Buc-ee's, Ltd. v. Bucks, Inc., 8:17-cv-00287

Background

Buc-ee’s and Buck’s are competing convenience-store operators with registered trademarks BUC-EE’S and BUCKY’S; they entered a 2009 Co-existence Agreement allocating forum venues and trademark rights.
Buc-ee’s sued several defendants in the Southern District of Texas in 2017 alleging Buck’s and others were operating BUCKY’S stores in Texas in violation of the Agreement and federal/state law; Buck’s was severed and transferred to the District of Nebraska per the Agreement’s forum-selection clause.
Buc-ee’s amended its complaint in Nebraska adding claims for inducement, fraudulent and negligent misrepresentation, trademark infringement/dilution/unfair competition, false designation, unjust enrichment, and breach of the Agreement.
Buck’s moved for summary judgment contending the Agreement’s plain terms preclude many claims and sought a stay of discovery pending that ruling; Buc-ee’s moved to retransfer venue back to Texas or alternatively to stay Nebraska proceedings pending resolution of the Texas action.
The Nebraska court denied retransfer, granted defendants’ request to stay discovery pending resolution of Buck’s summary-judgment motion, and denied Buc-ee’s request for a broader stay pending the Texas case.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the case should be retransferred to the Southern District of Texas	Retransfer required because Buck’s is now asserted to be indispensable to the Texas action and first-to-file comity favors Texas	Transfer was proper under the Agreement’s valid forum-selection clause; no clear error by the Texas court	Denied — transfer was not clearly erroneous; retransfer would undermine forum-selection clause and judicial comity
Whether discovery in Nebraska should be stayed pending resolution of Buck’s summary-judgment motion	Opposed stay; says discovery is needed to oppose summary judgment and to develop facts	Stay needed because interpretation of the Agreement is a threshold legal issue that may dispose of most claims	Granted — good cause: preliminary legal issue (Agreement interpretation) controls most claims
Whether a broader stay pending the Texas litigation is warranted	Case should be stayed because the Texas action is more advanced and may simplify issues here	Not warranted because only Buc-ee’s and Buck’s are signatories; Agreement interpretation and breach are proper for this court to decide	Denied — Texas rulings unlikely to simplify issues; this court retains responsibility to interpret the Agreement
Whether the Agreement precludes Buc-ee’s infringement and misrepresentation claims	Agreement prohibits confusion and allocates territorial rights but plaintiff reads it to bar Buck’s Texas use	Agreement’s plain language permits Buck’s certain uses nationwide and disclaims extra-contractual inducements, potentially barring claims	Court stayed discovery to resolve this threshold contractual interpretation; outcome may dismiss many claims

Key Cases Cited

Atl. Marine Constr. Co. v. U.S. Dist. Court for the W. Dist. of Tex., 134 S. Ct. 568 (2013) (forum-selection clauses are to be given controlling weight absent extraordinary circumstances)
Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988) (law-of-the-case doctrine and limits on revisiting prior decisions)
Jenkins Brick Co. v. Bremer, 321 F.3d 1366 (11th Cir. 2003) (clear-error standard for motions to retransfer)
Steen v. Murray, 770 F.3d 698 (8th Cir. 2014) (deferential review of retransfer decisions and application of law-of-the-case)
Brennan’s Inc. v. Dickie Brennan & Co. Inc., 376 F.3d 356 (5th Cir. 2004) (consent/settlement agreements can protect a party from trademark infringement claims when use stays within agreed boundaries)