United States District Court, W.D. Wisconsin
S.C. JOHNSON & SON, INC., Plaintiff,
MINIGRIP, LLC, Defendant.
OPINION & ORDER
D. PETERSON DISTRICT JUDGE
S.C. Johnson & Son, Inc. (SCJ), owns the Ziploc brand of
reclosable plastic bags. SCJ brings this breach of contract
case against defendant Minigrip, LLC, which manufactures
Ziploc bags for SCJ. SCJ contends that Minigrip breached its
agreement with SCJ by making bags for the Meijer grocery
chain that are “similar” to SCJ's Ziploc
bags, and by using SCJ's confidential information to make
the Meijer bags.
moves for summary judgment. Dkt. 44. The material facts are
undisputed, and SCJ's first claim turns on the
interpretation of the term “similar.” The Meijer
bags are not similar to the Ziploc bags under any reasonable
interpretation of the term. As for the second claim, SCJ
adduces no evidence that Minigrip used SCJ's confidential
information in making the bags. The court will grant
Minigrip's motion for summary judgment and deny all other
following facts are undisputed except where noted.
market for reclosable plastic bags includes national brands,
such as Ziploc, Hefty, and Glad, and store brands that
compete with the national brands. SCJ owns the Ziploc brand;
Minigrip is a manufacturer of reclosable plastic bags.
Minigrip makes Ziploc bags for SCJ, and it makes store brand
bags for others. This dispute arises from an agreement
between SCJ and Minigrip concerning Project Lincoln, which
was SCJ's code name for the development of the latest
iteration of the Ziploc bag.
Project Lincoln agreements
parties executed several agreements in connection with
Project Lincoln, but this case concerns only two: the Project
Lincoln Confidential Disclosure and License Agreement, Dkt.
48-8 (License Agreement) and the Contract Manufacturing
Agreement, Dkt. 48-16 (Manufacturing Agreement). Both
agreements were drafted by SCJ, and they are governed by
agreements contain an exclusive dealing provision and a
confidentiality provision. Neither agreement prohibits
Minigrip from making reclosable bags for other parties, but
the exclusive dealing provision prohibits Minigrip from
making the Project Lincoln bags, or any bags similar to the
Project Lincoln bags for anyone else. And both agreements
prohibit Minigrip from using SCJ's confidential
information for anything other than making Project Lincoln
pertinent provisions in the License Agreement provide that
shall not, either before or after termination of the
[License] Agreement: (i) manufacture the Project Lincoln
Products or a similar product for, or sell the Project
Lincoln Products or a similar product to, anyone other than
Johnson; (ii) use any of Johnson's Intellectual Property
or Confidential Information, . . . except for the purposes of
manufacturing the Project Lincoln Products for Johnson . . .
Dkt. 48-8, § 4.c. Similarly, the Manufacturing Agreement
Exclusivity During the Term and for
a period of two (2) years after termination of this
Agreement, [Minigrip] shall not manufacture or sell the
Product or a similar product for or to anyone other than
. . .
[Minigrip] shall not disclose any Confidential Information to
any third party or use or reproduce any Confidential
Information for any purpose other than to carry out its
obligations under the Agreement.
Dkt. 48-16, at 6, §§ 5.4, 13.2.
agreement defines the term “similar” or specifies
the characteristics of a “similar product.”
Project Lincoln bags and Meijer bags
brought this case when it learned that Minigrip was
manufacturing store-brand reclosable bags for the Meijer
chain of grocery stores. The Meijer bags were designed by
Bill Sweaney, an employee of Minigrip's parent company,
Inteplast Group. See Dkt. 84, ¶¶ 49-50.
of both the Project Lincoln bags and the Meijer bags have
been provided to the court, so there is no factual dispute
about the features of the bags. The parties dispute whether
the bags are “similar” as that term is used in
the agreements. The bags are, of course, similar in the ways
in which all reclosable plastic bags are similar, but there
are also numerous visible differences. The differences
include, among other things, number of zippers, zippers'
colors, cross-hatching and dimples on lips, deformations on
the zippers, grip strips, edges, and lip colors.
parties focus on the last two features. The first involves
the edges of the opening side of the bag. The Project Lincoln
bags have a die-cut trapezoid-shaped tabs on one lip of the
bags (like the tab on a file folder), which assists users to
open the bags easily. SCJ calls these the Easy Open Tabs. The
Meijer bags do not have die-cut tabs, but they have offset
lips, meaning that on the opening side of the bag, one edge
that protrudes further than the other. Dkt. 84, ¶ 63.
second feature is the lip color. On the Project Lincoln bag,
both lips are colored, with one side colored in the same hue
but to a deeper intensity. Each Meijer bag has one colored
lip and one clear, uncolored lip. The Project Lincoln bags
and the Meijer bags compete with each other in Meijer stores.
SCJ's confidential information
contends that Minigrip designed, and now manufactures, the
Meijer bags using SCJ's confidential information. The
confidential information identified by SCJ is: SCJ's
consumer research that shows consumers' preference for
full-colored lips; SCJ's two “Ziploc
Innovation” documents; and SCJ's method know-how on
applying color to lips evenly. (SCJ also claims that Minigrip
used SCJ's equipment in violation of the confidentiality
provisions. But, as explained below, SCJ did not raise this
claim in its complaint, and so SCJ will not be allowed to
pursue that claim.)
court has subject matter jurisdiction on the basis of
diversity under 28 U.S.C. § 1332. SCJ is a Wisconsin
corporation with its principal place of business in
Wisconsin. Minigrip is a limited liability company.
Minigrip's sole member is Inteplast, which is a limited
partnership. Each of Inteplast's three partners, Amtopp
Corporation, World-Pak Corporation, and Integrated Bagging
System, Inc., is a Delaware corporation with a principal
place of business in New Jersey. For the purposes of
diversity, Minigrip is a citizen of Delaware and New Jersey.
The parties are diverse; the amount in controversy exceeds
Minigrip's summary judgment motion
district court must grant summary judgment when no genuine
issue of material fact exists and the moving party is
entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a);
Celotex Corp. v. Catrett, 477 U.S. 317, 322-23
(1986). The court must view the evidence in the light most
favorable to the nonmoving party, but “the nonmoving
party must come forward with specific facts showing that
there is a genuine issue for trial.” Armato v.
Grounds, 766 F.3d 713, 719 (7th Cir. 2014) (quoting
Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 587 (1986)).
moves for summary judgment on both of SCJ's contract
claims: (1) that the Meijer bags are “similar” to
the Project Lincoln bags; and (2) that Minigrip used
SCJ's confidential information in making the Meijer bags.
Wisconsin law applies to both claims because the parties
chose Wisconsin law as the governing law for both the License
Agreement and the Manufacturing Agreement. To prevail on a
breach-of-contract claim under Wisconsin law, a plaintiff
must establish three elements: the existence of a valid