BD Performing Arts v. B.A.C. Musical Instruments, LLC
- Jeffrey White
- 4:22-cv-02050
- U.S. District Court · Northern District of California
- 4
In BD Performing Arts v. B.A.C. Musical Instruments, Judge White denied defendants’ request to move the case to Kansas under forum-selection clauses.
BD Performing Arts, B.A.C. Musical Instruments, LLC, and RMI, LLC; the case remained in the Northern District of California after the court denied the motion to dismiss.
What happened
BD Performing Arts sued B.A.C. Musical Instruments, LLC and RMI, LLC, alleging that they violated trademark and other laws by making and selling instruments bearing its “System Blue” trademark.
The defendants argued that agreements required the dispute to be brought in Kansas. The court found that the amended claims concerned conduct that was not sufficiently connected to those agreements.
In BD Performing Arts v. B.A.C. Musical Instruments, Judge Jeffrey White denied the motion to dismiss and did not decide whether BD Performing Arts was bound by one of the agreements.
The detailed version
- BD Performing Arts v. B.A.C. Musical Instruments, LLC · No. 4:22-cv-02050
- Jeffrey White
- Sept. 7, 2022
Background
BD Performing Arts alleged that B.A.C. Musical Instruments, LLC and RMI, LLC violated the Lanham Act, the Tariff Act, and California’s Unfair Competition Law by making and selling instruments bearing BD Performing Arts’ “System Blue” trademark.
The defendants moved to dismiss based on forum non conveniens, a doctrine that can allow a court to decline to hear a case when another forum is more appropriate. They relied on forum-selection clauses in two agreements. A Distribution and Marketing Services Agreement between the defendants and BD Performing Arts’ former subsidiary, Azulo, Inc., required disputes regarding that agreement to be brought in specified Kansas courts. A separate Commitment of Intellectual Property Rights Agreement between BD Performing Arts and the defendants required disputes regarding that agreement to be brought in the District Court of Johnson County, Kansas.
Analysis
The court explained that forum-selection clauses are generally enforceable unless the party opposing enforcement makes a strong showing that enforcement would be unreasonable, unjust, invalid, fraudulent, or the product of overreaching. The court also explained that broadly worded clauses can cover disputes that have a significant relationship to a contract or that originate in the contract, including allegations that merely touch on matters covered by the agreement.
BD Performing Arts argued that it was not a party to the Distribution and Marketing Services Agreement and that neither clause applied to the amended claims. The amended claims concerned the manufacture and sale of instruments made after BD Performing Arts’ agreement with Jinbao expired on December 31, 2020.
The court found that the amended allegations showed that the conduct at issue was not sufficiently connected to either agreement for the claims or defenses to “touch upon” those agreements. Because that conclusion resolved the motion, the court did not decide whether BD Performing Arts was bound by the forum-selection clause in the Distribution and Marketing Services Agreement.
Ruling
Judge Jeffrey S. White denied the defendants’ motion to dismiss. The opinion did not dismiss the case or decide the underlying trademark and related claims.
Read the full 4-page opinion on CourtListener, the free public archive maintained by the Free Law Project.