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OMC LLC v. S&E Gourmet Cuts, Inc.

United States District Court, W.D. Wisconsin

August 14, 2017

OMC LLC, Plaintiff,



         Defendant S&E Gourmet Cuts, Inc. d/b/a “Country Archer” is a California corporation with its principal place of business there, while plaintiff OMC LLC is a limited liability corporation with its principal place of business here in Wisconsin. In November of 2016, Country Archer sent a letter to OMC, accusing it of infringing on Country Archer's copyrights and trade dress related to beef jerky packaging and warning of commencement of litigation in California if not resolved outside of court. After further correspondence was exchanged between the parties, OMC filed this lawsuit in Wisconsin, seeking a declaratory judgment against Country Archer on its claims of trade dress and copyright infringement, as well as for violation of California unfair competition law.[1] Eleven days later, Country Archer made good on its original warning by filing a mirror-image lawsuit in the Central District of California, affirmatively asserting claims for copyright infringement, Lanham Act violations and common law unfair competition.

         Acknowledging the general deference given to a plaintiff's choice of forum, the defendant nevertheless moves to dismiss this declaratory judgment action because OMC only filed it to thwart the lawsuit Country Archer had already threatened to bring against OMC in the Central District of California. (Dkt. #6.) In the alternative, Country Archer moves to transfer this case to that court. (Id.) The court agrees that the facts here demonstrate that plaintiff OMC filed this case to preempt the imminent threat by defendant Country Archer to file suit in its home district. Therefore, plaintiff's claims here will be dismissed.


         Both OMC and Country Archer manufacture and sell beef jerky, among other products. The latter has sold meat snacks under the “Country Archer” label since at least 1978. In 2012, Country Archer began marketing and selling beef jerky with the product packaging design at issue in this case. (Decl. of Thomas J. Speiss, III Ex. 1 [hereinafter “Cease and Desist Letter”] (dkt. #8-1) at 1.) In 2016, OMC began selling its “Mighty” brand of beef jerky in packaging that Country Archer claims to have been copied from its own design. (Compl. (dkt. #1) ¶ 6.)

         On November 22, 2016, Country Archer's counsel, Thomas J. Speiss, III, sent OMC's counsel, Christopher Hussin, a letter accusing OMC of using packaging for its “Mighty” beef jerky that “subject[ed] it to claims under United States law for copyright infringement, trade dress infringement and unfair competition.” (Cease and Desist Letter (dkt. #8-1) at 4.) Based on those accusations, Country Archer “respectfully request[ed]” that OMC: (1) “Modify its new . . . white-and-black logo to a different color scheme”; and (2) “Modify its product packaging to change or eliminate design elements” discussed elsewhere in the letter. (Id. at 6.) Speiss concluded his letter with the following paragraphs:

As part of its request, Country Archer will offer [OMC] a reasonable period of time to modify its present trademarks and sell through its present inventory of products that are marketed and sold in the confusingly similar packaging. Please contact me on or before Tuesday, December 13, 2016 to advise me as to [OMC]'s intentions.
Unless a settlement is reached by December 13, 2016, Country Archer will file suit against [OMC] in the Central District of California for copyright infringement and other claims. Such conduct, if proven, would entitle Country Archer to legal relief against [OMC] as well as its owners, officers and directors, which could include actual damages, realized profits, statutory damages up to $150, 000, Country Archer's attorney fees and costs, as well as appropriate injunctive relief.

(Id. (emphasis in original).)

         By email that same day, Hussin's legal assistant notified Speiss that he would be out of the office until November 30, 2016, but would respond upon his return. (Decl. of Thomas J. Speiss, III Ex. 2 (dkt. #8-2).) On December 13, 2016, the actual deadline for settlement established in Speiss's original letter, OMC's Hussin finally responsed by email to Speiss, explaining that:

As you know, I was away from the office for a number of days when you sent the initial demand letter. Due to my absence, and a client contact illness, we are not in a position to respond to your initial demand letter by today. We do, however, expect to respond in the next day or so.
We trust this will be acceptable to your client.

(Decl. of Thomas J. Speiss, III Ex. 3 (dkt. #8-3).) That same day, Speiss responded by email, offering Friday, December 16, as an acceptable, response date. (Decl. of Thomas J. Speiss, III Ex. 4 (dkt. #8-4).) The following day, December 14, Hussin again replied by email, stating that “I am waiting for confirmation from the client, but I believe you should have the response by Friday at the latest.” (Id.)

         On December 16, 2016, OMC sent a letter through its counsel addressing Country Archer's infringement and unfair competition allegations. (Decl. of Thomas J. Speiss, III Ex. 5 (dkt. #8-5).) In that letter, Hussin outlined OMC's reasons for concluding that Country Archer's contentions lacked legal merit. Notably, that same day (in fact, mere minutes before sending the letter response by email), OMC filed its complaint for declaratory judgment without notifying Country Archer that it had done so, or even was intending to do so, unless one counted an ambiguous warning in the letter that ...

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