917 F.3d 186
3rd Cir.2019Background
- Sköld invented a drug-delivery formulation called "Restoraderm" and sought a commercial partner; CollaGenex (later acquired by Galderma) negotiated and entered agreements with Sköld.
- A 2001 letter of intent and the 2002 Co-Operation, Development and Licensing Agreement expressly provided that trademarks (including “Restoraderm”) applied for would be registered in CollaGenex’s name and be its exclusive property during the term and thereafter; a survival clause preserved vested rights after termination.
- CollaGenex applied to register the Restoraderm mark with the PTO; CollaGenex later announced plans to use the mark. CollaGenex was acquired by Galderma in 2008.
- In 2004 the parties executed a new Asset Purchase and Product Development Agreement that defined “Restoraderm Intellectual Property” narrowly (patents, know-how) and did not explicitly include trademarks; trademark provisions present in earlier drafts were removed.
- Galderma later used the Restoraderm mark on products not using Sköld’s technology; Sköld sued in 2014 asserting trademark infringement, false advertising, unfair competition, breach of contract, and unjust enrichment. At trial the jury found Sköld owned the mark and awarded unjust enrichment but rejected infringement and related Lanham Act claims.
- On appeal the Third Circuit concluded, as a matter of contract interpretation, that CollaGenex (and thus Galderma as successor) became and remained the rightful owner of the Restoraderm trademark; therefore Sköld could not prevail on unjust enrichment or Lanham Act claims based on ownership.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who owns the Restoraderm trademark? | Sköld: 2004 Agreement voided any CollaGenex ownership and/or returned goodwill to Sköld so he owned the mark. | Galderma: 2002 Agreement unambiguously transferred the mark to CollaGenex; rights vested on PTO filing and survived termination; 2004 Agreement did not revive Sköld's ownership. | Held: CollaGenex (and successor Galderma) owns the mark as a matter of law. |
| Whether the 2004 Agreement superseded the 2002 Agreement's trademark transfer | Sköld: integration/contract language and goodwill provisions mean ambiguity and factual issues for jury. | Galderma: 2004 Agreement did not address trademarks; integration clause excluded prior agreements/assignments filed with the PTO and thus did not undo vested PTO-documented rights. | Held: 2004 Agreement did not divest CollaGenex/Galderma of vested trademark rights; no ambiguity. |
| Whether Galderma’s use of the mark supported Lanham Act claims (infringement, false advertising, unfair competition) | Sköld: identical mark used on similar products caused likelihood of confusion and unlawful use. | Galderma: it lawfully owned the mark, so use was not infringing or unlawful. | Held: Because Galderma owns the mark, Sköld’s Lanham Act and related claims fail. |
| Validity of jury’s unjust enrichment verdict in favor of Sköld | Sköld: unjust enrichment for Galderma’s use of Restoraderm-related goodwill; sought damages and injunctive relief. | Galderma: unjust enrichment premised on unlawful use of a mark Sköld did not own; ownership defeats claim. | Held: Reversed — unjust enrichment judgment vacated because Sköld did not own the mark. |
Key Cases Cited
- Duquesne Light Co. v. Westinghouse Elec. Corp., 66 F.3d 604 (3d Cir. 1995) (principles for determining contract ambiguity)
- Mylan Inc. v. SmithKline Beecham Corp., 723 F.3d 413 (3d Cir. 2013) (whether a contract is ambiguous is a question of law)
- Int’l Milling Co. v. Hachmeister, Inc., 110 A.2d 186 (Pa. 1955) (integration clauses do not expand a document’s meaning beyond its terms)
- ADR N. Am., L.L.C. v. Agway, Inc., 303 F.3d 653 (6th Cir. 2002) (integration clauses supersede prior contracts only as to the same subject matter)