Burford v. Accounting Practice Sales, Inc., 786 F.3d 582

Burford was APS’s regional sales representative under a written agreement that initially covered Louisiana and (by oral modification) additional states; the written contract provided automatic one-year renewals.
APS terminated the relationship; Burford sued in state court for breach and to pierce APS’s corporate veil; APS removed to federal court and counterclaimed under the Lanham Act after Burford began a rival business called “American Accounting Practice Sales.”
The district court granted summary judgment to APS on the contract claim on the ground that the contract was of indefinite duration and therefore terminable at will, but APS later voluntarily dismissed its Lanham Act counterclaim with prejudice.
Burford appealed the summary judgment and sought Lanham Act attorney fees under 15 U.S.C. § 1117(a) as the prevailing party; the district court denied fees, and Burford appealed that denial as well.
The Seventh Circuit reversed the grant of summary judgment on the contract claim (finding APS could terminate only for Burford’s breach) and affirmed the denial of Lanham Act attorney fees (finding APS’s trademark claim was not objectively unreasonable or an abuse of process).

Issue	Burford's Argument	APS's Argument	Held
Whether the written contract (with automatic annual renewals) was terminable at will	The contract barred APS from terminating except for Burford’s violation, so it was not terminable at will	The contract’s indefinite duration triggers the default presumption of terminability at will; the ‘‘unless violated’’ language is tautological and insufficient	Reversed: contract was not terminable at will because it expressly allowed APS to terminate only if Burford breached; that language overcomes the default presumption
Whether Burford is entitled to Lanham Act attorney fees after APS voluntarily dismissed its counterclaim	The Lanham Act claim was objectively unreasonable and pursued to impose litigation costs; fees are warranted as an abuse of process	APS had a good-faith basis to assert trademark protection and likelihood of confusion; dismissal after winning on the contract claim was rational	Affirmed: district court did not abuse discretion; APS’s claim was not objectively unreasonable and could have been pursued in good faith
Whether appellate decision needed to resolve veil-piercing or whether oral modifications incorporate written terms	Burford argued broader relief; he sought to hold Holmes liable and treat oral modifications as underwritten terms	APS disputed applicability	Not decided: court expressly left veil-piercing and oral-agreement incorporation for later proceedings on remand

BKCAP, LLC v. CAPTEC Franchise Trust 2000-1, 572 F.3d 353 (7th Cir. 2009) (de novo review of contract interpretation)
Jespersen v. Minn. Mining & Mfg. Co., 183 Ill.2d 290 (Ill. 1998) (indefinite-duration contracts presumptively terminable at will unless parties clearly limit termination)
Baldwin Piano, Inc. v. Deutsche Wurlitzer GmbH, 392 F.3d 881 (7th Cir. 2004) (parties can contract around the terminable-at-will presumption; interpret clauses to preserve the parties’ bargain)
Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC, 626 F.3d 958 (7th Cir. 2010) (Lanham Act fees: prevailing party entitled to fees in exceptional cases; abuse-of-process/ objectively-unreasonable standard)
Door Systems, Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169 (7th Cir. 1996) (likelihood-of-confusion elements for Lanham Act claims)
Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001) (secondary meaning may be established without market studies; evidentiary standards)