854 F.3d 797 (5th Cir. 2017), 15-11019, Jacked Up, LLC v. Sara Lee Corp.
|Citation:||854 F.3d 797|
|Opinion Judge:||EDWARD C. PRADO, Circuit Judge:|
|Party Name:||JACKED UP, L.L.C., Plaintiff--Appellant, v. SARA LEE CORPORATION; THE J.M. SMUCKER COMPANY, Defendants--Appellees. JACKED UP, L.L.C., Plaintiff--Appellant, v. THE J.M. SMUCKER COMPANY, Defendant--Appellee|
|Attorney:||For JACKED UP, L.L.C., Plaintiff - Appellant: Christopher D. Kratovil, Esq., Victor Calvin Johnson, Dykema Cox Smith, Dallas, TX; Kristina Marie Williams, Dykema Cox Smith, Austin, TX. For SARA LEE CORPORATION, J.M. SMUCKER COMPANY, Defendants - Appellees: Christopher John Schwegmann, Attorney, D...|
|Judge Panel:||Before PRADO, HIGGINSON, and COSTA, Circuit Judges.|
|Case Date:||April 25, 2017|
|Court:||United States Courts of Appeals, Court of Appeals for the Fifth Circuit|
Jacked Up and Sara Lee signed a licensing agreement whereby Sara Lee would produce and sell energy drinks developed by Jacked Up. Sara Lee sold its beverage division to the J.M. Smucker Company and Smucker decided not to assume Sara Lee's licensing agreement. After Sara Lee formally terminated the agreement, Jacked Up filed suit against Sara Lee, alleging breach of contract, breach of fiduciary duty,... (see full summary)
Appeals from the United States District Court for the Northern District of Texas.
For JACKED UP, L.L.C., Plaintiff - Appellant: Christopher D. Kratovil, Esq., Victor Calvin Johnson, Dykema Cox Smith, Dallas, TX; Kristina Marie Williams, Dykema Cox Smith, Austin, TX.
For SARA LEE CORPORATION, J.M. SMUCKER COMPANY, Defendants - Appellees: Christopher John Schwegmann, Attorney, David Steven Coale, Esq., Andres Correa, Michael Paige Lynn, Lynn Pinker Cox & Hurst, L.L.P., Dallas, TX.
Before PRADO, HIGGINSON, and COSTA, Circuit Judges.
EDWARD C. PRADO, Circuit Judge:
In September 2011, Jacked Up, L.L.C. (" Jacked Up" ) and Sara Lee Corporation (" Sara Lee" ) signed a licensing agreement whereby Sara Lee would produce and sell energy drinks developed by Jacked Up. Shortly thereafter, Sara Lee sold its beverage division to the J.M. Smucker Company (" Smucker" ). Smucker decided not to assume Sara Lee's licensing agreement with Jacked Up, and in November 2011, Sara Lee formally terminated the agreement. Jacked Up brought suit against Sara Lee, alleging breach of contract, breach of fiduciary duty, fraud, and fraudulent inducement. Jacked Up joined claims against Smucker for, among others, tortious interference with a contract and trade secret misappropriation. The district court granted summary judgment against Jacked Up on all claims. We AFFIRM in part, REVERSE in part, and REMAND for further proceedings.
I. FACTUAL AND PROCEDURAL BACKGROUND
In 2011, Jacked Up was a small start-up company that sold energy shots to convenience stores. Sara Lee was a large corporation with multiple well-established food and beverage brands. Jacked Up's founder and sole owner, Joe Schmitz, met some Sara Lee employees at a trade show in early 2011. Schmitz and the Sara Lee employees discussed creating a Jacked Up line of dispensed teas, coffees, and cappuccinos.1 Sara Lee already had an " Infusia" line of vitamin-infused teas under the Pickwick brand, but these teas were not marketed as energy drinks and did not sell well. Sara Lee saw a Jacked Up line of beverages as an opportunity to enter the energy drink market and " pioneer a brand new dispensed energy beverage category."
After several months of negotiations and product development, Jacked Up agreed to license its brand name and proprietary energy ingredients to Sara Lee in exchange for royalties. Under the terms of the licensing agreement, Jacked Up would sell its energy ingredients to Sara Lee and Sara Lee would then manufacture and sell Jacked Up products. The parties agreed to share marketing costs. In addition, the agreement called for market testing. The initial term of the licensing agreement was five years, followed by a three-year renewal term. However, the licensing agreement featured a number of termination clauses triggered by various events and dates.
One termination provision, Section 14(b), gave either party " the right to terminate this Agreement if it provides written notice to the other party no later than 60 days prior to any anniversary of the Effective Date." Sara Lee proposed adding this termination provision while the parties were finalizing the agreement. In an email, Sara Lee referred to this provision as an " annual Termination clause" affording both parties " the ability to terminate if strategy changes or market conditions shift, etc." Jacked Up accepted the added provision, describing it as " adding limited right for either party to terminate at anniversary dates of agreement."
During negotiations, Sara Lee also requested a change-of-control termination provision (Section 14(c)). In an email, Sara Lee director of marketing Greg Immell explained that Sara Lee wanted this provision " in the event North American Beverage2 is purchased by a third party company." Schmitz testified that this statement led him to question Sara Lee " executives Mr. Drake and Mr. Immell about any intent to sell the North American Beverage [Division]." According to Schmitz, these executives represented that Sara Lee " had no intent to sell the business and that it was not discussing any sale to any third party. They also represented that [Schmitz] did not need to be concerned as under no circumstance would [Sara Lee sell] the business and not include the License Agreement as part of the deal." Jacked Up and Sara Lee finalized the licensing agreement around September 28, 2011, with an effective date of October 1, 2011.
In early October 2011, shortly after the licensing agreement went into effect, Sara Lee displayed Jacked Up products at a convenience store trade show. According to Schmitz, a Sara Lee worker at the show told him about an impending sale of the company. Schmitz testified that he again asked Sara Lee executives--Immell and director of sales Jim Whitaker--whether Sara Lee was planning a sale. The executives, according to Schmitz, again represented that Sara Lee was not selling its business.
On October 24, 2011, Sara Lee publicly announced the sale of its North American Beverage Division to Smucker; this sale closed in early 2012. According to Schmitz, Sara Lee asked him to participate in a telephone call around October 21, 2011.3 On that call, according to Schmitz, Immell stated that [Sara Lee] was selling its coffee business to Smuckers, that the License Agreement would not be part of the [sale] to Smuckers, that [Sara Lee] was terminating the License Agreement immediately at Smuckers' request, that [Sara Lee] would no longer perform any obligations under the agreement, and that [Sara Lee] was discontinuing the Jacked Up Energy Iced Teas, Coffees, and Cappuccinos.
Schmitz testified that had he known of Sara Lee's impending sale to Smucker, he would not have signed the agreement and would not have launched Jacked Up products at the convenience store trade show.
Immell recounted the late October telephone call somewhat differently. According to Immell, he did tell Schmitz that Smucker would not assume the licensing agreement.4 But he also indicated that " Sara Lee was interested in pushing forward with the proposed dispensed energy iced tea product pursuant to the License Agreement, including by pursuing the required market testing to see how a Jacked Up branded dispensed energy iced tea would fare in the marketplace." Schmitz refused to move forward with market testing, however. Thus, according to Immell's account, it was Jacked Up that violated the agreement first.
In any event, the deal quickly broke down. An internal Sara Lee email dated October 26, 2011, suggests that Sara Lee had told Jacked Up by then that the licensing agreement would not come to fruition. An email from Sara Lee to Schmitz on November 4, 2011, further states that " Jacked Up Energy Tea is not part of [the] sale and will be discontinued." Sara Lee formally terminated the licensing agreement by letter on November 18, 2011.
As quickly as the licensing agreement broke down, it wound up in court. Jacked Up brought a breach of contract claim against Sara Lee in Texas state court on November 7, 2011--before Sara Lee even sent its formal termination letter. After Sara Lee removed the case to federal court, Jacked Up added Smucker as a defendant, claiming that Smucker tortiously interfered with the licensing agreement. Jacked Up later added claims for breach of fiduciary duty, fraud, and fraudulent inducement against Sara Lee, as well as a claim for common law trade secret misappropriation against Smucker. Jacked Up based this trade secret claim on the allegation that Smucker has used Jacked Up formulas in its Pickwick-brand iced teas (a brand it purchased from Sara Lee).
After discovery, all three parties moved for summary judgment. In connection with these motions, the parties moved to strike certain summary judgment evidence. Jacked Up also requested a continuance pursuant to Federal Rule of Civil Procedure 56(d) in response to Smucker's summary judgment motion, claiming that Smucker had not yet revealed what formula it was using in its teas. The district court granted Sara Lee's and Smucker's motions for summary judgment on various grounds, denied the motions to strike as moot, and denied Jacked Up's 56(d) request for a continuance. The district court entered judgment in favor of Sara Lee and Smucker on June 4, 2015. This appeal followed.
II. JURISDICTION AND STANDARD OF REVIEW
Jacked Up is a limited liability company whose sole member--Joe Schmitz--is a Texas citizen. Sara Lee is a Maryland corporation...
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