06-5316-cvTopps Co. v. Cadbury Stani S.A.I.C.

1UNITED STATES COURT OF APPEALS2FOR THE SECOND CIRCUIT34_______________ 56August Term, 200778(Argued: December 12, 2007 Decided: May 15, 2008)910Docket No. 06-5316-cv1112_______________ 1314The Topps Company, Inc.,1516Plaintiff-Appellant,1718v.1920Cadbury Stani S.A.I.C., f/k/a Productos Stani21Sociedad Anonima Industrial y Comercial,2223Defendant-Appellee.2425_______________ 26Before:27CARDAMONE, and POOLER, Circuit Judges,28and KEENAN,* District Judge.2930_______________ 3132Plaintiff appeals from the judgment of the United States33District Court for the Southern District of New York (Haight,34J.), entered November 8, 2006, dismissing claims for breach of35contract and misappropriation of trade secrets.3637Reversed and remanded.3839_______________ 404142434445_______________ 4647*Honorable John F. Keenan, United States District Judge for48the Southern District of New York, sitting by designation.

1_______________ 23DAVID G. EBERT, New York, New York (Patricia Hewitt, Mioko4Tajika, Caitlin L. Bronner, Ingram Yuzek Gainen Carroll &5Bertolotti, LLP, New York, New York, of counsel), for6Plaintiff-Appellant.78DENNIS P. ORR, New York, New York (Stefan W. Engelhardt, John9W.R. Murray, Morrison & Foerster LLP, New York, New York, of10counsel), for Defendant-Appellee.1112_______________

21CARDAMONE, Circuit Judge:2Plaintiff appeals from a grant of summary judgment in favor3of defendant in litigation between two multinational4corporations. This litigation concerns chewing gum, principally5"Bazooka" bubble gum, known in this country by its small -- less6than an inch -- paper-wrapped package and accompanying comic7strip. Chewing gum is a pastime engaged in since ancient times8when the substance chewed was a resin taken directly from certain9trees. Nowadays people generally chew the industrially-produced10version. They do so for a variety of reasons, including: to11cleanse teeth and freshen breath; to focus the mind during12athletic competitions; to calm the stomach; and to take the place13of smoking. One's inability to chew gum while simultaneously14carrying out other routine activities, such as walking, is15sometimes used as an epithet. And, of course, because gum is16today a sugary confection it is sweet and chewing gum is17enjoyable and fun.18Such a widely enjoyed product is a big seller in the19marketplace and a dispute over the manufacture and distribution20of "Bazooka" bubble gum and another brand in parts of South21America is what precipitated the instant litigation. On this22appeal we review a grant of summary judgment to defendant, which23had been licensed for many years by plaintiff to make and sell24these products. In reaching its decision the United States25District Court for the Southern District of New York (Haight, J.)26relied heavily on an analysis of trademark rights and the sale of