White v. Lady A Entertainment LLC, 2:20-cv-01360

Background

Plaintiff Anita White is a Seattle recording artist who has used the LADY A trademark for nearly 30 years.
On June 11, 2020, the band formerly known as "Lady Antebellum" changed its name to "Lady A."
Defendants (Lady A Entertainment, Hillary Scott, David Haywood) filed a declaratory judgment action in the Middle District of Tennessee on July 8, 2020 seeking to validate their use of LADY A.
White filed a trademark infringement/unfair competition action in the Western District of Washington on September 15, 2020; she simultaneously moved to dismiss the Tennessee action for lack of personal jurisdiction and as an improper anticipatory suit.
The Tennessee court ordered jurisdictional discovery and White’s motion there remains pending; defendants moved in this court to dismiss (or transfer or stay) under the first-to-file rule.
The W.D. Wash. court GRANTED defendants’ motion insofar as it STAYED the Seattle action pending disposition of White’s motion in the Middle District of Tennessee and required notice within ten days of that ruling.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Applicability of first-to-file rule	White argued the rule should not bar her later-filed Washington suit because the Tennessee action lacks personal jurisdiction or is anticipatory	Defendants argued Tennessee was first-filed and controls; it favors dismissal/transfer/stay of the later-filed action	Court acknowledged Tennessee was first-filed and overlapping; stayed the Washington case pending Tennessee court’s ruling rather than dismissing immediately
Whether White’s motion to dismiss in Tennessee is likely to succeed (personal jurisdiction / anticipatory suit)	White contended the Tennessee court lacks specific jurisdiction and that the declaratory action is improper gamesmanship	Defendants argued jurisdiction exists and the Tennessee declaratory action is proper	Court declined to predict outcome; noted jurisdictional discovery and found the Tennessee court’s ruling directly dispositive of whether an exception to first-to-file applies
Whether this court may resolve merits while another court has a pending dispositive motion	White urged prompt adjudication in Washington to avoid delay	Defendants argued this court should defer to the first-filed forum and avoid intruding on Tennessee proceedings	Court declined to usurp the Tennessee court, refused to rule on merits of that pending motion, and stayed proceedings here
Whether a stay would unfairly prejudice White by causing undue delay	White argued a stay risks lengthy delay and ongoing injury (citing other trademark delays)	Defendants argued efficiency and avoidance of conflicting rulings justify a stay	Court found unrelated case delays unpersuasive and held the risk of inconsistent adjudications outweighed delay concerns; stay granted

Key Cases Cited

Merial Ltd. v. Cipla Ltd., 681 F.3d 1283 (Fed. Cir. 2012) (first-to-file rule avoids conflicting decisions and promotes efficiency)
Electronics for Imaging, Inc. v. Coyle, 394 F.3d 1341 (Fed. Cir. 2005) (first-to-file questions in patent/trademark contexts governed by Federal Circuit law)
Communications Test Design, Inc. v. Contec, LLC, 952 F.3d 1356 (Fed. Cir. 2020) (first-filed action generally preferred absent equitable considerations)
Serco Services Co. v. Kelley Co., 51 F.3d 1037 (Fed. Cir. 1995) (principle that declaratory suits do not displace first-filed actions without good reason)
Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931 (Fed. Cir. 1993) (equitable exceptions to first-to-file include lack of jurisdiction or consolidation considerations)
Micron Technology, Inc. v. Mosaid Technologies, Inc., 518 F.3d 897 (Fed. Cir. 2008) (trial courts have discretion to make exceptions to the first-to-file rule)
Kohn L. Group, Inc. v. Auto 23 Parts Mfg. Mississippi, Inc., 787 F.3d 1237 (9th Cir. 2015) (regional first-to-file standard referenced by parties)