|drawing and specimen for plaintiff’s trade dress registration|
You acknowledge that [Pure Power’s] obstacle-confidence courses and related environments, and the marketing thereof, embody and/or reflect inventions, discoveries, concepts, ideas, developments, improvements, methods, processes, know-how, trade secrets, designs, trademarks, … trade dress, textual and graphic material, and a distinctive overall look and feel (collectively, “Intellectual Property”). You agree that all such Intellectual Property, regardless of whether or not it is capable of patent, trademark, trade dress, trade secret or copyright protection, is exclusively owned by [Pure Power]. You shall not, during the course of your employment or any time thereafter, challenge [Pure Power’s] ownership of any Intellectual Property or the validity or enforceability thereof, nor shall you use any Intellectual Property in any competing business, or in any other way without [Pure Power’s] express written permission, during or after your employment with [Pure Power].
The problem is that under New York law, the terms of an agreement have to be “definite and explicit” but this provision was “impermissible vague, indefinite, and overbroad.” There were no durational limits, which meant that even if Pure Power went out of business the employees would be excluded from using the “Intellectual Property.” Further, the employees were not just prohibited from challenging the validity or enforceability of any intellectual property, but “cannot use any Intellectual Property … in any other way”: “It is impossible for the Court to uphold this provision without imposing its own conception of what exactly is meant by the vague and indefinite phrase: ‘in any other way.’”
Moreover, it is not simply the case that, in signing the Employment Agreement, Defendants agreed not to challenge the validity of an existing trademark or patent. Here, the provision applies to Pure Power’s alleged “Intellectual Property,” even if the alleged intellectual property is not “capable of patent, trademark, trade dress, trade secret, or copyright protection,” or even of definitions. This intellectual property provision, however, is vague and indefinite and cannot be said to promote predictable contractual relationships. Permanently barring an employee from challenging an employer’s alleged intellectual property—however vaguely defined—runs contrary to the important interest in permitting full and free competition in the use of ideas which are in reality a part of public domain. Plaintiffs have failed to explain what legitimate business interest they are seeking to protect or promote, through contract, beyond that already covered by state and federal intellectual property law, or why they are entitled to an additional layer of protection substantially restricting Defendants’ freedom to use and incorporate ideas and concepts relating to the United States military—ideas and concepts to which Brenner, of course has no special claim.
There was also a claim for infringement of the registered trade dress (plaintiffs’ facility pictured at top and defendants’ facility immediately above), which you can see had to go nowhere. Although the décor was considered inherently distinctive and nonfunctional, the plaintiff was actually trying to protect her ideas, concepts, and innovations with her infringement claim. But distilled down to just the “look and feel,” the defendants’ facility looked different and there was no likelihood of confusion.
*IIRC, in New York if one is fired any non-compete becomes unenforceable. Hmmmm.
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