Home-Field (Venue) Advantage: Being the First-to-File Does Not Always Win the Race
In Van Andel Institute v. Thorne Research, Case No. 1:12-cv-731 (W.D. Mich.), Judge Bell denied Thorne Research's motion to transfer venue to the District of Idaho because the first-to-file rule did not apply and also the District of Idaho would not be a more convenient venue for the lawsuit.
The lawsuit arose because VAI, a charitable trust that engages in cancer research and education, thought that one of Thorne Research's design marks infringed upon one of VAI's trademarked designs, in violation of the federal Lanham act and Michigan's common law regarding unfair competition.
Even though Thorne Research filed the first lawsuit for this matter in the District of Idaho, Judge Bell found several pieces of evidence that indicated that Thorne Research filed the action in the District of Idaho in anticipation of Van Andel Institute ("VAI") filing a coercive action. The Sixth Circuit has held that a court should decline to hear an action for a declaration of non-liability in favor of a subsequently-filed coercive action by the natural plaintiff, like VAI in this case. In addition, Judge Bell declined to transfer venue pursuant to 28 U.S.C. § 1404(a) because, most importantly, the convenience of non-party witnesses would favor VAI by having the action in the Western District of Michigan.
Additionally, Judge Bell declined to stay the action to allow the District of Idaho to decide whether to apply the first-to-file rule. Despite two cases from the Western District of Michigan that supported Thorne Research's position, Judge Bell found that a Sixth Circuit case subsequent to those decisions held that the district court in the underlying coercive action should apply the first-to-file rule rather than deferring to a first-filed declaratory action. Thus, the court declined to stay the action and decided to keep the case in the Western District of Michigan.