Let’s talk turf today, two kinds. OK, maybe three.
First, with Target Field looking more and more like the long-anticipated brand new outdoor home ballpark for the Minnesota Twins, all Twins fans and the local media can think or talk about this week is the new real bluegrass blend turf being installed now (as I type this blog post, in fact, see live webcam here), as it was just transported from Graff’s Turf Farms in Fort Morgan, Colorado.
Last, and most importantly for the purposes of this blog, let’s talk about the importance of legal turf.
Selecting the legal turf or forum where a trademark dispute or battle is fought in federal court is often a very strategic decision. Litigants not infrequently end up battling over where the dispute will be decided, long before even getting to the substance of their dispute. Certain aspects of the federal trademark laws are interpreted differently around the country, which can lead to what lawyers call “forum shopping,” basically, making forum selections based on where the plaintiff believes his or her case will most likely receive a favorable judgment. Indeed, most companies who file trademark lawsuits would prefer to file them close to home (unless forum shopping benefits dictate otherwise), in their own backyard, for that perceived home field advantage, and, because the out-of-state defendant typically ends up needing to hire two sets of lawyers to defend, their usual trademark counsel and local counsel too.
The general legal rule is that the first to file a trademark lawsuit is the one who gets to select the turf where the battle will be decided. There are exceptions to this general rule, perhaps we’ll explore those another time. For now, however, suffice it to say, being the first to file, often creates some helpful advantage or at least some leverage to bring the matter to a more favorable amicable resolution. The first-to-file plaintiff is able to make his or her settlement demand, with the comfort of knowing that — if it is not accepted — he or she already has secured the place for the dispute to go forward. If it happens to be a place where the defendant does not want to litigate, for one reason or another, this can facilitate perhaps better settlement terms for the first-to-file plaintiff.
Another thing that first-to-file trademark plaintiffs know is that simply filing the lawsuit doesn’t mean that the court machinery automatically starts moving the case along. Although the filing of the complaint does “commence” the legal action in federal court under Federal Rule of Civil Procedure (FRCP) 3, the defendant has no obligation to answer until the complaint and summons are properly and formally served on the defendant. Moreover, FRCP 4(m) provides that the plaintiff can take up to 120 days after the filing of the complaint before he or she decides to actually serve the summons and complaint to trigger the defendant’s obligation to answer. When the first-to-file plaintiff doesn’t immediately serve the summons and complaint it probably signals that the plaintiff is interested in settlement, but it wanted to lock up the desired turf and battle location, if it eventually ends up being litigated instead of settled.
You may recall a federal trademark case I reported on back in April, about 120 days ago, in fact, one with an incredible allegation of fame concerning Liberty Building Systems. Judging from the letter the plaintiff filed in court on the eve of the expiration of the 120 day period to serve the summons and complaint, it appears the parties were close to reaching a settlement at that time. Yesterday I was able to confirm that a Notice of Voluntary Dismissal now has been filed, so we’ll never see decided how truly incredible the claim of fame might be.
Since the case was voluntarily dismissed with prejudice, we can only assume that the plaintiff became satisfied with what ever concessions it may have obtained from the defendant. Since the Liberty Steel Buildings website is still up, however, I’m not sure what those concessions might have been, if any. If anyone does know and can share, ringy-dingy please.
So, further evidence that most trademark cases settle, they never make it to trial, especially if the first-to-file plaintiff selects and secures the desired turf wisely.