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John T. Downey, Respondent-Appellant,


General Foods Corporation, Appellant-Respondent

286 N.E.2d 257, 31 N.Y.2d 56

Date Decided: July 6, 1972


I. The parties' alleged express contract is not enforceable against defendant. (Matarese v. Moore- McCormack Lines, 158 F. 2d 631; Davis v. General Foods Corp., 21 F. Supp. 445; Bristol v. Equitable Life Assur. Soc. of N. Y., 132 N. Y. 264; Grombach Prods. v. Waring, 293 N. Y. 609; Oxenhandler v. Dime Sav. Bank, 33 Misc. 2d 626; Varney v. Ditmars, 217 N. Y. 223; United Press v. New York Press Co., 164 N. Y. 406; Miller v. Schloss, 218 N. Y. 400; Queensboro Farm Prods. v. State of New York, 262 App. 426; Chiapparelli v. Baker, Kellogg & Co., 252 N. Y. 192.)

II. Regardless of whether the Idea Submittal Form is enforceable against defendant, plaintiff's failure to show the existence of a genuine issue of triable fact as to the following complete defenses required dismissal of the complaint: neither element of plaintiff's idea was novel at the time it was submitted; plaintiff's submission played no part in the creation of defendant's product name and concept. (Bristol v. Equitable Life Assur. Soc. of N. Y., 132 N. Y. 264; Grombach Prods. v. Waring, 293 N. Y. 609; Soule v. Bon Ami Co., 201 App. Div. 794, 235 N. Y. 609; Puente v. President & Fellows of Harvard Coll., 149 F. Supp. 33, 248 F. 2d 799, 356 U.S. 947; Oxenhandler v. Dime Sav. Bank, 33 Misc. 2d 626; Shapiro v. Health Ins. Plan of Greater N. Y., 7 N.Y.2d 56; Indig v. Finkelstein, 23 N.Y.2d 728; Hampton v. La Salle Hat Co., 88 F. Supp. 153; Bram v. Dannon Milk Prods., 33 A.D.2d 1010; Santilli v. Philip Morris & Co., 283 F. 2d 6.)

III. The record does not establish the existence of an implied contract. (Miller v. Schloss, 218 N. Y. 400; Grombach Prods. v. Waring, 293 N. Y. 609; Soule v. Bon Ami Co., 201 App. Div. 794, 235 N. Y. 609; Bram v. Dannon Milk Prods., 33 A.D.2d 1010; Educational Sales Programs v. Dreyfus Corp., 65 Misc. 2d 412; O'Brien v. RKO Radio Pictures, 68 F. Supp. 13; Larkin v. Pennsylvania R. R. Co., 125 Misc. 238; Puente v. President & Fellows of Harvard Coll., 248 F. 2d 799; Robbins v. Cooper Assoc., 19 A.D.2d 248, 14 N.Y.2d 913.)

IV. The constitutionally-grounded doctrine of Federal pre-emption bars State law protection for noncopyrightable, public domain material. (Oxenhandler v. Dime Sav. Bank, 33 Misc. 2d 626; Estate of Hemingway v. Random House, 23 N.Y.2d 341; Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225; Compco Corp. v. Day-Brite Light., 376 U.S. 234; Cable Vision v. KUTV, Inc., 335 F. 2d 348, 379 U.S. 989; Columbia Broadcasting System v. DeCosta, 377 F. 2d 315; Lear, Inc. v. Adkins, 395 U.S. 653; Painton & Co. v. Bourns, Inc., 442 F. 2d 216; American Harley Corp. v. Irvin Ind., 27 N.Y.2d 168.)

V. Plaintiff's causes of action pleaded in "negligence", fraud and breach of trust are without support in fact or law. (Brainard v. New York Cent. R. R. Co., 242 N. Y. 125; Desmond v. 20th Century Fox Record Corp., 36 A.D.2d 925; Caloric Corp. v. Chemical Bank & Trust Co., 205 F. 2d 492; Sachs v. Cluett, Peabody & Co., 265 App. Div. 497, 291 N. Y. 772.)


I. There are no real factual issues on plaintiff's motion.

II. The first affirmative defense of Federal pre-emption of this subject matter is not in accordance with law. (Lear, Inc. v. Adkins, 395 U.S. 653; Painton & Co. v. Bourns, Inc., 442 F. 2d 216.)

III. The second affirmative defense that the name was independently created prior to plaintiff's submission cannot be sustained and is irrelevant to the contract.

IV. The third affirmative defense of no consideration cannot be sustained. (Bradkin v. Leverton, 26 N.Y.2d 192; Krisel v. Duran, 258 Supp. 845.)

V. There was an express contract and there is an implied in fact contract. (Robbins v. Cooper Assoc., 14 N.Y.2d 913; Cole v. Phillips H. Lord, Inc., 262 App. Div. 116; Arden v. Freydberg, 9 N.Y.2d 393; Bradkin v. Leverton, 26 N.Y.2d 192.)

VI. There was an unfair appropriation.

VII. Plaintiff had a valid common-law copyright. (Spiselman v. Rabinowitz, 270 App. Div. 548; Estate of Hemingway v. Random House, 23 N.Y.2d 341.)

VIII. Defendant was negligent in or in breach of contract for not properly processing plaintiff's submission and asserts its own negligence as a defense.

IX. Evidence of later independent creation is not relevant to pleaded affirmative defense of prior independent creation.

X. Defendant's motion cannot be granted since its affirmative defense of independent creation presents a fact question. (La Varre v. Warner Bros. Pictures, 282 N. Y. 68; Healey v. Macy & Co., 251 App. Div. 440, 277 N. Y. 681.)


Chief Judge Fuld. Judges Burke, Scileppi, Bergan, Breitel, Jasen and Gibson concur.


The plaintiff, an airline pilot, brought this action against the defendant General Foods Corporation to recover damages for the alleged misappropriation of an idea.fn1 It is his claim that he suggested that the defendant's own gelatin product, "Jell-O," be named "Wiggley" or a variation of that word, including "Mr. Wiggle," and that the product be directed towards the children's market; that, although the defendant disclaimed interest in the suggestion, it later offered its product for sale under the name "Mr. Wiggle." The defendant urges -- by way of affirmative defense -- that the plaintiff's "alleged 'product concept and name' was independently created and developed" by it. The plaintiff moved for partial summary judgment "on the question of liability" on 5 of its 14 causes of action and the defendant cross-moved for summary judgment dismissing the complaint. The court at Special Term denied both motions, and the Appellate Division affirmed, granting leave to appeal to this court on a certified question.

The plaintiff relies chiefly on correspondence between himself and the defendant, or, more precisely, on letters over the signature of a Miss Dunham, vice-president in charge of one of its departments. On February 15, 1965, the plaintiff wrote to the defendant, stating that he had an "excellent idea to increase the sale of your product Jell-O . . . making it available for children". Several days later, the defendant sent the plaintiff an "Idea Submittal Form" which included a form letter and a space for explaining the idea.fn2 In that form, the plaintiff suggested, in essence, that the product "be packaged & distributed to children under the name 'wig-l-e' (meaning wiggly or wiggley) or 'wiggle-e' or 'wiggle-eee' or 'wigley.'" He explained that, although his children did not "get especially excited about the Name Jell-O, or wish to eat it", when referred to by that name, "the kids really took to it fast" when his wife "called it 'wiggle-y,'" noting that they then "[associated] the name to the 'wiggle-ing' dessert." Although this is the only recorded proof of his idea, the plaintiff maintains that he sent Miss Dunham two handwritten letters in which he set forth other variations of "Wiggiley," including "Mr. Wiggley, Wiggle, Wiggle-e."fn3

A letter, dated March 8, 1965, over the signature of Miss Dunham, acknowledged the submission of the ISF and informed the plaintiff that it had no interest in promoting his suggestion. However, in July, the defendant introduced into the market a Jell-O product which it called "Mr. Wiggle." The plaintiff instituted the present action some months later. In addition to general denials, the answer contains several affirmative defenses, one of which, as indicated above, recites that the defendant independently created the product's concept and name before the plaintiff's submission to it.

In support of its position, the defendant pointed to depositions taken by the plaintiff from its employees and from employees of Young & Rubicam, the firm which did its advertising. From these it appears that the defendant first began work on a children's gelatin product in May, 1965 -- three months after the plaintiff had submitted his suggestion -- in response to a threat by Pillsbury Company to enter the children's market with a product named "Jiggly." Those employees of the defendant in charge of the project enlisted the aid of Young & Rubicam which, solely on its own initiative, "came up with the name 'Mr. Wiggle'". In point of fact, Miss Dunham swore in her deposition that she had had no knowledge whatever of the plaintiff's idea until late in 1966, shortly before commencement of his suit; that ideas submitted by the general public were kept in a file by an assistant of hers "under lock and key"; and that no one from any other of the defendant's departments ever asked to research those files. The assistant, who had alone handled the correspondence with the plaintiff over Miss Dunham's signature -- reproduced by means of a signature duplicating machine - deposed that she had no contact whatsoever with Young & Rubicam and had never discussed the name "Wiggle" or "Mr. Wiggle" with any one from that firm.

In addition to the depositions of its employees and the employees of its advertising agency, the defendant submitted documentary proof of its prior use of some form of the word "wiggle" in connection with its endeavor to sell Jell-O to children. Thus, it submitted (1) a copy of a report which Young & Rubicam furnished it in June of 1959 proposing "an advertising program directed at children as a means of securing additional sales volume"; (2) a copy of a single dimensional reproduction of a television commercial, prepared in 1959 and used thereafter by the defendant in national and local television broadcasts, which contained the phrase, "all that wiggles is not jell- O"; and (3) a copy of a newspaper advertisement that appeared in 1960, depicting an Indian "squaw" puppet and her "papoose" preparing Jell-O -- the "top favorite in every American tepee" -- and suggesting to mothers that they "[make] a wigglewam of Jell-O for your tribe tonight!"

The critical issue in this case turns on whether the idea suggested by the plaintiff was original or novel. An idea may be a property right. But, when one submits an idea to another, no promise to pay for its use may be implied, and no asserted agreement enforced, if the elements of novelty and originality are absent, since the property right in an idea is based upon these two elements. (See Soule v. Bon Ami Co., 201 App. Div. 794, 796, affd. 235 N. Y. 609; Bram v. Dannon Milk Prods., 33 A.D.2d 1010; Santilli v. Philip Morris & Co., 283 F. 2d 6, 7; Lueddecke v. Chevrolet Motor Co., 70 F. 2d 345; Puente v. President & Fellows of Harvard Coll., 149 F. Supp. 33, 34, affd. 248 F. 2d 799, cert. den. 356 U.S. 947.) The Bram case is illustrative; in reversing Special Term and granting summary judgment dismissing the complaint, the Appellate Division made it clear that, despite the asserted existence of an agreement, the plaintiff could not recover for his idea if it was not original and had been used before (33 A.D.2d, at p. 1010): "The idea submitted by the plaintiff to the defendants, the concept of depicting an infant in a highchair eating and enjoying yogurt, was lacking in novelty and had been utilized by the defendants . . . prior to its submission. Lack of novelty in an idea is fatal to any cause of action for its unlawful use. In the circumstances a question of fact as to whether there existed an oral agreement between the parties would not preclude summary judgment."

In the case before us, the record indisputably establishes, first, that the idea submitted -- use of a word ("wiggley" or "wiggle") descriptive of the most obvious characteristic of Jell-O, with the prefix "Mr." added -- was lacking in novelty and originality and, second, that the defendant had envisaged the idea, indeed had utilized it, years before the plaintiff submitted it. As already noted, it had made use of the word "wiggles" in a 1959 television commercial and the word "wigglewam" in a 1960 newspaper advertisement. It was but natural, then, for the defendant to employ some variation of it to combat Pillsbury's entry into the children's market with its "Jiggly." Having relied on its own previous experience, the defendant was free to make use of "Mr. Wiggle" without being obligated to compensate the plaintiff.

It is only necessary to add that, in light of the complete pretrial disclosure in this case of every one who had any possible connection with the creation of the name, the circumstance, adverted to by the courts below, that the facts surrounding the defendant's development of the name were within the knowledge of the defendant and its advertising agency does not preclude a grant of summary judgment. In the present case, it was shown beyond peradventure that there was no connection between Miss Dunham's department and the defendant's other employees or the employees of the advertising outfit who took part in the creation of "Mr. Wiggle." In exhaustive discovery proceedings -- which included examinations of all parties concerned either with that name or the defendant's idea files -- the plaintiff was furnished with every conceivable item of information in the defendant's possession bearing on the privacy and confidentiality of such files and on the absence of access to them by those outside of Miss Dunham's department. The hope, expressed by the plaintiff that he may be able to prove that the witnesses who gave testimony in examinations before trial lied, is clearly insufficient to create an issue of fact requiring a trial or defeat the defendant's motion for summary judgment. (Cf. Shapiro v. Health Ins. Plan, 7 N.Y.2d 56, 63; Bank for Sav. v. Rellin Constr. Co., 285 N. Y. 708.)

The order appealed from should be reversed, without costs, the question certified answered in the negative and the defendant's motion for summary judgment dismissing the complaint granted.

Order reversed, without costs, and case remitted to Special Term for further proceedings in accordance with the opinion herein. Question certified answered in the negative.


Order reversed, without costs, and case remitted to Special Term for further proceedings in accordance with the opinion herein. Question certified answered in the negative.


fn1 Although the complaint's demand was for $34,600,000, that amount was changed, by stipulation, to $2,800,000, representing $200,000 of damages for each of the complaint's 14 causes of action.

fn2 The form letter -- signed and returned by the plaintiff -- recited that "I submit this suggestion with the understanding, which is conclusively evidenced by my use and transmittal to you of this form, that this suggestion is not submitted to you in confidence, that no confidential relationship has been or will be established between us and that the use, if any, to be made of this suggestion by you and the compensation to be paid therefor, if any, if you use it, are matters resting solely in your discretion."

fn3 Neither of these letters was found in the defendant's files, nor did the plaintiff have the originals or exact copies.