Sony/ATV Music Publishing LLC et al v. KTS Karaoke, Inc. et al
MEMORANDUM. Signed by Chief Judge Todd J. Campbell on 4/16/12. (dt)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF TENNESSEE
SONY/ATV MUSIC PUBLISHING,
LLC, et al.
) NO. 3-12-0089
) JUDGE CAMPBELL
KTS KARAOKE, INC.
Pending before the Court is Defendant’s Motion to Dismiss the Complaint or Alternatively
to Transfer Case to the Central District of California (Docket No. 9). For the reasons stated herein,
Defendant’s Motion to Dismiss is DENIED, and Defendant’s Motion to Transfer is GRANTED.
This action alleges copyright infringement by Defendants in their allegedly illegal and
unauthorized sale of karaoke recordings. Defendants have moved to dismiss Plaintiffs’ action based
upon a first-filed lawsuit pending in California and lack of personal jurisdiction. Alternatively,
Defendants argue this case should be transferred to the U.S. District Court for the Central District
of California, pursuant to 28 U.S.C. § 1404.
On December 23, 2011, counsel for the Plaintiffs sent a document entitled “Confidential
Settlement Correspondence” to Defendants and their insurance agent, accusing Defendants of
copyright infringement and offering to settle their potential claims. Docket No. 15-1. On January
3, 2012, prior to the filing of this action on January 19, 2012, Defendants herein filed a declaratory
judgment action against Plaintiff Sony/ATV Music Publishing LLC in the Central District of
California, seeking a declaration of non-infringement and damages for unfair competition.1 Now
Defendants have moved to dismiss this action or transfer it to the California court where its firstfiled suit is pending.
The Court finds that this action should be transferred, pursuant to the “first-to-file rule” and
pursuant to 28 U.S.C. § 1404(a), which provides: “For the convenience of the 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 first-to-file rule is a doctrine of federal comity that promotes judicial efficiency. Fuller
v. Abercrombie & Fitch Stores, Inc., 370 F.Supp. 2d 686, 688 (E.D. Tenn. 2005). The rule provides
that when duplicative lawsuits2 are pending in separate federal courts, the entire action should be
decided by the court in which the action was first filed. Id. The most basic aspect of the first-to-file
rule is that it is discretionary. Plating Resources, Inc. v. UTI Corp., 47 F. Supp.2d 899, 903 (N.D.
Ohio 1999). There is a strong presumption across the federal circuits that favors the forum of the
first-filed suit under the first-filed rule. Intersearch Worldwide, Ltd. v. Intersearch Group, Inc.,544
F.Supp.2d 949, 957 (N.D. Cal. 2008).
In determining whether actions are duplicative and the first-to-file rule applies, courts
consider (1) the chronology of the actions; (2) the similarity of the parties involved; and (3) the
KTS Karaoke, Inc. v. Sony/ATV Music Publishing, LLC, Case No. CV12-0014.
Duplicative lawsuits are those in which the issues have such an identity that a
determination in one action leaves little or nothing to be determined in the other. Fuller, 370
F.Supp.2d at 688.
similarity of the issues at stake. Fuller, 370 F.Supp.2d at 688. The parties and issues need not be
identical. Id. Rather, the crucial inquiry is whether the parties and issues substantially overlap. Id.
The California action was clearly filed first - January 3, 2012 vs. January 19, 2012. The
Court finds that the parties and issues of this case substantially overlap the parties and issues of the
California action. Although the California action thus far involves only Defendants and Plaintiff
Sony/ATV Music Publishing LLC, Plaintiffs have admitted that the other Plaintiffs herein are
“related entities.” Docket No. 14, p. 19. There has been no demonstration that Plaintiffs could not
bring claims on behalf of the related entities in the California action.
Because the claims arise from the same transactions or occurrences as the claims in
California, Plaintiff may raise its claims herein as counterclaims in the California action, pursuant
to Fed. R. Civ. P. 13. The central issue in both cases is whether Defendants have infringed
Plaintiffs’ copyrights through their karaoke recordings. The differences between the two actions are
not sufficient to overcome the substantial similarities. Defendants’ declaratory judgment and unfair
competition3 action and the allowable counterclaims, cross-claims and any third-party claims therein
will determine the rights of the parties, settle the controversy at issue, and serve a useful purpose in
clarifying the legal relations in issue. Plough, Inc. v. Allergan, Inc., 741 F.Supp. 144, 147 (W.D.
Tenn. 1990). Plaintiffs have not shown that their claims herein could not be brought in California.
Under the first-to-file rule, the suit which is first filed should have priority, absent a showing
of a balance of convenience or special circumstances giving priority to the second suit. 800Flowers, Inc. v. Intercontinental Florist, Inc., 860 F.Supp. 128, 132 (S.D. N.Y. 1994).
Whether Defendants’ unfair competition claim is preempted by federal copyright law,
as Plaintiffs argue, can be determined by the California court.
Circumstances where an exception to the rule will arise include cases of bad faith, anticipatory suits,
and forum shopping. Plating Resources, 47 F.Supp.2d at 905. Plaintiffs argue that Defendants filed
their claims in California as an anticipatory suit or through forum shopping.
Defendant Ton is a California resident, and Defendant KTS is a California corporation with
its principal place of business in California. Plaintiffs are all Delaware limited liability companies.
Docket No. 1. Defendants were not forum shopping; they filed their action where they are and
where they conduct their business. Defendants also assert that California is the location where all
the alleged infringing activity took place. Plaintiffs do not deny that they conduct business and have
a principal office in California. The Court finds no forum shopping by Defendants herein.
With regard to the anticipatory lawsuit argument, a party has the right to seek declaratory
judgment where a reasonable apprehension exists that if it continues an activity, it will be sued by
another party. 800-Flowers, Inc., 860 F.Supp. at 132. “Such an exercise of a party’s right to
declaratory relief does not necessarily constitute an anticipatory filing for purposes of an exception
to the first-filed rule.” Id.
A suit is anticipatory for the purposes of being an exception to the first-to-file rule if the
plaintiff in the first action filed suit on receipt of specific, concrete indications that a suit by the
defendant was imminent. Intersearch, 544 F.Supp.2d at 960. A letter which suggests the possibility
of legal action, however, in order to encourage or further a dialogue, is not a specific, imminent
threat of legal action. Id.
The Confidential Settlement Correspondence sent to Defendants includes numerous
indications that Plaintiffs wish to avoid litigation, not that they are threatening litigation. For
example, the letter states, at page one, that counsel has been authorized to initiate “what will
hopefully be a successful resolution process of their [Plaintiffs’] claims without instituting
litigation.” Docket No. 15-1 (emphasis in original). Counsel also asserts: “As I indicated at the
outset of this letter, however, SATV has every intention of trying to resolve these claims amicably,
without litigation, and at substantial savings of both time and money to all concerned.” Id. Finally,
the correspondence states:
I’m also authorized to inform you that in the event that we might not be able to
promptly come to terms in direct negotiations, SATV is amenable to entering into
mediation with a mutually agreed upon mediator. . .. The offer to mediate stands as
well without the need for instituting suit, so that we might give every conceivable
chance to a settlement without actually having to incur the expense, time
commitment and distraction that inevitably occasions filing a lawsuit.
For these reasons, the Court, in its discretion, concludes that the appropriate course is to
transfer this action to the California court handling the California action, pursuant to its inherent
authority under the first-to-file rule. See Fuller, 370 F.Supp. 2d. at 690-91. In order to avoid
duplication and in the interest of justice, this case should be transferred so the issues presented can
be resolved in the earlier-filed action pending in California. Therefore, the Court need not address
the parties’ other arguments concerning jurisdiction.
Alternatively, the Court finds, in its discretion, that this action should be transferred pursuant
to 28 U.S.C. § 1404(a), which provides that for the convenience of parties and witnesses, in the
interest of justice, a district court may transfer any civil action to any other district where it might
have been brought. Plaintiffs do not deny that they have a principal office in the Central District of
California and conduct business there. The federal court in that District is one in which this action
might have been brought.
Defendants assert, and Plaintiffs do not contest, that Defendant KTS is a small company with
only two full-time employees. Defendants also claim that none of their suppliers are located in
Tennessee, but one of their major suppliers is in California. Defendants contend that Plaintiffs will
not be inconvenienced by litigating in California, but Defendants would be seriously inconvenienced
by having to litigate in Tennessee.4 Defendants state that Plaintiffs’ witnesses are primarily
employees under Plaintiffs’ control, while Defendants will subpoena third-party witnesses, such as
suppliers, who are outside the subpoena power of this Court.
Weighing the factors and circumstances, including the fact that the California action was
filed first, the Court, in its discretion, alternatively finds that this matter should be transferred to the
Central District of California.
For all these reasons, Defendants’ Motion to Dismiss is denied, and Defendants’ Motion to
Transfer is granted. Accordingly, this action is transferred to the U.S. District Court for the Central
District of California, as related to the pending case of KTS Karaoke, Inc. v. Sony/ATV Music
Publishing, LLC, Case No. CV12-0014.
IT IS SO ORDERED.
TODD J. CAMPBELL
UNITED STATES DISTRICT JUDGE
Defendants argue that having to litigate in Tennessee would be very disruptive to
their business, while Plaintiffs’ business would not be interrupted at all by having to try these claims
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