NRRM, LLC v. Endurance Warranty Services, LLC
4:24-cv-01128
| E.D. Mo. | Oct 21, 2024Background
- The case concerns a contract dispute between NRRM, LLC (Carshield) and Endurance Warranty Services, LLC regarding the use of CarShield's trademark in internet advertising, following a 2020 settlement agreement.
- CarShield alleges Endurance violated the Settlement Agreement by using the 'CARSHIELD' trademark as keywords for online ads and by misleadingly using similar marks and logos in advertising.
- The Settlement Agreement included a forum selection clause that mandates any proceedings related to, or to enforce/interpret, the Agreement must be brought in "the court located in St. Charles County, Missouri."
- CarShield initially filed suit in federal court alleging various Lanham Act and state law claims, but later voluntarily dismissed that case and refiled in state court upon discovering the forum selection clause.
- Endurance removed the state court action to federal court, asserting federal jurisdiction; CarShield moved to remand based on the forum selection clause.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Did Plaintiff waive its right to enforce the forum selection clause by initially filing in federal court? | CarShield did not waive; breach claim based on Settlement Agreement was not part of the initial federal action; enforced as soon as clause was discovered. | Endurance argues waiver due to CarShield’s prior federal filings and forum-shopping. | No waiver; CarShield did not act inconsistently with enforcing the forum selection clause. |
| Does the forum selection clause bar removal to federal court? | The clause mandates exclusive state court jurisdiction, referencing a single court with no federal courthouse in that county. | Endurance argues the clause is mandatory but not exclusive, as it lacks explicit terms like "sole" or "exclusive." | The clause is sufficiently mandatory and exclusive to bar removal; the only court in St. Charles County is the state court. |
| Does the forum selection clause encompass the federal (Lanham Act) claims? | The clause applies broadly to "any proceedings related to this Agreement" and covers facts underlying both contract and federal claims. | Endurance asserts forum selection applies only to contract claims, not statutory (Lanham Act) claims. | Clause covers claims with the same operative facts, including Lanham Act claims. |
| Should the Court retain jurisdiction over remaining state law claims? | N/A | N/A | Court declines supplemental jurisdiction; all claims are remanded to state court. |
Key Cases Cited
- iNet Directories, LLC v. Developershed, Inc., 394 F.3d 1081 (8th Cir. 2005) (forum selection clauses may waive right to remove if language is clear and unequivocal)
- M.B. Rests., Inc. v. CKE Rests., Inc., 183 F.3d 750 (8th Cir. 1999) (forum selection clauses are prima facie valid unless unjust or unreasonable)
- Rainforest Cafe, Inc. v. EklecCo, L.L.C., 340 F.3d 544 (8th Cir. 2003) (Eighth Circuit inclined to use federal law for forum-selection clause enforceability)
- Terra Int’l, Inc. v. Mississippi Chem. Corp., 119 F.3d 688 (8th Cir. 1997) (forum selection clauses can apply to tort/statutory claims depending on wording and facts)