H-D Michigan, LLC v. Hellenic Duty Free Shops S.A.

In the

United States Court of Appeals

For the Seventh Circuit

Nos. 11-3618, 11-3838 and 12-1280

H-D M ICHIGAN, LLC et al.,

Plaintiffs-Appellees,

v.

H ELLENIC D UTY F REE S HOPS S.A.,

Defendant-Appellant.

Appeals from the United States District Court

for the Eastern District of Wisconsin.

No. 2:11-cv-00742-LA—Lynn Adelman, Judge.

A RGUED M AY 24, 2012—D ECIDED S EPTEMBER 5, 2012

Before C UDAHY, K ANNE, and H AMILTON, Circuit Judges.

H AMILTON, Circuit Judge. These consolidated appeals

arise from an international trademark licensing dispute

between plaintiff Harley-Davidson Motor Company and

its former Greek licensee, defendant Hellenic Duty Free

Shops S.A. (“DFS”). DFS challenges a series of injunc-

tions issued by the United States District Court for the

Eastern District of Wisconsin. Appeal No. 11-3618 chal-

lenges the district court’s orders of November 7 and 17,

2 Nos. 11-3618, 11-3838 and 12-1280

2011 denying DFS’s motions to dissolve a temporary

restraining order entered on September 6, 2011. No. 11-

3838 challenges a preliminary injunction entered on

December 20, 2011. No. 12-1280 challenges a further

preliminary injunction issued February 7, 2012 addressing

DFS’s efforts to litigate this same dispute in the courts

of Greece.

Harley-Davidson made strong showings that DFS

was deliberately breaching a binding trademark

licensing agreement. Since Harley-Davidson learned of

the breaches and terminated the parties’ licensing agree-

ment, DFS has tried numerous legal twists and contor-

tions to try to avoid the legal consequences of its actions.

DFS’s primary argument is that the term in the licensing

agreement giving consent to personal jurisdiction in

the courts of Wisconsin is not binding on it, and DFS

raises numerous other challenges to the injunctions. The

district court correctly found that it had jurisdiction

over DFS and properly rejected its other arguments

and tactics. We affirm.

I. Factual and Procedural Background

A. The Licensing Agreement and the Breach

Harley-Davidson manufactures motorcycles and owns

famous trademarks that are popular on clothing and

other merchandise all over the world. For more than ten

years, Harley-Davidson had a licensing agreement with

a Greek company, Elmec Sport S.A., which was a subsid-

iary of defendant DFS. On January 1, 2010, Harley-

Nos. 11-3618, 11-3838 and 12-1280 3

Davidson and Elmec reaffirmed this relationship in a

trademark license agreement (the “Agreement”). Under

the Agreement, Harley-Davidson permitted Elmec to

use the “Harley-Davidson” and “Bar and Shield Logo”

trademarks, among others, for Harley-Davidson-approved

premium apparel products through Harley-Davidson-

approved European distribution channels. The Agree-

ment required Elmec to undergo a three-stage approval

process prior to its release of any Harley-Davidson-

branded products into the stream of commerce. Elmec

had to submit to Harley-Davidson for review and writ-

ten approval first all proposed concepts and artwork,

then pre-production samples, and finally production

samples.

Elmec sent Harley-Davidson a notice dated January 20,

2011 of “Merger of our Company with our parent com-

pany.” The notice informed Harley-Davidson that Elmec

and DFS would “from now on, trade as a single entity”

and that DFS “acts as full successor of Elmec.” In

Elmec’s words, “all the contracts that Elmec has entered

into remain valid,” and “this merger does not alter

the ownership structure and/or the management of our

company, and it shall not affect the business relation-

ships between our two companies.”

The Agreement gave Harley-Davidson the right to

terminate it if Elmec went through a merger. Harley-

Davidson did not not exercise that right. Instead, as it

had promised, DFS just stepped into Elmec’s shoes in

its relationship with Harley-Davidson. It submitted pre-

production samples to Harley-Davidson for approval,

4 Nos. 11-3618, 11-3838 and 12-1280

exhibited Harley-Davidson-branded products, took

orders, and met with Harley-Davidson to discuss

future branded products at an annual Harley-Davidson

dealer meeting. The same Harley-Davidson and DFS

personnel continued to work together, and Harley-

Davidson received DFS communications from e-mail

addresses ending “@elmec.gr.”

In April 2011, however, Harley-Davidson discovered

that DFS had sold unauthorized products bearing the

Harley-Davidson trademark to an unapproved German

retailer, Penny Markt. Harley-Davidson learned of DFS’s

action because other European dealers of its licensed

products complained, believing that the distribution of

sub-par products to unauthorized retailers would harm

the Harley-Davidson brand and their own businesses.

Harley-Davidson had not approved in writing any pre-

production samples or production samples of the Penny

Markt goods. In fact, DFS had not submitted any for

approval, and Harley-Davidson had previously rejected a

product concept and artwork for DFS’s “Essentials Col-

lection,” which included several proposed products that

were similar to Penny Markt goods. Nor had Harley-

Davidson approved Penny Markt as a retailer under

the Agreement. On April 14, 2011, Harley-Davidson

sent an e-mail to DFS saying that Harley-Davidson be-

lieved DFS was in “serious breach of your contract”

because of the Penny Markt sales, and that Harley-

Davidson was “suspending approval of any products

in concept, pre-production, or production phases.” DFS

responded in kind, stating that it had “no option but to

put on hold, as of today [April 15, 2011], all our dealings

Nos. 11-3618, 11-3838 and 12-1280 5

with you under the Agreement of January 1st 2010.”

On April 22, 2011, Harley-Davidson faxed DFS a letter

describing DFS’s breaches of the Agreement and ad-

vising DFS that it was exercising its right to terminate

the Agreement immediately.

Over the following months, Harley-Davidson at-

tempted to recover unpaid royalties from DFS and to

secure from DFS certain information required under

the Agreement. DFS refused these attempts. Even

though Harley-Davidson had suspended all DFS

product approvals and DFS had put “on hold” its own

dealings with Harley-Davidson, on July 22, 2011, DFS

submitted production samples for the then-upcoming

“Autumn/Winter 2011-2012” goods collection for Harley-

Davidson’s approval. Harley-Davidson did not review

the samples, reminding DFS that its April 22, 2011 termina-

tion prohibited DFS from “designing, manufacturing,

promoting, selling or distributing” any unauthorized

products bearing Harley-Davidson trademarks. On

July 28, 2011, DFS’s counsel advised Harley-Davidson

that it had “wrongfully repudiated the License Agree-

ment” and that DFS planned to “act unilaterally in ac-

cordance with its own views of the parties’ rights and

obligations.” That exchange lit the fuse of this litigation.

B. Temporary Restraining Order

Invoking the diversity jurisdiction of the federal courts

under 28 U.S.C. § 1332(a)(2), Harley-Davidson filed

this lawsuit in the Eastern District of Wisconsin for

breach of contract against DFS on August 5, 2011, and on

6 Nos. 11-3618, 11-3838 and 12-1280

August 12, 2011 moved for a temporary restraining

order. DFS received copies of all papers filed with the

district court through its U.S. counsel, but refused to

accept formal service of process through counsel. On

the day of the TRO hearing, the district court contacted

DFS’s U.S. attorney who had been speaking for DFS in

negotiations with Harley-Davidson and who has repre-

sented DFS in these appeals. The attorney told the court

that DFS did not wish to participate in the TRO hearing

on Friday, September 2, 2011. On the next business day,

Tuesday, September 6, 2011, the district court granted

the TRO against DFS, setting the bond at $10,000.

One week later, on September 13, 2011, Harley-Davidson

moved for an extension of the TRO beyond the initial 14-

day time period provided by Federal Rule of Civil Pro-

cedure 65(b)(2) until DFS could be served with process

under the Hague Convention and until a preliminary

injunction hearing could be held. Harley-Davidson

had initiated the process of effecting service on DFS

in August and had been informed that service would

likely take three to four months. The court granted Harley-

Davidson’s motion on September 19, extending the

TRO “until plaintiffs have effected service on defendant

pursuant to the Hague Convention.” H-D Michigan, LLC

v. Hellenic Duty Free Shops, S.A., 2011 WL 4368418, at *2

(E.D. Wis. Sept. 19, 2011). In fact, service had taken

only about a month. DFS had been served in Greece

on September 13, 2011, less than a week after the dis-

trict court issued the TRO. DFS did not appear in the

district court until October 4, 2011, when it filed its answer.

Nos. 11-3618, 11-3838 and 12-1280 7

On October 17, 2011, the district court held a telephonic

status conference. The minutes of that conference reflect

that the court offered to hold a hearing immediately on

the continuation of the TRO or the issuance of a prelimi-

nary injunction. DFS requested 45 to 60 days to conduct

discovery and to prepare for a hearing. The court granted

DFS’s request, scheduling the preliminary injunction

hearing for December 15, 2011. It also asked DFS to

submit any objections to the TRO and to submit evidence

on the appropriate size of the bond within 10 days. In

the meantime, though, the court ordered that the TRO

would remain in effect over DFS’s objection. Per the

court’s order, DFS moved to modify or vacate the tempo-

rary restraining order on October 27, 2011, arguing in

part that the bond then in place was inadequate and

that the district court did not have personal jurisdiction

over DFS. Its motion to vacate was denied, but the

court raised the amount of Harley-Davidson’s injunc-

tion bond to $1 million. It was raised again on Novem-

ber 17, 2011, to $1.8 million.

C. Preliminary Injunction

On December 20, 2011, after a hearing five days earlier,

the district court granted a preliminary injunction

against DFS. The preliminary injunction remains in effect

and prohibits DFS and “its employees, agents, partners,

officers, directors, owners, shareholders, principals,

subsidiaries, related companies, affiliates, joint ventures,

distributors, dealers, and all persons in active concert

or participation with any of them who receive actual

8 Nos. 11-3618, 11-3838 and 12-1280

notice by personal service or otherwise” from the fol-

lowing:

1. Manufacturing, assembling, distributing, promoting,

advertising and selling any products . . . and any

other materials bearing any of the Licensed Trade-

marks or variations thereof;

2. Using any of the Licensed Trademarks or variations

thereof in any manner on or in connection with

any products . . . ;

3. Representing by any means whatsoever, directly or

indirectly, that defendant, any products offered by

defendant, or any activities undertaken by defendant

are sponsored or licensed by plaintiffs, or are other-

wise associated or connected in any way with plain-

tiffs, or that the Agreement is still in effect;

4. Destroying, altering, secreting, transferring, or

otherwise disposing of . . . any artwork, products,

pre-production and production samples of

products, means for making products, advertise-

ments, promotional materials, sales and accounting

records, letters, emails, files, and documents

(whether on paper, in electronic format, or on any

other medium) relating to: (a) the Licensed Trade-

marks, (b) the Agreement, (c) the manufacture,

sales or promotion of products bearing the

Licensed Trademarks or variations thereof to or

by Penny Market [sic] Grocery stores, (d) the manu-

facture, sales, or promotion of products bearing

the Licensed Trademarks or variations thereof to

or by Real grocery stores, or (e) the claims and

Nos. 11-3618, 11-3838 and 12-1280 9

allegations asserted by plaintiffs in their complaint

in this action;

5. Assisting, aiding, or abetting any other person or

business entity in engaging in or performing any

of the activities referred to in paragraphs 1 through

4 above.

H-D Michigan, LLC v. Hellenic Duty Free Shops, S.A., 2011

WL 6385651, at *5 (E.D. Wis. Dec. 20, 2011).

D. DFS’s Greek Lawsuit and the Anti-Suit Injunctions

In the meantime, DFS had filed a lawsuit against Harley-

Davidson in Greece on November 15, 2011. While

the district court’s TRO was in place, and before the

preliminary injunction was entered, DFS asked the Greek

court to issue an injunction against Harley-Davidson

that would (a) allow DFS to distribute freely the Autumn-

Winter 2012 Goods that Harley-Davidson had refused

to approve and (b) prohibit Harley-Davidson from dis-

puting DFS’s status as an authorized Harley-Davidson

licensee. The record before us shows that DFS did not

inform the U.S. district court or Harley-Davidson of

the Greek lawsuit, nor did DFS tell the Greek court

about the existence of the U.S. action or the TRO that

conflicted directly with the relief it was seeking in

the Greek lawsuit. Following an ex parte hearing

on December 2, 2011, the Greek court issued a provisional

order against Harley-Davidson permitting DFS to distrib-

ute the disputed Autumn-Winter 2012 goods. Harley-

Davidson did not learn of DFS’s Greek action until it was

10 Nos. 11-3618, 11-3838 and 12-1280

served with the provisional order on January 18, 2012.

Neither DFS nor its counsel advised the district court,

Harley-Davidson, or its counsel of the Greek action despite

many opportunities to do so between November 15, 2011

and January 18, 2012.1

On January 24, 2012, Harley-Davidson filed in the

district court an “Emergency Motion for Preliminary Anti-

Suit Injunction” seeking to compel DFS to withdraw its

Greek lawsuit. Harley-Davidson also brought related

petitions in Greece. On January 25 and 27, 2012, Harley-

Davidson petitioned the Greek court: (a) to enforce the

U.S. district court’s December 20, 2011 injunction;

and (b) to revoke the Greek court’s injunction against

Harley-Davidson that DFS had obtained ex parte. Harley-

Davidson informed DFS’s U.S. counsel of its Greek peti-

tions by e-mail on January 30, 2012 after DFS had filed

its opposition to Harley-Davidson’s anti-suit injunction

motion. Harley-Davidson informed the district court of

its Greek actions on February 2, 2012 in its reply brief.

1

DFS insists that it informed Harley-Davidson of the action by

cable on November 25, 2011, and implies that the Greek court

would not have issued a restraining order against Harley-

Davidson unless it was reasonably assured that Harley-

Davidson had been properly summoned. The parties apparently

are attempting to verify what happened to the cable. For

purposes of these appeals, whether Harley-Davidson received

the November 25 cable is not important. DFS had many oppor-

tunities, both in and out of court, to inform Harley-Davidson

and the district court of the DFS Greek lawsuit and repeatedly

chose not to do so.

Nos. 11-3618, 11-3838 and 12-1280 11

On February 7, 2012, the district court granted an anti-

suit injunction motion. Its opinion described the DFS

Greek action as “a blatant attempt by defendant to

relitigate issues that I have already decided” and described

Harley-Davidson’s Greek action as “Plaintiff’s effort

to dismiss the parallel lawsuit by working through the

Greek courts.” H-D Michigan, LLC v. Hellenic Duty Free

Shops, S.A., 2012 WL 404895, at *4 (E.D. Wis. Feb. 7, 2012).

Its order on Harley-Davidson’s preliminary anti-suit

injunction motion, entered separately, enjoined DFS from:

1. further prosecuting, litigating and/or proceeding

by any means whatsoever with the Provisional

Measure Procedure No. 141350 before the One-

Member First Instance Court of Athens titled

Duty Free Shops Society Anonyme for the Exploitation

of Duty Free Shops and Industrial, Manufacturing,

Technical and Commercial Company S.A. v. Harley-

Davidson Motor Company, Inc. and any associated

proceedings;

2. further prosecuting, litigating and/or proceeding

by any means whatsoever with any actions, pro-

ceedings or lawsuits before any court or agency

in any country or territory outside of the United

States that contradict, impair, or otherwise affect

this Court’s rulings, including the December 20,

2011 preliminary injunction order, and/or this

Court’s jurisdiction to adjudicate the present action;

3. from filing or otherwise initiating any other

actions . . . before any court or agency in any

country or territory outside of the United States that

12 Nos. 11-3618, 11-3838 and 12-1280

contradict, impair, or otherwise affect this Court’s

rulings, including the December 20, 2011 preliminary

injunction order and/or this Court’s jurisdiction to

adjudicate the present action.

Dkt. 97 at 3-4.

Meanwhile, Harley-Davidson’s Greek petitions were

scheduled to be heard in the First Instance Court of Athens

on February 17, 2012. On February 10, DFS filed in our

court a motion to stay the district court’s anti-suit injunc-

tion order pending appeal. We denied the motion. DFS

then petitioned the district court for a stay, con-

tending that a stay “would not interfere at all with

Harley-Davidson’s right and ability to argue to the First

Instance Court that it should ‘recognize’ and enforce, in

Greece, a provisional non-final injunctive order of this

court notwithstanding DFS’s pending appeals and as

yet unlitigated jurisdictional and other defenses to

liability or specific performance as a remedy.”

DFS’s motion to stay was still pending in the U.S. district

court when the hearing on the Harley-Davidson Greek

petitions went forward in Greece. DFS appeared and

actively opposed Harley-Davidson’s petitions. In the

Greek court, it contested both the jurisdiction and the

substance of the U.S. district court’s December 20,

2011 preliminary injunction. On February 20, 2012, the

Greek court granted Harley-Davidson’s motion for a

temporary order enforcing the U.S. district court’s Decem-

ber 20 preliminary injunction and revoked its own pro-

visional order in the DFS Greek action. The Harley-

Davidson Greek petitions remain pending in the

Nos. 11-3618, 11-3838 and 12-1280 13

First Instance Court of Athens, with a final hearing sched-

uled for September 21, 2012.

Apparently unaware that the Greek court had granted

Harley-Davidson’s motion for a temporary order and

revoked its prior order in favor of DFS two days earlier,

on February 22, 2012, the district court denied DFS’s

motion to stay the February 7 anti-suit injunction. The

district court found that DFS had failed to demonstrate

that the anti-suit injunction could harm international

relations between the United States and Greece or that

DFS could be irreparably harmed. “Regardless of what

the Greek court does, defendant is bound by the pre-

liminary injunction because defendant is a party to

this lawsuit and is subject to personal jurisdiction in

this court.” The court also noted: “While the injunction

does prohibit defendant from opposing plaintiff’s efforts to

enforce in Greece the preliminary injunction I issued on

December 20, 2011, these efforts cannot cause meaningful

harm to defendant.” Dkt. 113 at 2 (emphasis added).

II. Analysis

DFS mounts several arguments in its appeals of the

temporary restraining order, the preliminary injunction,

and the anti-suit injunction. Its principal argument is

that the district court in Wisconsin had no personal

jurisdiction over DFS, which had not signed the Harley-

Davidson/Elmec Agreement in which Elmec had agreed

to jurisdiction and venue in Wisconsin. We address this

issue first and agree with the district court that DFS

became a party to the Agreement through its merger

14 Nos. 11-3618, 11-3838 and 12-1280

with Elmec. We then turn to DFS’s narrower challenges

to the TRO, then the preliminary injunction, and

finally the anti-suit injunctions. We affirm all of the

district court’s orders.

A. Personal Jurisdiction

DFS’s broadest challenge is that the U.S. district court

in Wisconsin had no personal jurisdiction over it and

thus could not issue binding injunctions. DFS is a Greek

corporation with its principal place of business in Attica,

Greece. It has no offices, employees, representatives, or

property in Wisconsin, and it is not registered to do

business in Wisconsin. It does not market or sell any

goods or services in Wisconsin. But in January 2011,

DFS merged with its subsidiary Elmec, with DFS as the

surviving entity. Under the merger, Elmec’s assets

became the assets of DFS. One of those assets was the

Harley-Davidson/Elmec Agreement, with its attendant

rights and obligations. Section 16.2 of the Agreement

provided that the federal and state courts in Wisconsin

were to have exclusive jurisdiction over all disputes

“arising out of or relating to this Agreement,” and that

Elmec explicitly consented to personal jurisdiction in

Wisconsin with respect to “disputes between the par-

ties” to the Agreement. The issue is whether, when

Elmec and DFS merged, DFS assumed and can be bound

by Elmec’s consent to jurisdiction in Wisconsin.

In licensing agreements for trademarks and other

intellectual property, the licensor generally wants to

maintain control of the intellectual property. One impor-

Nos. 11-3618, 11-3838 and 12-1280 15

tant means for doing so are restrictions on the licensee’s

ability to transfer or assign its rights under the license

to third parties who may be unknown or even hostile to

the licensor. The Harley-Davidson/Elmec Agreement

contained several such provisions. We focus first on

the language that addressed most specifically the con-

sequences of a merger or other change of control of

the licensee. Section 10.1(c), which we call the merger

provision, said in relevant part:

If any of the following Triggering Events occur,

[Harley-Davidson] shall have the option, in its sole and

exclusive discretion, to immediately terminate this

Agreement by sending written notice of termination to

Licensee . . . :

(i) Any merger, consolidation, acquisition, change of

ownership, control or management involving Licensee

occurs; or

(ii) Any of the principal assets of Licensee that are

required for the conduct of its business are trans-

ferred, by operation of law, merger, consolidation,

issuance or re-issuance of shares, or otherwise.

(Emphases added.) Harley-Davidson received notice of

the DFS-Elmec merger and did not exercise its option to

terminate the Agreement. Under section 10.1(c), the

Agreement remained in effect with DFS as licensee

with all of Elmec’s rights and obligations.

This conclusion, based on the plain language of

section 10.1(c), is consistent with DFS’s own words and

actions after the merger. Upon the event of the merger,

16 Nos. 11-3618, 11-3838 and 12-1280

Elmec assured Harley-Davidson by notice dated January

20, 2011, that, “legally, HELLENIC DUTY FREE SHOPS

S.A. — FOLLI FOLLIE GROUP acts as full successor

of Elmec Sport S.A. Therefore, all the contracts Elmec

has entered into remain valid.” Although Elmec asked

Harley-Davidson to acknowledge the merger, Harley-

Davidson did not respond. It certainly did not exercise

its option under section 10.1(c) to terminate the agree-

ment. After the merger, neither Harley-Davidson nor

DFS made any effort to amend the Agreement or its

consent-to-jurisdiction clause. DFS itself insisted that

the Agreement was still effective and binding when its

counsel wrote a July 28, 2011 letter asserting that DFS

could enforce the Harley-Davidson/Elmec “License Agree-

ment.” (“You will appreciate that [DFS] considers that

[Harley-Davidson] has wrongfully repudiated the License

Agreement and is in no position to be making any de-

mands on DFS whatsoever . . . . DFS will act unilaterally

in accordance with its own views of the parties’ rights

and obligations.”)2 Based on these facts, Harley-

Davidson argued, and the district court found, that the

effect of the DFS-Elmec merger was to bind DFS to

the terms of the Agreement, including Elmec’s consent

to jurisdiction in Wisconsin.

2

The author of the letter was Mr. Dabney, who argued the case

before this court. His assertion at oral argument that his refer-

ence to the “License Agreement” in the July 28 letter was to

some other agreement was neither credible nor in keeping

with counsel’s professional duty of candor to the court.

Nos. 11-3618, 11-3838 and 12-1280 17

To avoid this application of the merger provision,

consistent with the parties’ actions, DFS has argued

that the Agreement was completely voided by the DFS-

Elmec merger and that the parties’ relationship after

the merger was not governed by any written agreement.

The theory in the litigation, which is not consistent

with any of DFS’s earlier actions or statements, including

its counsel’s letter of July 28, 2011, is that the effect of the

DFS-Elmec merger was governed not by the merger provi-

sion in section 10.1(c) but by a different, broader pro-

vision, section 14, which provided:

This Agreement and all rights and obligations here-

under are personal to Licensee and may not be as-

signed, sublicensed, encumbered, or otherwise trans-

ferred, in whole or in part, by Licensee without

the prior written consent of Licensor, which consent

shall be in Licensor’s sole and exclusive discretion. . . .

Any attempt by Licensee to do any of the foregoing

shall be void ab initio and shall constitute a

material breach of this Agreement.

Citing Menenberg v. Carl R. Sams Realty Co., 59 N.W.2d 125,

127 (Mich. 1953), DFS contends that Elmec’s rights and

obligations under the Agreement were personal to

Elmec, and that under applicable law, personal

contracts and obligations cannot be transferred to a

third party. The theory is that when Elmec and DFS

merged without prior written consent of Harley-

Davidson under section 14, the merger voided the Agree-

ment altogether because the DFS-Elmec merger fell

under section 14’s broad and comprehensive ban

of “assign[ments]” and “other[ ] transfer[s].”

18 Nos. 11-3618, 11-3838 and 12-1280

In support of its position, DFS relies on a handful of

distinguishable cases and an affidavit of University of

Michigan Law Professor James J. White, who has opined

that the DFS-Elmec Agreement “does not impose any

obligations on DFS and does not obligate DFS to litigate

any claims in Wisconsin.” We disagree.

Because this issue turns on a question of contract inter-

pretation, our review is de novo. See Digitech Computer,

Inc. v. Trans-Care, Inc., 646 F.3d 413, 417 (7th Cir. 2011).

Accordingly, we examine the language of the Agreement

and interpret its terms under well-established principles

of contract construction under Michigan law. Under

Michigan law, the goal of contract interpretation is to read

the document as a whole and to apply the plain language

used to honor the intent of the parties. See Dobbelaere v.

Auto-Owners Ins. Co., 740 N.W.2d 503, 505 (Mich. App.

2007). We must enforce the clear and unambiguous lan-

guage of a contract as it is written. See Frankenmuth

Mut. Ins. Co. v. Masters, 595 N.W.2d 832, 837 (Mich. 1999).

We agree with the district court and find under

Michigan law that the general provisions of section 14

do not control where the more specific terms of sec-

tion 10.1(c) apply to the merger by Elmec. DFS is bound

by the Agreement and is subject to personal jurisdiction

in Wisconsin under the Agreement’s clause consenting

to jurisdiction in Wisconsin.3

3

In addition to finding section 10.1(c) controls, we also find

DFS precluded by equitable principles of waiver and estoppel

(continued...)

Nos. 11-3618, 11-3838 and 12-1280 19

The governing principles of contract interpretation

are familiar: that the more specific provision governs

where there is an arguable conflict with a more general

provision, see Royal Property Group, LLC v. Prime Ins.

Syndicate, Inc., 706 N.W.2d 426, 434 (Mich. App.

2005), citing Sobel v. Steelcraft Piston Ring Sales, Inc., 292

N.W. 863, 867 (Mich. 1940); 11 Williston on Contracts

§ 32:10 (4th ed.), and that the contract should be inter-

preted to avoid rendering any provision superfluous, see

Klapp v. United Ins. Group Agency, Inc., 663 N.W.2d 447,

453 (Mich. 2003); Royal Property Group, 706 N.W.2d at 432

(citing Klapp).

Reading the Harley-Davidson Agreement with Elmec

as a whole, section 10.1(c) provided a clear exception — for

mergers — to the more general language of section 14.

Section 10.1(c) gave Harley-Davidson the option to termi-

nate the Agreement in the event of a “merger, consolida-

tion, acquisition, or change of ownership, control, or

management.” Section 14 did not refer to mergers.

Instead, it generally stated that rights and obligations

under the Agreement “may not be assigned, sublicensed,

3

(...continued)

from arguing that its merger with Elmec triggered the anti-

assignment clause. After the merger, DFS told Harley-Davidson

that the Agreement remained in effect, and Harley-Davidson

could reasonably rely on that assurance as long as Harley-

Davidson did not exercise its option to terminate. Moreover,

DFS acted so as to take advantage of the license granted under

the Agreement but, in litigation, is attempting to disavow

its corresponding obligations under the same Agreement.

20 Nos. 11-3618, 11-3838 and 12-1280

encumbered or otherwise transferred . . . without prior

written consent of Licensor.” Simply put, section 10.1(c)

addressed specifically the effects of a corporate merger.

Section 14 did not. Therefore, when Elmec merged into

DFS, section 10.1(c) of the Agreement governed the parties’

rights and obligations. Section 14 did not.

When DFS and Elmec joined, the “Merging Announce-

ment” informed Harley-Davidson that the “merging

procedures” between Elmec and DFS were complete and

that “this merger does not alter the ownership structure

and/or the management of our company, and it shall not

affect the business relationships between our two compa-

nies.” After Harley-Davidson received notice of the merger

announcement, it did not exercise its option to terminate

the agreement pursuant to section 10.1(c). Consistent with

DFS’s own words and actions at the time, the Agreement

therefore remained in effect after the merger and was

binding on DFS. Our conclusion is consistent with the

Agreement as a whole, renders no provision of the Agree-

ment superfluous, and is consistent with Michigan law. See

Mich. Comp. Laws § 450.1724(1)(b) (“the title to all real

estate and other property and rights owned by each

corporation party to the merger are vested in the surviving

corporation without reversion or impairment.”).

These principles rebut DFS’s arguments. DFS would

make the general provision for attempted assignments

and transfers of the license override the more specific

provision for mergers by the licensee. DFS would also

render section 10.1(c) superfluous, for its more specific

provisions would have no effect if the general provi-

Nos. 11-3618, 11-3838 and 12-1280 21

sions of section 14 were to govern. DFS runs into

another problem. Contrary to DFS’s argument, section 14

does not mean that an attempt by Elmec to transfer

or assign its rights and duties renders the underlying

Agreement void as a whole. Section 14 provides

instead that an attempted transfer or assignment, done

without Harley-Davidson’s permission, would be void

ab initio — not that the underlying Agreement itself

would be void. The attempted transfer would be void

but would leave the Agreement in place, so that even

if section 14 were triggered, Elmec would remain a party

to the Agreement, and would remain subject to its

duties under the Agreement. Elmec is now DFS, so DFS

would be bound in Elmec’s stead.

The license granted by the Agreement was, at every

turn, Harley-Davidson’s to control, define, and limit.

See Agr. § 4.2(a) (requiring licensee to go through a three-

stage approval process and obtain Harley-Davidson’s

written approval at each stage before releasing any Harley-

Davidson-branded products under the Agreement);

Agr. Exhibit A (list of Harley-Davidson-approved dis-

tribution channels); Agr. § 1.3 (requiring licensee to

obtain Harley-Davidson’s written approval for any dis-

tribution channels other than those listed in Exhibit A).

Under section 10.1(c), Harley-Davidson retained this

control in the event that licensee Elmec merged with

another entity.

DFS’s contention that section 14 trumped section 10.1(c)

would improbably shift the contractual balance of

22 Nos. 11-3618, 11-3838 and 12-1280

power out of Harley-Davidson’s control and into DFS-

Elmec’s. Harley-Davidson would no longer have the

option, in its sole discretion, to terminate in the event of

a merger — an option that is clearly set forth by

section 10.1(c). Instead, DFS’s reading would give

licensee Elmec the unilateral power to terminate the

Agreement simply by redefining itself as another entity,

yet also, improbably, continuing to enjoy the trademark

license granted in the supposedly void Agreement.

(Here Elmec accomplished that result through merger

with DFS, but its argument does not foreclose the possi-

bility that it could have unilaterally scuttled the con-

tract based on a mere change in management, also a

“triggering event” listed in section 10.1(c).) No other

provision of the Agreement gave that level of control

to DFS-Elmec.

Contrary to DFS’s argument, our finding that section

10.1(c) controlled corporate mergers does not make

the license granted by Harley-Davidson any less “per-

sonal” — a contractual understanding that must itself

be read in the context of the entire Agreement. The case

on which DFS relies — Menenberg v. Carl R. Sams Realty

Co., 59 N.W.2d 125, 127 (Mich. 1953) — applies to the

dissolution of a partnership and is not apposite to a

corporate merger. See id. (discussing “rule that the dis-

solution of a real estate brokerage partnership

terminates its authority to sell real estate which had been

placed in its hands for that purpose”). Professor White

also puts forth this theory, but the case on which he

relies is similarly distinguishable, and inapplicable.

Nos. 11-3618, 11-3838 and 12-1280 23

See White Aff. at 3, citing Detroit Postage Stamp Service

Co. v. Schermack, 146 N.W. 144, 147 (Mich. 1914) (contract

by which defendants granted plaintiff’s assignor an

exclusive agency for the sale of merchandise involved

a personal relationship that could not be assigned

without defendant’s consent; assignee never undertook

obligations under the contract and therefore could not

enforce it). This argument is not persuasive, is without

meaningful case support and runs contrary to the princi-

ples of contract interpretation discussed above. However

personal Elmec’s rights and obligations were under the

Agreement, its merger into DFS did not upend the Agree-

ment. The merger merely gave Harley-Davidson an option

to terminate, which it did not exercise. The Agreement

remained in effect, and the surviving entity from the

merger, DFS, became the licensee under it — just as DFS

said at the time of the merger — and thus became subject

to jurisdiction in Wisconsin.

DFS relies on a number of cases interpreting provi-

sions similar to the Agreement’s section 14 “transfer”

provision. None of these cases involved a contract with

a more specific provision like the merger provision in

the Harley-Davidson Agreement with Elmec, and in

none of these cases was a licensee permitted to avoid

its obligations by merging with another entity. In sum,

DFS cites no relevant authority to support its extra-

ordinary position that in the face of a generalized “assign-

ment” provision and a specific “merger” position, the

general assignment provision would control the parties’

rights and obligations in the event of a corporate

24 Nos. 11-3618, 11-3838 and 12-1280

merger, such that a licensee could avoid its contractual

obligations through a corporate merger.4

4

We need not address them all individually, but DFS’s host

of inapposite authority includes Pro-Edge L.P. v. Gue, 419 F.

Supp.2d 1064, 1082-85 (N.D. Iowa 2006) (employment agree-

ment containing covenant not to compete was not excluded

from asset transfer in corporate restructuring; contract did not

define “assignment” or provide an exception in the event of

a change in corporate structure); Freeman Mgmt. Corp. v. Shurgard

Storage Ctrs., Inc., 2007 WL 1541877, at *5 (M.D. Tenn. May 23,

2007) (anti-assignment clause in joint venture agreement

prevented transfer of agreement to surviving entity after

merger; contract’s anti-transfer provision prohibited transfers

voluntarily or by “operation of law,” and did not define

transfer or otherwise provide an exception for corporate

mergers); Laforest v. Honeywell Int’l, Inc., 2004 WL 1925490, at *5-

6 (W.D.N.Y. Aug. 27, 2004) (party’s contractual obligations

could not have been assigned because anti-assignment clause

required prior written consent to transfer and no prior con-

sent was obtained; contract did not contain merger provision);

Parks v. CAI Wireless Sys., Inc., 85 F. Supp. 2d 549, 554-55 (D.

Md. 2000) (denying defendants’ motion for summary judgment

on claims of constructive fraud and breach of contract; contract

did not define assignment or transfer or exempt corporate

mergers, so defendants’ corporate merger triggered assignment

clause requiring plaintiff’s interest in joint venture to be sold

or assigned on identical terms); SQL Solutions, Inc. v. Oracle

Corp., 1991 WL 626458, at *3-6 (N.D. Cal. Dec. 18, 1991) (consis-

tent with federal copyright law, anti-assignment clause prohib-

ited transfer of non-exclusive copyright license to surviving

entity after corporate merger; contract did not define assign-

(continued...)

Nos. 11-3618, 11-3838 and 12-1280 25

DFS relies most heavily on two federal court decisions.

In Cincom Sys., Inc. v. Novelis Corp., 581 F.3d 431 (6th Cir.

2009), the Sixth Circuit examined a software license

agreement that included a general provision that the

licensee could “not transfer its rights or obligations

under this Agreement without the prior written

approval of [licensor] Cincom.” Id. at 434. The Sixth

Circuit affirmed the district court’s conclusion that the

licensee’s merger was a violation of the contract’s anti-

assignment provision. The court wrote: “the plain text

of the license is clear. No transfers are permissible

without express written approval.” Id. at 437. If we

were interpreting section 14 of the Harley-Davidson/

Elmec Agreement in a vacuum, Cincom would tell us

that an attempted transfer of the license from Elmec to

DFS would be void, but the contract in Cincom did not

contain a separate merger provision comparable to

section 10.1(c) in the Harley-Davidson/Elmec Agree-

ment. Accordingly, Cincom offers little direct guidance.

(The Cincom court affirmed summary judgment in favor

of the copyright owner holding that the result of the

attempted transfer of license was that the license was

void and the defendant had infringed the copyright.)

4

(...continued)

ment or contain a provision specifically governing merger);

Nicholas M. Salgo Assocs. v. Continental Illinois Props., 532 F. Supp.

279, 282-83 (D.D.C. 1981) (partial summary judgment granted

in favor of plaintiff based on its argument that partner’s

merger without plaintiff’s consent violated anti-assignment

clause in partnership agreement; partnership agreement

did not except mergers).

26 Nos. 11-3618, 11-3838 and 12-1280

Similarly, Hy King Associates, Inc. v. Versatech Manu-

facturing Industries, Inc., 826 F. Supp. 231 (E.D. Mich.

1993), involved a contract that prohibited the “as-

sign[ment] or transfer [of] this agreement or any rights

or obligations hereunder except with the prior

written consent” of Versatech. Id. at 233. King signed

the contract as an individual but later incorporated his

sales business. The question was whether the incorpora-

tion was a triggering event under the assignment provi-

sion. The court held that it was, finding that under the

plain language of the agreement, Versatech’s written

consent was a condition precedent to a valid assign-

ment, so there could be no contractual relationship be-

tween the parties. Id. at 238-39. Like Cincom, Hy King

interpreted a contract that included a general assignment

clause but not a more specific merger clause. These

cases therefore offer no useful guidance for interpreting

the Harley-Davidson/Elmec Agreement in which the

parties included a provision separate from the anti-assign-

ment provision that explicitly dealt with mergers.

Although dicta, language found in PPG Industries, Inc. v.

Guardian Industries Corp., 597 F.2d 1090 (6th Cir. 1979),

provides more relevant guidance. PPG involved two

glass fabrication companies that had developed a new

industrial process for shaping glass for various com-

mercial uses. PPG granted a patent license that was

personal to the licensee and “non-assignable except

with the consent of PPG first obtained in writing.” Id.

at 1092. The licensee (Permaglass) then merged with

Guardian, a corporation that manufactured automobile

windshields. If Ohio state law had applied, PPG’s

Nos. 11-3618, 11-3838 and 12-1280 27

licenses would have automatically transferred from

Permaglass to Guardian as part of the merger. The

Sixth Circuit, however, concluded that federal law gov-

erned the assignment of a patent license and that a

license is presumed to be non-assignable and non-trans-

ferable “in the absence of express provisions to the con-

trary.” Id. at 1095. “If the parties had intended an

exception in the event of a merger, it would have been

a simple matter to have so provided in the agreement.”

Id., citing, e.g., Packard Instrument Co. v. ANS, Inc., 416

F.2d 943, 944 n.1 (2d Cir. 1969) (license agreement

provided that rights thereunder could not be transferred

or assigned “except . . . if the entire ownership and busi-

ness of ANS is transferred by sale, merger, or consolida-

tion”); Freeman v. Seiberling Rubber Co., 72 F.2d 124, 125-

26 (6th Cir. 1934) (license was not assignable except

with the entire business and good will of the licensee).

The parties in PPG did not expressly provide for merger,

so the anti-assignment clause governed. Harley-Davidson

and Elmec, on the other hand, did expressly provide

for their respective rights and obligations in the event of

a merger, and that provision, section 10.1(c), governs

the outcome and secured the Wisconsin court’s juris-

diction over DFS.

DFS assumed the Agreement as an asset after the DFS-

Elmec merger. That was made plain to Harley-

Davidson when DFS confirmed that “all the contracts

Elmec has entered into remain valid” and that “the

merger does not alter the ownership structure and/or the

management of our company, and it shall not affect

the business relationship between our two companies.”

28 Nos. 11-3618, 11-3838 and 12-1280

DFS cannot now escape its obligations by redefining

that transaction as a “transfer” or “assignment” instead

of what it was, a corporate merger that, under the terms

of the Agreement, had no impact on the Agreement

without Harley-Davidson’s written objection. When

Harley-Davidson did not object to the merger, DFS as-

sumed Elmec’s rights and obligations under the

contract, including its consent to personal jurisdiction in

Wisconsin. The district court had and still has per-

sonal jurisdiction over DFS.

B. The Temporary Restraining Order

With personal jurisdiction secure, we turn to DFS’s

attacks on the merits of the district court’s orders.

DFS appeals several aspects of the temporary re-

straining order that was first issued by the district court

on September 6, 2011 and then modified on November 7

and 17. Although the TRO was superseded by a prelimi-

nary injunction entered on December 20, 2011, these

issues remain ripe for review. See Groupo Mexicano

de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S.

308, 313-18 (1999) (plaintiffs’ eventual victory on the

merits did not render moot the question of whether the

preliminary injunction had properly issued; provisional

remedy was not necessarily justified by defendant’s

contractual liability); American Can Co. v. Mansukhani,

742 F.2d 314, 320-21 (7th Cir. 1984) (validity of TRO

reviewed after it had been superseded by later prelim-

inary injunction; TRO had caused injury to defendant

prior to preliminary injunction hearing). On appeal we

Nos. 11-3618, 11-3838 and 12-1280 29

“review the [district] court’s legal conclusions de novo,

its findings of fact for clear error, and its balancing of

the injunction factors for an abuse of discretion.” Ezell v.

City of Chicago, 651 F.3d 684, 694 (7th Cir. 2011); Christian

Legal Society v. Walker, 453 F.3d 853, 859 (7th Cir. 2006).

We address DFS’s arguments against the TRO in the

order in which they were presented.

1. Service of Process

DFS’s first argument is preposterous. It argues that the

district court erred by issuing the TRO prior to formal

service of process or the appearance of DFS’s counsel. The

argument is refuted by the plain language of Rule 65,

which permits the issuance of a preliminary injunction

“only on notice,” or the issuance of a temporary

restraining order in some cases without “written or oral

notice to the adverse party or its attorney.” Fed. R. Civ. P.

65(a), (b)(1). The case on which DFS relies — Murphy

Brothers, Inc. v. Michetti Pipe Stringing, Inc., 526 U.S.

344, 350-51 (1999) — dealt with deadlines for removal

to federal court, not TROs. It has nothing to do with

Rule 65. In fact, DFS and its counsel had actual notice of

the hearing on Harley-Davidson’s motion for a TRO

and chose not to participate. That was their right, but

their choice did not deprive the court of the power to

issue a TRO. Moreover, because formal service of

process under the Hague Convention or other provi-

sions of law can take months, acceptance of DFS’s argu-

ment would have the unfortunate effect of immunizing

most foreign defendants from needed emergency injunc-

30 Nos. 11-3618, 11-3838 and 12-1280

tive relief. There is a reason Rule 65 allows emergency

injunctive relief before service of process, and this

case provides a good example.

2. Parties Bound

Next, DFS argues that the district court’s temporary

restraining order was impermissibly broad, going

beyond Rule 65(d)(2)’s directive that the order may

bind only parties, the parties’ officers, agents, servants,

employees, and attorneys, and “other persons who are

in active concert or participation with [the foregoing

persons].” By its terms, the TRO bound not only DFS

and its various categories of agents, but also DFS’s “dis-

tributors, dealers, and all persons in active concert or

participation with any of them.” DFS’s argument runs

headlong into our precedent, which holds that the

district court has broad authority under Rule 65 to

enjoin third parties who receive appropriate notice of

the court’s injunctive order. “Nonparties who reside

outside the territorial jurisdiction of a district court may

be subject to that court’s jurisdiction if, with actual

notice of the court’s order, they actively aid and abet

a party in violating that order. This is so despite the

absence of other contacts with the forum. Jurisdiction

over persons who knowingly violate a court’s injunctive

order, even those without any other contact with the

forum, is necessary to the proper enforcement and super-

vision of a court’s injunctive authority and offends

no precept of due process.” SEC v. Homa, 514 F.3d 661, 674-

75 (7th Cir. 2008) (internal quotations omitted). Given

Nos. 11-3618, 11-3838 and 12-1280 31

the district court’s familiarity with these parties and

their dispute, we defer to its discretionary judgment

that the broad language it used was necessary to give

effect to its order. Should any non-party believe that it

has been enjoined improperly, it is free to seek a modi-

fication or clarification from the district court, which

might be able to consider whether, for example, a dealer

or distributor would qualify as an agent of DFS. At

this juncture, however, and without any showing that

the rights of any non-party have been infringed, DFS’s

argument fails.

3. “Reasonable Detail”

An order granting a preliminary injunction or re-

straining order must “describe in reasonable detail — and

not by referring to the complaint or other document — the

act or acts restrained or required.” Fed. R. Civ. P.

65(d)(1)(C). DFS argues that the TRO violated this pro-

vision by improperly describing the enjoined acts “by

reference to a definition of the capitalized term

‘Licensed [Trademarks]’ as it appeared in the [Harley-

Davidson]/Elmec Agreement,” which was under seal at

the time.5 But the injunction must also be broad enough

to be effective. The appropriate scope of the injunction

5

DFS’s brief refers to the phrase “Licensed Products” instead

of “Licensed Trademarks.” Because the court’s TRO did not use

or define the phrase “Licensed Products,” we presume that

DFS meant “Licensed Trademarks,” which is defined by the

district court in the TRO. For our purposes the particular

term is not important.

32 Nos. 11-3618, 11-3838 and 12-1280

is best left to the district court’s sound discretion,

because the district court is in the best position to weigh

these interests. See Russian Media Group, LLC v. Cable

America, Inc., 598 F.3d 302, 307 (7th Cir. 2010) (injunc-

tion that potentially enjoined legal conduct upheld;

defendant had demonstrated proclivity for unlawful

conduct and for violating court’s orders, warranting a

broadly-worded order) (collecting cases). Although the

district court’s TRO did not explicitly define the term

“Licensed Trademarks,” the term’s reference to Harley-

Davidson trademarks is sufficiently plain from the docu-

ment. DFS does not argue that it suffered from any con-

fusion or uncertainty concerning the definition of “Li-

censed Trademarks” or any other aspect of the district

court’s language. Nor has DFS asked the district court

to modify or clarify the order. See, e.g., Russian Media

Group, 598 F.3d at 308 (inviting defendants to seek modifi-

cation of injunction from district court if they desired

to engage in legal conduct that would otherwise

violate the order). Accordingly, we find that the district

court’s TRO satisfied Rule 65(d)(1)(C)’s requirement that

it “describe in reasonable detail . . . the act or acts re-

strained,” and that the broad scope of the order was

not an abuse of the district court’s discretion.

4. 28-Day Limit

DFS next challenges the district court’s extensions of

its TRO. Harley-Davidson first moved for a TRO on

August 12, 2011. DFS refused to accept service. When

its counsel was contacted by the court on September 2,

Nos. 11-3618, 11-3838 and 12-1280 33

the day of the TRO hearing, DFS chose not to participate.

The TRO was entered on September 6, and was set to

expire after 14 days. DFS was served on September 13.

On September 19, unaware that DFS had already

been served, the court extended the TRO until Harley-

Davidson effected service on DFS pursuant to the

Hague Convention. Although it did not set a definite

expiration date, the court’s order anticipated that

process could take three to four months. However,

DFS appeared in the district court on October 4, making

clear to both Harley-Davidson and the court, at least as

of that date, that it had been served. On October 17,

the court held a telephonic status conference. The court

stood prepared to hold a preliminary injunction

hearing immediately, but DFS requested 45 to 60 days

to conduct discovery and to prepare. Accordingly, and

per DFS’s request, the hearing was set for December 15,

2011, and once the hearing was held, the court entered

a preliminary injunction, complete with the necessary

findings of fact and conclusions of law, on December 20.

On appeal DFS argues that the TRO the court entered

on September 6, 2011 was facially void and subject to

being vacated because it was “indefinitely extended” by

the district court, first on September 19 to allow Harley-

Davidson to effect service, and again at the October

17 status conference pending the prelim inary

injunction hearing. Rule 65 dictates that under

ordinary circumstances a temporary restraining order

cannot exceed 14 days, although the court may extend it

“for a like period” for good cause. Fed. R. Civ. P. 65(b)(2).

34 Nos. 11-3618, 11-3838 and 12-1280

In granting the extension on October 17, the district

court cited cases asserting that a district court could

extend a TRO for more than 20 (now 28) days to pro-

vide the parties adequate time to prepare for a pre-

liminary injunction hearing, see, e.g., Trefelner v. Burrell

School Dist., 655 F. Supp. 2d 581, 598-99 (W.D. Pa.

2009), and some district courts have taken the

approach that the 20- and 28-day limits do not apply if

the TRO was issued with notice to the enjoined party.

See 11A Wright & Miller, Federal Practice and

Procedure § 2953 at 280-83 (2d ed. 1995) (rejecting

notice argument but suggesting that extensions are ap-

propriate if needed to prepare for hearing). In our view,

the language of Rule 65(b)(2) and the great weight of

authority support the view that 28 days is the outer

limit for a TRO without the consent of the enjoined

party, regardless of whether the TRO was issued with or

without notice. See Sampson v. Murray, 415 U.S. 61, 86-88

(1974); Nutrasweet Co. v. Vit-Mar Enterprises, Inc., 112 F.3d

689, 692 (3d Cir. 1997); Pan American World Airways, Inc.

v. Flight Engineers’ Int’l Ass’n, 306 F.2d 840, 842-43 (2d

Cir. 1962); Connell v. Dulien Steel Products, Inc., 240 F.2d

414, 417 (5th Cir. 1957).

If a court fails either to extend the TRO or to issue

a preliminary injunction in its place, the TRO expires at

the close of the 28-day period. “Where a court intends to

supplant such an order with a preliminary injunction

of unlimited duration pending a final decision on

the merits or further order of the court, it should issue

an order clearly saying so. And where it has not done so,

a party against whom a temporary restraining order

Nos. 11-3618, 11-3838 and 12-1280 35

has issued may reasonably assume that the order has

expired within the time limits imposed by Rule 65(b).”

Granny Goose Foods, Inc. v. Brotherhood of Teamsters &

Auto Truck Drivers Local No. 70 of Alameda County, 415

U.S. 423, 444-45 (1974) (defendant could not be held in

contempt for violating TRO that was silent on its face as

to its intended duration; without either extension of

TRO or issuance of preliminary injunction, TRO could

be presumed to have expired as of Rule 65(b) time limit).

DFS argues that the Granny Goose Foods rule should

apply here because the extensions of the TRO were indefi-

nite. We disagree. The extensions were not silent about

duration. The September 19 extension was until DFS

was served under the Hague Convention, which had

already happened on September 13 (though Harley-

Davidson and the district court apparently did not

know that until October 4). The October 17 extension

stated the TRO would remain in effect until a decision

on the motion for preliminary injunction, which

occurred on December 20.6

6

We do find a gap, however, between October 4 and

October 17. By the terms of the district court’s September 19

extension, the TRO lasted “until” DFS was served — or, on this

record, until October 4, when it became clear to Harley-

Davidson and the court that DFS had been served. The gap

appears to have been inconsequential. This record does not

demonstrate that any activity occurred either on the docket

or between the parties between the short gap in time

between October 4 and October 17, when the court effectively

(continued...)

36 Nos. 11-3618, 11-3838 and 12-1280

When a TRO is extended beyond the 28-day limit with-

out the consent of the enjoined party, it becomes in

effect a preliminary injunction that is appealable, but

the order remains effective. See Sampson v. Murray, 415

U.S. at 86-88 (where court expressly extends a TRO

issued after notice and a hearing beyond the statutory

limit, the TRO does not cease to exist but instead

becomes an enforceable preliminary injunction subject

to appellate review); Commodity Futures Trading Comm’n

v. Lake Shore Asset Mgmt. Ltd., 496 F.3d 769, 771 (7th Cir.

2007) (“A temporary restraining order that remains in

force longer than 20 days [now 28 days] must be treated

as a preliminary injunction, which allows an appeal

under 28 U.S.C. § 1292(a)(1).”); Chicago United Indus. Ltd.

v. City of Chicago, 445 F.3d 940, 943 (7th Cir. 2006) (“A

temporary restraining order . . . if kept in force by the

district court for more than 20 [now 28] days without

the consent of the parties, . . . is deemed a preliminary

injunction and so is appealable.”); In re Criminal Contempt

Proceedings Against Crawford, 329 F.3d 131, 135-37 (2d

Cir. 2003) (analyzing interplay between Granny Goose

Foods and Sampson in rejecting defendants’ argument that

TRO automatically expired at end of Rule 65(b)(2)

time period; TRO had been explicitly extended by

district court and defendants could be held in criminal

contempt for violating its terms).

6

(...continued)

revived the terms of the September 6 order and extended it

until the preliminary injunction motion was decided.

Nos. 11-3618, 11-3838 and 12-1280 37

We take a moment to remind district courts that for

a TRO to be viable beyond the 28-day mark as a prelimi-

nary injunction, the order must comport with the

formal requirements for a preliminary injunction. Rule

65(d) requires both a TRO and a preliminary injunction

to “state the reasons why it issued,” and Rule 52(a)(2)

requires a statement of findings of fact and conclusions

of law for decisions granting or refusing an “inter-

locutory injunction” (a phrase that includes preliminary

injunctions). TROs issued on an emergency basis often

provide only terse explanations. When a district court

is considering extending a TRO beyond the 28-day limit,

it would be prudent to review the explanation given

to support the original order and to consider whether

a further explanation may be appropriate to allow mean-

ingful appellate review, as opposed to opening the

order up to being vacated and remanded for lack

of a sufficient explanation.

We recognize there will be cases where the maximum 28-

day limit does not give the parties sufficient time

to prepare for a preliminary injunction hearing, let

alone time for the district court to decide it. In those

cases, an extension of the TRO pending a preliminary

injunction hearing and decision without consent of

the enjoined party is technically a preliminary injunc-

tion: it is appealable, and the district court should

provide a sufficient explanation of its decision to

allow meaningful appellate review. See Fed. R. Civ. P.

52(a)(2). A court reviewing such an order for an abuse

of discretion should take into account the urgency

with which it was issued and the needs of the district

38 Nos. 11-3618, 11-3838 and 12-1280

court and the parties, but the law does not allow an

indefinite and unreviewable extension of a TRO with-

out the consent of the enjoined party. See Sampson, 415

U.S. at 86-88; Granny Goose Foods, 415 U.S. at 441.7

The district court’s September 6 TRO provided a

short explanation that was not supplemented until the

preliminary injunction was issued. If either party had

thought the original explanation was not sufficient

under Rule 52(a)(2) or Rule 65(d)(1)(A), it could have

raised the issue and the court could have corrected

any oversight very quickly. DFS did not raise such an

issue before the district court or on appeal and has

waived any argument it might have made in that re-

gard. See United States v. Johns, 686 F.3d 438, 449 (7th

Cir. 2012) (defendant waived argument by failing to

present it on appeal); Kunz v. DeFelice, 538 F.3d 667, 681

(7th Cir. 2008) (“Failure to adequately present an issue

to the district court waives the issue on appeal.”).

C. Preliminary Injunction

DFS argues that the preliminary injunction suffers

from the same Rule 65 issues as the temporary restraining

7

Another situation that can cause extraordinary urgency is

the removal of a case to federal court shortly before the

outer time-limit for a state-issued TRO will expire. E.g., Hoosier

Energy Rural Elec. Co-op., Inc. v. John Hancock Life Ins. Co., 588

F. Supp. 2d 919, 921-22 (S.D. Ind. 2008), aff’d, 582 F.3d

721 (7th Cir. 2009).

Nos. 11-3618, 11-3838 and 12-1280 39

order. For the reasons set forth above, we reject those

arguments. It also argues that the preliminary injunc-

tion should be vacated because the relevant facts are

hotly disputed by the parties and because the parties

have raised “novel and uncertain questions of law.” DFS

Br. 43-45, citing General Electric Co. v. American Wholesale

Co., 235 F.2d 606, 608 (7th Cir. 1956) (where issues of fact

are conflicting, an injunction should not issue without

an evidentiary hearing). Its argument is without merit.

General Electric is inapposite here because DFS raises no

argument that the evidentiary hearing afforded by the

district court was in any way inadequate. (DFS agreed

with Harley-Davidson in advance of the preliminary

injunction hearing that neither side would present live

testimony and that the court should decide the motion

on the affidavits and other papers of record.) Requests

for injunctive relief that present sharply contested facts

are routine in the federal courts. The “novel and uncer-

tain” questions of law DFS raises — whether section 14

or 10 of the contract applies to a corporate merger,

whether Greek law would deem Harley-Davidson’s

trademark rights “exhausted,” and whether only

nominal damages are warranted under Michigan

law — are issues of contract interpretation, nothing more,

and are neither novel nor particularly uncertain. More

important, though, the courts are equipped to handle both

contested facts and novel legal questions. Neither poses

a categorical bar to a preliminary injunction. DFS’s argu-

ments otherwise fail, and we affirm the district court’s

December 20, 2011 preliminary injunction against DFS.

40 Nos. 11-3618, 11-3838 and 12-1280

D. Anti-Suit Injunction

Finally, DFS argues that the district court overstepped

its equitable authority in its February 7, 2012 anti-suit

injunction order by enjoining DFS from defending

itself against Harley-Davidson’s Greek petitions. Its

argument is belied by its contrary assertion that the

February 7, 2012 order of the district court “does not

clearly or expressly” prohibit DFS from “defending”

itself against Harley-Davidson’s Greek petitions. DFS

Br. 48. What that order did was prevent DFS from

litigating in another action in a manner that would

“contradict, impair, or otherwise affect this Court’s

rulings, including the December 20, 2011 preliminary

injunction order, and/or this Court’s jurisdiction to ad-

judicate the present action.” The district court’s language

does not specifically mention the Harley-Davidson

Greek petitions, nor does it explicitly prevent DFS

from “defending” itself in those actions or any others

except to the extent that DFS’s defense would “con-

tradict, impair, or otherwise affect” the December 20

preliminary injunction. At this stage in the proceedings,

that lack of specificity is not particularly surprising.

Harley-Davidson filed its motion for an anti-suit

injunction on an emergency basis. At the time, little

information was available concerning the Greek actions.

Even with full information, there would have been

little time to gather and process that information on

an expedited basis.

In DFS’s words, only “after the fact” did the district

court interpret its February 7 anti-suit injunction order

Nos. 11-3618, 11-3838 and 12-1280 41

to mean that DFS was prohibited “from opposing plain-

tiff’s efforts to enforce in Greece the preliminary injunc-

tion.” DFS Br. 48. There is a critical problem with

DFS’s argument that the district court’s “after the fact”

interpretation exceeded the court’s equitable authority.

DFS was not prejudiced in any way by the court’s

February 22 interpretation. The district court’s interpreta-

tion was “after the fact” because by that point, the Harley-

Davidson Greek petitions had already been heard by

the Greek court, and the Greek court had already ruled

in Harley-Davidson’s favor. DFS had and took its

full opportunity to mount a vigorous defense against

Harley-Davidson’s Greek petitions. It argued forcefully

that the U.S. court’s preliminary injunction had no

effect and was unenforceable. In fact, it presented

Professor White’s affidavit to the Greek court and

argued, as it had to the U.S. district court, and as it has

on appeal, its unsubstantiated view that under

Michigan law, the Harley-Davidson/Elmec Agreement

did not impose any obligations on DFS. In other words,

DFS defended itself against Harley-Davidson’s Greek

enforcement petition by raising the same issues of

personal jurisdiction that it had litigated and lost before

the district court. Now, on appeal from the district

court’s anti-suit injunction, DFS has not identified any

argument or piece of evidence it was unable to present

to the Greek court due to the language of the February 7

order. Rightly or wrongly, the Greek court fully heard

DFS’s defense to the Harley-Davidson Greek petitions.

We have been informed by the parties, however, that

the Harley-Davidson Greek action is ongoing, with a

42 Nos. 11-3618, 11-3838 and 12-1280

final hearing currently scheduled for September 21, 2012.

DFS had the right, and still has the right, contrary to the

language the district court used in its February 22 order,

to appear and defend itself in that action, and we

instruct the district court to modify its February 22

order accordingly.8 However, DFS must defend itself in

a manner that is consistent with the district court’s Febru-

ary 7 order, which we affirm in every respect. In other

words, it may not “contradict, impair, or otherwise

affect this Court’s rulings, including the December 20,

2011 preliminary injunction order, and/or this Court’s

jurisdiction to adjudicate the present action.” (In particular,

we believe, short of intervention by the Supreme Court

of the United States, that this opinion closes the door

on DFS’s argument that the district court lacked

personal jurisdiction over it.) To the extent that DFS

requires further clarification or modification of the Feb-

ruary 7 anti-suit injunction order from the district court

as the Harley-Davidson Greek petitions proceed, it may

seek that clarification or modification from the district

court in the first instance.

8

For this reason, we also instruct the district court to disregard

the fact that DFS appeared in the Greek court and that it

(generally) mounted a defense against the Harley-Davidson

Greek petitions as evidence of DFS’s bad faith in Harley-

Davidson’s motion for sanctions and contempt, which is

pending in the district court. See Dkt. 109. However, the

court may consider, in its discretion, the extent to which

the specifics of DFS’s defense may or may not have “contra-

dicted,” “impaired” or “otherwise affected” the district court’s

orders in deciding whether sanctions are appropriate.

Nos. 11-3618, 11-3838 and 12-1280 43

Finally, DFS argues that the district court erred in

ordering it to dismiss the DFS Greek action. When DFS

filed its Greek action on November 15, 2011, DFS was

actively contesting personal jurisdiction in the case

before the district court. DFS contends that, “seeking

relief in a Greek court was the only way that DFS could

seek immediate affirmative relief against [Harley-

Davidson] without jeopardizing DFS’s pending juris-

dictional defense to [Harley-Davidson’s] action.” DFS

Br. 49. This argument is baseless. The law has long

been clear that a party may appear and litigate both

a personal jurisdiction defense and the merits of a case

without waiving the personal jurisdiction defense. See

United States v. Ligas, 549 F.3d 497, 502 (7th Cir. 2008)

(“The federal rules permit defendants to simultaneously

seek relief and raise a jurisdictional argument without

waiving that defense.”) (collecting cases). We explained

recently that, “to waive or forfeit a personal jurisdiction

defense, a defendant must give a plaintiff a reasonable

expectation that it will defend the suit on the merits

or must cause the court to go to some effort that would

be wasted if personal jurisdiction is later found lack-

ing.” Mobile Anesthesiologists Chicago, LLC v. Anesthesia

Associates of Houston Metroplex, P.A., 623 F.3d 440, 443

(7th Cir. 2010), citing American Patriot Ins. Agency, Inc. v.

Mutual Risk Management, Ltd., 364 F.3d 884, 887-88 (7th

Cir. 2004) (Rule 12(b)(3) defense of improper venue was

not waived or forfeited when defendant engaged in

preliminary pretrial litigation activity; plaintiff should

have anticipated defendant’s objection, and defendant

was not misleading the plaintiff or wasting judicial re-

sources).

44 Nos. 11-3618, 11-3838 and 12-1280

Whatever might be said about the merits of DFS’s

personal jurisdiction objection, there has never been

any doubt up to this point that it contests the issue. The

cases DFS cites in support of its fear that its personal

jurisdiction defense might be deemed waived are

simply not comparable. See Continental Bank, N.A. v.

Meyer, 10 F.3d 1293, 1296-97 (7th Cir. 1993) (personal

jurisdiction defense deemed waived after “defendants fully

participated in litigation of the merits for over two-and-a-

half years without actively contesting personal jurisdic-

tion” and “district court could properly conclude that the

defendants’ delay in urging this threshold issue

manifest[ed] an intent to submit to the court’s jurisdic-

tion”); Bel-Ray Co. v. Chemrite (Pty) Ltd., 181 F.3d 435, 443-

44 (3d Cir. 1999) (affirming finding that defendants waived

personal jurisdiction defense by doing “far more than

resist[ing] an application for a preliminary injunction;”

defendants raised personal jurisdiction defense in answer

but actively pursued summary judgment before litigating

personal jurisdiction).

International comity (the mutual respect of sovereigns)

requires the courts of one nation to avoid, where possible,

interfering with the courts of another. See Allendale

Mutual Ins. Co. v. Bull Data Systems, Inc., 10 F.3d 425, 431-

33 (7th Cir. 1993); Philips Medical Systems Int’l B.V. v.

Bruetman, 8 F.3d 600, 604-05 (7th Cir.1993). DFS has

raised no argument and presented no evidence sug-

gesting that the district court’s anti-suit injunction threat-

ened international comity. The Greek court has provi-

sionally granted Harley-Davidson’s motion for a tempo-

rary order enforcing the U.S. district court’s Decem-

Nos. 11-3618, 11-3838 and 12-1280 45

ber 20 preliminary injunction, and revoked its prior

provisional order in the DFS Greek action. We therefore

have no reason to fear that the anti-suit injunction in-

fringed Greece’s sovereignty in any way.

Even if we had some sense that international comity

could become an issue, our court ordinarily allows an

injunction against litigating in a foreign forum “upon

a finding that letting the two suits proceed would be

gratuitously duplicative, or as the cases sometimes say

vexatious and oppressive.” Allendale, 10 F.3d at 431 (inter-

nal quotations omitted). DFS argues that the district

court’s conclusion that its prosecution of the DFS Greek

action was “vexatious and oppressive” was clearly er-

roneous, but we disagree. As the district court wrote in

its February 7 decision, DFS’s Greek action was “a

blatant attempt by defendant to relitigate issues that

[the court had] already decided, and it has resulted in

an injunction in Greece that directly contradicts this

court’s orders.” DFS made a conscious decision to

conceal its Greek action from the district court. It then

failed to disclose to the Greek court that U.S. proceedings

were pending or that the TRO had been issued. It pro-

ceeded to prosecute the very issues that were being

actively litigated in the U.S. district court, specifically

DFS’s rights and obligations under the Harley-

Davidson/Elmec Agreement. Its chosen strategy was a

direct threat to the jurisdiction of the district court

and exposed Harley-Davidson to duplicative litigation

and the possibility of inconsistent rulings. We see no

error in the district court’s determination that an injunc-

tion prohibiting DFS from prosecuting its action in

46 Nos. 11-3618, 11-3838 and 12-1280

Greece was appropriate under these circumstances, and

we affirm the district court’s February 7 preliminary anti-

suit injunction order.

III. Conclusion

We affirm the district court’s orders with instructions

to modify its anti-suit injunction orders to reflect that

DFS is permitted to appear and defend itself against the

Harley-Davidson Greek petitions so long as it does so in

a manner that is consistent with and does not infringe

on the December 20, 2011 preliminary injunction or any

other rulings made thus far in this proceeding — including

this ruling on appeal.

A FFIRMED.

9-5-12