Optical Alignment v. Alignment Servs. CV-95-94-JD 08/08/95 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
Optical Alignment Systems And Inspection Services, Inc.
v. Civil No. 95-094-JD
Alignment Services of North America, Inc., et al.
O R D E R
The plaintiff. Optical Alignment Systems and Inspection
Services, Inc. ("OASIS")a brings this action against Alignment
Systems of North America, Inc. ("NAAS"); Zane Blanchard and Co.
("ZBC"); and Timothy MacDonald and Paul Dallaire, current NAAS
employees and former OASIS employees. The plaintiff alleges
claims of (1) misappropriation of a trade secret in violation of
N.H. Rev. Stat. Ann. ("RSA") § 350-B and New Hampshire common law
by NAAS, MacDonald, and Dallaire; (2) breach of a confidential
relationship by MacDonald and Dallaire; (3) breach of contract by
MacDonald; (4) wrongful interference with contractual relations
by NAAS and Dallaire; (5) trademark infringement in violation of
15 U.S.C. § 1114, RSA § 350-A:ll, and Section 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a), by NAAS and ZBC; (6) unfair competition by NAAS and ZBC; and (7) interference with economic advantage by
NAAS and ZBC.1
Before the court is the plaintiff's motion to remand
(document n o . 8).
Background
The following facts are alleged by the plaintiff in its
petition for temporary and permanent injunction ("complaint") and
are presumed true for the purpose of the instant motion. NAAS is
a competitor of OASIS in the field of optical alignment services.
In this industry, competitors submit bids to potential customers.
NAAS and Dallaire hired MacDonald, then an OASIS employee, with
the intent and purpose of misappropriating the plaintiff's trade
secret, a computer-based pricing formula used in the formulation
of bids presented to potential customers, in violation of RSA §
350-B and New Hampshire common law. Divulgence of the trade
secret breached the employee secrecy agreement between OASIS and
MacDonald. Additionally, ZBC, acting as an agent of NAAS,
advertised services using a trademark similar to that of the
plaintiff, in violation of 15 U.S.C. § 1114, RSA § 350-A:ll, and
the Lanham Act's proscription of false designations of origin and
1The plaintiff's Petition for Temporary and Permanent Injunction is not entirely clear as to which claims apply to which defendants.
2 false descriptions, 15 U.S.C. § 1125(a). The plaintiff also
contends that the use of the trademark and pricing formula
constitutes unfair competition under New Hampshire common law.
Plaintiff initiated the action by writ filed in New
Hampshire state court on January 20, 1995. The defendants
removed the action to this court on February 22, 1995, basing the
court's jurisdiction on the existence of a federal guestion as
provided by 28 U.S.C. § 1331. The instant motion to remand
followed.
Discussion
The plaintiff does not dispute that the court has the
statutory authority to exercise jurisdiction over the entire
case. See Complaint at 5 8.2 The plaintiff concedes that the
court has original jurisdiction over the trademark infringement
claim against ZBC because it "implicates a violation of 15 U.S.C.
§ 1114, et seg. and Section 43(a) of the Lanham Act, 15 U.S.C. §
2The plaintiff asserts that the removal of this action is based on the "separate and independent" claim provision of the removal statute, 28 U.S.C. § 1441(c), while the defendants assert that removal is appropriate based on the "arising under" provision of the removal statute, 28 U.S.C. § 1441(b), and the congressional grant of supplemental jurisdiction to the district courts, 28 U.S.C. § 1367(a). However, the court need not determine the proper basis for removal because neither party disputes the power of the court to hear the state law claims and because the discretionary factors in § 1367(c) encompass the discretionary factor in § 1441 (c) .
3 1125(a), causing the claim to become a federal question under 28
U.S.C. 1331 [sic]." Motion to Remand at 1. However, the
plaintiff asks the court to exercise its discretion to remand the
case to state court. Motion to remand at 5 8.3
Even if removal is statutorily sufficient, the court has
discretion to remand the case under certain circumstances.
Pueblo Int'l Inc. v. DeCardona, 725 F.2d 823, 825 (1st Cir.
1984). In United Mine Workers v. Gibbs, the Supreme Court held
that:
a federal court should consider and weigh in each case, and at every stage of the litigation, the values of judicial economy, convenience, fairness, and comity in order to decide whether to exercise jurisdiction over a case brought in that court involving pendent state-law claims.
Carnegie-Mellon University v. Cohill, 484 U.S. 343, 350 (1988)
(citing Gibbs, 383 U.S. at 726-27) . In 1990, Congress codified
the Gibbs factors at 28 U.S.C. § 1367(c). Section 1367(c)
provides:
31he plaintiff also argues that the case should be remanded because the trademark infringement claim could be adequately adjudicated solely by application of New Hampshire state law. Motion to Remand at 2. The argument fails because, "[a]s the master of his claim," the plaintiff's own decision to incorporate federal claims in the complaint "opened the door for [the defendants] to remove the case to the federal court." Ching v. Mitre Corp., 921 F.2d 11, 14 (1st Cir. 1990); see D 'Allesandro, slip op. at 4.
4 (c) The district courts may decline to exercise supplemental jurisdiction over a claim under subsection (a) if- (1) the claim raises a novel or complex issue of State law, (2 ) the claim substantially predominates over the claim or claims over which the district court has original jurisdiction, (3 ) the district court has dismissed all claims over which it has original jurisdiction, or (4 ) in exceptional circumstances, there are other compelling reasons for declining jurisdiction.
28 U.S.C. § 1367(c) .
The court finds that it is not appropriate to remand this
action. First, the plaintiff's claims of misappropriation of a
trade secret, breach of a confidential relationship, breach of
contract, wrongful interference with contract, trademark
Free access — add to your briefcase to read the full text and ask questions with AI
Optical Alignment v. Alignment Servs. CV-95-94-JD 08/08/95 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE
Optical Alignment Systems And Inspection Services, Inc.
v. Civil No. 95-094-JD
Alignment Services of North America, Inc., et al.
O R D E R
The plaintiff. Optical Alignment Systems and Inspection
Services, Inc. ("OASIS")a brings this action against Alignment
Systems of North America, Inc. ("NAAS"); Zane Blanchard and Co.
("ZBC"); and Timothy MacDonald and Paul Dallaire, current NAAS
employees and former OASIS employees. The plaintiff alleges
claims of (1) misappropriation of a trade secret in violation of
N.H. Rev. Stat. Ann. ("RSA") § 350-B and New Hampshire common law
by NAAS, MacDonald, and Dallaire; (2) breach of a confidential
relationship by MacDonald and Dallaire; (3) breach of contract by
MacDonald; (4) wrongful interference with contractual relations
by NAAS and Dallaire; (5) trademark infringement in violation of
15 U.S.C. § 1114, RSA § 350-A:ll, and Section 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a), by NAAS and ZBC; (6) unfair competition by NAAS and ZBC; and (7) interference with economic advantage by
NAAS and ZBC.1
Before the court is the plaintiff's motion to remand
(document n o . 8).
Background
The following facts are alleged by the plaintiff in its
petition for temporary and permanent injunction ("complaint") and
are presumed true for the purpose of the instant motion. NAAS is
a competitor of OASIS in the field of optical alignment services.
In this industry, competitors submit bids to potential customers.
NAAS and Dallaire hired MacDonald, then an OASIS employee, with
the intent and purpose of misappropriating the plaintiff's trade
secret, a computer-based pricing formula used in the formulation
of bids presented to potential customers, in violation of RSA §
350-B and New Hampshire common law. Divulgence of the trade
secret breached the employee secrecy agreement between OASIS and
MacDonald. Additionally, ZBC, acting as an agent of NAAS,
advertised services using a trademark similar to that of the
plaintiff, in violation of 15 U.S.C. § 1114, RSA § 350-A:ll, and
the Lanham Act's proscription of false designations of origin and
1The plaintiff's Petition for Temporary and Permanent Injunction is not entirely clear as to which claims apply to which defendants.
2 false descriptions, 15 U.S.C. § 1125(a). The plaintiff also
contends that the use of the trademark and pricing formula
constitutes unfair competition under New Hampshire common law.
Plaintiff initiated the action by writ filed in New
Hampshire state court on January 20, 1995. The defendants
removed the action to this court on February 22, 1995, basing the
court's jurisdiction on the existence of a federal guestion as
provided by 28 U.S.C. § 1331. The instant motion to remand
followed.
Discussion
The plaintiff does not dispute that the court has the
statutory authority to exercise jurisdiction over the entire
case. See Complaint at 5 8.2 The plaintiff concedes that the
court has original jurisdiction over the trademark infringement
claim against ZBC because it "implicates a violation of 15 U.S.C.
§ 1114, et seg. and Section 43(a) of the Lanham Act, 15 U.S.C. §
2The plaintiff asserts that the removal of this action is based on the "separate and independent" claim provision of the removal statute, 28 U.S.C. § 1441(c), while the defendants assert that removal is appropriate based on the "arising under" provision of the removal statute, 28 U.S.C. § 1441(b), and the congressional grant of supplemental jurisdiction to the district courts, 28 U.S.C. § 1367(a). However, the court need not determine the proper basis for removal because neither party disputes the power of the court to hear the state law claims and because the discretionary factors in § 1367(c) encompass the discretionary factor in § 1441 (c) .
3 1125(a), causing the claim to become a federal question under 28
U.S.C. 1331 [sic]." Motion to Remand at 1. However, the
plaintiff asks the court to exercise its discretion to remand the
case to state court. Motion to remand at 5 8.3
Even if removal is statutorily sufficient, the court has
discretion to remand the case under certain circumstances.
Pueblo Int'l Inc. v. DeCardona, 725 F.2d 823, 825 (1st Cir.
1984). In United Mine Workers v. Gibbs, the Supreme Court held
that:
a federal court should consider and weigh in each case, and at every stage of the litigation, the values of judicial economy, convenience, fairness, and comity in order to decide whether to exercise jurisdiction over a case brought in that court involving pendent state-law claims.
Carnegie-Mellon University v. Cohill, 484 U.S. 343, 350 (1988)
(citing Gibbs, 383 U.S. at 726-27) . In 1990, Congress codified
the Gibbs factors at 28 U.S.C. § 1367(c). Section 1367(c)
provides:
31he plaintiff also argues that the case should be remanded because the trademark infringement claim could be adequately adjudicated solely by application of New Hampshire state law. Motion to Remand at 2. The argument fails because, "[a]s the master of his claim," the plaintiff's own decision to incorporate federal claims in the complaint "opened the door for [the defendants] to remove the case to the federal court." Ching v. Mitre Corp., 921 F.2d 11, 14 (1st Cir. 1990); see D 'Allesandro, slip op. at 4.
4 (c) The district courts may decline to exercise supplemental jurisdiction over a claim under subsection (a) if- (1) the claim raises a novel or complex issue of State law, (2 ) the claim substantially predominates over the claim or claims over which the district court has original jurisdiction, (3 ) the district court has dismissed all claims over which it has original jurisdiction, or (4 ) in exceptional circumstances, there are other compelling reasons for declining jurisdiction.
28 U.S.C. § 1367(c) .
The court finds that it is not appropriate to remand this
action. First, the plaintiff's claims of misappropriation of a
trade secret, breach of a confidential relationship, breach of
contract, wrongful interference with contract, trademark
infringement, unfair competition, and interference with economic
advantage raise neither novel nor complex issues of state law
such that a remand would be justified. See 28 U.S.C. §
1367 (c) (1) .
Second, the state claims do not "substantially predominate"
over the claims in which this court has original jurisdiction.
See 28 U.S.C. § 1367(c)(2). The complaint specifically alleges
federal statutory claims regarding trademark infringement and
false designations of origin and descriptions. Moreover, Section
1338(a) of Title 28 of the United States Code states that "[t]he
district courts shall have original jurisdiction of any civil
5 action asserting a claim of unfair competition when joined with a
substantial and related claim under the copyright, patent, plant
variety protection or trade-mark laws." 28 U.S.C. § 1338(a); see
also Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234
F.2d 538, 543-44 (2nd Cir. 1956) (court has jurisdiction over
unfair competition claim based on state common law where claim
involved trade-mark infringement); ISC-Bunker Ramo Corp. v.
Altech, Inc., 765 F. Supp. 1310, 1328 (N.D. 111. 1990) (court has
jurisdiction over trade secret claim and interference with
contract claim where claim involved copyright infringement);
Harrison Laboratories, Inc. v. House of Barri, Inc., 162 F. Supp.
202, 203 (S.D.N.Y. 1958) (no jurisdiction over state unfair
competition claim where plaintiff did not include federal claim
in complaint). Therefore, the court cannot conclude that the
state claims "substantially predominate" over the federal claims.
Third, the court has not dismissed any of the federal claims
in the plaintiff's action at this point in time. See 28 U.S.C. §
1367 (c) (3) .
Finally, the plaintiff does not assert that there are any
"exceptional circumstances" that compel this court to decline
jurisdiction over the claims. See 28 U.S.C. § 1367(c)(4).
Based on its application of the Gibbs factors as well as
those outlined in 28 U.S.C. § 1367(c), the court concludes that
6 it is not appropriate to remand the state law claims and, as
such, the court will exercise its discretion to hear the entire
case.
Conclusion
For the reasons set forth above, the plaintiff's motion to
remand (document no. 8) is denied.
SO ORDERED.
Joseph A. DiClerico, Jr, Chief Judge August 8, 1995
cc: Stephen J. Tybursky, Esquire Lawrence M. Edelman, Esquire Anthony M. Bonanno, Esquire