VDF Futureceuticals, Inc. v. Stiefel Laboratories, Inc.

792 F.3d 842, 115 U.S.P.Q. 2d (BNA) 372, 92 Fed. R. Serv. 3d 372, 2015 U.S. App. LEXIS 11947, 2015 WL 4153639
CourtCourt of Appeals for the Seventh Circuit
DecidedJuly 10, 2015
DocketNo. 14-3232
StatusPublished
Cited by14 cases

This text of 792 F.3d 842 (VDF Futureceuticals, Inc. v. Stiefel Laboratories, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Seventh Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
VDF Futureceuticals, Inc. v. Stiefel Laboratories, Inc., 792 F.3d 842, 115 U.S.P.Q. 2d (BNA) 372, 92 Fed. R. Serv. 3d 372, 2015 U.S. App. LEXIS 11947, 2015 WL 4153639 (7th Cir. 2015).

Opinion

POSNER, Circuit Judge.

In this needlessly complex case (the plaintiffs complaint is 33 pages long and consists of 184 paragraphs), with federal jurisdiction based on diversity of citizenship and the governing substantive law that of Illinois, the parties are wrangling over a license agreement. The agreement — 40 pages of fine print, including numerous amendments — is between the plaintiff, VDF FutureCeuticals, Inc., and one of the three defendants, J & J Technologies, LC (the other two defendants are Stiefel Laboratories, Inc., and Joseph A. Lewis II). VDF has trademark and patent rights in “CoffeeBerry,” an extract from the whole fruit (not just the bean) of the coffee plant.

The agreement licensed J & J (managed by defendant Lewis, formerly a 45 percent owner of the company, as was another of the company’s three owners) to make and sell CoffeeBerry-based skin-care products to which VDF has the intellectual property rights. In other words, the agreement licensed J & J to “commercialize” VDF’s intellectual property. The license required J & J to remit to VDF, as royalties, 15 percent (later raised to a third) of any [844]*844revenues that J & .J obtained from selling the licensed product, and of any royalties that-J & J received from firms to which it granted sublicenses. All the royalties received by VDF would be what are called “running royalties,” that is, royalties based on the number of sales by the licensee (J & J), or by sublicensees of the licensed product. Regarding sublicensees, the license permitted J & J to sublicense its rights under the license “in the exercise of [J & J’s] sole discretion and judgment” (altered to “in the exercise of its best judgment” by an amendment in 2006).

The license also required J & J to pay VDF, at a minimum, a specified alternative quarterly royalty in order to protect VDF in the event that the running royalties fell below a specified level in particular quarters. The license provided that it could not be assigned without VDF’s written permission, but it did not forbid a change of control of J & J, and this omission has turned out to be critical.

The license was issued in 2004. Two years later J & J sublicensed defendant Stiefel, á subsidiary of GlaxoSmithKline. Stiefel was a natural to become involved in VDF’s business because it’s a manufacturer of dermatological products and VDF hoped CoffeeBerry would become an ingredient of such products.

Four years later, J & J’s three owners sold their ownership interests to Stiefel for $8.5 million (a third of which was held back pending VDF’s written acknowledgement of the membership change, but we can ignore that detail). J & J thereupon became a Stiefel subsidiary and, VDF claims, obligingly agreed to reduce Stiefel’s royalty obligation (remember that Stiefel was J & J’s sublicensee) and otherwise hurt itself, for example by abandoning, when Stiefel terminated the sublicense that J & J had given it, the right under the subli-cense to a $1 million termination fee.

Stiefel’s internal documents state that its reasons for buying J & J’s stock rather than taking an assignment of J & J’s license from VDF were both to avoid having to get VDF’s permission for an assignment and (since Stiefel would now control J & J) to reduce the royalties that Stiefel would have to pay for its marketing of Coffee-Berry. Two months after buying J & J’s stock, Stiefel engineered an amendment to the sublicence agreement (that is, the agreement that made Stiefel a sublicensee of J & J) that reduced the alternative minimum royalties that Stiefel owed J & J. The effect was to divert part of the license-revenue stream from VDF and J & J to Stiefel.

Two years later (2012) VDF filed this lawsuit, charging J & J, Stiefel, and Lewis with having committed a variety of unlawful acts. These included multiple breaches of contract, including what VDF contends was the de facto assignment of J & J’s license to Stiefel without VDF’s approval, breach of the common law duty of good faith and fair dealing in the performance of a contract, failure to use “commercially reasonable efforts to make, use, sell, and otherwise commercialize” the licensed products (in other words, failure to use “best efforts” to promote those products), failure to pay VDF a third of the $8.5 million purchase price for J & J’s stock as an advance royalty, and ultimately shutting down. J & J’s business to cut off royalties to VDF. The complaint also asks that the veil be pierced so that Lewis and Stiefel can be charged with J & J’s misdeeds. Those two defendants are further charged with conspiring to appropriate the royalties and other contract payments due VDF under the license agreement. In addition, Lewis is charged with unjust enrichment and conversion as a result of that appropriation and with breach of fiduciary duty to VDF, and Stiefel with tortious interference with the VDF license. And [845]*845for good measure all three defendants (Stiefel, Lewis, and J & J) are charged with conspiring to interfere with the license.

The district judge granted summary judgment in favor of the defendants with respect to two of VDF’s claims: that the defendants had engineered an unauthorized assignment of the J & J license and that the $8.5 million that Stiefel had paid to acquire J & J was really a purchase of J & J’s anticipated sales revenue under the license agreement and a third of that revenue should therefore have gone to VDF as advance royalties.

The district judge certified his ruling for an immediate appeal even though VDF’s numerous other claims against the defendants remain pending in the district court unresolved. Fed.R.Civ.P. 54(b) provides that “when an action presents more than one claim for relief ... the court may direct entry of a final judgment as to one or more, but fewer than all, claims ... only if the court expressly determines that there is no just reason for delay.” If the court does enter final judgment, the judgment is immediately appealable, just like a conventional final judgment—one that winds up the entire case in the trial court—provided that the claim or claims resolved by the judgment do not so overlap claims remaining in the district court as to create needless duplication of effort to resolve the parties’ entire dispute. Olympia Hotels Corp. v. Johnson Wax Development Corp., 908 F.2d 1363, 1366-68 (7th Cir.1990); Spiegel v. Trustees of Tufts College, 843 F.2d 38, 44-46 (1st Cir.1988); 10 Wright & Miller, Federal Practice & Procedure § 2657 (3d ed.). An example of needless duplication is the appeal to this court of a claim that might be undercut by the resolution of a factual dispute not yet decided by the district, court.

There is some overlap in this case between the claims before us on appeal and those yet to be resolved in the district court. The overlap arises from the fact that all the claims ultimately derive from Stiefel’s purchase of all the stock of J & J.

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Bluebook (online)
792 F.3d 842, 115 U.S.P.Q. 2d (BNA) 372, 92 Fed. R. Serv. 3d 372, 2015 U.S. App. LEXIS 11947, 2015 WL 4153639, Counsel Stack Legal Research, https://law.counselstack.com/opinion/vdf-futureceuticals-inc-v-stiefel-laboratories-inc-ca7-2015.