06-5316-cv
     Topps Co. v. Cadbury Stani S.A.I.C.



 1                                         UNITED STATES COURT OF APPEALS
 2                                             FOR THE SECOND CIRCUIT
 3
 4                                                _______________
 5
 6                                               August Term, 2007
 7
 8   (Argued: December 12, 2007                                      Decided: May 15, 2008)
 9
10                                             Docket No. 06-5316-cv
11
12                                                _______________
13
14                                            The Topps Company, Inc.,
15
16                                                            Plaintiff-Appellant,
17
18                                                       v.
19
20                        Cadbury Stani S.A.I.C., f/k/a Productos Stani
21                           Sociedad Anonima Industrial y Comercial,
22
23                                                            Defendant-Appellee.
24
25                                                _______________
26   Before:
27                               CARDAMONE, and POOLER, Circuit Judges,
28                                    and KEENAN,* District Judge.
29
30                                                _______________
31
32        Plaintiff appeals from the judgment of the United States
33   District Court for the Southern District of New York (Haight,
34   J.), entered November 8, 2006, dismissing claims for breach of
35   contract and misappropriation of trade secrets.
36
37             Reversed and remanded.
38
39                                                _______________
40
41
42
43
44
45   _______________
46
47   *         Honorable John F. Keenan, United States District Judge for
48             the Southern District of New York, sitting by designation.
 1                            _______________
 2
 3   DAVID G. EBERT, New York, New York (Patricia Hewitt, Mioko
 4        Tajika, Caitlin L. Bronner, Ingram Yuzek Gainen Carroll &
 5        Bertolotti, LLP, New York, New York, of counsel), for
 6        Plaintiff-Appellant.
 7
 8   DENNIS P. ORR, New York, New York (Stefan W. Engelhardt, John
 9        W.R. Murray, Morrison & Foerster LLP, New York, New York, of
10        counsel), for Defendant-Appellee.
11
12                            _______________
1    CARDAMONE, Circuit Judge:

2         Plaintiff appeals from a grant of summary judgment in favor

3    of defendant in litigation between two multinational

4    corporations.    This litigation concerns chewing gum, principally

5    "Bazooka" bubble gum, known in this country by its small -- less

6    than an inch -- paper-wrapped package and accompanying comic

7    strip.   Chewing gum is a pastime engaged in since ancient times

8    when the substance chewed was a resin taken directly from certain

9    trees.   Nowadays people generally chew the industrially-produced

10   version.   They do so for a variety of reasons, including:   to

11   cleanse teeth and freshen breath; to focus the mind during

12   athletic competitions; to calm the stomach; and to take the place

13   of smoking.     One's inability to chew gum while simultaneously

14   carrying out other routine activities, such as walking, is

15   sometimes used as an epithet.    And, of course, because gum is

16   today a sugary confection it is sweet and chewing gum is

17   enjoyable and fun.

18        Such a widely enjoyed product is a big seller in the

19   marketplace and a dispute over the manufacture and distribution

20   of "Bazooka" bubble gum and another brand in parts of South

21   America is what precipitated the instant litigation.    On this

22   appeal we review a grant of summary judgment to defendant, which

23   had been licensed for many years by plaintiff to make and sell

24   these products.    In reaching its decision the United States

25   District Court for the Southern District of New York (Haight, J.)

26   relied heavily on an analysis of trademark rights and the sale of

                                        2
1    goodwill that led it into a complex and evolving area of the law.

2    We believe it erred here as well as in other aspects of its

3    reasoning.   Yet, it is not our purpose in this opinion to plant

4    new guideposts into the trademark terrain.    We write, rather,

5    simply to explain why this case was not ripe for summary

6    judgment.

7                                 BACKGROUND

8         The Topps Company, Inc. (Topps or plaintiff) is a New York

9    corporation that makes and sells chewing gum under a number of

10   brand names, including the "Bazooka" brand.   Cadbury Stani

11   S.A.I.C., f/k/a Productos Stani Sociedad Anonima Industrial y

12   Comercial (Stani or defendant) is an Argentinian corporation to

13   which, beginning in 1957, Topps granted, through a series of

14   licensing agreements, the exclusive right to manufacture, sell

15   and distribute "Bazooka" and other Topps chewing gum brands in

16   five South American countries:   Argentina, Bolivia, Chile,

17   Paraguay and Uruguay.   See Topps Co. v. Cadbury Stani S.A.I.C.,

18   

, 91 (S.D.N.Y. 2006).

19                      A.   The Licensing Agreements

20        The original 1957 licensing agreement provided for Topps to

21   share with Stani "the know-how, formulae, processes and

22   techniques used by Topps" in return for royalties on Stani's

23   sales.   The 1957 agreement was set to expire after 20 years.     But

24   in 1976, one year short of the contract's termination, the

25   parties executed a new agreement, providing for the continued

26   sharing of "manufacturing technology, marketing concepts and

                                      3
1    techniques, administrative and consultive assistance and

2    trademark use" in return for Stani paying a yearly license fee.

3    The 1976 agreement had a term of ten years, with an option for

4    Stani to extend it for another ten years.

5         Four years later, in 1980, the parties simultaneously

6    executed two additional agreements that are the subject of the

7    present dispute.    One was an Amended and Restated License

8    Agreement.    It contained terms similar to those set out in the

9    1976 license agreement, but extended the license until April 30,

10   1996.   Paragraph 2 of the 1980 license agreement stated that

11   Topps granted to Stani

12                the exclusive non-assignable right and
13                license to manufacture in Argentina, Bolivia,
14                Chile, Paraguay and Uruguay and sell within
15                the Territory, during the continuance of this
16                Agreement, Licensed Products employed by
17                TOPPS in [enumerated locations] and in any
18                subsequent established affiliated plants of
19                TOPPS.
20
21   This language was nearly identical to that of paragraph 2 of the

22   1976 license agreement, except that the 1976 agreement referred

23   to "Licensed Products utilizing TOPPS Technology" (emphasis

24   added) while the 1980 agreement referred simply to "Licenced

25   Products."

26        Paragraph 3 of the 1980 license agreement stated

27                [t]he TOPPS Trademarks and the TOPPS
28                Technology shall at all times remain the
29                exclusive property of TOPPS or its assigns
30                and the rights hereby granted to STANI shall
31                be by way of license or, if required by
32                trademark regulations within the Territory,
33                by way of registered user rights.
34

                                        4
1    Again, this language was nearly identical to that used in the

2    1976 licensing agreement.   In addition, both agreements defined

3    Topps Trademarks as "all Chewing Gum and Other Topps Products

4    trademarks, owned, used or originated by TOPPS," and they defined

5    Topps Technology as "the specialized knowledge and experience of

6    TOPPS applicable to the manufacture and/or sale of Licensed

7    Products," including "formulae, recipes, processes, equipment

8    utilization, labour and equipment standards, ingredient

9    specifications, factory management and production planning

10   techniques, factory facility design and layout and quality

11   control procedures, including gum base technology."

12        The 1980 and 1976 license agreements provided for early

13   termination by either party on certain grounds, and both

14   specified that upon termination Stani, among other things, would

15   have no further right "to use any of the TOPPS Trademarks or the

16   TOPPS Technology except for use in connection with selling and

17   disposing of Licensed Products on hand" under specified

18   conditions.

19        Further, Paragraph 30 of the 1980 license agreement (like

20   Paragraph 32 of the 1976 agreement) contained the following

21   language

22              All the terms of the Agreement between the
23              parties are herein set forth and no
24              modification, amendment alteration or
25              variation of the terms of this Agreement
26              shall be valid unless in writing signed by
27              TOPPS and STANI. No agreement, letter or
28              other communication between the parties shall
29              be deemed to be a modification or amendment
30              of this Agreement or any terms hereof, unless

                                      5
1               such agreement, letter or other communication
2               expressly provides that it is intended to be
3               a modification or amendment of this
4               Agreement.
5
6                         B.   The Escrow Agreement

7          On the same day the 1980 license agreement was executed, the

8    parties also signed what they termed an Escrow Agreement.     This

9    escrow agreement set out the terms by which the minute book,

10   stock book, and stock certificates of one Verco Holding

11   Corporation would be held in escrow and delivered to Stani's

12   owner on May 31, 1996 unless Stani defaulted under the 1980

13   license agreement or other enumerated events occurred.     The

14   preamble to the escrow agreement stated, "Topps has transferred

15   legal title to the registration in Argentina of the trademarks

16   'Bazooka', 'Topps' and related trademarks to the Verco Holding

17   Corp., a New York corporation, all of the capital stock of which

18   is issued in the name of [Stani's owner]."   In exchange for the

19   transfer, Stani paid Topps $100,000.   

  98.

21                             C.   The Dispute

22         The 1980 license agreement expired by its own terms on April

23   30, 1996, and it appears the escrow agent, as provided in the

24   escrow agreement, transferred the stock and corporate papers to

25   Stani's owner on May 31, 1996.   

.

26   Three years later, in 1999, Topps brought the present suit

27   against Stani, contending that Stani continued to use Topps

28   chewing gum formulas (considered Topps Technology under the


                                       6
1    license agreements) after April 30, 1996, and that it transferred

2    these formulas and other Topps Technology to its parent company,

3    Cadbury, all in breach of the 1980 license agreement.     Topps

4    maintained Stani's conduct constituted wrongful misappropriation

5    of trade secrets under New York tort law.   Stani responded by (1)

6    denying it continued to use Topps chewing gum formulas, and (2)

7    arguing that even if it had, such conduct was neither a breach of

8    the agreement nor a wrongful misappropriation because the

9    agreement granted it the right to use plaintiff's formulas.

10   

.

11        On Stani's motion, the district court granted it summary

12   judgment on all but one of Topps' claims.   

  The court

13   separated these claims from the one remaining claim in order to

14   render a final, appealable judgment.   Topps Co. v. Cadbury Stani,

15   S.A.I.C., 

, at *4 (S.D.N.Y. 2006).     The trial

16   court concluded that the 1980 licensing agreement, read in

17   conjunction with both the contemporaneously signed escrow

18   agreement and the prior (1976) licensing agreement, unambiguously

19   gives Stani the right to continue using Topps chewing gum

20   formulas even after the 1996 expiration date.   Topps, 

  Supp. 2d at 101-07.   Reasoning from this conclusion, it went on

22   to hold there was neither a breach of contract, nor a wrongful

23   misappropriation of trade secrets.   

  From the

24   ensuing dismissal of its claims, Topps now appeals.




                                      7
1                                 DISCUSSION

2                           I   Standard of Review

3         We review a grant of summary judgment de novo applying the

4    same tests used by the district court.    See, e.g., Compagnie

5    Financiere de CIC et de L'Union Europeenne v. Merrill Lynch,

6    Pierce, Fenner & Smith Inc., 

, 157 (2d Cir. 2000).

7    Imposing this procedural remedy is appropriate only when there is

8    no genuine issue with regard to any material fact and the moving

9    party is entitled to judgment as a matter of law.   Fed. R. Civ.

10   P. 56(c).   When deciding a summary judgment motion, a court must

11   construe all the evidence in the light most favorable to the

12   nonmoving party, in this case Topps, and draw all inferences and

13   resolve all ambiguities in that party's favor.   LaSalle Bank

14   Nat'l Ass'n v. Nomura Asset Capital Corp., 

, 205 (2d

15   Cir. 2005).

16        This generally means that a motion for summary judgment may

17   be granted in a contract dispute only when the contractual

18   language on which the moving party's case rests is found to be

19   wholly unambiguous and to convey a definite meaning.    See

20   Compagnie 

.   Ambiguity here is

21   defined in terms of whether a reasonably intelligent person

22   viewing the contract objectively could interpret the language in

23   more than one way.   Sayers v. Rochester Tel. Corp. Supplemental

24   Mgmt. Pension Plan, 

, 1095 (2d Cir. 1993).    To the

25   extent the moving party's case hinges on ambiguous contract

26   language, summary judgment may be granted only if the ambiguities

                                       8
1    may be resolved through extrinsic evidence that is itself capable

2    of only one interpretation, or where there is no extrinsic

3    evidence that would support a resolution of these ambiguities in

4    favor of the nonmoving party's case.    See Compagnie Financiere,

.   We turn next to resolve those issues.

6                       II   The 1980 License Agreement

7                              A.   Its Ambiguity

8         On its face, the 1980 license agreement contains no terms

9    expressly granting or denying Stani the right to Topps chewing

10   gum formulas after April 1996, and its provisions bearing on the

11   issue point in different directions.    On the one hand, the

12   agreement states, "[t]he TOPPS Trademarks and the TOPPS

13   Technology" -- the latter defined to include Topps chewing gum

14   formulas -- "shall at all times remain the exclusive property of

15   TOPPS or its assigns."    And further, where Paragraph 2 grants

16   Stani the right to use Topps formulas, it grants this right only

17   "during the continuance" of the agreement.     These provisions

18   strongly suggest Stani had no right to continue using Topps

19   formulas after the agreement's April 1996 expiration date.     On

20   the other hand, there is no language in the 1980 agreement

21   expressly stating that Stani's right to the formulas would end

22   with the April 1996 expiration date.    By way of contrast, this

23   agreement expressly addresses the loss of Stani's right to these

24   formulas in the event of early termination.    Hence, the absence

25   of such express language in the agreement with respect to the



                                        9
1    regular expiration date could be read to mean Stani's rights to

2    the formulas would continue.

3            As a consequence, the 1980 license agreement is amenable to

4    two different interpretations.     Because we believe a reasonably

5    intelligent person viewing this agreement objectively could

6    choose either interpretation, we hold the agreement is ambiguous.

7    See Compagnie 

; 

   1095.

9                      B.   The Role of Extrinsic Evidence

10           Given our conclusion that the 1980 license agreement is

11   ambiguous, we look next to the record to determine whether any

12   relevant extrinsic evidence is so one-sided in defendant's favor

13   as to allow Stani's interpretation to prevail on summary

14   judgment.    As a preliminary matter, we address Topps' contention

15   that the 1980 escrow agreement and 1976 license agreement are

16   inadmissible for this purpose under the parol evidence rule.

17           It is conceded that New York law governs the interpretation

18   of the 1980 license agreement.     New York's parol evidence rule

19   generally bars admission of extrinsic evidence to vary or

20   contradict the terms of a fully integrated writing.     See Primex

21   Int'l Corp. v. Wal-Mart Stores, Inc., 89 NY2d 594, 599-600 (N.Y.

22   1997).    Contrary to the district court's analysis, Topps, 

  Supp. 2d at 101 n.11, this rule of inadmissibility of extrinsic

24   evidence applies to both oral and written evidence alike.    See

25   Primex, 89 NY2d at 599-600; Farm Stores, Inc. v. Sch. Feeding

26   Corp., 79 AD2d 504, 504-05 (1st Dep't 1980), aff'd 53 NY2d 910

                                        10
1    (N.Y. 1981).   Moreover, Article 30 of the 1980 license agreement

2    appears to express the parties' intent to form an integrated

3    agreement.   See Primex, 89 NY2d at 596-97, 599-600.

4         Nonetheless, extrinsic evidence may be used as a guide to

5    Stani's rights after April 1996 because the 1980 license

6    agreement is facially ambiguous as to these rights.    "Even though

7    a document may be fully integrated with respect to the ultimate

8    terms of the agreement, the meaning of those terms may remain

9    unclear."    U.S. Fire Ins. Co. v. Gen. Reinsurance Corp., 

  569, 571 (2d Cir. 1991) (applying New York law).     In such cases,

11   it is proper to consider extrinsic evidence in interpreting the

12   ambiguous terms, irrespective of the parol evidence rule.    

extrinsic evidence in this case, however, does not

14   resolve the ambiguities over Stani's rights for purposes of its

15   summary judgment motion.    The 1980 escrow agreement and the 1976

16   license agreement shed little light on the parties' intent with

17   regard to Stani's rights to Topps formulas after April 1996.    In

18   fact, the strongest pieces of extrinsic evidence identified by

19   the parties are Stani's own pleadings and the statement of one of

20   its experts that it had no need for these formulas after that

21   date -- and possibly even much earlier.    Far from proving Stani's

22   case, these pieces of evidence lend support to Topps' position.

23                      III   District Court's Analysis

24        The district court viewed the evidence in a different light.

25   It did so in the context of interpreting what it erroneously

26   believed to be unambiguous contract language.    Nonetheless, we

                                       11
1    address its reasoning at this juncture.    Were this reasoning

2    sound, it would apply equally to our evaluation of the evidence

3    for purposes of resolving the ambiguities in the 1980 license

4    agreement.

5                          A.   Of Trademark Law

6         The trial court relied heavily on the 1980 escrow agreement,

7    which it read in the context of what it understood to be

8    applicable principles of trademark law.    It reasoned that if

9    Stani had not been given the right to continue using Topps

10   formulas after April 1996, the 1980 escrow agreement would amount

11   to nothing more than a transfer of the Topps trademarks "in

12   gross," and in that way would "violate the laws of trademark."

13   

.   The court concluded the parties

14   must not have intended to contract with each other in such a

15   manner.   

think this reasoning flawed in several respects.    First,

17   the district court assumed the "laws of trademark" applicable to

18   this transfer prohibited assignments "in gross."    In so doing it

19   looked to U.S. trademark law for the principle that a trademark

20   is simply a symbol of goodwill and cannot be sold or assigned

21   apart from the goodwill it symbolizes.    

(citing

22   Marshak v. Green, 

, 929 (2d Cir. 1984) (citing Lanham

23   Act § 10, 15 U.S.C. § 1060)).    An assignment "in gross" is a

24   purported transfer of a trademark divorced from its goodwill, and

25   it is generally deemed invalid under U.S. law.    See Marshak, 746



                                      

.    But in the case at hand the 1980 escrow agreement

2    dealt with trademarks in Argentina, not in the United States.

3         Although the escrow agreement includes a choice-of-law

4    clause pointing to New York law, the question is not whether or

5    how to enforce this agreement, but rather what was the actual

6    effect, in Argentina, of the purported transfer that the

7    agreement memorialized.    The principle of territoriality is

8    fundamental to trademark law.    A trademark has a separate legal

9    existence under each country's laws, and trademark rights exist

10   in each country solely according to that nation's laws.    See,

11   e.g., ITC Ltd. v. Punchgini, Inc., 

, 155 (2d Cir.

12   2007); Person's Co. v. Christman, 

, 1568-69 (Fed.

13   Cir. 1990).    As a consequence, whether or not the transfer

14   memorialized in the escrow agreement ultimately left Stani with

15   the right to trademarks in Argentina depends on Argentinian law.

16        This is a significant matter in this litigation because

17   there has been no briefing on the relevant Argentinian law, much

18   less any notification, under Federal Rule of Civil Procedure

19   44.1, that foreign law would be at issue.    Although we decline to

20   rule definitively on this issue under these circumstances, we

21   note that Argentinian trademark law (like that of many countries)

22   appears to permit assignments in gross.    See 1 Trademarks

23   Throughout the World § 9:21 (5th ed. 2007); Susan Barbieri

24   Montgomery & Richard J. Taylor, Key Issues in Worldwide Trademark

25   Transfers:     Law & Practice 1, 5-6 (2005); Ernesto O'Farrell &

26   Iris V. Quadrio, Argentina in 

AR-11; Mark A.

                                       13
1    Greenfield, Goodwill As a Factor in Trademark Assignments:    A

2    Comparative Study, 60 Trademark Rep. 173, 181-81 (1970).

3         Second, even were the court's ruling correct that the

4    applicable law prohibited assignments in gross, it is not evident

5    the transfer at issue required a concomitant transfer of Topps

6    chewing gum formulas to avoid qualifying as such an assignment.

7    The goodwill requirement in U.S. law does not mean the assignee's

8    products must be identical to those of the assignor.    Instead,

9    they need only be "substantially similar" such that "consumers

10   would not be deceived or harmed."   

.

11   Stani's own pleadings and the statements of one of its experts

12   strongly suggest a substantially similar product could be

13   produced without using the Topps formulas.    At the very least,

14   this question of fact could not be resolved in Stani's favor on

15   Stani's motion for summary judgment.

16        Third, even if applicable law prohibited assignments in

17   gross and even if the transfer here would have qualified as such

18   without a concomitant transfer of Topps formulas, there still is

19   insufficient proof, for summary judgment purposes, that the

20   parties intended to give Stani the right to these formulas.     It

21   could well have been that the parties were attempting an

22   assignment in gross despite the law.    In fact it appears

23   businesses take this risk frequently.    See Irene Calboli,

24   Trademark Assignment "With Goodwill":    A Concept Whose Time Has

25   Gone, 

. Rev. 771, 774 (2005); Nathan Isaacs, Traffic in

26   Trade-Symbols, 44 Harv. L. Rev. 1210, 1210-21 (1931).    And, to

                                    14
1    the extent the parties were looking to U.S. law when they

2    negotiated the escrow agreement, they may well have relied on the

3    then-recent trend toward a more flexible definition of the

4    goodwill necessary to avoid the prohibition against assignments

5    in gross.   See 

("[B]y the beginning of the

6    1970s, most courts . . . started to declare assignments valid as

7    long as sufficient continuity or substantial similarity, rather

8    than identity, existed between the marked goods."); Stephen L.

9    Carter, The Trouble With Trademark, 99 Yale L.J. 759, 785-87

10   (1990) (criticizing this trend).      As with the other issues

11   involved in the district court's trademark analysis, this

12   question of the parties' intent was a subject not suitably

13   resolved on summary judgment.

14                           B.   Of Contract Law

15        The district court also relied on principles of contract law

16   in reading the 1980 escrow agreement and the 1976 license

17   agreement in conjunction with the 1980 license agreement.        It

18   looked to the 1980 license agreement's broad definition of "Topps

19   Technology" to include not just the chewing gum formulas at issue

20   but also "all other elements of TOPPS' knowledge and experience."

21   

.   The court reasoned that for the

22   agreement to be read as prohibiting Stani's continued use of

23   Topps chewing gum formulas, it would also need to be read as

24   prohibiting Stani's use of everything else defined as Topps

25   Technology, since the agreement does not differentiate between

26   these groups.   

           This reading, the court found, would have "put Stani out of

2    business" or at least forced it to "start over entirely in the

3    gum business, with new plants, new methods, new processes, and

4    all the technical components involved in the making of chewing

5    gum."    

outcome seemed in the trial court's view

6    inconsistent with the existence of the escrow agreement, which

7    suggested the parties' assumption that Stani would continue to

8    manufacture and sell chewing gum using the "'specialized

9    knowledge and experience' it had acquired from Topps over the

10   course of a 39-year relationship."      

district court also focused on the contrast, noted in

12   Part II A. above, between the 1980 license agreement's express

13   language cutting off Stani's right to use Topps Technology in the

14   event of early termination, and the absence of such a cut-off

15   provision in the contract language establishing the April 1996

16   expiration date.     

  Further, it looked to (1) the

17   absence of the words "utilizing Topps technology" in paragraph 2

18   of the 1980 licensing agreement as compared to paragraph 2 of the

19   1976 licensing agreement, (2) the fact that the 1980 licensing

20   agreement was set to expire on a date certain whereas the 1976

21   agreement had the option of renewal, and (3) the fact that Stani

22   had limited rights to terminate the 1980 licensing agreement as

23   compared to its rights to terminate the 1976 licensing agreement.

24   

    The court took all of these things as signs of

25   the parties' intent for Stani to continue using Topps Technology,

26   including chewing gum formulas, after April 1996.     

                                        16
1         There is no question that with respect to Stani's rights

2    after April 1996 the 1980 license agreement could have been more

3    clearly written.   However, the extrinsic evidence in the record

4    does not weigh so overwhelmingly in Stani's favor as to permit

5    resolution of the agreement's ambiguities on a motion for summary

6    judgment.   Quite the contrary, as already noted, Stani's own

7    pleadings and the statements of one of its experts strongly

8    undercut the district court's finding that the company could not

9    remain in business without using Topps Technology.   While the

10   differences in the language of the 1976 and 1980 license

11   agreements do support Stani's position to some extent, they do

12   not plainly resolve the question for purposes of summary

13   judgment.

14                               CONCLUSION

15        For all of these reasons, we must reverse the district

16   court's grant of summary judgment in favor of defendant.   We do

17   so with respect to the breach of contract claim (including Topps'

18   claim with regard to the alleged disclosure of Topps Technology

19   to Cadbury, which was not addressed in the district court's

20   opinion), and also with respect to the misappropriation claim,

21   since the judgment we reverse hinged as to both claims on an

22   erroneous interpretation of the 1980 license agreement.

23        Accordingly, the case is remanded to the district court for

24   further proceedings not inconsistent with this opinion.




                                     17