American University System, Inc. v. American University
858 F. Supp. 2d 705
N.D. Tex.2012Background
- AUS, a DC corp operating in Dallas, sues AU (DC corp) and APUS (WV corp) over use of the marks 'American Public University System' and related names.
- APUS originally owned the marks and assigned them to AU, which licensed them back to APUS; disputes arise after APUS sent cease-and-desist letters in 2010–2011.
- AUS filed a declaratory judgment action in the Northern District of Texas seeking noninfringement and validity of the marks and related defenses, including abandonment.
- Defendants moved to dismiss for improper forum shopping, lack of personal jurisdiction (PJ), and improper venue, or in the alternative, to transfer to DC under 28 U.S.C. §§ 1404(a), 1631, and 88.
- The court concluded it lacks PJ over AU and APUS and that venue is improper in the ND Tex; it opted to transfer the action to DC rather than dismiss.
- The transfer is directed under 28 U.S.C. §§ 88, 1406(a), and 1631 to the District Court for the District of Columbia.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Discretionary jurisdiction under the DJA | AUS; seeks declaration rather than litigation in another forum. | AU and APUS advocate dismissal for lack of PJ and forum factors. | Trejo factors weigh against dismissal; retain jurisdiction. |
| Personal jurisdiction over AU and APUS | AU and APUS have Texas-related activities sufficient for PJ. | No general or specific PJ; contacts are insufficient or unrelated to the claim. | No general or specific jurisdiction over either defendant. |
| Venue in the Northern District of Texas | Venue proper under 28 U.S.C. § 1391(b)(2) (events in TX). | Venue improper; no defendant resides in TX; no PJ; events not in TX. | Venue not proper in ND Tex. |
| Transfer to the District of Columbia | DC is an appropriate forum given consent and corporate residency of AU; transfer feasible. | Transfer appropriate only if not dismissible; DC is proper given PJ and venue issues. | Transfer to DC is in the interest of justice. |
Key Cases Cited
- Sherwin-Williams Co. v. Holmes County, 343 F.3d 383 (5th Cir. 2003) (seven Trejo-based factors for DJ discretionary jurisdiction)
- Trejo, 39 F.3d 585 (5th Cir. 1994) (framework for exercising discretionary jurisdiction in DJ actions)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) (minimum contacts and reasonableness for PJ)
- World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) (foreseeability and foreseeable lawsuit in forum state)
- Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408 (1984) (distinction between specific and general jurisdiction)
- Revell v. Lidov, 317 F.3d 467 (5th Cir. 2002) (Zippo-based analysis not well suited for general jurisdiction)