Texas Association of Realtors, Inc. v. PDFfiller, Inc.
ORDER DENYING 31 Motion to Transfer Case. Signed by Judge Sam Sparks. (jf)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
TEXAS ASSOCIATION OF REALTORS, INC.,
Case No. A-16-CA-1304-SS
BE IT REMEMBERED on the 4th day of August 2017, the Court held a hearing in the
above-styled cause and the parties appeared through counsel. Before the Court are Defendant
PDFfihler, Inc. (PDFfihler)'s Motion to Transfer Venue [#31], Plaintiff Texas Association of
Realtors, Inc. (TAR)' s Response [#34] in opposition, and PDFfiller' s Reply [#37] in support. Having
considered the aforementioned documents, the case file as a whole, and the applicable law, the Court
enters the following opinion and order.
Texas Association of Realtors (TAR) is a non-profit organization based in Austin, Texas.
Am. Compl. [#29] at 1-2. TAR aims to promote and protect private-property rights by advocating
for Texas realtors and property owners. Id. at 2. Additionally, TAR is a professional membership
association for Texas realtors. Id. Among other things, TAR provides real estate forms, which it has
copyrighted, and restricts the use of these forms to its members only.
Id at 2-3. Each form features
the TAR logo and the word marks "Texas Association of Realtors®" and "TAR." Id. at 3-4.
PDFfihler is a start-up company providing an online system for filling in, editing, and
modifying electronic PDF forms. Mot. Transfer [#311 at
PDFfiller has its headquarters and
principal place of business in Massachusetts. Id. at 2.
TAR filed this lawsuit on December 12, 2016. See Compl. [#11. TAR claims PDFfiller has
wrongfully obtained TAR's forms and enables customers to use and edit them, thereby infringing
on TAR's copyrights and trademarks as well as unfairly competing with TAR in violation of Texas
law. Am. Compl. [#29]at 11-15. TAR seeks injunctive relief preventing PDFfiller from using TAR's
forms; disgorgement ofthe profits PDFfiller has derived from the use of TAR' s forms; compensation
for damage to TAR's business, reputation, goodwill, and sales; statutory damages; and attorneys'
fees. Id. at 15-20.
About six months before this case was filed, California Association of Realtors, Inc. (CAR)
filed suit against PDFfiller, the CEO of PDFfiller, and the President of PDFfiller in the United States
District Court for the District of Massachusetts (Massachusetts Lawsuit). Mot. Transfer [#31-21
Ex. A (CAR Compi.) at 1-2. CAR is a California non-profit trade association representing real estate
professionals in California with its principal place of business in Los Angeles, California. Id. at 2,
4. CAR's name and logo are registered trademarks. Id. at 4. CAR also maintains a variety of forms,
which it copyrighted, for use in all types of residential and commercial real estate transactions. Id.
The use of these forms is restricted to CAR's members. Id. at 5.
In the Massachusetts Lawsuit, CAR asserts PDFfihler and its executives are engaging in a
"counterfeiting operation." Id. at 9. Therefore, CAR claims PDFfiller and its executives are liable
to CAR for copyright infringement; trademark infringement; violation of the Digital Millennium
Copyright Act, 17 U.S.C. § 1201; and violation of Massachusetts Unfair Trade Practices Act
(MUTPA). Id. at 15-24. CAR seeks injunctive relief, "an accounting" of PDFfihler' s profits,
statutory damages, and treble damages, and attorneys' fees. Id. at 17, 20-24.
PDFfihler moves to transfer this case to the United States District Court for the District of
Massachusetts under the first-to-file rule and, alternatively, under 28 U.S.C. § 1404(a). The Court
examines each of these alleged grounds for transfer in turn.
"Under the first-to-file rule, when related cases are pending before two federal courts, the
court in which the case was last filed may refuse to hear it if the issues raised by the cases
substantially overlap." Cadle Co.
Whataburger ofAlice, Inc., 174 F.3d 599, 603 (5th Cir. 1999).
This rule serves principles of comity, requiring federal district courts to exercise care to avoid
interfering with one another's affairs.
Gulf Mar. Ass 'n v. ILA Deep Sea Local 24, 751 F.2d 721,
728-29 (5th Cir. 1985). "The concern manifestly is to avoid the waste of duplication, to avoid
rulings which may trench upon the authority of sister courts, and to avoid piecemeal resolution of
issues that call for a uniform result." Id.
Whether the first-to-file rule applies is within the district court's discretion. Cadle, 174 F.3d
at 603. In order for the rule to apply to transfer or dismiss a case, "the two pending actions [must be]
so duplicative or [they must] involve substantially similar issues such that one court should decide
the subject matter of both actions." Granado v. Quality Energy Servs., Inc., SA-15-CV-106l-XR,
2016 WL 705228, at *1 (W.D. Tex. Feb. 18, 2016). This inquiry does not require the same legal
issues or identity of parties, but instead requires "substantial overlap" between cases. Int'l Fid. Ins.
Co. v. Sweet Little Mexico Corp., 665 F.3d 671, 678 (5th Cir. 2011) ("Instead, the crucial
one of 'substantial overlap." (internal citations and quotations omitted)). "Courts have noted that
a substantial relationship exists between two suits where the issues, though not identical, are similar
enough that the cases would be consolidated if filed in the same [c]ourt." Rooster Prod. Int'l, Inc.
Custom Leathercrafi Mfg. Co., No. CIV.A. SAO4CA864XR, 2005 WL 357657, at *2 (W.D. Tex.
Feb. 1,2005) (citingSave Power Ltd.
SyntekFin. Corp., 121 F.3d 947, 950 (5th Cir.1997); Mann
Inc. v. Hortex, Inc., 439 F.2d 403, 408 n. 6 (5th Cir.1971)).
The Court concludes the first-to-file rule does not apply here. Based on a comparison of the
pleadings in this action and the California action, the Court concludes the issues do not substantially
overlap. First, the parties are not the same in this action and the Massachusetts Lawsuit. While the
fact TAR is not a party to the Massachusetts Lawsuit is not determinative of the applicability of the
first-to-file rule, it is a factor to consider. See Save Power Ltd., 121 F.3d at 951 (stating that complete
identity of the parties is not required for transfer but examining "the appropriateness of transfer in
view of all the facts of this case" and whether "the missing parties probably could be made parties
to the action in [the first-to-file] forum" (citation omitted)).
Furthermore, both TAR and CAR assert different claims concerning different trademarks and
different real estate forms. TAR asserts infringement claims concerning its copyrighted forms and
its trademarks as well as claims for unfair competition under Texas law. By comparison, CAR
asserts infringement claims concerning its sixty-four copyrighted forms and its trademarks while also
asserting claims under Massachusetts law. Although both cases contain similar allegations on how
PDFfiller infringes on each plaintiffs copyrighted forms and trademarks, the cases do not
substantially overlap because each involves different plaintiffs asserting different
Accordingly, the Court exercises its discretion and finds the first-to-file rule does not govern
Transfer under § 1404(a)
"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.
1404(a). "Section 1404(a) is intended to place discretion in the district court to
adjudicate motions for transfer according to an 'individualized, case-by-case consideration of
convenience and fairness." Stewart Org., Inc.
Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van
Duren v. Barrack, 376 U.S. 612, 622 (1964)). Because a plaintiff has the privilege of choosing the
venue in which to file, the defendant bears the burden of proving a transfer of venue would be
"clearly" more convenient for the parties and witnesses and in the interest of justice. See In re
Volkswagen of Am. Inc., 545 F.3d 305, 315 (5th Cir. 2008) ("In re Volkswagen I]"); Schexnider v.
McDermott Int'l, Inc., 817 F.2d 1159, 1163 (5th Cir. 1987) ("[T]here is ordinarily a strong
presumption in favor of the plaintiff's choice of forum that may be overcome only when the private
and public interest factors clearly point towards trial in the alternative forum.")
The preliminary question under § 1404(a) is whether the action "might have been brought"
in the destination venue. In re Volkswagen II, 545 F.3d at 312. After determining the suit could have
been filed in the destination venue, the Court weighs the parties' private interests in convenience and
the public interest in the fair administration ofjustice. Gulf Oil Corp.
Gilbert, 330 U.S. 501, 508
(1974). The private interest factors are: "(1) the relative ease of access to sources
of proof; (2) the
availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance
for willing witnesses; and (4) all other practical problems that make trial of a case easy,
and inexpensive." In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) ("In re Volkswagen 1")
(citing Piper Aircraft Co.
Reyno, 454 U.S. 235, 241 n.6 (1981)). The public interest factors
include: "(1) the administrative difficulties flowing from court congestion; (2) the local interest in
having localized interests decided at home; (3) the familiarity of the forum with the law that will
govern the case; and (4) the avoidance of unnecessary problems of conflict of laws
. . .
Although these private and public factors apply to most transfer cases, "they are not necessarily
exhaustive or exclusive," and no single factor is dispositive. In re Volkswagen II, 545 F.3d at 315.
Applying the standards of § 1404(a), transfer is improper as PDFfihler fails to carry its burden
to justify transfer. In answer to the preliminary question, the parties do not dispute this action might
have been brought in the United States District for the District of Massachusetts. See Resp. [#34]
at 7-10 (arguing only the private and public interest factors disfavor transfer). Thus, the Court
weighs the parties' private interests in convenience and the public interest in the fair administration
Turning to the private interest factors, the Court finds the majority of these factors disfavor
transfer. Most significantly, TAR has identified thirty-three potential witnesses who are not parties
to this lawsuit and all of whom reside in Texas. See Resp. [#34-2] App. at 8-15 (disclosing the list
of TAR's potential witnesses). Thus, the second factor and third private interest factorsavailability
of compulsory process to secure the attendance of witnesses and the cost of attendance for willing
Both parties argue the first factor, the relative ease of access to sources of proof, supports
their chosen forum.
Mot. [#31] at 8; Resp [#34] at 8. But the Court notes access to evidence
seems to equally favor both this Court and the Massachusetts court: TAR claims its documents are
more easily accessible in Austin while PDFfihler contends its evidence is located in Massachusetts.
Moreover, the Court is unpersuaded by PDFfiller' s argument that the fourth factorother practical
problems necessitating a transfersupports transfer.
at 9. Although PDFfihler is correct the
Massachusetts court is further along in managing the Massachusetts Lawsuit, this case and the
Massachusetts Lawsuit concern different intellectual property rights and different claims. Thus, the
majority of private interest factors weigh against transfer.
The public interest factors also support denying transfer. First, TAR has cited evidence the
median time to trial for civil cases in the District of Massachusetts is longer than in this district. See
Resp. [#34] at 9 (reporting "the median time to trial for civil cases in the District of Massachusetts
was 29.4 months, whereas the median time in the [Western District of Texas] as 20.9 months")
Consequently, the administrative difficulties flowing from court congestion cuts against transfer.
Second and most importantly, there are strong local interests favoring maintaining this case. While
some of the alleged infringing activity occurred in Massachusetts, TAR is a Texas non-profit
concerned with real property rights and transactions in Texas and a professional membership
organization for Texas realtors. The copyrighted forms upon which PDFfiller allegedly infringes are
designed exclusively for Texas real estate transactions. Third, this Court is more familiar with the
law that will govern this case. Although this Court and the Massachusetts court may be equally
familiar with the federal law governing TAR's claims, this Court has greater
familiarity with TAR's unfair competition claims under Texas
In sum, PDFfiller cannot overcome the strong presumption in favor of TAR's choice of
forum as the private and public interest factors disfavor transfer.
IT IS ORDERED that Defendant PDFfihler, Inc. (PDFfihler)'s Motion to Transfer
Venue [#3 1] is DENIED.
SIGNED this the
day of August 2017.
S AM S
UNITED STATES DISTRICT JUDGE
'The parties agree the fourth factor, concerning conflict of laws,
[#34] at 10.
is inapplicable here. See Mot. [#31] at 9; Resp.
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