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Ltd. v. Bucks, Inc.

United States District Court, D. Nebraska

February 9, 2018

BUC-EE'S LTD., Plaintiff,



         This 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.


         Buc-ee's 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.

         2008 Litigation in the District of Nebraska

         On 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.

         In the 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 1576.

         On 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 No. 88-33.

         Current Litigation

         The 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.

         After the claims against Buck's were transferred to this Court, Buc-ee's filed its Amended Complaint which added Steven Buchanan[1] 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.


         “Summary 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).

         In 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)).

         In 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. 2015)).


         Buck's 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.[2] 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 Buc-ee's claims.

         I. Fraudulent Inducement and Misrepresentation Claims (Counts IX, X, and XI)

         Buc-ee's 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.”[3] 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.

         A. Actual Reliance

         Buck's 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.

         Actual 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.[4]

         To 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 ...

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