United States District Court, W.D. Texas, Austin Division
PITMAN UNITED STATES DISTRICT JUDGE.
the Court is are two motions to dismiss, one filed by
Plaintiff Heritage Alliance (“Heritage”), (Dkt.
8), and the other filed by Defendant American Policy
Roundtable (“APR”), (Dkt. 7). Having considered
the parties' motions, the record, and the applicable law,
the Court will grant both motions in part.
an intellectual-property dispute between two nonprofits that
publish voter guides. (Am. Compl., Dkt. 6, at 4-5). Heritage
alleges as follows. In late 2007, it registered the domain
name www.ivoterguide.com and launched a website at that
domain that publishes voting records, donations,
endorsements, and candidate surveys. (Id. at 4). In
September 2008, Heritage began using the trademarks
iVoterGuide and iVoterGuide.com. (Id.). Today the
guide covers federal elections in every state, statewide
elections in eleven states, and state legislative elections
in seven. (Id.). The iVoterGuide website has been
used by over a million voters, evaluates over 4, 000
candidates, and has an email list numbering 100, 000
formed in 1980 to educate voters about elections, launched
www.ivoters.com in 2003. (Id. at 5). The website
provides an address-based candidate search and lists the
“most watched” federal House and Senate races,
along with links to candidate information for those races.
(Id.). In March 2016, APR registered the domain name
www.ivotersguide.com, which simply reroutes the user to
September 2018, APR sent a letter to Heritage explaining that
they believed that Heritage's iVoterGuide mark infringed
its iVoters mark. (N.D. Ohio Order, Dkt. 22-1, at 2). APR
called Heritage to discuss the matter and later sent a formal
cease-and-desist letter to Heritage in mid-October 2018.
Heritage responded to that letter by suing APR in this Court
on October 31, 2018, for cyberpiracy under 15 U.S.C. §
1125(d), alleging that www.ivotersguide.com was created
simply to divert visitors from Heritage's website. (Orig.
Compl., Dkt. 1).
Heritage served APR in January 2019, APR simultaneously filed
a motion to dismiss in this action, (Dkt. 5), and a complaint
in a separate action against Heritage for trademark
infringement in the United States District Court for the
Northern District of Ohio. (Dkt. 22-1). In response to
APR's motion to dismiss, Heritage amended its complaint
to add federal- and state-law claims for trademark
infringement and unfair competition on March 22, 2019. (Dkt.
the Court now is APR's motion to dismiss Heritage's
amended complaint under Federal Rule of Civil Procedure
12(b)(3) and 12(b)(6). (APR Mot., Dkt. 7). Not only does APR
believe that Heritage has failed to state a claim, it also
believes that venue is improper in this district under the
first-to-file rule. (Id. at 1-2). Heritage,
meanwhile, filed its own motion to dismiss, asking this Court
to dismiss APR's action in the Northern District of Ohio
or transfer it to this Court and consolidate the two cases.
(Heritage Mot., Dkt. 8, at 6).
in the Fifth Circuit generally follow a ‘first-filed
rule' in deciding which Court should maintain
jurisdiction over claims that arise out of the same subject
matter but are pressed in different suits.” Yeti
Coolers, LLC v. Beavertail Prods., LLC, 1-15-CV-415 RP,
2015 WL 4759297, at *1 (W.D. Tex. Aug. 12, 2015) (quoting
Igloo Prods. Corp. v. The Mounties, Inc., 735
F.Supp. 214, 217 (S.D. Tex. 1990)). Because the first-to-file
rule implicates this Court's jurisdiction, it will
resolve that issue first before proceeding to APR's
motion to dismiss under Rule 12(b)(6).
First to File
the first-to-file rule, “federal courts may decline to
hear a case when an earlier-filed case pending in a different
federal court raises similar issues.” Hart v.
Donostia LLC, 290 F.Supp.3d 627, 630 (W.D. Tex. 2018)
(citing Cadle Co. v. Whataburger of Alice, Inc., 174
F.3d 599, 603 (5th Cir. 1999)). The rule, which rests on
principles of comity and sound judicial administration, is
principally concerned with avoiding duplicative waste,
rulings which trench on sister courts' authority, and
piecemeal resolution of issues. Cadle, 174 F.3d at
603. “The rule does not require the cases to be
identical.” Int'l Fid. Ins. Co. v. Sweet Little
Mexico Corp., 665 F.3d 671, 678 (5th Cir. 2011).
“The crucial inquiry is one of substantial
overlap.” Save Power Ltd. v. Syntek Fin.
Corp., 121 F.3d 947, 950 (5th Cir. 1997) (citation
omitted). If two actions substantially overlap on substantive
issues, the cases “would be required to be consolidated
in the jurisdiction first seized of the issues.”
Id. (quoting Mann Mfg., Inc. v. Hortex,
Inc., 439 F.2d 403, 408 n.6 (5th Cir. 1971)).
relevant to substantial overlap include whether “the
core issue” in each case is the same and whether
“much of the proof adduced . . . would likely be
identical.” Sweet Little Mexico Corp., 665
F.3d at 678. Courts also consider the extent to which the
cases involve the same parties. See Save Power, 121
F.3d at 950-51. “Where the overlap between two suits is
less than complete, the judgment is made case by case, based
on such factors as the extent of overlap, the likelihood of
conflict, the comparative advantage and the interest of each
forum in resolving the dispute.” Sweet Little
Mexico Corp., 665 F.3d at 678.
admits that Heritage's trademark claim substantially
overlaps with its own. (APR Mem., Dkt. 7-1, at 18). But APR
argues that its suit is the first-filed of the two because
Heritage's original complaint-filed four months before
APR's action-asserted no claims for trademark
infringement or unfair competition, which first appear in the
amended complaint that Heritage filed after APR began its
Ohio suit. (Id. at 17). APR's theory is that
Heritage's action could be first-filed based only on the
cyberpiracy claim in its original complaint and that Heritage
suit is not first-filed because its cyberpiracy claim does
not substantially overlap with the trademark claims in
APR's complaint. The question is whether APR's theory
admitting that its trademark claim substantially overlaps
with Heritage's, APR concedes the question, for
Heritage's trademark-infringement and cyberpiracy claims
arise out of the same allegations and depend upon the
resolution of common legal issues. As APR points out, both
its trademark claim and Heritage's will “consider
the issues of priority, distinctiveness, and the many factors
related to a likelihood of confusion analysis.”
(Id. at 17). Both will consider evidence relevant to
those issues, such as “use in commerce, similarity of
the marks, [and] similarity of the goods and services at
issue.” (Id. at 17-18).
examples of overlap between the parties' trademark claims
also happen to be areas of overlap with Heritage's
cyberpiracy claim, which is likewise a Lanham Act claim
alleging that APR has used Heritage's iVoterGuide mark
illegally. (Compare Orig. Pet., Dkt. 1, at 5
(alleging that APR intended to profit off of the iVoterGuide
mark by creating www.ivotersguide.com), with Am.
Compl., Dkt. 6, at 8-9 (alleging that APR infringed
Heritage's iVoterGuide mark by using it in the sale of
APR's own services, which include diverting traffic to
its main website through www.ivotersguide.com)).
Heritage's cyberpiracy and trademark claims will both
require proof that the iVoterGuide mark is a
“distinctive . . . mark entitled to protection.”
Tex. Int'l Prop. Assoc. v. Hoerbiger Holding AG,
624 F.Supp.2d 582, 587 (N.D. Tex. 2009) (citation omitted)
(listing the elements of an Anticybersquatting Consumer
Protection Act (ACPA) claim); see also Xtreme Lashes, LLC
v. Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir.
2009) (considering distinctiveness in analyzing the
likelihood of confusion between two marks). Both claims will
examine APR's intent in its alleged use of the
iVoterGuide mark. See Tex. Int'l Prop. Assoc.,
624 F.Supp.2d at 587 (identifying a defendant's
“bad faith intent to profit” from use of the
plaintiff's mark as an ACPA-claim element); Xtreme
Lashes, 576 F.3d at 227 (listing a defendant's
intent as one of the digits of confusion). And both claims
will examine the similarity between www.ivotersguide.com and
the iVoterGuide mark. See Tex. Int'l Prop.
Assoc., 624 F.Supp.2d at 587 (listing whether a
defendant's domain name is “identical or
confusingly similar” to the plaintiff's mark as
another ACPA-claim element); Xtreme Lashes, 576 F.3d
at 227 (listing a mark similarity as one of the digits of
confusion). The parties to each action are the same, much of
the evidence will be the same, and the core issues-which
party's mark has priority, and whether the marks are
confusingly similar-are the same. See Sweet Little Mexico
Corp., 665 F.3d at 678; Save ...