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W.C. Bradley Co. v. Weber-Stephen Products, LLC

United States District Court, M.D. Georgia, Columbus Division

September 1, 2017

W.C. BRADLEY CO. and CHAR-BROIL, LLC, Plaintiffs,
v.
WEBER-STEPHEN PRODUCTS, LLC, Defendant.

          ORDER

          LESLIE J. ABRAMS, JUDGE UNITED STATES DISTRICT COURT.

         Before the Court are:

(1) Defendant Weber Stephen Products LLC's Motion for Partial Summary Judgment Regarding Termination of the 1974 Agreement (Doc. 24);
(2) Plaintiffs W.C. Bradley Co. and Char-Broil, LLC's Cross-Motion for Partial Summary Judgment that the 1974 Agreement Remains in Effect (Doc. 35); and
(3) Plaintiffs W.C. Bradley Co. and Char-Broil, LLC's Motion for Oral Argument on Cross-Motions for Summary Judgment (Doc. 45).

         For the reasons set forth below:

(1) Defendant Weber Stephen Products LLC's Motion for Partial Summary Judgment Regarding Termination of the 1974 Agreement (Doc. 24) is DENIED;
(2) Plaintiffs W.C. Bradley Co. and Char-Broil, LLC's Cross-Motion for Partial Summary Judgment that the 1974 Agreement Remains in Effect (Doc. 35) is GRANTED; and
(3) Plaintiffs W.C. Bradley Co. and Char-Broil, LLC's Motion for Oral Argument on Cross-Motions for Summary Judgment (Doc. 45) is DENIED.

         BACKGROUND

         I. Procedural Background

         This is a consolidated matter, the Court having granted the Parties' Joint Motion to Consolidate Weber-Stephen Products LLC v. W.C. Bradley Co., et al., 4:16-CV-347 with the present action, W.C. Bradley Co., et al., v. Weber-Stephen Products LLC, 4:16-CV-195. (Doc. 23.) On April 20, 2016, Defendant/Counter-Plaintiff Weber-Stephen Products, LLC (“Defendant”) filed a Complaint against Plaintiffs/Counter-Defendants W.C. Bradley Co. and Char-Broil, LLC (“Plaintiffs”) in the Northern District of Illinois. (Doc. 1, Case No. 4:16-CV-347.) Therein, Defendant alleges causes of action including: (1) trademark infringement; (2) trade dress infringement; (3) unfair competition; (4) false designation of origin; and (5) trademark dilution. (Id.) On June 14, 2016, Plaintiffs initiated the present action by filing a Complaint in this Court against Defendant. (Doc. 1.) Therein, Plaintiffs allege causes of action including: (1) breach of settlement agreement; (2) antitrust violations; and (3) unfair competition under both Georgia and federal law. (Id.)

         On October 31, 2016, Defendant's action, filed in the Northern District of Illinois, was transferred to this Court. On November 21, 2016, Plaintiffs filed a Counterclaim against Defendant alleging: (1) cancellation of federally registered trade dress; and (2) a declaration of the Parties' rights regarding Defendant's claim that Plaintiffs infringed Defendant's trade dress rights in a three-legged kettle design. (Doc. 49, Case No. 4:16-CV-347.) On December 22, 2016, the Court granted the Parties' Joint Motion to Consolidate their cases. (Doc. 23.) Accordingly, Case No. 4:16-CV-347 was terminated and consolidated with the present action.

         On December 22, 2016, Defendant moved for partial summary judgment on the sole issue of whether a settlement agreement executed in 1974 by the Parties' predecessors (“1974 Agreement”) was lawfully terminated. (Doc. 24.) Therein, Defendant argues that the 1974 Agreement was terminated and that the Parties are no longer bound by its terms. (Id.) The Parties timely submitted their respective Response and Reply. (Docs. 33, 41.) As such, the Motion is now ripe for review. See M.D. Ga. L.R. 7.3.1(a).

         On January 26, 2017, Plaintiffs cross-moved for partial summary judgment on the same issue. (Doc. 35.) Plaintiffs argue that Defendant is barred from unilaterally terminating the 1974 Agreement and that the Agreement is still binding on the Parties. (Id.) The Parties timely submitted their respective Response and Reply. (Docs. 42, 44.) As such, the Motion is now ripe for review. See M.D. Ga. L.R. 7.3.1(a).

         II. Factual Background

         Plaintiff W.C. Bradley Co. (“W.C. Bradley”) is a Georgia corporation with its principal place of business in Columbus, Georgia.[1] (Doc. 34 ¶ 1.) Plaintiff Char-Broil, LLC (“Char-Broil”) is a Georgia limited liability company based in Columbus, Georgia. (Doc. 34 ¶ 2.) Char-Broil is wholly-owned by W.C. Bradley. (Doc. 34 ¶ 3.) Defendant Weber-Stephen Products LLC (“Weber”) is a Delaware limited liability company with its principal place of business in Palatine, Illinois. (Doc. 34 ¶ 6.)

         In the early 1970s, after the successful launch of Weber's iconic three-legged kettle grill, W.C. Bradley's predecessor, W.C. Bradley Company, began marketing the WILLIAM WEBSTER GRILL. (Doc. 38 at 2, Case No. 4:16-CV-347.) On March 26, 1973, Weber's predecessor, Weber-Stephen Products Company, sued W.C. Bradley Company, alleging that W.C. Bradley Company's brand WILLIAM WEBSTER GRILL infringed Weber's: (1) utility patent in the tripod leg attachment system; (2) trademark; and (3) trade dress rights in the overall configuration of a three-legged kettle grill (the “Prior Litigation”). (Id.) W.C. Bradley Company asserted counterclaims, including an antitrust claim. (Doc. 41-1 ¶ 2.) Prior to trial, on October 29, 1974, Weber-Stephen Products Company and W.C. Bradley Company entered into the 1974 Agreement, settling their claims against each other. (Doc. 34 ¶ 8.) The 1974 Agreement included provisions in which the parties agreed to dismiss with prejudice the claims they had asserted against each other. (Doc. 41-1 ¶ 7.) The 1974 Agreement was filed in this Court; and accordingly, the Parties' claims were dismissed with prejudice. (Doc. 41-1 ¶ 8.)

         The 1974 Agreement contains the following nine provisions:

(1) [W.C. Bradley Company] agrees that [Weber-Stephen Products Company]'s trademark WEBER and the registration thereof are valid and owned by [Weber-Stephen Products Company].
(2) [W.C. Bradley Company] agrees to refrain from using the words or names WILLIAM WEBSTER, WEBSTER, or any variant thereof on, or with respect to, all covered barbecue grills from this date forward, except as provided herein below. Open-top braziers ...

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