1

The 1996 transaction was actually entered into by a predecessor of Gander

Mountain, but for the sake of simplicity, we will follow the district court’s model and

refer to Gander Mountain and its predecessor collectively as “Gander Mountain.” 

United States Court of Appeals

FOR THE EIGHTH CIRCUIT

___________

No. 07-2890

___________

Gander Mountain Company, *

*

Appellee, *

* Appeal from the United States

v. * District Court for the

* District of Minnesota.

Cabela’s, Inc., *

*

Appellant. *

___________

Submitted: May 12, 2008

Filed: August 27, 2008

___________

Before WOLLMAN, MURPHY, and SMITH, Circuit Judges.

___________

WOLLMAN, Circuit Judge.

This case arose from a contract dispute involving a 1996 transaction between

Gander Mountain Co.1

 and Cabela’s, Inc. Gander Mountain filed suit against Cabela’s

seeking a declaration that a particular provision of the agreement, the Contingent

Trademark License provision (“CTL”), was unenforceable. Cabela’s counterclaimed,

seeking a declaration that the provision was enforceable and requesting an injunction

prohibiting Gander Mountain from using its trademarks or confusingly similar marks
2

The Honorable Patrick J. Schiltz, United States District Judge for the District

of Minnesota.

3

Gander Mountain’s complaint was dismissed in August 2005, leaving Cabela’s

counterclaim as the only issue remaining in the case.

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in its direct marketing business. Concluding that the provision in question was

unenforceable because it was merely an agreement to agree, the district court2

 granted

Gander Mountain’s motion for summary judgment on the counterclaim.3

 Cabela’s

appeals, arguing that the district court violated the law-of-the-case doctrine and erred

in granting summary judgment in favor of Gander Mountain. We affirm. 

I. Background

Both Gander Mountain and Cabela’s are in the business of selling outdoor

recreational, sports, and hunting equipment. Until 1996, Gander Mountain sold its

products through retail stores and through direct marketing using mail-order catalogs.

In 1996, experiencing financial difficulties and facing the prospect of filing for

bankruptcy, Gander Mountain sold its catalog division and exclusive rights to certain

Gander Mountain trademarks to Cabela’s for $35,000,000. Pursuant to the

transaction, Cabela’s purchased all of the assets of Gander Mountain’s catalog

division, and Gander Mountain agreed not to compete with Cabela’s in the direct

marketing business for seven years. Cabela’s also purchased a four-year license to use

Gander Mountain’s trademarks in its direct marketing business, agreeing not to

actually use the trademarks but to exercise its rights under the license to prevent others

from using the trademarks in direct marketing. The noncompetition agreement also

contained the CTL provision, which states:

In the event Gander Mountain is engaged in active steps to reenter the

Direct Marketing Business after the expiration of the seven-year

noncompetition period . . . then Gander Mountain shall notify Cabela’s

in writing and Cabela’s shall have the right to purchase from Gander
4

The Honorable Raymond L. Erickson, United States Magistrate Judge for the

District of Minnesota.

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Mountain for the sum of $1,000 a perpetual, exclusive license free and

clear of all Liens to use the Trademarks in connection with [Cabela’s]

Direct Marketing Business . . . . Such license shall be evidenced by a

separate written agreement in form and content customary to licenses of

the type described above. . . . 

After the seven-year noncompetition period expired, Gander Mountain gave

Cabela’s written notice that it intended to reenter the direct marketing business.

Cabela’s tendered $1,000 to Gander Mountain and presented a draft license

agreement, referred to by the parties as the Highby Agreement. Gander Mountain

refused to sign the Highby Agreement, contending that the CTL is unenforceable

under Wisconsin law, and brought the above-described action. 

The parties dispute the meaning of the language in the CTL that gives Cabela’s

the right to a license that is to be “evidenced by a separate written agreement in the

form and content customary to licenses of the type described above.” Cabela’s has

argued throughout the litigation that the terms of the license agreement can be

determined by the license agreed to in the 1996 transaction, which it asserts is what

the parties intended by “in the form and content customary to licenses of the type

described above.” 

One of the interrogatories submitted by Gander Mountain to Cabela’s during

discovery requested an explanation of the “customary form and content of licenses”

contemplated by the CTL provision. Cabela’s response was that the license created

in the 1996 transaction was the only example that was needed, pointing to the Highby

Agreement that it had previously drafted and tendered to Gander Mountain. In

denying Gander Mountain’s motion to compel further response, the magistrate judge4

concluded that Cabela’s response was sufficient. Upon later review, the district court
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held that the magistrate judge’s determination was not clearly erroneous or contrary

to law and affirmed the order without comment. 

Thereafter, Gander Mountain filed a second motion to compel further responses

to its interrogatories. Cabela’s filed for protective orders, and the issue was again

brought before the magistrate judge. Concluding that the issue appeared to duplicate

that which was covered in its prior order, which had concluded that the issue was not

within the scope of further discovery, the magistrate judge denied the motion. 

Gander Mountain contends that the language in the CTL does not provide

definite terms and that the 1996 transaction is not sufficient to supply the necessary

terms because a single example of a nonperpetual license agreement cannot be

determinative of the customary form or content of a perpetual license agreement.

After hearing oral argument, the district court agreed with Gander Mountain and held

that the CTL was merely an unenforceable agreement to agree because there was no

evidence in the record to illustrate the “form and content customary to perpetual,

exclusive trademark licenses generally.” See Gander Mountain Co. v. Cabela’s, Inc.,

No. 04-CV-3125, 2007 WL 2026751 (D. Minn. July 10, 2007) (order granting Gander

Mountain’s motion for summary judgment). 

II. Discussion

Cabela’s seeks a reversal of the district court’s grant of summary judgment, a

remand to the district court with directions to re-open for additional fact and expert

discovery, and/or the grant of summary judgment for Cabela’s. 
-5-

A. Law-of-the-Case Doctrine

We begin by addressing Cabela’s argument that the district court violated the

law-of-the-case doctrine by granting Gander Mountain’s motion for summary

judgment without allowing Cabela’s an opportunity to conduct discovery that it had

previously declined to conduct. 

The law-of-the-case doctrine has been described as a means to prevent the

relitigation of a settled issue in a case. United States v. Bartsh, 69 F.3d 864, 866 (8th

Cir. 1995). The doctrine “requires courts to adhere to decisions made in earlier

proceedings in order to ensure uniformity of decisions, protect the expectations of the

parties, and promote judicial economy.” Id. In other words, the doctrine “‘posits that

when a court decides upon a rule of law, that decision should continue to govern the

same issues in subsequent stages in the same case.’” United States v. Carter, 490 F.3d

641, 644 (8th Cir. 2007) (quoting Arizona v. California, 460 U.S. 605, 618 (1983)).

The doctrine applies to decisions made by appellate courts and final decisions made

by district courts that have not been appealed. First Union Nat’l Bank v. Pictet

Overseas Trust Corp., Ltd., 477 F.3d 616, 620 (8th Cir. 2007). The doctrine does not

apply to interlocutory orders. Id. (“interlocutory orders . . . can always be

reconsidered and modified by a district court prior to entry of a final judgment”). 

We conclude that the district court did not violate the law-of-the-case doctrine.

Its grant of summary judgment was based upon the legal determination that the

contract language, “in form and content customary to licenses of the type described

above,” did not refer only to the 1996 license between the parties but also to licenses

“in form and content customary to perpetual, exclusive trademark licenses generally.”

The district court did not issue a final order on this legal determination prior to

entering summary judgment. A district court’s comments during oral argument do not

constitute a final order subject to the law-of-the-case doctrine. See First Union Nat’l

Bank, 477 F.3d at 620 (the law-of-the-case doctrine applies only to final orders); In
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re Adelphia Commc’ns Corp., 336 B.R. 610, 636 n.44 (Bankr. S.D. N.Y. 2006)

(“Thoughts voiced by judges in oral argument do not always find their way into final

decisions, often intentionally and for good reason.”). Additionally, the prior discovery

rulings were not decisions on the merits of Gander Mountain’s argument that the

“form and content customary to licenses” could not be determined solely by the 1996

agreement. See FirsTier Mortgage Co. v. Investors Mortgage Ins. Co., 498 U.S. 269,

276 (1991) (noting that a discovery ruling is “clearly” an interlocutory decision);

United States v. Raddatz, 447 U.S. 667, 673 (1980) (citing 28 U.S.C. § 636(b)(1), and

noting that a magistrate judge cannot make a final and binding decision on dispositive

motions); see also Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 897 (1990) (“A

litigant is never justified in assuming that the court has made up its mind until the

court expresses itself to that effect, and a litigant’s failure to buttress its position

because of confidence in the strength of that position is always indulged in at the

litigant’s own risk.”). 

The fact that Cabela’s was not compelled by the district court to produce certain

evidence did not make the evidence inadmissible for purposes of establishing a

genuine issue of material fact. At no time did the magistrate judge or the district court

determine that evidence of perpetual trademark licenses generally was inadmissible.

Accordingly, the discovery rulings did not require the district court to conclude on the

motions for summary judgment that Cabela’s interpretation was correct as a matter of

law, and Cabela’s was not entitled to rely upon the prior discovery rulings as a way

to ignore Gander Mountain’s substantive argument on the merits of the case. 

B. Summary Judgment

“Summary judgment is appropriate when there are no genuine issues of material

fact, and the moving party is entitled to a judgment as a matter of law.” Bearden v.

Int’l Paper Co., 529 F.3d 828, 831 (8th Cir. 2008) (citing Fed. R. Civ. P. 56(c)). We

review de novo the district court’s grant of summary judgment, viewing the evidence
-7-

in the light most favorable to the nonmoving party. Id. at 831. “In ruling on a motion

for summary judgment a court must not weigh evidence or make credibility

determinations.” Kenney v. Swift Transp., Inc., 347 F.3d 1041, 1044 (8th Cir. 2003)

(citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)). “[A] properly

supported motion for summary judgment is not defeated by self-serving affidavits.”

Conolly v. Clark, 457 F.3d 872, 876 (8th Cir. 2006) (citing Davidson & Assocs. v.

Jung, 422 F.3d 630, 638 (8th Cir. 2005) for the proposition that to avoid summary

judgment, the nonmoving party must submit more than unsupported self-serving

allegations; the nonmoving party must provide sufficient probative evidence to allow

the nonmoving party to prevail). 

Contract interpretation as well as the interpretation of an unambiguous contract

is a question of law. Richie Co., LLP v. Lyndon Ins. Group, Inc., 316 F.3d 758, 760

(8th Cir. 2003). In this diversity case, the parties agree that Wisconsin law applies.

Under Wisconsin law, an agreement to agree does not create a binding obligation.

Skycom Corp. v. Telstar Corp., 813 F.2d 810, 814 (7th Cir. 1987) (citing Witt v.

Realist, Inc., 118 N.W.2d 85, 93-94 (Wis. 1962)). “To be enforceable a contract must

be definite and certain as to its basic terms and requirements. It must spell out the

essential commitments and the obligations of each party with reasonable certainty.”

Witt, 118 N.W.2d at 93. 

Cabela’s argues that the district court improperly relied on Cabela’s failure to

produce evidence regarding customary terms of perpetual trademark licenses generally

and ignored Cabela’s expert testimony that the Highby Agreement was consistent with

the form and content contemplated by the CTL. Cabela’s also asserts that, even if the

district court ignored Cabela’s evidence, Gander Mountain’s expert testimony was that

there are many terms customary to trademark license agreements. Thus, Cabela’s

argues, the issue of fact that exists and which should be resolved at trial is whether the

four-year trademark license agreement entered into in 1996 and/or the Highby

Agreement contained any of the terms that Gander Mountain’s expert described as
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customary and whether those terms were in the form and content customary of

trademark license agreements. 

For the same reasons discussed above, we conclude that the district court’s

discovery rulings did not excuse Cabela’s from refuting Gander Mountain’s argument

on the merits. Cabela’s failure to produce evidence regarding the customary content

of perpetual trademark licenses generally resulted in its failure to meet its burden of

identifying a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S.

317, 324 (1986) (citing Rule 56(e) of the Federal Rules of Civil Procedure and noting

that a party opposing summary judgment must go beyond the pleadings and submit

affidavits, depositions, answers to interrogatories, or admissions on file and designate

specific facts identifying the genuine issue of material fact that should go to trial).

Cabela’s expert’s conclusion that the Highby Agreement “is in the form and content

customary to licenses of the type described in [the CTL]” was not based upon an

analysis of the form and content customary to perpetual, exclusive trademark licenses

generally. Accordingly, the expert’s report did not constitute evidence that the CTL

stipulated sufficient material terms to form an enforceable contract, nor did it provide

a method of determining the material terms without further negotiation between the

parties. 

Furthermore, although Gander Mountain’s expert stated that there are

provisions that are customarily included in trademark license agreements, the expert

noted that the specific terms or content of those provisions must be negotiated and that

the content of the Highby Agreement was not customary for perpetual trademark

licences. Specifically, Gander Mountain’s expert noted that he had never seen a

trademark license agreement in which the licensee “covenants and agrees not to use

the license . . . . for any purpose except to protect against and prevent the use of the

Trademarks . . .” Rather, a trademark license agreement is customarily entered into

to allow the licensee to use the trademarks, with the licensee paying royalties to the

licensor for use of the trademarks. This concept is supported by the CTL itself, which
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provides Cabela’s with “the right to purchase . . . a perpetual, exclusive license . . . to

use the Trademarks in connection with its Direct Marketing Business.” This

provision, allowing Cabela’s to use the trademarks, is different from the Highby

Agreement, which would prevent Gander Mountain from using its trademarks to

compete with Cabela’s in the direct marketing business. Thus, the only evidence in

the record concerning the content customary for perpetual trademark licenses

generally indicates that neither the license agreed upon in 1996 nor the Highby

Agreement was in the form and content customary for perpetual trademark licenses

generally. As a result, there is no evidence in the record regarding how the missing

terms of the license agreement would be determined without the parties being required

to conduct further negotiations. 

Thus, there are no genuine issues of material fact and the district court was left

to apply Wisconsin law to the facts of this case. Cabela’s does not argue that the

district court’s conclusion that the text of the CTL created an agreement to agree was

an erroneous application of Wisconsin law. Rather, Cabela’s rests its arguments on

factors other than the text of the CTL and contends that the district court failed to

uphold the parties’ intent, which was to be bound by the CTL. The parties’ intent in

1996 to create a trademark license agreement several years in the future upon the

happening of certain events does not overcome the fact that they did not agree to

sufficient specific terms nor on how to determine sufficient specific terms to render

the CTL an enforceable provision. See Kernz v. J.L. French Corp., 667 N.W.2d 751,

758 (Wis. Ct. App. 2003) (“‘It must be borne in mind that the office of judicial

construction is not to make contracts or to reform them, but to determine what the

parties contracted to do; not necessarily what they intended to agree to, but what, in

a legal sense, they did agree to, as evidenced by the language they saw fit to use.’”

(quoting Marion v. Orson’s Camera Ctrs., Inc., 138 N.W.2d 733, 736-37 (Wis.

1966))). At the very least, one of the material terms left open for negotiation by the

CTL is the amount of royalties Cabela’s would pay to Gander Mountain for the use

of the trademarks. 
-10-

Cabela’s characterization of the CTL as a promise by Gander Mountain never

to use its own trademarks again in the direct marketing business is belied by the

CTL’s failure to express such an unconditional promise by Gander Mountain. Rather,

we agree with the district court’s conclusion that the text created an agreement that the

parties would negotiate a license agreement in the form and content customary to

perpetual trademark license agreements generally. The parties may have used the

1996 agreement for guidance, but had they intended that the perpetual trademark

license mirror the 1996 agreement exactly, the CTL would have stated as much. Thus,

we conclude that the district court did not err when it concluded that the parties had

entered into nothing more than an agreement to agree, one that is unenforceable under

Wisconsin law. 

The judgment is affirmed.

______________________________