                             CORRECTED OPINION

                                UNPUBLISHED

                    UNITED STATES COURT OF APPEALS
                        FOR THE FOURTH CIRCUIT


                                No. 10-1435


HILL HOLLIDAY      CONNORS     COSMOPULOS,    INCORPORATED,    d/b/a
Erwin-Penland,

                  Plaintiff - Appellee,

           v.

JEFFREY GREENFIELD; 1ST APPROACH LLC,

                  Defendants and Third-Party Plaintiffs -
                  Appellants,

           v.

CELLCO PARTNERSHIP, d/b/a Verizon Wireless; JOSEPH A. ERWIN,

                  Third-Party Defendants - Appellees.



Appeal from the United States District Court for the District of
South Carolina, at Greenville.    G. Ross Anderson, Jr., Senior
District Judge. (6:08-cv-03980-GRA)


Argued:   March 23, 2011                          Decided:    June 2, 2011

                Corrected Opinion Filed:      July 27, 2011


Before GREGORY, AGEE, and KEENAN, Circuit Judges.


Affirmed by unpublished opinion. Judge Agee wrote the majority
opinion, in which Judge Keenan joined.  Judge Gregory wrote an
opinion dissenting in part.
ARGUED: Jay Stanley Horowitz, HOROWITZ & FORBES, LLP, Denver,
Colorado, for Appellants.    Brenda R. Sharton, GOODWIN│PROCTER,
Boston, Massachusetts, for Appellees. ON BRIEF: Phillip Jeffrey
North, THE LAW OFFICE OF P. JEFFREY NORTH LLC, Hilton Head
Island, South Carolina, for Appellants. Stacey B. Ardini, Kunal
Pasricha, GOODWIN│PROCTER, Boston, Massachusetts, William F.
Sheehan, GOODWIN│PROCTER, Washington, D.C., Bernie W. Ellis,
Rita M. McKinney, MCNAIR LAW FIRM, P.A., Greenville, South
Carolina, for Appellees Hill Holliday Connors Cosmopulos,
Incorporated, d/b/a Erwin-Penland, and Joseph A. Erwin; Robert
A. Muckenfuss, David M. Chromy, Elizabeth M. Z. Timmermans,
MCGUIREWOODS LLP, Charlotte, North Carolina, for Appellee Cellco
Partnership, d/b/a Verizon Wireless.


Unpublished opinions are not binding precedent in this circuit.




                                2
AGEE, Circuit Judge:

     Jeffrey Greenfield collaborated with Erwin-Penland, a South

Carolina   advertising          agency,     on     a    marketing     plan   aimed   at

securing   a    contract      with    the       Captain    D’s   restaurant    chain.

Captain D’s declined to implement the proposal, which centered

on the general concept of a gospel choir competition entitled

“How Sweet the Sound.”            Erwin-Penland, however, later convinced

another client, Verizon Wireless, to fund a modified version of

the project, but without the participation of Greenfield or his

company,       1st     Approach       LLC         (collectively        “Greenfield”).

Greenfield      subsequently         demanded          compensation     from    Erwin-

Penland, who responded by filing a declaratory judgment action

in South Carolina state court, seeking a ruling that Greenfield

had no ownership interest in the “How Sweet the Sound” concept.

     Greenfield removed the case to the United States District

Court for the District of South Carolina and instituted various

counterclaims, including a third-party complaint against Verizon

Wireless   and       Joseph   Erwin   —     the    president     of    Erwin-Penland.

The district court concluded that Greenfield had no protected

interest   in    the     “How    Sweet    the      Sound”    project     and   granted

summary judgment in favor of Erwin-Penland and the third-party




                                            3
defendants. 1         Greenfield now challenges that ruling on appeal.

For the reasons stated herein, we affirm the judgment of the

district court.



                                            I.

        Joseph    Erwin      heard   Greenfield         speak      on    the    subject     of

“branded entertainment” at a conference.                     Subsequently, he asked

Greenfield       to    collaborate       with       Erwin-Penland        on    a   marketing

proposal    aimed       at   securing      an    account     with       the    Captain     D’s

restaurant       chain.       Greenfield        accepted     Erwin’s       offer     without

entering into a written agreement establishing the terms of his

relationship with Erwin-Penland.

     After a series of collaborative phone calls and emails,

Greenfield       sent     Erwin-Penland         a    marketing      deck       outlining    a

concept he labeled “‘Amazing Grace’ Captain D’s Branded Reality

Show.”       Joint        Appendix       (“J.A.”)      at    1375.            Erwin-Penland

subsequently changed the name of the proposal to “How Sweet the

Sound.”     Id. at 712, 896.              The “How Sweet the Sound” concept

involved “[t]he top 20 church choirs in the US competing for

over $250,000 in prizes and the title of the Best Choir in the

USA.”      Id.     at    1376.       A    production        team    of     producers       and


     1
       We refer to Verizon Wireless and Joseph Erwin collectively
as the “third-party defendants.”




                                             4
cameramen,       along       with    a    host     “[s]imilar          to   Ryan    Seacrest     on

American Idol,” would “cross the country in [a] 6 week trek of

visiting      EVERY      Captain         D’s    location,”         using      local    media     to

publicize the event.                Id. at 1377.            Once there, the team would

interview local choir members about their “choir and why they

think they are the best in the US.”                        Id.

      Competitions           would       then    take      place       in   Atlanta,      Georgia;

Jackson, Mississippi; Birmingham, Alabama; and Charleston, South

Carolina between the best twenty-five choirs in each region.

Each contest would be featured in a television episode, take

place “in large arenas,” and “have a large panel of celebrity

judges who [would] vote on the best overall performance.”                                        Id.

The winners of the regional competitions would then “be invited

to   attend      [a]   National           competition        in    Nashville,”         Tennessee

featuring      “the      4    best       church       choirs      in    the      country    in    an

authentic     inspirational              contest      to   find    the      #1    Choir    in    the

USA.”      Id.     Winning the national competition would entitle a

choir to “the title of the Best Choir in the USA” and “over

$250,000 in prizes.”            Id. at 1376.

      In   conjunction          with      the     “entertainment”             provided     by    the

gospel choir competition, Greenfield proposed marketing Captain

D’s through three different mediums:                         product placement, radio,

and the internet.              The parties intended that Greenfield would

serve as producer and talent broker for Captain D’s “How Sweet


                                                  5
the     Sound”      project.            Although        Captain    D’s    expressed     some

interest in the proposal, it ultimately declined to adopt the

plan.

        Subsequently,          Greenfield         and     Erwin-Penland        presented   a

similar “How Sweet the Sound” concept to Verizon Wireless, one

of Erwin-Penland’s existing clients.                       Modifications were made to

this proposal to better suit Verizon Wireless’ business model.

For     example,         Greenfield       and     Erwin-Penland         suggested    signing

choirs up for the competition at Verizon Wireless stores and

creating “a CD of the winning choirs” that would be distributed

“through stores and agents.”                    Id. at 1587.

        Although Verizon Wireless also expressed interest in the

“How Sweet the Sound” concept, it had concerns about the plan’s

projected        cost.         Greenfield         and     Erwin-Penland        subsequently

worked to scale back the television component of the project to

a   one-hour        special       or    documentary.         When       Verizon     Wireless’

response       to       this   less-expensive           model     was    not    immediately

forthcoming, Greenfield inquired as to whether Verizon Wireless

was still interested in the concept or whether he was free to

present    it       to    other    clients.           Erwin-Penland        responded    that

Verizon was still considering the scaled-back plan.

        Over    a       year   later,      Erwin-Penland          and    Verizon    Wireless

implemented a limited “How Sweet the Sound” marketing concept by

organizing          a    single        gospel     choir    competition         in   Memphis,


                                                  6
Tennessee.          The project later evolved into a series of gospel

choir competitions orchestrated throughout the nation.                                  In 2009,

the final contest was televised on the Gospel Music Channel and

a     documentary         about       the     series           appeared     on     the      Black

Entertainment           Television          Network      (“BET”).           Although        other

agencies       aided          Erwin-Penland             and      Verizon         Wireless     in

implementing the “How Sweet the Sound” concept, Greenfield was

not asked to assist, and had no part, in executing the plan.



                                               II.

       Greenfield demanded compensation from Erwin-Penland for its

use    of    the       “How   Sweet    the     Sound”         marketing    plan,     which    he

claimed to have originated.                   In response, Erwin-Penland filed a

declaratory         judgment         suit     in       South     Carolina       state     court,

requesting         a     ruling      that     Greenfield          had     “no     co-ownership

interest      or       rights   in    the     marketing         project     ‘How    Sweet    the

Sound.’”      J.A. at 28.            Greenfield removed the case to the United

States District Court for the District of South Carolina based

on the parties’ diverse citizenship.                           See 28 U.S.C. § 1332(a).

He    then    filed       a   first    amended          counterclaim       and     third-party

complaint against Erwin-Penland and the third-party defendants,

which stated numerous claims for, inter alia, fraud, breach of

contract,          misappropriation           of       trade      secrets,        and     unjust

enrichment.


                                                   7
     Erwin-Penland and the third-party defendants subsequently

filed motions for summary judgment as to all of Greenfield’s

claims.      In turn, Greenfield filed a motion for summary judgment

on his unjust enrichment and breach of fiduciary duty claims.

The district court concluded that no genuine issue of material

fact precluded granting judgment as a matter of law to Erwin-

Penland and the third-party defendants.                  Accordingly, the court

granted summary judgment in their favor on all claims and denied

Greenfield’s competing motion for summary judgment.

     First,      the    district     court      concluded     that   “Greenfield’s

purported trade secrets fail[ed] to meet [the] criterion” for

protection      under   the   South      Carolina     Trade   Secrets    Act      (“the

Act”), see S.C. Code Ann. § 39-8-20(5), because his “claimed

trade    secrets   [were]     not    novel      or   protectable,    and,    if   they

were,      Greenfield   failed      to   take    reasonable    steps    to   protect

them.” 2     J.A. at 183.        Thus, “even assuming the existence of

. . . trade secret[s],” id. at 183 n.3, summary judgment was

appropriate “for the independent reason that Greenfield failed

to take reasonable efforts to protect” them.                  Id. at 187.

     Second, the district court rejected Greenfield’s argument

that he had “an oral or implied-in-fact contract” with Erwin-

     2
       Our summary of the district court’s summary judgment
orders focuses solely on the portions relevant to the four
issues Greenfield raises on appeal.




                                           8
Penland that was subject to breach.                     Id. at 189.      Because “[t]he

parties did not discuss, let alone come to an agreement on, the

essential terms of a contract,” the district court concluded “no

reasonable trier of fact could find mutual assent as to any

essential     terms”    of    an   agreement,           given    “either     orally,    in

writing, or implied” in fact.            Id. at 189.

      Indeed,    the    district       court       concluded      that    “[a]   careful

review   of     the    documentary      record          and    deposition    testimony”

established, “at best, that Erwin-Penland and Greenfield . . .

discuss[ed] potential or speculative options for the [“How Sweet

the   Sound”]    concept[].”           Id.         It    was    “undisputed      that   no

proposed options made by Greenfield were ever accepted by Erwin-

Penland.”       Id.    at    189-90.         The    district      court     consequently

determined that Greenfield was unable to “point to any objective

manifestations and expressions by Erwin-Penland that would be

sufficient to establish the existence of a contract.”                             Id. at

190; see also id. (“Mere expectations and one-sided hopes of a

party do not make a contract . . . .”).

      Third, the district court held that Greenfield “failed to

satisfy the elements necessary to support” an unjust enrichment

claim.      Id. at 199.        Greenfield’s “only contribution to” the

“How Sweet the Sound” project “was in conjunction with . . .

speculative pitches . . . to Verizon Wireless and Captain D’s.”

Id. at 200.       As he had no “role in executing and implementing


                                             9
the    . . .       project       . . .    eventually        undertaken     by     Verizon

Wireless”      and      “did     not   contribute    any    trade   secret      or   other

protectable information” to the marketing scheme, the district

court held that Greenfield was unable to “prove as a matter of

law    that    a   non-gratuitous         ‘benefit’    was     conferred      for    which

compensation [was] required.”               Id.

       Fourth, the district court ruled that Greenfield’s attempt

to cancel Erwin-Penland’s “How Sweet the Sound” trademark based

on fraudulent representations to the United States Patent and

Trademark Office failed as a matter of law.                         The court stated

that    even       if      Greenfield’s     factual        allegations     were      true,

“[t]rademark rights are not based on creativity, but on use in

commerce.”           Id.    at    201.     Because     it    was    “undisputed       that

Greenfield ha[d] not used the [“How Sweet the Sound”] mark in

commerce,” he could not “claim trademark rights in the term” or

demonstrate        “that       Erwin-Penland      committed    fraud     in     procuring

th[e] trademark registration.”               Id.

       Greenfield noted a timely appeal of the district court’s

order granting summary judgment.                   We have jurisdiction under 28

U.S.C. § 1291.



                                           III.

       On appeal, Greenfield generally argues the district court

misapplied the summary judgment standard in failing to view the


                                            10
record evidence and all inferences drawn therefrom in the light

most       favorable      to   him,   as   the   non-moving     party.        He   more

specifically avers the district court erred in concluding the

“How Sweet the Sound” concept failed to meet the criteria for

protection under the Act.               For example, Greenfield contends the

district court applied “a non-existent novelty requirement” for

trade secret protection and ignored a genuine issue of material

fact as to whether he took reasonable efforts to preserve the

secrecy of the “How Sweet the Sound” marketing scheme.                        Opening

Br. at 23.

       Greenfield also challenges the district court’s “failure to

discern in the” relationship between himself and Erwin-Penland

“the       basis    for    imposing     contractual     and     equitable     duties”

predicated         on   Erwin-Penland’s      and    Verizon     Wireless’     “unjust

enrichment at [his] expense.”                Id. at 24.        Finally, Greenfield

claims the district court erred in refusing to cancel Erwin-

Penland’s      “How       Sweet   the   Sound”     trademark    based    on   various

fraudulent assertions made throughout the trademark registration

process. 3     See id.; see also 15 U.S.C. § 1064(3).




       3
       Greenfield raised various fiduciary-duty claims in                          his
Opening Brief but informed the Court at oral argument he                            no
longer asserted those issues on appeal.  As Greenfield has                         now
conceded there was no error as to those claims, we do                              not
address them here.




                                            11
       In response, Erwin-Penland and the third-party defendants

argue the Act offers no protection as to any of Greenfield’s

claims concerning the “How Sweet the Sound” marketing scheme.

They contend the concept was “‘readily ascertainable by proper

means by the public,’” Response Br. at 19, and that Greenfield

“knowingly shared [the plan] with multiple third parties (some

of whom were Greenfield’s competitors)” without the protection

offered     by     a    confidentiality         agreement.                Id.     at    20.

Accordingly,       Erwin      Penland     and    the       third-party          defendants

maintain that “Greenfield cannot prove . . . he took reasonable

efforts     to    maintain       the    confidentiality            of     his    supposed

secrets.”    Id.

       Based on Greenfield’s admissions that the parties “engaged

only in preliminary proposals in advance of a speculative pitch

for new business and never even discussed the essential terms of

a   . . .   contract,”        Erwin-Penland      and       Verizon      Wireless       also

dispute     Greenfield’s         claim       that      a     binding        contractual

relationship was established.              Id. at 20-21.           They further argue

that   Greenfield       is    unable    to   make      out   a     claim    for    unjust

enrichment,      as    he    contributed     neither       labor    nor    a    protected

piece of intellectual property to the marketing scheme Verizon

Wireless eventually implemented.                Lastly, Erwin-Penland and the

third-party      defendants       would      have      us    reject        Greenfield’s

trademark-cancellation claim because “he makes no claim to ever


                                           12
having used the [“How Sweet the Sound”] mark in commerce.”                              Id.

at 34.



                                            IV.

     “We    review      de    novo   a    district   court’s         award    of    summary

judgment,      viewing       the   facts    and    inferences         reasonably      drawn

therefrom in the light most favorable to the nonmoving party.”

Fraternal      Order    of    Police      Lodge    No.     89   v.    Prince       George’s

County, 608 F.3d 183, 188 (4th Cir. 2010).                       Under Federal Rule

of Civil Procedure 56(a), summary judgment is appropriate “if

the movant shows that there is no genuine dispute as to any

material fact and the movant is entitled to judgment as a matter

of law.”       In this case, the record demonstrates that no genuine

dispute as to a material fact precluded granting judgment as a

matter    of   law     in    favor   of    Erwin-Penland        and    the   third-party

defendants.      See Estate of Kimmell v. Seven Up Bottling Co. of

Elkton, Inc., 993 F.2d 410, 412 (4th Cir. 1993) (“[I]n a case

where ‘the record taken as a whole could not lead a rational

trier of fact to find for the non-moving party, there is no

genuine     issue      for    trial’      and    summary    judgment         is    proper.”

(quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475

U.S. 574, 587 (1986))).




                                            13
                                    A.    Trade Secret

        The    South       Carolina      Trade    Secrets     Act     protects      “trade

secrets” that meet two separate criteria. 4                         First, the trade

secret       must    “derive[]      independent      economic       value,    actual   or

potential,        from     not   being    generally     known     to,   and   not   being

readily ascertainably by proper means by the public or any other

person      who     can    obtain   economic      value    from   its   disclosure      or

use.”         S.C. Code Ann. § 39-8-20(5)(a)(i).                    Second, the trade

secret must be “the subject of efforts that are reasonable under

the     circumstances         to    maintain      its     secrecy.”       Id.    § 39-8-

20(5)(a)(ii).             As the plain language of the statute provides,




        4
            The Act defines a “‘[t]rade secret’” as

        information including but not limited to, a formula,
        pattern,   compilation,    program, device,  method,
        technique,   product,  system,   or process, design,
        prototype, procedure, or code that:

               (i) derives independent economic value, actual
            or potential, from not being generally known to,
            and not being readily ascertainable by proper
            means by the public or any other person who can
            obtain economic value from its disclosure or use,
            and

               (ii) is the subject of efforts that are
            reasonable under the circumstances to maintain
            its secrecy.

S.C. Code Ann. § 39-8-20(5)(a) (emphasis added).




                                             14
information must satisfy both criteria in order to be deemed a

“trade secret” under the Act. 5              Id. § 39-8-20(5)(a).

     For purposes of this opinion, we assume, without deciding,

that the “How Sweet the Sound” concept satisfies the Act’s first

criterion. 6       A reasonable finder of fact, however, could not

conclude that Greenfield took reasonable efforts to maintain the

secrecy    of    the    “How      Sweet    the   Sound”    marketing      scheme,      the

second    criterion         for   protection     under    the    Act.      In    Lowndes

Products,       Inc.   v.     Brower,     191    S.E.2d    761    (S.C.   1972),       the

Supreme     Court      of    South    Carolina      construed      the    reasonable-

efforts-to-maintain-secrecy               requirement     as    setting   a     high   bar




     5
       See also Restatement (Third) of Unfair Competition § 39
(1995) (defining a “trade secret” as “any information that can
be used in the operation of a business or other enterprise and
that is sufficiently valuable and secret to afford an actual or
potential economic advantage over others”); Restatement (First)
of Torts § 757 cmt. b (1939) (“The subject matter of a trade
secret must be secret.     Matters of public knowledge or of
general knowledge in an industry cannot be appropriated by one
as his secret.”).
     6
       See S.C. Code Ann. § 39-8-20(5)(b) (“A trade secret may
consist of a simple fact, item, or procedure, or a series or
sequence of items or procedures which, although individually
could be perceived as relatively minor or simple, collectively
can make a substantial difference in the efficiency of a process
or the production of a product, or may be the basis of a
marketing or commercial strategy. The collective effect of the
items and procedures must be considered in any analysis of
whether a trade secret exists and not the general knowledge of
each individual item or procedure.”).




                                            15
for trade secret protection. 7             See id. at 766; see also Woven

Elecs. Corp. v. Advance Grp., Inc., 930 F.2d 913, Nos. 89-1580 &

89-1588, 1991 WL 54118, at *3 (4th Cir. Apr. 15, 1991), as

amended May 6, 1991 (unpublished) (characterizing “a consistent

effort . . . to keep” a “wire weaving process” secret, rather

than       “isolated    attempts     to        protect    [that     information’s]

confidentiality,” as sufficient to meet the reasonable-efforts-

to-maintain-secrecy       requirement)          (citing   Lowndes    Prods.,     191

S.E.2d at 765)).

       Individuals “entitled to a trade secret” and desiring “to

have its exclusive use in [their] own business” are barred from

“lightly      or   voluntarily     hazard[ing]      its   leakage     or   escape.”

Lowndes      Prods.,    191      S.E.2d     at     766    (quotation       omitted).

Revealing a trade secret to others is consequently fatal to its

protected      status   unless    one     “exercise[s]     eternal    vigilance.” 8

Id. (quotation omitted).            The exercise of “eternal vigilance”

imposes a heavy burden on the owner of a trade secret, as it

“calls for constant warnings to all persons to whom the trade

       7
       See also 20 S.C. Jur. Intellectual Prop. § 75 (2011)
(engaging in an extensive discussion of the reasonable-efforts-
to-maintain-secrecy requirement based on Lowndes Products).
       8
       Although the dissent is correct that “[d]isclosure . . .
does not necessarily vitiate secrecy,” Dis. Op. at 28, it fails
to account for South Carolina case law conditioning further
trade secret protection on the exercise of “eternal vigilance.”
Lowndes Prods., 191 S.E.2d at 766.




                                          16
secret has become known and obtaining from each an agreement,

preferably in writing, acknowledging its secrecy and promising

to respect it.” 9     Id. (quotation omitted).

     The    undisputed       evidence    in   this     case   demonstrates      that

Greenfield did not exercise “eternal vigilance” in sharing the

details    of   the   “How    Sweet     the   Sound”    marketing     scheme    with

others.    To the contrary, Greenfield transmitted the “How Sweet

the Sound” concept to Erwin-Penland, J.A. at 775, and presented

the plan to Verizon Wireless in the presence of multiple third

parties — including members of “other ad agenc[ies]” — without

the benefit of any type of nondisclosure agreement.                   Id. at 791.

The record, without contradiction, also supports the district

court’s finding that “[t]he alleged ‘trade secrets’ in question

had . . . been previously shared with a different third-party,

the restaurant chain Captain D’s, with whom Greenfield . . . had

no confidentiality or other agreement.”                Id. at 186.

     It would thus be unreasonable, if not impossible, for a

finder of fact to conclude that Greenfield took “efforts that

[were]    reasonable    under    the     circumstances        to   maintain    [the]


     9
       See also 20 S.C. Jur. Intellectual Prop. § 75 (2011)
(“‘[E]ternal vigilance’ in the form of ‘constant warnings to all
persons to whom the trade secret has become known and obtaining
from each an agreement, preferably in writing, acknowledging its
secrecy and promising to respect it’ is required.” (quoting
Lowndes Prods., 191 S.E.2d at 761)).




                                         17
secrecy”   of     his    marketing       strategy.     S.C.       Code    Ann.    § 39-8-

20(5)(a)(ii).          And such efforts are mandatory under the plain

language     of    the     Act    if    a    trade   secret       is     to   merit    its

protection.       See id.; Lowndes Prods., 191 S.E.2d at 765 (“[A]ll

trade secrets are not entitled to . . . protection . . . .”); 20

S.C. Jur. Intellectual Prop. § 76 (2011) (“A third party who

receives information without any express or implied assurance of

confidence may do what it likes with the information.”).

      Although         Greenfield       unilaterally       placed      confidentiality

notices    on     some    of     his    materials,   these     notations         are   not

sufficient to create a genuine issue of material fact as to the

reasonableness of his conduct. 10                 South Carolina courts do, of

course, require such “warnings to all persons to whom the trade

secret has become known.”                   Lowndes Prods., 191 S.E.2d at 766

(quotation      omitted).         But    South    Carolina    law      is     clear    that

warnings alone are insufficient to place a trade secret within

the   sphere      of     protection      provided     by    the     Act.         See   id.

(characterizing          “isolated       steps     . . .     taken       to    implement

secrecy” as insufficient to merit trade secret protection).

      10
        In his Opening Brief, Greenfield also notes that he
registered the “How Sweet the Sound” concept as a “Gospel Music
Contest” with the Writers’ Guild of America, listing himself and
Joseph Erwin as co-owners.   See Opening Br. at 18.   Greenfield
does not contend, however, that this registration constituted
reasonable measures to maintain the secrecy of the “How Sweet
the Sound” marketing plan.




                                             18
      A trade secret owner who knowingly discloses proprietary

information      to   others   should     also    “obtain[]      from    each   an

agreement    . . .     acknowledging     its     secrecy   and    promising     to

respect it.” 11       Id. (quotation omitted).         Greenfield points to

nothing in the record suggesting he obtained, or attempted to

obtain, a confidentiality agreement from the multiple entities

to   whom   he    presented    the   “How    Sweet   the   Sound”       concept. 12

Accordingly, the district court correctly determined no material

facts were in dispute and correctly held that (1) Greenfield

failed to take reasonable efforts to maintain the secrecy of his

marketing plan, see 20 S.C. Jur. Intellectual Prop. § 76 (2011)



      11
         We respect the dissent’s viewpoint but are compelled to
adhere to the principle that “federal courts sitting in
diversity must apply state substantive law, decisional as well
as statutory, in the adjudication of state-created rights.”
Hottle v. Beech Aircraft Corp., 47 F.3d 106, 109 (4th Cir.
1995).    While obtaining a non-disclosure agreement is not a
mandatory requirement under South Carolina law, we emphasize
that Greenfield’s failure to even attempt to obtain any such
agreement from any of the parties to whom he disclosed his trade
secrets bears substantial weight under the precedent of South
Carolina’s highest court. See Liberty Mut. Ins. Co. v. Triangle
Indus., Inc., 957 F.2d 1153, 1156 (4th Cir. 1992) (“[A] federal
court sitting in diversity has a duty to apply the operative
state law as would the highest court of the state in which the
suit was brought.”).
      12
         See Estate of Kimmell, 993 F.2d at 412 (acknowledging
that “the non-moving party may not rest on its pleadings, but
must come forward with specific facts showing that evidence
exists to support its claims and that there is a genuine issue
for trial” (citing Celotex Corp v. Catrett, 477 U.S. 317, 324
(1986)).




                                        19
(“If no understanding of confidentiality exists, there can be no

secrecy regarding information disclosed.”), and (2) this failure

precluded   Greenfield     from       relying     on     the     protection     of

intellectual property afforded by the Act.               See id. § 73 (“South

Carolina’s statutory definition of a trade secret requires that

the secret be ‘the subject of efforts that are reasonable under

the circumstances to maintain its secrecy.’” (quoting S.C. Code

Ann. § 39-8-20(5)(a)(ii))).



                                B.    Contract

     A contract, under South Carolina case law, is defined as

     an obligation which arises from actual agreement of
     the parties manifested by words, oral or written, or
     by conduct. If agreement is manifested by words, the
     contract is said to be express.   If it is manifested
     by conduct, it is said to be implied. In either case
     the parties must manifest a mutual intent to be bound.
     Without the actual agreement of the parties, there is
     no contract.

Stanley Smith & Sons v. Limestone Coll., 322 S.E.2d 474, 477

(S.C. Ct. App. 1984) (internal citations omitted).

     “The essentials of a contract [thus] include an offer and

acceptance.”      Benya v. Gamble, 321 S.E.2d 57, 60 (S.C. Ct. App.

1984); see also Hodge v. Nat’l Fid. Ins. Co., 68 S.E.2d 636, 639

(S.C.   1952)   (“Regardless    of    which     party    makes   the   offer   or

proposal,   its    acceptance    by    the    other     is   necessary   to    the

creation of the contract.”).          In this case, Greenfield points to




                                       20
four    pieces       of    evidence,         which   he     believes      demonstrate       the

formulation of a binding agreement with Erwin-Penland.

       First,        Greenfield         cites a      March       28,    2006    email      that

demonstrates the parties discussed forming an LLC with Verizon

Wireless if it agreed to fund the “How Sweet the Sound” project,

50% of which would be owned by Verizon Wireless and 50% of which

would    be    owned       by    1st    Approach      and    Erwin-Penland.           Second,

Greenfield          relies      on     two   slides       from    the    April     26,     2006

presentation to Verizon Wireless indicating the “How Sweet the

Sound” concept was created jointly by 1st Approach and Erwin-

Penland       and    that       they    offered      Verizon      Wireless      40%   of    net

revenues       if    it     would      agree    to    fund       the    project.         Third,

Greenfield generally points to evidence that he was responsible

for creating at least 50% of the “How Sweet the Sound” marketing

scheme.       Fourth, Greenfield references his work scaling back the

“How    Sweet       the   Sound”       proposal      to   address       Verizon    Wireless’

budgetary      concerns,         resulting      in    a   new    plan    similar      to   that

which     Verizon         Wireless       and    Erwin-Penland           later    implemented

without his assistance.

       Greenfield’s first two pieces of evidence do indicate that

he and Erwin-Penland reached an agreement concerning the concept

they would initially pitch to Verizon Wireless.                           What is lacking

from the record, however, is any evidence demonstrating that

Verizon Wireless ever accepted their proposed terms.                               And it is


                                                21
clear      that    Verizon    Wireless’       acceptance     of    the    offer    was   a

condition precedent to the formation of the LLC which Greenfield

and Erwin-Penland had discussed. 13                See Rickborn v. Liberty Life

Ins. Co., 468 S.E.2d 292, 300 (S.C. 1996) (“A meeting of minds

is   based    upon    the     intent    and    purposes    as     shown    by   all    the

circumstances.”).            Because the necessary condition precedent of

acceptance was never satisfied, no reasonable finder of fact

would conclude the parties reached a binding agreement.                                See

McGill v. Moore, 672 S.E.2d 571, 575 (S.C. 2009) (“If a contract

contains a condition precedent, that condition must either occur

or   it     must    be   excused       before    a   party’s       duty    to     perform

arises.”); Allstate Ins. Co. v. Estate of Hancock, 545 S.E.2d

845, 847 (S.C. Ct. App. 2001) (“[N]o contract arises until the

offer is accepted and all conditions precedent are met.”).

      Greenfield’s          other      evidence,     which        indicates       he   was

responsible for developing portions of the “How Sweet the Sound”

project later implemented by Verizon Wireless and Erwin-Penland,

is insufficient to change our analysis.                    The relevant question

on Greenfield’s contract claim is not whether Erwin-Penland and

Greenfield collaborated in formulating the “How Sweet the Sound”


      13
         See Alexander’s Land Co. v. M & M & K Corp., 703 S.E.2d
207, 214 (S.C. 2010) (“A condition precedent is an act which
must occur before performance by the other party is due.”
(quotation omitted)).




                                           22
proposal submitted to Verizon Wireless — record evidence makes

clear they did.          Rather, it is whether Greenfield and Erwin-

Penland    ever    reached          a   binding          agreement    concerning        the

implementation of that scheme.                      On this record, the district

court did not err in concluding there is insufficient evidence

for a reasonable finder of fact to conclude that an agreement as

to the “How Sweet the Sound” plan’s execution was ever reached.



                               C.    Unjust Enrichment

      Under South Carolina law, “quantum meruit, quasi-contract,

and   implied     by    law        contract        are   equivalent       terms   for    an

equitable remedy.”           Myrtle Beach Hosp., Inc. v. City of Myrtle

Beach, 532 S.E.2d 868, 872 (S.C. 2000).                       Obtaining this remedy

requires   Greenfield         to    show   (1) he        conferred    a     benefit     upon

Erwin-Penland and the third-party defendants, (2) they realized

some value from the benefit, and (3) it would be inequitable for

Erwin-Penland     and        the    third-party          defendants    to    retain     the

benefit without paying Greenfield its value.                         See Gignilliat v.

Gignilliat, Savitz & Bettis, L.L.P., 684 S.E.2d 756, 764 (S.C.

2009); Sauner v. Pub. Serv. Auth. of S.C., 581 S.E.2d 161, 167

(S.C. 2003).

      The list of benefits Greenfield alleges he conferred on

Erwin-Penland          and     the      third-party           defendants          includes




                                              23
(1) trademark          rights,     (2) an       Effie      Award, 14        (3) the   BET

television       special,      (4) various       financial     benefits        resulting

from     the    “How   Sweet     the   Sound”     series,    and   (5) intellectual

property       related   to    the     competitions.         As    explained      below,

Greenfield possessed no trademark related to the “How Sweet the

Sound” concept; he was therefore unable to confer such a benefit

on Erwin-Penland and the third-party defendants.                       See infra Part

IV.D.        We further conclude that Greenfield cannot equitably take

credit for “conferring” critical and financial success on the

“How Sweet the Sound” project when he played no role in the

execution and production of the work. 15

        That    leaves    Greenfield’s          argument    that       he    contributed

valuable intellectual property to the project in conceptualizing
        14
        In 1968, the American Marketing Association established
an annual awards program known as the “Effie Awards” to
recognize the most effective advertising efforts in the United
States.
        15
             The district court correctly found that

        [b]y his own admission, Greenfield has not expended
        ‘any time or effort having the concerts go forward,’
        had no involvement in the ‘day-to-day’ operations of
        the concerts, has not worked on any concert logistics,
        has not lined up any churches, booked any venues, and
        has not traveled for the project. By contrast, Erwin-
        Penland, which has worked on the [“How Sweet the
        Sound”] project [from] 2007 through the present, has
        been compensated for the actual work it performed on
        the . . . project.       Such compensation for work
        performed does not constitute unjust enrichment.

J.A. at 200.




                                           24
the general marketing scheme Erwin-Penland and Verizon Wireless

later utilized.        Given the fact that (1) Greenfield’s only claim

to a protected intellectual property right arises under the Act,

and (2) we     have    already   concluded     the   “How    Sweet     the     Sound”

concept fails to meet the Act’s definition of a “trade secret,”

see    supra   Part    IV.A,   Greenfield     is   unable    to    show      that   he

conferred any intellectual property benefit on Erwin-Penland and

the    third-party     defendants.      See   Sauner,   581       S.E.2d      at    167

(requiring a plaintiff “confer[] a non-gratuitous benefit on the

defendant”).

       We   consequently       agree   with    the    district         court       that

Greenfield failed to demonstrate he conferred a benefit upon the

defendants that would be inequitable for them to keep without

paying its value.        Summary judgment in favor of the defendants

on     Greenfield’s       unjust-enrichment          claim        is        therefore

appropriate.      See Othentec Ltd. v. Phelan, 526 F.3d 135, 140

(4th    Cir.   2008)    (requiring     “a   nonmoving       party”     on    summary

judgment “produce some evidence (more than a ‘scintilla’) upon

which a jury could properly proceed to find a verdict for the

party . . . upon whom the onus of proof is imposed” (quoting

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251 (1986))).




                                       25
                       D.   Trademark Cancellation

     Greenfield   also      contends    the   district    court    erred   in

refusing to cancel Erwin-Penland’s “How Sweet the Sound” mark.

See 15 U.S.C. § 1064(3).       This argument is based on Greenfield’s

contention that Erwin-Penland fraudulently failed to reveal in

trademark registration paperwork, filed with the United States

Patent and Trademark Office, that he too had “a credible right

to use the mark.”        Opening Br. at 41.          We find no merit to

Greenfield’s trademark-cancellation claim.

     As this Court has previously explained, “[t]here is no such

thing as property in a trade-mark except as a right appurtenant

to an established business or trade in connection with which the

mark is employed. . . . [T]he right to a particular mark grows

out of its use, not its mere adoption.”             Int’l Bancorp, LLC v.

Societe des Bains de Mer et du Cercle des Etrangers a Monaco,

329 F.3d 359, 364 (4th Cir. 2003) (quoting United Drug Co. v

Theodore   Rectanus,    Co.,   248     U.S.   90,   97   (1918))   (emphasis

added); see also Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d

1217, 1219 (9th Cir. 1996) (“To acquire ownership of a trademark

it is not enough to have invented the mark first or even to have

registered it first; the party claiming ownership must have been

the first to actually use the mark in the sale of goods or

services.”) (emphasis added).




                                       26
     Nothing        in   Greenfield’s        Opening      Brief,       or    the   record,

suggests       he   ever    used      the   “How       Sweet    the    Sound”      mark    in

commerce. 16        See Opening Br. at 42-42.                   Therefore, Greenfield

failed    to     establish    the     necessary        factual     predicate       for    his

trademark-cancellation           claim.          See     Gen.    Healthcare        Ltd.    v.

Qashat, 364 F.3d 332, 335 (1st Cir. 2004) (“Trademark rights may

arise under either the Lanham Act or under common law, but in

either     circumstance,        the    right      is    conditioned         upon   use     in

commerce.”)         (emphasis      added).         We     accordingly        uphold       the

district court’s grant of summary judgment in favor of Erwin-

Penland.        See Celotex Corp., 477 U.S. at 323 (“[A] complete

failure     of      proof    concerning       an       essential      element      of     the

nonmoving       party’s     case    necessarily         renders       all    other      facts

immaterial.”).



                                            V.

     For all of the foregoing reasons, we affirm the judgment of

the district court.

                                                                                   AFFIRMED




     16
        We decline to address the additional arguments raised in
Greenfield’s Reply Brief, as “arguments not specifically raised
and addressed in opening brief, but raised for the first time in
reply, are deemed waived.”    Moseley v. Branker, 550 F.3d 312,
325 n.7 (4th Cir. 2008).




                                            27
GREGORY, Circuit Judge, dissenting in part:

     This case is about just compensation for an inventor of a

marketing    scheme         who     was   later      cut   out    of     the   deal        by   two

entities that had a long-standing relationship with each other:

Verizon    and    its        advertising       agency      of    record,       Erwin-Penland

(“EP”).      The       majority        takes     the     case     away    from       the    jury,

concluding       that       no    rational       trier     of    fact     could      find       the

inventor,    Greenfield,            had   taken      efforts      reasonable         under      the

circumstances          to     protect      the      scheme’s       secrecy.            Such      a

conclusion is premature.                  There is a rich record with details

pointing in both directions regarding Greenfield’s efforts to

protect    his     ideas,         with    both      copyright      and     confidentiality

notices,    including            one   that    was     specifically        removed         by    EP

without     Greenfield’s            permission,        that       indicates       while         the

arguments in his favor may ultimately be overcome, a jury should

at least have been allowed to view his efforts.

     There       are        three      additional        points     that       the    majority

overlooks.       First, the majority ignores a proposition advanced

by the very treatise it cites:                      that disclosure to prospective

clients in the advertising context does not necessarily vitiate

secrecy, but rather may, in fact, be reasonable.                                 Second, the

majority assumes without record support that other advertising

agencies were competitors.                    These agencies may well have been

collaborators whose roles were to take over portions of the plan


                                               28
that could not be executed by EP and 1st Approach, meaning their

presence      is    a        fact    the    jury    has        a    right    to     consider     and

ultimately discount.                 The majority thus skews this fact in the

light most favorable to the movants.                           Finally, the argument that

Greenfield disclosed some secrets to Captain D’s is irrelevant

because these were not the same secrets presented to Verizon, in

particular they did not include the so-called Pastor Packet,

which   was    an        idea       unique    to    the        proposal      drafted       for   the

wireless giant.              For these reasons, I respectfully dissent as to

the trade secret cause of action.                         I concur in the remainder of

the majority’s opinion, and do not discuss it here.



                                                   I.

     Unless        otherwise         noted,       all     of       the   following     facts     are

uncontested.             I    relate       them    here    because          there    are   several

important points that the majority omits.

     Jeffrey Greenfield is the sole employee of two marketing

companies,         1st       Approach       and     Buzznations.              These     companies

specialize in branded entertainment:                           the combination of a brand

with a live event synthesized with internet strategies, word-of-

mouth, grassroots “buzz” marketing, and traditional print and

broadcast media.               In addition to being the principal at both

companies, he gives lectures around the country.                                    At one of his

lectures, he met Joseph Erwin, the president and founder of EP,


                                                   29
a   regional    advertising    agency        located    in   Greenville,     South

Carolina. 1    After hearing his talk about branded marketing, Erwin

approached Greenfield and suggested that the two collaborate.

     1st Approach and EP pursued an account with Captain D’s, a

seafood restaurant chain primarily located in the South, to be

what is known in the industry as the “agency of record.”                     There

is hot dispute over who first originated the concept, 2 but the

two parties agree that the advertising campaign to Captain D’s

centered around the production of a marketing campaign called

“Amazing Grace,” after the hymn.              The campaign was designed to

be a reality television series modeled on the show American Idol

in a competition for the best church choir in America.

     There was no non-disclosure agreement (“NDA”) between the

parties.       Nevertheless,     the   two     had     extensive   collaboration

including     conference   calls,      meetings,       and   materials   sharing.

The information Greenfield transmitted to EP, in the form of

PowerPoint slides as part of a presentation “deck,” was under

explicit       confidentiality      provisions.              Specifically,     the


     1
       EP was purchased by Hill Holliday Connors Cosmopulos,
Inc., a national advertising agency that is owned by Interpublic
Group.
     2
       Greenfield testifies that it was his idea to have the
gospel choir competition.    In contrast, Erwin testifies that
someone on his team – who used to be a political operative in
the democratic South – had the idea of using churches and faith-
based singing to bring the communities together.



                                        30
disclaimer on the slides presented to Captain D’s read:                  “[t]he

ideas and concepts contained within this document are the sole

and confidential property of 1st Approach, LLC and will not be

shared with any other agency or utilized without prior written

consent.”    J.A. 1375.

      After Captain D’s turned down the bid, 1st Approach and EP

decided to market it elsewhere.            EP was the ad agency of record

for Verizon.     Verizon was EP’s top revenue-generating client and

had been for some number of years.             EP had initial discussions

with Verizon about potentially developing the “Amazing Grace”

concept,    which   later   became    known   as    “How   Sweet   The   Sound”

(“HSTS”), after the second line of the song, for the wireless

company.     Verizon was trailing its competitors in the African

American community, with only 17% of market-share as opposed to

25%   overall,   and   needed   a    marketing     strategy   to   reach   this

demographic.

      When EP initially presented the HSTS idea in December 2005

to Verizon, it labeled the idea “Confidential and Proprietary

Material by [EP].”      J.A. 1577.     Like the Captain D’s disclaimer,

the material read “[u]se, disclosure or distribution of this

material is not permitted to any unauthorized persons or third

parties except by written agreement.”            Id.   The regional Verizon

employees passed on the information to Verizon’s Chief Marketing




                                      31
Officer,         Stratton,       without        the    knowledge    or      consent   of

Greenfield.

       After the December 2005 pitch, in which Greenfield did not

participate, EP followed up with an April 2006 presentation.

The contents of this presentation, a 30-plus PowerPoint slide

deck,      lie       at   the   heart    of     the   dispute,    because    Greenfield

concedes in his deposition that the trade secrets in question

were contained therein. 3               As part of the presentation, Greenfield

came       up    with     numerous      ideas    he   claims     were    trade   secrets

including tax strategies and the so-called Pastor Packet, which

was a direct mailing bundle sent to church preachers and choir

directors that could be used to rope their congregations into

signing         up    for   Verizon      subscriptions.          Importantly,      these

secrets differ markedly from the information that was submitted

to Captain D’s, both in kind and in quantity, with the Pastor

Packet being the most obvious example.

       In the lead up to the April 2006 presentation, Greenfield

and EP exchanged many emails and also participated in numerous


       3
       Greenfield’s reply brief alleges that there were trade
secrets beyond what were contained in the April 2006 pitch at
which other advertising agencies were present.       (Appellant’s
Reply Br. at 27.) It is theoretically possible, then, that some
of the secrets may not have been adequately protected, whereas
others were. The majority does not consider this point. I need
not express an opinion on their scope, however, as there are
enough facts on this record for a jury to be able to consider
the secrets even if they are limited to the April 2006 deck.



                                                32
conference calls with each other.                      On March 13, 2006, Greenfield

drafted a budget that he sent to EP detailing the projected

costs of HSTS.       Verizon ultimately did not rely upon this budget

– it went with a scaled-down version of the idea – but it did

pick up the HSTS program and execute it in Memphis, Tennessee as

a test market.       The parties did not discuss what would happen if

Verizon did not accept the deal, or as here accepted it, but in

modified form.          Greenfield, however, registered his idea with

the   Writer’s    Guild        of    America       on        February    15,      2006,   with

ownership vested in himself and EP.

      At the April 2006 presentation to Verizon, Greenfield spoke

only briefly, for as short as five minutes, and the people at

Verizon   do   not      remember      him     independently             of   this    lawsuit.

Nevertheless, the “deck” identified him and 1st Approach as the

co-creators of the HSTS idea and included a copyright notice

from EP and 1st Approach.                  At the meeting, at least one other

advertising agency was present and possibly more.                              The deck was

not marked “confidential.”                 The record does not specify whether

the   advertising         agencies          were        competitors          or     potential

collaborators     to     1st    Approach          or    what     the    relationship         was

between Verizon, EP, and the agency or agencies.                             See J.A. 494-

500   (discussing        the        role     of        the     respective         advertising

agencies).       None    of    the    people       from       advertising         agencies   or




                                             33
other      attendees            at    the     meeting          were     asked     to     sign     a

confidentiality agreement.

       Greenfield was ultimately cut out of the process after the

April      2006     pitch.           In     the    two-month          period    following       the

presentation,           he   worked        with    EP     to   fine     tune    the     proposal,

scaling it back to reduce the television aspect since Verizon

determined that aspect was not within its “core competency.”                                     On

June 9, 2006, Greenfield participated in a conference call with

EP    in   which        Erwin     affirmed        the   “partnership.”            The     parties

agreed that Greenfield would have to downsize the proposal to

fit Verizon’s needs.                 On June 19, 2006, Greenfield submitted his

final work-product to EP, reducing the cost of the budget to

$5.4 million.            On November 22, 2006, Greenfield wrote to EP and

asked whether Verizon had approved or turned down HSTS and said

that if they had turned it down, he would like to shop around

the   idea    to        other    potential         clients.           Allen    Bosworth    of    EP

responded by saying that the idea was “still being looked at” by

Verizon and that Yahoo! Music was very interested in the deal.

J.A. 1598.          After that, Greenfield emailed EP on January 26,

2007,      March    29,      2007,     and    July      26,     2007,    but     EP    failed    to

respond.

       EP claims that the reason it ceased to do business with

Greenfield         is    because      he     was    the    “television          man”;    that    if

Verizon decided it did not want to do that component of the


                                                   34
advertising     campaign,       then     it       could    simply     eliminate     him.

However, the record shows that Verizon did adopt a proposal that

was    strikingly       similar        to        Greenfield’s         original     idea.

Specifically,      in   conjunction         with     EP    and   other    advertising

agencies, Verizon in both 2008 and 2009 produced eleven events

and a final competition, a one-hour documentary film, and a one-

hour televised finals competition that aired on the Gospel Music

Channel.      According to Greenfield, the marketing campaign has

been   a   financial    boon    to     both      Verizon   and   EP,     substantially

creating    inroads     into    the     African      American       community.       The

campaign     for    HSTS       ultimately          received      an     Effie     Award,

essentially the equivalent of an Oscar within the advertising

community.    EP also received trademark registration for HSTS.



                                            II.

       There are three important inquiries that must be decided.

First, as a threshold matter, is there a trade secret?                           Second,

if there is a trade secret, was it adequately protected?                          Third,

if it was adequately protected, was it improperly taken?                             The

first inquiry, one that is assumed though not decided by the

majority, is whether Greenfield has a protectable interest to

begin with under South Carolina Code § 39-8-20(5).                        Because the

answer is not clearly established, I would certify it for the

South Carolina courts.


                                            35
     The       Act   defines      trade      secret    to     include      “a      formula,

pattern,       compilation,       program,         device,      method,          technique,

product, system, or process, design, prototype, procedure, or

code.”     S.C. Code Ann. § 39-8-20(5)(a).                   It goes on to specify

that:

     [a] trade secret may consist of a simple fact, item,
     or procedure, or a series or sequence of items or
     procedures which, although individually could be
     perceived as relatively minor or simple, collectively
     can make a substantial difference in the efficiency of
     a process or the production of a product, or may be
     the basis of a marketing or commercial strategy. The
     collective effect of the items and procedures must be
     considered in any analysis of whether a trade secret
     exists   and  not   the  general  knowledge   of  each
     individual item or procedure.

Id. at (5)(b).          Although there is little to no caselaw on the

issue,    it    appears    from       the   statute’s       text    that     a   marketing

strategy that consists of disparate ideas woven together can be

a trade secret.

     Verizon argues that there is nothing protectable contained

in the April 2006 slides.                   Specifically, Verizon claims that

because the individual elements of the trade secret are in the

public domain there is no trade secret.                            The district court

seemed    to    agree     with    this      proposition,       holding       that    “[t]he

concepts themselves are generalized principles that are well-

known    in    the   advertising         and      marketing    industries         and   are

readily    ascertainable         by    others.”         J.A.       165-66.        However,

neither Verizon nor the district court cited any authority to


                                             36
support    their       proposition        that       because     some     elements    of     a

marketing strategy are public, their “collective effect” cannot

constitute a trade secret.

       Both the text of the statute as well as what little law

exists on the topic seem to go in the opposite direction.                                 That

is to say, even if elements of the trade secret are public, if

the particular alchemy behind the item as a whole is not, then

it is considered protectable.                  Greenfield uses the analogy of a

Mrs. Fields cookie; general recipes for chocolate chip treats

are common, but the recipe specific to Mrs. Fields is still

considered a trade secret.                    Several cases support his point.

See, e.g., Lowndes Products, Inc. v. Brower, 259 S.C. 322, 328

(1972) (“A trade secret can exist in the unique combination of

otherwise      known       components;        although      each    of    its    parts,    by

itself, may be in the public domain, the unified process, design

and    operation      of    the   combination         may   be     the   essence     of    the

secret.”); Servo Corp. of Am. v. General Elec. Co., 393 F.2d

551,     555   (4th     Cir.      1968)       (a    litigant     may     not    “avoid     the

consequences of the breach of confidence by piecing together in

retrospect bits of information which had been disclosed in a

variety of places and which as a combination were not clearly a

matter of public knowledge.”); Elizabeth Carpenter, 20 S.C. Jur.

Intellectual Property § 74 n.3 (2010) (collecting cases); Louis

Altman     &   Malla       Pollack,       2    Callman      on     Unfair      Competition,


                                               37
Trademarks, and Monopolies § 14:22 (2008) (“The internal facts

of a business . . .     [t]he subject matter is not necessarily

new, novel or unique; it may be something which, when connected

with a known factor, may be so valuable to a business that its

continued concealment from others is of paramount importance.”).

However, general business know-how is not protected.               Altman &

Pollack, supra, § 14:22.        Similarly, marketing strategies that

are commonly employed are not protectable.        Id. 4

     Greenfield alleges that the particular combination of his

marketing plan, with judges selecting the best choirs after they

submit   short   segments,     text    message   voting,     and   audience

participation,   constituted    the    essence   of   his   secret.    Even

though there are particular elements that are within the public

domain, there are kernels of ideas that are both original and

unknown, and as a result not readily ascertainable by proper

means.   Specifically, the idea of the Pastor Packet – which was

utilized by Verizon to outreach to ministers and choir directors

– is an idea original to Greenfield that was ascertainable only

through his private presentation.          Thus, while in retrospect



     4
       It is also important to note that South Carolina has no
“novelty” requirement, unlike other jurisdictions such as New
York and California that require the combination to be new, much
like a patent, must not be “obvious.” The district court seemed
to impose just such a requirement, but I find that to be
unsupported by South Carolina law.



                                      38
some of these ideas may be self-evident, at the time they were

created they were not.

      More importantly, however, even if we were to conclude that

the April 2006 presentation contained no trade secrets because

the     individual       elements    were       “readily      ascertainable,”           the

existence of a trade secret is generally one of fact left to the

jury, not for the judge, though a few courts consider the issue

to be a mixed question and a small minority consider it to be an

issue of law.        Louis Altman & Malla Pollack, 2 Callman on Unfair

Competition, Trademarks and Monopolies § 14:27 ns.61-63 (Supp.

2010-2) (collecting cases).               South Carolina has not weighed in

on the issue and there are no cases that I have uncovered from

this jurisdiction addressing the point.                      I would thus certify

the issue to the South Carolina courts.



                                          III.

      The next question is whether Greenfield took adequate steps

to protect his trade secret.              The district court granted summary

judgment    on    the     basis    that    Greenfield        failed     to    adequately

protect    his    secrets      because    he    disclosed        them   at   a   business

pitch to Verizon and the business pitch included third-parties:

other     advertising         agencies    whose    role      in     the      process     is

unspecified.            The    majority    agrees      and       concludes       that    no

reasonable       jury    could    find    otherwise.         I    disagree.        It    is


                                           39
striking       to     me,   for    instance,      that      Greenfield      did     place

confidentiality notices on his materials – notices that were

only subsequently removed by EP.                    I do not believe that EP’s

unilateral actions should vitiate efforts to protect secrecy nor

that a reasonable jury should be foreclosed from agreeing.

       Under South Carolina law, the owner of a trade secret must

show that she or he made “efforts that are reasonable under the

circumstances to maintain its secrecy.”                     S.C. Code Ann. § 39-8-

20(5)(a)(ii).          Thus, “[o]ne may not claim as a trade secret

information ‘completely disclosed by the goods one markets’” or

“information that has been disclosed to the public in a way

which makes ‘the “secret” so obvious as to render meaningless’

any    claim     of    confidentiality.”          Carpenter,       supra,    at     § 74.

Nevertheless, “courts have recognized that some disclosure is

necessary for enjoyment of the benefits of a trade secret and

that not every disclosure effectively destroys secrecy.”                           Id.    A

quintessential example of protected disclosure is a pitch to

potential customers.              Id. at n.7 (citing ILG Indus., Inc. v.

Scott, 49 Ill. 2d 88, 94 (1971)).                    Most importantly, like the

question of whether or not a trade secret exists as a threshold

matter,     the     question      of   adequate     protective     measures       is,    at

least under Fourth Circuit caselaw, one of fact.                          Trades Corp.

v.    Guy   F.    Atkinson     Co..    996   F.2d    655,    664   (4th     Cir.    1993)

(analyzing a Maryland law that, for our purposes, is identical);


                                             40
Altman    &     Pollack,     supra,      § 14:26,       n.27   (collecting     cases).

Indeed,    it    is    a   rare   case    where    summary     judgment    should    be

granted on this issue because “the answer depends on a balancing

of costs and benefits that will vary from case to case and so

require estimation and measurement by persons knowledgeable in

the particular field of endeavor involved.”                          Rockwell Graphic

Systems, Inc. v. Dev Industries, Inc., 925 F.2d 174, 179 (7th

Cir. 1991).           Factors that should be considered by a jury in

evaluating      secrecy      include,     according       to   the    Restatement    of

Torts:

     (1) the extent to which the information is known
     outside of his business; (2) the extent to which it is
     known by employees and others involved in his
     business; (3) the extent of measures taken by him to
     guard the secrecy of the information; (4) the value of
     the information to him and to his competitors; (5) the
     amount of effort or money expended by him in
     developing the information; (6) the ease or difficulty
     with which the information could be properly acquired
     or duplicated by others.

Restatement (First) of Torts § 757, cmt. b (1939).

     In the instant matter, these factors suggest that there was

enough of a track record for the jury to be able to hear the

case.     First and foremost, the pitch was not open to the general

public; it was a closed setting and the information was thus not

known outside the business.              While it is true other advertising

agencies      may     have   been     there,      the    precise      nature   of   the

relationships is not fleshed out by the record.                       Indeed, it is a




                                           41
fact that can be spun in many directions, and, according to

summary     judgment      standards,       deserves     to        be    construed      in

Greenfield’s favor.          These agencies may or may not have been

competitors looking to poach the idea from EP and 1st Approach,

or they may have been collaborators that would be brought in to

handle parts of the deal that were beyond the competencies of EP

and 1st Approach.           They may have been agents of Verizon, and

they may have had contractual relationships with EP.                           To rest

the    entire   decision     on    this   point    seems     to    me    a   thin    reed

indeed.     I think it would be far better to allow the jury to

weigh and consider this in addition to other evidence at trial.

       The majority also makes much of the disclosure to Captain

D’s, but there are two responsive points.                         First, as stated

above,     disclosure       to    potential       customers       is     a    protected

activity.         Second,    the     content   of     the     secrets        that    were

disclosed to Captain D’s differs from the content of the trade

secrets – in particular the Pastor Packet – that made up the

idea     Greenfield    claims       Verizon    misappropriated.               Thus    the

majority seems to be comparing apples to oranges.

       Next, even if the other advertising agencies or Captain D’s

were competitors as the majority simply assumes without support,

the deck said that it was copyrighted to EP and 1st Approach.

1st    Approach    also     had    confidentiality     notices          on   materials.

J.A.     910;   J.A.    941;      J.A.    1061-64;    J.A.        1186;      J.A.    1375


                                          42
(including information that was in talks and Captain D’s pitch

and    confidentiality         notices      from        EP    on    their      own    behalf).

Indeed, the confidentiality notices that were lacking on the

final deck were, according to Greenfield, removed without his

consent.       (Appellant’s Br. at 36-37.)                   I do not believe that it

is appropriate to hold that EP’s unauthorized and unilateral

efforts vitiate Greenfield’s protective efforts or render them

insufficient as a matter of law.

       While    a     business      pitch       may    be    “speculative,”          at    least

according to Verizon and EP, it arguably does not allow the

customer to appropriate the ideas in the pitch without paying

for them.       Any disagreement over the function of business sales,

and    precisely       how   confidential            they    are    intended     to       be   and

actually      were,    is    further      justification            for   vacating      summary

judgment and allowing the matter to go to trial.

       The contractual relationship between Verizon and EP also

militates against the degree of disclosure necessitated; because

the    two    companies      had    a    very    close       working     relationship          and

Verizon was EP’s biggest client, it is within the purview of the

jury    to     find    that    secrets          might       fall    within     their       legal

relationship.          More specifically, the jury could determine an

expectation      of    secrecy      was     part       of    the   overall      relationship

between the two companies.                See, e.g., Burten v. Milton Bradley

Co.,    763     F.2d    461,       463    (1st        Cir.    1985)      (“A    confidential


                                                43
relationship     generally            arises     by        operation      of    law    from    the

affiliations         of    the     parties       and       the   context       in     which    the

disclosures      are           offered       . . .     a     confidential           relationship

typically will be implied where disclosures have been made in

business       relationships             between           employers       and        employees,

purchasers      and            suppliers,       or      prospective            licensees       and

licensors.”) (internal citations omitted).

        Furthermore, the fact that Greenfield himself kept the idea

for the series a secret is telling.                              He waited after being

assured that Verizon was still considering the pitch instead of

taking it to other potential customers, suggesting he viewed the

matter as both secret and proprietary.

      Finally, Verizon points to the fact that there was no NDA

as   an   example         of    why   Greenfield           failed    to    take       reasonable

efforts to protect his material.                           I strongly caution against

placing too much reliance on the existence of an NDA.                                         While

indicative of secrecy, it is no talisman.                              Altman & Pollack,

supra, § 14:26 (noting four factors, of which an NDA is only

one).     Indeed, according to the treatise on South Carolina law

cited     by   the     majority,         a    confidential          relationship        may     be

implied from the circumstances of the disclosure rather than be

in the form of an express agreement, as mentioned previously.

Carpenter, supra, at § 76 (“Written agreements are not, however,

essential to protect secret information disclosed to employees

                                                44
or others in every case. The required agreement may be implied

by the confidential relation itself.”).                       Thus, I believe there

are enough facts for a jury at least to be able to evaluate this

issue for itself.



                                             IV.

      Last, there is the question as to whether the secret was

indeed misappropriated if it did exist in the first place.                               The

district court held that it was not; even if the materials were

confidential, it ruled, it had not been acquired by “improper

means.”        Under       South    Carolina       law,     “improper      means”    means

“theft, bribery, misrepresentation, breach or inducement of a

breach of a duty to maintain secrecy, duties imposed by the

common    law,      statute,       contract,      license,    protective        order,    or

other     court       or   administrative          order,     or    espionage       through

electronic       or    other       means.”         S.C.     Code    Ann.   § 39-8-20(1)

(emphasis added).            The district court ruled that because Verizon

did not consider the material confidential, a fortiori it could

not   have    been     acquired      through       improper      means.     I   disagree.

Verizon      knew     that   Greenfield       had    a    role     in   formulating      the

marketing strategy, as evidenced by 1st Approach’s inclusion in

the 2006 deck, and a reasonable jury could find that Verizon

intentionally induced EP to breach its duty of secrecy and cut



                                             45
him out from the deal.    This is true regardless of whether or

not key Verizon officials knew specifically who Greenfield was.



                               V.

     For the foregoing reasons, I affirm in part and dissent in

part.




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