Mrs. Fields Famous Brands v. MFGPC, 941 F.3d 1221

Background

Fields Franchising (owner of the "Mrs. Fields" mark) assigned a 2003 Trademark License Agreement to MFGPC granting MFGPC exclusive rights to make, distribute, and sell prepackaged Mrs. Fields-branded popcorn; the agreement had a 60‑month initial term with automatic five‑year renewals unless a party gave ≤20 days' notice, and enumerated termination events.
Parties operated under the license for ~11+ years. Fields Franchising sent a December 22, 2014 letter asserting the license had not renewed and/or was terminable; MFGPC disputed that and later sued on a counterclaim for breach.
On remand from this court the district court granted partial summary judgment for MFGPC on breach, leaving remedy for later determination.
MFGPC moved for a preliminary injunction seeking specific performance (reinstatement of exclusivity, termination of third‑party popcorn licenses, and forwarding of orders to MFGPC); the district court granted a broad injunction.
The Tenth Circuit reversed, holding the district court erred by finding the license "effectively perpetual" and that error fatally infected the court's likelihood‑of‑success and irreparable‑harm analysis for the preliminary injunction.

Issues

Issue	MFGPC's Argument	Fields Franchising's Argument	Held
Whether the License was "perpetual"	License was effectively perpetual absent material breach, so termination caused permanent loss	Section 16 allowed non‑renewal at each 5‑year mark and termination on specified grounds; no perpetual right	Reversed: license was not perpetual; Section 16 permitted non‑renewal/termination, so district court finding was clearly erroneous
Likelihood of success on claim for specific performance	Specific performance appropriate because contract exists, terms are definite, and monetary damages are inadequate / impossible to calculate	Damages are calculable for the limited remaining term (≈2.5 years); specific performance not warranted	Reversed: district court’s likelihood analysis depended on mistaken perpetual‑license premise; MFGPC failed to show a strong likelihood of success on specific performance
Irreparable harm	Wrongful termination causes permanent deprivation of exclusivity, loss of market position, and inability to obtain comparable license	Historical financial data exist and can be used to calculate damages; harm is not permanent or speculative	Reversed: district court erred; damages for the limited remaining term are calculable from prior sales data, so irreparable harm not established
Appropriateness of wide, mandatory preliminary injunction (terminate third‑party licenses; compel forwarding orders)	Needed to prevent further diminution of MFGPC’s market position and preserve unique product distribution	Injunction is a disfavored, mandatory order changing the status quo and harming third parties; district court abused discretion	Reversed: because MFGPC failed on likelihood and irreparable‑harm prongs, preliminary injunction vacated; no need to resolve balance/public‑interest further

Key Cases Cited

Free the Nipple–Fort Collins v. City of Fort Collins, 916 F.3d 792 (10th Cir. 2019) (framework and burden for preliminary‑injunction analysis, and disfavored injunction concept)
Beltronics USA, Inc. v. Midwest Inventory Distrib., LLC, 562 F.3d 1067 (10th Cir. 2009) (four‑factor preliminary‑injunction test)
Schrier v. Univ. of Colo., 427 F.3d 1253 (10th Cir. 2005) (disfavored injunctions and heightened burdens)
Dominion Video Satellite, Inc. v. Echostar Satellite Corp., 356 F.3d 1256 (10th Cir. 2004) (breach of exclusivity often supports injunctive relief but not automatically)
Palmer v. Connecticut Ry. & Lighting Co., 311 U.S. 544 (U.S. 1941) (past profits in an established business are strong evidence of future profits for damages calculations)
Tooele Assocs. Ltd. v. Tooele City, 251 P.3d 835 (Utah 2011) (Utah law elements for specific performance)
South Shores Concession v. State, 600 P.2d 550 (Utah 1979) (specific performance doctrine under Utah law)