Rudolph and Me, Inc. v. Ornament Central, LLC et al

Filing 18

ORDER granting 11 Defendants' Motion to Transfer to the U.S. District Court for the District of Massachusetts. The Clerk is directed to transfer this case to the U.S. District Court for the District of Massachusetts, Central Division. Signed by Judge Virginia M. Hernandez Covington on 9/7/2011. (CR)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
RUDOLPH AND ME, INC.,
a Florida corporation,
Plaintiff,
v.

Case No. 8:11-cv-670-T-33EAJ

ORNAMENT CENTRAL, LLC.,
a Massachusetts Limited Liability
Company, SMUDGES, a Massachusetts
Business Entity, and
CHRISTINE CASEY, an individual,
Defendants.
____________________________________/
ORDER
This matter is before the Court pursuant to Defendants’
Motion to Dismiss or Alternatively to Transfer Venue (Doc. # 11),
filed on June 13, 2011.

Plaintiff filed a Memorandum in

Opposition to the Defendants’ Motion (Doc. # 14) on July 1, 2011.
For the reasons that follow, the Motion to Transfer based on the
first-to-file rule is due to be granted.
I.

Factual and Procedural Background
Plaintiff Rudolph and Me, Inc. (RMI) is a Florida

corporation that designs, manufactures and sells hand painted
ornaments.

(Doc. # 1 at ¶ 1).

Defendant Ornament Central,

LLC.(OC) is a limited liability company organized under the laws
of Massachusetts.

OC creates, manufactures, markets, distributes

and sells giftware items including ornaments.

(Doc. # 11).

Defendant Smudges is an unincorporated business entity with its
principal place of business in Massachusetts.

(Id.).

Defendant

Christine Casey, an individual, is a designer, manufacturer

and/or seller of ornaments.

(Id.).

Casey is also an

officer/alter-ego of Smudges (Doc. # 1 at ¶ 4).
On January 13, 2011, OC filed a complaint in the Central
Division of the United States District Court for the District of
Massachusetts (MA action), which alleges that Defendants in that
action1 infringed over 26 registered copyrights along with the
trademark and trade dress of OC’s distinctive face.

(Doc. # 11).

The complaint asserts counts of Federal Trademark Infringement,
Violation of Massachusetts Regulation of Business Practices for
Consumers Protection Act, Violation of Massachusetts Trade Name
Protections, Violations of Massachusetts Trade Dress Protections,
Violation of Common Law Copyright Protections, and an Accounting.
On March 30, 2011, RMI filed the instant complaint in the
Middle District of Florida (FL action) alleging that OC had
infringed nine of RMI’s federal copyrights and trademarks
including trademarked facial features.

(Doc. # 1 at ¶¶ 22 - 23).

The FL action asserts counts of Federal Copyright Infringement,
Federal Trademark Infringement under § 43(a) of the Lanham Act,
Unfair Competition and False and Misleading Advertising under 15
U.S.C. § 1125, Unfair Competition and False and Misleading
Advertising Under Florida Law, Common Law Copyright Infringement,
Request for a Constructive Trust, and Unjust Enrichment under
Florida Common Law.

1

Defendants in MA action include RMI and six other parties:
Roeb-ken’s Rascals aka Rascal’s, Family Trees Unlimited, Inc.,
Joseph Brielman, Susan Brielmann, Jan Carle, and Kathleen Snell.
2

II.

Legal Standard
Defendants’ Motion to Transfer is predicated on two

different legal theories: 1) the first-to-file rule, or
alternatively, 2) 28 U.S.C. § 1404(a).
The first-to-file rule provides that, “[w]here two actions
involving overlapping issues and parties are pending in two
federal courts, there is a strong presumption across the federal
circuits that favors the forum of the first-filed suit.”

Manuel

v. Convergys Corp., 430 F.3d 1132, 1135 (11th Cir. 2005).

“The

primary purpose of the rule is to conserve judicial resources and
avoid conflicting rulings.”

Allstate Ins. Co. v. Clohessy, 9 F.

Supp. 2d 1314, 1316 (M.D. Fla. 1998).
In the alternative to a transfer based on the first-to-file
rule, Defendants move for transfer of venue pursuant to 28 U.S.C.
§ 1404(a).

Section 1404(a) provides that “[f]or the convenience

of parties and witnesses, in the interest of justice, a district
court may transfer any civil action to any other district or
division where it might have been brought.”

The primary purpose

of § 1404(a) is avoiding unnecessary inconvenience to the
litigants, witnesses, and the public and to conserve time, energy
and money.

Tampa Bay Storm, Inc. v. Arena Football League, Inc.,

932 F. Supp. 281, 282 (M.D. Fla. 1996).
III. Analysis
A. Transfer Pursuant to the First-to-File Rule
Non-resident Defendants ask this Court to transfer this case
to the District of Massachusetts pursuant to the first-to-file
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rule.

This determination is within the discretion of the Court.

Clohessy, 9 F. Supp.2d at 1316.
In making its determination, the Court looks to the
following factors: (1) the chronology of the two actions; (2) the
similarity of the parties, and (3) the similarity of the issues.
Alltrade, Inc. v. Uniweld Prods., Inc., 946 F.2d 622, 625 (9th
Cir. 1991); Plating Res., Inc. v. UTI Corp., 47 F. Supp. 2d 899,
903-04 (N.D. Ohio 1999).
Upon consideration of the above factors, the Court finds
that transfer is warranted.

First, there is no question as to

the chronology of the two actions.

The MA action was filed on

January 13, 2011, while the FL action was not filed until March
30, 2011.

RMI asserts that the two defendants in the FL action

not present as defendants in the MA action make the FL action the
first action commenced of its type.

(Doc. # 14 at 4).

However,

this factor goes to the similarity of the parties and not to the
chronology of the actions.
Plaintiff RMI asserts that there is disparity between the
parties, and thus, the first-to-file rule is inapplicable.
at 4-6).

(Id.

Nevertheless, this Court is persuaded that a precise

identity of the parties is not required.

See ERW, Inc. v.

Environ Prods., Inc., No. 1:96-cv-144, 1996 WL 550020, at *3
(W.D. Mich. July 8, 1996)("a precise identity of parties is
simply not required"); see also Plating Res. Inc., 47 F. Supp. 2d
at 904.

As Defendants assert, RMI is the central defendant in

the MA action while OC is the central defendant in the FL action.

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(Doc. # 11 at 5).
RMI further contends that the six additional defendants in
the MA action should weigh against transfer.

(Doc. # 14 at 4-6).

This would be more persuasive if all of those defendants were
separate entities from RMI.

However, two of those defendants,

Jan Carle and Rascals have been acquired by RMI.

Additionally,

two more defendants have an interest in the FL action as the
Brielmans are RMI’s founders and Susan Brielmann is its creator.
(Doc. # 11 at 8-9).

As a precise identity of the parties is not

required under the first-to-file rule, this Court finds there is
sufficient similarity and overlap to weigh in favor of transfer.
Finally, RMI argues that the issues within the actions are
too dissimilar.

RMI’s primary argument is that the MA action and

FL action are two separate intellectual property actions.
# 14 at 7).

(Doc.

The Court finds it more than just superficial that

the two actions deal with distinctive copyrights and associated
registrations for different ornaments.

(Id.).

However, the

Court also finds instructive Defendants’ assertions that the
actions are not entirely different because the underlying issue,
the similarity in facial features, is the same in both actions.
(Doc. # 11 at 4).

A visual comparison of the ornaments in the FL

action shows that indeed one of the most prominent features
contested in both actions, the smile, is present on nearly all of
the ornaments.

(Doc. # 1 at Ex. A - C).

RMI asserts incorrectly that because the complaints are not
“mirror-images” of each other, this Court should not transfer the

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FL action to Massachusetts.

(Doc. # 14 at 7).

However, a strict

mirror-image, although more persuasive, is not required.

What is

required is a similarity or an overlapping in subject matter.
Manuel, 430 F.3d at 1135.

The Eastern District of Pennsylvania

stated this distinction succinctly:
The applicability of the first-filed rule is not
limited to mirror image cases where the parties
and the issues perfectly align. Rather, the
principles underlying the rule support its
application where the subject matter of the later
filed case substantially overlaps with that of the
earlier one.
Villari Brandes & Kline, P.C. v. Plainfield Specialty Holdings
II, Inc., No. 09-2552, 2009 WL 1845236, at *6 (E.D. Pa. June 26,
2009).

RMI’s reliance on Cedars-Sinai Medical Center v. Shalala,

125 F.3d 765, 769 (9th Cir. 1997), is misplaced because in that
case, the two issues were completely distinct whereas here there
are similarities.2

As with the similarity of the parties, this

Court finds there is enough similarity and overlap to weigh in
favor of transfer.
“In absence of compelling circumstances, the court initially
seized of a controversy should be the one to decide the case.”
Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d
1169, 1174 (11th Cir. 1982).

Here, RMI fails to offer any

compelling circumstances that would warrant not transferring this
action.

2

See Lovell v. United Airlines, Inc., 728 F. Supp. 2d 1096,
1108 (D. Haw. 2010) (noting that Cedars-Sinai involved resolving
two different legal issues and could not be instructive where
issues were very similar).
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In consideration of the chronology of the actions, the
similarity of the parties, the similarity of the issues, and the
lack of any compelling reasons to find in the contrary, the Court
finds that granting transfer will support the main purpose of the
first-to-file rule.

The Court is persuaded that were the two

actions to proceed separately in different venues, the overlap of
issues and parties would create judicial waste and a potential
for incompatible rulings.
B. Transfer Pursuant to 28 U.S.C 1404(a)
In the alternative, non-resident Defendants ask this Court
to transfer this case to the District of Massachusetts pursuant
to 28 U.S.C. § 1404(a).

(Doc. # 11).

However, because this

Court has already determined that transfer is proper under the
first-to-file rule, there is no need for the Court to address
this alternative request.
Accordingly, it is
ORDERED ADJUDGED and DECREED that:
(1) Defendants’ Motion to Transfer to the U.S. District
Court for the District of Massachusetts (Doc. # 11) is GRANTED.
(2) The Clerk is directed to transfer this case to the U.S.
District Court for the District of Massachusetts, Central
Division.
DONE and ORDERED in Chambers in Tampa, Florida this 7th day
of September, 2011.

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Copies:
All Counsel of Record

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