Free Motion to Dismiss - District Court of California - California

Case 3:08-cv-00529-WQH-BLM

Document 7-2

Filed 04/14/2008

Page 1 of 5

1 SULLIVAN, HILL, LEWIN, REZ & ENGEL A Professional Law Corporation 2 Cynthia A. Fissel, SBN 164153 550 West "C" Street, Suite 1500 3 San Diego, California 92101 Telephone: (619) 233-4100 4 Fax Number: (619) 231-4372 [email protected] 5 James S. Rigberg, Pro Hac Vice (Arizona Bar No. 015267) 6 MARISCAL, WEEKS, McINTYRE & FRIEDLANDER, P.A. 7 2901 North Central Avenue, Suite 200 Phoenix, Arizona 85012-2705 8 Telephone: (602) 285-5000 Fax Number: (602) 285-5100 9 [email protected] 10 Attorneys for Defendant, CRISIS MANAGEMENT, LLC 11 UNITED STATES DISTRICT COURT 12 SOUTHERN DISTRICT OF CALIFORNIA 13 YOU WALK AWAY, LLC, a California 14 limited liability company,, 15 16 v. 17 CRISIS MANAGEMENT, LLC, an Arizona corporation, and WALK AWAY 18 PLAN, LLC, a business entity of unknown form, 19 Defendants. 20 21 22 Defendant Crisis Management, LLC submits this Memorandum in Support of its Motion to Plaintiff, ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. 08 CV 0529 WQH BLM MEMORANDUM IN SUPPORT OF MOTION TO DISMISS, STAY, OR TRANSFER VENUE TO THE DISTRICT OF ARIZONA [NO ORAL ARGUMENT UNLESS REQUESTED BY COURT] Date: Time: Crtm: Judge: May 19, 2008 11:00 a.m. 4 Hon. William Q. Hayes

23 Dismiss, Stay, or Transfer Venue to the District of Arizona as follows: 24 25 26 27 28
::ODMA\PCDOCS\PCDOCS\282533\2

Case No. 08 CV 0529 WQH BLM

Case 3:08-cv-00529-WQH-BLM

Document 7-2

Filed 04/14/2008

Page 2 of 5

1 2 3

I. INTRODUCTION Defendant Crisis Management, L.L.C. ("Crisis Management"), an Arizona limited liability

4 company, offers assistance to individuals relative to the current mortgage crisis. Crisis Management 5 uses the domain name "www.walkawayplan.com" to market its services on the Internet and the name 6 "The Walk Away Plan" to describe the plans it tailors for each of its customers. Plaintiff You Walk 7 Away, L.L.C. ("You Walk Away") alleges that it owns the name and mark "You Walk Away" and 8 that Crisis Management's use of the name Walk Away Plan and the www.walkawayplan.com 9 domain name infringe on its claimed trademark rights. On March 14, 2008, Crisis Management filed 10 suit in the United States District Court for the District of Arizona seeking a declaration that its use of 11 the Walk Away Plan name and mark and the www.walkawayplan.com domain name does not 12 infringe on You Walk Away's rights. A true and correct copy of the Complaint filed in the action 13 styled Crisis Management, L.L.C. v. You Walk Away, L.L.C., District of Arizona Case No. CD-0814 0504-PHX-FJM, is attached to the Declaration of James S. Rigberg ("Rigberg Decl.") as 15 Exhibit "1." 16 On March 21, 2008, You Walk Away commenced this lawsuit, seeking to enforce its alleged

17 trademark rights in the name You Walk Away. Under the "first-to-file rule," this action should be 18 transferred to the United States District Court for the District of Arizona where it can be 19 consolidated with the pending lawsuit brought by Crisis Management. 20 21 22 II. BACKGROUND By letter dated February 29, 2008, counsel for You Walk Away advised Crisis Management

23 that You Walk Away claimed ownership of the name and mark You Walk Away and the domain 24 name www.walkawayplan.com. A true and correct copy of the February 29, 2008 letter is attached 25 to the Rigberg Decl. as Exhibit "2." The same letter further advised that the You Walk Away mark 26 was the subject of a pending trademark application. Counsel for You Walk Away demanded that 27 Crisis Management cease using the name and mark Walk Away Plan and the domain name 28 www.walkawayplan.com within ten days, otherwise You Walk Away would file suit.
::ODMA\PCDOCS\PCDOCS\282533\2

1

Case No. 08 CV 0529 WQH BLM

Case 3:08-cv-00529-WQH-BLM

Document 7-2

Filed 04/14/2008

Page 3 of 5

1

On or about March 8, 2008, a representative of You Walk Away telephoned Crisis

2 Management, inquiring as to whether Crisis Management would adhere to the demands made in the 3 February 29 letter. See Declaration of Paul Helbert at ¶ 6. Helbert advised that he did not believe 4 that Crisis Management's use of Walk Away Plan or www.walkawayplan.com infringed on You 5 Walk Away's rights. See id. at ¶ 7. Helbert further advised that Crisis Management would be 6 consulting an attorney to determine how to respond to You Walk Away's allegations, provided the 7 name and phone number of his attorney, James Rigberg, and requested that You Walk Away 8 communicate directly with Mr. Rigberg. Despite that request, You Walk Away representatives 9 called Crisis Management several more times. See id. at ¶ 7. On March 14, 2008, Crisis 10 Management consulted with its attorney and, later that day, filed a lawsuit against You Walk Away 11 in the Arizona District Court. See id. at ¶ 8. One of Crisis Management's chief concerns was that it 12 file an action before the United States Patent and Trademark Office approved You Walk Away's 13 pending trademark application. See id. at ¶ 8. 14 15 16 III. ARGUMENT When a "complaint involving the same parties and issues has already been filed in another

17 district," the Court may decline jurisdiction in favor of allowing the earlier filed case to proceed. 18 Pacesetter Systems, Inc. v. Medtronic, Inc., 678 F. 2d 93, 95 (9th Cir. 1982). This so-called "first-to19 file" rule exists to serve "the purpose of promoting efficiency well and should not be disregarded 20 lightly." Alltrade, Inc. v. Uniweld Products, Inc., 946 F. 2d 622, 625 (9th Cir. 1991) (quoting Church 21 of Scientology v. U. S. Dep't of the Army, 611 F. 2d 738, 750 (9th Cir. 1979)). The parties and the 22 issues in this case and the earlier filed case in the District of Arizona are identical. Under the first23 to-file rule, the Court should dismiss, stay, or transfer venue over You Walk Away's action in this 24 Court. 25 The facts presented in this case are similar to those in Seattle Pacific Industries, Inc. v. Levi

26 Strauss & Co., 46 U. S. P. Q. 2d 1316, 1997 U.S. Dist. LEXIS 22579 (W.D. Wa. 1997) (a true and 27 correct copy of which is attached to the Rigberg Decl. as Exhibit "3"). By letter dated March 26, 28 1997, Levi Strauss threatened to sue Seattle Pacific Industries ("SPI") for trademark/trade dress
::ODMA\PCDOCS\PCDOCS\282533\2

2

Case No. 08 CV 0529 WQH BLM

Case 3:08-cv-00529-WQH-BLM

Document 7-2

Filed 04/14/2008

Page 4 of 5

1 infringement if SPI did not discontinue use of a certain label and stitching pattern. SPI responded 2 with voicemail messages on March 28 and April 7, 1997, apparently indicating that it was going to 3 continue using these items. By letter dated June 19, 1997, Levi Strauss again advised that, because 4 SPI indicated that it intended to continue using the design, it had "no choice but to file a complaint." 5 1997 U.S. Dist. LEXIS at 4. On August 4, 1997, SPI brought a declaratory judgment action in 6 Washington. Subsequently, Levi Strauss filed an infringement action in California. 7 Levi Strauss filed a motion to dismiss SPI's earlier filed declaratory judgment action, arguing

8 that "SPI simply rushed to the courthouse to avoid the suit that Levi Strauss would bring in 9 California." SPI responded that its case should proceed and that Levi Strauss could bring the 10 infringement claims asserted in the California case as counterclaims. The Washington District Court 11 agreed that "the first-to-file rule should not be abandoned except where there has been some bad 12 faith or deliberate delays in order to accomplish forum shopping." 1997 U.S Dist. LEXIS at 6. The 13 Court further agreed that the fact that SPI's lawsuit was for declaratory relief did not "weigh against" 14 application of the first-to-file rule. 1997 U.S Dist. LEXIS at 5. Because no evidence of bad faith 15 existed, the Court denied Levi Strauss' motion to dismiss based on the first-to-file rule. 16 Crisis Management seeks the same relief in its earlier filed Arizona District Court action as

17 SPI did ­ a declaration that it is entitled to continue using certain marks. Crisis Management did not 18 do anything deliberately to delay You Walk Away from filing an infringement action. For example, 19 upon receipt of the February 29, 2008 letter, Crisis Management did not attempt to lull You Walk 20 Away into inaction by representing that it agreed its Walk Away Plan marks may be infringing. 21 Instead, within ten days of receipt of the letter, Crisis Management advised that it did not believe its 22 use of its marks infringed on You Walk Away's rights and that it would be contacting its attorneys to 23 determine how to proceed. Promptly after retaining counsel ­ and only two weeks after You Walk 24 Away sent its February 29, 2008 letter ­ Crisis Management filed suit to protect its right to continue 25 using the Walk Away Plan marks. These are the precise circumstances for which the first-to-file 26 rule expressly exists to address. 27 28
::ODMA\PCDOCS\PCDOCS\282533\2

3

Case No. 08 CV 0529 WQH BLM

Case 3:08-cv-00529-WQH-BLM

Document 7-2

Filed 04/14/2008

Page 5 of 5

1 2 3

IV. CONCLUSION For the foregoing reasons, Crisis Management's Motion to Dismiss, Stay, and/or Transfer

4 this action should be granted. 5 6 Dated: 7
AND

April 14, 2008

MARISCAL, WEEKS, MCINTYRE & FRIEDLANDER, P.A.

8 9 10 By: 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
::ODMA\PCDOCS\PCDOCS\282533\2

SULLIVAN, HILL, LEWIN, REZ & ENGEL A Professional Law Corporation /s/ Cynthia A. Fissel Cynthia A. Fissel Attorneys for Defendant CRISIS MANAGEMENT, LLC

4

Case No. 08 CV 0529 WQH BLM