IP Law Daily Declaratory judgment suit over ‘Lady A’ mark can proceed in Tennessee
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Friday, May 14, 2021

Declaratory judgment suit over ‘Lady A’ mark can proceed in Tennessee

By Robert B. Barnett Jr., J.D.

Action by Nashville-based music group against Seattle musician stays put because Tennessee had specific personal jurisdiction over the defendant, and no valid reason existed to transfer the case to Washington.

A Nashville federal court has jurisdiction to hear a declaratory judgment action filed by the music group Lady A (changed from Lady Antebellum for cultural reasons) against Lady A, a Pacific Northwest-based blues, soul, and funk performer, because the blues performer had sufficient minimum contacts with Tennessee to justify exercising specific personal jurisdiction over her, including having performed in Tennessee on multiple occasions and having sold music in Tennessee. In making its ruling, the court rejected the argument that a different jurisdictional analysis applies to declaratory judgment actions than the traditional purposeful-availment analysis. The court also denied the blues performer’s motion to transfer the case to Washington, where a separate trademark infringement suit filed by the blues performer was pending, because she failed to establish that the private or public interest factors warranted transfer (Scott v. White, May 13, 2021, Campbell, W.).

Background. Hillary Scott, Charles Kelley, and David Haywood are Tennessee residents who comprise the music group Lady A. On June 11, 2020, they had changed their name from Lady Antebellum to Lady A, to avoid the hurtful connotations of the word "antebellum." They registered the Lady A trademark for entertainment services, then musical recordings, and, finally, for clothing, all without opposition.

At some point, they were contacted by Anita White, a blues, soul, and funk artist who had performed under the name Lady A in the Pacific Northwest, Louisiana, Mississippi, and Tennessee. Having performed as Lady A since 2010, White claimed a common law trademark in Lady A. Negotiations between the two continued, until White’s new lawyer demanded $10 million to settle the matter.

The music group then filed a declaratory judgment action in Tennessee federal court, seeking a declaration of rights regarding the use of the name Lady A. The blues performer filed a motion to dismiss the suit or to transfer venue to Washington state.

Personal jurisdiction. The blues performer sought dismissal of the suit on the ground that Tennessee lacked personal jurisdiction over her. In making its ruling, the court rejected the blues performer’s argument that the jurisdictional analysis in a declaratory judgment action is different from other types of actions. The court acknowledged that some jurisdictions have required a showing in declaratory judgment actions that the defendant purposefully directed enforcement actions at residents of the forum and that the declaratory judgment claim arose out of those activities. That different standard, however, the court noted, had not been adopted by the Sixth Circuit or by the Supreme Court, and the federal district where it was used has since toned it down. In any event, the court said that it would apply the traditional specific jurisdiction analysis.

The traditional analysis looks at whether the blues performer purposefully availed herself of the privileges of conducting activities in Tennessee. Those activities took two forms: musical performances and enforcement activities. As for musical performances, she performed as Lady A in Tennessee on at least five or six occasions over the past several years, and her music was available for download in Tennessee. As for enforcement activities, she hired a Tennessee-based attorney to represent her on trademark issues, and she engaged in discussions and exchanged documents with people based in Tennessee. The court also concluded that those activities arose out of or were related to the cause of action. And, finally, exercising jurisdiction over her was not unreasonable given her "substantial connection to the forum." The forum state had an interest in resolving the dispute, and the music group had an interest in obtaining relief. The court concluded, therefore, that it had the right to exercise specific personal jurisdiction over the blues performer.

Improper action. The blues performer also sought dismissal of the declaratory judgment action on the ground that it was an improper "anticipatory" action. The court applied five-factor test established in Grand Trunk W.R. C. v. Consol. Rail Corp., 746 F.2d 323, 326 (6th Cir. 1984) for determining whether a declaratory judgment action was appropriate: (1) whether the declaratory action would settle the controversy, (2) whether the declaratory judgment action would serve a useful purpose in clarifying the legal relations, (3) whether the remedy was being used for "procedural fencing," (4) whether the action would increase friction between federal and state courts, and (5) whether there was a more effective alternative remedy.

The factors weighed in favor of a finding that the declaratory judgment action was appropriate. The blue performer focused on the third factor, the procedural fencing, which looks at whether the action was an example of forum shopping. The facts in this case could be distinguished from the facts in cases where an action was deemed to be forum shopping. For example, no evidence existed that the music group filed their declaratory judgment action in bad faith, in a race to the courthouse door. Though the declaratory judgment action was filed before the trademark infringement suit was filed in Washington, the music group had no reason to know that the infringement suit would be filed. The music group did not mislead the blues performer into holding off her suit so that they could file their suit. The court also rejected the blues performer’s argument that she was the "true plaintiff" because both parties claimed the trademark rights. As a result, the court refused to dismiss the complaint on the ground that the declaratory judgment action was filed improperly.

Motion to transfer. The motion also sought transfer to federal court in Washington. In considering factors related to the convenience of the parties and the public interest, the court saw no reason to transfer the action to Washington. While some witnesses may exist in Washington, the impact of the action was nationwide, not limited to one state. Witnesses will also reside in Tennessee. The relative costs to the parties are unclear at this point. The blues performer had travelled to Tennessee at least once a year for the past several years. Thus, the convenience to the parties factor failed to establish that Washington was more convenient than Tennessee. As for the public interest factors, evidence that cases in Washington came to trial quicker than cases in Tennessee was not dispositive. The court would accommodate a quicker schedule, if that is what the parties wanted. Thus, the public interest factors did not favor Washington over Tennessee either. Transfer was denied.

The court, therefore, denied the motion to dismiss or transfer the case.

The case is No. 3:20-cv-00585.

Attorneys: Aimee Housinger (Greenberg Traurig, LLP) for Hillary Scott. Brendan J. Hughes (Cooley LLP) for Anita White.

MainStory: TopStory Trademark GCNNews TennesseeNews

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