Womens Choice Pharmaceuticals, LLC et al v. Rook Pharmaceuticals, Inc

Filing 35

ORDER granting 18 Motion to Change Venue. Venue is TRANSFERRED to the Southern District of Mississippi. The Clerk of the Southern District of Florida shall CLOSE this case and all pending motions are DENIED as moot. Signed by Judge Beth Bloom on 11/7/2016. (pes) [Transferred from Florida Southern on 11/8/2016.]

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 16-cv-62074-BLOOM/Valle
WOMEN’S CHOICE PHARMACEUTICALS, LLC and
EDWARDS PHARMACEUTICALS, INC.,
Plaintiffs,
v.
ROOK PHARMACEUTICALS, INC.,
Defendant.
__________________________________/
ORDER
THIS CAUSE is before the Court on Defendant Rook Pharmaceuticals, Inc.’s
(“Defendant”) Motion to Transfer Case to Southern District of Mississippi, ECF No. [18]
(“Motion to Transfer”). The Court has carefully reviewed the Motion to Transfer, the record, the
supporting and opposing submissions, including Plaintiffs’ Response, ECF No. [27]
(“Response”), the exhibits attached thereto, the applicable law, and is otherwise fully advised.
For the reasons that follow, Defendant’s Motion to Transfer is granted.
I. Background
Plaintiff Women’s Choice Pharmaceuticals, LLC (“WCP”) is a Nevada limited liability
company and Plaintiff Edwards Pharmaceuticals, Inc. (“Edwards”) is a Mississippi corporation
and wholly-owned subsidiary of WCP. ECF No. [1] at ¶¶ 3-4. WCP and Edwards (collectively,
“Plaintiffs”) advertise, distribute, and sell pharmaceutical products throughout the United States.
Id. at ¶ 9.

Defendant Rook Pharmaceuticals, Inc. (“Rook”) is a Florida corporation that

manufactures “generic” pharmaceutical products. Id. at ¶¶ 5, 28.

Case No. 16-cv-62074-BLOOM/Valle
On March 22, 2016, Plaintiffs filed a complaint in the Southern District of Mississippi
(MS action), which alleges that the defendant in that action – Burel Pharmaceuticals, Inc.
(“Burel”) – engaged in false and misleading advertising and infringement of Plaintiffs’
“UROGESIC BLUE” trademark through its offering of a competing pharmaceutical product
under the name of “UROLET MB.” 1 See ECF No. [18-1] at ¶¶ 1, 9, 28. Specifically, the
complaint in that action asserts counts of False Advertising under section 43(a) of the Lanham
Act, Trademark Infringement under section 32 of the Lanham Act, Trademark Infringement and
Unfair Competition under section 43(a) of the Lanham Act, Unjust Enrichment under
Mississippi common law, and Tortious Interference under Mississippi common law. Id. at ¶ 1.
On August 30, 2016, Plaintiffs filed the Complaint in the instant action in the Southern
District of Florida (FL action) alleging that Defendant Rook has engaged in false and misleading
advertising and infringement of Plaintiffs’ UROGESIC BLUE trademark through its
manufacturing of the UROLET MB pharmaceutical product. ECF No. [1] at ¶¶ 1, 10, 34-35.
Specifically, the Complaint asserts counts of Contributory False Advertising under section
43(a)(1)(B) of the Lanham Act, Trademark Infringement under section 32 of the Lanham Act,
Unfair Competition under section 43(a) of the Lanham Act, Contributory Trademark
Infringement under section 32 of the Lanham Act, Contributory Unfair Competition under
section 43(a) of the Lanham Act, Unjust Enrichment under Florida common law, Deceptive and
Unfair Trade Practices under section 501.201 of the Florida Deceptive and Unfair Trade
Practices Act, and Tortious Interference under Florida common law. Id.

1

The UROGESIC BLUE trademark is associated with one of Plaintiffs’ pharmaceutical products that
comes in tablet form. See ECF No. [18-1] at ¶¶ 10, 20. The UROLET MB pharmaceutical product also
comes in tablet form. See id. at ¶¶ 37-38.

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Case No. 16-cv-62074-BLOOM/Valle
In its Motion to Transfer, Defendant requests that the Court transfer this action to the
Southern District of Mississippi on the basis of the first-to-file rule or, in the alternative, pursuant
to 28 U.S.C. § 1404. ECF No. [18] at 1.
II. Legal Standard
“The Eleventh Circuit follows the first-to-file rule, and ‘[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.’” Laskaris v. Fifth Third
Bank, 962 F. Supp. 2d 1297, 1298-99 (S.D. Fla. 2013) (quoting 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); see also In re Checking Account Overdraft Litig., 859 F. Supp. 2d 1313, 1324
(S.D. Fla. 2012) (“Competing lawsuits involving the same parties and the same issues in separate
jurisdictions waste judicial resources and can lead to conflicting results.”). The Eleventh Circuit
“require[s] that the party objecting to jurisdiction in the first-filed forum carry the burden of
proving ‘compelling circumstances' to warrant an exception to the first-filed rule.” Manuel, 430
F.3d at 1135 (quoting Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169,
1174 (11th Cir. 1982)). “In applying the first-to-file rule, judges are afforded an ample degree of
discretion.” Ass Armor, LLC v. Under Armour, Inc., 2015 WL 2155724, at *2 (S.D. Fla. May 7,
2015) (internal quotations and citation omitted).
Alternatively, the transfer statute, 28 U.S.C. § 1404(a), which embodies a codification
and revision of the forum non conveniens doctrine, see Piper Aircraft Co. v. Reyno, 454 U.S.
235, 253, 102 S. Ct. 252 (1981), 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

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Case No. 16-cv-62074-BLOOM/Valle
where it might have been brought.” “Section 1404(a) reflects an increased desire to have federal
civil suits tried in the federal system at the place called for in the particular case by
considerations of convenience and justice.” Carucel Investments, L.P. v. Novatel Wireless, Inc.,
157 F. Supp. 3d 1219, 1222-23 (S.D. Fla. 2016) (quoting Van Dusen v. Barrack, 376 U.S. 612,
616, 84 S. Ct. 805 (1964)). It is through these lenses that the Court addresses the Motion to
Transfer.
III. Discussion
A. Transfer Pursuant to the First-to-File Rule
The three primary considerations for determining whether the first-to-file rule should be
applied are (1) the chronology of the two actions, (2) the similarity of the parties, and (3) the
similarity of the issues. See Laskaris, 962 F. Supp. 2d at 1299 (quoting Nat’l Union Fire Ins. Co.
of Pittsburgh, PA v. Beta Construction LLC, 2010 WL 3789042, at *3 (M.D. Fla. Sept. 24,
2010)); see also Rudolph and ME, Inc. v. Ornament Cent. LLC, 2011 WL 3919711, at *2 (M.D.
Fla. Sept. 7, 2011).

Upon consideration of these factors, the Court finds that transfer is

warranted.
First, and most obvious, is the chronology of the two actions, which is not in dispute.
Specifically, the MS action was filed on March 22, 2016, whereas the FL action was not filed
until August 30, 2016.
As to the similarity of the parties, the Court recognizes at the outset a patent disparity –
namely, that the Defendant Rook is not a named party in the MS action, and that the single
defendant in the MS action, Burel, likewise is not a named party in the FL action. Plaintiffs
argue that this disparity ultimately precludes application of the first-to-file rule. See ECF No.
[27] at 9. In support of that argument, Plaintiffs accurately point out that Defendant does not cite

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Case No. 16-cv-62074-BLOOM/Valle
to any case law approving a transfer on the basis of the first-to-file rule involving a party who
was not named in a first filed action. Id. at 9-10. The Court nevertheless finds Plaintiffs’
argument unpersuasive.
Though it is certainly significant that Defendant is not a named party in the MS action,
the Court notes the numerous references to Burel that are riddled throughout Plaintiffs’
Complaint in the FL action.

See ECF No. [1]. In fact, the Complaint sets forth over 50

allegations that relate directly to Burel. 2 See, e.g., id. at ¶¶ 29-31, 33-37, 39-40, 57-58, 68-69,
71-72, 80-84, 89-91, 97, 100-13, 139-44, 155-63. Importantly, the claims supported by those
allegations are such that, in order for them to be properly adjudicated with specific findings,
Burel would have to become a named party to the FL action. See, e.g., id. at ¶¶ 139-40 (“Burel’s
purpose in using the UROLET MB Mark was and is to deceive, mislead and confuse customers,
so as to trade on the substantial reputation and goodwill enjoyed by Plaintiffs in connection with
the UROGESIC Mark. Burel’s adoption and unauthorized use of the UROLET MB Mark
infringes Plaintiffs’ exclusive rights in its federally registered UROGESIC BLUE Mark in
violation of . . . the Lanham Act.”). As such, if the FL action were to proceed, there exists a
substantial certainty that Burel would play a prominent role in it. Moreover, the pleadings
establish that certain factual findings would need to be made as to Burel that would render it a
necessary party. In this sense, the Court finds sufficient similarity between the parties of the MS
action and the parties of the FL action for purposes of the first-to-file rule – the common link
besides Plaintiffs being Burel, not Defendant. See Cichocki v. Mass. Bay Cmty. College, --- F.
Supp. 3d ----, 2016 WL 4194239, at *7 (D. Mass. 2016) (finding, for purposes of res judicata,
sufficient identify between the parties of two suits on the basis that “[a] review of both
complaints establishes that Hwang was a prominent player in both cases—the factual allegations
2

Notably, Plaintiffs’ Complaint also specifically references the MS action. Id. at ¶ 97.

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Case No. 16-cv-62074-BLOOM/Valle
of both complaints are virtually identical despite the fact that Hwang was not a named party in
[the first action].”) (emphasis added). Thus, under these circumstances, the Court does not find
Defendant’s absence from the MS action to be an impediment to transfer. See generally Rudolph
and ME, Inc., 2011 WL 3919711, at *2 (“[A] precise identity of the parties is not required.”);
Save Power Ltd. v. Syntek Fin. Corp., 121 F.3d 947, 951 (5th Cir.1997) (stating that “[c]omplete
identity of parties is not required” to apply the rule); Hartford Accident & Indem. Co. v.
Margolis, 1992 WL 43484, at *1 (9th Cir. Mar. 5, 1992) (“Absolute identity of parties in the two
cases is not required.”); Homas & Betts Corp. v. Hayes, 222 F. Supp. 2d 994, 996 (W.D. Tenn.
2002) (stating that “precise identity of the parties to both actions is not required”) (citing Plating
Resources, Inc. v. UTI Corp., 47 F. Supp. 2d 899, 904 (N.D. Ohio 1999); EBW, Inc. v. Environ
Prods., Inc., 1996 WL 550020, at *3 (W.D. Mich. July 8, 1996) (stating that “a precise identity
of parties is simply not required”).
Relatedly, the Complaint in the FL action also undercuts Plaintiffs’ argument that there is
insufficient duplication of issues between the MS action and the FL action to warrant application
of the first-to-file rule. Specifically, of the seven counts asserted against Defendant in Plaintiffs’
Complaint, three of them – Counts I (False Advertising), IV (Trademark Infringement), and V
(Unfair Competition) – allege direct liability on the part of Burel (and contributory liability on
the part of Defendant). See ECF No. [1] at 18-19, 24-27. Moreover, the allegations made under
those counts mirror the allegations made under analogous counts in the MS action complaint –
Counts I (False Advertising), II (Trademark Infringement), and III (Trademark Infringement and
Unfair Competition) – which also allege direct liability on the part of Burel. Compare, e.g., id.
at ¶ 104 (“Burel’s false and misleading claims about the UROLET MB Products are material and
likely to influence the purchasing decisions of health care professionals and patients who

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consume Plaintiffs’ products.”), with ECF No. [18-1] at ¶ 83 (“[Burel’s] false and misleading
claims about the UROLET MB Products are material and likely to influence the purchasing
decisions of health care professionals and patients who consume Plaintiffs’ products.”). In
essence, for each of Plaintiffs’ contributory claims in the FL action, Plaintiffs will endeavor to
prove that which they are already attempting to prove in the MS action. See Optimum Techs.,
Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1245 (11th Cir. 2007) (“[C]ase law
suggests that a contributory infringement claim requires, at a minimum, both an allegation of a
direct infringement by a third party, and an allegation of an intentional or knowing contribution
to that infringement by the defendant.”).
Plaintiffs disregard this overlap in subject matter entirely, and instead assert that the FL
action is based on claims and issues that arose from Defendant’s conduct that occurred in the
state of Florida – i.e., Defendant’s alleged labeling and supplying of the UROLET MB
pharmaceutical product to the market from Florida – and that therefore “did not arise from the
same transaction or occurrence” as those of the MS action. ECF No. [27] at 10. This argument
is misplaced, as is Plaintiffs’ reliance on Dial HD, Inc. v. Clearone Commc’ns, Inc., 2010 WL
2010 WL 3732115 (S.D. Ga. Sept. 7, 2010), and Peter Brassler Holdings, L.P. v. Gebr.
Brasseler & Co., 2007 WL 1500296 (S.D. Ga. May 21, 2007). In Dial HD, the claims and issues
related to the second-filed case “substantially differ[ed]” from those in the first-filed case. 2010
WL 3732115, at *4. And although the court in Peter Brassler Holdings adopted a “transaction
or occurrence” test to conclude that the first-filed and second-filed cases lacked duplication, it
did so only because “the issues in [that] forum [did] not overlap with the issues [] litigated in the

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Northern District [of Georgia] at all.” 2007 WL 1500296, at *3 (emphasis added). 3 Here, unlike
in those cases, a substantial overlap in issues is present, and therefore a consideration of the
location of Defendant’s actions or Plaintiffs’ remaining claims that may not overlap with the MS
action is inapposite. See Rudolph and ME, Inc., 2011 WL 3919711, at *3 (“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.”) (quoting Villari
Brandes & Kline, P.C. v. Plainfield Specialty Holdings II, Inc., 2009 WL 1845236, at *6 (E.D.
Pa. June 26, 2009)); Walker v. Progressive Casualty Ins. Co., 2003 WL 21056704, *2 (W.D.
Wash. May 9, 2003) (“Exact parallelism between the two actions need not exist; it is enough if
the parties and issues in the two actions are ‘substantially similar.’”) (quoting Nakash v.
Marciano, 882 F.2d 1411, 1416 (9th Cir. 1989)); Centocor, Inc. v. MedImmune, Inc., 2002 WL
31465299, *3 (N.D. Cal. Oct. 22, 2002) (stating that the first-to-file rule does not require
identical issues or parties “so long as the actions involve closely related questions or common
subject matter”); Save Power Ltd. v. Syntek Finance Corp., 121 F.3d 947, 950 (5th Cir.1997)
(“Syntek argues that the ‘first-to-file’ rule does not apply in this case because neither the issues
nor the parties are identical to those in the Original Action. The rule does not, however, require
that cases be identical. The crucial inquiry is one of ‘substantial overlap.’”).
Finally, although it is appropriate to depart from the first-to-file rule “when there is a
showing that the balance of convenience tips in favor of the second forum or that there are
special circumstances which justify giving priority to the second action[,]” Philibert v. Ethicon,
Inc., 2005 WL 525330, at *1 (S.D. Fla. Jan. 14, 2005), no such showing has been made here.
3

More specifically, the court in Peter Brassler Holdings adopted Fed. R. Civ. P. 13(a)’s “transaction or
occurrence” test for compulsory counterclaims only after observing that “[n]o precedent guides [the] sort
of situation [with] similar parties but dissimilar issues.” Id.

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Specifically, Plaintiffs do not offer sufficient support for their assertion that “the balance of
convenience tips in favor of this forum” based on the relevant factors to be considered in
determining whether to transfer under 28 U.S.C. § 1404(a). ECF No. [27] at 11 n.3. The
gravamen of Plaintiffs’ arguments against transfer under 28 U.S.C. § 1404(a) is that this forum is
not inconvenient to Defendant, and that the Southern District of Mississippi would not
necessarily be more convenient to Defendant; but nowhere in their Response do Plaintiffs argue
that the convenience of this forum is so significant as to justify a departure from the strong
presumption under the first-to-file rule. In fact, Plaintiffs themselves appear to recognize the
lack of a significant imbalance in convenience between the two forums. See, e.g., ECF No. [27]
at 14 (“Although a transfer may provide a more convenient forum for WCP, which is the location
of Plaintiff Edwards Pharmaceutical headquarters, Rook’s allegation that WCP ‘cannot complain
that transferring this case out of Florida will cause them any inconvenience or burden’ [] fails to
meet its legal burden, which requires transfer to a more convenient forum.”) (emphasis added).
Overall, in consideration of the chronology of the MS action and the FL action, the
similarity of the parties, and the similarity of the issues, the Court finds that transfer pursuant to
the first-to-file rule is warranted. If the two actions were to proceed separately in different
venues, a waste of judicial resources and a potential for incompatible rulings would result from
the overlap of parties and issues described above. 4

4

Plaintiffs also make the argument that Defendant’s Motion to Transfer under the first-to-file rule is not
properly before this Court, ECF No. [27] at 10-11, and in doing so rely on the following language: “The
first to file rule not only determines which court may decide the merits of substantially similar issues, but
also establishes which courts may decide whether the second suit filed must be dismissed, stayed or
transferred and consolidated.” Ass Armor, LLC, 2015 WL 2155724, at *1 (quoting Cadle Co. v.
Whataburger of Alice, Inc., 174 F.3d 599, 606 (5th Cir.1999)). That language, however, simply speaks to
the deference owed by the second-filed court to the first-filed court with respect to how two cases should
proceed once the first-to-file rule is found applicable. See id. (“[U]nder the ‘first-filed rule,’ the court
where the subsequently filed action has been filed should defer to the court where the first action was
filed to allow that court to decide whether it should exercise jurisdiction over both cases in a consolidated

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B. Transfer Pursuant to 28 U.S.C. § 1404(a)
The Court declines to address Defendant’s argument for transfer pursuant to 28 U.S.C. §
1404 as the application of the first-to-file rule is dispositive. See Laskaris, 962 F. Supp. 2d at
1299; Rudolph and ME, Inc., 2011 WL 3919711, at *3.
IV. Conclusion
For the foregoing reasons, it is ORDERED AND ADJUDGED as follows:
1. Defendant Rook Pharmaceuticals, Inc.’s Motion to Transfer Case to Southern District of
Mississippi, ECF No. [18], is GRANTED.
2. Venue in the above-styled action is TRANSFERRED to the Southern District of
Mississippi.
3. The Clerk of the Southern District of Florida shall CLOSE this case and all pending
motions are DENIED as moot. 5
DONE AND ORDERED in Miami, Florida this 7th day of November, 2016.

_________________________________
BETH BLOOM
UNITED STATES DISTRICT JUDGE
Copies to:
Counsel of Record

action.”) (quoting Perkins v. Am. Nat. Ins. Co., 446 F. Supp. 2d 1350, 1353 (M.D. Ga. 2006)); see also
Laskaris, 962 F. Supp. 2d at 1299 (transferring venue pursuant to the first-to-file rule and explaining that
“[w]hether or not both cases should proceed independently is to be decided by the first-filed court”).
5
On October 27, 2016, Plaintiffs filed a Motion to Expedite Consideration of the Motion to Transfer and
for Reconsideration of the Court’s Order Staying Briefing on Plaintiffs’ Motion for Preliminary
Injunction, ECF No. [28] (“Motion to Expedite and for Reconsideration”), to which Defendant filed a
Response in Opposition, ECF No. [31]. The Court has equally considered these filings.

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