UNITED STATES DISTRICT COURT 

EASTERN DISTRICT OF MICHIGAN 

SOUTHERN DIVISION 

Ziebart International Corp., 

Plaintiff, 

v. 

Z Technologies Corp., 

Defendant, 

v. 

Pure Asphalt Co., 

 Counter Defendant. 

________________________________/

Case No. 15-cv-11745 

Judith E. Levy 

United States District Judge 

Mag. Judge Anthony P. Patti 

OPINION AND ORDER DENYING MOTION FOR SUMMARY 

JUDGMENT [55], GRANTING IN PART AND DENYING IN PART 

MOTION FOR PARTIAL SUMMARY JUDGMENT ON 

COUNTERCLAIMS [57], AND GRANTING MOTION FOR 

JUDGMENT ON THE PLEADINGS [58] 

 Before the Court are defendant Z Technologies Corp.’s motion for 

summary judgment, plaintiff Ziebart International Corp. and counter 

defendant Pure Asphalt Co.’s motion for partial summary judgment on 

defendant’s counterclaims, and Pure Asphalt Co.’s motion for judgment 

on the pleadings on counterclaims III and IV. (Dkts. 55, 57, 58.) For 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 1 of 37 Pg ID 2085
2 

the reasons set forth below, the Court will deny defendant’s motion for 

summary judgment, will grant in part and deny in part plaintiff and 

counter defendant’s motion for partial summary judgment, and grant 

counter defendant’s motion for judgment on the pleadings on 

counterclaims III and IV. 

I. Background

Plaintiff and defendant began their commercial relationship in 

1996, and their relationship continued for fifteen years, ending in 2003. 

Their commercial disputes began in 2000, and have been ongoing for 

more than fifteen years, continuing to this day. This lawsuit represents 

the latest in a series of trademark and contract disputes between the 

parties. 

Plaintiff is a Michigan corporation that sells appearance and 

protection goods and services, including rustproofing products, for auto 

vehicles. (Dkt. 1 at 3–4.) Defendant is a Delaware corporation that 

manufactures and sells industrial undercoating and paint products for 

vehicles, also including rust prevention products. (Dkt. 52 at 2.) Pure 

Asphalt Co. is an Illinois corporation and began supplying plaintiff with 

a sealant known as Formula Q in 1999. (Dkt. 58 at 12.) 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 2 of 37 Pg ID 2086
3 

In 1996, plaintiff sold its chemical subsidiary, Ziebart Products 

Group, Inc. to The Sentry Corporation, which then became known as Z 

Tech. (Dkt. 1 at 6; Dkt. 56-2 at 8.) As part of the sale, the parties 

entered into the following agreements that addressed, among other 

things, use of trade names, trademarks, disclosure of information, and 

other intellectual property: Asset Purchase Agreement; License 

Agreement; Non-Competition and Non-Disclosure Agreement; and 

Supply Agreement. (Dkt. 1 at 4–6; Dkt. 52 at 19–23; Dkt. 66-10 at 2.) 

In the 1996 Asset Purchase Agreement, the parties agreed that 

defendant Z Technologies Corp. could use the name “‘ZP Corporation’ 

and variants thereof,” and that plaintiff would no longer use this name 

or similar names. (Dkt. 56-2 at 41.) Pursuant to the License 

Agreement, defendant was permitted to license and use specified 

trademarks, service marks, and trade names owned by plaintiff. (Dkt. 

56-4 at 3–4.) The list of licensed marks and names was never attached 

to the Agreement, and the parties have not identified which marks and 

names were included in the License Agreement. The parties also 

entered into the Non-Competition and Non-Disclosure Agreement 

(NDA), which stated that “all confidential information shall be and 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 3 of 37 Pg ID 2087
4 

remain the sole and absolute property” of defendant, and prohibited 

plaintiff from disclosing defendant’s confidential and proprietary 

information without written consent. (Dkt. 56-5 at 4.) 

Finally, the parties entered into an ongoing commercial 

relationship through a Supply Agreement. Pursuant to this agreement, 

plaintiff agreed to purchase at least 650,000 gallons per year of 

automotive sealants, cleaners, and coatings—including “Ziebart 

Formula Q”—from defendant. (Dkt. 56-6 at 3.) If defendant were 

unable to provide this product for a period of time, Article 12 permitted 

plaintiff to cover by finding an alternate supplier for that time. (Id. at 

7–8.) If plaintiff needed to cover, Article 15 stated that plaintiff could 

disclose otherwise confidential Ziebart Product Formula information to 

the alternate supplier to ensure it received the appropriate products. 

(Id. at 9.) The right to disclose confidential information under this 

circumstance was the only exception to plaintiff’s duty not to disclose 

contained in Article 15 of the Supply Agreement and in the NonCompetition and Non-Disclosure Agreement. The Supply Agreement 

was to last for five years, at which point plaintiff could renew the 

contract for another five years “on the same terms and conditions” by 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 4 of 37 Pg ID 2088
5 

giving written notice to defendant at least 180 days before the 

Agreement expired. (Id. at 4.) 

Approximately four years after the parties entered into these 

agreements, the parties “had a falling out.” (Dkt. 56 at 14.) Plaintiff 

stopped purchasing products from defendant and terminated the Supply 

Agreement in approximately March 2000 (see Dkt. 56-9 at 2). Plaintiff 

then sent defendant a letter on June 14, 2000, alleging defendant was 

infringing plaintiff’s trademarks and stating “Z Tech is not authorized 

to use the Ziebart Trademarks.” (Id.) On June 14, 2000, defendant 

denied the allegations, and requested plaintiff purchase the remaining 

inventory defendant had prepared specifically for plaintiff. (Dkt. 56-10 

at 2.) On August 31, 2000, plaintiff again wrote to defendant, asking 

defendant to cease and desist from continuing to ship products to 

plaintiff’s franchises, and offering to discuss the remaining inventory. 

(Dkt. 56-11 at 2.) Two months later, on October 24, 2000, plaintiff 

again wrote to defendant, ordering it to cease and desist using 

plaintiff’s trademarks. (Dkt. 56-12.) 

In January 2001, defendant sued plaintiff in state court for breach 

of contract, arguing plaintiff had failed to pay defendant and wrongfully 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 5 of 37 Pg ID 2089
6 

terminated the Supply Agreement. (See Dkt. 56-13.) Plaintiff 

counterclaimed for breach of the Asset Purchase Agreement, Supply 

Agreement, and License Agreement. (Dkt. 56-13 at 12–15.) In 

September 2001, the parties settled the lawsuit and submitted a 

stipulated dismissal with prejudice. (Dkt. 56-14.) Additionally, the 

parties entered into a Settlement and Release Agreement by which they 

agreed to mutually release each other from current and future claims 

“in connection with any counterclaim brought against Z Tech” and “in 

connection with any claim brought against Ziebart” in the 2000 

litigation. (Dkt. 56-7 at 3.) 

After this dispute, the parties executed an Amended Supply 

Agreement on September 18, 2001. (Dkt. 1 at 6.) Pursuant to this 

agreement, the contract would be valid until September 17, 2007, and 

plaintiff could renew the contract for five years “upon written notice to 

Z Tech not later than one hundred eighty (180) days prior to the 

expiration of the initial terms of this Agreement.” (Dkt. 56-7 at 7.) 

Despite their attempts to continue their business relationship, the 

parties’ disagreements persisted. Their commercial relationship broke 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 6 of 37 Pg ID 2090
7 

down in 2003. (Dkt. 1 at 6; Dkt. 52 at 25.)1 And following this 

breakdown, plaintiff continued to accuse defendant of infringing its 

trademarks. In 2003, plaintiff’s chief operating officer was informed by 

one of its techicians that defendant may be using plaintiff’s Formula Q 

trademark on its products. (Dkt. 56 at 15.) In 2006, plaintiff 

complained to defendant about several warranty forms that stated 

defendant was the “Originators of Ziebart Protective Coatings.” (Id.) In 

2007, Pure Asphalt notified plaintiff that defendant Z Technologies 

Corp. was using the Ziebart name on its website. (Id. at 16.) 

In 2011, plaintiff learned defendant was potentially infringing 

several other trademarks on defendant’s website. (Dkt. 56 at 16; Dkt. 

56-16 at 7.) Plaintiff’s trademark counsel, Patricia Lipsky, contacted 

defendant, and the parties settled the dispute by entering into the 

Settlement Agreement of February 2012. (Dkt. 56 at 16–17; Dkt. 1-8.) 

Pursuant to this agreement, defendant was prohibited from using the ZShield, Zeegard, and Z Guard names on its website, and plaintiff agreed 

 

1 Defendant amended its initial answer (Dkt. 9) in a later filing. (Dkt. 52.) The 

counterclaims were not amended in the later filing, and defendant did not resubmit 

the exhibits attached to Dkt. 9. The Court will reference exhibits from defendant’s 

answer as numbered in Dkt. 9. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 7 of 37 Pg ID 2091
8 

to allow defendant to use the Z Shield and Z Guard marks in certain 

fields. (Dkt. 1-8.) 

Subsequently, in 2015, plaintiff learned defendant was using the 

name Ziebart in the meta tags2 in connection with its website despite 

the 2012 Settlement Agreement. Around this same time, plaintiff 

registered the Formula Q trademark with the U.S. Patent and 

Trademark Office. Plaintiff then allegedly learned defendant was 

infringing the Formula Q trademark and filed this lawsuit. (See Dkt. 

1.) Plaintiff’s claims are as follows: (I) trademark infringement 

pursuant to 15 U.S.C. § 1114; (II) common law trademark infringement; 

(III) false designation of origin or sponsorship, false advertising or 

trademark infringement pursuant to 15 U.S.C. § 1125(a); and (IV) 

breach of the 2012 Settlement Agreement. (Id. at 8–13.) 

Defendant has brought five counterclaims against plaintiff and 

Pure Asphalt Co. First, defendant alleges that plaintiff breached the 

Asset Purchase Agreement and NDA by registering the Formula Q 

trademark with the U.S. Patent & Trademark Office, “by disclosing to 

third parties . . . the formula for Formula Q and other formulas, when it 

 

2 Meta tags are words or phrases describing a web page’s content and appear in the 

page’s code, but do not appear on the page itself. The tags can be read by search 

engines so the web page will appear in search results. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 8 of 37 Pg ID 2092
9 

was not permitted to do so,” “by claiming Z Tech does not have the right 

to use the name ‘Formula Q and . . . bringing legal action against Z 

Tech for its alleged infringement of the purported ‘Formula Q’ 

trademark.” (Dkt. 52 at 31–32.) Second, defendant argues that, 

through this same conduct, plaintiff misappropriated its trade secrets 

“relating to Formula Q and other formulas.” (Id. at 33.) Third, 

defendant claims Pure Asphalt Co. misappropriated the same trade 

secrets by continuing to use these formulas despite knowing it has no 

legal right to do so. (Id. at 34–35.) Fourth, defendant requests a 

declaratory judgment “of the rights and legal relations [of the parties] 

pertaining to Z Tech’s formulas and other trade secrets and confidential 

and proprietary information.” (Id. at 36.) Finally, defendant seeks 

cancellation of plaintiff’s registration of the Formula Q trademark, 

arguing the registration is invalid as ownership rights were transferred 

to defendant in the 1996 Asset Purchase Agreement. (Id. at 36–37.) 

II. Legal Standard

Before the Court are motions for summary judgment and a motion 

for judgment on the pleadings. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 9 of 37 Pg ID 2093
10 

Summary judgment is proper when “the movant shows that 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 court may 

not grant summary judgment if “the evidence is such that a reasonable 

jury could return a verdict for the nonmoving party.” Anderson v. 

Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The court “views the 

evidence, all facts, and any inferences that may be drawn from the facts 

in the light most favorable to the nonmoving party.” Pure Tech Sys., 

Inc. v. Mt. Hawley Ins. Co., 95 F. App’x 132, 135 (6th Cir. 2004) (citing 

Skousen v. Brighton High Sch., 305 F.3d 520, 526 (6th Cir. 2002)). 

Judgment on the pleadings is appropriate “when no material issue 

of fact exists and the party making the motion is entitled to judgment 

as a matter of law.” Coyer v. HSBC Mort. Servs., Inc., 701 F.3d 1104, 

1108 (6th Cir. 2012). “The standard of review for a Rule 12(c) motion is 

the same as for a motion under Rule 12(b)(6) for failure to state a claim 

upon which relief can be granted.” Fritz v. Charter Twp. of Comstock, 

592 F.3d 718, 722 (6th Cir. 2010). Thus, “all well-pleaded material 

allegations of the pleadings of the opposing party must be taken as true, 

and the motion may be granted only if the moving party is nevertheless 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 10 of 37 Pg ID 2094
11 

clearly entitled to judgment.” Id. (quoting JPMorgan Chase Bank, N.A. 

v. Winget, 510 F.3d 577, 581 (6th Cir. 2007)). However, the allegations 

“need to be sufficient to give notice to the defendant as to what claims 

are alleged,” and they must state a plausible claim for relief. Id. (citing 

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). 

III. Analysis

A. Defendant’s Motion for Summary Judgment

Defendant seeks to dismiss all of plaintiff’s claims. First, 

defendant argues plaintiff cannot bring Counts I, II, or III because (1) 

they are time barred by the statute of limitations and laches, and/or (2) 

they are barred by the 2001 lawsuit and the doctrine of res judicata. 

(Dkt. 56 at 11–18.) Second, defendant argues that Counts I, III, and IV 

are barred under the doctrine of equitable estoppel and the Asset 

Purchase Agreement. (Id. at 19–21.) 

Defendant is also seeking summary judgment on four issues 

related to its counterclaims: (1) the NDA is still in effect; (2) plaintiff’s 

right to cover under the Amended Supply Agreement does not extend 

“forever”; (3) plaintiff is barred from arguing that its disclosure of 

defendant’s formula to Pure Asphalt Co. destroyed defendant’s rights; 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 11 of 37 Pg ID 2095
12 

and (4) plaintiff is barred from making new disclosures of defendant’s 

formulas. (Dkt. 56 at 29–33.) 

i. Counts I-III Are Not Time Barred 

Defendant claims Counts I, II, and III—plaintiff’s trademark 

infringement claims under the Lanham Act and common law—are time 

barred. (Dkt. 56 at 19–22.) 

There is no express statute of limitations for common law 

trademark infringement claims, but the Sixth Circuit has held that 

Michigan’s three-year statute of limitations for property damage applies 

to common law trademark infringement claims. See, e.g., Nartron Corp. 

v. STMicroelectrionics, Inc., 305 F.3d 397, 408 (6th Cir. 2002). 

The Lanham Act also does not include an express statute of 

limitations. Instead, courts use the doctrine of laches to determine if a 

claim is barred. Audi AG v. D’Amato, 469 F.3d 534, 545 (6th Cir. 2006). 

Under this doctrine, a court looks at “(1) whether the owner of the mark 

knew of the infringing use; (2) whether the owner’s delay in challenging 

the infringement of the mark was inexcusable or unreasonable; and (3) 

whether the infringing user was unduly prejudiced by the owner’s 

delay.” Id. at 545–46. In the Sixth Circuit, “there is a strong 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 12 of 37 Pg ID 2096
13 

presumption that a plaintiff’s delay in asserting its rights is reasonable 

as long as an analogous state statute of limitations has not elapsed.” 

Nartron Corp., 305 F.3d at 408. In this case, assuming that Michigan 

law is the pertinent law, the statute of limitations is three years. “In 

other words, a delay beyond the three-year statutory period is 

presumptively prejudicial and unreasonable. The period of delay begins 

to run when plaintiff had ‘actual or constructive knowledge of the 

alleged infringing activity.’” Id. To rebut this presumption of laches, a 

plaintiff must “(1) rebut the presumption of prejudice; (2) establish that 

there was a good excuse for its delay; or (3) show that the defendant 

engaged in ‘particularly egregious conduct which would change the 

equities significantly in plaintiff’s favor.’” Id. at 409. 

In this case, plaintiff’s claims are not time barred. First, although 

the parties agree that plaintiff knew defendant was allegedly infringing 

the Ziebart and Formula Q trademarks in 2000 (see Dkt. 56-9 (letter 

from plaintiff to defendant)), plaintiff believed defendant stopped using 

the trademarks in 2000, prior to the 2001 lawsuit being filed. (Dkt. 66 

at 10.) Plaintiff learned of one other potential instance of infringement 

in 2003 regarding the unauthorized use of Formula Q and defendant 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 13 of 37 Pg ID 2097
14 

again allegedly agreed not to infringe. (Id. at 14–15.) Plaintiff asserts 

that it had no reason to know that defendant would infringe again, and 

that it timely raised this issue when it first learned of additional 

infringements in 2015. (Id. at 10–11.) 

Defendant has not demonstrated plaintiff should have suspected 

other infringements of the Ziebart and Formula Q trademarks prior to 

2015. Between 2005 and 2012, plaintiff contacted defendant about 

various trademark issues, but not the Ziebart or Formula Q 

trademarks. Defendant therefore cannot rely on these instances to 

demonstrate that plaintiff should have filed suit regarding Formula Q 

at an earlier date. 

Moreover, plaintiff has alleged violations of seven specific 

trademarks (including Formula Q). (Dkts. 1-1–1-8.) The documentation 

provided by defendant does not indicate the trademarks listed in the 

complaint are the same as those that plaintiff previously disputed with 

defendant either prior to the 2001 lawsuit or in the parties’ subsequent 

letters of communication. The 2012 Settlement Agreement lists specific 

trademarks that may and may not be used, and the registration 

numbers do not match those listed in the complaint. The only reference 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 14 of 37 Pg ID 2098
15 

to “Ziebart” is in a provision requiring defendant to remove references 

to the name from its website (see Dkt. 1-9 at 3), but no specific 

trademark is identified by name or number. Thus, defendant cannot 

rely on this agreement to argue plaintiff is time barred from raising its 

current claims. 

Construing the evidence in the light most favorable to plaintiff, 

plaintiff is not barred by the three-year statute of limitations and 

plaintiff did not unreasonably delay in bringing its Lanham Act and 

common law infringement claims. Accordingly, defendant is not 

entitled to summary judgment on Counts I-III on the ground that they 

are time barred. 

ii. Counts I-III Are Not Barred by Res Judicata 

Defendant claims Counts I, II, and III of the complaint are barred 

by res judicata and the 2001 settlement agreement between the parties. 

(Dkt. 56 at 22–26.) The 2001 settlement agreement between the parties 

contains a mutual release clause, which prohibits both parties from 

suing for any claims “whether now known or unknown, suspected or 

unsuspected” and that each party “now has, owns, or holds . . . or at any 

time heretofore ever had, owned or held . . . in connection with any 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 15 of 37 Pg ID 2099
16 

[claim or counterclaim]” brought by the parties in that litigation. (Dkt. 

56-7 at 3.) 

This Court is required to apply the Michigan doctrine of res 

judicata in this case. “Michigan takes a broad approach to the 

doctrine,” and “bars a second, subsequent action when (1) the prior 

action was decided on the merits, (2) both actions involve the same 

parties or their privies, and (3) the matter in the second case was, or 

could have been, resolved in the first.” Smith v. City of Inkster, 644 F. 

App’x 602, 607 (6th Cir. 2016). Thus, the doctrine “bars not only claims 

already litigated, but also every claim arising from the same 

transaction that the parties, exercising reasonable diligence, could have 

raised.” Id. However, this does not necessarily bar “all claims that 

accrue before entry of a final award.” Id. (citing McCoy v. Michigan, 

369 F. App’x 646, 651 (6th Cir. 2010); Banks v. LAB Lansing Body 

Assembly, 271 Mich. App. 227, 231–32 (2006)). 

With respect to defendant’s res judicata argument, the parties 

dispute only whether the trademark claims could or should have been 

brought as part of the 2001 litigation. Here, the third prong is not 

satisfied and the 2001 settlement agreement does not bar plaintiff’s 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 16 of 37 Pg ID 2100
17 

claims. As set forth above, although plaintiff knew defendant was 

allegedly infringing the Ziebart and Formula Q trademarks in 2000, 

plaintiff believed defendant stopped using the trademarks that same 

year, prior to the lawsuit being filed. Thus, there was no reason for 

plaintiff to bring its trademark infringement claims in the 2001 

litigation. 

The counterclaims made in 2001 are not sufficiently related to 

trademark infringement such that the mutual release bars plaintiff’s 

claims. In 2001, plaintiff sued defendant for breach of the non-compete 

and non-solicitation provisions of the Asset Purchase Agreement after 

defendant allegedly solicited sales from plaintiff’s franchisees. (Dkt. 56-

13 at 12.) Although trademark infringement relates to competition, it 

does not sufficiently relate to soliciting sales from plaintiff’s franchisees 

so as to qualify as “in connection” with the counterclaims brought in 

2001. Accordingly, defendant’s motion for summary judgment on the 

ground of res judicata is denied. 

iii. Count IV Is Not Barred by Equitable Estoppel or 

the Asset Purchase Agreement 

Defendant argues Count IV of the complaint is barred by 

equitable estoppel or the Asset Purchase Agreement. (Dkt. 56 at 19–

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 17 of 37 Pg ID 2101
18 

21.) Defendant argues it was misled by plaintiff because plaintiff failed 

to request defendant remove the meta tags with “Ziebart” from its 

website in its correspondence with defendant and in the 2012 

Settlement Agreement. (Id. at 20.) Plaintiff contends its claims are not 

barred because (1) it is unreasonable for defendant to believe plaintiff 

wanted removed only the improper uses that plaintiff found; (2) the 

2012 Settlement Agreement expressly requires defendant to remove 

references to Ziebart from its website within thirty days; and (3) 

plaintiff was not negligent and did not make misrepresentations, as its 

trademark counsel could not have known about the meta tags. (Dkt. 66 

at 20–22.) 

In a trademark infringement suit, a defendant asserting equitable 

estoppel must prove “(1) misleading conduct that leads the defendant to 

believe that the plaintiff will not bring an infringement suit; (2) reliance 

on the misleading conduct by the defendant; and, (3) material prejudice 

suffered by the defendant as a result of the defendant’s reliance.” 

Volkswagen AG v. Dorling Kindersley Pub., Inc., 614 F. Supp. 2d 793, 

813 (E.D. Mich. 2009). 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 18 of 37 Pg ID 2102
19 

Here, defendant has not demonstrated plaintiff misled it. The 

2012 Settlement Agreement requires defendant “remove references to 

Ziebart, Zeegard and Z-Shield from its website within thirty days of 

execution of” the agreement. (Dkt. 56-18 at 3.) The agreement does not 

expressly mention meta tags, but the language of the agreement—

defendant must “remove references to Ziebart . . . from its website”—

may be construed as reaching both visible and non-visible references, 

including meta tags in the website’s code, to Ziebart. Thus, there 

remains a question of material fact with respect to the scope of the 

agreement. Further, defendant has not demonstrated how plaintiff 

could have discovered or known about the tags before the 2012 

Settlement Agreement since the tags appear only in the website’s code. 

And the 2011 correspondence between the parties that led to the 

settlement cannot be relied on as the “misrepresentation” given that it 

predates the settlement. Defendant also does not dispute that it never 

disclosed the meta tags to plaintiff during their 2011 settlement 

discussions. Thus, defendant has not demonstrated plaintiff should be 

equitably estopped from raising its meta tag claim. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 19 of 37 Pg ID 2103
20 

Additionally, the Asset Purchase Agreement does not establish 

defendant may use “Ziebart” or “ZBart” in meta tags. The only 

provision addressing names states defendant may use “ZP Corporation 

and variants thereof.” (Dkt. 56-2 at 41 (Art. 11.5).) And the 2012 

Settlement Agreement requires defendant to remove all references to 

Ziebart from its website, which indicates there remain questions of 

material fact with respect to whether and how defendant may use the 

name “Ziebart.” Accordingly, defendant is not entitled to summary 

judgment on Count IV. 

iv. Defendant Is Not Entitled to Judgment On the 

Issues Relating to Its Counterclaims 

Defendant has asked for judgment on four issues related to the 

parties’ Amended Supply Agreement: (1) the NDA is still in effect; (2) 

plaintiff’s right to cover under the Amended Supply Agreement does not 

continue “forever”; (3) plaintiff is barred from arguing that its disclosure 

of defendant’s formula to Pure Asphalt Co. destroyed defendant’s rights; 

and (4) that plaintiff is barred from making new disclosures of 

defendant’s formulas. (Dkt. 56 at 29–33.) 

Plaintiff argues that defendant is not entitled to judgment on 

these issues because (1) plaintiff did not disclose the formula for 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 20 of 37 Pg ID 2104
21 

Formula Q to Pure Asphalt Co., and even if plaintiff did, defendant 

knew of the disclosure by 2001 and took no steps to ensure the secrecy 

of its trade secret; and (2) defendant is improperly seeking advisory 

opinions because it has failed to identify how plaintiff has allegedly 

acted in a way so as to generate an actual case or controversy. (Dkt. 66 

at 22–25.) 

District courts have “discretion to entertain declaratory judgment 

actions,” but may decline to address claims within their jurisdiction, 

taking into account “considerations of practicality and wise judicial 

administration.” Wilton v. Seven Falls Co., 515 U.S. 277, 288–89 

(1995). And the “party seeking a declaratory judgment has the burden 

of establishing the existence of an actual case or controversy.” 

MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 144 (2007) (quoting 

Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 95 (1993)). The 

Sixth Circuit has articulated five factors a trial court should consider 

when determining whether to exercise its declaratory judgment 

jurisdiction: 

(1) whether the declaratory action would settle the 

controversy; (2) whether the declaratory action would serve a 

useful purpose in clarifying the legal relations in issue; (3) 

whether the declaratory remedy is being used merely for the 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 21 of 37 Pg ID 2105
22 

purpose of “procedural fencing” or “to provide an arena for 

res judicata”; (4) whether the use of a declaratory action 

would increase friction between our federal and state courts 

and improperly encroach upon state jurisdiction; and (5) 

whether there is an alternative remedy which is better or 

more effective. 

Assurance Co. of Amer., 392 F. App’x at 475 (quoting Scottsdale Ins. Co. 

v. Flowers, 513 F.3d 546, 554 (6th Cir. 2008)). 

Here, defendant has pleaded plaintiff gave defendant’s formula for 

Formula Q and other confidential and proprietary information to Pure 

Asphalt Co., and that Pure Asphalt Co. has continued to use this 

information. (Dkt. 52 at 15; Dkt. 56 at 29.) However, defendant’s 

allegations do not suggest that plaintiff will or has made any 

disclosures since either the late 1990s or early 2000s. (See Dkt. 56-24 

at 17.) Thus, exercise of declaratory judgment jurisdiction would be 

premature as such a declaration would not settle the controversy 

regarding whether plaintiff has continued to use defendant’s 

information. By extension, it would be premature for the Court to 

exercise declaratory judgment jurisdiction over defendant’s request that 

plaintiff be barred from making new disclosures of defendant’s trade 

secrets. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 22 of 37 Pg ID 2106
23 

Defendant has also requested a judgment stating that plaintiff’s 

right to cover under the Amended Supply Agreement does not extend 

“forever.” Defendant has phrased its claim very broadly, and a 

judgment reciting this axiomatic statement would do little to resolve 

the legal rights and relations of the parties. Further, both parties agree 

that the provisions imposing obligations on the parties related to the 

purchase and sale of goods are no longer in effect, and defendant has 

not demonstrated that plaintiff is attempting to cover by purchasing 

from Pure Asphalt Co. Therefore, there is no case or controversy that a 

declaratory judgment alone would resolve. Accordingly, defendant is 

not entitled to a declaratory judgment or summary judgment on this 

issue.3

Finally, defendant asks that plaintiff be barred from arguing any 

past disclosure of defendant’s trade secret relating to Formula Q 

destroyed defendant’s rights to that trade secret. Defendant claims 

that plaintiff disclosed the formula in 1999, but subsequently agreed 

 

3 As set forth below, plaintiff’s right to cover ended on September 17, 2007. This 

fact alone does not resolve the rights of the parties, but addresses defendant’s 

counterclaims. Thus, the issue standing alone is not appropriate for declaratory 

relief. But, the issue is relevant to resolving the statute of limitations claims in 

plaintiff’s motion for partial summary judgment and is addressed there. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 23 of 37 Pg ID 2107
24 

not to disclose any product formulas in the 2001 Amended Supply 

Agreement, and that this agreement forecloses plaintiff’s right to rely 

on this defense. (Dkt. 66 at 32.) Plaintiff agrees both that the relevant 

disclosure occurred before the Amended Supply Agreement was 

finalized, and that the prior disclosure itself did not destroy defendant’s 

trade secret. (Dkt. 66 at 22, 24.) 

That plaintiff does not claim the prior disclosure destroyed 

defendant’s trade secret indicates defendant’s request for judgment is 

likely being made “for the purpose of ‘procedural fencing’” rather than 

“to provide an arena for res judicata.” Assurance Co. of Amer., 392 F. 

App’x at 475. 

Additionally, defendant’s request would not resolve any questions 

here. First, as set forth below, plaintiff does not claim ownership of any 

trade secrets, only trademarks. Rather, plaintiff argues that if a trade 

secret were disclosed, defendant lost its right to bring this because it 

never took steps to protect its trade secret. A declaratory judgment 

relating to the disclosure would not preclude plaintiff from making this 

argument. Trade secrets are no longer protectable if the holder fails to 

take reasonable steps to ensure the secrecy of the information. Giasson 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 24 of 37 Pg ID 2108
25 

Aerospace Science, Inc. v. RCO Eng’r, Inc., 680 F. Supp. 2d 830, 840 

(E.D. Mich. 2010) (under Michigan law, the trade secret owner must 

take actions “reasonable under the circumstances to maintain [the] 

secrecy or confidentiality”). Questions as to whether an owner has 

taken reasonable steps to maintain confidentiality “ordinarily is a 

question of fact for the jury,” and “only in an extreme case can what is a 

‘reasonable’ precaution be determined [as a matter of law].” Id. at 840 

(quoting Learning Curve Toys, Inc. v. PlayWood Toys, Inc., 342 F.3d 

714, 725 (7th Cir. 2003), cited in Niemi v. NHK Spring Co., Ltd., 543 

F.3d 294 (6th Cir. 2008)). Thus, defendant is not entitled to declaratory 

or summary judgment barring plaintiff from arguing that its disclosure 

of the trade secret destroyed defendant’s rights in that trade secret. 

B. Plaintiff and Counter Defendant’s Motion for Partial 

Summary Judgment

Plaintiff and counter defendant Pure Asphalt Co. seek summary 

judgment on Counts I-IV of defendant’s five counterclaims. As set forth 

below, Pure Asphalt Co. is entitled to judgment on the pleadings with 

respect to Counts III and IV. Because Count III is against only Pure 

Asphalt Co., this count will not be addressed here. Count IV will be 

discussed with reference to plaintiff only. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 25 of 37 Pg ID 2109
26 

i. Count I: Breach of Contract 

Defendant claims plaintiff breached the Asset Purchase 

Agreement and NDA by registering the Formula Q trademark and 

wrongfully disclosing and using the trade secrets relating to Formula Q 

and “other formulas.” (Dkt. 52 at 30–32.) Plaintiff claims Count I is 

barred by the statute of limitations. (Dkt. 57 at 12–13.) 

Under Michigan law, a breach of contract claim must be brought 

within six years of the time the claim accrues. MICH. COMP. LAWS 

§ 600.5807(8). A breach accrues “at the time the wrong upon which the 

claim is based was done regardless of the time when damage results.” 

Scherer v. Hellstrom, 270 Mich. App. 458, 463 (2006) (breach accrued 

when deadline in contract passed). Thus, the statute of limitations 

typically begins to run when the breach occurs, or when the “promisor 

fails to perform.” Blazer Foods, Inc. v. Restaurant Props., Inc., 259 

Mich. App. 241, 245–46 (2003). 

Defendant argues plaintiff breached the Asset Purchase 

Agreement and NDA by wrongfully disclosing its trade secrets to 

alternate suppliers after plaintiff lost its right to cover in 2012, and that 

defendant did not learn of these wrongful disclosures until 2015. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 26 of 37 Pg ID 2110
27 

Plaintiff argues defendant’s breach of contract claim accrued at least 

ten years ago when the amended supply agreement expired, or even 

earlier, in 2003, when plaintiff stopped purchasing products from 

defendant. (Dkt. 57 at 19.) 

Defendant has offered no evidence to support the allegation that 

plaintiff has recently disclosed or continues to disclose defendant’s trade 

secrets or that defendant learned of such alleged conduct only in 2015. 

At best, defendant offers the declaration of Ellis Breskman, the 

majority owner of defendant. Mr. Breskman claims he learned from 

Tom Walker, who worked for plaintiff, that plaintiff disclosed the 

formula for Formula Q to Pure Asphalt Co. (Dkt. 64-2 at 4–5.) 

Problematically, Mr. Breskman has not provided the date on which he 

allegedly heard from Mr. Walker that plaintiff had disclosed 

defendant’s formula to Pure Asphalt Co. Defendant does not contest 

knowing that plaintiff potentially disclosed the formula to Pure Asphalt 

Co. by 2001. No evidence, including the allegations in the Breskman 

Declaration, suggests plaintiff disclosed new information or formulas to 

Pure Asphalt Co. after 2001. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 27 of 37 Pg ID 2111
28 

At most, the evidence shows plaintiff has been using the name 

“Formula Q.” This does not, as defendant appears to argue, indicate 

plaintiff is asserting ownership over the formula for Formula Q. 

Neither party appears to dispute the formula for the product sold as 

Formula Q is Formula 1021. But defendant has offered no evidence to 

show Formula 1021 is being used by plaintiff in the product currently 

being sold as Formula Q. Thus, even if plaintiff is using the Formula Q 

trademark, use of the name is insufficient to imply the continued use or 

disclosure of Formula 1021, and there is no evidence to show any 

improper disclosures or use of defendant’s trade secrets relating to the 

product sold as Formula Q past 2001. Consequently, there is no 

genuine issue of fact indicating a breach of contract occurred at any 

time. But assuming there was a breach, defendant’s claim accrued on 

September 18, 2007, the day after the Amended Supply Agreement 

expired. 

Defendant’s breach of contract claim for improper disclosure is 

therefore ten years old and is barred by the six-year statute of 

limitations. Defendant relies on Kendall Holdings Limited v. Eden 

Cryogenics LLC, 521 F. App’x 453 (6th Cir. 2013), to show its claim is 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 28 of 37 Pg ID 2112
29 

not barred, but this reliance is misplaced. That case involved a plaintiff 

alleging defendant misappropriated its trade secrets under the Ohio 

Uniform Trade Secrets Act. Defendant Eden Cryogenics argued there 

was no misappropriation and the claim was barred because plaintiff 

permitted defendant to retain the drawings allegedly misappropriated. 

Id. at 457. The Sixth Circuit concluded the district court erred in 

granting summary judgment to defendant because defendant itself 

introduced evidence of its continued use past when permitted to do so. 

Id. at 458. 

These are not the facts here. In this case, plaintiff has not 

admitted to retaining the formula past 2007, and it has not introduced 

evidence of continued use of the formula for Formula Q. Thus, that 

plaintiff disclosed the information in or prior to 2001 does not create a 

question of fact as there is no evidence of continued use or disclosure 

after this date. Defendant’s conclusory statements do not change this. 

Defendant’s reliance on plaintiff’s response to interrogatory 8 is 

likewise misplaced.4 Nothing in plaintiff’s response indicates it is 

asserting a right to use defendant’s trade secrets; in fact, plaintiff 

 

4 Interrogatory 8, dated March 14, 2016, is plaintiff’s supplemental responses to 

defendant’s first set of requests for admission, interrogatories, and requests for 

production of documents. (See Dkt. 64-3.) 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 29 of 37 Pg ID 2113
30 

denies using the trade secrets. Although plaintiff, in interpreting 

section 17(b) of the Amended Supply Agreement, states the section does 

not limit plaintiff’s use, nowhere does plaintiff assert a right to use 

defendant’s trade secrets. 

Accordingly, the claim with respect to defendant’s disclosure and 

use allegations is time barred and plaintiff’s motion for summary 

judgment as to this claim is granted. However, plaintiff has failed to 

address the portion of Count I alleging a breach of contract for 

plaintiff’s 2015 registration of the Formula Q trademark. Insofar as 

plaintiff intended to request summary judgment on this issue, the 

motion is denied. 

ii. Count II: Misappropriation of Trade Secrets 

Defendant claims plaintiff misappropriated defendant’s trade 

secrets “relating to Formula Q and other formulas” by “disclosing them 

to third parties and/or using them” despite being aware of its duty not 

to disclose the information. (Dkt. 52 at 33–34.) Plaintiff argues this 

counterclaim is time barred. 

Defendant has brought its claim pursuant to section 

445.1902(b)(ii)(B) of the Michigan Uniform Trade Secret Act (MUTSA), 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 30 of 37 Pg ID 2114
31 

MICH. COMP. LAWS § 445.1902(b)(ii)(B). (Dkt. 64 at 15.) This section 

defines misappropriation as follows: 

Disclosure or use of a trade secret of another without express 

or implied consent by a person who . . . 

(B) At the time of disclosure or use, knew or had reason to 

know that his or her knowledge of the trade secret was 

derived from or through a person who had utilized improper 

means to acquire it, acquired under circumstances giving 

rise to a duty to maintain its secrecy or limit its use, or 

derived from or through a person who owed a duty to the 

person to maintain its secrecy or limit its use. 

Under this statute, a claim for misappropriation of trade secrets 

must be brought within three years “after the misappropriation is 

discovered or by the exercise of reasonable diligence should have been 

discovered.” MICH. COMP. LAWS § 445.1907. 

For the same reasons set forth above with respect to defendant’s 

breach of contract claim, defendant’s misappropriation claim is also 

barred. Moreover, defendant has failed to identify what the “other 

formulas” and trade secrets are, and sufficiently demonstrated only that 

plaintiff may have legally disclosed information relating to the formula 

for Formula Q in or before 2001. Defendant has therefore failed to raise 

questions of material fact that plaintiff misappropriated any trade 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 31 of 37 Pg ID 2115
32 

secrets, and plaintiff’s motion for summary judgment on Count II is 

granted. 

iii. Count IV: Declaratory Judgment 

Plaintiff seeks summary judgment on the ground that defendant’s 

request for a declaratory judgment is time barred. (Dkt. 57 at 15.) 

Count IV requests the court declare “the rights and legal relations of Z 

Tech, Ziebart and Pure Asphalt pertaining to Z Tech’s formulas and 

other trade secrets and confidential and proprietary information.” (Dkt. 

52 at 36.) 

As set forth above, plaintiff is not asserting any ownership rights 

to defendant’s trade secrets or formulas. And as set forth below, Pure 

Asphalt Co. is also not asserting any ownership rights to these trade 

secrets or formulas. Defendant has failed to raise questions of material 

fact suggesting otherwise. Rather, the dispute is between plaintiff and 

defendant regarding ownership of various trademarks. Accordingly, 

this issue is not ripe for declaratory relief and plaintiff is entitled to 

summary judgment on Count IV. 

C. Counter Defendant’s Motion for Judgment on the 

Pleadings

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 32 of 37 Pg ID 2116
33 

Pure Asphalt Co. argues it is entitled to judgment on the 

pleadings with respect to defendant’s counterclaims III and IV because 

defendant has failed to state a plausible claim. 

i. Count III: Trade Secret Misappropriation 

 Defendant claims Pure Asphalt Co. misappropriated its trade 

secrets, including Formula Q and “other formulas,” pursuant to MICH.

COMP. LAWS § 445.1902(b)(ii)(B). (Dkts. 52 at 34, 64 at 15.) 

To plead misappropriation of a trade secret, a party must first 

demonstrate “the information at issue actually constitutes a trade 

secret.” Mike’s Train House, Inc. v. Lionel, L.L.C., 472 F.3d 398, 410 

(6th Cir. 2006). A trade secret is information that derives economic 

value because it is unknown to others, and is subject to efforts that are 

reasonable under the circumstances to keep it secret. Id. The party 

claiming a trade secret “must particularize and identify the purportedly 

misappropriated trade secret with specificity.” Int’l Tech. Consultants, 

Inc. v. Stewart, Case No. 07-13391, 2010 WL 3789831, at *11 (E.D. 

Mich. Sept. 22, 2010). 

 Here, defendant has not identified by name or description the 

“other formulas” it claims Pure Asphalt Co. misappropriated. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 33 of 37 Pg ID 2117
34 

Defendant claims these formulas were purchased through the Asset 

Purchase Agreement, but the agreement does not identify the formulas 

and defendant provides no other details. Thus, taking all of defendant’s 

allegations as true, defendant has failed to state a plausible claim or 

raise questions of material fact with respect to the “other formulas.” 

 Defendant also claims Pure Asphalt Co. misappropriated trade 

secrets relating to Formula Q by disclosing or using it. However, 

defendant has not provided any information that indicates or even 

suggests Pure Asphalt Co. has disclosed, is using, or is threatening to 

use any trade secret relating to Formula Q. At best, defendant alleges 

that during this dispute it “learned that . . . Pure Asphalt was using the 

formula” (Dkt. 52 at 26), and “[o]n information and belief, Pure Asphalt 

is continuing to use Z Tech’s trade secrets.” (Id. at 30.) These 

allegations are conclusory statements, and defendant provides none of 

the “information” that led it to learn or believe Pure Asphalt Co. was 

disclosing or using its trade secrets. Without more, defendant has 

failed to state a plausible claim with respect to any trade secrets 

relating to Formula Q. 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 34 of 37 Pg ID 2118
35 

 Accordingly, Pure Asphalt Co.’s motion for judgment on the 

pleadings as to Count III is granted. 

ii. Count IV: Declaratory Judgment 

Defendant claims it is entitled to a declaratory judgment 

establishing “the ownership of and rights to Z Tech’s formulas and other 

trade secrets and confidential and proprietary information.” (Dkt. 52 at 

36.) Pure Asphalt Co. argues it is entitled to judgment on this claim 

because it has never owned and is not using defendant’s trade secrets. 

(Dkt. 58 at 21.) 

Nowhere in defendant’s briefs does it argue Pure Asphalt Co. 

asserted ownership rights to any of its trade secrets or other 

confidential or proprietary information. Further, as with Count III, 

defendant has failed to identify the trade secrets and other information 

in dispute. Although defendant has identified Formula Q, as set forth 

above, defendant has failed to raise questions of material fact as to 

whether Pure Asphalt Co. is currently using or recently used any of the 

trade secrets related to Formula Q. Thus, there is no case or 

controversy with respect to ownership of the formula previously used 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 35 of 37 Pg ID 2119
36 

for Formula Q, and Pure Asphalt Co. is entitled to judgment on the 

pleadings as to Count IV. 

IV. Conclusion

For the reasons set forth above, defendant’s motion for summary 

judgment is DENIED. (Dkt. 55.) Plaintiff’s motion for partial summary 

judgment is GRANTED IN PART to Counts I (partial—disclosure and 

use of formula for Formula Q), II, and IV, and DENIED IN PART as to 

Count I (registration of Formula Q trademark). (Dkt. 57.) Counter 

defendant Pure Asphalt Co.’s motion for judgment on the pleadings as 

to Counts III and IV of defendant’s counterclaims is GRANTED. (Dkt. 

58.) Because Pure Asphalt Co.’s motion for judgment on the pleadings 

is granted, its motion for partial summary judgment on Count III is 

DENIED AS MOOT. (Dkt. 57.) 

 IT IS SO ORDERED. 

Dated: January 23, 2017 s/Judith E. Levy 

Ann Arbor, Michigan JUDITH E. LEVY 

United States District Judge 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 36 of 37 Pg ID 2120
37 

CERTIFICATE OF SERVICE

The undersigned certifies that the foregoing document was served 

upon counsel of record and any unrepresented parties via the Court’s 

ECF System to their respective email or First Class U.S. mail addresses 

disclosed on the Notice of Electronic Filing on January 23, 2017. 

s/Felicia M. Moses 

FELICIA M. MOSES 

Case Manager 

5:15-cv-11745-JEL-APP Doc # 80 Filed 01/23/17 Pg 37 of 37 Pg ID 2121