United States District Court, W.D. Texas, Austin Division
SPARKS UNITED STATES DISTRICT JUDGE
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 PDFfiller,
Inc. (PDFfiller)'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.
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.
is a start-up company providing an online system for filling
in, editing, and modifying electronic PDF forms. Mot.
Transfer [#31] at 1. PDFfiller has its headquarters and
principal place of business in Massachusetts. Id. at
filed this lawsuit on December 12, 2016. See Compl.
[#1]. 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 of the
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.
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 [#31-2] Ex. A (CAR
Compl.) 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.
Massachusetts Lawsuit, CAR asserts PDFfiller 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 PDFfiller's profits,
statutory damages, and treble damages, and attorneys'
fees. Id. at 17, 20-24.
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.
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. v. Whataburger of
Alice, 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. W. 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.
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-1061-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 inquiry
is 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. v. Custom