United States District Court, D. Minnesota
Engler and Molly Littman, Gray Plant Mooty, and Sheldon
Klein, Gray Plant Mooty, for Plaintiff.
Kravitz, Nixon Peabody LLP, and Thomas Johnson, Merchant
& Gould PC, for Defendant.
MEMORANDUM OPINION AND ORDER
RICHARD NELSON, UNITED STATES DISTRICT JUDGE.
January 8, 2019, the Court denied Defendant W.B. Mason's
motion to dismiss for lack of personal jurisdiction, in light
of binding Eighth Circuit precedent on the issue. See Am.
Dairy Queen Corp. v. W.B. Mason Co., Inc., 2019 WL
135699 (D. Minn. Jan. 8, 2019); see also Doc. No.
29. W.B. Mason now requests, over Dairy Queen's
objection, that the Court “certify” that decision
for “interlocutory appeal” to the Eighth Circuit.
Although the Court acknowledges that W.B. Mason makes
compelling arguments regarding the lack of personal
jurisdiction in this case, the Court ultimately concludes
that allowing W.B. Mason to file an interlocutory appeal
would not materially advance this trademark litigation, and
would unfairly prejudice Dairy Queen's rights as a
litigant. The Court accordingly denies W.B. Mason's
usual course of business, a party may not appeal a District
Court's ruling unless that ruling marks a “final
decision.” 28 U.S.C. § 1291. “Generally, a
district court decision is final when ‘the district
court has rendered a decision that ends the litigation on the
merits and leaves nothing for the court to do but execute the
judgment.'” Thomas v. Basham, 931 F.2d
521, 523 (8th Cir. 1991) (quoting Towers Hotel Corp. v.
Rimmel, 871 F.2d 766, 769 (8th Cir. 1989)). There is no
dispute that the Court's January 8, 2019 ruling was not a
the doctrine of “interlocutory appeal” presents
an exception to this general rule. Specifically, under
federal law, a District Court may “certify” a
non-final order to the Court of Appeals that sits above it if
the following three conditions are met:
“(1) the order ‘involves a
controlling question of law'; (2)
‘there is substantial ground for difference of
opinion'; and (3) certification will
‘materially advance the ultimate termination of the
litigation.'” White v. Nix, 43 F.3d 374,
377 (8th Cir. 1994) (quoting 28 U.S.C. § 1292(b)).
Although the Eighth Circuit has not expounded upon this
standard at length, it has emphasized, repeatedly, that
certification “should be granted sparingly, and with
discrimination.” Union Cty., Iowa v. Piper Jaffray
& Co., Inc., 525 F.3d 643, 646 (8th Cir. 2008)
(quoting White, 43 F.3d at 376). Indeed, as this
Court noted only a few years ago, “[t]he legislative
history of section 1292 indicates that it was to be used only
in extraordinary cases where decision of an interlocutory
appeal might avoid protracted and expensive litigation. It
was not intended merely to provide review of difficult
rulings in hard cases.” Great Lakes Gas
Transmission Ltd. P'ship v. Essar Steel Minn., LLC,
No. 09-cv-3037 (SRN/LIB), 2013 WL 4028144, at *3 (D. Minn.
Aug. 7, 2013) (citing Union Cty., 525 F.3d at 646).
The movant must therefore meet a “heavy burden”
in establishing that the case is “an exceptional one in
which immediate appeal is warranted.” Nix, 43
F.3d at 376.
Mason argues that this case is “exceptional” for
the following three reasons. First, it contends, the January
8, 2019 ruling is “controlling because reversal of the
Court's Order would result in dismissal of the case for
lack of personal jurisdiction, pursuant to Fed.R.Civ.P.
12(b)(2)).” (W.B. Mason Br. [Doc. No. 32] at 4.)
Second, it continues, “numerous federal and state
appellate courts” have considered the personal
jurisdiction question at issue here, that is, whether
compliance with a state's corporation registration
statute constitutes consent to general personal jurisdiction,
and have reached “conflicting and contradictory
opinions.” (Id. at 4-5; accord Dairy
Queen, 2019 WL 135699, at *4-6 (collecting cases).)
Finally, W.B. Mason concludes, a favorable appellate ruling
in its favor would “materially advance” this
litigation by “put[ting] an end to the proceedings [in
Minnesota] before the parties begin the expensive discovery
process and engage in protracted litigation.” (W.B.
Mason Br. at 7-8.)
part, Dairy Queen concedes that the Court's Order
involves a “controlling question of law.” (Dairy
Queen Br. [Doc. No. 45] at 5 n.2.) However, Dairy Queen
avers, the second Section 1292(b) factor - “substantial
difference of opinion” - is not met because the Eighth
Circuit and the Minnesota Supreme Court have already ruled on
the relevant jurisdictional question, albeit in a manner that
potentially conflicts with more recent U.S. Supreme Court
case law. (Id. at 5-6 (discussing Knowlton v.
Allied Van Lines, 900 F.2d 1196 (8th Cir. 1990) and
Rykoff-Sexton, Inc. v. Am. Appraisal Assocs., Inc.,
469 N.W.2d 88 (Minn. 1991).) Dairy Queen also argues that
allowing an interlocutory appeal would not “materially
advance” this litigation because, “even if W.B.
Mason were to prevail in an immediate appeal, ” this
litigation would simply move to Massachusetts federal court,
where W.B. Mason's (mirror image) declaratory judgment
action is currently pending. (Id. at 7-8; see
also Dairy Queen, 2019 WL 135699, at *1 (noting that,
three days after Dairy Queen filed this suit in the District
of Minnesota, “W.B. Mason filed a declaratory judgment
action in the District of
Massachusetts”).) If this case ended up in Massachusetts,
Dairy Queen points out, “the litigation of Dairy
Queen's claims [would] be conducted in substantially the
same manner” as they would be here. (Dairy Queen Br. at
Court finds that Dairy Queen has the better of the argument.
As an initial matter, the Court agrees with W.B. Mason that
Knowlton and Rykoff-Sexton might no longer
constitute good law in light of the U.S. Supreme Court's
decisions in Goodyear Dunlop Tires Ops., S.A. v.
Brown, 564 U.S. 915 (2011) and Daimler AG v.
Bauman, 134 S.Ct. 746 (2014). Indeed, the Court
acknowledged this very point in its January 8 Order. See
Dairy Queen, 2019 WL 135699, at *4 (observing that
“persuasive arguments can be made that the holding of
Knowlton is not reconcilable with the narrowing of
the boundaries of due process that govern an analysis of
minimum contacts and general personal jurisdiction under
Goodyear and Daimler”). Nonetheless,
because “interlocutory appeal” would not
“materially advance” the “ultimate
termination” of this trademark litigation, the Court is
dutybound to deny W.B. Mason's motion. See 28
U.S.C. § 1292(b). This is so for two reasons.
this is not a “standard” interlocutory appeal
case, in that the movant is requesting that the District
Court certify an important, yet unclear, legal question that
the higher court has not yet addressed. See, e.g.,
Schwendimann v. Arkwright Advanced Coating, Inc.,
No. 11-cv-820 (ADM/JSM), 2012 WL 5389674, at *5 (D. Minn.
Nov. 2, 2012) (“substantial ground for difference of
opinion” existed where district courts disagreed about
a legal question that the Federal Circuit Court of Appeals
had not yet addressed). Rather, the Eighth Circuit
and Minnesota Supreme Court have both
expressly addressed the at-issue question, albeit in a way
that may be out of step with more recent U.S. Supreme Court
precedent. See Knowlton, 900 F.2d 1196;
Rykoff-Sexton, Inc., 469 N.W.2d 88. As such, W.B.
Mason's appeal could delay this case to a much greater
extent than the “standard” interlocutory appeal
because, to achieve a favorable result, W.B. Mason would need
to either (a) request that the Eighth Circuit hear the case
en banc,  (b) request that the Eighth Circuit
certify the relevant question to the Minnesota Supreme Court
(so that the state court could review its prior
interpretation of a state statute in the first instance),
(c) petition the U.S. Supreme Court for certiorari. This is a
recipe for a long and drawn-out appeals process, in a case
that has already been delayed over a year because of the
present jurisdictional dispute.
and even more importantly, a favorable appeals court ruling
would do nothing to “terminate” the substantive
trademark claims that Dairy Queen is litigating against W.B.
Mason, because an identical “declaratory
judgment” suit is currently pending in Massachusetts
federal court. Thus, even if W.B. Mason successfully
convinced the Eighth Circuit (or U.S. Supreme Court) to
vacate the Court's January 8 decision, the parties would
simply return to their current positions as a matter of
substantive law, albeit in Boston instead of St. Paul, and in
2021 instead of 2019. It makes no sense to make Dairy Queen
wait that long to pursue its trademark infringement claims,
which it filed in this Court in good faith. Accord Dairy
Queen, 2019 WL 135699, at *7 (denying W.B. Mason's
motion to transfer venue, in large part because W.B. Mason
had “not sufficiently argued that Dairy Queen acted in
bad faith, [or] that Dairy Queen raced to the courthouse as a
result of learning W.B. Mason was going to file [its action
the Court is well aware that this decision could result in
the parties trying this case before a jury here, only to have
that trial erased, years later, on jurisdictional
infirmities. Cf. Great Lakes Gas Transmission Ltd.
P'ship v. Essar Steel Minn., LLC, 843 F.3d
325 (8th Cir. 2016). But that risk only prejudices the
parties' pocketbooks, not their substantive rights.
See Phillips Petroleum Co. v. Shutts, 472 U.S. 797,
805 (1985) (“[A] judgment issued without proper
personal jurisdiction . . . is not entitled to full faith and
credit elsewhere and thus has no res judicata effect as to
that party.”). And, in any event, Dairy Queen is the
“master of its complaint, ” and thus has every
right to take that risk. Holmes Grp., Inc. v. Vornado Air
Circulation Sys., Inc., 535 U.S. 826, 831 (2002). More
still, W.B. Mason is a national corporation represented by
both national and local counsel; it has not indicated that it
will face any prejudice by litigating this suit, which
primarily centers around federal trademark law, in ...