Jeffers Handbell Supply Inc v. Schulmerich Bells LLC
ORDER AND OPINION denying 6 Motion to Dismiss; finding as moot 6 Motion to Transfer Case. Signed by Honorable J Michelle Childs on 8/18/2017.(asni, )
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
ROCK HILL DIVISION
Jeffers Handbell Supply, Inc.
Schulmerich Bells, LLC,
Civil Action No.: 0:16-cv-03918-JMC
ORDER AND OPINION
Plaintiff Jeffers Handbell Supply, Inc. (“Jeffers”) filed a complaint against Defendant
Schulmerich Bells, LLC (“Schulmerich”), seeking a declaratory judgment that Jeffers’ goods and
services do not infringe on any trademark or trade dress associated with Schulmerich’s handbell
products and packaging. (ECF No. 1.) Before the court is Schulmerich’s motion to dismiss the
complaint or, alternatively, to transfer the action to the U.S. District Court for the Eastern District
of Pennsylvania, pursuant to 28 U.S.C. § 1404(a) and Fed. R. Civ. P. 12(b)(1) and (3). (ECF No.
6.) For the reasons that follow, the court DENIES the motion.
I. RELEVANT FACTUAL AND PROCEDURAL BACKGROUND
On November 29, 2016, a little more than two weeks before the instant declaratory
judgment action was filed in this court, Schulmerich filed a complaint in Pennsylvania state court
against Shawn Lackey, 1 an employee of Jeffers, asserting infringement and dilution of
Schulmerich’s trademarks and trade dress under federal and Pennsylvania law. (See ECF No. 111.) The complaint alleged that Lackey, had “recently beg[u]n to manufacture and distribute
Jeffers has elsewhere stated that, although named as Shawn L. Lackey in Shulmerich’s complaint,
the employee’s name is Phillip Shawn Lackey. See Schulmerich Bells, LLC v. Jeffers Handbell
Supply, Inc., No. 3:17-cv-00186-JMC (D.S.C.), ECF No. 1 at 1.
component parts related to musical handbells” with “design, color scheme[,] and overall aesthetic
appearance” that were “virtually identical to those of Schulmerich’s” such that “buyers will likely
confuse the two product lines of musical handbell component parts” in violation of Schulmerich’s
rights under the trademark laws. (Id. at 3; see also id. at 8-12 (detailing Lackey’s allegedly
infringing conduct).) The complaint alleged further that Lackey had distributed the offending
products through Jeffers, which acted as a retailer and advertised the products. (See id. at 3, 8-9.)
The original state-court complaint did not name Jeffers as a defendant (see id.), and Jeffers
filed the instant suit in this court on December 15, 2016, seeking a declaratory judgment of noninfringement of Schulmerich’s trademarks and trade dress and involving substantially the same
trademark matters at issue in Schulmerich’s state-court complaint against Lackey (see ECF No.
1); see also Schulmerich, No. 3:17-cv-00186-JMC, ECF No. 7 at 1. Among other things, in the
complaint in the instant action, Jeffers alleges that “Schulmerich has taken the position that
handbells distributed . . . [and] sold by Jeffers infringe Schulmerich’s alleged rights” under the
trademark laws (ECF No. 1 at 2), and Jeffers seeks a declaratory judgment that it has not infringed
Schulmerich’s trademark rights (see id. at 5-8.)
After learning of the instant action, Schulmerich, on January 5, 2017, amended its statecourt complaint to include Jeffers as a named defendant. See Schulmerich, No. 3:17-cv-00186JMC, ECF No. 1 at 6-24. The amended complaint alleged that Jeffers, along with Lackey, had
begun manufacturing, distributing, and selling component parts for musical handbells that “employ
virtually the same aesthetic appearance as those produced by Schulmerich[,] . . . are confusingly
similar to the well-known trade dress of Schulmerich’s handbells[, and] . . . mimic nearly every
element of the Schulmerich aesthetic design,” in violation of Shulmerich’s rights under the
trademark laws. Id. at 13-14. Thereafter, on January 18, 2017, Jeffers removed the state-court
action to the U.S. District Court for the Eastern District of Pennsylvania, pursuant to 28 U.S.C. §
1446(a). See Schulmerich, No. 3:17-cv-00186-JMC, ECF No. 1 at 1.
On January 30, 2017, Schulmerich filed the instant motion to dismiss the complaint or, in
the alternative, to transfer the action to the U.S District Court for the Eastern District of
Pennsylvania. (ECF No. 6.) First, Schulmerich argues that the action should be dismissed for lack
of subject-matter jurisdiction under Rule 12(b)(1) because Jeffers failed to plead a sufficient
injury-in-fact necessary to demonstrate its standing to bring a declaratory judgment action. (See
id. at 2; ECF No. 6-1 at 7-11.) Second, Schulmerich argues that the action should be dismissed or
transferred under Rule 12(b)(3) and § 1404(a) because this district is not the proper venue. (ECF
No. 6 at 3-4; ECF No. 6-1 at 11-18.) In this regard, Schulmerich asserts that this district is an
improper venue because Jeffers has failed to demonstrate that a substantial part of the events or
omissions giving rise to the claim occurred in South Carolina (see ECF No. 6 at 3; ECF No. 6-1 at
11-14) and because, in a series of purchase orders for Schulmerich handbell parts, Jeffers agreed
to resolve any dispute arising under such purchase orders in certain state or federal courts in
Pennsylvania (see ECF No. 6 at 3-4; ECF No. 6-1 at 14-18.) Third, Schulmerich argues that this
court should abstain from proceeding with the declaratory judgment action until the action brought
against Lackey and Jeffers in the U.S. District Court for the Eastern District of Pennsylvania is
resolved. (See ECF No. 6 at 4-6; ECF No. 6-1 at 18-30.)
The next day, on January 31, 2017, Jeffers filed a motion to stay the Pennsylvania action,
dismiss it, or transfer it to this district. See Schulmerich, No. 3:17-cv-00186-JMC, ECF No. 4. In
regard to transferring the action, the parties’ arguments focused largely on application of the firstfiled rule and exceptions to it. See id., ECF No. 4-1 at 8-15; id., ECF No. 6 at 7-19; see generally
Manuel v. Convergys Corp., 430 F.3d 1132, 1135 (11th Cir. 2005). While Jeffers’ motion remained
pending in the Pennsylvania action, the parties proceeded to brief this court on the instant motion
filed by Schulmerich, with Jeffers filing a response on February 10, 2017, Schulmerich filing a
reply on February 17, 2017, and Jeffers filing a sur-reply on February 21, 2017. (See ECF Nos. 11,
12, 14, 16.)
On February 21, 2017, the district court in Pennsylvania granted Jeffers’ motion. See
Schulmerich, No. 3:17-cv-00186-JMC, ECF Nos. 7, 8. The district court determined that, for
purposes of the first-filed rule, Jeffers’ declaratory judgment action filed in this court was the first
action filed in federal court and, thus, was filed before Schulmerich’s trademark action was filed
in federal court in Pennsylvania. See id., ECF No. 7 at 3-4. The district court also rejected
Schulmerich’s arguments that an exception to the first-filed rule applied under the circumstances
presented. See id. at 4-6. Accordingly, the district court transferred Schulmerich’s trademark action
to this court. 2 See id., ECF Nos. 7, 8, 13.
The next day, on February 22, 2017, Jeffers filed a supplemental response to the instant
motion to dismiss or transfer, addressing the transfer order from the district court in Pennsylvania.
(See ECF No. 17.) Jeffers argues that the transfer renders Schulmerich’s arguments for abstention
moot. (See id.) Schulmerich has not attempted to file a supplemental reply or to otherwise address
how the transfer order might affect the court’s consideration of the instant motion.
II. LEGAL STANDARDS
A. Rule 12(b)(1) standard
A motion to dismiss for lack of subject matter jurisdiction raises the fundamental question
of whether a court has jurisdiction to adjudicate the matter before it. Fed. R. Civ. P. 12(b)(1).
The district court subsequently denied Schulmerich’s motion to reconsider its order granting the
motion to transfer. See Schulmerich, No. 3:17-cv-00186-JMC, ECF Nos. 11, 12.
“Federal courts are courts of limited subject matter jurisdiction, and as such there is no presumption
that the court has jurisdiction.” Pinkley, Inc. v. City of Frederick, 191 F.3d 394, 399 (4th Cir.
1999). “In determining whether jurisdiction exists, the district court is to regard the pleadings’
allegations as mere evidence on the issue, and may consider evidence outside the pleadings without
converting the proceeding to one for summary judgment.” Richmond, Fredericksburg & Potomac
R.R. Co. v. United States, 945 F.2d 765, 768 (4th Cir. 1991) (citing Adams v. Bain, 697 F.2d 1213,
1219 (4th Cir. 1982)). “The moving party should prevail only if the material jurisdictional facts
are not in dispute and the moving party is entitled to prevail as a matter of law.” Id. In a motion to
dismiss pursuant to Rule 12(b)(1), “[t]he burden of establishing subject matter jurisdiction rests
with the plaintiff.” Demetres v. E.W. Constr., Inc., 776 F.3d 271, 272 (4th Cir. 2015).
“The power of federal courts to entertain suits is circumscribed by Article III of the United
States Constitution, which limits judicial authority to ‘Cases’ and ‘Controversies.’” Bishop v.
Bartlett, 575 F.3d 419, 423 (4th Cir. 2009) (citing Lujan v. Defenders of Wildlife, 504 U.S. 555,
559-60 (1992); Warth v. Seldin, 422 U.S. 490, 498 (1975)). “‘[T]he doctrine of standing serves to
identify those disputes which are appropriately resolved through the judicial process,’ and thus
meet the requirements of Article III.” Id. (quoting Whitmore v. Arkansas, 495 U.S. 149, 154-55
(1990)). To have constitutional standing, a party must meet three requirements:
(1) the party has suffered an “injury in fact” that is (a) concrete and
particularized and (b) actual or imminent, not conjectural or hypothetical; (2)
the injury is fairly traceable to the challenged action of the defendant; and (3)
it is likely, as opposed to merely speculative, that the injury will be redressed
by a favorable decision.
Id. (brackets omitted) (quoting Friends of the Earth, Inc. v. Laidlaw Envtl. Servs. (TOC), Inc., 528
U.S. 167, 180-81 (2000) (citing Lujan, 504 U.S. at 560-61; Long Term Care Partners, LLC v.
United States, 516 F.3d 225, 231 (4th Cir. 2008)).
B. Rule 12(b)(3) standard
To grant a motion under Rule 12(b)(3), the court must find that the venue is improper. See
Fed. R. Civ. P. 12(b)(3). “‘When a defendant objects to venue under Rule 12(b)(3), the plaintiff
bears the burden of establishing that venue is proper.’” Ameristone Tile, LLC v. Ceramic
Consulting Corp., Inc., 966 F. Supp. 2d 604, 616 (D.S.C. 2013) (brackets omitted) (quoting Butler
v. Ford Motor Co., 724 F. Supp. 2d 575, 586 (D.S.C. 2010)). However, the plaintiff is obliged “to
make only a prima facie showing of proper venue in order to survive a motion to dismiss.” Aggarao
v. MOL Ship Mgmt. Co., Ltd., 675 F.3d 355, 366 (4th Cir. 2012) (citing Mitrano v. Hawes, 377
F.3d 402, 405 (4th Cir. 2004)). “In assessing whether there has been a prima facie venue showing,
[the court] view[s] the facts in the light most favorable to the plaintiff.” Id. (citing Global Seafood
Inc. v. Bantry Bay Mussels Ltd., 659 F.3d 221, 224 (2d Cir. 2011)). Moreover, “[o]n a motion to
dismiss under Rule 12(b)(3), the court is permitted to consider evidence outside the pleadings.” Id.
at 365-66 (citing Sucampo Pharm., Inc. v. Astellas Pharma, Inc., 471 F.3d 544, 550 (4th Cir.
A case filed in an improper venue must be dismissed, or, if in the interests of justice,
transferred to a district in which it could have been brought. 28 U.S.C. § 1406(a). Under the general
venue statute, a civil action may be brought, and venue is proper, in:
(1) a judicial district in which any defendant resides, if all defendants are
residents of the State in which the district is located; (2) a judicial district in
which a substantial part of the events or omissions giving rise to the claim
occurred, or a substantial part of property that is the subject of the action is
situated; or (3) if there is no district in which an action may otherwise be
brought as provided in this section, any judicial district in which any defendant
is subject to the court's personal jurisdiction with respect to such action.
28 U.S.C. § 1391(b).
Schulmerich argues (A) that Jeffers has not sufficiently pled an injury-in-fact necessary for
it to meet the constitutional standing requirement; (B) that venue in this district is improper because
a substantial part of the events or omissions giving rise to Jeffers’ declaratory judgment action did
not occur in South Carolina and because the forum-selection clause in the purchase orders between
Schulmerich and Jeffers prescribes courts in Pennsylvania as the only permissible venues; and (C)
that the court should abstain from proceeding with the declaratory judgment action until
Schulmerich’s trademark action that it brought in Pennsylvania is resolved. The court addresses
each of these arguments in turn.
Prior to the Supreme Court’s decision in MedImmune, Inc. v. Genetech, Inc., 549 U.S. 118
(2007), when confronted by a plaintiff seeking a declaratory judgment of non-infringement in
trademark and like cases, courts in the Fourth Circuit employed a two-pronged test, borrowed from
the Federal Circuit, to determine whether a case or controversy existed: (1) the defendant’s conduct
must have created a reasonable apprehension in the plaintiff that the defendant would initiate
litigation if the plaintiff continued the allegedly infringing activity, and (2) the plaintiff must have
actually produced the infringing product or have prepared to produce it. See Superguide Corp. v.
Kegan, 987 F. Supp. 481, 483 (W.D.N.C. 1997) (citing Windsurfing Int’l, Inc. v. AMF Inc., 828
F.2d 755, 757-58 (Fed. Cir. 1987)); CAE Screenplates, Inc. v. Beloit Corp., 957 F. Supp. 784, 78889 (E.D. Va. 1997) (collecting Federal Circuit cases); Bioxy, Inc. v. Birko Corp., 935 F. Supp. 737,
741 (E.D.N.C. 1996) (same); Ryobi Am. Corp. v. Peters, 815 F. Supp. 172, 173 (D.S.C. 1993)
(citing Spectronics Corp. v. H.B. Fuller Co., Inc., 940 F.2d 631, 634 (Fed. Cir. 1991)); see also
10B Charles Alan Wright et al., Federal Practice and Procedure § 2761 (4th ed. 2016) (describing
two-pronged test). In MedImmune, however, the Supreme Court revisited its holdings regarding
constitutional standing requirements in declaratory judgment actions in the patent infringement
context and expressly rejected the reasonable apprehension component of the Federal Circuit’s
two-prong test. See 549 U.S. at 132 n.11. Following MedImmune, the Federal Circuit abandoned
its two-prong test, see SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1380 (Fed. Cir.
2007), and courts within the Fourth Circuit have followed suit, see InVue Sec. Prods, Inc. v. Merch.
Techs., Inc., No. 3:12-cv-88-RJC-DSC, 2012 WL 2577452, at *2-3 (W.D.N.C. July 3, 2012);
Alpharma, Inc. v. Purdue Pharma L.P., 634 F. Supp. 2d 626, 629 n.3 (W.D. Va. 2009);
Neuralstem, Inc. v. StemCells, Inc., 573 F. Supp. 2d 888, 891-95 (D. Md. 2008); Apotex, Inc. v.
Novartis AG, No. 3:06-cv-698, 2007 WL 5493499, at *4 (E.D. Va. Sept. 4, 2007), as have other
courts, see Surefoot LC v. Sure Foot Corp., 531 F.3d 1236, 1238, 1241-44 (10th Cir. 2008)
(Gorsuch, J.) (explaining, in case in which putative trademark infringer sought declaratory
judgment of non-infringement, that MedImmune prevented application of Federal Circuit’s twoprong test that had been largely adopted by Tenth Circuit); see also U.S. Water Servs., Inc. v.
ChemTreat, Inc., 794 F.3d 966, 971-73 (8th Cir. 2015); Nike, Inc. v. Already, LLC, 663 F.3d 89,
94-96 (2d Cir. 2011); Vantage Trailers v. Beall Corp., 567 F.3d 745, 748-49 (5th Cir. 2009).
Under MedImmune, the test for standing needed to maintain a declaratory judgment action
in the context of a patent case is the same as in any other context: whether, “under all the
circumstances,” a “definite and concrete” controversy exists between parties having adverse legal
interests and is of sufficient “immediacy and reality to warrant the issuance of a declaratory
judgment,” such that a declaration would not simply amount to “an opinion advising what the law
would be upon a hypothetical state of facts.” 549 U.S. at 127 (quoting Md. Cas. Co. v. Pac. Coal
& Oil Co., 312 U.S. 270, 273 (1941)); see also Teva Pharm. USA, Inc. v. Novartis Pharm. Corp.,
482 F.3d 1330, 1338 (Fed. Cir. 2007). Thus, since MedImmune, the Federal Circuit’s articulation
of the minimum standing requirement in such cases has been more lenient than under its previous
two-prong test. See Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 902 (Fed. Cir. 2008).
The Federal Circuit has “held that ‘Article III jurisdiction may be met where the patentee takes a
position that puts the declaratory judgment plaintiff in the position of either pursuing arguably
illegal behavior or abandoning that which he claims a right to do.’” Arkema Inc. v. Honeywell Int’l,
Inc., 706 F.3d 1351, 1357 (Fed. Cir. 2013) (quoting SanDisk, 480 F.3d at 1381). Under this
formulation, although reasonable apprehension of litigation is not necessary, the first prong of the
former test remains relevant because demonstrating reasonable apprehension is one method that a
plaintiff may use to show that it must choose between engaging in arguably illegal behavior and
forgoing a claimed legal right. See id. at 1358 n.5 (“While a declaratory judgment plaintiff is no
longer required to demonstrate a reasonable apprehension of suit, such a showing remains
sufficient to establish jurisdiction.” (internal citations omitted) (citing, inter alia, Streck, Inc. v.
Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1282 (Fed. Cir. 2012))); Prasco, LLC v. Medicis
Pharm. Corp., 537 F.3d 1329, 1336 (Fed. Cir. 2008) (“While the Supreme Court rejected the
reasonable apprehension of suit test as the sole test for jurisdiction, it did not completely do away
with the relevance of a reasonable apprehension of suit. Rather, following MedImmune, proving a
reasonable apprehension of suit is one of multiple ways that a declaratory judgment plaintiff can
satisfy the more general all-the-circumstances test to establish that an action presents a justiciable
Article III controversy.”); accord U.S. Water Servs., 794 F.3d at 973; Titan Atlas Mfg., Inc. v. Sisk,
No. 1:11cv00012, 2011 WL 3665122, at *4 (W.D. Va. Aug. 22, 2011); Mike’s Train House, Inc.
v. Broadway Ltd. Imports, LLC, 708 F. Supp. 2d 527, 536 n.20 (D. Md. 2010). Likewise, the
second prong—whether the plaintiff has engaged in “meaningful preparation to conduct
potentially infringing activity”—“remains an important element in the totality of circumstances
which must be considered in determining whether a declaratory judgment is appropriate” because
if the “plaintiff has not taken significant, concrete steps to conduct infringing activity, the dispute
is neither ‘immediate’ nor ‘real.’” Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 880 (Fed. Cir.
2008); accord JIA Jewelry Importers of Am., Inc. v. Pandora Jewelry, LLC, No. CCB-11-982,
2011 WL 4566118, at *2 (D. Md. Sept. 29, 2011); Fox Grp., Inc. v. Cree, Inc., 819 F. Supp. 2d
520, 523 (E.D. Va. 2011); Barnhardt Mfg. Co. v. Ill. Tool Works, Inc., No. 3:08-cv-617-W, 2010
WL 1571168, at *3 (W.D.N.C. Apr. 16, 2010).
It does not appear that the parties have recognized the changes to the standing analysis
occasioned by MedImmune and the case law following it. Jeffers asks for application of the twoprong test and asserts that, because both prongs are satisfied, Schulmerich’s argument that Jeffers
lacks standing to bring its declaratory judgment action is meritless. The court agrees that Jeffers
would satisfy the two-prong test and, because satisfying this more stringent test results in Jeffers’
satisfying the more lenient post-MedImmune test, concludes that Jeffers has met its burden to
demonstrate its standing to bring this declaratory judgment action.
There is no question that Jeffers has satisfied the two-pronged test. The court need look no
further than the original complaint filed by Schulmerich in Pennsylvania state court. Regarding
the first prong, Schulmerich sued Lackey, an employee of Jeffers, alleging that his manufacturing
and distributing of handbell parts infringed Schulmerich’s trademarks and trade dress and that one
of Lackey’s methods of distribution was through Jeffers. The facts that Schulmerich’s complaint
specifically named Jeffers, that it alleged that Jeffers was engaging in the same distribution conduct
for which it was suing a third party, that the third party was an employee of Jeffers, and that the
third party whom it sued for distribution was a customer of Jeffers’ distribution and retailing
services all demonstrate that Jeffers had a reasonable apprehension of a future suit against it by
Schulmerich. See Prasco, 537 F.3d at 1341 (“Prior litigious conduct is one circumstance to be
considered in assessing whether the totality of circumstances creates an actual controversy.”);
Bioxy, 935 F. Supp. at 742 (“A declaratory judgment plaintiff may claim reasonable apprehension
of future litigation sufficient to create a case or controversy if the patentee . . . sues or threatens to
sue the plaintiff’s customers[ or] initiates litigation against manufacturers of similar products . . .
.” (citing C.R. Bard, Inc. v. Schwartz, 716 F.2d 874, 881 & n.6 (Fed. Cir. 1983))). 3 Regarding the
second prong, Schulmerich’s complaint itself alleged that Jeffers distributed and advertised the
allegedly infringing products for Lackey, and there appears no dispute that, at the time the
declaratory judgment action was filed, Jeffers actually manufactured, distributed, and sold
products that Schulmerich alleges infringes on its trademarks. Thus, the court has no trouble
concluding that Jeffers engaged in meaningful preparation to produce, and actually did produce,
the allegedly infringing products. Because the record shows that Jeffers satisfies both prongs of
the pre-MedImmune test, the court concludes that Jeffers has met its burden to demonstrate
standing under the new, more lenient post-MedImmune test. 4
For these same reasons, Schulmerich itself acknowledges that Jeffers should have reasonably
apprehended that it was about to be sued for trademark infringement. In arguing that the court
should abstain from proceeding on the declaratory judgment action until the Pennsylvania action
is resolved, Schulmerich explains that “Jeffers knew of the Pennsylvania [a]ction, and it should
have foreseen its eventual involvement in the Pennsylvania [action]—especially if Lackey is, in
fact, an employee of Jeffers. The principle of respondeat superior would make Jeffers’
involvement inevitable.” (ECF No. 6-1 at 29 n.7.)
In addition, based on the same record, the court concludes under the totality of the circumstances
that Schulmerich’s conduct in filing its trademark action in Pennsylvania state court put Jeffers in
a position of either pursuing the arguably illegal behavior of manufacturing, distributing, and
selling the allegedly infringing handbell parts or abandoning a business, in which Jeffers claims a
right to engage.
Regarding venue, Schulmerich first argues that venue in this court is improper because
Jeffers has failed to demonstrate that, under the transactional venue statute, a substantial part of
the acts or omissions giving rise to this declaratory judgment action occurred in this district.
Schulmerich argues second that this action should be transferred to the U.S. District Court for the
Eastern District of Pennsylvania under 28 U.S.C. § 1494(a) due to a forum-selection clause in
purchase orders between Schulmerich and Jeffers. The court addresses these arguments in turn.
1. Transactional venue
Unlike actions involving other intellectual property, trademark infringement actions are
subject to the general venue provisions of § 1391, see Charles Alan Wright et al., Federal Practice
and Procedure § 3806 (4th ed. 2013), as are actions seeking a declaratory judgment of noninfringement of a trademark, cf. id.§ 3823 (noting that special patent and copyright venue statute
“plays no role when an alleged infringer sues for a declaration of non-infringement or that the
patent is invalid . . . even though such a declaratory judgment action is ‘the mirror image’ of the
action for infringement that the [defendant] could bring.”). Paragraph (2) of § 1391(b), which
permits venue in a “district in which a substantial part of the events or omissions giving rise to the
claim occurred,” 28 U.S.C. § 1391(b)(2), appears to be the only paragraph of the general venue
statute applicable to the circumstances at issue in this case. In general, for transactional venue
under § 1391(b)(2), “[t]he test for determining venue is not the defendant’s ‘contacts’ with a
particular district, but rather the location of those ‘events or omissions giving rise to the claim.’”
Cottman Transmission Sys., Inc. v. Martino, 36 F.3d 291, 294 (3d Cir. 1994); see Zike, LLC v.
Catalfumo, No. 6:11-1841-TMC, 2012 WL 12867973, at *3 (D.S.C. Feb. 29, 2012) (“‘The
statutory standard for venue focuses not on whether a defendant has made a deliberate contact—a
factor in the analysis of personal jurisdiction—but on the location where events occurred.’”
(quoting MTGLQ Inv’rs, L.P. v. Guire, 286 F. Supp. 2d 561, 565 (D. Md. 2003))). “It is sufficient
for venue that a substantial part of the events occurred in a district, ‘even if a greater part of the
events occurred elsewhere.’” Zike, 2012 WL 12867973, at *3 (quoting Power Paragon, Inc. v.
Precision Tech. USA, Inc., 605 F. Supp. 2d 722, 726 (E.D. Va. 2008).
Schulmerich contends that, under § 1391(b)(2), Jeffers has failed to demonstrate that a
substantial part of the events or omissions giving rise to the declaratory judgment action occurred
in South Carolina. (ECF No. 6-1 at 11-13.) In Schulmerich’s view, Jeffers must show that
Schulmerich sells products in South Carolina or that it specifically targets and directs advertising
and sales efforts in South Carolina. (Id. at 12.) Schulmerich points out that Jeffers has not alleged
these facts and that the only allegation that Jeffers has lodged—that Schulmerich maintains a
website accessible in South Carolina—is insufficient to make venue in this court permissible. (Id.
The court disagrees with Schulmerich that, in order to demonstrate that venue in this district
is proper, Jeffers must provide evidence of Schulmerich’s activities in South Carolina and that
Jeffers’ failure to do so would be, without more, sufficient justification to grant the instant motion.
Implicit in Schulmerich’s argument is the notion that, in assessing whether venue has been
properly laid under § 1391(b)(2), the court should look to the activities of the defendant within the
forum rather than the activities of the plaintiff. In the leading case for this proposition, Woodke v.
Dahm, 70 F.3d 983 (8th Cir. 1995), the Eighth Circuit was faced with a trademark infringement
action, in which the plaintiff trademark owner averred that venue was proper in the forum in which
he resided because, although he provided no evidence that the defendants had advertised or sold
any product using the infringing mark within that forum, he had proved, among other things, that
he had incurred the injury in the forum where he resided. 70 F.3d at 984-85. In ruling that venue
does not lie in a forum merely because the plaintiff was injured there, the Eighth Circuit explained:
[A]ccepting [the plaintiff’s] argument would work a transformation of the
venue statute that Congress could not have intended. One of the central
purposes of statutory venue is to ensure that a defendant is not “haled into a
remote district having no real relationship to the dispute.” While the present
venue statute was certainly intended to expand the number of venues available
to a plaintiff, we are reluctant to impute to Congress an intent to abandon
altogether the protection of defendants as a relevant consideration in venue
matters. We think it far more likely that by referring to “events or omissions
giving rise to the claim,” Congress meant to require courts to focus on relevant
activities of the defendant, not of the plaintiff. For one thing, it is not easy to
know how a plaintiff’s “omissions” could ever be relevant to whether a claim
has arisen. For another, . . . if Congress had wanted to lay venue where the
plaintiff was residing when he was injured, it could have said so expressly. We
therefore reject [plaintiff]’s argument that venue lies in [the forum in which he
resided] simply because that was where he was residing when the [injury]
Id. at 985 (emphasis added) (internal citation omitted).
Although the court does not quibble with the apparent holding of Woodke, that
transactional venue under § 1391(b)(2) is not established in a forum merely because the plaintiff
resided in that forum at the time he was injured, the court cannot accept some of the Eighth
Circuit’s rationale in reaching that holding. Specifically, the court disagrees with the notion that
the statute “require[s] courts to focus on relevant activities of the defendant, not of the plaintiff.”
Id. In this instance, the court believes Woodke’s “requirement” is an unfortunate example of judges
auguring the intent of lawmakers from sources outside the text of the statute the lawmakers enacted
and then enforcing the perceived intent underlying the statute rather than enforcing its text. See In
re Enron Corp., 317 B.R. 701 (Bankr. S.D. Tex. 2004) (“The court respectfully disagrees with the
analysis in Woodke. The venue statute states that an action may be filed in ‘a judicial district in
which a substantial part of the events or omissions giving rise to the claim occurred,’ and does not
specify that a court must look only to the defendant’s activities, as the Woodke court holds. Woodke
inserts language in § 1391 that alters the statute’s meaning. The court declines to follow Woodke’s
reading of § 1391(b) to the extent it focuses on defendant’s activities only.” (internal citation and
ellipsis omitted)); accord Safety Nat’l Cas. Corp. v. U.S. Dep’t of Treasury, No. H-07-643, 2007
WL 7238943, at *5 (S.D. Tex. Aug. 20, 2007). To borrow a phrase from Woodke, if lawmakers
had intended to have venue established by requiring courts to focus solely or predominantly on the
defendant’s activities in the forum, it could have said so expressly in the text of the statute. As this
court sees it, in its haste to forswear imputing to lawmakers an intent to ignore a defendant’s
activities, an intent that is not supported in the text, the Eighth Circuit proceeded to impute to
lawmakers an intent to ignore a plaintiff’s activities (or nearly so), an intent that also is not
supported by the text. It is no surprise, then, that other courts of appeals have declined to adopt
Woodke’s requirement that courts focus on the defendant’s activities and instead “have chosen a
more holistic view of the acts underlying a claim.” Uffner v. La Reunion Francaise, S.A., 244 F.3d
38, 42 n.6 (1st Cir. 2001); see also First of Mich. Corp. v. Bramlet, 141 F.3d 260, 263-64 (6th Cir.
1998) (declining to limit the review of the events or omissions to the actions of the defendant);
Cottman, 36 F.3d at 294 (same). This court follows their lead.
Moreover, the court notes that Woodke’s requirement that courts focus on the defendant’s
activities is especially unpersuasive when examined in light of the circumstances of the instant
case. Part of the Eighth Circuit’s reasoning appears to have been that it could not conceive of a
scenario in which “a plaintiff’s ‘omissions’ could ever be relevant to whether a claim has arisen.”
Woodke, 70 F.3d 983. An action, like the present one, in which a plaintiff seeks a declaratory
judgment that it did not infringe a trademark appears to be just such a scenario, as the plaintiff is
asserting that it is entitled to judgment on a claim at least in part because of actions that it did not
take, namely actions that would constitute trademark infringement. Thus, even if the rationale
underlying Woodke’s holding was otherwise accepted, a declaratory judgment action alleging noninfringement appears to present a scenario for which Woodke’s rationale does not account and,
thus, to which it should not apply. For this reason as well, the court rejects Schulmerich’s implied
contention that Jeffers must present evidence of Shulmerich’s activities in South Carolina in order
to establish venue.
Having rejected Schulmerich’s argument, the court turns to consider whether Jeffers has
met its burden to establish that venue is proper in this district under § 1391(b)(2). In general, “in
determining whether events or omissions are sufficiently substantial to support venue under the
amended statute, a court should not focus only on those matters that are in dispute or that directly
led to the filing of the action. Rather, it should review ‘the entire sequence of events underlying
the claim.’” Mitrano, 377 F.3d at 405 (internal citation omitted) (quoting Uffner, 244 F.3d at 42
(1st Cir. 2001)). There is a surprising dearth of authority directly addressing transactional venue
under § 1391(b)(2) in the context of an action for declaratory judgment of non-infringement of a
trademark or assessing the entire sequence of events that underlies such an action. Before doing
so in this case, the court briefly looks first to relevant aspects of the law regarding transactional
venue in trademark infringement actions and in actions for declaratory judgment of noninfringement of a patent.
Although patent infringement cases are governed by a special patent venue statute, “[i]n a
declaratory judgment action alleging . . . non-infringement, venue is governed by the general venue
statute, 28 U.S.C. § 1391, not . . . the special patent venue statute.” D2L Ltd. v. Blackboard, Inc.,
671 F. Supp. 2d 768, 778 n.10 (D. Md. 2009) (citing, inter alia, Gen. Tire & Rubber Co. v. Watkins,
326 F.2d 926, 929 (4th Cir. 1964)); see also VE Holding Corp. v. Johnson Gas Appliance Co., 917
F.2d 1574, 1583 (Fed. Cir. 1990) (“It has long been held that a declaratory judgment action alleging
that a patent is invalid and not infringed—the mirror image of a suit for patent infringement—is
governed by the general venue statutes, not by [28 U.S.C.] § 1400(b).”), abrogated on other
grounds by TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017); 14D
Wright et al., supra, § 3823 (“Section 1400(b) does not apply to actions for declaratory judgment,
a form of action that was unknown when the 1897 statute was adopted.”). In determining whether
venue is appropriate in a declaratory judgment action alleging non-infringement of a patent, courts
have concluded that a substantial part of the events or omissions giving rise to such an action
occurs where the acts that would give rise to a potential claim of patent infringement occurred. See
Wise v. Lindamood, 89 F. Supp. 2d 1187, 1198 (D. Colo. 1999) (“[M]ost, if not all, of [the
p]laintiffs’ alleged infringement has taken place in [the district]. That the alleged infringement
arises in the context of a declaratory judgment action [alleging non-infringement by the plaintiffs]
does not change the result. Accordingly, I conclude that venue is proper in [the district].”). Thus,
courts look to where the putatively infringing products are designed, manufactured, stored,
advertised, and sold. See Sudden Valley Supply LLC v. Ziegmann, No. 4:13cv53JCH, 2013 WL
2099440, at *5 (E.D. Mo. May 14, 2013); Pro Sports Inc v. West, 639 F. Supp. 2d 475, 484 (D.N.J.
2009); Election Sys. & Software, Inc. v. Avante Int’l Tech. Corp., No. 8:07cv375, 2008 WL
943338, at *3 (D. Neb. April 7, 2008); Wells’ Dairy Inc. v. Estate of Richardson, 89 F. Supp. 2d
1042, 1054 (N.D. Iowa 2000); Dakotah, Inc. v. Tomelleri, 21 F. Supp. 2d 1066, 1073 (D.S.D.
Of course, this is not to say that courts have not considered other factors as well, such as where
the putative infringer has its place of business, see W. Digital Techs., Inc. v. Bd. of Regents of the
Univ. of Tex. Sys., No. C 10-3595 SBA, 2011 WL 97785, at *3 (N.D. Cal. Jan. 12, 2011); Pro
Sports, 639 F. Supp. 2d at 484, and where the patent owner has initiated enforcement actions, see
Sudden Valley Supply, 2013 WL 2099440, at *5; W. Digital, 2011 WL 97785, at *3; Wells’ Dairy,
89 F. Supp. 2d at 1054.
In a trademark infringement action, venue is appropriate not only in “the location where
there are sales or advertising of goods or services bearing the accused mark” but also in “the
location where [alleged infringer] placed the accused mark on the goods or prepared advertising
bearing the accused mark,” which “will usually also be the same place as where the [alleged
infringer] ‘resides.’” 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §
32:64 (4th ed.); see also Kaia Foods, Inc. v. Bellafiore, 70 F. Supp. 3d 1178, 1184 (N.D. Cal.
2014) (“In a trademark infringement action, a substantial part of the events occur both where the
labels are affixed and where confusion of purchasers is likely to occur.”). Thus in assessing
whether transactional venue is appropriate under § 1391(b)(2), “[c]ourts in [trademark
infringement] cases look to whether various events took place in the forum district—notably, the
affixing of allegedly infringing labels, sales, customer confusion, and whether the [alleged
infringer] actively targeted the district for advertising or other sales-related purposes.” 14D Wright
et al., supra, § 3806. 6
Combining aspects from the law of transactional venue in declaratory judgment actions
alleging non-infringement of a patent and in trademark infringement actions, the court concludes
that, generally, a substantial part of the events or omissions giving rise to a declaratory judgment
action alleging non-infringement of a trademark occurs in the location where there are sales or
advertising of goods or services bearing the putatively infringing mark as well as in the location
where the plaintiff placed the putatively infringing mark on the goods or prepared advertising
bearing the mark. The court’s conclusion arises from the fact that, in the closely analogous field
of patent litigation, venue for a declaratory judgment action alleging non-infringement generally
Unlike in a patent infringement action, the manufacturing within a forum of the product to which
an allegedly infringing mark is later affixed, alone, is insufficient to establish venue in that forum
in a trademark infringement action. See 14D Wright et al., supra, § 3806.
will lie where the events or omissions that would give rise to a potential claim for patent
infringement occur. The court sees no reason why the same underlying rationale should not apply
in the field of trademark litigation, and venue for a declaratory judgment action alleging noninfringement, although it may also lie in other fora, generally will lie where the events or omissions
that would give rise to a potential claim for trademark infringement occur. See Flotsam of Cal.,
Inc. v. Huntington Beach Conference & Visitors Bureau, No. C 06-07028 MMC, 2007 WL
274836, at *1 (N.D. Cal. Jan. 31, 2007); Spiegelberg v. Collegiate Licensing Co., 402 F. Supp. 2d
786, 790 (S.D. Tex. 2005); Bounty-Full Entm’t, Inc. v. Forever Blue Entm’t Grp., Inc., 923 F.
Supp. 950, 958 (S.D. Tex. 1996). Because transactional venue for trademark infringement actions
is appropriate in the locations where there are sales or advertising of the allegedly infringing goods
or services and where the alleged infringer placed the allegedly infringing mark on the goods or
prepared the allegedly infringing advertising, venue generally would be appropriate in these same
locations for mirror-image declaratory judgment actions alleging non-infringement of a trademark.
Here, it appears undisputed that Jeffers advertised and sold the handbells and handbell
components that allegedly infringe on Schulmerich’s trademarks in South Carolina and that Jeffers
placed the allegedly infringing marks or dress on the handbells and handbell components in South
Carolina. (See ECF No. 11 at 3; ECF No. 11-8.) Accordingly, the court concludes that Jeffers has
met its burden to demonstrate that venue is appropriate in this district.
2. Forum-selection clause
Second, aside from it arguments regarding transactional venue, which the court has
rejected, Schulmerich also argues that the case should be transferred for convenience pursuant to
§ 1404(a) to the U.S. District Court for the Eastern District of Pennsylvania because a forumselection clause in purchase orders between Schulmerich and Jeffers prescribes courts in
Pennsylvania as the only permissible venues. (See ECF No. 6-1 at 14-18; ECF No. 6-2; ECF No.
6-3.) Schulmerich asserts that Jeffers accepted numerous purchase orders from Schulmerich
regarding sales of goods or services (see ECF No. 6-1 at 16-17) and notes that each purchase order
specified that, by accepting it, Jeffers “agree[d] to be bound by the terms and conditions set forth”
in a separate document titled “Terms and Conditions” (the “T&C”) (ECF No. 6-3). The T&C states
that “all disputes arising under any invoice and/or [the T&C] shall be resolved in the state courts
of the Commonwealth of Pennsylvania, specifically the Court of Common Pleas of Bucks County,
Pennsylvania, or in the United States District Court for the Eastern District of Pennsylvania.” (ECF
No. 6-2 ¶ 14.) Schulmerich asserts that the T&C’s forum-selection clause applies to Jeffers’
declaratory judgment action because the impasse culminating in the trademark dispute that is the
subject of the declaratory judgment action arose in the context of Jeffers’ and Schulmerich’s
business relationship. (ECF No. 6-1 at 17.) Specifically, Schulmerich avers that the trademark
dispute was somehow occasioned by Schulmerich’s 2013 decision to stop selling authorized
handbell components to Jeffers. (Id.)
“[A] district court considering a § 1404(a) motion must evaluate both the convenience of
the parties and various public-interest considerations” and, “[o]rdinarily, . . . would weigh the
relevant factors and decide whether, on balance, a transfer would serve ‘the convenience of parties
and witnesses’ and otherwise promote ‘the interest of justice.’” Atl. Marine Constr. Co., Inc. v.
U.S. Dist. Ct. for the W. Dist. of Tex., ___ U.S. ___, 134 S. Ct. 568, 581 (2013) (internal footnote
and parenthetical omitted) (quoting 28 U.S.C. § 1404(a)). “The calculus changes, however, when
the parties’ contract contains a valid forum-selection clause, which ‘represents the parties’
agreement as to the most proper forum,’” as “‘a valid forum-selection clause should be given
controlling weight in all but the most exceptional cases.’” Id. (brackets omitted) (quoting Stewart
Org., Inc. v. Ricoh Corp., 487 U.S. 22, 31, 33 (1988)). “Of course, a forum[-selection] clause will
govern only if it applies to the dispute at hand.” 14D Wright et al., supra, § 3803.1. In determining
the scope of the forum-selection clause, the court looks “to the language of the parties’ contracts
to determine which causes of action are governed by the forum selection clauses.” Marinechance
Shipping, Ltd. v. Sebastian, 143 F.3d 216, 222 (5th Cir. 1998).
The court concludes that, even assuming the T&C’s forum-selection clause is otherwise
valid, the trademark dispute at issue in this declaratory judgment action is outside the clause’s
scope. The T&C’s forum-selection clause specifies that it applies to all disputes arising under the
purchase orders or the T&C, but Schulmerich does not argue that the parties’ rights involving the
use of Schulmerich’s trademarks arise under the purchase orders or under the T&C, and the court
perceives no language in the purchase orders or the T&C purporting to delineate such rights. In
the court’s view, the dispute in the instant action—whether Jeffers infringed Schulmerich’s
trademarks—arises not from the purchase orders, the T&C, or any other contractual provision in
the record, but rather from the parties’ rights under the trademark laws. This view is supported by
the fact that, even in the absence of the purchase orders and the T&C, Schulmerich would be able
to bring a trademark infringement action against Jeffers, and Jeffers would be able to bring a
declaratory judgment action alleging non-infringement against Schulmerich. See Phillips v. Audio
Active Ltd., 494 F.3d 378, 390-91 (2d Cir. 2007); Valencell, Inc. v. Apple Inc., No. 5:16-cv-1-D,
2017 WL 2819768, at *2 (June 28, 2017); Krist v. Scholastic, Inc., ___ F. Supp. 3d ___, No. 166251, 2017 WL 2349004, at *3-4 (E.D. Pa. May 30, 2017); Steinmetz v. McGraw-Hill Global
Educ. Holdings, LLC, 220 F. Supp. 3d 596, 605 (E.D. Pa. 2016); JHT Tax, Inc. v. Houle, No.
2:11cv66, 2011 WL 5006941, at *4 (E.D. Va. Sept. 23, 2011); cf. Omron Healthcare, Inc. v.
Maclaren Exports Ltd., 28 F. 3d 600, 601-03 (7th Cir. 1994) (holding that forum-selection clause
governed trademark-infringement claim where resolution of dispute depended on interpretation of
the contract). Accordingly, the court rejects Schulmerich’s argument that the action should be
transferred under § 1404(a) on the basis of the forum-selection clause in the T&C. 7
Lastly, Schulmerich argues that the court should abstain from entertaining Jeffers’
declaratory judgment action until the separate action Schulmerich filed in Pennsylvania state court
against Jeffers and Lackey, which was later removed to federal court in the Eastern District of
Pennsylvania, is resolved. (See ECF No. 6-1 at 18-30.) As Jeffers points out in its supplemental
response (see ECF No. 35), this last argument is advanced on the basis that abstention is warranted
specifically because of the existence of a parallel suit in a different court (see ECF No. 6-1 at 1830). Since Schulmerich advanced this argument, the U.S. District Court for the Eastern District of
Pennsylvania granted Jeffers’ motion to transfer Schulmerich’s action to this court. See
Schulmerich, No. 3:17-cv-00186-JMC, ECF Nos. 7, 8, 11, 12, 13. Jeffers, in its supplemental
response, asserts that, following the transfer of the putative parallel action to this court,
Schulmerich’s abstention argument is moot (see ECF 35), and Schulmerich has not responded to
this assertion. The court agrees that the argument is moot and therefore declines to consider it.
In a footnote, Schulmerich also argues that, “in the alternative, this matter should also be
transferred to the Eastern District of Pennsylvania pursuant to the traditional analysis of 28 U.S.C.
§ 1404(a). All private and public interests weigh in favor of transfer.” (ECF No. 6-1 at 18 n.4.)
Schulmerich provides no other argument regarding the § 1404(a) factors that courts normally
address in the absence of a controlling forum-selection clause. The court declines to address this
argument because it is not sufficiently developed. See Clayton v. Nationwide Mut. Ins. Co., No.
5:16-cv-02467-JMC, 2017 WL 2377527, at *5 (D.S.C. June 1, 2017) (“As a general rule, parties
may not outsource their legal research to the court or otherwise foist upon it the necessary legwork
to flesh out a legal claim or defense because, by permitting a party to do so, the court edges into
the impermissible advocatory role of argument-creator.”).
For the foregoing reasons, Schulmerich’s motion to dismiss or transfer Jeffers’ complaint
(ECF No. 6) is DENIED.
IT IS SO ORDERED.
United States District Court Judge
August 18, 2017
Columbia, South Carolina
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