Moody v. Who Dat, Inc.

Filing 11

ORDER & REASONS: REMANDING CASE TO STATE COURT; To the extent that Monogram requests an award of attorney's fees Monogram's motion is DENIED. Signed by Judge Carl Barbier on 6/5/13.(sek, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA

WHO DAT YAT CHAT, LLC

CIVIL ACTION

VERSUS

NO: 10-1333
REF: 13-280

WHO DAT, INC.

SECTION: "J” (4)
ORDER AND REASONS

Before the Court are Plaintiff Keith Moody d/b/a Monogram
Express (‘Monogram’)’s

Motion to Remand (Rec. Doc. 552) and

Defendant Who Dat, Inc. (“WDI”)’s opposition thereto (Rec. Doc.
563). Defendant’s motion was set for hearing on April 10, 2013,
on

the

briefs.

The

Court,

having

considered

the

motion

and

memoranda of counsel, the record, and the applicable law, finds
that Monogram’s motion should be GRANTED for the reasons set
forth below.
PROCEDURAL HISTORY AND BACKGROUND FACTS
This suit arises out of claims made under Louisiana Revised
Statute § 51:219, seeking cancellation of two state-registered
trademarks, and claims for judicial dissolution of a settlement

1

agreement made under the Louisiana Civil Code. Monogram filed
suit in the Civil District Court for Orleans Parish on November
19, 2012. WDI was served on January 15, 2013, and filed a Notice
of Removal with this Court on February 14, 2013.
Upon removal, Monogram’s action was consolidated with case
number 10-1333, Who Dat Yat Chat, LLC v. Who Dat, Inc. (“Who Dat
case”). The Who Dat case was terminated on October 29, 2012,
after

Monogram,

remaining

Storyville

parties

to

settlement agreement.

the

Apparel

LLC,

litigation)

and

WDI

entered

(the

into

a

last
final

The parties entered their settlement into

the record in front of Magistrate Judge Roby two days later on
October 31, 2012. It is this settlement agreement as well as two
February 2012 trademark registrations that are the focus of the
current litigation.1
In its Notice of Removal, WDI asserts that this Court has
jurisdiction under 28 U.S.C. § 1441(b) because Monogram’s claim
under Louisiana Revised Statute § 51:219 requires the Court to
resolve issues of federal law, namely trademark questions that
are governed by the Lanham Act. Thus, WDI argues that this case
was

properly

removed

because

the

1

Court

has

original

federal

Monogram asserts that the February 2012 trademark registrations were not
the subject of any prior actions before this Court. Pl.’s Mem. in Supp. of Mot.
to Remand, Rec. Doc. 552-1, p. 2.

2

question jurisdiction over this action. See 28 U.S.C. §§ 1331,
1338, 1441.
Likewise, WDI contends that the Court has jurisdiction under
the All Writs Act, 28 U.S.C. § 1651.

In particular, WDI argues

that the federal district court retained jurisdiction of the
settlement agreement at issue in this case. Thus, WDI asserts
that because the federal district court retained jurisdiction,
only this Court, not the state court, can enforce the settlement
agreement.
Monogram filed its Motion to Remand on March 12, 2013. WDI
responded in opposition on April 2, 2013.
THE PARTIES’ ARGUMENTS
In its motion, Monogram argues that this case should be
remanded to state court because the Court lacks subject matter
jurisdiction. With respect to Monogram’s trademark cancellation
claims, Monogram asserts that (1) the trademarks at issue in this
case were not at issue in the previous Who Dat case; and that (2)
these state issued trademark registrations do not require the
court to evaluate their validity under the Lanham Act. Rather,
Monogram asserts that the trademarks only require the court to
look at state law. Thus, Monogram claims that no substantial
question of federal law comprises any essential element of its

3

claims under Louisiana Revised Statute § 51:219 and, as such,
this case should be remanded to state court.
Monogram also asserts that its breach of contract claim is
governed by state law. Specifically, Monogram contends that this
Court did not expressly retain jurisdiction over the settlement
agreement

or

incorporate

the

settlement

agreement

into

its

dismissal order. Monogram argues that without having done one of
those two things when the settlement agreement was originally
before it, the Court cannot exercise jurisdiction over it now.
Monogram asserts that as it currently stands, this breach of
contract claim is simply a state law issue that must be decided
in state court.
Lastly, Monogram contends that WDI's removal of this case
was unreasonable and that the Court should award attorney’s fees.
In response, WDI reiterates the arguments that it raised in
its original Notice of Removal, and it also expounds upon them as
follows. First, with regard to Monogram’s trademark cancellation
claim, WDI directs the Court to the June 2, 2010 Order and
Reasons that it issued in the original Who Dat case.2 WDI argues
that in that order, this Court considered a similar motion to
remand and found that the Court had subject matter jurisdiction

2

June 2, 2010 Order and Reasons, Rec. Doc. 20.

4

under the Lanham Act. Specifically, WDI asserts that the Court
relied on Brocato v. Angelo Brocato Ice Cream & Confectionary,
Inc., No. 03-1316, 2003 WL 21715022 (E.D. La. July 22, 2003), and
determined that Who Dat Yat Chat, LLC,

the plaintiff in question

in the Who Dat case, had asserted federal claims. WDI explains
that Brocato found that plaintiffs were not allowed to transform
federal claims into state law claims merely by pleading only
state

court

actions.

WDI

argues

that

in

the

instant

case,

Monogram has done just that, pleading only state court actions in
an effort to transform its federal claims. Thus, WDI urges the
Court to follow its reasoning in the June 2, 2010 Order and
Reasons and the reasoning of the Brocato court and to find that
essential elements of Monogram’s state law claims rest on federal
law and, therefore, that this case must remain in federal court.
Furthermore,

WDI

also

asserts

that

this

Court

retained

jurisdiction over the settlement. WDI contends that the Court
expressed its intent to retain jurisdiction over the settlement
by allowing the parties to read the settlement agreement into the
record on October 31, 2012. Likewise, WDI notes that at least
twice during the reading of the settlement, Magistrate Judge Roby
indicated

her

intent

to

enforce

the

settlement

agreement.

Moreover, WDI asserts that on at least two other occasions (the

5

same day the settlement agreement was entered and on November 14,
2012), Magistrate Judge Roby actually oversaw disputes regarding
enforcement of the settlement agreement. In particular, WDI notes
that

Judge

Roby

reviewed

the

exact

confidentiality

concerns

raised in Monogram’s state court petition.
Finally, WDI contends that its removal of this case was not
unreasonable and that any award of attorney’s fees is purely at
the discretion of the Court.
DISCUSSION
A defendant may remove a civil action filed in state court
if a federal court would have had original jurisdiction over the
case. 28 U.S.C. § 1441(a). As the removing party, the defendant
bears the burden of proving by a preponderance of the evidence
that federal jurisdiction exists at the time of removal. De
Aguilar

v.

Boeing

Co.,

47

F.3d

1404,

1412

(5th

Cir.

1995).

Because federalism concerns are inherent in the removal of a case
from the state court system, the removal statute is strictly
construed, and any doubt as to the propriety of removal must be
resolved in favor of remand. Manguno v. Prudential Prop. and Cas.
Ins. Co., 276 F.3d 720, 723 (5th Cir. 2002).
When

determining

whether

a

cause

of

action

presents

a

federal question, courts look to the “well-pleaded” allegations

6

of the complaint. Carpenter v. Wichita Falls Indep. Sch. Dist.,
44 F.3d 362, 366 (5th Cir. 1995). A suit is determined to arise
under federal law “when the plaintiff's statement of his own
cause

of

action

shows

that

it

is

based

upon

federal

law.”

Brocato, 2003 WL 21715022 at * 2 (citing Beneficial Nat'l Bank v.
Anderson, 539 U.S. 1, 6

(2003)). “‘A defendant may not remove on

the basis of an anticipated or even inevitable federal defense,
but instead must show that a federal right is an element, and an
essential one, of the plaintiff's cause of action.’” Carpenter,
44 F.3d at 366 (quoting Gully v. First Nat'l Bank, 299 U.S. 109,
111 (1936)). As such, the plaintiff is the master of his or her
complaint. Id. Where the plaintiff has a choice between federal
and state law, the plaintiff may choose to proceed solely under
his or her state law claims, thereby defeating removal. Id.
However,

a

“plaintiff

cannot

defeat

removal

by

‘artfully

pleading’ claims so to omit necessary federal questions . . . .”
Brocato, 2003 WL 21715022 at *2 (quoting Rivet v. Regions Bank,
522

U.S.

creates

470,
the

475

cause

(1998)).
of

Likewise,

action,

federal

“even

where

jurisdiction

state
might

law
by

available if a disputed issue of federal law is a substantial and
necessary element of plaintiff's well-pleaded state claims.” Id.
(citing Franchise Tax. Bd. v. Constr. Laborers Vacation Trust,

7

463 U.S. 1, 13 (1983)). If the court determines that at least one
claim in the original complaint is removable, then the entire
action may be removed. 28 U.S.C. § 1441(c)(B).
The Court begins its analysis by looking to the claims as
pleaded

in

Monogram’s

original

petition.

With

regard

to

Monogram’s first cause of action, Monogram alleges that this
action arises under “La. R.S. 51:219 for an order cancelling
Louisiana

Trademark

Registration

No.

63-4800,

for

WHO

DAT?,

issued 7 February 2012, and Louisiana Trademark Registration No.
63-4820, for WHO DAT, issued 8 February 2012.” Ex 4 to Def.'s
Opp., Rec. Doc. 563-4, p. 1 ¶ 3. Monogram asserts that WDI “does
not, in truth, own trademarks in WHO DAT? or WHO DAT for any of
the . . . good or services [listed in the trademark] because the
mark cannot possible serve as an identifier of the source of any
goods

or

improperly.”

services,

and

the

registrations

were

granted

Ex 4 to Def.'s Opp., Rec. Doc. 563-4, p. 2 ¶ 10.

Monogram also states that these trademarks were not at issue in
the previous Who Dat case.
Based on Monogram’s petition, the Court cannot say that
Monogram’s suit arises under federal law. In particular, the
Court finds the June 2, 2010 Order and Reasons in the original
Who Dat case and Brocato distinguishable from the instant case.

8

For example, in the June 2, 2010 Order and Reasons, the Court
found that a federal cause of action existed where (1) Who Dat
Yat Chat, LLC (the plaintiff) had failed to cite any enumerated
state law cause of action;3 (2) the only reference that Who Dat
Yat Chat, LLC made to the law was to mention that the defendant
owned a “United States Federal Trade Mark Registration;” and (3)
Who Dat Yat Chat, LLC had filed its suit specifically to contest
the

defendant’s

own

attempts

to

enforce

its

aforementioned

federal trade mark registration. June 2, 2010 Order and Reasons,
Rec. Doc.
those

20, p. 5. Therefore, this Court found that based on

facts,

Who

Dat

Yat

Chat,

LLC’s

case

should

remain

in

federal court as the only true cause of action was a federal
cause of action under the Lanham Act. Likewise, in Brocato, the
court found that a petition was properly removed to federal court
where (1) the plaintiffs did not rely on a specific substantive
provision of state law to support their claim; (2) the plaintiffs
did not own any state trademarks; and (3) the defendant owned two
federal trademarks. 2003 WL 21715022 at *1 -3. The Brocato court
found that these facts indicated that the underlying claim was

3

Who Dat Yat Chat, LLC had brought a general action for declaratory
judgment under state law without specifying which state laws it sought the
declaration under. June 2, 2010 Order and Reasons, Rec. Doc. 20, p. 1. Because
a declaratory action is procedural, the Court looked to the nature of the rights
to be declared in order to determine whether the action presented a federal or
state law cause of action.

9

actually a federal Lanham Act claim, not a state law trademark
infringement claim. Id. at *3-4. Thus, the court determined that
the case should remain in federal court.
In the instant case, unlike the plaintiffs in the original
Who Dat case and Brocato, Monogram has set out an enumerated
state

law

cause

of

action.

Specifically,

Monogram

seeks

to

challenge two state law trademarks held by WDI. The cause of
action cited by Monogram, Louisiana Revised Statute § 51:219, has
its

own

state

statutory

scheme

and

is

dependant

upon

state

trademark rights, not federal rights. See Firefly Digital Inc. v.
Google

Inc.,

817

F.

Supp.

2d

846,

867

(W.D.

La.

2011)

(considering both state and federal trademark cancellation and
analyzing federal trademark cancellation under the Lanham act
separately from state trademark cancellation under La. Rev. Stat.
51:213).4 Thus, federal law is not an essential or substantial
part of Monogram’s claim. Furthermore, WDI’s arguments that (1)
this Court has already addressed issues that will be brought up
in the state court action in the original Who Dat case, and that
(2)

any action involving its trademarks will require analysis of

its federal trademarks under the Lanham Act, actually represent
4

It should be noted that although Louisiana state law on trademark
cancellation is separate from federal law, Louisiana courts used the same
categories as federal law to determine whether a trade name is protectable.
Firefly Digital Inc., 817 F. Supp. 2d at 867.

10

defenses that WDI will have to bring to defeat Monogram’s state
law

claims.

As

such,

the

Court

finds

that

Monogram

has

successfully pleaded a state law cause of action and, therefore,
the aforementioned claim should be remanded to state court. See
La Chemise v. Alligator Co., Inc., 506 F.2d 339 (3d. Cir. 1974)
(holding that a case should be remanded to state court where the
plaintiff owned two state law trademarks and sought a declaratory
judgment

of

its

rights

under

those

trademarks,

not

under

defendant’s federal trademark).
The Court also finds that Monogram’s settlement dissolution
claim is a state law claim that is not removable to federal
court. WDI argues that it properly removed Monogram’s state court
action

because

this

Court

has

jurisdiction

over

Monogram’s

settlement dissolution claim by virtue of the All Writs Act.
However, the Supreme Court has held that neither the All Writs
Act nor a federal court’s ancillary jurisdiction provide federal
district courts with the original jurisdiction necessary for a
litigant to remove an action under 28 U.S.C. § 1441. Syngenta
Crop Protection, Inc. v. Henson, 537 U.S. 28, 31- 34 (2002). To
the

extent

that

this

Court

retained

11

jurisdiction

over

the

agreement,5

settlement

such

jurisdiction

is

a

product

of

the

Court’s ancillary jurisdiction. See Kokkonen, 511 U.S. at 378-81
(explaining

that

enforcement

of

a

settlement

agreement

falls

under a federal court’s ancillary jurisdiction “to manage its
proceedings,

vindicate

its

authority,

and

effectuate

its

decrees.”). Because the Court’s jurisdiction to effectuate its
decrees

is

not

a

form

of

original

jurisdiction,

it

cannot

independently provide a jurisdictional basis for WDI’s removal of
this action from state court under 28 U.S.C. § 1441. Syngenta,
537

U.S.

at

34.

Therefore,

the

Court

finds

that

Monogram’s

settlement dissolution claim should also be remanded to state

5
One way in which a court may retain jurisdiction over a settlement
agreement is by entering a separate provision in the dismissal order noting that
it retains jurisdiction. Kokkonen v. Guardian Life Ins. Co., 511 U.S. 375, 378-81
(1994). On October 29, 2012, this Court issued a sixty day order dismissing the
previous Who Dat case. The order provided that, "this action is hereby dismissed
without costs, but without prejudice to the right upon good cause shown, within
sixty days, to seek summary judgment enforcing the compromise if it is not
consummated by that time." October 29, 2012 Order of Dismissal, Rec. Doc. 527
(emphasis added). Thus, the dismissal order clearly provided that for the next
sixty days, this Court would retain jurisdiction to enforce the settlement.
Monogram's own actions make it abundantly clear that Monogram was aware that the
Court had retained jurisdiction over the settlement during that time period. In
particular, the Court notes that on November 14, 2012, just five days before this
action was filed in state court, Monogram contacted Magistrate Judge Roby to
inform her of the same alleged violation of the settlement agreement referenced
in Monogram's state court petition. Ex. 3 to Def.'s Opp., Rec. Doc. 563-3, pp.
1-2. As WDI explains in its opposition, and this Court has confirmed with
Magistrate Judge Roby, after informing Magistrate Judge Roby of the alleged
violation, Monogram sought dissolution of the agreement. Def.'s Opp., Rec. Doc.
563, p. 4. Magistrate Judge Roby found that the agreement should not be dissolved
and instead ordered WDI to take the offending press release off of its website.
Having failed to receive the desired result in federal court, Monogram then filed
an action in state court on November 19, 2012, approximately thirty-nine days
before this Court's jurisdiction over enforcement of the settlement expired.

12

court.
Lastly, Monogram argues that it is entitled to an award of
attorney’s fees

under 28 U.S.C. § 1447(c) because WDI’s removal

of this action was objectively unreasonable. However, the Court
disagrees and declines to award Monogram attorney’s fees in this
matter. Accordingly,
IT IS ORDERED that Monogram's motion is GRANTED in part and
DENIED in part as follows. To the extent that Monogram seeks to
have the instant case remanded to state court Monogram's motion
is GRANTED. To the extent that Monogram requests an award of
attorney's fees Monogram's motion is DENIED.
IT IS FURTHER ORDERED that the above-captioned matter be
REMANDED to the Civil District Court for the Parish of Orleans.
New Orleans, Louisiana this 5th day of June, 2013.

____________________________
CARL J. BARBIER
UNITED STATES DISTRICT JUDGE

13