State v. G&T Terminal Packaging, Inc.

FACTS AND PROCEDURAL BACKGROUND

IPC is a statutorily-created agency of the State of Idaho formed for the purpose of promoting Idaho potatoes. See Hapco Farms, Inc. v. Idaho Potato Comm’n, 238 F.3d 468 (2d Cir. 2001). IPC finances its promotional work in part by licensing several certification marks for Idaho potatoes including “Idaho” and “Grown in Idaho.” G&T is a wholesale distributor of potatoes. Beginning in 1968, G&T entered into a series of licenses with IPC to use IPC’s certification marks. The most recent of these licenses expired on September 1, 1998. This license contained provisions in which G&T recog- nized the validity of IPC’s marks and agreed not to challenge IPC’s rights in the marks while the license was in effect or after its expiration.

In February 1998, IPC filed this action in the United States District Court for the District of Idaho against G&T. IPC alleged that G&T had breached its licensing agreement and infringed IPC’s certification marks by, inter alia, failing to keep adequate records and using unlicensed potato repackers. In July 1998, G&T filed a complaint in intervention in three consolidated cases involving IPC and potato wholesalers in the United…