United States District Court, W.D. Washington, Seattle
ORDER ON MOTIONS FOR SUMMARY JUDGMENT
J. PECHMAN UNITED STATES DISTRICT JUDGE.
above-entitled Court, has received and reviewed:
1. Ross-Wells, Inc.'s Motion for Summary Judgment (Dkt.
No. 33), Eureka! Pet Food, Inc.'s Response in Opposition
to Ross-Wells Inc.'s Motion for Summary Judgment (Dkt.
No. 46), and Reply to Ross-Wells, Inc.'s Motion for
Summary Judgment (Dkt. No. 48); and
2. Eureka! Pet Food, Inc.'s Motion for Partial Summary
Judgment (Dkt. No. 38), Ross-Wells, Inc.'s Response to
Eureka!'s Motion for Summary Judgment (Dkt. No. 42), and
Eureka! Pet Food, Inc.'s Reply in Support of Motion for
Partial Summary Judgment (Dkt. No. 49); and
attached declarations and exhibits, and relevant portions of
the record. Finding oral argument is not necessary to arrive
at a decision, the Court rules as follows:
ORDERED that Defendant's motion for summary judgment is
PARTIALLY GRANTED and PARTIALLY DENIED: Plaintiff's
claims for breach of contract, unjust enrichment, violations
of the Wisconsin Deceptive Trade Practices Act, and tortious
interference with business relations are DISMISSED with
prejudice. Defendant's motion for summary judgment on
Plaintiff's trademark infringement claims is DENIED.
ORDERED that Plaintiff's motion for partial summary
judgment is DENIED.
Ross-Wells, Inc. (“Ross-Wells”) is a Wisconsin
meat processing and animal feed company. In the late
60's, the owners of the company developed a pet food
formula combining fresh meat and a blend of vitamins and
minerals. Known as “premix, ” the formula (which
has been altered over time but remained essentially the same
for 50 years) is the foundation of many pet foods offered by
Ross-Wells, including dog food.
1989, Ross-Wells began shipping a version of premix developed
for a local “musher” (sled team driver) to a man
in Alaska named Winston Hobgood, who resold it to Alaska
mushers. Over time, Winston requested that additional
ingredients (e.g., liver, corn oil, bone meal) be added to
the premix. (A declaration from Ross-Wells' plant manager
- unchallenged by Plaintiff - indicates that Winston also
adopted some revisions suggested by Ross-Wells; see
Dkt. No. 37, Decl. of Kleifgen at ¶ 9). Around 1993,
Winston began repackaging the product under the brand name
“Eureka!.” Winston printed his own Eureka!
packaging materials, shipped them to Ross- Wells, and the
company packaged Winston's version of their premix
formula in the Eureka! materials. At that point, Ross-Wells
began rebating their savings (the result of not having to use
their own packaging materials) to Winston, calling it a
“commission.” The rate varied and - like the rest
of their business relationship with Winston - the arrangement
was never reduced to writing.
division of labor saw Ross-Wells responsible for
manufacturing the special-order premix and packaging it
(using Winston's “Eureka!” materials) while
Winston coordinated transport from Ross-Wells' Medford,
WI plant to Alaska, consulted on dog-related issues and
generated a small number of sales leads in the lower 48
states. In 2009, Winston trademarked the Eureka! name and the
next year formed a Eureka! business entity. He was the only
member of the organization, never had any employees, and
never had his own manufacturing facilities.
Winston died in 2014, it was not until months later that
Ross-Wells was made aware of his passing. Ownership of
Eureka! Pet Food eventually passed (after protracted
litigation) to Winston's children, Rhonda and Joel. In
December 2014 (before the ownership issue had been settled),
Rhonda and Joel visited the Medford plant with the intention
of continuing to build on the relationship their father had
created with Ross-Wells. The relationship did not get off to
a good start (Ross-Wells took exception, for instance, to
Rhonda's assertion that her father had
“invented” the dog food formula being sold as
Eureka! pet food), and things were really never the same
after Winston's death. Rhonda and Joel did not bring the
level of experience or expertise to the business which their
father had possessed - they had no experience in dog-related
issues, animal nutrition or pet-food manufacturing, did not
continue their father's practice of supplying Eureka!
packaging to Ross-Wells, and did nothing over the course of
their relationship with Ross-Wells other than maintain the
Ross-Wells website and monitor customer-response emails.
months following Winston's death, Ross-Wells sent Rhonda
a commission check utilizing the rate at the time of
Winston's passing (6%, less the cost of packaging
materials Ross-Wells has purchased to replenish the Eureka!
inventory), despite the fact that the children were not
providing the same of level of services their father had
(i.e., providing neither Eureka! packaging to Ross-Wells nor
consulting on issues concerning dog feeding/nutrition). In
February 2015, however, Ross-Wells co-owner Robert Wells
advised Eureka! that the commission would need to be
renegotiated for those reasons. Between July 2015 and July
2017, Ross-Wells sent Rhonda five biannual commission checks
(totaling $22, 237.82) accompanied by a reconciliation
statement which reflected the total amount of Eureka! product
manufactured, multiplied by the new commission rate (1.5%).
Rhonda cashed all five checks.
2017, Ross-Wells received a cease-and-desist letter from
Eureka!'s attorney, terminating the business relationship
and giving Ross-Wells 21 days to (1) cease using
Eureka!'s name on their packaging and (2) turn over
Ross-Wells' formulas and customer lists as “trade
secrets.” Ross-Wells responded by letter through their
counsel, disputing the “trade secrets” claim.
Additionally, Ross-Wells advised Eureka! that the company
still had $7600 worth of Eureka! packaging in stock and
indicating that (a) Eureka! could purchase it from them or
(b) Ross-Wells would utilize the Eureka! materials until they
were depleted and then begin packaging under a new trade
name. Eureka! never responded to the letter. For two months,
Ross-Wells used the packaging “as is” (i.e.,
without obscuring the “Eureka!” name);
thereafter, the company began pasting labels over the Eureka!
name on the boxes with their new product names (“Titan
Red” and “Titan Blue”) and turning the bags
with the Eureka! logo inside out. Ross-Wells also emailed its
customers and advised them of the new “Titan”
product name and why the name change was necessary. As of
November 2017, the company was no longer utilizing the
same month, Eureka! filed suit against Ross-Wells. The
initial lawsuit alleged liability for trade secrets
violations, but that claim was abandoned in the Second
Amended Complaint. In January 2018, Eureka! mass-emailed 1400
addresses culled from the website it had maintained for
Ross-Wells, announcing new production facilities and a new
product. Although Eureka! began accepting orders immediately,
the company did not actually begin delivering product until
Standard of review
court shall grant summary judgment 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.”
Fed.R.Civ.P. 56(a). The moving party is entitled to judgment
as a matter of law when the nonmoving party fails to make a
sufficient showing on an essential element of a claim in the
case on which the nonmoving party has the burden of proof.
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1985).
There is no genuine issue of fact for trial where the record,
taken as a whole, could not lead a rational trier of fact to
find for the non moving party. Matsushita Elec. Indus.
Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986)
(nonmoving party must present specific, significant probative
evidence, not simply “some metaphysical doubt.”);
Fed.R.Civ.P. 56(e). Conversely, a genuine dispute over a
material fact exists if there is sufficient evidence
supporting the claimed factual dispute, requiring a judge or
jury to resolve the differing versions of the truth.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 253
(1986); T.W. Elec. Service Inc. v. Pacific Electrical
Contractors Association, 809 F.2d 626, 630 (9th Cir.
has moved for summary judgment on all of Plaintiff's
claims; the Court will examine them in turn. The final
section (“Trademark infringement”) includes an
analysis of both Defendant's and Plaintiff's motions
for summary judgment on this cause of action. Breach of
contract/unjust enrichment It is undisputed that this