Earthgrains Baking Companies v. Sycamore et al

Filing 249

REDACTED VERSION OF 245 MEMORANDUM DECISION AND ORDER denying 115 Sealed Motion for Summary Judgment. Signed by Judge David Nuffer on 3/29/17 (alt)

Case 2:13-cv-00749-DN-DBP Document 245 *SEALED* Filed 03/29/17
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IIN THE UNITED STATES DISTRICT COURT
N THE
DISTRICT COURT
FOR THE DISTRICT
UTAH, CENTRAL DIVISION
FOR TIIE DISTRICT OF UTAH, CENTRAL
DIVISION

BIMBO
BIMBO BAKERIES USA, INC.,
INC.,
Plaintiff.
Plaintiff,

SEALEDMEMORANDUM DECISION
SEALED MEMORANDUM
DECISION
AND ORDER DENYING DEFENDANTS'
DENYINGDEFENDANTS'
AND ORDER
M
OTION FOR SUMMARY
MOTION FOR SUMMARY JUDGMENT
JUDGMENT

v.
Case No. 2:13-cv-00749 DN
Case No. 2: 13-cv-007-1-9
DN
ILELAND SYCAMORE,
ELANDSYCAMORE, TYLER
TYLER
SYCAMORE.
WILD GRAINS BAKERY,
SYCAMORE, WILD GRAINS BAKERY,
LLC, and UNITED STATES BAKERY, INC.,
and UNI FED STATES BAKERY,INC..

District Judge David Niftier
District Judge David Nuffer

Defendants.
Defendants.

Plaintiff
Bimbo Bakeries (Bimbo) filed this case against multiple Defendants principally
Plaintiff Bimbo Bakeries (Bimbo) filed this case against multiple Defendants principally
a lleging that the Defendants
misappropriated
alleging that the Defendants misappropriated Bimbo's trade secrets for making bread. Two of the
Bimbo's trade secrets for making bread.
of the
Defendants,
Defendants, Tyler Sycamore (Tyler), and his business, Wild Grains Bakery, LLC (Wild Grains),
Tyler Sycamore (Tyler), and his business, Wild Grains Bakery, LLC (Wild Grains),
((collectively referred
collectively
moves for summary judgment on all of Bimbo's claims
referred to as Defendants), moves for summary judgment on all of Bimbo's claims
to as Defendants),
a gainst them. These claims include: (1) trade secret misappropriation, (2) trade dress
against them. These claims include: (1) trade secret misappropriation,
(2) trade dress
iinfringement, and (3) trade dress dilution. For the reasons stated in this order, Defendants'
nfringement,
For the reasons stated in this order, Defendants'
and (3) trade dress dilution.
motion for summary judgment is DENIED in its entirety.
motion for summary judgment is DENIED in its entirety.

UNDISPUTED FACTS
UNDISPUTED FACTS

2

LEGALSTANDARD
LEGAL STANDARD

5
5

DISCUSSION
DISCUSSION

5

Trade Secret Misappropriation
Trade Secret Misappropriation

5

I . The Defendants
1-lave Not Shown Bimbo's Purported
1. 'fhe Defendants Have Not Shown Bimbo's Purported Trade Secret is Generally Known.
Trade Secret is Generally
Known.
..6
6
2. Bimbo's Combination of Well-Known Processes is Specific and Unique.
2. Bimbo's Combination of Well -Known Processes is Specific and Unique.
7
3. There Are Disputed Facts About Whether Tyler Misappropriated the Trade Secret
3. There Are Disputed Facts About Whether Tyler Misappropriated
the Trade Secret
Trade Dress Infringement
Trade Dress Infringement and Dilution
and Dilution
ORDER
ORDER

8
9
9
11
11

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UNDISPUTED FACTS
FACTS
Leland Sycamore(("Leland") invented the process and formula — including the elements
Leland Sycamore - Leland") invented the process and formula— including the elements
constituting the alleged trade secrets at issue —for making Grandma Sycamore's Home-Maid
the alleged trade secrets at issue
for making Grandma Sycamore's Home-Maid
c onstituting
Bread("Grandma Sycamore's - ) in 1979 at Aaron Bakery. ' Leland used packaging for Grandma
Bread ("Grandma Sycamore's") in 1979 at Aaron Bakery.' Leland used packaging for Grandma
Bimbo, still uses to sell the
similar to packaging his successor, Bimbo, still uses to sell the
Sycamore's that was substantially
Sycamore's that was substantially similar to packaging his successor,

for part of the packaging's design in
design in
bread today. Leland received federal trademark protection for part of the packaging's
bread today. 2 Leland received federal trademark protection
1 999 . 3
1999.3
eompany. 4 It is,
When Leland's son, Tyler, was 14 years old, he worked for his father's
Leland's son, Tyler. was 14 years old, he worked for his father's company.4 It is,

however, disputed whether Tyler was actually involved in making Grandma Sycamore's bread.5
h owever, disputed whether Tyler was actually involved in making Grandma Sycamore's bread.
Bimbo claims that, through years of working at the company, Tyler was well a ware of the
Bimbo claims that, through years of w'orking at the company, Tyler was woll aware of the
process for baking Grandma Sycamore's bread. Tyler, however, asserts that he was merely
process for baking Grandma Sycamore's bread. Tyler, hon ever, asserts that he was merely
iinvolved in simple tasks such as slicing bread and has no knowledge of the process for making
nvolved in simple tasks such as slicing bread and has no knowledge of the process for making
t he bread.'"
the bread.6
-in IIn 1998, Leland sold Grandma Sycamore's rights to one of Bimbo's predecessors-inn 1998, Leland sold Grandma Sycamore's rights to one of Bimbo's predecessors
interest for
interest for

1

The purchase was
7 The purchase was

Material Facts (SOF) at ¶ 1; docket no. 115.
Statement of Elements and Undisputed Material Facts(SOF) at 1 1; docket no. 115.
Statement of Elements and Undisputed

Motion for Partial SUMinary Judgment
of Christopher D. Smith in Support on:limbo's
D. Smith in Support of Bimbo's Motion for Partial Summary Judgment
an
M 16. 2016 DecIntation
2 May 16, 2016 Declaration oh CDistopher
["5/16/16 Smith Dec. - at ¶ 3; docket no. 199-9.
1 - 5/16/16 Smith Dec."] at 3: docket no. 199-9.
3

Docket no. 157-7.
Docket no. 157-7.

Ex. 0, Deposition of Tyler Sycamore as Rule 30(b)(6) witness for Wild Grains, dated October 30, 2013 (1 ylei of Tyler Sycamore as Rule 30(b)(6) witness For Wild Grains, dated October 30, 2013 ("Tyler
En. G, Deposition
Dep"); docket no. 199-11 at 11:14-16, 12:10-13.
docket no. 199-1 1 at 1 1 :14-16. 12:10-13,
Dep- );

4
4

5

h i. at 12: 14-21. 14:15 -- 15:1.
/d. at 12:14-21, 14:15 — 15:1.

6

N at 14:1-10.
.
/d. at 14:1-10.

SOF at lj 2; Ex. IL Aaron Bakery Asset Purchase Agreement [Bimbo 1495-1521], at Bimbo 1499-500; docket no.
at ¶ 2; Ex. H, Aaron Bakery Asset Purchase Agreement Bimbo 1405-15211. at Bimbo 1499-500; docket no.
1 99.
199.

•
7

2

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part of the transaction,
Leland executed a
.8 As part of the transaction, Leland executed a
nondisclosure
agreement, which requires, among other things, him to keep confidential
nondisclosure agreement, which requires, among other things, him to keep confidential and
and
and
rrefrain :from using Grandma Sycamore's production formulations, manufacturing processes, and
efrain from using Grandma Sycamore's production
formulations,
mannfacturing
processes,
ttrade secrets. 9
rade secrets.9
over the production process of Grandma
Bimbo asserts trade secret protection
process of Grandma
Bimbo asserts trade secret protection over the production
10 Bimbo claims that
S ycamore's white bread.1° Bimbo claims that the production process is composed of the
process is composed of the
Sycamore's white bread.
the production
c ompilation
compilation of
of
(
(

:

i

:

i

(

13
.13
(

8

Id.

9

Docket no. 199-13; Ex. II at 1516.
Docket no. 199-13: Ex. H at 1516.

10

Docket no. 37; Amend. Compl .
Docket no. 37; Amend. Compl.

II
11

Docket no. 199-2; Ex.
I foseney Rep. at ¶ 24.
Docket no. 199-2; Ex. A, Hoseney Rep. at 4,j 24.

12

Id.

I d at 1125(a).
13 Id. at 1125(a).

3

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Bimbo claims that Tyler, through his previous business Wild Grains, misappropriated
Bimbo claims that Tyler, through his previous business Wild Grains, misappropriated its
its
t rade secrets and trademarks associated with Grandma Sycamore's white bread.15 Tyler claims
trade secrets and trademarks associated
with Grandma Sycamore's white bread. 5 Tyler claims

he could not misappropriate Grandma Sycamore's alleged trade secret because he had no
Grandma Sycamore's alleged trade secret because he had no
h e could not misappropriate
)Althowr
process for making the bread.
is disputed whether
knowledge of the production process for making the bread. 16Although itit is disputed whether
k nowledge of the production

Tyler had this knowledge, there is evidence that Jeremy Faull, the production manager at \\
manager at Wild
Tyler had this know ledge, there is evidence that Jeremy Faulk the production
Grains, learned the process for making the bread from the previous owner of Grandma
Grains, learned the process for making the bread from the previous owner of Grandma
S ycamore's, Leland.17
Sycamore's, Leland. I7
United
For a period of three months,
Grains sold bread named Grandma Emilie's to United
For a period of three 11101.1.[11S. Wild Grains sold bread Ili:tilled

on Grandma
States Bakery (U.S. Bakery).18 Bimbo asserts that U.S. Bakery infringed on Grandma
States Bakery (U.S. Bakery). '1 Bimbo asserts that U.S. Bakery infringed
1 `)
Sycamore's trade dress and that the Defendants are also liable as contributory
infringers.19
Sycamore's trade dress and that the Defendants are also liable as contributory infringers.
,- 0 •
Bimbo also claims that Fault
In
In May 2013, Fault went to work for U.S. Bakery.2° Bimbo also claims that Faull
2013, Faull went to work for U.S. Bakery.

improperly misappropriated
Grandma Sycamore's recipe for making white bread to U.S.
i mproperly misappropriated Grandma Sycamore's recipe for making white bread to U.S.
Bakery. Bakery.21

14
'

LI. 'at1125(b).
Id. , it '. 2501).
no. 37; Amend.
Docket no. 37; Amend. Compl.

15 Docket

Docket no. 1 15; Niot. Surin. J. p. 25.
Docket no. 115; Mot. Summ. J. p. 25.
17"

16

12

Id.

Id. at p. 29.
18 Id. at p. 29.
I"
19

Docket no. 37; Amend. Compl.
Docket no. 37: Amend. Comp!.

20

Docket no. 199-17; Paul l Dep. 8:19-25 to 9:1-6.
Docket no. 199-17; Faull Dep. 8:19-25 to 9:1-6.
no. 37; Amend. Comp'.
Docket no. 37; Amend. Compl.

21 DOCkei.

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LEGALSTANDARD
LEGAL STANDARD
Summary judgment is appropriate
Summary judgment is appropriate if "there is no genuine dispute as to any material fact
if "there is no genuine dispute as to any material fact
a nd the movant is entitled
and the movant is entitled to judgment as a matter of law." 22 A factual dispute is genuine when
to judgment as a matter of law."22 factual dispute is Genuine when
"there is sufficient evidence on each side so that a rational trier of fact could resolve the issue
evidence on each side so that a rational trier of fact could resolve the issue
"there is sufficient
. 7,
e ither way. - In determining whether there is a genuine dispute as to material fact, the court
'
whether there is genuine dispute as to material fact, the court
either way."23 In determining
s hould "view the factual record and draw all reasonable
inferences
therefrom
most favorably to
should "view the factual record and draw all reasonable inferences therefrom most favorably to
tthe nonmovant."24
he nonmovant." 24
The moving party "bears the initial burden of making a prima facie demonstration of the
The moving party "bears the initial burden of making a prima facie demonstration
of the
a bsence of a genuine issue of material fact and entitlement
absence of a genuine issue of material fact and entitlement to judgment as a matter of law. "25
to judgment as a matter of law."25
D
ISCUSSION
DISCUSSION
Defendants
Defendants move for summary judgment on Bimbo's claims for (I) trade secret
move for summary judgment on Bimbo's claims for (1) trade secret
misappropriation,
and (3) trade dress dilution.
misappropriation, (2) trade dress infringement, and (3) trade dress dilution. As the moving party,
(2) trade dress infringement,
the moving party,
iit is the Defendants' burden to show that there are no disputes of material facts and that they are
t is the Defendants'
burden to show that there are
disputes
material facts and that they are
e ntitled to judgment as a matter of law. Each challenged claim will be addressed in this order, as
claim will be addressed in this order, as
entitled to judgment as a matter of law. Each challenged
well as the reasoning for denying summary judgment.
well as the reasoning for denying summary judgment.
Trade Secret Misappropriation
Trade Secret Misappropriation
The Defendants raise three arguments for dismissal
The Defendants raise three arguments for dismissal of Bimbo's trade secret
of Bimbo's trade secret
m
isappropriation
misappropriation claim. They argue first that Bimbo does not have a protectable
claim. They argue first that Bimbo does not have a protectable trade secret;
trade secret;
s econd, that Bimbo has not defined its trade secret with specificity; and third, that even if Bimbo
and third, that even if Bimbo
second, that Bimbo has not defined its trade secret with specificity;
h as a trade secret, Tyler and Wild Grains did not misappropriate it. The order will address each
it. The order will address each
has a trade secret, Tyler and Wild Grains did not misappropriate
of the Defendants'
arguments and the reasons the arguments fail
the Defendants' arguments and the reasons the arguments fail on summary judgment.
summary judgment.
22

Fed. It. Civ. P. 56(a).
Fed. R. Civ. P. 56(a).

23 .•1(////
Adler
24
'
2
25

v. I- Val -Aldo Stores, Inc., 144 F.3d 664, 670 (10th Cir. 1098).
v. Wal-Mart Stores. Inc. . 144 17.3/1664 670 (10th Cir. 1998).

hi.
Id.
hi. at 670-71.
Id. at 670-7] .

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Have Not Shown Bimbo's Purported Trade Secret is Generally
1. The Defendants Have Not Shown Bimbo's Put ported Trade Secret is Generally
1. The Defendants
Known.
Known.

Bimbo asserts trade secret protection over the compilation
over the compilation of
of
Bimbo asserts trade secret protection

(

Utah has adopted the Uniform Trade Secrets Act. Under the act, a trade secret can be a
Utah has adopted the Uniform Trade Secrets Act. Under the act, a trade secret can be a
Value,
actual or potential, from not being generally
"compilation" that "derives independent value, actual or potential,
from not being generally
that "derives independent
"compilation"

known to, and not being readily ascertainable
by proper means by, other persons who can obtain
k nown to, and not being readily ascertainable by proper means by, other persons who can obtain
can be made up of known
e conomic value from its disclosure
economic value from its disclosure or use." 2-6 "A compilation can be made up of known
or use."26 "A compilation

elements, if the combination itself is outside the general knowledge and not ascertainable
itself is outside the general knowledge and not ascertainable by
by
e lements, if the combination
asserts trade secret
p roper means." 27 The Tenth Circuit has been clear that when the plaintiff asserts trade secret
proper means."27 The Tenth Circuit has been clear that when the plaintiff
protection under a compilation
theory, an analysis of the individual trade secret components in
trade secret components in
under a compilation theory, an analysis of the individual
protection
i solation is improper. 2'"
isolation is improper.28

The Defendants analyze each individual element of Bimbo's purported trade secret and
element of Bimbo's purported trade secret and
The Defendants analyze each individual
argue that the elements in isolation are generally known. While viewing each individual
are generally known. While viewing each individual element
element
a rgue that the elements in isolation
may be helpful in determining
whether the compilation of the elements is generally known, the
of the elements is generally known, the
may be helpful in determining whether the compilation
fact that an individual element is generally known in isolation
element is generally known in isolation otherwise proves very little.
otherwise proves very little.
f act that an individual
Even if Defendants' piecemeal analysis were valid and it was found that each individual
piecemeal analysis were valid and it was found that each individual
Even if Defendants
known judgment still
step in the process of producing Grandma Sycamore's bread was generally
s tep in the process of producing Grandma Sycamore's bread was generally known, judgment still
I
could not be entered in their favor. As the moving party, is the
burden to show
c ould not be entered in their favor. As the mo\.,: .ing party, itit is the Defendants' .-)urc :1 en .0 s.low

that the compilation
of individually generally known processes is also otherwise generally
generally known processes is also otherwise generally
t hat the compilation of individually
known. Because the Defendants have not met this burden, summary judgment cannot be granted.
k nown. Because the Defendants have not met this burden, summary judgment cannot be granted.
26

Utah Code Arm. 13-24-2(4)00.
Utah Code Ann. § 13-24-2(4)(a).

27

2012).
Brigham Young Lou '. u. Pfizer, hie., 861 Supp. 20 1320, 1323 (D. Utah 2012).
BriKhum Young Univ. v. Pfizer, Inc., 801 F. Supp. 2d 1320, 1323 (D.Itch

28

1004).
See Rivendell FUrCSi Prods, Lal. v. Georgia-Pacific Corp., 28 F.3d 1024, 1045 (10th Cir. 1994).
Forest Prods, Ltd. r. GCOrgia-POCOC Corp. . 28 1i. 3d 1024. 1045 (10th

6

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W
hether each individual element of the trade secret is generally known need not be discussed
Whether each individual
element of the trade secret is generally known need not be discussed

because the Defendants do not argue that the compilation
because the Defendants do not argue that the compilation of elements is generally known.
of elements is generally known.
in the
Furthermore.
Furthermore, the facts in the record show that despite Grandma Sycamore "s existence in the
the facts in the record show that despite Grandma Sycamore's existence
have tried to replicate the production process and have
the production
market for many years, competitors have tried to replicate
market for many years, competitors
process and have

process of
f ailed. 29 At a minimum, this is a material fact that is evidence that the production
failed.29 At a minimum, this is a material fact that is evidence that the production process of
Grandma Sycamore's bread is not generally known.
Grandma Sycamore's bread is not generally known.
2. Bimbo's Combination of Well-Known Processes is Specific and Unique.
of Well -Known Processes is Specific and Unique.
2. Bimbo's Combination
The Defendants only argument about the trade secret process in compilation
The Defendants only argument about the trade secret process in compilation is that the
is that the
the existence
process Bimbo claims is not specific or unique. To establish
process Bimbo claims is not specific or unique.
establish the existence of a trade secret in
of a trade secret in
the combination
c ompilation,
compilation, the claimant must specifically
the claimant must specifically "explain how the combination of elements is
"explain
of elements is
- A plaintiff
may not point to a mass of
s ufficiently
sufficiently different,
different, or special, to merit protection.
or special, to merit protection."3° A plaintiff may not point to a mass of
i nformation
information and claim that a secret lies somewhere within.''
and claim that a secret lies somewhere within.31
The Defendants argue that Bimbo has not provided detailed disclosures of information or
The Defendants argue that Bimbo has not provided detailed disclosures
of information
or
p rotocols for its purported trade secret, and commercial farm bread in general does not qualify as
protocols for its purported trade secret, and commercial farm bread in general does not qualify as
nor
a trade secret -. This argument is misplaced. Bimbo does not point to a mass of information,
a trade secret. This argument is misplaced. Bimbo does not point to a mass of information, nor

does Bimbo claim trade secret protection
in farm bread in general. Bimbo points to
does Bimbo claim trade secret protection in farm bread in general. Bimbo points to
in the production
in the production of Grandma Sycamore's bread and argues that the steps, in compilation,
of Grandma Sycamore's bread and argues that the steps, in compilation,
q ualify as a protectable
qualify as a protectable trade secret.
trade secret.
is
its trade secret. The description
' There is nothing vague about Bimbo's description of its trade secret. The description is
['here is nothing vague about Bimbo's description
iincluded in the fact section above and is clear. The description
ncluded in the fact section above and is clear. The description does not point to a mass of
does not point to a mass of
iinformation; rather the purported trade secret only spans one to two pages in length. The
nformation;
rather the purported trade secret only spans one to two pages in length. The

'29 Docket no. 199-6; Ex. DD, 1/14/14 Faull E)cp. At 19:14-20:20
-1 Docket no. 199-6: 11x. 1)1), 1/1414 Foul! Dep. At 19: 14-20:20
" Brigham
30 13ri,hanr
31

It'
Yonng Univ. v. Pfizer, Inc. , 861 F. Supp. 2d 1320, 1324 (D. Utah 2012).
Young Univ. v. Plizci, Inc., 861 F. Stipp. 2d 1320, 1324(D. Udh 2012).

S'cc
See Id.

7

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Defendants have failed to show that Bimbo was not specific in its description
of the purported
Defendants have failed to show that Bimbo was not specific in its description of the purported
trade secret.
t rade secret.
the Trade Secret.
3. There Are Disputed Facts About Whether Tyler Misappropriated the Trade Secret.
3. There Are Disputed Facts About Whether Tyler Misappropriated
Bimbo has the burden at trial of proving that its alleged trade secrets were disclosed by
Bimbo has the burden at trial of proving that its alleged trade secrets were disclosed by
summary judgment, however, the moving party has the burden of
W Grains and Tyler.32
ild
Wild Grains and Tyler. 32 On summary judgment, however, the moving party has the burden of

proving that there are no disputes of material fact about whether the trade secret was
proving that there are no disputes of material fact about whether the trade secret was
misappropriated.
misappropriated.

Tyler first argues that he could not have misappropriated
the trade secret for making
Tyler first argues that he could not have misappropriated the trade secret for making
bread because he never made bread at his father's bakery, and he otherwise has no knowledge
b read because he never made bread at his father's bakery, and he otherwise has no knowledge
about Grandma Sycamore's process for making bread. This fact, however, is disputed. Bimbo
a bout Grandma Sycamore's process for making bread. This fact, however, is disputed. Bimbo
A
•
Ca MO
plOCeSS 10F Making Grail d
k
.argUGS that 1ylC 1_...1 —11 1,ilOWICIlge 0 f the proccss ior making 1".Jranuma S'y ldal FC, S bccad.
11- gties Mal y.1...- had 1'011 iolovviQuge 01

Summary judgment cannot be entered finding that Tyler could not have misappropriated
the
Summary judgment cannot be entered finding that Tyler could not have misappropriated the
trade secret. It is disputed whether Tyler had knowledge of Grandma Sycamore's production
t rade secret. It is disputed whether Tyler had knowledge of Grandma Sycamore's production
process..
process..

Tyler then argues that Wild Grains uses a different recipe than the one used by Grandma
recipe than the one used by Grandma
Tyler then argues that Wild Grains uses a different
manager at Wild Grains, added
Sycamore. Faull, the production manager at Wild Grains, added
S ycamore. Fault, the production

and
and

tto the basic recipe he learned from Leland. Tyler claims that because the recipes have some
o the basic recipe he learned from Leland. Tyler claims that because the recipes have some

differences, then the trade secret was not misappropriated
then the trade secret was not misappropriated as a matter of law. The Defendants
as a matter of law. The Defendants
d ifferences,
h ave not included any citations for the proposition
have not included any citations
for the proposition that making a minor change to a trade secret
that making a minor change to a trade secret

is enough to avoid liability.
Summary judgment therefore cannot be granted on this basis.
cannot be granted on this basis.
i s enough to avoid liability. Summary judgment therefore
The Defendants' last argument is that if Faull did in fact misappropriate the alleged trade
the alleged trade
last argument is that if Fault did in fact misappropriate
The Defendants'
secret for making Grandma Sycamore's white bread, then he did so as an employee of
s ecret for making Grandma Sycamore's white bread, then he did so as an employee of U.S.

32

Pcrsistcpt
Telecom Sots. , Inc., 2015 WL 9692517, *8 (D. Utah 2015).
Tcch. Corp.
See Storagecraft Tech. Corp. v. Persistent Telecom Sols., Inc. , 2015 \\ 7 1, 9602517, *8 (D. Utah 2015).
t oragccralt

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Bakery, and not as an employee of Wild Grains. This fact, however, is also disputed.
Bimbo
Bakery, and not as an employee of Wild Grains. This fact, however, is also disputed. Bimbo
claims that Tyler and Wild Grains sold the allegedly infringing
bread to U.S. Bakery prior to
claims that Tyler and Wild Grains sold the allegedly infringing bread to U.S. Bakery prior to
Faull's employment with
Bakery. 33 In any event, even if the trade secret was not
Faull's employment with U.S. Bakery.33 In any event, even if the trade secret was not
misappropriated
misappropriated to U.S. Bakery, it still could have been misappropriated through Wild Grains
to U.S. Bakery, it still could have been misappropriated
through Wild Grains
u se in making the competing bread.34
use in making the competingbread.
34
For the aforementioned reasons, because disputed material facts exist, summary
For the aforementioned
reasons, because disputed material facts exist, summary
j udgement cannot be granted on Bimbo's trade secret claim.
judgement cannot be granted on Bimbo's trade secret claim.
Trade Dress Infringement
Trade Dress Infringement and Dilution
and Dilution
Tyler and his company Wild Grains seek summary itidgment on Bimbo's trade dress
Tyler and his company Wild Grains seek summary judgment on Bimbo's trade dress
iinfringement and trade dress dilution claims. Their principal argument is that Wild Grains had no
nfringement
and trade dress dilution claims. Their principal
argument is that Wild Grains had no
rrole in developing
ole in developing the packaging of Grandma Emilie's bread. Wild Grains only made the bread,
the packaging of Grandma Emilie's bread. Wild Grains only made the bread,
a nd U.S. Bakery did the packaging and sales. It is undisputed that Wild Grains has never owned
and U.S. Bakery did the packaging and sales. It is undisputed
that Wild Grains has never owned
tthe Grandma Emilie's mark.
he Grandma Emilie's mark.
As support for Tyler's argument that he is entitled
to summary judgment because he had
As support for Tyler's argument that he is entitled to summary judgment because he had
no role in developing the packaging, he cites the following elements discussed in General
no role in developing the packaging, he cites the following elements discussed in Gcncro/
M
otors Co. v. Urban Gorilla,
Motors Co. v. Urban Gorilla, LLC, 2010 WL 5395065 (I). Utah 2010): "(3) the defendant began
2010 WL
5395065 (D. Utah 2010): "(3) the defendant began
using its mark or trade name after the plaintiff's
mark became famous; (4) the defendant's use of
use of
using its mark or trade name after the plaintiff's mark became famous: (4) the defendant's
h is mark is in commerce; and (5) the defendant's mark must be likely to cause dilution to the
mark must be likely to cause dilution to the
his mark is in commerce; and (5) the defendant's
plaintiffs
mitrk." 3 Tyler argues that the language used in General Motors Co. creates a
plaintiff's mark."35 Tyler argues that the language used in General i'llotors'
Co. creates a

33

U.S. Bakery referred
U.S. Bakery referred to the bread it bought from Wild Grains in internal documents as Grandma Sycamore's
to the bread it bought from Wild Grains in internal documents as Grandma Sycamore's
b read
bread
34 . Ex. R, PX 92, 93, 147, 149, 150; Ex. Q, Deposition of Marc Albers as Rule 30(b)(6) witness for U.S. Bakery,
R. PX 92. 93, 147. 149, 150: Ex. Q, Deposition
34 I
Niarc ;\.lbcFs its Rule 30(b)(6) witness for
Bakery,
M 15, 2015 (Albers 5/18/15 Dep.) at 15:4 —40:10.
ae
May 18, 2015 (Albers 5/18/15 Dep.) at 15:4 — 40:10.
'3 General Aloror.s . Co. -v. Urban Gorilla, LLC, 2010 WL 5395065 (I). Utah 2010).
Gorilla, I.LC, 2010 \VI, 5395065 (D. Utah 2010).
35 Galicia!
Motors Co. v

9

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cv _00719_nN 1pp nnournont 9/i *RpAi pn* Fi!prt nqi7Q/17 Pagp 1n nt 12,
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requirement that an infringer
must own a mark in order to be liable. This argument runs counter
r equirement that an infringer must own a mark in order to be liable. This argument runs counter
tto binding Supreme Court precedent.36
o binding Supreme Court precedent.''
1 125(0(1) of the Lanham
15 U.S.C.
I n Gc/icra/ Motors Co. the court was paraphrasing 15 U.S.C. § 1125(c)(1) of the Lanham
In General Motors Co. the court was paraphrasing

to impose a requirement that one
that one
Act. It appears that the (ignorer! Motors court was not intending to impose a requirement
Act. It appears that the General Motors court was not intending
must own an infringing trademark in order to be liable. The General Motors court was not
must own an infringing
trademark in order to be liable. The Gcncra/ Motors court was not

addressing whether ownership of the trademark is a necessary requirement.
a ddressing whether ownership of the trademark is a necessary requirement.
Bimbo correctly argues that there is no requirement
argues that there is no requirement that one must own a mark iin or d er to
that one must own a mar k n order to
Bimbo correctly
be liable for trade dress infringement
or trade dress dilution. Bimbo points to the language of the
Bimbo points to the language of the
be liable for trade dress infringement or trade dress dilution.
applicable Lanham Act provision that states that trade dress dilution occurs when a "person who,
Lanham Act provision that states that trade dress dilution occurs when a "person who,
a pplicable
at any time after the owner's mark has become famous, commences use of a mark or trade name
a t any time after the owner's mark has become famous. commences use of a mark or trade name
of die famous
iin commerce that is likely to cause dilution by blurring or dilution by tamisitment
n commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous
Use is
The language of the statute does not expressly impose an ownership requirement. Use is
mark.`
mark."37 The language of the statute does not expressly impose an ownership requirement.
e nough.
enough.

Bimbo further asserts that it does not matter that Wild Grains did not sell the infringing
Bimbo further asserts that it does not matter that Wild Grains did not sell the infringing
product because it is still liable as a contributory
infringer. Bimbo claims that Wild Grains is
Bimbo claims that Wild Grains is
p roduct because it is still liable as a contributory infringer.
liable under the "tools of infringement"
doctrine which holds that when "use is known to the
l iable under the "tools of infringement" doctrine which holds that when "use is known to the
infringing
manufacturer or is reasonably foreseeable,"
or is reasonably foreseeable,"" the courts have imputed the distributors'
" the courts have imputed the distributors' infringing
manufacturer
use of the trademark to the initial manufacturer."38
use of the trademark to the initial manufacturer.

The Defendants argue that the cases Bimbo cites dealing with the tools of infringement
The Defendants argue that the cases Bimbo cites dealing with the tools of infringement
doctrine deal with drastically different
different factual scenarios than the facts in our case. For example,
factual scenarios than the facts in our case. For example,
d octrine deal with drastically
Bimbo cites 1-800 Contacts, Inc. v. Lc li ssom. Inc., 722 F.3d 1229, 1249 (10th Cu. 2013) as its
Inc. v. Lens.com, Inc. , 722 F.3d 1229, 1249 (10th Cir. 2013) as its
Bimbo cites 1-800 Contact,s',

36

Inc. r. /yes Laboratories,
Inc. .456 U.S. 844 (1982).
„See Inwood Laboratories,
See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982).

37

1125(c)(1).
1 5 U.S.C.
15 U.S.C. § 1125(c)(1).

38

3-11 Gilson on Trademarks § 11.02(h)(ii) (2015).
§ 1 1 .02(1)0i) (2015).
3-11 Gilson on tradenvancs

10
10

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Case 2:13-cv-00749-DN-DBP Document 245 *SEALED* Filed 03/29/17
Document 245 *SEALED* Filed 03/29/17 Page 11 of 13

primary support.39 This case, however, found the Defendant, Lens.com, liable as contributory
primary support. - This case, however, found the Defendant, Lens.com, liable as a contributory
iinfringer based on the infringing
nfringer based on the infringing acts of affiliates that Lens.com hired to do its marketing. The 1acts of affiliates
that Lens.com hired to do its marketing. The /SOO Comacts case held Lens.com liable based on the acts of its agents. In our case, there is no
800 Contacts case held Lens.com liable based on the acts of its agents. In our case, there is no
claim that Tyler and Wild Grains were acting as U.S. Bakery's agents. The Defendants therefore
claim that Tyler and Wild Grains were acting as U.S. Bakery's agents. The Defendants therefore
entitled
argues that because Bimbo has not pointed to a case with similar facts they are therefore entitled
argues that because Bimbo has not pointed to case with similar facts they are therefore
tto summary judgment.
o summary judgment.
However,
held:
However, the Supreme Court in britood Laboratories held:
the Supreme Court in Inwood Laboratories

can extend beyond those
actually
[[L]iability for trademark infringement
L]iability
for trademark infringement can extend beyond those who actually
does not directly
mislabel goods with the mark of another. Even if manufacturer
mislabel goods with the mark of another. Even if a manufacturer does not directly
it can be held responsible
c ontrol others in the chain of distribution, it can be held responsible for their
control others in the chain of distribution,
for their
i nfringing
activities
under certain circumstances.
infringing activities under certain circumstances. Thus, if a manufacturer or
Thus, if a manufacturer
or
distributor
intentionally
distributor intentionally induces another to infringe a trademark, or if it continues
induces another to infringe a trademark, or if it continues
t o supply its product to one
it knows or has reason to know is engaging in
to supply its product to one whom it knows or has reason to know is engaging in
t rademark infringement, the manufacturer or distributor is contributorily
trademark infringement,
the manufacturer
or distributor
is contributorily
rresponsible for any harm done as a result of the deceit.°
esponsible
for any harm done as result of the deceit. 4
W
hether Wild Grains had knowledge that they were supplying bread to company that
Whether Wild Grains had knowledge that they were supplying bread to a company that
was infringing on Bimbo's trademark rights is in genuine dispute. Tyler's long history and
was infringing
on Bimbo's trademark rights is in genuine dispute. Tyler's long history and
with Grandma Sycamore is evidence that
f amiliarity
with the marks and packaging associated
familiarity with the marks and packaging associated with Grandma Sycamore is evidence that
Tyler may have known that U.S. Bakery was infringing
Tyler may have known that U.S. Bakery was infringingon Bimbo's trademark. Summary
on Bimbo's trademark Summary
jjudgment therefore
udgment therefore cannot be granted on Bimbo's trade dress claims.
cannot be granted on Bimbo's trade dress claims.
ORDER
ORDER
Defendants',
Tyler Sycamore and Wild Grains, motion for summary judgment is
Defendants', Tyler Sycamore and Wild Grains, motion for summary judgment is

DENIED in its entirety.41
in its entirety. 4
W
ithin fourteen days after filing of this order, the parties shall send a redacted Version of
Within fourteen days after filing of this order, the parties shall send a redacted version of
tthis document to dj.nufferiAttd.uscourts.gov.
his document to dj.nufferAutd.uscourts.gov. The redacted version shall obscure all protected
The redacted version shall obscure all protected
i -S00
39 1-800

COMUCIS, Inn.
Contacts, Inc. v. Lcns.com, Inc., 722 F.3d 1229, 1249 (10th Cir. 2013).
Lens.com, Inn., 722 F.3d 1229. 1249 (10th Cir. 2013).

4" Sun Inwood Laboratories,
40 See Inwood Laboratories, Inc., at 854.
4' Docket no. 115.
41 Docket no. 115.

11
11

ocn 7•1"2 rs,nr .17AcLimm. 1- 11:1D
1Thnni in-Innt
'9 /11
rsase 2_:13-cv-007119-nl`.1-P nocurnent 245 *
4 .
-

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I

I

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V,-,1 I I IV I IL

4-- - -

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1"
,,L . . . 1*
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Td oc ,i 03/29/17 Page 1`2 of 13
19 of 1'2
Filed 03/29/17
V 1L

VI

1V

i nformation
info iation and shall be a text -based PDF. lithe redactions
and shall be a text-based PDF. If the redactions are acceptable,
are acceptable, the redacted version
the redacted version
will be placed on we docket.
will 'be placed on the docket.
Signed March 29, 7017.
Signed March 29, 2017.
BY THE COURT
BY TILE COURT

District
District Judge David Nuf cr
Judge Dav'd Nufer

12

Case 2:13-cv-00749-DN-DBP
Page 13 of 13
Case 2:13-cv-00749-DN-DBP Document 245 *SEALED* Filed 03/29/17
Document 245 *SEALED* Filed 03/29/17 Page 13 of 13

United States District Court
United States District Court
f or the
for the
District of Utah
District of Utah
M
arch 29, 2017
March 29, 2017
******MAILING CERTIFICATE OF THE CLERK******
******MAILING CERTIFICATE OF THE CLERK******
RE:
RE:

Bimbo Bakeries USA v. Sycamore et al
Bimbo Bakeries USA v. Sycamore et al
2:13c\'749
DN-DBP
2:13cv749 DN-DBP

Charles A. Burke
Charles A. Burke
W
OMBLE
WOMBLE CARLYLESANDRIDGE &RICE(WINSTON-SALEM)
CARLYLE SANDRIDGE RICE (WINSTON-SALEM)
&
ONE W FOURTH ST
ONE WFOURTI I
W
1NSTON-SALEM, NC 27101
WINSTON-SALEM, NC27101
Raymond J. Eteheverry
Raymond J. Etcheverry
PARSONSBEHLESz LATIMER (UT)
PARSONS BEHLE & LATIMER(UT)
PO BOX45898
PO BOX 45892
SALT LAKE CITY. UT 84145-0898
SALT LAKECITY, UT 84145-0898
Sean N. Egan
Sean
Egan
PARKSIDE TOWER
PARKSIDE TOWER STE 950
950
2 15 S STATE ST
215 STATE
SALT LAKECITY, UT 841 1 1-2374
SALT LAKE CITY, UT 84111-2374
Andrew
Andrew G. Dciss
Deiss
DEISS LAW
DEISS LAW PC
1 0 W100 S
10 W 100 5 STE 425
425
SALT LAKECITY, UT 84101
SALT LAKE CITY, UT 84101
Christopher
Christopher S. Hill
S. Hill
KIRTON MCCONKIE
MCCONKIF
PO BOX45120
PO BOX 45120
SALT LAKECITY, UT 24145-0120
SALT LAKE CITY, UT 84145-0120
Eric C. Beach
Eric C. Beach
TONKON
TONKON TORP I LP
TORP LLP
160()
888 SWFIETI I AVESTE 1600
888 SW FIFTH AVE
PORTLAND,
PORTLAND, OR 97204
OR 97204

Aimee Trujillo,
Aimee Trujillo,