Loftness Specialized Farm Equipment, Inc. v. Twiestmeyer , 742 F.3d 845 ( 2014 )

United States Court of Appeals
For the Eighth Circuit
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No. 12-4049
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Loftness Specialized Farm Equipment, Inc.
Plaintiff - Appellee
v.
Terry Twiestmeyer; Steven Hood; Twiestmeyer & Associates, Inc.
Defendants - Appellants
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Appeal from United States District Court
for the District of Minnesota - Minneapolis
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Submitted: October 23, 2013
Filed: February 11, 2014
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Before GRUENDER, BEAM, and SHEPHERD, Circuit Judges.
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GRUENDER, Circuit Judge.
Loftness Specialized Farm Equipment, Inc. (“Loftness”) brought this
declaratory judgment action against Terry Twiestmeyer, Steven Hood, and
Twiestmeyer & Associates, Inc. (“T&A”). Twiestmeyer, Hood, and T&A then
asserted counterclaims against Loftness for, as relevant here, unjust enrichment and
breach of two contracts. The district court granted Loftness’s motion to dismiss the
unjust enrichment counterclaim. The district court then granted Loftness’s motion
for summary judgment on the breach of contract counterclaims and entered judgment
for Loftness on its claim for declaratory judgment. We vacate and remand in part and
affirm in part.
I. Background
Loftness manufactures and sells farming equipment and has its principal place
of business in Minnesota. Twiestmeyer and his wife own T&A, which markets and
sells grain bagging equipment on behalf of Loftness. Hood’s company, Hood &
Company, Inc., serves as a sales representative for Loftness.
In 2007, Twiestmeyer and Hood approached Loftness with an idea for a new
line of grain bag loaders and unloaders for Loftness to manufacture and sell. At that
time, Twiestmeyer and Hood were selling grain bagging equipment that was
manufactured in Argentina. This sales experience provided them with knowledge
about the market for grain bagging equipment and insight into possible improvements
to the Argentinian-made equipment. Twiestmeyer and Hood met with representatives
of Loftness on May 15, 2007 to pitch this new product line. Prior to this meeting,
Loftness did not manufacture grain bagging equipment and was not considering doing
so. Before discussing Twiestmeyer and Hood’s proposal, T&A and Loftness signed
a non-disclosure agreement (“NDA”). Neither Twiestmeyer nor Hood are identified
as parties to the NDA. Pursuant to the NDA, Loftness agreed it would “keep in
confidence all Confidential Information” and would “not directly or indirectly
disclose to any third party or use for its own benefit, or use for any purpose other than
the Project, any Confidential Information it receives from [T&A].” Loftness further
agreed not to use T&A’s “confidential information in any way that could be construed
as being competitive of [T&A’s] business for a period of twenty (20) years after the
effective date of this Agreement.” The NDA defined “Confidential Information” as
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“[s]uch information that [T&A] considers to be proprietary and/or confidential” and
provided a non-exhaustive list of types of such information.
At the parties’ initial meeting in May 2007, Twiestmeyer and Hood testified
that they informed Loftness about the market for grain bagging equipment, the need
for such equipment in the United States, their suggested improvements to the
Argentinian-made equipment, and the timing for bringing such a product line to
market. After this meeting, representatives of Loftness traveled to Arkansas and
Nebraska to examine the Argentinian-made equipment. Loftness thereafter concluded
that “[i]t appeared that there was [an] opportunity to sell this equipment. There
w[ere] already Argentinean made machines being sold in North America, and it was
obvious that there were shortfalls in those machines that [Loftness] could fix.”
Loftness then developed a prototype of a grain bag unloader, which according to
Twiestmeyer and Hood, incorporated several of their ideas, including the addition of
two additional clutches to the Argentinian grain bag unloader. Loftness also
developed a grain bag loader. Loftness began manufacturing and selling this
equipment in 2008.
Following the May 2007 meeting, the parties discussed how Twiestmeyer and
Hood would be compensated for their role in developing Loftness’s new product line.
These discussions culminated with an agreement signed on May 21, 2008 (the “May
2008 Agreement”) in which Loftness agreed to pay Twiestmeyer and Hood “a two
percent (2%) override of the dealer net price on all grain bagging equipment and
related products, except grain bags, sold by LOFTNESS during the term of the
Agreement” (the “two-percent override payments”). The May 2008 Agreement
specified a duration of two years.
Less than three weeks before the May 2008 Agreement was to expire, on May
3, 2010, representatives of Loftness called Twiestmeyer and Hood to inform them of
a deal that Loftness had reached with Brandt Agricultural Products Limited (the
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“Brandt deal”). Pursuant to the Brandt deal, Loftness would manufacture grain bag
loaders and unloaders for Brandt to sell as Brandt equipment, and Brandt would
manufacture grain bag augers for Loftness to sell. Twiestmeyer and Hood testified
that Loftness’s representatives assured them that the Brandt deal would be a “good
deal for all of us” and a “win-win” and that Loftness would continue making the two-
percent override payments. Twiestmeyer and Hood testified that their understanding
from their telephone conversations with Loftness’s representatives was that the
duration of the May 2008 Agreement had been extended to coincide with the
remaining term of the NDA. At that time, approximately three years had passed since
the NDA was signed, leaving a duration of approximately seventeen years. However,
Twiestmeyer and Hood admit that they did not discuss explicitly the duration of any
extension of the May 2008 Agreement with Loftness’s representatives. Twiestmeyer
testified that Loftness’s representatives did not say “We are extending the May 2008
[A]greement” or anything of that nature.
Loftness continued making the two-percent override payments to Twiestmeyer
and Hood until early 2011, even though the May 2008 Agreement’s initial two-year
term had expired in May 2010. In January 2011, a representative of Loftness advised
Twiestmeyer and Hood of Loftness’s intention to terminate the two-percent override
payments. At approximately the same time, Twiestmeyer and Hood presented
Loftness with a revised agreement providing for a continuation of the two-percent
override payments. Loftness did not sign this revised agreement.
Loftness then brought this action, seeking a declaratory judgment that it has
fulfilled its duties under the NDA and the May 2008 Agreement. Twiestmeyer,
Hood, and T&A then asserted counterclaims against Loftness for unjust enrichment,
breach of the NDA, and breach of the May 2008 Agreement. Loftness moved to
dismiss these counterclaims for failure to state a claim, which the district court
granted with respect to the unjust enrichment counterclaim. Loftness subsequently
moved for summary judgment on the counterclaims for breach of the NDA and breach
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of the May 2008 Agreement. The district court granted Loftness’s motion for
summary judgment and entered judgment for Loftness on its claim for declaratory
judgment. Twiestmeyer, Hood, and T&A timely appealed.
II. Discussion
A. Breach of the Non-Disclosure Agreement (NDA)
Twiestmeyer, Hood, and T&A first appeal the district court’s grant of
Loftness’s motion for summary judgment on the counterclaim for breach of the NDA.
They argue that Loftness breached the non-compete clause of the NDA by entering
into the Brandt deal and by sharing information with Brandt without continuing to
make the two-percent override payments. We review de novo a district court’s grant
of summary judgment, M & I Marshall & Ilsley Bank v. Sunrise Farm Dev., LLC, 737
F.3d 1198, 1199 (8th Cir. 2013), affirming if “there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ.
P. 56(a). “The non-moving party receives the benefit of all reasonable inferences
supported by the evidence, but has ‘the obligation to come forward with specific facts
showing that there is a genuine issue for trial.’” Atkinson v. City of Mountain View,
709 F.3d 1201, 1207 (8th Cir. 2013) (quoting Dahl v. Rice Cnty., 621 F.3d 740, 743
(8th Cir. 2010)).
In granting summary judgment to Loftness, the district court applied a three-
part test for the tort of misappropriation of trade secrets and confidential information.
The district court derived this test from Cherne Industrial, Inc. v. Grounds &
Associates, Inc., 278 N.W.2d 81, 89-90 (Minn. 1979), which states the common law
standard for the tort of misappropriation of trade secrets and confidential information,
and from Strategic Directions Group, Inc. v. Bristol-Myers Squibb Co., 293 F.3d
1062, 1064 (8th Cir. 2002), which recites the test for claims brought under the
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Minnesota Uniform Trade Secrets Act (“MUTSA”).1 The district court determined
that Twiestmeyer, Hood, and T&A’s claim failed the third part of this test because
they made no effort to keep their ideas and information confidential.
Twiestmeyer, Hood, and T&A’s claim, however, is premised upon Loftness’s
alleged breach of the non-compete provision of the NDA, not the tort of
misappropriation of trade secrets and confidential information. Minnesota law
distinguishes between a claim based upon the tort of misappropriation of trade secrets
and confidential information and one based upon the breach of a non-compete
provision in a contract. In Cherne, for example, the plaintiff brought a claim for
misappropriation of trade secrets and confidential information and a claim for breach
of a covenant not to compete. 278 N.W.2d at 88-91. The Cherne court analyzed the
two claims separately and decided the latter claim based upon the language of the
relevant contract. Id. Furthermore, in Electro-Craft Corp. v. Controlled Motion, Inc.,
332 N.W.2d 890 (Minn. 1983), the Minnesota Supreme Court distinguished between
information protected by Cherne’s common law standard and by the MUTSA, on the
one hand, and information protected by a non-compete clause in a contract, on the
other hand. Id. at 901. The Electro-Craft court explained that using a non-compete
clause to protect information requires “a single act” by the party seeking to protect
the information, id.—presumably the act of entering the contract. The tort of
misappropriation of trade secrets and confidential information, by contrast, requires
“a continuing course of conduct” by the party seeking to protect the information; that
is, the party must make reasonable efforts to maintain the secrecy of the information.
Id.
Instead of applying the test for the tort of misappropriation of trade secrets and
confidential information, the district court should have interpreted and applied the
1
On appeal, the parties do not challenge the district court’s decision to apply
Minnesota law.
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terms of the NDA. See Cherne Indus., 278 N.W.2d at 88-89. Although the district
court stated that its decision was made “pursuant to” the NDA, the district court failed
to mention, much less analyze, the relevant provisions of the NDA, especially
Loftness’s agreement not to use T&A’s “confidential information in any way that
could be construed as being competitive of [T&A’s] business” and the NDA’s
definition of “Confidential Information” as “[s]uch information that [T&A] considers
to be proprietary and/or confidential.”
Loftness urges us to affirm the district court’s judgment on the alternative basis
that its actions with respect to the Brandt deal did not violate the non-compete clause
of the NDA. Although we may affirm the district court’s judgment on any basis
supported by the record, we are not required to do so. Schweiss v. Chrysler Motor
Corp., 922 F.2d 473, 476 (8th Cir. 1990). When it would be beneficial for the district
court to consider an alternative argument in the first instance, we may remand the
matter to the district court. See id. (remanding to the district court to consider an
alternative basis for affirmance because “we would benefit from having the District
Court decide the issue . . . before we address it”); Lafarge N. Am., Inc. v. Discovery
Group, LLC, 574 F.3d 973, 986 n.9 (8th Cir. 2009) (declining to affirm the grant of
summary judgment on alternative bases because “we believe it would be beneficial
for the district court to address these issues in the first instance”); Williams v. Target
Stores, 479 F. App’x 26, 28 (8th Cir. 2012) (unpublished) (declining to consider an
issue, even though the parties argued it, because it “was not decided below” and “is
a matter best left to the district court to consider in the first instance upon remand”).
Given the basis for the district court’s decision, the parties did not comprehensively
brief or argue whether Loftness’s actions in connection with the Brandt deal
constituted a breach of the non-compete provision of the NDA. Because it would be
beneficial for the district court to consider this issue in the first instance, we remand
this counterclaim for further proceedings.
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B. Breach of the May 2008 Agreement
Twiestmeyer, Hood, and T&A also appeal the district court’s grant of
Loftness’s motion for summary judgment on their counterclaim for breach of the May
2008 Agreement. The district court dismissed this counterclaim because the
extension of the May 2008 Agreement as understood by Twiestmeyer and Hood was
unenforceable under the statute of frauds, because there was no meeting of the minds
on the purported extension, and because Loftness’s conduct created an implied-in-fact
contract that Loftness could and did terminate at will with reasonable notice.
We need not reach whether there is a genuine issue of material fact on the
meeting-of-the-minds issue because the oral extension of the May 2008 Agreement
as understood by Twiestmeyer and Hood is unenforceable under the statute of frauds.
See Bolander v. Bolander, 703 N.W.2d 529, 538, 547 (Minn. Ct. App. 2005)
(analyzing oral extension of agreement under statute of frauds). The Minnesota
statute of frauds states, in relevant part, that an agreement “that by its terms is not to
be performed within one year from the making thereof” is unenforceable “unless such
agreement, or some note or memorandum thereof, expressing the consideration, is in
writing, and subscribed by the party charged therewith.” Minn. Stat. § 513.01. Thus,
if the parties’ agreement is not “in writing,” then the agreement is enforceable only
if it is capable of full performance within one year. See id.; Eklund v. Vincent Brass
& Aluminum Co., 351 N.W.2d 371, 375-76 (Minn. Ct. App. 1984), overruled on other
grounds by Hunt v. IBM Mid Am. Emps. Fed. Credit Union, 384 N.W.2d 853, 858-59
(Minn. 1986). It does not matter whether full performance within one year is likely
so long as it is possible. See id.2
2
Twiestmeyer, Hood, and T&A argue for the first time on appeal that equitable
estoppel prevents application of the statute of frauds. We have discretion to consider
an argument not raised before the district court when “the argument involves a purely
legal issue in which no additional evidence or argument would affect the outcome of
the case” or where injustice might otherwise result. Universal Title Ins. Co. v. United
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Twiestmeyer, Hood, and T&A first argue that the NDA qualifies as a “writing”
that extends the two-year duration of the May 2008 Agreement to a total term of
twenty years. For this proposition, they rely on the general rule that “where contracts
relating to the same transaction are put into several instruments they will be read
together and each will be construed with reference to the other.” Anchor Cas. Co. v.
Bird Island Produce, Inc., 82 N.W.2d 48, 54 (Minn. 1957). This rule of construction
does not apply here. To begin with, the NDA predates the May 2008 Agreement by
more than one year. See Alpha Real Estate Co. of Rochester v. Delta Dental Plan of
Minn., 664 N.W.2d 303, 313 (Minn. 2003) (declining to apply the rule from Anchor
Casualty, in part, because the relevant agreements “were entered into successively
and not contemporaneously”). Moreover, the NDA and the May 2008 Agreement
concern different aspects of different parties’ relationships,3 a conclusion that the
NDA itself confirms by providing that “[i]f the parties desire to pursue business
opportunities, the parties will execute a separate written agreement to govern such
business relationship.” (emphasis added). See Anchor Cas. Co., 82 N.W.2d at 54
(declining to read agreements together because “the parties to these instruments are
not the same, and the plain provisions of the [instruments] are incompatible”). In
addition, Twiestmeyer, Hood, and T&A’s argument would require us to read the two-
year duration out of the May 2008 Agreement simply because an earlier agreement
specified a different duration. Doing so would contradict the rule that “[a] contract
must be interpreted in a way that gives all of its provisions meaning.” Current Tech.
Concepts, Inc. v. Irie Enters., Inc., 530 N.W.2d 539, 543 (Minn. 1995) (emphasis
States, 942 F.2d 1311, 1314-15 (8th Cir. 1991). We do not consider whether
equitable estoppel applies here because it is not a purely legal issue and injustice
would not otherwise result.
3
Only T&A and Loftness are identified as parties to the NDA, while only
Twiestmeyer, Hood, and Loftness are identified as parties to the May 2008
Agreement.
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added). For these reasons, we decline to read the NDA as a writing that extends the
term of the May 2008 Agreement.
Twiestmeyer, Hood, and T&A next assert that the parties orally extended the
May 2008 Agreement during their phone conversations on May 3, 2010.
Twiestmeyer and Hood admit that they never specifically discussed the duration of
an extension of the May 2008 Agreement with Loftness’s representatives.
Twiestmeyer, moreover, concedes that Loftness did not say that it was extending the
May 2008 Agreement or anything of that nature. Nevertheless, based on the
assurances that Loftness would continue making the two-percent override payments
and that the Brandt deal would be a “good deal for all of us” and a “win-win,”
Twiestmeyer and Hood contend that they understood that the May 2008 Agreement
had been orally extended for the remaining term of the NDA, or for approximately
seventeen more years. As further evidence of the parties’ intent to extend the May
2008 Agreement, Twiestmeyer and Hood rely on Loftness’s continued payment of the
two-percent override after the expiration of the May 2008 Agreement’s two-year
term.
Even if we accept Twiestmeyer, Hood, and T&A’s position that the parties
orally extended the May 2008 Agreement for seventeen years, such an extension is
unenforceable under the statute of frauds because it cannot be fully performed within
one year. Roaderick v. Lull Eng’g Co., Inc., 208 N.W.2d 761, 763-64 (Minn. 1973)
(holding that an oral agreement providing for a minimum of two years’ employment
is unenforceable under the statute of frauds); Eklund, 351 N.W.2d at 375 (“Even if
the employee [in Roaderick] died within a year, the contract would not be performed
in full.”). Twiestmeyer, Hood, and T&A disagree, arguing that Loftness could have
stopped manufacturing and selling grain bagging equipment at any time, including
within one year. If Loftness did so, they assert, Loftness’s obligations under the
seventeen-year extension would cease. Halting the production and sale of grain
bagging equipment, however, does not equate to full performance of the alleged
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seventeen-year extension. Even though Loftness would no longer be making the two-
percent override payments under this scenario, the seventeen-year extension would
remain in effect. For example, if Loftness decided to start selling grain bagging
equipment again during the seventeen-year period, then Loftness again would be
obligated to make the two-percent override payments. Because full performance of
the purported seventeen-year extension within one year is impossible, the extension
is unenforceable under the statute of frauds. Thus, no action can be maintained on
the alleged oral agreement. See Roaderick, 208 N.W.2d at 763.
The district court also found that Loftness’s continued payment of the two-
percent override after the expiration of the May 2008 Agreement’s two-year term
created an implied-in-fact contract that Loftness could and did terminate at will with
reasonable notice. Citing the rule that a contract is not terminable at will if a duration
can be fairly implied, e.g., 17B C.J.S. Contracts § 603 (2013), Twiestmeyer, Hood,
and T&A urge that summary judgment was inappropriate on this issue. We disagree.
“The general rule is that a contract having no definite duration expressed or which
may be implied is terminable by either party at will upon reasonable notice to the
other.” Benson v. Co-op. Creamery Ass’n v. First Dist. Ass’n, 151 N.W.2d 422, 426
(Minn. 1967) (emphasis added); see also W.K.T. Distrib. Co. v. Sharp Elec. Corp.,
746 F.2d 1333, 1335 (8th Cir. 1984) (same and interpreting Minnesota law). There
was no express duration for the extension of the May 2008 Agreement, as
Twiestmeyer and Hood concede that the parties did not discuss a duration, and as
discussed above, the NDA does not provide an express duration. Moreover, the
implied duration that Twiestmeyer and Hood understood from their discussions with
Loftness’s representatives is, for the reasons discussed above, unenforceable under
the statute of frauds. Accordingly, there was no duration that was expressed or that
can be implied, meaning that Loftness could terminate the two-percent override
payments at will with reasonable notice. See id.; Benson, 151 N.W.2d at 426. The
district court determined that Loftness gave reasonable notice before terminating the
two-percent override payments, a determination that Twiestmeyer, Hood, and T&A
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do not dispute. Accordingly, there is no genuine issue of material fact as to whether
Loftness breached the May 2008 Agreement or any extension thereof. We therefore
affirm the grant of summary judgment on this counterclaim.
C. Unjust Enrichment
Twiestmeyer, Hood, and T&A also appeal the district court’s dismissal of their
unjust enrichment counterclaim. We review de novo a district court’s grant of a
motion to dismiss, construing all reasonable inferences in favor of the non-moving
party. Retro Television Network, Inc. v. Luken Comm’ns, LLC, 696 F.3d 766, 768
(8th Cir. 2012). “To survive a motion to dismiss, a complaint must contain sufficient
factual matter, accepted as true, to ‘state a claim to relief that is plausible on its
face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007)).
The district court concluded that Twiestmeyer, Hood, and T&A were not entitled
to plead unjust enrichment in the alternative because the parties’ relationships were
governed by “various contracts.” So long as an adequate legal remedy exists,
equitable remedies like unjust enrichment are not available. ServiceMaster of St.
Cloud v. GAB Bus. Servs., Inc., 544 N.W.2d 302, 305 (Minn. 1996). “[E]quitable
relief cannot be granted where the rights of the parties are governed by a valid
contract.” U.S. Fire Ins. Co. v. Minn. St. Zoological Bd., 307 N.W.2d 490, 497
(Minn. 1981). To state a claim for unjust enrichment, “the plaintiff must plead more
than that one party benefit[ted] from the efforts or obligations of others, but instead
must allege that a party was unjustly enriched in the sense that the term ‘unjustly’
could mean illegally or unlawfully.” Schaaf v. Residential Funding Corp., 517 F.3d
544, 554 (8th Cir. 2008) (alteration in original) (quoting First Nat’l Bank of St. Paul
v. Ramier, 311 N.W.2d 502, 504 (Minn. 1981)) (internal quotation marks omitted).
“Thus, unjust enrichment does not occur when a defendant is ‘enriched by what he
is entitled to under a contract or otherwise.’” Schaaf, 517 F.3d at 554 (quoting 1 Dan
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B. Dobbs, Law of Remedies § 4.1(2), at 558 (2d ed. 1993)). Moreover, “unjust
enrichment should not be invoked merely because a party has made a bad bargain.”
Cady v. Bush, 166 N.W.2d 358, 362 (Minn. 1969).
The counterclaim for unjust enrichment incorporates all of the allegations made
in support of the counterclaims for breach of the NDA and for breach of the May
2008 Agreement. The unjust enrichment counterclaim then alleges, without
elaboration, that Loftness breached its “common law duties” and received or will
receive “monies to which it is not entitled,” “cannot equitably keep,” and “for which
it should be held accountable.” Thus, the core of Twiestmeyer, Hood, and T&A’s
unjust enrichment counterclaim appears to be that Loftness has been unjustly enriched
by its continued use of their ideas and information without compensating them. To
the extent that Twiestmeyer, Hood, and T&A complain about Loftness’s use of their
ideas and information, this issue is governed by the non-compete clause and the
confidentiality provisions of the NDA. And to the extent that they complain about
Loftness’s failure to make the two-percent override payments, this issue is governed
by the May 2008 Agreement. This dispute, then, is governed by the NDA and the
May 2008 Agreement, making unjust enrichment an unavailable remedy. See U.S.
Fire Ins. Co., 307 N.W.2d at 497.
Twiestmeyer, Hood, and T&A disagree, arguing that they are left without an
adequate legal remedy if, as we determine above, Loftness did not breach the May
2008 Agreement. In Cady v. Bush, the Minnesota Supreme Court rejected an
analogous argument by concluding that unjust enrichment was an unavailable remedy
even though the plaintiff could not sue successfully for breach of contract. 166
N.W.2d at 362 (explaining that the defendant “did no more than exercise rights which
were granted to them under the plain provisions of their written agreement”). This
was so because “unjust enrichment should not be invoked merely because a party has
made a bad bargain.” Id. Here, Twiestmeyer and Hood proposed to Loftness that the
May 2008 Agreement have a two-year term—a fact pled in support of their
counterclaim. Having struck this deal, Twiestmeyer, Hood, and T&A cannot rewrite
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it via unjust enrichment. See id. (“Nor is it within the province of equity to rewrite
or abrogate contracts . . . .”). Because the rights and the obligations of the parties
were governed by the NDA and the May 2008 Agreement, we affirm the dismissal
of this counterclaim. See U.S. Fire Ins. Co., 307 N.W.2d at 497.
III. Conclusion
For the reasons set forth above, we vacate the district court’s order granting
summary judgment on the counterclaim for breach of the NDA and remand for further
proceedings consistent with this opinion, affirm the grant of summary judgment on
the counterclaim for breach of the May 2008 Agreement, and affirm the dismissal of
the unjust enrichment counterclaim. Due to our resolution of the counterclaim for
breach of the NDA, we vacate the district court’s judgment for Loftness on its claim
for declaratory judgment.
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