In July 2020, after country music group Lady Antebellum changed its moniker to “Lady A”, Lady Antebellum filed a trademark lawsuit in the Middle District of Tennessee against blues singer Anita White, who had already been performing and releasing music under the name Lady A. As described in greater detail in a previous blog post, Lady Antebellum sought a declaratory judgment that its use of the LADY A mark did not infringe any trademark rights held by White. Claiming that the Tennessee court lacked personal jurisdiction over her and the action was an improper anticipatory lawsuit, White filed a motion to dismiss Lady Antebellum’s complaint (which is currently pending).

A few weeks later, White filed her own trademark lawsuit in the Western District of Washington, alleging that Lady Antebellum infringing her trademark rights in the LADY A mark. In response, Lady Antebellum filed its own motion to dismiss the Washington action, arguing that the “first-to-file” rule supports dismissing, or in the alternative, transferring or staying the case.

Pursuant to the first-to-file rule, a district court may “decline jurisdiction over an action when a complaint involving the same parties and issues has already been filed in another district.” Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 94-95 (9th Cir. 1982). The court can also “dispense with the first-filed principle for reasons of equity,” typically for circumstances of “bad faith, anticipatory suit, and forum shopping.” Alltrade, Inc. v. Uniweld Prods., Inc., 946 F.2d 622, 628 (9th Cir. 1991)

This week, White filed an opposition to Lady Antebellum’s motion to dismiss, arguing that the first-to-file rule should not apply because (1) White’s motion to dismiss the Tennessee action will be successful and therefore there will be no first-filed action justifying dismissal; and (2) equitable reasons counsel against applying the rule.

Regarding principles of equity, White argues in her opposition that the first-to-file rule should not be applied where the first-filed lawsuit is an anticipatory lawsuit designed to deprive a plaintiff of their choice of forum. Specifically, White argues the Tennessee action was impermissibly anticipatory because Lady Antebellum filed that action a mere three weeks after the parties began discussions regarding the mark and right after White’s counsel sent a revised draft settlement agreement.

Furthermore, White asserts that the first-to-file rule should not be applied to stay the Washington action because merits discovery is currently stayed in the Tennessee action pending decision on White’s motion to dismiss. Thus, the ongoing harm caused by Lady Antebellum’s use of the LADY A mark will be unabated until at least April 2021, when the U.S. Magistrate Judge in Tennessee indicated she would issue a decision on her motion. In White’s words, the “risk of putting the parties’ dispute into hibernation for a period of six months or more, far outweighs the possibility of reaching an inconsistent result with the Middle District of Tennessee.”

We will wait to see how both actions proceed and which one—if any—remains.