United States District Court, D. Maryland
LSR, INC. t/a JERRY'S SEAFOOD, Plaintiff,
SATELLITE RESTAURANTS INC. CRABCAKE FACTORY USA, Defendant.
Richard D. Bennett United States District Judge.
case arises from a dispute between Plaintiff LSR, Inc.,
trading as Jerry's Seafood (“Jerry's
Seafood” or “Plaintiff”), and Satellite
Restaurants Inc. Crabcake Factory USA (“Crabcake
Factory” or “Defendant”) regarding alleged
trademark infringement and unfair competition by the
Defendant. Pending now is Defendant's Motion to Void
Charter Document (ECF No. 18). The parties' submissions
have been reviewed, and no hearing is necessary. See
Local Rule 105.6 (D. Md. 2016). For the reasons set forth
below, Defendant's Motion (ECF No. 18) is DENIED for lack
of subject-matter jurisdiction.
initially filed suit on September 5, 2017. (See No.
RDB-17-2561, ECF No. 1.) After the Defendant filed a motion
to dismiss, which alleged that Plaintiff was a Maryland
corporation with a forfeited charter, the Plaintiff
voluntarily dismissed the initial action without prejudice on
December 19, 2017. (No. RDB-17-2561, ECF Nos. 14, 16.)
December 15, 2017, Plaintiff filed “Articles of
Revival” to obtain an approved charter from the State
of Maryland Department of Assessments and Taxation
(“SDAT”). (ECF No. 8-2.) The Articles of Revival
state that “the corporation has … [p]aid all
state and local taxes, except taxes on real estate, and all
interest and penalties due by the corporation or which would
have become due if the charter had not been forfeited whether
or not barred by limitations.” (ECF No. 8-2.) That same
day, SDAT accepted the Articles of Revival and issued the
Plaintiff a “Certificate of Status, ” which
states Jerry's Seafood is in good standing with the
State. (ECF No. 8-3.)
December 18, 2018, the Plaintiff initiated the instant action
asserting trademark infringement and unfair competition
claims against the same Defendant for using Plaintiff's
THE CRAB BOMB Mark. (ECF No. 1.) Count One asserts that
Defendant infringed Plaintiff's trademark under 15 U.S.C.
§ 1125(a). (Id. ¶¶ 26-34.) Count Two
alleges trademark infringement under 15 U.S.C § 1114.
(Id. ¶¶ 35-42.) Count Three alleges common
law trademark infringement (id. ¶¶ 43-47),
and Count Four alleges common law unfair competition
(id. ¶¶ 48-54). On January 8, 2018, the
Defendant filed a Motion to Stay, contending that the
Plaintiff fraudulently revived its corporate status, a
requirement for standing. (ECF No. 7 (citing Atlantic
Mill & Lumber Realty Co. v. Keefer, 179 Md. 496
(1941)).) On February 15, 2018, this Court ordered the action
be stayed for 60 days to enable the Defendant to challenge
the Plaintiff's corporate status with the SDAT. (ECF No.
February 21, 2018, the Defendants filed a challenge to the
validity of LSR's Articles of Revival with the SDAT. (ECF
No. 11-1.) On April 18, 2018, the Plaintiff filed an
affidavit in support of the Articles of Revival with the
SDAT. (ECF No. 18-1.) On May 18, 2018, the SDAT filed a
“No-action Letter” stating that “the
department received an Affidavit in response to this notice .
. . Consequently, the Department will take no further action
in this matter unless a court of competent jurisdiction
orders the Department to take further action.” (ECF No.
filed the pending Motion to Void Charter Document (ECF No.
18) on June 15, 2018, asking this Court to exercise
jurisdiction over the validity of the Articles of Revival,
find them to be improperly filed with SDAT and not in
conformance with state law, and thus declare them void. This
motion has been fully briefed. (ECF Nos. 19, 20.)
filing a responsive pleading or motion to dismiss,
Defendant's “Motion to Void Charter Document”
asks this Court to grant relief in the form of a declaratory
judgment that the Plaintiff's Articles of Revival are
null and void under Maryland law. According to the Defendant,
this Court is “a court of competent jurisdiction”
that may determine the validity of Plaintiff's charter
document. (ECF No. 18 at 2 (citing Md. Code, Corporations
& Associations, § 1-201.1(e)(1)).) The Defendant
contends, without citation to any authority, that this Court
“has jurisdiction over the matter of Plaintiff's
standing and any issues bearing on or affecting its standing
(including whether the Articles of Revival should be
voided).” (Reply, ECF No. 20 at 3.) Plaintiff argues
that Defendant's challenge must be filed in a Maryland
circuit court and that the challenge constitutes judicial
review of an agency decision, for which the 30-day statute of
limitations period has now run. (P.'s Opp'n, ECF No.
quickly address Plaintiff's argument that Defendant
must file in state court, the statute merely says
that a person “may file a petition in the
circuit court . . ..” Md. Code Ann, Corps. &
Ass'ns § 1-201.1(f)(1) (emphasis added). As this
language is permissive, not restrictive, the statute does not
prohibit a person from filing in federal court. The
Defendant's claim, however, arises under Maryland law, so
this Court would only have jurisdiction over the claim
through supplemental jurisdiction. The Defendant, as the party
asserting the claim, holds the burden of establishing
jurisdiction. Robb Evans & Assocs., LLC v.
Holibaugh, 609 F.3d 359, 362 (4th Cir. 2010).
Court has supplemental jurisdiction “over all other
claims that are so related to claims in the action within
[the Court's] original jurisdiction that they form part
of the same case or controversy under Article III of the
United States Constitution.” 28 U.S.C. § 1367(a).
The United States Court of Appeals for the Fourth Circuit has
explained that supplemental jurisdiction is governed in part
by the following test:
The state and federal claims must derive from a common
nucleus of operative fact. But if, considered without
regard to their federal or state character, a
plaintiff's claims are such that he would ordinarily
be expected to try them all in one judicial proceeding,
then, assuming substantiality of the federal issues, there is
power in federal courts to hear the whole.
Axel Johnson, Inc. v. Carroll Carolina Oil Co., 145
F.3d 660, 662 (4th Cir. 1998) (quoting United Mine
Workers v. Gibbs, 383 U.S. 715, 725 (1966)) (emphasis
added); accord. Rosmer v. Pfizer Inc., 263 F.3d 110,
116 (4th Cir. 2001) (finding that § 1367 codified the
Gibbs test), rehearing denied,272 F.3d 243
(4th Cir. 2001). Supplemental claims “may be separate
claims, or they may merely be different
‘counts' or ‘grounds' or
‘theories' in support of what is essentially a
single claim.” White v. ...