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Traeger Pellet Grills LLC v. Traeger

United States District Court, M.D. Florida, Tampa Division

September 11, 2019

TRAEGER PELLET GRILLS LLC, a Delaware limited liability company, Plaintiff,
v.
JOSEPH TRAEGER, an individual, BRIAN TRAEGER, an individual, and MARK TRAEGER, an individual, Defendants.

          ORDER

          ANTHONY E. PORCELLI UNITED STATES MAGISTRATE JUDGE

         This matter comes before the Court upon Plaintiff Traeger Pellet Grills LLC's (“Traeger Grills”) Motion for Preliminary Injunction (Doc. 6) and the response in opposition thereto (Doc. 41). The undersigned subsequently conducted a hearing on the Motion for Preliminary Injunction on August 26, 2019. For the reasons that follow, the Motion for Preliminary Injunction (Doc. 6) is denied.

         BACKGROUND

         Traeger Grills brought this action for injunctive relief, damages for breach of contract, contractual indemnification, breach of the covenant of good faith and fair dealing, violation of the right of publicity under Fla. Stat. §540.08, contributory infringement under 35 U.S.C. § 1114(1), contributory false designation of origin under 35 U.S.C. § 1125(a), and willful violation of Florida Stats. §501 and 204 (Doc. 1). Specifically, Traeger Grills brought this action for injunctive relief against Defendants Joe Traeger and Brian Traeger[1] under Count I-Breach of Contract (against Joe Traeger), Count II-Breach of Contract (against Brian Traeger), Count VII-Violation of the Right of Publicity (against Joe Traeger), and Count VIII-Violation of the Right of Publicity (against Brian Traeger). Traeger Grills seeks an injunction precluding the Defendants from continuing the alleged unauthorized use of their names, likenesses, and personal goodwill to promote Traeger Grills' competitor Dansons U.S. LLC (“Dansons”) and its grill products, which Traeger Grills alleges has and will continue to cause consumer confusion in the wood pellet grill industry (Doc. 6)[2].

         Joe Traeger invented the wood pellet grill in the iconic Traeger Barn (Doc. 1). Joe manufactured and sold his new wood pellet grills under the Traeger trademark through Traeger Industries, Inc. (“TII”), a company owned and operated by him and his family (Burton Decl. ¶ 3). TII persistently noted that they were the “originators of the wood pellet grill” (Burton Decl. ¶ 4; Exhibit 3). On February 21, 2006, Traeger Grills purchased all of TII's assets, including all associated intellectual property (Doc. 1). The sale transaction consisted of the Asset Purchase Agreement (Doc. 1, Ex. 6), the Intellectual Property Rights Assignment Agreement (Doc. 1, Ex. 1), and separate Employment Agreements with Joe, Brian, Randy, and Mark Traeger (Doc. 1). Traeger Grills asserts that the “broad intellectual property rights were critical to Traeger Grills' purchase of the TTI assets.” (Doc. 1). Indeed, the “parties allocated $9, 000, 000.00 of the sale price, more than 70% of the total price paid, to the intellectual property assets.” (Doc. 1). Both agreements were signed by Traeger Grills, identified as the Buyer, and Joe Traeger, Brian Traeger, Mark Traeger, and Randy Traeger, identified as the Sellers (Doc. 1, Ex's. 1, 6).

         In relevant part, pursuant to Article 1.1 of the Asset Purchase Agreement, one of the Purchased Assets included “all goodwill associated with the business.” (Doc. 1, Ex. 6). Further, pursuant to Article 2.5 of the Asset Purchase Agreement,

The ownership of the Business and all assets, properties, agreements and rights associated therewith is evidenced solely by the Purchased Assets, and the intellectual property rights to be conveyed under the Rights Agreement and the sale, assignment, conveyance and delivery of the Purchased Assets to the Buyer pursuant to this Agreement and the patents described in the Rights Agreement will transfer all of the Seller Parties' and any Affiliates' ownership interests associated with or used or useful in the Business and the Purchased Assets constitute all that have been used in the past to conduct the Business.

(Doc. 1, Ex. 6) (emphasis added). Then, Article 8 of the Asset Purchase agreement covering the definitions pertaining to the agreement states,

"Intellectual Property Rights" include but are not limited to the items listed on Exhibit A to the Rights Agreement and all of the patents, applications, trademarks, copyrights, know-how, droit moral, show-how, mask work, proprietary innovations and inventions, methods or techniques, likenesses or other intellectual property held by the Sellers or any of their Affiliates and used or useful, directly or indirectly, in the Business and any other matters within the scope of business of the Company whether or not reduced to writing.

(Doc. 1, Ex. 6) (emphasis added). The same definition is included in Article 8 of the Intellectual Property Rights Assignment Agreement (Doc. 1, Ex. 1).

         Further, in relevant part, Section 2.4 of the Intellectual Property Rights Assignment Agreement notes that all the IP rights,

[I]nclude but are not limited to the items listed on Exhibit A hereto, and all of the patents, trademarks, copyrights, know-how, droit moral, show-how, mask work, proprietary innovations and inventions, methods or techniques or other intellectual property held by the Sellers or any of their Affiliates and used or useful, directly or indirectly, in the Business and any other matters within the scope of business of the Company whether or not reduced to writing.

(Doc. 1, Ex. 1). Finally, Exhibit A to the Intellectual Property Rights Assignment Agreement notes that the IP descriptions include,

All the patents, patent rights, proprietary info and projects, trade secrets, personal goodwill and IP assets and properties used or usable in the business, including but not limited to the following: Traeger name and tree logo (which Seller is assigning including any rights to register, in connection with the Business only). Any other marks, logos, copyrights or other intellectual property used in connection with the Business, including without limitation likenesses of people and images used in advertising (who shall sign documentation allowing the Buyer to continue to use the likenesses without cost and deliver said documentation to Seller at Closing), packaging and labeling, artwork used on Business products, product names, including without limitation BBQ070, 075, LHS, PIG, 100, 124, 125, and SW, Traeger Professional, Traeger Executive, Commercial Models, "Lil Pig", "Longhorn Steer", formulations for shakes, sauces, rubs, samplers, pellets, designs, tooling, masters, stats, dies, photos, TV programs including names, formats, rights, videotapes or films, design, masters, layout, of instruction manuals, training aids and material, video and film productions, cookbooks, recipes Domain names including traegerindustries.com or any other domain name used or registered by the Business, whether or not currently registered using the name "Traeger".

(Doc. 1, Ex. 1).

         DISCUSSION

         A. Le ...


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