County Inn & Suites By Radisson, Inc. v. Alexandria Motels, Inc. et al

Filing 93

ORDER: The Clerk of Court shall terminate Docket No. 78. This action is DISMISSED WITHOUT PREJUDICE. (Written Opinion) Signed by Judge Joan N. Ericksen on 4/26/2021. (CBC)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Country Inn & Suites by Radisson, Inc.,
Plaintiff,
v.
Alexandria Motels, Inc., Lake Country
Motels, LLC, Vibha Patel, and Jaimini Patel,

Case No. 19-cv-1485 (JNE/LIB)
ORDER

Defendants.
Country Inn & Suites by Radisson, Inc. (“Country Inn”), a franchisor of a hotel
system, alleged that it entered into a license agreement with Alexandria Motels, Inc., a
corporate guarantee of the license agreement with Lake Country Motels, LLC, and
personal guarantees of the license agreement with Vibha Patel and Jaimini Patel in 2012. 1
Several years later, Country Inn gave notice of default under the license agreement to
Alexandria Motels. In 2019, the license agreement was terminated. Claiming that
Alexandria Motels breached the license agreement, that the other defendants breached the
guarantees, and that the defendants continued to use Country Inn’s marks after the license
agreement’s termination, Country Inn brought this action for breach of the agreements
and violations of the Lanham Act and common law. The case is before the Court on
Country Inn’s Motion for Summary Judgment. For the reasons set forth below, the Court
dismisses the action without prejudice.

Jaimini Patel claimed that she did not execute a personal guarantee. Based on a
stipulation executed by Country Inn and Jaimini Patel, the Court dismissed the claims
against her without prejudice in late 2020.
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Country Inn’s Complaint contains six counts: Count I—Breach of license
agreement and guarantees—Failure to pay fees; Count II—Breach of license agreement
and guarantees—Failure to pay lost future profits; Count III—Breach of license
agreement and guarantees—Failure to comply with post-termination obligations;
Count IV—Federal trademark infringement; Count V—False designation of
origin/federal unfair competition; and Count VI—Breach of license agreement and
guarantees—Attorneys’ fees. Country Inn asserted that “[t]his Court has jurisdiction
pursuant to §§ 34(a) and 39 of the Lanham Act, 15 U.S.C. §§ 1116(a), 1121, and 28
U.S.C. §§ 1331, 1338 and 1367 (relating to supplemental jurisdiction).” (Compl. ¶ 11)
In its Motion for Summary Judgment, Country Inn asserted that it “is voluntarily
dismissing without prejudice its claims for trademark infringement (Count IV) and false
designation of origin/federal unfair competition (Count V).” It sought “judgment only on
[its] breach of contract and attorneys’ fees claims (Counts I-III and VI).” Country Inn’s
proposed order includes a dismissal of Counts IV and V without prejudice. Opposing
Country Inn’s motion, Alexandria Motels, Lake Country Motels, and Vibha Patel stated
that Country Inn “has now voluntarily dismissed or declined to pursue its claims under
the Lanham Act.” In its reply, Country Inn explained that it “dismissed its Lanham Act
claims, in part, because Defendants ceased their use of [its] proprietary trademarks and
service marks, but only after [it] filed the Complaint in this case.”
Country Inn did not identify the basis of its “voluntary dismissal” of Counts IV
and V. No stipulation of dismissal was filed. No request for a dismissal on terms was

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made. 2 And no amendment to the Complaint was proposed. Nevertheless, Country Inn,
Alexandria Motels, Lake Country Motels, and Vibha Patel apparently agree that Country
Inn’s federal claims have been, or will be, dismissed. Cf. Fed. R. Civ. P. 41(b) (dismissal
for failure to prosecute).
Country Inn’s “voluntary dismissal” of Counts IV and V gives rise to either an
obligation to dismiss the action for lack of subject-matter jurisdiction, see Rockwell
International Corp. v. United States, 549 U.S. 457, 473-74 & n.6 (2007); Management
Investors v. United Mine Workers of America, 610 F.2d 384, 395 (6th Cir. 1979), or an
option to decline to exercise supplemental jurisdiction over the remaining claims, see 28
U.S.C. § 1367(c)(3); cf. id. § 1367(c)(2) (allowing a district court to decline to exercise
supplemental jurisdiction over a claim that “substantially predominates over the claim or
claims over which the district court has original jurisdiction”). If the Court may exercise
supplemental jurisdiction over Country Inn’s claims for breach of the agreements,
Country Inn made no argument for it. The Court discerns no reason to exercise
supplemental jurisdiction over the claims. See Zubrod v. Hoch, 907 F.3d 568, 580-81
(8th Cir. 2018). The Court dismisses this action without prejudice.
Based on the files, records, and proceedings herein, and for the reasons stated
above, IT IS ORDERED THAT:
1.

The Clerk of Court shall terminate Docket No. 78.

Rule 41(a) of the Federal Rules of Civil Procedure addresses the dismissal of “an
action.”
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2.

This action is DISMISSED WITHOUT PREJUDICE.

LET JUDGMENT BE ENTERED ACCORDINGLY.
Dated: April 26, 2021

s/ Joan N. Ericksen
JOAN N. ERICKSEN
United States District Judge

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