Opinion
CIVIL ACTION NO. 03-1916, SECTION "T" (2)
August 27, 2003
Before the Court is a Motion to Remand filed on behalf of the Plaintiffs, Michael Lanata and Treeworks, LLC ("Lanata"). The Court, having considered the arguments of counsel, the evidence presented, the law and applicable jurisprudence, is fully advised in the premises and ready to rule.
ORDER AND REASONS
I. BACKGROUND:
Several years ago, Lanata formed a Louisiana Limited Liability Company entitled "TREEWORKS, LLC." Since its inception, Lanata has continually done business in the New Orleans area under the name Treeworks, LLC. Lanata purchased an advertisement in the last issue of the Bellsouth Real Yellow Pages under the name "TREEWORKS." The ad was billed by Bellsouth to Lanata and Treeworks, LLC at the company's registered address.
The year after Lanata advertised Treeworks, LLC in the yellow pages, Bellsouth sold an ad to Defendants Perez and Roux. At the time, Perez and Roux were operating a Louisiana company called "Ace Tree, Inc." The advertisement sold to Perez and Roux for "Ace Tree" listed the telephone number as 'TREEWORKS." Ace Tree was also listed. There were, therefore, two telephone listings for the same phone number — one listed as "Ace Tree" and the other one listed as 'Treeworks."
Lanata filed suit against Bellsouth Advertising and Publishing Corporation ("BAPCO"), Bellsouth Telecommunications, Inc. ("BST"), L.M. Berry and Company ("LMB") (collectively the "Bellsouth Defendants"), Ace Tree, Inc., John R. Perez, Debra L. Perez, and Lynne R. Roux. The Complaint alleges violations of Louisiana Unfair Trade Practices Act, violations of the general laws of Louisiana tort, as well as both Louisiana State and federal trademark infringement and unfair competition statutes.
The Plaintiffs filed suit in the Civil District Court for the Parish of New Orleans on June 24, 2003. The Defendants then had the action removed to this Court on the basis of federal question jurisdiction arising from the Plaintiffs' federal claims.
II. ARGUMENTS ON BEHALF OF THE PARTIES:
A. Arguments of Plaintiffs in Support of Remand:
The Plaintiffs argue that federal courts do not have exclusive original jurisdiction over trademark claims so the case should be remanded to the Civil District Court for the Parish of New Orleans. The federal courts' jurisdiction over trademark claims under the Lanham Act is set forth in 28 U.S.C. § 1338(a) which reads:
"The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights, and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection, and copyright cases."28 U.S.C. § 1338(a). The Act only vests federal courts with exclusive jurisdiction over copyright, patent, and plant variety cases. Trademark cases, therefore, may be brought in state court. Nothing in the law permitted the removal of Plaintiffs' case from state court to federal court. The Eastern District of Texas dealt with this precise issue and, in granting the remand, stated.
"The preliminary question is to dispose of any possible contention that 28 U.S.C. § 1338 (a) provides for exclusive federal jurisdiction of trademark disputes. The construction of that provision makes plain that although patent, plant variety, and copyright claims do invest federal courts with exclusive jurisdiction, trademark claims do not."National Reserve, LC. v. Vaughan, 931 F. Supp. 463, 466 (E.D. Tex. 1996). As federal courts do not have exclusive original jurisdiction over trademark claims, the Plaintiffs case should be remanded.
B. Arguments of Defendants in Opposition to Remand:
The case should not be remanded because the Lanham Act specifically grants original jurisdiction to federal courts. 15 U.S.C. § 1121. The Lanham Act is the federal law governing trademarks. Lanata unilaterally claimed the benefit of and created federal question jurisdiction by pleading claims for infringement, unfair competition, and dilution under the Lanham Act. The Court has subject matter jurisdiction over the claim because it arises under the Lanham Act and Lanata may only be granted a remand if he can show a defect in the removal process. There was, however, no defect in removal so the case was properly removed and should not be remanded.
Lanata's arguments misconstrue the law. The 1st National Reserve case cited by the Plaintiffs is totally different from this case because the plaintiff in that case pled only state law claims. 931 F. Supp. at 465. In the present case, the Plaintiffs pled both state and federal law claims and, therefore, have affirmatively subjected themselves to federal court jurisdiction. Moreover, the existence of concurrent jurisdiction does not, without more, allow for an action to be remanded to state court. See Pace v. Hunt, 847 F. Supp. 508, 509 (S.D. Miss. 1994); Hirschbiel v. Johnson. 118 F. Supp.2d 903, 905 (N.D. Ind. 2000). The case should not be remanded.
III. LAW AND ANALYSIS:
Remand of a case from federal to state court under 28 U.S.C. § 1441(c) and 1447(c) is proper in specific circumstances:
(1) (a court) has discretion to remand state law claims that were removed along with one or more federal question claims; (2) (a court) must act on a timely motion to remand based on a defect in removal procedure; and (3) (a court) must remand a case over which it has no subject matter jurisdiction.Buchner v. Fed'l Deposit Ins. Co., 981 F.2d 816, 819 (5th Cir. 1993) (citing §§ 1441(c) and 1447(c) ).
The Court is prepared to DENY the Plaintiffs' Motion to Remand. Lanata specifically pled claims arising under the Lanham Act which grants federal jurisdiction. On this basis, the Defendants properly sought and were granted removal to this Court. There are, therefore, no grounds to grant the remand.
Accordingly,
IT IS ORDERED that the Plaintiffs, Michael Lanata and Treeworks, LLC, Motion to Remand is hereby DENIED. New Orleans, Louisiana, this