BENEFIT PROGRAMS AGENCY, INC.…

Court:United States District Court, S.D. Ohio, Eastern Division

Date published: Jan 9, 2006

Citations

Case No. C2-03-559 (S.D. Ohio Jan. 9, 2006)