United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND ORDER
P. ELLISON, UNITED STATES DISTRICT JUDGE
an intellectual property case between companies that provide
convenience store and gas station merchandise and services in
Texas. Pending before the Court is Defendants' Motion for
Dismissal for Attempting to Influence the Testimony of a
Witness (Doc. No. 157). After considering the motion,
response, reply, and applicable law, the Court denies
Buc-ee's, Ltd. (“Buc-ee's”) brings claims
against Defendants Shepherd Retail, Inc., Blanco Restaurant,
Inc., Live Oak Retail, Inc., Harlow Food, Inc., Mariam, Inc.,
S.W. Retail Inc., Falfurrias Highway Foods, Inc., and Highway
46 Retail, Inc. (collectively, “Defendants”) for
trademark dilution, trademark infringement, false designation
of origin, unjust enrichment, and unfair competition. (Doc.
No. 78 ¶ 1.)
claims arise out of Defendants' use of an alligator logo,
which Buc-ee's alleges is confusingly similar to
Buc-ee's' trademarks. (Doc. No. 78 ¶ 2.)
Buc-ee's uses a logo consisting of a cartoon beaver in
front of a yellow circle for its Buc-ee's convenience
stores and gas stations. Defendants use a logo consisting of
a cartoon alligator in front of a yellow circle for their
Choke Canyon convenience stores, gas stations, and
move the Court to dismiss all of Buc-ee's' claims
with prejudice for allegedly attempting to influence a
witness's testimony by filing a separate lawsuit against
that witness. (Doc. No. 157 at 19-20.) The witness whom
Buc-ee's allegedly attempted to influence is Buck's,
a company based in Omaha, Nebraska, which owns a convenience
store chain named Bucky's and which testified through a
designated corporate representative. Buck's and
Buc-ee's previously litigated disputes related to their
word trademarks, which resulted in settlement in 2009.
in this case deposed a representative of Buck's regarding
the authenticity of a copy of the 2009 settlement agreement
between Buck's and Buc-ee's (hereinafter the
“Buck's Settlement Agreement”). (Doc. No.
157-15 at 3:12-4:12; Doc. No. 157-3.) The Buck's
Settlement Agreement resolved a trademark opposition and
litigation about their respective uses of the trademarks
“Bucky's” and “Buc-ee's” in
the connection with retail store services featuring
convenience store items and gasoline. The parties agreed that
each may use and register their respective trademark. (Doc.
No. 157-3 at 2.) Defendants argue that the Buck's
Settlement Agreement and the underlying trademark dispute are
relevant to this case because they undermine
Buc-ee's' claim that its mark is famous and they are
relevant to Defendants' laches defense. (Doc. No. 170 at
3-4.) The deposition of the Buck's representative in this
case occurred in October of 2016. The deposition was taken by
written questions and is two pages long. (Doc. No. 157-15.)
filed a trademark infringement lawsuit against Buck's and
three other defendants on March 17, 2017 (hereinafter the
“Buck's Lawsuit”). (Buc-ee's, Ltd. v.
Bucks, Inc., Case No. 4:17-cv-00818 (S.D.
Tex.).) In the Buck's Lawsuit, Buc-ee's
alleges that Buck's and the other defendants seek to
operate convenience stores and gas stations in Texas using
the Bucky's mark, and that such activity infringes on the
Buc-ee's mark. Buck's' counsel has informed
Defendants' counsel that Buck's will not testify in
this proceeding so long as the Buck's Lawsuit is pending.
(Doc. No. 192-7.)
argue that the Buck's Lawsuit is frivolous and allege
that Buc-ee's filed the Buck's Lawsuit to prevent
Buck's from testifying as a fact witness in this case.
Plaintiff argues that Defendants' motion for sanctions is
itself frivolous and requests that the Court sanction
Defendants for filing their motion.
Sanctions Under the Inherent Authority of the Court
have certain implied, inherent powers to “manage their
own affairs so as to achieve the orderly and expeditious
disposition of cases.” Link v. Wabash R. Co.,
370 U.S. 626, 630-31 (1962). One of the inherent powers of
courts is “the power to punish for contempts.”
Chambers v. NASCO, Inc., 501 U.S. 32, 44-45 (1991).
Conduct that may warrant sanction under the Court's
inherent powers includes acting in bad faith, vexatiously,
wantonly, or for oppressive reasons. Id. at 45-46.
The Court may “fashion an appropriate sanction for
conduct which abuses the judicial process.”
Id. at 44-45.
Court's inherent powers are not without limit.
“Inherent powers must be exercised with restraint and
discretion.” Chambers, 501 U.S. at 44. The
threshold for the use of sanctions under the Court's
inherent powers is high. The powers may only be exercised
“if essential to preserve the authority of the
court” and if the chosen sanction uses the least
possible power adequate to achieve the purpose of the
sanctions. Nat. Gas Pipeline Co. of Am. v. Energy
Gathering, Inc., 86 F.3d 464, 467 (5th Cir. 1996).
Dismissal of a lawsuit is a sanction within the court's
discretion, but it is a “particularly severe
sanction.” Chambers, 501 U.S. at 45. Courts
may use dismissal as a sanction only when it is necessary to
deter “bad faith or willful abuse of the judicial
process.” Woodson v. Surgitek, Inc., 57 F.3d
1406, 1417 (5th Cir. 1995).