American Eagle Outfitters, Retail Royalty Company v. Lyle & Scott Limited; Harris Watson Investment Limited

PRECEDENTIAL
IN THE UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
_____________
No. 08-4807
_____________
AMERICAN EAGLE OUTFITTERS,
RETAIL ROYALTY COMPANY,
Appellees,
v.
LYLE & SCOTT LIMITED;
HARRIS WATSON INVESTMENT LIMITED,
Appellants.
On Appeal from the District Court
for the Western District of Pennsylvania
(No. 06-cv-00607)
Magistrate Judge: Honorable Amy Reynolds Hay
Argued May 21, 2009
Before: FUENTES, JORDAN, and NYGAARD,
Circuit Judges

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2
(Opinion Filed: September 11, 2009)
Emily J. Barnhart, Esq.
Dennis P. McCooe, Esq.
Timothy D. Pecsenye, Esq.
Laurence S. Shtasel, Esq.
James T. Smith, Esq.
Marc E. Weitzman, Esq.
Blank Rome
130 North 18th Street
One Logan Square
Philadelphia, PA 19103
Susan B. Flohr, Esq.
Blank Rome
600 New Hampshire Avenue, N.W., Ste. 1100
Washington, DC 20037
Charles R. Wolfe, Esq.
Blank Rome
The Farragut Building
900 17th Street, N.W., Ste. 1000
Washington, DC 20006
Robert L. Byer, Esq. [ARGUED]
Susan G. Schwochau, Esq.
Duane Morris
600 Grant Street, Ste. 5010
Pittsburgh, PA 15219
Counsel for Appellants

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3
Clay P. Hughes, Esq.
Cynthia E. Kernick, Esq.
Walter T. McGough, Jr., Esq. [ARGUED]
Kirsten R. Rydstrom, Esq.
Richard T. Ting, Esq.
Colin E. Wrabley, Esq.
Reed Smith
435 Sixth Avenue
Pittsburgh, PA 15219
Theodore R. Remaklus, Esq.
Wood, Herron & Evans
2700 Carew Tower
Cincinnati, OH 45202
Counsel for Appellees
OPINION OF THE COURT
FUENTES, Circuit Judge.
This is a contract case arising from the parties’ efforts to
resolve a dispute over their use of similar trademarks in their
respective clothing lines. To work out an acceptable business
arrangement, representatives of American Eagle Outfitters
(“American Eagle” or “AE”) and Lyle and Scott, Ltd. (“Lyle &
Scott” or “LS”) met in London in January 2006. During this
meeting, the parties drew up an informal document (the

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1
The parties consented to have a magistrate judge hear the
case pursuant to 28 U.S.C. § 636(c).
4
“London Memorandum”) memorializing the content of their
discussion and their points of agreement. The dispute in this
case centers on the significance of this London Memorandum.
The Magistrate Judge1 agreed with Plaintiff-Appellee American
Eagle that the London Memorandum was a binding contract
between the parties, and that its terms were not ambiguous,
holding that no reasonable jury could find otherwise.
Defendant-Appellant Lyle & Scott appeals, arguing that the
parties did not intend to contract, and even if they did, the
contract that resulted was too indefinite to be enforceable.
For the reasons outlined below, we agree with the
Magistrate Judge that the parties formed an enforceable contract,
but we disagree with her finding that all of its terms are
unambiguous. Accordingly, we remand the case so that a jury
may interpret the contract’s more ambiguous terms.
I.
American Eagle is an American clothing retailer. It
operates in all fifty states, the District of Columbia, and Puerto
Rico, and has internet sales in twenty-four foreign countries.
Lyle & Scott is a British sportswear manufacturer and is owned
by Waterlinks Investment Ltd. At the start of this litigation,
Waterlinks Investment Ltd. was known as Harris Watson
Investments Limited (“HW”) after its principals, John Harris
and Sue Watson. Harris and Watson control Waterlinks
Investment Ltd., as they did HW. For the purposes of this
Opinion, the two companies can be used interchangeably.

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5
The dispute at the center of this case began in September
2005. Benjamin Sharpe, the managing director of Lyle & Scott,
wrote to American Eagle’s CEO, James O’Donnell, stating that
American Eagle’s use of its eagle logo was uncomfortably close
to Lyle & Scott’s own “birdie” trademark. Sharpe opined that
“there is a substantial risk of confusion as to the origin of your
goods when offered for sale in Europe . . . [and] we would
undoubtedly succeed in infringement proceedings against you.”
(App. 142-43.) Sharpe then invited American Eagle to respond
with suggestions on how to move forward.
In December 2005, a few months after Sharpe sent the
letter to American Eagle’s CEO (and following some other
correspondence between Lyle & Scott and American Eagle),
Kimberly Strohm, the in-house counsel for American Eagle,
wrote Dennis Hall, HW’s corporate development director,
proposing a face-to-face meeting to work out an acceptable
business solution. Sharpe had previously asked Hall to handle
the dispute with American Eagle. According to Sharpe’s
testimony, Hall was not directed to report back to Sharpe or
anyone else, and appears to have been given wide latitude to
resolve the situation. Sharpe had delegated other trademark
matters to Hall in the past, with Hall signing documents on
behalf of Lyle & Scott during those negotiations, although those
matters were smaller and less complicated than the dispute with
American Eagle.
In January 2006, Strohm met with Hall in London, and
brought along Christopher Fiore, American Eagle’s senior VP
in charge of “International.” Strohm told Hall in a December
21, 2005, email that she would be attending the meeting as part
of the management team, and that the meeting would be

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6
“business person to business person,” although outside legal
counsel would be available if necessary. (App. 162.) Strohm
made explicit her understanding that Lyle & Scott’s attorneys
would play a similar role – they would be on hand if necessary,
but not in the negotiating room. The emails exchanged between
Hall and Strohm outlining these parameters contained the
language “without prejudice,” and Strohm proposed that the
meeting be conducted “without prejudice.”
The meeting stretched over a morning and an afternoon
session. During the morning session, Hall pushed Strohm to
abandon American Eagle’s use of the logo, but Strohm resisted.
She instead proposed a coexistence agreement whereby both
companies would use the logo along with safeguards to avoid
customer confusion. During the break between sessions, Hall
telephoned Harris, one of the HW principals, and discussed the
available options, all the while recording notes of Harris’s
preferences. Hall and Strohm then reconvened for the afternoon
session.
At the end of the afternoon session, Strohm and Hall
drew up an informal document memorializing the points upon
which the two parties had agreed (the aforementioned London
Memorandum). The memorandum read:
AE to pay $1,000,000 (US) to Lyle & Scott.
Parties agree as follows:
< AE to use its current eagle on American
Eagle branded merchandise, products must
also bear American Eagle or American
Eagle Outfitters on the label;

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2In a subsequent email, Hall noted the following: “When
we came to an agreement and you were proposing to revert
7
< AE to sell products in AE stores, stores
within stores or AE website;
< LS to use its eagle designs on Lyle & Scott
branded merchandise, products must also
bear Lyle & Scott on the label;
< Perpetual and worldwide pertaining to
goods of LS registrations
< AE shall have the right of first refusal to
purchase LS eagle(s) or business
< Each party shall consent to the registration
of the other’s eagles and AE shall
withdraw its opposition against LS
application in the US
< Each side to bear their own government
taxes
< AE to pay the reasonable and customary
atty fees of LS
< AE will not launch or offer a specific
range targeted at the golf market
< AE will discuss with LS [sourcing of]
garments
(App. 170-71.) Hall acknowledged that it was he who suggested
the list should be put in writing.2 Hall then asked Strohm if they

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subsequently with outline terms, I suggested we set them out in
writing then and there.” (App. 644.)
3Hall claims that he left the meeting with the
understanding that the agreement would not become effective
until a formal document was generated and the relevant parties
signed on. Strohm and Fiore, on the other hand, testified that
Hall shook hands and said something to the effect of “we have
a deal,” leading them to believe that they had a formal
agreement.
8
should both sign the document, but Strohm replied that signing
would not be necessary. 3 Strohm and Hall each left the meeting
with copies of the London Memorandum and Strohm agreed to
turn it into a formal document. The London Memorandum,
unlike the emails exchanged between Strohm and Hall, did not
contain the “without prejudice” language.
On January 23, 2006, two weeks after the London
meeting, Strohm sent Hall a “draft of the co-existence
agreement” (“draft agreement”). Hall responded three days later
with an edited version. Hall stated that his edits were generally
“simple tidying.” There was one portion, however, where Hall
acknowledged he was making a substantive edit. Section
3(a)(iv) had stated “AEO can register its AEO Eagle Design
marks for goods and services throughout the world.” Hall
deleted “throughout the world” and substituted “in the U.S.”
The accompanying email stated the following:
I believe my comments are simple tidying other
than clause 3(a)(iv) – we do not want to allow you
to register outside your core market, naturally we

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9
will not object to your internet selling activities
and we will defend our mark (and by similarity,
your mark) in these other territories. This allows
you to trade unfettered whilst not diminishing our
prior rights in these other territories.
(App. 184.) The portions of the London Memorandum that
generated this disagreement, clauses four and six, read as
follows:
Perpetual and worldwide pertaining to goods of
LS registrations
. . .
Each party shall consent to the registration of the
other’s eagles and AE shall withdraw its
opposition against LS application in the US.
(App. 170.)
On January 31, 2006, Hall and Strohm exchanged emails
discussing Strohm’s concern over Hall’s statement that Lyle &
Scott did not want to let American Eagle register outside
American Eagle’s core market. They agreed to hold a
conference call the next morning. Shortly before the call,
however, Hall emailed Strohm to flag another problem. The
email stated:
I need to clarify one issue ahead of our
conversation. . . . As a result you may well think
I am moving our position! After discussions on
our licensee relationships, we now have
significant issues in allowing you to trade into
territories outside America. This is particularly

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10
important in Europe and the Far East where we
have clearly established marks and prior rights.
(App. 196.) Hall then proposed “two measures”: that American
Eagle change the colors/embroidery of its logos and that
American Eagle pay Lyle & Scott a royalty fee of five percent
on sales made in territories where Lyle & Scott had established
its marks. (App. 196) In flagging this problem and proposing
solutions, Hall noted that he understood that this “contradict[ed]
the worldwide basis [American Eagle] sought to achieve at [the]
meeting.” This proposal also contradicted Hall’s January 26
email, in which he stated that Lyle & Scott would not seek to
restrict American Eagle from selling over the internet. (See
App. 184 (“[N]aturally we will not object to your internet selling
activities.”).) More telephone calls followed, but no settlement
was reached.
On February 10, 2006, Hall emailed Strohm to reiterate
Lyle & Scott’s position, again emphasizing that American Eagle
would not be permitted to register its mark in places where Lyle
& Scott had prior rights. He further stated that he understood
clause six to limit American Eagle’s registration to the United
States. (App. 644.) On March 3, 2006, Hall sent another email,
again stating that Lyle & Scott would not consent to American
Eagle registering or selling its products in areas where Lyle &
Scott had established prior rights. Strohm responded with the
following email on March 13, 2006:
During our meeting in London, we reached an
agreement (“London Agreement”) on the various
points at issue. At your specific request, we
prepared a list of the key terms prior to the end of
the meeting and you were given a copy. . . . If we

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11
understand your March 3 email, you are now
attempting to dramatically and materially change
the terms of the London agreement; indeed, your
proposal virtually emasculates it.
Following this email, the parties stopped communicating, and
the instant suit was filed. American Eagle promptly moved for
a declaratory judgment and specific performance of its
purported agreement with Lyle & Scott and its parent company,
HW.
II.
A.
We review a grant of summary judgment de novo, and
thus apply the same standard as that used by the District Court.
CAT Internet Servs. Inc. v. Providence Wash. Ins. Co., 333 F.3d
138, 141 (3d Cir. 2003).
A court may grant summary judgment if, drawing all
inferences in favor of the nonmoving party, “the pleadings, the
discovery and disclosure materials on file, and any affidavits
show that there is no genuine issue as to any material fact and
that the movant is entitled to judgment as a matter of law.” Fed.
R. Civ. P. 56(c). A motion for summary judgment will not be
defeated by “the mere existence” of some disputed facts, but
will be denied when there is a genuine issue of material fact.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).
In determining whether the dispute is genuine, the court’s
function is not to weigh the evidence or to determine the truth of
the matter, but only to determine whether the evidence of record
is such that a reasonable jury could return a verdict for the

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4Both parties concede that Pennsylvania law applies to
this dispute.
12
nonmoving party. Id. at 248-49. All inferences must be drawn
in the light most favorable to the nonmoving party. Pa. Prot. &
Advocacy, Inc. v. Pa. Dept. of Pub. Welfare, 402 F.3d 374, 379
(3d Cir. 2005) (“We are required to review the record and draw
inferences in a light most favorable to the nonmoving party, . .
. yet the nonmoving party must provide admissible evidence
containing ‘specific facts showing that there is a genuine issue
for trial.’” (quoting Fed. R. Civ. P. 56(e))). “[W]hen there is a
disagreement about the facts or the proper inferences to be
drawn from them, a trial is required to resolve the conflicting
versions of the parties.” Peterson v. Lehigh Valley Dist.
Council, 676 F.2d 81, 84 (3d Cir. 1982).
B.
In granting summary judgment for American Eagle, the
Magistrate Judge found that the parties had created an
enforceable contract, and further, that the terms of the contract
were not ambiguous. Although the Magistrate Judge
acknowledged that issues of this sort are typically decided by a
jury, she concluded that “no reasonable jury relying on the
evidence could resolve these issues in favor of [Lyle & Scott],”
Am. Eagle Outfitters, Inc. v. Lyle & Scott Ltd., No. 06-CV-607,
2008 WL 5101354, at *1 n.1 (W.D. Pa. Nov. 26, 2008), and thus
decided the case as a matter of law.4 We will address these
issues in turn: first, whether an enforceable contract was formed,
and second, whether the terms are sufficiently clear to warrant
summary judgment.

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5The other requirements of an enforceable contract, such
as consideration, are not contested by the parties. See Channel
Home Ctrs., 795 F.2d at 298-99 (noting that an enforceable
agreement requires a mutual intention to be bound, definite
terms, and consideration on both sides).
13
1.
The first issue before the Court concerns the
enforceability of the London Memorandum. “[T]he test for
enforceability of an agreement is whether both parties have
manifested an intention to be bound by its terms and whether the
terms are sufficiently definite to be specifically enforced.”5
Channel Home Ctrs. v. Grossman, 795 F.2d 291, 298-99 (3d
Cir. 1986) (citing Lombardo v. Gasparini Excavating Co., 123
A.2d 663, 666 (Pa. 1956)); see USA Machinery Corp. v. CSC,
Ltd., 184 F.3d 257, 263 (3d Cir. 1999).
a.
The first element of the test for enforceability of a
contract is whether both parties manifested an intention to be
bound. ATACS Corp. v. Trans World Commc’ns, Inc., 155
F.3d 659, 666 (3d Cir. 1998) (citing Channel Home Ctrs., 795
F.2d at 298-99)). In assessing intent, the object of inquiry is not
the inner, subjective intent of the parties, but rather the intent a
reasonable person would apprehend in considering the parties’
behavior. Ingrassia Constr. Co., Inc. v. Walsh, 486 A.2d 478,
483 (Pa. Super. Ct. 1984). Accordingly, “a true and actual
meeting of the minds is not necessary to form a contract.” Id.
The parties have differing versions of what was intended
by the London Memorandum. American Eagle argues that the

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London Memorandum reflected the parties’ mutual intent to
reach an agreement; Lyle & Scott, on the other hand, argues that
the London Memorandum was merely a stepping stone on the
way to further negotiations – a document that could be used as
the basis for a future contract.
Pennsylvania law has “long recognized the principle that
documents, having the surface appearance of contracts may be
in fact evidence of mere negotiating by parties with a view
toward executing a binding contract in the future.” Goldman v.
McShain, 247 A.2d 455, 458 (Pa. 1968). Accordingly, “[i]t is
hornbook law that evidence of preliminary negotiations or an
agreement to enter into a binding contract in the future does not
alone constitute a contract.” Channel Home Ctrs., 795 F.2d at
298; ATACS, 155 F.3d at 666-67 (“[I]t is well established that
evidence of preliminary negotiations or a general agreement to
enter a binding contract in the future fail as enforceable
contracts because the parties themselves have not come to an
agreement on the essential terms of the bargain and therefore
there is nothing for the court to enforce.”); Lombardo, 123 A.2d
at 666 (“Plaintiff’s testimony clearly shows that the parties
intended only to enter into a binding agreement sometime in the
future. In such a case, the preliminary negotiations do not
constitute a contract.”). On the other hand, however, “parties
may bind themselves contractually although they intend, at some
later date, to draft a more formal document.” Goldman, 247
A.2d at 459. Thus, “[m]utual manifestations of assent that are
in themselves sufficient to make a contract will not be prevented
from so operating by the mere fact that the parties also manifest
an intention to prepare and adopt a written memorial thereof . .
. .” Restatement (First) of Contracts § 26 (1932).

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6Lyle & Scott argues that in reaching this decision, the
Magistrate Judge improperly reversed the burden of proof
required to establish intent to contract. Specifically, Lyle &
Scott argues that rather than requiring American Eagle to
establish by a preponderance of the evidence that Lyle & Scott
intended to be bound by the London Memorandum, the
Magistrate Judge effectively required Lyle & Scott to prove that
it did not intend to be bound by the London Memorandum. We
are not persuaded by this argument. The Magistrate Judge laid
out the standard correctly, and noted that the burden was on
American Eagle to prove the existence of the contract. Am.
Eagle Outfitters, 2008 WL 5101354, at *7. When the
Magistrate Judge did phrase her conclusions in double negative
form – stating, essentially, that Lyle & Scott did not demonstrate
that it intended not to be bound by the London Memorandum –
she was responding to a specific argument by Lyle & Scott that
the parties had affirmatively expressed the intent not to be
bound. The Magistrate Judge observed:
The Defendants argue first that those attending
the London Meeting expressed the intent “not to
be bound until a formal written agreement had
been executed by the [parties’ principals.]” The
record belies this argument. The evidence does
not show that any of the parties addressed or
manifested in any way an understanding that they
15
The Magistrate Judge decided this case as a matter of
law, holding that both American Eagle and Lyle & Scott
intended the London Memorandum to be a contract, and that no
reasonable jury could decide otherwise.6 We agree.

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would not be bound by the terms of the London
Memorandum.
Id. at *8 (alteration in original). Here, the Magistrate Judge’s
statements merely served to negate Lyle & Scott’s specific
arguments – not invert the burden of proof.
16
Although Lyle & Scott argues that the parties were
merely setting the parameters for a future agreement during their
London meeting, Peter Hall, Lyle & Scott’s lead negotiator,
consistently acted as if an agreement had been formed. This is
seen most clearly in Hall’s own words. During the meeting in
London, Hall took copious notes, detailing both his negotiations
with American Eagle as well as his conversations with Harris,
his employer and HW’s principal. The notes of these latter
conversations are particularly instructive. During the lunch
break of the London meeting, Hall telephoned Harris and
updated him on the status of negotiations. He advised Harris
that American Eagle would neither change its logo nor cease
selling over the Internet, and that American Eagle would rather
fight it out in court than concede either point. Before ending the
phone call, Hall advised Harris that there were two basic
options: “settle or fight.” (App. 642.)
Later in the lunch break, Hall and Harris spoke again and
discussed possible settlement parameters. Harris conveyed
Watson’s desire to keep American Eagle out of the golf market.
The pair also discussed acceptable dollar figures, which Hall
transcribed in the following note: “If can settle @ $£250 –>
settle + take it . . . (“Just to be clear . . . accept co-existence if
pay £¼ m . . . yes”). (App. 642.) From this conversation, Hall

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7We concur with the thorough reasoning of the
Magistrate Judge in regard to the parties’ mutual decision not to
include “without prejudice” language on the London
Memorandum. The purpose of discussing potential settlements
“without prejudice” is to “encourage contract formation by
freeing the parties from fear that their words could be used
against them if settlement failed . . . .” Am. Eagle Outfitters,
2008 WL 5101354, at *13. It makes little sense to say that the
previous use of such language in settlement communications
would prevent the parties from reaching a binding contract if
and when they decided to do so.
17
was evidently empowered to accept any settlement that reached
£250,000.
After speaking with Harris, Hall made notes which he
captioned “Negotiating Pts.” In these notes, he stated that
“ideally” Lyle & Scott wanted £1,000,000 from American
Eagle. However, he noted that if parties could settle on a figure
of £500,000 or $1,000,000, Hall should “call it” and make the
deal. After some negotiating, Hall achieved the million dollar
figure. The parties then moved on to the other terms of their
“coexistence agreement,” (App. 643) and the London
Memorandum was generated from this discussion.
After the parties arrived at an acceptable set of terms,
Hall behaved as if an agreement had been formed. It was Hall
who recommended that the parties set out the London
Memorandum in writing. Neither party suggested that the
“without prejudice” language – which had been inserted into all
their previous communications – be included in the London
Memorandum.7 Hall then offered to sign the London

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8It’s not absolutely clear whether Hall attributed this
question to himself, Harris, or Watson. For the purposes of this
discussion, however, it is of no consequence.
18
Memorandum, and would have done so had not Strohm told him
that she would soon send him a formal letter version of the
agreement, which he could sign instead. Thus, having seen fit
to “call it” and make a deal for $1,000,000, Hall was quite
willing to sign a written agreement stating that “the Parties agree
as follows” before he even left the negotiating table.
In the weeks and months that followed, Hall consistently
referred to the settlement reached in London as an “agreement.”
On January 30, 2006, six days after Strohm emailed Hall the
draft agreement, and three days after Hall expressed his concern
over whether the draft language permitted American Eagle to
register outside the United States, Hall met with Harris and
Watson to discuss next steps. In his notes of that meeting, Hall
recorded the following question, “[w]hat have we agreed/what
do they think we agreed,” indicating that Hall and/or the
principals of HW believed that an agreement of some form had
been reached in London. (App. 643.) 8 Even as late as February
10, 2009 – when the parties were clearly at odds over their
interpretations of the London Memorandum language – Hall
was still referring to what transpired in London as “an
agreement.” (App. 644 (“When we came to an agreement . . . I
suggested we set [out the terms] in writing then and there.”).)
The evidence that Lyle & Scott intended to enter a
binding agreement is, frankly, overwhelming. The “objective
manifestations” of Hall’s intent – both his actions and his words
(whether those words were emailed, transcribed, or said aloud)

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19
– show that Hall intended to enter a contract, and that he
considered the London Memorandum to be a binding agreement.
Ingrassia Constr. Co., Inc. v. Walsh, 486 A.2d 478, 483 (Pa.
Super. Ct. 1984) (“In ascertaining the intent of the parties to a
contract, it is their outward and objective manifestations of
assent, as opposed to their undisclosed and subjective intentions,
that matter.”). As we see it, the only plausible argument that
Lyle & Scott makes regarding the issue of intent relates to
whether American Eagle, not Lyle & Scott, intended to contract.
Specifically, Lyle & Scott argues that because Strohm told Hall
not to sign the London Memorandum, American Eagle did not
intend to form a binding contract in London. We are, however,
unconvinced. Signatures are not dispositive evidence of
contractual intent. See Commerce Bank/Pennsylvania v. First
Union Nat’l Bank, 911 A.2d 133, 145-46 (Pa. Super. Ct. 2006)
(“‘As a general rule, signatures are not required for a binding
contract unless such signing is expressly required by law or by
the intent of the parties.’” (quoting Shovel Transfer & Storage,
Inc., v. Pa. Liquor Control Bd., 739 A.2d 133, 136 (Pa. 1999))).
The parties, therefore, did not need to sign the London
Memorandum to reflect their intent that it form a binding
contract. Moreover, the record before us shows that American
Eagle’s negotiators comported themselves during the London
meeting in a manner that indicated that they, like Hall, believed
that a deal had been struck. Fiore recollected that stating “we
have a deal” (or something to similar effect) once the meeting
ended, indicating American Eagle’s intent to contract in clear,
objective terms that matched Hall’s apparent belief in the same.
(App. 969.) In this light, we agree with the Magistrate Judge
that Strohm’s offer to generate a more fleshed out version of
their agreement did not bear on the parties’ intent to form a

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9At some point after the London meeting, Lyle & Scott
developed second thoughts about the contract terms that it had
agreed to with American Eagle. Compare, e.g., London
Memorandum (App. 170) (“AE to sell products in AE stores,
stores within stores or AE website”) and Hall Notes (App. 643)
(“[R]estrict to AEO outlets/internet”) and Hall Email of January
26, 2006 (App. 198) (“[N]aturally we will not object with your
internet selling activities . . . .”) with Hall Email of January 31,
2009 (App. 196) (“[W]e now have significant issues in allowing
you to trade into territories outside America.”). Those regrets,
however, have no bearing on whether the two parties intended
to form an agreement during their meeting in London. We
believe any reasonable jury would see past Lyle & Scott’s
second-thoughts and find that both parties intended to form a
contract.
20
contract. Goldman v. McShain, 247 A.2d 455, 459 (Pa. 1968)
(“[P]arties may bind themselves contractually although they
intend, at some later date, to draft a more formal document.”).
For these reasons, we believe that both Lyle & Scott and
American Eagle intended to create a binding contract during the
London meetings, and, as the Magistrate Judge concluded, that
no reasonable jury could see it otherwise.9
b.
It is not enough, of course, that the parties intended to
contract. “[I]n order for there to be an enforceable contract, the
nature and extent of its obligation must be certain; the parties
themselves must agree upon the material and necessary details
of the bargain.” Lombardo v. Gasparini Excavating Co., 123
A.2d 663, 666 (Pa. 1956). In other words, we look to see

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21
whether “the terms are sufficiently definite to be specifically
enforced.” Channel Home Ctrs. v. Grossman, 795 F.2d 291,
298-99 (3d Cir. 1986). Whether the terms are sufficiently
definite is a question of law. Cf. id. at 300 (finding terms to be
sufficiently definite to warrant enforcement of the contract).
Lyle & Scott argues that even if the parties had sufficient
intent to form a contract, the terms of the London Memorandum
pertaining to registration – in particular, terms four and six – are
too ambiguous to be enforced, and thus the entire contract is
unenforceable. Mazzella v. Koken, 739 A.2d 531, 537 (Pa.
1999) (“If, however, there exist ambiguities and undetermined
matters which render a settlement agreement impossible to
understand and enforce[,] such an agreement must be set aside.”
(alteration in original) (internal quotation marks omitted)). This
goes too far. Lyle & Scott is correct to assert that under certain
circumstances, a contract could be so vague that a court might
find the contract “impossible to understand and enforce.” Id. In
Lombardo, for example, a case relied upon by Lyle & Scott, the
Pennsylvania Supreme Court found that a specific contract
failed for indefiniteness, noting that the enforceability of a
contract depends upon certainty of the parties’ obligations and
mutual agreement over the necessary details of the bargain.
Lombardo, 123 A.2d at 666. In that case, however, “there was
no agreement or even discussion as to any of the essential terms
of the alleged bargain such as time or manner of performance,
price to be paid, or the like.” Id. There the contract was clearly
indefinite – the parties had never reached any kind of accord
over the necessary components of their deal. We, however, are
not faced with such a contract. The agreement reached between
American Eagle and Lyle & Scott covered all the necessary
bases – there are no undetermined matters – and the agreement

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22
is not impossible to understand. To the extent that we think
there is some ambiguity in the meaning of clauses four and six,
it is the more garden-variety type of ambiguity relating to
contractual interpretation. Disputes over the meaning of a given
phrase are common in contract disputes; the presence of such
interpretative ambiguity, however, does not go to whether the
contract is enforceable, but rather who (the judge or the jury)
must decide what the given clause means. See, e.g., Ram
Constr. Co. v. Am. States Ins. Co., 749 F.2d 1049, 1052 (3d Cir.
1984) (“When the agreement is in writing, ambiguous terms are
interpreted by the jury, unambiguous ones by the court.”). To
hold otherwise would improperly transform run-of-the-mill
challenges to the interpretation of contractual language into far
more significant disputes over contractual enforceability.
Lyle & Scott also argues that we should rely on Mazzella
v. Koken, another Pennsylvania Supreme Court case. 739 A.2d
531 (Pa. 1999). Mazzella, however, is also distinguishable. In
Mazzella, the parties orally agreed to settlement terms. Mazella
drafted its understanding of the terms into a formal document
and sent them to the defendant. The defendant, however,
substantially modified the document before returning it to
Mazzella, who in turn refused to sign. On these facts, the court
found that the parties had not formed a contract: because the
parties never reached a meeting of the minds on the essential
terms of the agreement, the draft agreements the two parties
exchanged were more properly seen as offers and counter-offers,
not mere memorializations of a previously agreed-to contract.
Id. at 538. The situation before us, however, is far different.
Here, the parties reduced their agreement to writing in each
others’ presence, addressed all the salient points of concern to
the parties, and even collaborated on the language. In fact, the

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23
allegedly ambiguous registration language in clause six was
actually proposed by Lyle & Scott, the party that now argues
that the language is too indefinite to be enforced. (App. 373.)
Whereas in Mazzella it may have been “impossible to
understand” what the parties agreed to because their initial
efforts at memorializing the agreement differed so wildly, here
we know exactly what terms the parties agreed to. Therefore,
any ambiguity that flows from the language they used to craft
the terms of their agreement is more properly seen as a dispute
over the interpretation of the contract, not the definiteness (and
thus enforceability) of the contract.
We agree with the Magistrate Judge that the terms of the
London Memorandum are sufficiently definite to warrant
enforcement. The parties addressed all the essential issues that
necessitated their meeting in London: the use of the eagle logo,
American Eagle’s right to sell its products online and overseas,
the payment of taxes and attorneys’ fees, American Eagle’s
withdrawal from the golf market, and the scope and nature of
each parties’ registration. Because no key matters were left
undetermined, all the material terms were addressed, and we do
not find the contract impossible to understand, the contract
cannot be set aside for indefiniteness. See id.
In sum, we find that the parties intended to form an
agreement, and that the terms of that agreement do not fail for
indefiniteness. Accordingly, we agree with the Magistrate
Judge that the London Memorandum formed a binding contract
between American Eagle and Lyle & Scott.
2.
For the reasons noted above, we agree with the

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24
Magistrate Judge that American Eagle and Lyle & Scott agreed
to an enforceable contract. We do not find, however, that the
terms agreed to by the parties are sufficiently unambiguous to
permit judicial interpretation of the contract. For the reasons
that follow, we believe that the text of clauses four and six,
insofar as they address the issue of registration, are ambiguous,
necessitating fact-finding by a jury.
a.
“[A]s a preliminary matter, courts must determine as a
matter of law which category written contract terms fall into –
clear or ambiguous.” Duquesne Light Co. v. Westinghouse
Elec. Corp., 66 F.3d 604, 613 (3d Cir. 1995) (internal quotation
marks omitted). The common law has long recognized that, as
a general matter, interpretation of a written agreement is a task
to be performed by the court rather than a jury. Gonzalez v.
U.S. Steel Corp., 398 A.2d 1378, 1385 (Pa. 1979); Allegheny
Int’l v. Allegheny Ludlum Steel Corp., 40 F.3d 1416, 1424 (3d
Cir. 1994) (“Under Pennsylvania law, ambiguous writings are
interpreted by the fact finder and unambiguous writings are
interpreted by the court as a question of law.”). Adherence to
this approach “contributes to the stability and predictability of
contractual relations and provides a method of assuring that like
cases will be decided alike.” Gonzalez, 398 A.2d at 1385
(internal quotation marks omitted). However, this approach –
judicial interpretation of contract – only holds so long as the
words of the contract are clear and unambiguous, or the extrinsic
evidence is conclusive. Martin v. Monumental Life Ins. Co.,
240 F.3d 223, 233 (3d Cir. 2001) (“If the contract terms are
ambiguous or incomplete, and extrinsic evidence is examined,
interpretation of the contract becomes a question of fact, unless

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25
the extrinsic evidence is conclusive.”). In circumstances where
the language chosen by the parties is ambiguous, deciding the
intent of the parties becomes a question of fact for a jury.
Community Coll. of Beaver County v. Community Coll. of
Beaver, 375 A.2d 1267, 1275 (Pa. 1977).
b.
“The paramount goal of contract interpretation is to
determine the intent of the parties.” Garden State Tanning, Inc.
v. Mitchell Mfg. Group, Inc., 273 F.3d 332, 335 (3d Cir. 2001)
(citing Meeting House Lane, Ltd. v. Melso, 628 A.2d 854, 857
(Pa. Super. Ct. 1993)). Pennsylvania contract law begins with
the “firmly settled” principle that “the intent of the parties to a
written contract is contained in the writing itself.” Krizovensky
v. Krizovensky, 624 A.2d 638, 642 (Pa. Super. Ct. 1993) (citing
Steuart v. McChesney, 444 A.2d 659, 661 (Pa. 1982)). “When
the words are clear and unambiguous,” the intent of the parties
must be determined from “the express language of the
agreement.” Steuart, 444 A.2d at 661 (“[T]he focus of
interpretation is upon the terms of the agreement as manifestly
expressed, rather than as, perhaps, silently intended.”).
Accordingly, “‘[w]here the intention of the parties is clear, there
is no need to resort to extrinsic aids or evidence.’” Id. (quoting
E. Crossroads Ctr., Inc. v. Mellon-Stuart Co., 205 A.2d 865, 866
(Pa. 1965)). “Clear contractual terms that are capable of one
reasonable interpretation must be given effect without reference
to matters outside the contract.” Krizovensky, 624 A.2d at 642.
On the other hand, a contract is ambiguous, and thus
presents a question of interpretation for a jury, if the contract
“‘is reasonably susceptible of different constructions and
capable of being understood in more than one sense.’”

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26
Allegheny Int’l, 40 F.3d at 1425 (quoting Hutchison v. Sunbeam
Coal Corp., 519 A.2d 385, 390 (Pa. 1986)); Bohler-Uddeholm
Am., Inc. v. Ellwood Group, Inc., 247 F.3d 79, 93 (3d Cir.
2001) (“[A] contract will be found ambiguous if, and only if, it
is reasonably or fairly susceptible of different constructions and
is capable of being understood in more senses than one and is
obscure in meaning through indefiniteness of expression or has
a double meaning.” (quoting Duquesne Light Co., 66 F.3d at
614 (internal quotation marks omitted))). Under such
circumstances, a court may look “outside the ‘four corners’ of
[the] contract . . . [and] receive extrinsic evidence, i.e., parol
evidence, to resolve the ambiguity.” Id.
c.
The Magistrate Judge held that the two terms that discuss
the issue of registration – clauses four and six – were not
ambiguous, and that the London Memorandum did not in any
way restrict American Eagle’s ability to register its mark. Those
terms read as follows:
Perpetual and worldwide pertaining to goods of
LS registrations
. . .
Each party shall consent to the registration of the
other’s eagles and AE shall withdraw its
opposition against LS application in the US
(App. 170.) The Magistrate Judge held that the “clear import”
of clause four was that “the co-existence agreement made
between AE and [LS] was unlimited, encompassing every type

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10
For example, Hall’s notes from the London meeting say,
simply: “will register their logo but allow/not oppose ours.”
This evidence is insufficiently conclusive to warrant judicial
construction of the contract.
27
of good for which [LS] had registered its mark.” Am. Eagle
Outfitters, 2008 WL 5101354, at *20. The Magistrate Judge
held that clause six was also unambiguous, noting in a footnote
that had “LS intended to limit the areas in which AE was
permitted to register its mark, it could have done so clearly and
explicitly.” Id. at *20 n.13.
Although we agree that the Magistrate Judge’s
construction of the registration provisions is reasonable, we
cannot find that it is the only reasonable interpretation. The
London Memorandum, in part through the informal nature of its
production, is not a prime example of clear drafting, and is
marked by incomplete sentences and haphazard punctuation.
See Allegheny Int’l, 40 F.3d at 1425 (noting that “a patent
ambiguity is that which appears on the face of the instrument,
and arises from the defective, obscure, or insensible language
used.” (internal quotation marks omitted)). While the language
in question could be interpreted to mean that American Eagle
would be permitted to register its mark in any of the numerous
countries where Lyle & Scott holds trademark rights, we do not
find it unreasonable to read the language as limiting actual
registration to the United States forum. Nor do we find the
parole evidence available on the issue particularly
enlightening.10 In short, in light of the lack of clarity in the
registration-related provision of the London Memorandum, we
cannot state that the contract’s terms are unambiguous, or that

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11While I agree there is ambiguity, I do not join all of Judge
Fuentes’s opinion on this point. To the extent his conclusions about
the ambiguities are couched in language assuming a contract existed,
I part company with him, for the reasons stated herein, though I do
agree that, were there a contract, the language is not so ambiguous as
to be beyond enforcement. I also disagree with Judge Nygaard, who
concludes in a partial dissent that the language of the fourth and sixth
clauses of the London Memorandum is “crystal clear.” Nowhere in
28
there is only one reasonable way to read the contract.
Accordingly, we will remand the case to the Magistrate Judge
so that a jury can interpret the contract’s provisions discussing
the respective registration rights of the parties.
III.
For the reasons stated above, we agree with the
Magistrate Judge that the London Memorandum formed a
binding contract between American Eagle and Lyle & Scott, but
we find that the terms of that contract were sufficiently
ambiguous to warrant interpretation by a jury.
American Eagle Outfitters, Inc., et al. v. Lyle & Scott Ltd., et al.,
No. 08-4807
JORDAN, Circuit Judge, concurring in part and dissenting in
part
I agree with Judge Fuentes that the London
Memorandum is ambiguous as to the registration rights that the
parties were prepared to grant each other.11 But I also believe

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that document is it stated that the parties agreed to give each other
perpetual and worldwide registration rights. To the contrary, while
the parties might have intended something to be “perpetual and
worldwide pertaining to goods of LS registrations” (App. 645), the
London Memorandum itself gives little clue as to what that
something is. Although that language might relate to registration
rights, it is also quite plausible that it only provides American Eagle
with a perpetual and worldwide license to sell goods of LS
registrations. That interpretation is bolstered by the parties’ decision
to deal specifically with registration in a separate clause.
29
that American Eagle has failed to establish that it is entitled to
summary judgment on whether the parties manifested an intent
to be bound by the jottings in that very brief document. I
believe there remains a material question of fact as to the
parties’ intent, and, accordingly, would let a jury determine
whether there was a contract at all.
Under Pennsylvania law, which the parties have treated
as controlling, “the test for enforceability of an agreement is
whether both parties have manifested an intention to be bound
by its terms and whether the terms are sufficiently definite to be
specifically enforced.” Channel Home Ctrs., Div. of Grace
Retail Corp. v. Grossman, 795 F.2d 291, 298-99 (3d Cir. 1986)
(citing Lombardo v. Gasparini Excavating Co., 123 A.2d 663,
666 (Pa. 1956)). We have sanctioned a factfinder’s use of a
number of criteria in order to evaluate whether the parties
manifested an intent to be bound, including,

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30
whether the contract is of that class which are
usually found to be in writing, whether it is of
such nature as to need a formal writing for its full
expression, whether it has few or many details,
whether the amount involved is large or small,
whether it is a common or unusual contract, [and]
whether the negotiations themselves indicate that
a written draft is contemplated as the final
conclusion of the negotiations.
In re ABC-Federal Oil & Burner Co., 290 F.2d 886, 889 (3d
Cir. 1961) (quoting Mississippi & Dominion Steamship Co. v.
Swift, 29 A. 1063, 1067 (Me. 1894)); see Price v. Confair, 79
A.2d 224, 226 (Pa. 1951) (determining intent with reference to
things such as “the surrounding circumstances, the situation of
the parties, the objects they apparently have in view, and the
nature of the subject-matter of the agreement.”); see also
Consarc Corp. v. Marine Midland Bank, N.A., 996 F.2d 568,
575-76 (2d Cir. 1993) (suggesting the following factors: (1)
number of terms agreed upon compared to total number to be
included in a formal document; (2) relationship of the parties;
(3) degree of formality attending similar contracts; (4) acts of
partial performance by one party accepted by the other; (5)
usage and custom of the industry; (6) subsequent conduct and
interpretation by the parties themselves; (7) whether writing is
contemplated merely as “memorial;” (8) whether contract needs
a formal writing for its full expression; (9) whether any terms
remain to be negotiated; (10) whether the supposed contract has
few or many details; (11) whether amount involved is large or
small; (12) whether a standard form is widely used in similar

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31
transactions or whether this is an unusual type of contract; (13)
the speed with which the transaction must be concluded; (14)
the simplicity or complexity of the transaction; (15) the
availability of information necessary to decide whether to enter
into a contract; and (16) the time the supposed contract was
entered). With the variety of issues and evidence available for
review in evaluating whether there has been a manifestation of
intent to form a contract, it is no surprise that, as the Magistrate
Judge’s opinion notes, such an issue is “rarely appropriate for
disposition by the Court.” American Eagle Outfitters, Inc. v.
Lyle & Scott Ltd., No. 2:06-cv-00607, 2008 WL 5101354, at *1
(W.D. Pa. Nov. 26, 2008); see id. at *7 (reciting the 16 factors
listed in Consarc).
A reasonable jury in this case could conclude that the
requisite manifestation was absent, based on a number of
elements in the record.
First, both Hall and Fiore testified that they believed the
term “without prejudice” – the term that indisputably applied to
the parties’ London meeting – meant “non-binding.” (App.
951:20-952:12 (Fiore Depo); App. 340 at 126:18-127:2 (Hall
Depo).) The legal significance of “without prejudice” may be
relevant (see Maj. Op. at n.7), but it is hardly dispositive in light
of the testimony from both parties’ non-lawyer representatives
indicating their particular understanding of the term. A jury
could reasonably conclude that the “without prejudice” label
they hung on the meeting, if not on the document, manifested an
intent not to be bound by anything that occurred during the

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12In Commerce Bank, the trial court had decided that an
unsigned settlement agreement was enforceable, but only after it had
held an evidentiary hearing. 911 A.2d at 146-47. The Superior Court
affirmed the trial court’s ruling. Id.
32
meeting.
Second, the London Memorandum is unsigned. Of
course, Pennsylvania law does not require a signature in order
for an agreement of the kind at issue here to be binding.
Commerce Bank/Pennsylvania v. First Union Nat’l Bank, 911
A.2d 133, 145-46 (Pa. Super. Ct. 2006). 12 Importantly,
however, American Eagle’s in-house counsel, Strohm,
specifically told Hall, who is not an attorney, to refrain from
signing the list of bullet points at the conclusion of their
meeting. From the deposition transcripts alone, it is hard to tell
how emphatically Strohm delivered that instruction to Hall, but
a jury could reasonably conclude that she effectively conveyed
to Hall an intent not to be bound by the hand-written notes that
emerged from the meeting. That conclusion is especially
reasonable in light of the Delaware choice-of-law provision that
Strohm included in the draft formal document that she later
circulated, which indicates that she believed the London
Memorandum would not be binding without a signature. See
Del. Code Ann. tit. 6, § 2714(a) (prohibiting enforcement of an
obligation lasting more than a year, unless the contract giving
rise to the obligation is reduced to a signed writing); Shovel
Transfer & Storage, Inc. v. Pennsylvania Liquor Control Bd.,
739 A.2d 133, 136 (Pa. 1999) (“As a general rule, signatures are
not required unless such signing is expressly required by law or

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13
Fiore’s self-serving testimony that, at the end of the meeting,
he “probably said something to the effect that we have a deal” (App.
969:22-23) is hardly conclusive evidence that American Eagle
manifested an intent to be bound. Hall, whose deposition was taken
earlier, never had a chance to address Fiore’s description of events.
Similarly, Strohm’s later email to Hall stating that “[d]uring our
meeting in London, we reached an agreement (‘London Agreement’)
on the various points at issue” (App. 1194) was the last
communication between the parties before this suit was filed and can
reasonably be seen as mere pre-litigation posturing.
33
by the intent of the parties.”).13
Third, American Eagle appeared to act inconsistently
with the London Memorandum. The sixth bullet point by which
the parties allegedly agreed to be bound states, “Each party shall
consent to the registration of the other’s eagle and AE shall
withdraw its opposition against LS application in the US.”
(App. at 645.) Whatever that means, it certainly does not mean
that American Eagle was free to file an opposition to Lyle &
Scott’s trademark application in the United States. Yet it did
just that, approximately one month after the parties supposedly
reached their binding agreement. See Retail Royalty Co. v. Lyle
& Scott Ltd., Opposition No. 91169126 (T.T.A.B. filed Feb. 8,
2006). A jury could reasonably infer from American Eagle’s
filing that the parties had not sufficiently conveyed to each other
an intent that the London Memorandum bind them.
Fourth, the striking brevity and lack of formality in the

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34
alleged agreement is at odds with the extent of the commitments
that the parties were negotiating to undertake. The Magistrate
Judge observed that “the London Memorandum certainly lacks
the formality one normally associates with a contract for so
significant a venture,” and yet the Judge concluded that the lack
of formality was insignificant. American Eagle Outfitters, Inc.,
2008 WL 5101354, at *10. That conclusion is open to
reasonable debate and therefore cannot support summary
judgment. Although the Magistrate Judge did not cite authority
for her conclusion, the language she used tracks that previously
used by the Pennsylvania Supreme Court in Goldman v.
McShain, 247 A.2d 455, 458 (Pa. 1968) (“While this document
certainly lacks the formality one normally associates with a
contract for so significant a venture, it seems fairly certain that
the instrument shows that the parties agreed to construct the
theater ... .”). Goldman, however, suggests that a jury should
consider the distinct disparity between the rough-notes nature of
the London Memorandum and the highly significant legal
venture the parties contemplated. It is noteworthy that the court
in Goldman did not say that the existence of a contract had been
established in that case as a matter of law; it held just the
opposite, saying, “it is not at all clear from the pleadings in the
present case that Goldman and McShain did not consummate a
binding agreement. Only a trial can uncover this crucial fact.”
Id. at 459 (emphasis added). Similarly, the Magistrate Judge
should have recognized, as should we, that the question of
whether the parties before us stumbled into a perpetual and
worldwide trademark coexistence agreement is one for the jury.
Fifth, and finally, the parties were unable to reach a more

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35
formal agreement. To be sure, “parties may bind themselves
contractually although they intend, at some later date, to draft a
more formal document.” Goldman, 247 A.2d at 459; see Melo-
Sonics Corp. v. Cropp., 342 F.2d 856, 859-60 (3d Cir. 1965)
(“[I]t is well-settled in Pennsylvania that where the parties have
settled upon the essential terms and the only remaining act to be
done is the formalization of the agreement, the latter is not
inconsistent with the present contract ... .”). But these rules do
not prevent Lyle & Scott from relying on the parties’ failure to
draft a formal document as evidence that a question of intent
remains for trial. In fact, both the Goldman court, as noted
above, and the Melo-Sonics court remanded for trial the question
of whether an agreement existed. Goldman, 247 A.2d at 459;
Melo-Sonics, 342 F.2d at 860 (“Whether this plaintiff can
establish the facts which he has alleged in his complaint and
bring himself within the rule above discussed is a matter which
only a trial can settle ... .”); see also Building Mart, Inc. v.
Allison Steel Mfg. Co., 380 F.2d 196, 199 (10th Cir. 1967) (“The
question whether the parties intended any prior agreement to be
binding notwithstanding a contemplated later written
memorialization ... was a question of fact inappropriate for
summary resolution”). Thus, certain differences and later
disagreements about what terms should be in the formal
document may support an inference, left for the factfinder to
accept or reject, that the parties did not intend the London
Memorandum to control.
One type of evidence that ought not play a role in
evaluating the parties’ manifestation of intent is evidence of
things never expressed by one side to the other. Contracting

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36
parties must outwardly and objectively demonstrate their intent
to be bound; subjective beliefs and reservations are irrelevant.
See Long v. Brown, 582 A.2d 359, 363 (Pa. Super. Ct. 1990)
(“[O]bjective manifestation is the governing factor, regardless
of subjective beliefs and reservations.”). The majority’s
acknowledgment that subjective intent is irrelevant is at odds
with its statement that Hall’s notes of his conversations with his
employer are “particularly instructive” and that they support a
conclusion that he “consistently” referred to the settlement as an
agreement. (See Maj. Op. at II.B.1.a.) Lyle & Scott’s internal
discussions are only relevant if we infer that Hall somehow
conveyed the substance of those discussions to American Eagle.
But that inference is inappropriate for us to make at the
summary judgment stage. See Siegel Transfer, Inc. v. Carrier
Exp., Inc., 54 F.3d 1125, 1127 (3d Cir. 1995) (“In considering
a motion for summary judgment, a court ... must view facts and
inferences in the light most favorable to the party opposing the
motion.”). Indeed, we are bound to make inferences in favor of
the non-movant, and in this instance one could surely infer that
Lyle & Scott’s internal thoughts were not conveyed to American
Eagle since one is generally less open with adversaries than with
one’s own side.
My colleagues express a concern that Lyle & Scott is
now backpedaling from a proposal that its agent appeared all too
eager to accept when he was at the bargaining table. (Maj. Op.
at n.9.) I share that concern. The law of Pennsylvania,
however, states that both parties must manifest an intent to be
bound, and, until that happens, each side is free to have second
thoughts. Where, as here, competing inferences are possible, the

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37
law does not allow us to take away from a jury the question of
whether such an intent was conveyed.
I am not suggesting that the evidence presented clearly
shows that Lyle & Scott is entitled to disregard the London
Memorandum. A jury might conclude from certain parts of the
record in this case that the parties actually did manifest an intent
to be bound. The very existence of the document at issue,
especially the preliminary statement in the document that the
“[p]arties agree as follows” (App. at 645), is strong evidence of
a manifestation of intent. See In re ABC-Federal Oil & Burner
Co., 290 F.2d at 889 (“If a written draft is proposed, suggested,
or referred to during the negotiations, it is some evidence that
the parties intended it to be the final closing of the contract.”)
(quotation omitted). And some of the emails between the parties
subsequent to their meeting provide support for American Eagle,
particularly the one from Hall stating that the parties “came to
an agreement.” (App. at 644.)
Nevertheless, it is fundamental under Federal Rule of
Civil Procedure 56 that we must acknowledge evidence that
supports a different conclusion than the one proposed by the
party moving for summary judgment, even if that evidence does
not directly speak to parts of the record that, standing alone,
support the movant’s case. Big Apple BMW, Inc. v. BMW of
North America, Inc., 974 F.2d 1358, 1363 (3d Cir. 1992). In
other words, Lyle & Scott does not need to match, item for item,
each piece of evidence proffered by American Eagle in order to
raise a genuine issue of material fact. Because of the bad taste

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38
left by Lyle & Scott’s negotiating tactics, we have, I fear,
ventured into weighing evidence and usurped the role of the
factfinder.
For the foregoing reasons, I concur that remand is
appropriate so that a jury may attempt to determine what the
parties intended to say in the London Memorandum. I
respectfully dissent, however, to the extent that our decision
prevents the jury from considering whether an enforceable
contract exists at all.
American Eagle Outfitters v. Lyle & Scott, No. 08-4807
NYGAARD, Circuit Judge, dissenting in part.
My colleague Judge Fuentes has written a thorough and
well-crafted opinion for the Court and I join it in almost every
aspect. I believe that Lyle & Scott and American Eagle
intended to create a binding contract during their meetings in
London and I agree that no reasonable jury could conclude
otherwise. Further, I agree with Judge Fuentes’ determination
that this agreement’s terms are sufficiently definite to be
specifically enforced. See USA Machinery Corp. v. CSC, Ltd.,
184 F.3d 257, 263 (3d Cir. 1999). I part company with him
because I do not find clauses four and six to be ambiguous.

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14 Lyle & Scott did not argue that this clause was
ambiguous before the Magistrate Judge.
39
Pennsylvania law presumes that a contract conveys the
parties’ intentions to be bound. We have held, therefore, that a
contract will be found ambiguous only if it is reasonably or
fairly susceptible to different constructions, capable of being
understood in more than one sense, obscure in meaning through
indefiniteness of expression or its words have a double meaning.
See Bohler-Uddeholm America Inc. v. Ellwood Group, Inc., 247
F.3d 79, 93 (3d Cir. 2001). My colleagues believe that clauses
four and six of the agreement are reasonably susceptible to
different constructions. Specifically, Judge Fuentes and Judge
Jordan believe that it is reasonable to read the language of these
clauses as limiting registration to the United States. I cannot
agree.
I find the language of the clauses crystal clear as it
pertains to registration rights. First, such rights were to be
“perpetual and worldwide.” To me, the term “worldwide”
indicates a global dimensionality and cannot reasonably be
interpreted as limiting registration only to the United States. I
can interpret this clause no other way. Therefore, I agree with
Magistrate Judge Hay that the only way to construe this clause
is that American Eagle would be permitted to register its mark
globally. I find clause six equally pellucid. It provides that each
party will consent to the registration of the other’s marks and
that American Eagle would withdraw its objections to Lyle &
Scott’s registration of its mark in the United States. 14 I find no

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40
latent ambiguity here.
Pennsylvania’s parol evidence rule mandates that when
a written contract is clear and unequivocal, its meaning must be
determined by its contents alone. East Crossroads Ctr., Inc. v.
Mellon-Stuart Co., 205 A.2d 865, 866 (Pa.1965). Putting the
majority’s dismissal aside, were I to find these clauses
ambiguous, the available parol evidence supports my
interpretation. The documentary evidence on the record in this
case clearly indicates that the parties were working toward an
international, global solution to their dispute and in no way were
limiting their negotiations to the United States market. The
record contains requests for European sales figures, inquiries by
Lyle & Scott into American Eagle’s international activities, and
references in e-mails to the “worldwide” nature of the parties’
dispute, among other things. Further, the records clearly
demonstrates that the London meeting’s discussion focused
extensively on the international aspects of the parties’
businesses. In summing up various aspects of the London
Meeting, Lyle & Scott negotiator Hall wrote that American
Eagle “will register their logo but allow/not oppose ours.”
Hall’s notes do not evidence any notion that the discussions on
registration of the companies’ marks were limited to the United
States.
In sum, while I agree with the majority that a contract
was formed and that its terms were sufficiently definable, I
cannot agree with my colleagues’ view that clauses four and six
of the agreement were ambiguous. I would affirm the
Magistrate Judge’s opinion in its entirety.

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