United States District Court, D. Nebraska
MEMORANDUM AND ORDER
Laurie
Smith Camp Chief United States District Judge
This
matter is before the Court on the Motion to Change Venue or,
Alternatively, to Stay, ECF No. 97, filed by Plaintiff
Buc-ee's Limited, and on the Motion to Stay Case
Progression, ECF No. 92, filed by Defendants Bucks, Inc., and
Steven Buchanan. For the reasons stated below, Buc-ee's
Motion will be denied and the Defendants' Motion will be
granted.
BACKGROUND
Buc-ee's
owns and operates convenience stores throughout Texas under
its registered “BUC-EE'S” trademark. Steve
Buchanan is the president and sole capital stock holder of
Buck's, that also owns and operates convenience stores
under its registered “BUCKY'S” trademark.
Buck's applied to register its BUCKY'S mark with the
United States Patent and Trademark Office (USPTO) on January
4, 2006. Buc-ee's applied to register its BUC-EE'S
mark on April 3, 2006, but the USPTO suspended the
application until its evaluation of the BUCKY'S
application concluded. Thereafter, on June 13, 2007,
Buc-ee's filed a notice of opposition to the BUCKY'S
application with the Trademark Trial and Appeal Board. On
December 2, 2008, Buck's filed a complaint against
Buc-ee's with this Court. By September 16, 2009,
Buck's and Buc-ee's had entered into a Co-existence
Agreement (Agreement) that disposed of the litigation,
[1]permitted each of them to register their
respective trademarks with the USPTO, and further
“memorialize[d] their respective rights in and to their
respective trademarks . . . .” Agreement, ECF No.
88-25.
On
March 14, 2017, Buc-ee's filed a complaint against Bucks,
BSD Bright Sight Development LLC, Nathan Richardson, and
Tildon Sun Development, LLC, in the United States District
Court for the Southern District of Texas. ECF No. 1.
Buc-ee's alleged the foregoing defendants were
cooperating to construct and operate convenience stores in
Houston, Texas, under the BUCKY'S trademark in violation
of the Agreement and Texas and federal law. The complaint
asserted claims for trademark infringement, trademark
dilution, unfair competition, false designation, and unjust
enrichment. Pursuant to a forum selection clause in the
Agreement, the Southern District of Texas severed Buck's
from the case and transferred the claims against Buck's
to the District of Nebraska. ECF No. 54, Page ID 1396. After
the claims against Buck's were transferred, Buc-ee's
filed an Amended Complaint adding claims for inducement by
fraudulent and material misrepresentation, fraudulent
misrepresentation, negligent misrepresentation, and breach of
contract against Buck's and Steve Buchanan. ECF No.
77.[2]
Buck's
moved for summary judgment before discovery commenced,
arguing it is entitled to judgment on Buc-ee's claims, as
a matter of law, because the Agreement precludes many of
Buc-ee's claims and the remaining claims are
“meritless.” Def.'s Br. Summ. J., ECF No. 87,
Page ID 1820. As such, Buck's has also moved for a stay
of discovery pending the Court's ruling on the summary
judgment motion. Buc-ee's has moved to transfer this case
back to the Southern District of Texas or, alternatively, to
stay all proceedings until the remaining claims before the
Southern District of Texas are resolved. The Court will
address the motion to retransfer and the Parties' motions
to stay, respectively.
I.
Motion to Retransfer
Standard of Review
“Motions
to retransfer are not readily granted, and are only
appropriate where the ruling of the transferor court is
clearly erroneous and would result in manifest
injustice.” Steen v. Murray, 955 F.Supp.2d
1030, 1033 (D. Neb. 2013), aff'd 770 F.3d 698
(8th Cir. 2014)[3] (citing Jenkins Brick Co. v.
Bremer, 321 F.3d 1366, 1370 (11th Cir. 2003)); see
also Charles Alan Wright et al., Federal Practice and
Procedure § 3846 (4th ed.) (federal courts are reluctant
to grant motions to retransfer, but have the “power to
do so if the contention is that the transferor court lacked
the power to order the transfer . . .”). This Court has
previously explained that motions to retransfer “are
governed by the doctrine of the law-of-the-case, ” and
that the “doctrine applies ‘with even greater
force to transfer decisions than to decisions of substantive
law; transferee courts that feel entirely free to revisit
transfer decisions of a coordinate court threaten to send
litigants into a vicious circle of litigation.'”
Steen, 955 F.Supp.2d at 1033 (quoting
Christianson v. Colt Indus. Operating Corp., 486
U.S. 800, 815-16 (1988)). “As most commonly defined,
the doctrine . . . posits that when a court decides upon a
rule of law, that decision should continue to govern the same
issues in subsequent stages in the same case, ” unless
clearly erroneous. Id. “[T]he clear error
exception to the law-of-the-case doctrine applies to legal
errors.” Jenkins, 321 F.3d at 1370 (citing
Christianson, 486 U.S. at 817. Thus, a motion to
retransfer will not be granted unless the initial transfer
was a clear legal error. Id.
Discussion
Under
Supreme Court and Fifth Circuit precedent, the Southern
District of Texas severed Buck's from the Texas Lawsuit
and transferred the claims against it to the District of
Nebraska pursuant to a forum-selection clause in the
Agreement.[4] ECF No. 54, Page ID 1405-11; Atl.
Marine Constr. Co., Inc. v. U.S. Dist. Court for the W. Dist.
of Tex., 134 S.Ct. 568, 581 (2013) (district courts
should give valid forum-selection clauses “controlling
weight in all but the most exceptional circumstances”)
(internal quotation omitted). The Parties agree the
forum-selection clause is valid and the Southern District of
Texas found that Buc-ee's claims against Buck's
“fall[ ] within the scope of the forum-selection
clause.” ECF No. 54, Page ID 1396. The Southern
District further found there were no exceptional
circumstances that justified disregarding the Parties'
bargained-for forum-selection clause.
Buc-ee's
now argues the Court is required to retransfer the claims
against Buck's back to the Southern District of Texas
because the remaining defendants in the Texas Lawsuit have,
since the transfer of Buck's to the District of Nebraska,
asserted Buck's is an indispensable party to that
litigation. See, e.g., In re: Howmedica Osteonics
Corp., 867 F.3d 390, 404 (3d Cir. 2017) (severance is
“clearly disallowed” when a party is
indispensable under Federal Rule of Civil Procedure 19). That
assertion, however, does not automatically make Buck's an
indispensable party to the Texas Lawsuit, and Buc-ee's
has provided no substantive argument regarding Buck's
indispensability. EEOC v. Cummins Power Generation
Inc., 313 F.R.D. 93, 98 (D. Minn. 2015) (a non-party is
not indispensable unless it is first shown that they are a
required party under Rule 19(a)(1) (citing Rochester
Methodist Hosp. v. Travelers Ins. Co., 728 F.2d 1006,
1016 (8th Cir. 1986)). Nor did Buc-ee's argue Buck's
was indispensable when the court in the Southern District of
Texas was considering the propriety of the initial transfer
to this district. Thus, Buc-ee's has not demonstrated
that retransfer is required because Buck's is
indispensable to the Texas Lawsuit.
Buc-ee's
also argues Buck's should be retransferred under the
“first-to-file rule.” See, e.g., Mckinney
Drilling Co., LLC v. Liberty Mut. Ins. Co., No.
5:16-CV-05078, 2016 WL 3349326, at *1 (W.D. Ark. June 15,
2016) (citing Orthmann v. Apple River Campground,
Inc., 765 F.2d 119, 121 (8th Cir. 1985)). The rule
provides “that in cases of concurrent jurisdiction,
‘the first court in which jurisdiction attaches has
priority to consider the case.'” Mckinney,
2016 WL 3349326, at *1 (quoting Nw. Airlines, Inc. v. Am.
Airlines, Inc., 989 F.2d 1002, 1005 (8th Cir. 1993)).
Furthermore, it “recognizes the comity between coequal
federal courts and promotes the efficient use of judicial
resources by authorizing a later-filed, substantially similar
action's transfer, stay or dismissal in deference to an
earlier case.” Nat'l Football League Players
Ass'n v. Nat'l Football League, Civ. No. 15-3168
(RHK/HB), 2015 WL 7596934, at *1 (D. Minn. July 30, 2015)
(citing Orthman, 765 F.2d at 121). It is not a
“rigid, mechanical, or inflexible” rule and
should “be applied in a manner best serving the
interests of justice.” Nw. Airlines, 989 F.2d
at 1005 (quoting United States Fire Ins. Co. v. Goodyear
Tire & Rubber Co., 920 F.2d 487, 488-89 (8th Cir.
1990)).
The
first-to-file rule is meant to facilitate “the doctrine
of federal comity” and a retransfer of this case back
to the Southern District of Texas is inconsistent with that
doctrine. See Orthmann, 765 F.2d at 121. This Court
finds no clear legal error with the Southern District of
Texas's decision to sever and transfer the claims against
Buck's to this district, and a retransfer would disregard
that court's well-reasoned decision. This Court also
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