Opinion
No. 05 Civ. 1555 (LAK).
June 8, 2005
Michael S. Sommer, Ann E. Schofield, Chryssa V. Valletta, McDERMOTT WILL EMERY LLP, Attorneys for Plaintiff.
J. Mark Lane, Sharon M. Sash, KOO LARRABEE LAU-KEE LANE LLP, Attorneys for Defendants
MEMORANDUM OPINION
This is an action for a declaration that plaintiff has not infringed defendants' alleged trademark or otherwise misappropriated any proprietary rights of defendants. Defendants move to dismiss on the ground that the Court should exercise its discretion to decline declaratory relief in order to permit resolution of the controversy in a later-filed action for coercive relief commenced by one of the defendants in the Northern District of California. Judge Alsup in San Francisco already has determined that the interest of justice and the convenience of the parties and witnesses favors a transfer of the California action to this district, assuming that this Court denies defendants' motion.
"It is a `well-settled principle in [the Second] Circuit that where there are two competing lawsuits, the first suit should have priority, absent the showing of a balance of convenience or special circumstances giving priority to the second.'" While defendants acknowledge this rule, they argue that the discretionary nature of the declaratory judgment remedy, the alleged fact that plaintiff filed this suit as part of a race to the courthouse, and the alleged hardship to defendants, who are based on the west coast, of litigation here warrant a departure in this case.
Everest Capital Ltd. v. Everest Funds Mgmt., L.L.C., 178 F.Supp.2d 459, 469 (S.D.N.Y. 2002) (quoting First City Nat'l Bank Trust Co. v. Simmons, 878 F.2d 76, 79 (2d Cir. 1989)).
Factors pertinent to determining whether to entertain an action for declaratory relief were summarized recently by the Second Circuit in Dow Jones Co. v. Harrods Ltd. Several favor the defendants — viz., the facts that (1) the Northern District action for coercive relief offers a better or, at least, more complete remedy, (2) plaintiff, despite its protestations to the contrary, doubtless had in mind preempting the choice of forum when it filed this action, and (3) a declaratory judgment would be superfluous in view of the pendency of an action for coercive relief. But these factors are not the only relevant considerations, at least in this case. For one thing, defendants delayed from November 8, 2004, when they first learned of plaintiff's allegedly infringing use, until late January 2005 to send a cease and desist letter and until February to file the San Francisco action. Even more important, Judge Alsup already has determined — correctly in my view — that litigation of this action in this district, despite some inconvenience to the defendants, would serve the convenience of the parties and witnesses and be in the interest of justice.
346 F.3d 357 (2d Cir. 2003).
Accordingly, defendants' motion to dismiss the complaint is denied.
SO ORDERED.