United States District Court, D. Nebraska
MEMORANDUM AND ORDER
SMITH CAMP, CHIEF UNITED STATES DISTRICT JUDGE
matter is before the Court on the Motion for Summary
Judgment, ECF No. 86, and Motion to Strike Expert Report, ECF
No. 143, filed by Defendants Bucks, Inc., and Steven Buchanan
(collectively, Buck's). Also before the Court is the
Motion for Preliminary Injunction, ECF No. 137, filed by
Plaintiff Buc-ee's LTD. For the reasons stated below, the
Motion for Summary Judgment will be granted, in part; the
Motion to Strike Expert Report will be granted; and the
Motion for Preliminary Injunction will be denied.
owns and operates several convenience stores throughout the
State of Texas, including the Houston area, under the
registered “BUC-EE'S” trademark. Buck's
also owns and operates convenience stores under the
registered “BUCKY'S” trademark and recently
expanded its convenience stores to the Houston, Texas, area.
Buc-ee's initiated this lawsuit against Buck's in the
United States District Court for the Southern District of
Texas, claiming trademark infringement under federal and
Texas state law. The case was later transferred to this
Court. ECF No. 54.
Litigation in the District of Nebraska
January 4, 2006, Buck's filed its application to register
the BUCKY'S mark with the United States Patent and
Trademark Office (USPTO). Thereafter, on April 3, 2006,
Buc-ee's filed its application to register the
BUC-EE'S mark with the USPTO; but on September 15, 2006,
Buc-ee's application was suspended pending final
disposition of Buck's application. On June 13, 2007,
Buc-ee's decided to file its Notice of Opposition, ECF
No. 88-5, to the registration of Buck's BUCKY'S mark
with the Trademark Trial and Appeal Board (TTAB). The
foregoing administrative proceedings prompted Buck's to
file a complaint against Buc-ee's with this Court on
December 2, 2008, wherein Buck's asserted claims for
unfair competition, violations of the Nebraska Uniform
Deceptive Trade Practices Act, and declaratory relief.
2008 lawsuit, Buck's represented in its Complaint and
during discovery that it had established priority in its
BUCKY'S mark because it began using the mark in commerce
at least as early as May of 1982. Interrogatories, ECF No.
109-26; Buchanan Decl., ECF No. 109-27; Complaint ¶3,
ECF No. 109-19, Page ID 3598. Buck's previously
represented in its registration application to the USPTO that
it used the BUCKY'S mark in commerce at least as early as
1989. Buc-ee's has consistently claimed that its
BUC-EE's mark was used in commerce at least as early as
July of 1982. ECF No. 88-5; Am. Comp., ECF No. 77, Page ID
September 16, 2009, the Parties entered into a Co-Existence
and Settlement Agreement, ECF No. 88-25, which permitted each
to register its respective mark with the USPTO and
“memorialize[d] their respective rights in and to their
respective trademarks . . . .” Agreement, ECF No.
88-25, Page ID 2060. After the Agreement was executed, this
Court granted Buck's voluntary motion to dismiss the 2008
lawsuit under Federal Rule of Civil Procedure 41(a)(2). ECF
Parties' marks coexisted without any issues until 2016
when Buck's decided to expand the use of its BUCKY'S
mark into the Houston, Texas, area where Buc-ee's had
existing convenience stores operating under its BUC-EE'S
mark. According to Buc-ee's, Buck's has constructed a
Bucky's convenience store within fifteen miles of a
Buc-ee's convenience store. As a result, on March 14,
2017, Buc-ee's filed a complaint in the United States
District Court for the Southern District of Texas against
Buck's and several other persons and entities associated
with Buck's expansion into Texas. Comp., ECF No. 1. The
Complaint asserted claims for trademark infringement,
trademark dilution, unfair competition, false designation,
and unjust enrichment under federal and Texas state law.
However, pursuant to a forum selection clause in the
Agreement and 28 U.S.C. § 1404(a), the Southern District
of Texas severed Buck's from that case and transferred
Buc-ee's claims against it to the District of Nebraska.
ECF No. 54, Page ID 1395-1411.
the claims against Buck's were transferred to this Court,
Buc-ee's filed its Amended Complaint which added Steven
Buchanan as a defendant and asserted additional
claims for fraudulent inducement, fraudulent
misrepresentation, negligent misrepresentation, and breach of
contract. ECF No. 77. Buck's filed a Motion for Summary
Judgment, ECF No. 86, and a Motion to Stay Case Progression,
ECF No. 92, arguing this Court should stay discovery until it
had an opportunity to rule on the Motion for Summary
Judgment. Both the Southern District of Texas and this Court
recognized that “the Agreement must be interpreted to
determine the validity of Buc-ee's lawsuit against
Buck's.” ECF No. 132, Page ID 4470-71 (quoting ECF
No. 54, Page ID 1399). Accordingly, on January 16, 2018, this
Court granted Buck's Motion to Stay Case Progression in
order to determine whether the Agreement had any preclusive
effect on Buc-ee's claims against Buck's. ECF No.
132. On February 1, 2018, Buc-ee's also filed a Motion
for Preliminary Injunction, ECF No. 137.
judgment is appropriate when the evidence, viewed in the
light most favorable to the nonmoving party, presents no
genuine issue of material fact and the moving party is
entitled to judgment as a matter of law.” Garrison
v. ConAgra Foods Packaged Foods, LLC, 833 F.3d 881, 884
(8th Cir. 2016) (citing Fed.R.Civ.P. 56(c)). “Summary
judgment is not disfavored and is designed for every
action.” Briscoe v. Cty. of St. Louis, 690
F.3d 1004, 1011 n.2 (8th Cir. 2012) (quoting Torgerson v.
City of Rochester, 643 F.3d 1031, 1043 (8th Cir. 2011)
(en banc)). In reviewing a motion for summary judgment, the
Court will view “the record in the light most favorable
to the nonmoving party . . . drawing all reasonable
inferences in that party's favor.” Whitney v.
Guys, Inc., 826 F.3d 1074, 1076 (8th Cir. 2016) (citing
Hitt v. Harsco Corp., 356 F.3d 920, 923-24 (8th Cir.
2004)). Where the nonmoving party will bear the burden of
proof at trial on a dispositive issue, “Rule 56(e)
permits a proper summary judgment motion to be opposed by any
of the kinds of evidentiary materials listed in Rule 56(c),
except the mere pleadings themselves.” Se. Mo.
Hosp. v. C.R. Bard, Inc., 642 F.3d 608, 618 (8th Cir.
2011) (quoting Celotex Corp. v. Catrett, 477 U.S.
317, 324 (1986)). The moving party need not produce evidence
showing “the absence of a genuine issue of material
fact.” Johnson v. Wheeling Mach. Prods., 779
F.3d 514, 517 (8th Cir. 2015) (quoting Celotex, 477
U.S. at 325). Instead, “the burden on the moving party
may be discharged by ‘showing' . . . that there is
an absence of evidence to support the nonmoving party's
case.” St. Jude Med., Inc. v. Lifecare Int'l,
Inc., 250 F.3d 587, 596 (8th Cir. 2001) (quoting
Celotex, 477 U.S. at 325).
response to the moving party's showing, the nonmoving
party's burden is to produce “specific facts
sufficient to raise a genuine issue for trial.”
Haggenmiller v. ABM Parking Servs., Inc., 837 F.3d
879, 884 (8th Cir. 2016) (quoting Gibson v. Am. Greetings
Corp., 670 F.3d 844, 853 (8th Cir. 2012)). The nonmoving
party “must do more than simply show that there is some
metaphysical doubt as to the material facts, and must come
forward with specific facts showing that there is a genuine
issue for trial.” Wagner v. Gallup, Inc., 788
F.3d 877, 882 (8th Cir. 2015) (quoting Torgerson,
643 F.3d at 1042). “[T]here must be more than the mere
existence of some alleged factual dispute” between the
parties in order to overcome summary judgment. Dick v.
Dickinson State Univ., 826 F.3d 1054, 1061 (8th Cir.
2016) (quoting Vacca v. Viacom Broad. of Mo., Inc.,
875 F.2d 1337, 1339 (8th Cir. 1989)).
other words, in deciding “a motion for summary
judgment, facts must be viewed in the light most favorable to
the nonmoving party only if there is a genuine dispute as to
those facts.” Wagner, 788 F.3d at 882 (quoting
Torgerson, 643 F.3d at 1042). Otherwise, where the
Court finds that “the record taken as a whole could not
lead a rational trier of fact to find for the non-moving
party, ” there is no “genuine issue of material
fact” for trial and summary judgment is appropriate.
Whitney, 826 F.3d at 1076 (quoting Grage v. N.
States Power Co.-Minn., 813 F.3d 1051, 1052 (8th Cir.
Motion for Summary Judgment relies on the preclusive effect
the Agreement has on Buc-ee's trademark claims and
breach-of-contract claim asserted in Counts I-VIII and XII of
the Amended Complaint. Buc-ee's argues the Agreement is not
enforceable and has no preclusive effect because it was
procured by fraud. Accordingly, the Court must first
determine whether the Agreement is enforceable before
determining whether it has any preclusive effect on
Fraudulent Inducement and Misrepresentation Claims (Counts
IX, X, and XI)
contends the Agreement is void because Buc-ee's
“entered into the Agreement in reliance on Buck's
[allegedly] false statements that [it] first used the mark
[BUCKY'S] at least as early as May of
1982.” Am. Comp., ECF No. 77, Page ID 1598.
Buck's argues it is entitled to judgment on Buc-ee's
fraudulent inducement and misrepresentation claims because
Buc-ee's cannot, as a matter of law, establish that
Buc-ee's actually or justifiably relied on Buck's
1982 date-of-first-use representation.
argues Buc-ee's cannot prove it actually relied on
Buck's date-of-first-use representation because Section
14 of the Agreement provides: “Entire Agreement. This
agreement sets forth the entire agreement and understanding
between the parties with respect to the subject matter set
forth herein. No. inducements, representations or promises
have been made, other than those recited in this
Agreement.” Agreement, ECF No. 88-25, Page ID 2064.
reliance is a necessary element of fraudulent inducement,
fraudulent misrepresentation, and negligent misrepresentation
under both Texas and Nebraska law. Siddiqui v. Fancy
Bites, LLC, 504 S.W.3d 349, 369 (Tex. App. 2016) (citing
Formosa Plastics Corp., USA v. Presidio Eng'rs &
Contractors, Inc., 960 S.W.2d 41, 47 (Tex. 1998)
(inducement); Grant Thornton LLP v. Prospect High Income
Fund, 314 S.W.3d 913, 923 (Tex. 2010)
(misrepresentation); Gonzalez v. Union Pacific R.R.
Co., 803 N.W.2d 424, 442 (Neb. 2011) (inducement);
Knights of Columbus Council 3152 v. KFS BD, Inc.,
791 N.W.2d 317, 330-31 (Neb. 2010) (misrepresentation).
However, Texas and Nebraska law conflict with respect to
whether the terms of a contract can disclaim or foreclose
actual reliance on any representations not included therein
and, thus, preclude future fraudulent inducement claims.
Compare Italian Cowboy Partners, Ltd. v. Prudential Ins.
Co. of Am., 341 S.W.3d 323, 331 (Tex. 2011) (stating
“it may be possible for a contract's terms to
preclude a claim for fraudulent inducement by a clear and
specific disclaimer-of-reliance clause”), with BLB
Aviation S.C., LLC v. Jet Linx Aviation Corp., No.
8:10CV42, 2011 WL 2560144, at *3 (D. Neb. June 28, 2011)
(citing Camfield v. Olsen, 164 N.W.2d 431, 433 (Neb.
1969) (stating a disclaimer clause is relevant to the issue
of whether a claimant actually relied on a false
representation, but it is “ineffective to preclude a
trier of fact from considering whether or not fraud induced
formation of the bargain”). Neither Party has briefed
the Court on whether Texas or Nebraska law controls
Buc-ee's fraud claims.
determine which state's substantive law applies to
Buc-ee's fraud claims, this Court must apply the
conflicts-of-laws rules of the state of Texas. Eggleton
v. Plasser & Theurer Exp. Von Bahnbaumaschinen
Gesellschaft, MBH, 495 F.3d 582, 586 (8th Cir. 2007)
(explaining that if a district court transfers a case under
28 U.S.C 1404(a), “the transferee court applies the
choice-of-law rules of the state in which the transferor
court sits”). “Texas law requires an
issue-by-issue choice of law analysis.” Benchmark
Elecs., Inc. v. J.M. Huber Corp., 343 F.3d 719, 727 (5th
Cir. 2003). The first step is to determine whether a true
conflict exists. Bailey v. Shell W. E&P, Inc.,
609 F.3d 710, 722-23 (5th Cir. 2010). There is no true
conflict of laws where “the result ...