Businesses increasingly operate across borders through manufacturing and distribution agreements. Cross-border operations expand a brand’s market presence while creating opportunities to monetize intellectual property (“IP”) through licensing, royalty arrangements, and assignments of rights. The extraterritorial nature of the agreements can make it difficult to ascertain the applicable law and forum if those issues are not addressed in the initial master agreement. Even then, poorly drafted or outdated manufacturing and distribution agreements can turn disputes over the relationship into costly litigation. The Slush Puppie litigation illustrates how those issues can compound when a cross-border commercial relationship evolves faster than the agreements governing it.
Manufacturing and Distribution Agreements in Slush Puppie
Cross-border manufacturing and distribution agreements were at the center of the seven-year dispute in Slush Puppie Ltd. v. Icee Co.[1] Slush Puppie Limited’s (“SPL”) dissatisfaction with the limits on its European distribution and trademark rights, including its inability to pursue broader trademark enforcement without Icee’s authorization, became a central source of conflict.[2] A 1996 Manufacturing Appointment granted SPL exclusive manufacturing rights across twenty-seven European countries, while a 1999 Distributor Agreement granted the distinct and geographically narrower right to distribute Slush Puppie and use the SLUSH PUPPIE marks exclusively in the United Kingdom (“U.K.”) and Ireland.[3] Because the 1999 Distributor Agreement did not supersede the 1996 Manufacturing Appointment, both remained operative until Icee terminated them in June 2019.[4] Few provisions proved more consequential than the 1999 agreement’s termination clause triggered by litigation.[5]
The contractual limits on SPL’s European distribution and trademark rights became a persistent source of commercial friction.[6] That friction intensified when SPL relied on a fabricated 2000 appointment purporting to grant exclusive European trademark rights while separately contending that an earlier agreement had reduced its royalty obligation from 5% to 2.5%.[7] In hindsight, asserting broader European rights alongside a 50% royalty reduction should have raised an immediate red flag.[8] After Icee terminated the agreements, SPL challenged the litigation-triggered provisions as unconscionable, but the court rejected the argument, emphasizing the parties’ commercial sophistication, their long-standing voluntary dealings, and the agreement’s distinction between curable defaults and events permitting immediate termination.[9]
Slush Puppie Litigation
Once litigation began, the case became far more than a contractual dispute. Judge Barrett ultimately dismissed SPL’s remaining claims with prejudice for the fraud perpetrated on the court and the American judicial process.[10] As of publication, a federal jury in Ohio had also returned an advisory verdict in Icee’s favor on its counterclaims, finding unjust enrichment, trademark infringement under sections 10(1) and 10(3) of the U.K. Trade Marks Act 1994, and passing off under U.K. common law.[11] The jury allocated $33 million in disgorgement across post-termination periods from 2019 through 2025, with separate disgorgement awards totaling $3.6 million on the U.K. trademark and passing-off claims.[12]
Figure 1. Slush Puppie Ltd. v. Icee Co. Key Rulings and Litigation Milestones
June 25, 2019 | Key Agreements Terminated Icee Co. terminates the 1996 Manufacturing Appointment and 1999 Distributor Agreement after SPL files suit, invoking litigation-triggered termination provisions. |
March 16, 2023 | Partial Summary Judgment on Termination The court holds that the agreements were validly terminated on June 25, 2019, under unambiguous contract language. The court rejects SPL’s narrowing arguments and related defenses on this record. |
June 27, 2025 | Icee’s Federal and State Trademark Claims Dismissed |
February 25, 2026 | Icee’s Trademark Law Claims Reinstated The court reinstates the previously dismissed trademark counts under the U.K. Trade Marks Act (sections 10(1) and 10(3)) and passing-off law, based on its failure to address Icee’s notice that it intended to raise an issue of foreign law after Abitron Austria GmbH v. Hetronic Int’l Inc., 600 U.S. 412 (2023). |
May 20, 2026 | Finding for Icee and Advisory Verdict The advisory verdict allocates $33 million in unjust enrichment / profit disgorgement across post-termination periods and separate amounts under U.K. infringement and passing-off theories. |
July 8, 2026 | Partial Grant on Icee’s Motion for a Preliminary Injunction |
September 8, 2026 | Post-Trial Submissions No final ruling on advisory verdict. |
Takeaways
There are two equally important takeaways from this case. The first is that establishing a robust IP portfolio can pay dividends; the second is that extraterritorial agreements should be drafted with termination and the winding up of the parties’ relationship in mind from the outset.
The first lesson concerns the assets themselves. Companies and investors tend to focus heavily on patents to protect innovation while overlooking trademark and trade secret rights that can potentially endure indefinitely, as well as copyright protection available across Berne Convention member countries.[13] A robust IP portfolio can protect the enterprise while creating valuable, durable, revenue-generating rights.[14] Patents generally expire twenty years from filing, while trademarks can endure indefinitely through continued use in commerce and become core assets of a global brand. Trade secrets likewise can remain valuable indefinitely when properly safeguarded.[15] The greatest long-term value comes not from patents alone but from building a complementary portfolio of IP rights.
The second lesson concerns the agreements governing those assets. When commercializing IP abroad, draft the manufacturing and distribution agreements from the end backward. An amicable beginning should not obscure the need to define termination and winding up at the outset. In cross-border manufacturing and distribution agreements, the most pertinent provisions often address term, territory, exclusivity, IP ownership and enforcement, performance and review milestones, royalty rates, termination, governing law, forum selection, clearly delineated schedules and exhibits, amendment requirements, and post-termination winding up obligations.[16] Had the parties in Slush Puppie periodically reviewed and memorialized their agreements, a clearer record might have narrowed the dispute years earlier and avoided substantial motion practice and expense.[17] Designing an agreement around both the life and conclusion of a business relationship does more than strengthen the instrument; it also facilitates a clear record of the parties’ course of dealing that can facilitate early resolution of later disputes. Taken together, IP strategy and contract strategy must be aligned from the outset of international expansion.
The broader takeaway from Slush Puppie is that international expansion requires more than obtaining IP rights and signing a distribution or manufacturing agreement. Businesses should build complementary portfolios of patents, trademarks, copyrights, and trade secrets while ensuring that the agreements governing those assets clearly address territory, exclusivity, enforcement, amendment, termination, and winding up. When the rights and the contractual record develop together, businesses are better positioned not only to capture long-term value but also to avoid having a court reconstruct the parties’ relationship after it has already fallen apart.
Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189-MRB, 2020 U.S. Dist. LEXIS 265181 (S.D. Ohio Sept. 10, 2020); Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189-MRB, 2023 U.S. Dist. LEXIS 80519, slip op. (S.D. Ohio Mar. 16, 2023); Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-189, 2023 U.S. Dist. LEXIS 160476 (S.D. Ohio July 10, 2023); Slush Puppie Ltd. v. Icee Co., 729 F. Supp. 3d 773 (S.D. Ohio 2024); Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189, 2023 U.S. Dist. LEXIS 247789 (S.D. Ohio Apr. 7, 2025); Slush Puppie Ltd. v. Icee Co., 792 F. Supp. 3d 834 (S.D. Ohio 2025); Slush Puppie Ltd. v. Icee Co., 821 F. Supp. 3d 912 (S.D. Ohio 2026); Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189, 2026 U.S. Dist. LEXIS 38663 (S.D. Ohio Feb. 25, 2026); Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189, 2026 U.S. Dist. LEXIS 147973 (S.D. Ohio Apr. 23, 2026); Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189, 2026 U.S. Dist. LEXIS 219419 (S.D. Ohio July 8, 2026). ↑
Slush Puppie, 729 F. Supp. 3d at 778 (stating that SPL needed a side letter expanding the territory under the 1999 Distributor Agreement before it could “start a trademark action in Spain”); see also Slush Puppie, 821 F. Supp. 3d at 915–19 (describing the differing territorial scope of the 1996 and 1999 agreements and the later dispute over broader European trademark rights). ↑
See Slush Puppie, 821 F. Supp. 3d at 915–18; Slush Puppie, 792 F. Supp. 3d at 840–42. ↑
See Slush Puppie, 821 F. Supp. 3d at 915–18; Slush Puppie, No. 1:19-cv-00189-MRB, slip op. at 19–22 (S.D. Ohio Mar. 16, 2023). ↑
See Slush Puppie, No. 1:19-cv-00189-MRB, slip op. at 19–22 (S.D. Ohio Mar. 16, 2023). ↑
See Slush Puppie, 821 F. Supp. 3d at 915–19. ↑
See id. at 918–19, 925–34. ↑
See id. at 918–19 (describing Icee’s challenge to the authenticity of the purported 2000 appointment after SPL presented it as a superseding agreement granting broader European trademark rights). ↑
See Slush Puppie, No. 1:19-cv-00189-MRB, slip op. at 24–22 (S.D. Ohio Mar. 16, 2023) (rejecting SPL’s unconscionability challenge and distinguishing ordinary defaults subject to cure from enumerated grounds for immediate termination). ↑
See Slush Puppie, 821 F. Supp. 3d at 925–34. ↑
See Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189-MRB, 2026 U.S. Dist. LEXIS 219419, at 1–2 (S.D. Ohio July 8, 2026), ECF No. 504; see also Interrogatories & Verdict Form at 10–11, Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189-MRB (S.D. Ohio May 22, 2026), ECF No. 488. ↑
See Slush Puppie, 2026 U.S. Dist. LEXIS 219419 at 1–2; see also Slush Puppie, Interrogatories & Verdict Form at 10–11 (S.D. Ohio May 22, 2026). ↑
See 35 U.S.C. § 154(a)(2) (providing the general twenty-year term for utility patents); 15 U.S.C. §§ 1058(a), 1059(a) (providing for continued trademark registration and successive ten-year renewals, subject to statutory requirements); 18 U.S.C. § 1839(3) (defining a trade secret by reference to reasonable measures to maintain secrecy and economic value derived from the information’s not being generally known); Berne Convention for the Protection of Literary and Artistic Works art. 5(1)–(2), Sept. 9, 1886, as revised at Paris, July 24, 1971 (providing national treatment in other Union countries and stating that the extent of protection and means of redress are governed by the law of the country where protection is claimed). ↑
See 35 U.S.C. § 154(a)(2); 15 U.S.C. §§ 1058(a), 1059(a); 18 U.S.C. § 1839(3)); Berne Convention for the Protection of Literary and Artistic Works art. 5(1)–(2), Sept. 9, 1886, as revised at Paris, July 24, 1971. ↑
See 18 U.S.C. § 1839(3) (defining a trade secret to require, among other things, that the owner take reasonable measures to keep the information secret and that the information derive actual or potential independent economic value from not being generally known); Defend Trade Secrets Act of 2016, Pub. L. No. 114-153, § 2(b), 130 Stat. 376, 380–81. ↑
See, e.g., Watec Co. v. Liu, 403 F.3d 645, 654 (9th Cir. 2005) (explaining that, in manufacturer-distributor disputes, courts look first to the parties’ agreement concerning trademark rights and affirming that the parties’ licensing arrangement remained unchanged); Covertech Fabricating, Inc. v. TVM Bldg. Prods., Inc., 855 F.3d 163, 171 (3d Cir. 2017) (applying a rebuttable manufacturer presumption and multifactor analysis where the parties’ agreement did not resolve trademark ownership); Slush Puppie Ltd. v. Icee Co., 792 F. Supp. 3d 834, 840–42, 851–54 (S.D. Ohio 2025) (describing territorial limits in the parties’ distribution agreement and analyzing the consequences of foreign conduct and the contractual choice-of-law provision); I.M. Wilson, Inc. v. Otvetstvennostyou “Grichko,” 614 F. Supp. 3d 114, 131–38 (E.D. Pa. 2022) (denying summary judgment on trademark ownership where the distribution agreement, registration documents, and parties’ conduct permitted competing inferences); Coyne’s & Co. v. Enesco, LLC, 565 F. Supp. 2d 1027, 1042–44 (D. Minn. 2008) (examining contractual limits on a distributor’s trademark rights, including territory, duration, and ownership); Versatile Housewares & Gardening Sys., Inc. v. Thill Logistics, Inc., 819 F. Supp. 2d 230, 241–46 (S.D.N.Y. 2011) (addressing remedies arising from breach of contractual forum-selection provisions); Minarik Elec. Co. v. Electro Sales Co., 223 F. Supp. 2d 334, 341–42 (D. Mass. 2002) (distinguishing a former distributor’s right to resell genuine remaining inventory from allegedly misleading post-termination trademark and website use). ↑
See Slush Puppie Ltd. v. Icee Co., 821 F. Supp. 3d 912, 916 n.6, 917 n.11, 918–19, 925–34 (S.D. Ohio 2026) (describing contractual written-amendment requirements, the later-asserted purported 2000 appointment, the authenticity dispute and fabricated supporting materials, and the resulting sanctions proceedings); Opinion & Order pts. III.A–C, IV, Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189-MRB, 2023 U.S. Dist. LEXIS 80519 (S.D. Ohio Mar. 16, 2023), ECF No. 189 (granting partial summary judgment and holding Icee’s June 25, 2019, termination effective as a matter of law); Slush Puppie, 792 F. Supp. 3d at 846–54 (resolving subsequent Rule 12 challenges to Icee’s amended counterclaims); Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189, 2026 U.S. Dist. LEXIS 38663, at *4–13 (S.D. Ohio Feb. 25, 2026) (partially reconsidering the prior dismissal and substituting U.K.-law theories); Slush Puppie Ltd. v. Icee Co., No. 1:19-cv-00189, 2026 U.S. Dist. LEXIS 147973, at *2–5 (S.D. Ohio Apr. 23, 2026) (denying a further Rule 12(c) challenge after the parties agreed to proceed toward trial without another round of dismissal motions). ↑
