Vaughn Boyd; SWI-DE, LLC, doing business as Drew Estate v. Deadwood Tobacco Company, also known as Deadwood Tobacco Company Corporation

United States Court of Appeals
For the Eighth Circuit
___________________________
No. 25-1659
___________________________
Vaughn Boyd; SWI-DE, LLC, doing business as Drew Estate
Plaintiffs - Appellants
v.
Deadwood Tobacco Company, also known as Deadwood Tobacco Company
Corporation; William Rectenwald
Defendants - Appellees
____________
Appeal from United States District Court
for the District of South Dakota - Western
____________
Submitted: October 22, 2025
Filed: June 8, 2026
____________
Before SMITH, KELLY, and GRASZ, Circuit Judges.
____________
SMITH, Circuit Judge.
Vaughn Boyd and the Drew Estate (collectively, Plaintiffs) sold to William
and Jodene Rectenwald the Deadwood Tobacco Company pursuant to a Stock
Purchase Agreement (Agreement), which withheld from sale three trademarks
originally registered to the Deadwood Tobacco Company. Plaintiffs later sued the
Rectenwalds and Deadwood Tobacco Company (collectively, Defendants) alleging

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infringement of their reserved trademark interests pursuant to the Lanham Act.
Defendants denied these allegations. The district court1 dismissed the action on
forum non conveniens grounds after determining Plaintiffs’ claims arose out of the
Agreement, which contains a forum selection clause. Plaintiffs appeal the dismissal.
For the reasons discussed below, we affirm.
I. Background
A. The Trademarks
Founded in 1996 by Jonathan Drew and Marvin Samelin in New York, Drew
Estate originates and manufactures premium cigars. It ranks as one of the largest and
best-known cigar producers in the world. Drew Estate has originated numerous
notable and successful cigar brands, including ACID, Liga Privada, and Isla del Sol,
among others. Drew Estate also owns and operates the largest cigar factory in
Nicaragua and organizes events for the premium cigar community.
Boyd founded the Deadwood Tobacco Company and Cigar Bar in 2006 in
Deadwood, South Dakota. When Boyd opened her brick-and-mortar cigar shop and
smoke lounge, she stocked and sold numerous brands of cigars. The store, however,
did not produce any house brands.
In 2009 Drew Estate and Deadwood Tobacco Company entered into an
agreement to begin a new line of store-exclusive cigars originated by Drew Estate
but bearing the Deadwood Tobacco Company name. Together, these companies
produced Deadwood’s first house cigar, the Sweet Jane. Deadwood Tobacco
Company registered a trademark with the United States Patent and Trademark Office
under the mark DEADWOOD TOBACCO CO. SWEET JANE. Sweet Jane sold
well, so the partners agreed to expand the line. They subsequently introduced two
additional cigars under the marks DEADWOOD TOBACCO CO. FAT BOTTOM
BETTY and DEADWOOD TOBACCO CO. CRAZY ALICE in 2013 and 2014,
1 The Honorable Camela C. Theeler, United States District Judge for the
District of South Dakota.

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respectively. The partners marketed and sold these cigars under their individual
marks as well as collectively under the registered marks DEADWOOD,
DEADWOOD TOBACCO, and DEADWOOD TOBACCO CO.
To assist with marketing and product recognition, Drew Estate developed
logos and branding for the cigars. Each cigar featured a calavera de azúcar, a skull
motif associated with Día de Los Muertos, depicting a female character designed to
represent the “strong, heartbreaking women from the brothels and barrooms of the
seedy underbelly of the Old West in Deadwood, South Dakota.” R. Doc. 12-1, at 4.
Using this marketing, the partners also sold the cigar line under the collective mark
THE YUMMY BITCHES.
All the house cigars sold well, so the partners again expanded their agreement.
In 2016 Deadwood Tobacco Company granted Drew Estate an exclusive license to
market and sell THE YUMMY BITCHES nationwide. Drew Estate subsequently
announced the national release of the DEADWOOD brand cigars at the 2016
International Premium Cigar & Pipe Retailers Association. Cigar Dojo, a premium
cigar industry publication, reported that “Drew Estate is making Deadwood’s Three
Yummy Bitches line a national release. The line includes Sweet Jane, Fat Bottom
Betty, and Crazy Alice—previously a shop-exclusive for Deadwood Tobacco Co. in
South Dakota.” R. Doc. 12-1, at 5.
Deadwood Tobacco Company held all the trademarks under its corporate
name.
B. The Sale of Deadwood Tobacco Company
On April 1, 2018, Boyd entered into an agreement with William and Jodene
Rectenwald to sell them 99% of Deadwood Tobacco Company pursuant to the
Agreement. Boyd later sold the final 1%. The Agreement expressly reserved from
the sale some assets, including the trademark registrations for DEADWOOD
TOBACCO CO. CRAZY ALICE, DEADWOOD TOBACCO CO. SWEET JANE,
and DEADWOOD TOBACCO CO. FAT BOTTOM BETTY. The Agreement

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reserved only these three marks and made no mention of the DEADWOOD,
DEADWOOD TOBACCO, DEADWOOD TOBACCO CO., or THE YUMMY
BITCHES marks.
Later that same day, Deadwood Tobacco Company assigned the three
reserved trademarks to Boyd and filed the appropriate paperwork with the United
States Patent and Trademark Office. Jodene Rectenwald signed the registration
transfer agreement as CEO of Deadwood Tobacco Company, and Boyd signed as an
individual.
C. The Alleged Violations and Initial Lawsuits
Later, Deadwood Tobacco Company, now owned by the Rectenwalds,
announced new cigars under the trademarks DEADWOOD TOBACCO CO.
CHASING THE DRAGON, DEADWOOD TOBACCO CO. ZERO, DEADWOOD
TOBACCO CO. MIDNIGHT OIL, and DEADWOOD TOBACCO CO. AUNTIE,
among others. The company announced these new products in a letter to the cigar
market, which read in relevant part:
As the originator of the “Yummy Bitches,” including Sweet Jane, Crazy
Alice, [and] Fat Bottom Betty . . . we felt it was time to add a new flavor
profile to the lineage of greatness. With that, let me introduce you to
the new line. Deadwood Tobacco Co. Chasing the Dragon is the first of
its kind and boasts a rich selection of flavors never introduced to the
cigar world.
Just like the yummy bitches pay homage to the madams that ran the
brothels in this notorious town, the DTC Chasing the Dragon name
comes from the underbelly of the wild west. . . . The Auntie, Zero[,]

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and Midnight Oil all carry names borrowed from the street slang for
opium at the time.
R. Doc. 12-1, at 11 (citation modified).
Upon reading the letter, Plaintiffs informed Deadwood Tobacco Company
that they believed these marks and representations violated the trademark interests
that they reserved as part of the Agreement. After the parties failed to reach a
resolution, Plaintiffs filed suit in federal district court in Florida. That lawsuit
brought federal and state trademark claims. It also included a declaratory action to
settle the contract disputes arising from the various agreements between the parties,
including the Agreement.
Plaintiffs’ Florida-filed federal complaint asserted that Defendants violated
the goodwill associated with the reserved marks through their Chasing The Dragon
line. They also alleged violations based on use of DEADWOOD, DEADWOOD
TOBACCO, and DEADWOOD TOBACCO CO. The lawsuit referred to all these
marks collectively as the “Infringing Marks.” Id. at 10.
The Florida federal court did not reach the merits of Plaintiffs’ claims. Thus,
it made no findings regarding ownership or the associated rights of the various
marks. Instead, that court determined that Plaintiffs’ claims arose out of the
Agreement, as that agreement purported to assign and reserve various trademarks
associated with the sale of Deadwood Tobacco Company. Over Plaintiffs’
objections, the Florida federal district court dismissed the action on forum non
conveniens grounds. The court relied on the forum selection clause in the
Agreement. That clause provides:
Venue and Jurisdiction. Venue for any dispute arising out of this
Agreement shall be in Lawrence County, South Dakota, and the circuit

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court in Lawrence County, South Dakota shall have jurisdiction over
the parties and subject matter of the dispute.
R. Doc. 12-2, at 16. The Agreement also contains a choice-of-law provision stating
that it “shall” be construed according to the laws of South Dakota. Id.
Following dismissal of the Florida suit, Defendants filed suit in South Dakota
state court relying on the forum selection clause in the Agreement. They sought
resolution of the contractual disputes.
D. The Present Lawsuit
As the South Dakota state court suit proceeded, Plaintiffs brought this federal
action in the District of South Dakota. This suit differs from the Florida federal
lawsuit. Specifically, Plaintiffs here pleaded only federal Lanham Act claims. They
also did not include the Agreement in their pleadings, electing instead to merely
mention the Agreement without making it part of the court’s record. Plaintiffs also
listed the marks that they dispute, this time including the “THE YUMMY
BITCHES” mark as one of those allegedly infringed. Defendants provided the
district court with the full Agreement in their response.
Upon examination, the South Dakota district court came to the same
conclusion as the Florida court: dismissal. It first determined that the disputes arose
out of the Agreement. It next found that the forum selection clause was valid and
then interpreted it as mandatory. Finally, it elected to enforce the clause. Thus, it
dismissed the suit. This appeal followed.
II. Discussion
On appeal, Plaintiffs advance three principal arguments. First, they contend
that their trademark rights arise solely under federal law—the Lanham Act—and
therefore cannot depend on the Agreement. In their view, trademark rights do not

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originate from contract, and the district court therefore erred by relying on the
parties’ Agreement as the source of their trademark rights’ claims.
Second, Plaintiffs assert that, even assuming the Agreement is relevant, the
district court erred in its interpretation of its forum selection clause. Plaintiffs argue
a proper reading of the Agreement reveals a permissive rather than mandatory
construction for the clause. Alternatively, they maintain that, even if construed as
mandatory, the clause merely authorizes state court jurisdiction but does not
preclude federal jurisdiction.
Third, Plaintiffs contend that the district court erred in enforcing the clause,
even with a mandatory construction, because doing so violates the public policy of
the federal courts. Specifically, they argue that the federal courts alone ought to hear
trademark disputes given the Lanham Act’s national significance and the substantial
economic importance of trademark rights and their enforcement. They contend that
the district court erred by sending their dispute to the state courts of South Dakota.
A. Standard of Review
The parties dispute the district court’s determination as to the applicability of
the Agreement, as well as that court’s construction and enforcement of the
Agreement’s forum selection clause. Therefore, we review the district court’s
conclusions on each point.
We review a district court’s determination that a given contract applies to a
dispute between the parties de novo, as it is a question of law. Little Rock Sch. Dist.
v. Pulaski Cnty. Special Sch. Dist., No. 1, 83 F.3d 1013, 1017 (8th Cir. 1996) (stating
that “the meaning of the terms in the [disputed agreement], and their application to
the facts in this case, are legal questions over which we exercise plenary review”).
We also review the district court’s findings as to the validity and
interpretation—including meaning, scope, and applicability—of a forum selection
clause de novo, as these are also questions of law. Terra Int’l, Inc. v. Miss. Chem.

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Corp., 119 F.3d 688, 691–92 (8th Cir. 1997) (treating interpretation and scope of a
forum selection clause as contract-construction issues reviewed de novo); Servewell
Plumbing, LLC v. Fed. Ins. Co., 439 F.3d 786, 788 (8th Cir. 2006); see also Wilbur-
Ellis Co. v. Erikson, 103 F.4th 1352, 1355 (8th Cir. 2024) (“Contract interpretation
is a question of law we review de novo.”).
Finally, we review the district court’s determination of whether to enforce the
forum selection clause for an abuse of discretion. Sun World Lines v. March
Shipping Corp., 801 F.2d 1066, 1068 n.3 (8th Cir. 1986); see also Terra Int’l, 119
F.3d at 691–92.
B. The Trademark Interests
Plaintiffs argue that the district court committed reversible error “in ruling that
the [Agreement’s] forum selection clause controlled which court had jurisdiction
over [their] Lanham Act Claims.” Appellants’ Br. 14. Plaintiffs contend that the
Agreement governs only those claims that arise out of it, and because their trademark
rights existed prior to that Agreement, resolution of disputes surrounding those
marks fall outside the Agreement’s scope. They thus characterize the issue as simply
whether the use of the DEADWOOD TOBACCO CO. CHASING THE DRAGON,
DEADWOOD TOBACCO CO. AUNTIE, and related marks were “confusingly
similar to marks owned by Ms. Boyd and whether Appellees falsely claimed
designation of origin by communicating to the public that their products were part
of Plaintiffs’ line of products.” Id. at 16. “Thus,” Plaintiffs continue, “the
[Agreement] is not relevant to this case . . . nor is any interpretation of the
[Agreement] necessary to determine ownership of the registered trademarks at issue
in this case or to evaluate the federal Lanham Act claims . . . .” Id. Plaintiffs maintain
that because they have held these marks since their inception, the Agreement made
no change to their ownership and therefore cannot govern the present dispute. In

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other words, the Agreement merely recognized the status quo: Boyd owned, had
always owned, and would continue to own, the three Deadwood marks.
The question presented, however, is not whether the Agreement created
trademark interests vis-à-vis the parties. The question is whether adjudicating
Plaintiffs’ Lanham Act claims requires examination of the Agreement. We will
examine how the Lanham Act affects trademark disputes that involve contractual
transfer of the marks.
1. Trademarks and Goodwill
A trademark identifies the source of goods or services and distinguishes the
producer or provider from others. See, e.g., United Drug Co. v. Theodore Rectanus
Co., 248 U.S. 90, 97 (1918). Courts have stated this principle for more than a
century: a trademark is “a symbol or a device” used by an artisan or producer to
designate origin and to separate her goods from competing offerings. In re Trade-
Mark Cases, 100 U.S. 82, 92 (1879); see Hanover Star Milling Co. v. Metcalf, 240
U.S. 403, 412 (1916) (stating that trademarks exist “to identify the origin or
ownership of the article to which it is affixed”). Contemporary precedent continues
to follow the same rule. Distinctive marks enable consumers to recognize the goods
that they want and avoid the ones that they do not. See Vidal v. Elster, 602 U.S. 286,
305 (2024); Matal v. Tam, 582 U.S. 218, 224 (2017). A mark gains legal significance
only when it performs this source-identifying role; it operates as a symbol whose
value arises from the association it conveys. B & B Hardware, Inc. v. Hargis Indus.,
Inc., 575 U.S. 138, 142 (2015) (“The principle underlying trademark protection is
that distinctive marks—words, names, symbols, and the like—can help distinguish
a particular artisan’s goods from those of others.”).
Goodwill refers to the commercial reputation and customer association that a
business generates through use of a mark. See United Drug, 248 U.S. at 97; PepsiCo,
Inc. v. Grapette Co., 416 F.2d 285, 287 (8th Cir. 1969). The law protects the mark
only because it symbolizes that goodwill; the symbol has no force apart from the
economic interest it denotes, and the law recognizes it only to the degree necessary

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to protect that interest. Prestonettes, Inc. v. Coty, 264 U.S. 359, 368–69 (1924). Put
succinctly: a trademark “has no independent significance apart from the goodwill it
symbolizes,” and “[t]here are no rights in a trademark apart from the business with
which the mark has been associated; they are inseparable.” Marshak v. Green, 746
F.2d 927, 929 (2d Cir. 1984).
Under the common law, trademark rights arise out of use, not “mere
adoption.” United Drug, 248 U.S. at 97. Congress follows the same principle in
legislation, defining “use in commerce” as “the bona fide use of a mark in the
ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C.
§ 1127. A producer therefore creates enforceable rights only when its use of a symbol
establishes a distinct commercial association in the minds of consumers. See Vidal,
602 U.S. at 291; B & B Hardware, 575 U.S. at 142; Tam, 582 U.S. at 225. Use binds
the mark to the goodwill protected by the law, and that connection generates the
protectable trademark interest. See B & B Hardware, 575 U.S. at 143.
2. History of the Lanham Act
“[F]ew human institutions can boast a more respectable antiquity” than the
trademark. Edward S. Rogers, Some Historical Matter Concerning Trade-Marks, 9
Mich. L. Rev. 29, 29 (1910); see Tam, 582 U.S. at 224 (“Trademarks and their
precursors have ancient origins . . . .”). Early American courts inherited from
England a longstanding practice of protecting source-identifying marks, and by the
time of the Founding, both common law and equity recognized trademark interests
as enforceable property rights appurtenant to goodwill. Vidal, 602 U.S. at 287. For
much of the nation’s history, however, trademark disputes remained the province of
state courts because Congress had not enacted a comprehensive federal statute. See
Tam, 582 U.S. at 224. The inconsistent landscape of state laws created challenges
for the business community, and early efforts by Congress to bring unity to the
system failed. See id. (“Eventually, Congress stepped in to provide a degree of
national uniformity, passing the first federal legislation protecting trademarks in
1870.”); see also Trade-Mark Cases, 100 U.S. at 87 (striking down the federal
Trademark Act of 1870 as unconstitutional but noting that trademarks, “in order to

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their efficiency require, uniformity of regulation”); see generally 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 19:8 (5th ed.)
[hereinafter McCarthy] (tracing the history of state common law trademark
protection and the commercial pressures that drove federal legislation). Congress
ultimately responded in 1946 by adopting the Lanham Act, a nationwide system
designed to bring uniformity to registration and enforcement while preserving the
common-law principle that trademark rights originate in use. Id.; Act of July 5, 1946,
ch. 540, 60 Stat. 427.
The Lanham Act federalized trademark law, but it did not displace the
common-law foundation of trademark rights, nor did it disturb how the rights
originate. The Act presupposes that rights arise from use and the goodwill that use
generates. Its statement of purpose, codified in § 45, describes the regulatory aim of
eliminating deceptive and misleading uses of marks in commerce, protecting
registered marks from state interference, and furnishing uniform federal remedies
for unfair competition. 15 U.S.C. § 1127. Thanks to the “unusual[] and
extraordinarily helpful” statement of purpose in the statute, Lexmark Int’l, Inc. v.
Static Control Components, Inc., 572 U.S. 118, 131 (2014) (citation modified), “[i]t
requires no guesswork to ascertain Congress’ intent regarding this federal law,”
POM Wonderful LLC v. Coca-Cola Co., 573 U.S. 102, 106 (2014) (citation
modified).
3. Federal Registration Under the Lanham Act
The Lanham Act created a registration system that implements the Act’s goals
by supplying evidentiary and procedural advantages—constructive notice, prima
facie validity, and nationwide priority—to mark holders. However, this system
follows the same presuppositions as the rest of the act and leaves the substantive,
common-law origin of rights untouched. A mark must be “use[d] . . . in commerce”
before it can be registered, and registration “is not mandatory” because owners of
unregistered marks may still enforce their rights under both the Lanham Act and the
common law. Vidal, 602 U.S. at 291 (citation modified). The Lanham Act therefore
protects trademarks that already exist: “[F]ederal law does not create trademarks.”

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B & B Hardware, 575 U.S. at 142. Thus, use creates the protectable interest, United
Drug, 248 U.S. at 97, goodwill defines its scope, see PepsiCo, 416 F.2d at 287, and
registration merely records the associated rights that necessarily preexist, see, e.g.,
Tam, 582 U.S. at 225–26; see generally Couture v. Playdom, Inc., 778 F.3d 1379,
1381 (Fed. Cir. 2015) (“The registration of a mark that does not meet the use in
commerce requirement is void ab initio. The term ‘use in commerce’ means the bona
fide use of a mark in the ordinary course of trade, and not made merely to reserve a
right in a mark.” (citation modified)); Application of Desiter Concentrator Co., 289
F.2d 496, 501 (C.C.P.A. 1961) (“It is trite to say that the Lanham Act does not create
trademarks. While it may create some new substantive rights in trademarks, unless
the trademarks pre-exist there is nothing to be registered.”).
Lanham Act registration establishes that the applicant owns a mark used in
commerce; it does not determine whether a transaction transferred or retained the
goodwill that gives the mark its legal force. United Drug, 248 U.S. at 97; see
PepsiCo, 416 F.2d at 287. Because trademark rights arise from use and the consumer
goodwill generated by that use, registration alone cannot establish a protectable
interest. See, e.g., PepsiCo, 416 F.2d at 287.
4. Assignments of Trademark Interests
Relatedly, a trademark cannot be assigned except in tandem with the transfer
of the underlying business and goodwill with which it is associated. Bulte v.
Igleheart Bros., 137 F. 492, 499 (7th Cir. 1905) (“The good will is inseparable from
the business itself. . . . Therefore it is . . . a necessary qualification to the
assignability of a trade-mark that there goes with it the transfer of the business and
good will of the owner of the symbol.”). A court reviewing a transfer must therefore
necessarily first find the underlying goodwill and identify who owns it. See PepsiCo,
416 F.2d at 289–90 (discussing how “[t]he evidence is clear” that party seeking to
transfer trademark “did not intend to adopt or exploit any ‘goodwill’ from the” mark
purportedly transferred). And since registration alone does not create or convey a
trademark, a reviewing court must look past formal registered title and examine
whether a transaction truly conveyed the underlying business, customer

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relationships, and commercial reputation that the mark must represent. See, e.g.,
Bulte, 137 F. 492 at 498–99 (examining whether trademark transfer included
underlying business); Indep. Baking Powder Co. v. Boorman, 175 F. 448, 453
(C.C.D.N.J. 1910) (discussing how transfer of multiple trademarks associated with
the same product would cause confusion for the public).
Contracts that appear to assign (or reserve) trademark interests provide fertile
starting ground for this inquiry. See, e.g., Indep. Baking Powder, 175 F. at 452–53
(discussing the “instrument” and “contract” underlying previous cases). A contract,
like registration, does not create trademark interests, but it can assign them. United
Drug, 248 U.S. at 97; PepsiCo, 416 F.2d at 299. Nevertheless, assignments of extant
trademarks unaccompanied by the underlying goodwill are void. United Drug, 248
U.S. at 97; PepsiCo, 416 F.2d at 299; 15 U.S.C. § 1060; accord. Sugar Busters LLC
v. Brennan, 177 F.3d 258, 265 (5th Cir. 1999) (holding an assignment void because
goodwill did not accompany the mark); Bulte, 137 F. 492, 498–99 (invalidating
transfer where the underlying business did not convey). The Lanham Act requires as
much: Any transfer of a trademark must go “with the good will of the business in
which the mark is used, or with that part of the good will of the business connected
with the use of and symbolized by the mark.” 15 U.S.C. § 1060(a)(1).
5. Assignment of the DEADWOOD Marks under the Agreement
Here, Boyd sold the Deadwood Tobacco Company to the Rectenwalds
pursuant to the Agreement. That Agreement explicitly reserved from sale several
marks including the DEADWOOD TOBACCO CO. SWEET JANE, DEADWOOD
TOBACCO CO. CRAZY ALICE, and DEADWOOD TOBACCO CO. FAT
BOTTOM BETTY marks. Because trademarks must attach to goodwill and cannot
otherwise exist, the Agreement’s reservation of these trademarks necessarily did one
of two things. On the one hand, it may have been a nullity and accomplished nothing
because no goodwill accompanied it. United Drug, 248 U.S. at 97; 15
U.S.C. § 1060(a)(1). Or, on the other hand, the reservation may have functioned as
a retention of some portion of the business and its associated goodwill sufficient to
support continued ownership of those marks. Cf., e.g., PepsiCo, 416 F.2d at 290

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(holding that assignment is only valid when the assignee acquires the underlying
business or product line to which the mark’s goodwill attaches). Thus, by reserving
certain marks while conveying the rest of the company, including closely related and
associated marks such as THE YUMMY BITCHES and DEADWOOD TOBACCO
CO., Plaintiffs either retained the goodwill necessary to support the reserved marks
or failed to reserve them at all.
The Agreement matters in determining which of these outcomes occurred. See
Omron Healthcare, Inc. v. Maclaren Exps. Ltd., 28 F.3d 600, 603 (7th Cir. 1994)
(“[A]ll disputes the resolution of which arguably depend on the construction of an
agreement arise out of that agreement.” (citation modified)). A finder of fact will
need to determine the scope of the parties’ transaction. To do so, they will need to
look to the Agreement, and other relevant agreements between the parties, to
determine what goodwill Boyd reserved, if any. This is true regardless of the
undisputed ownership of the three marks—Sweet Jane, Fat Bottom Betty, and Crazy
Alice. Based on the foregoing, we agree with the district court that the Plaintiffs’
claims arise out of the Agreement even though they are federal Lanham Act claims.
See Omron, 28 F.3d at 604.
C. The Forum Selection Clause
A forum selection clause enables contracting parties to choose in advance
where they will litigate any disputes arising from their agreement. See, e.g., M/S
Bremen v. Zapata Off-Shore Co., 407 U.S. 1, 12–14 (1972); Carnival Cruise Lines,
Inc. v. Shute, 499 U.S. 585, 595 (1991) (discussing fundamental fairness inquiry). A
proper clause narrows the available litigation forums. E.g., Atl. Marine Constr. Co.
v. U.S. Dist. Ct. for the W. Dist. of Tex., 571 U.S. 49, 59–60 (2013). We enforce
these clauses provided they comport with justice. Dominium Austin Partners v.
Emerson, 248 F.3d 720, 726 (8th Cir. 2001) (“[A] forum selection clause is
enforceable unless it is invalid or enforcement would be unreasonable and unjust.”);

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M.B. Restaurants, Inc. v. CKE Restaurants, Inc., 183 F.3d 750, 752 (8th Cir. 1999)
(stating that clauses may be unjust if they deprive a party of their “fair day in court”).
1. Parsing a Forum Selection Clause
The enforcement of a forum selection clause largely turns on three analytically
different considerations: (1) validity of the agreement; (2) applicability to covered
disputes; and (3) feasibility and practicability of enforcement. See Atl. Marine, 571
U.S. at 62–68 (assuming a “contractually valid” clause and then describing a
modified § 1404(a) and forum non conveniens analysis for enforcement). Validity
and interpretation present questions of substantive contract law, ordinarily governed
by the law that would apply to the contract under the forum’s choice-of-law rules or
under an applicable choice-of-law clause. We generally treat enforceability, on the
other hand, as a matter of federal procedure in federal courts, addressed by The
Bremen, 407 U.S. at 10; Stewart, 487 U.S. at 29–32; and Atlantic Marine, 571 U.S.
at 62–67.
a. Choice of Law and Validity
We first address the contractual validity of the forum selection clause. See,
e.g., Vulcan Cap. Corp. v. Miller Energy Resources, Inc., No. 13-cv-8751, 2014 WL
4384159, at *2 (S.D.N.Y. Sept. 4, 2014) (“When assessing a motion to transfer on
the basis of a forum-selection clause, a court must first determine whether the forum-
selection clause is valid and enforceable.”). We apply state contract law to determine
the validity of a forum selection clause, using the law that would ordinarily govern
the contract under the forum’s choice-of-law rules or under the applicable law of the
contract. See Dunne, v. Libbra, 330 F.3d 1062, 1064 (8th Cir. 2003) (applying
Illinois contract law contracted for in the agreement); accord Barnett v. DynCorp
Int’l, LLC, 831 F.3d 296, 301–02 (5th Cir. 2016). When neither party challenges the
clause’s formation or validity as a matter of state law, we treat the issue as waived
and proceed directly to interpretation and enforcement under the appropriate
governing standards. See Servewell, 439 F.3d at 788 (declining to address “meaning,

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scope, or applicability of the forum selection clause” where “parties do not dispute”
them). Here, neither party disputes validity, so the issue is waived.
b. Choice of Law and Interpretation
Our sister circuits disagree as to which body of law governs interpretation.
Compare Yei A. Sun v. Advanced China Healthcare, Inc., 901 F.3d 1081, 1086 (9th
Cir. 2018) (“We apply federal contract law to interpret the scope of a forum-selection
clause even in diversity actions.”), with Martinez v. Bloomberg LP, 740 F.3d 211,
214 (2d Cir. 2014) (“[W]here a contract contains both a valid choice-of-law clause
and a forum selection clause, the substantive law identified in the choice-of-law
clause governs the interpretation of the forum selection clause, while federal law
governs the enforceability of the forum selection clause.”); Albemarle Corp. v.
AztraZeneca UK Ltd., 628 F.3d 643, 648–51 (4th Cir. 2010) (applying chosen law
to interpretation and federal law to enforcement). But we held in Dunne that the
interpretation of a forum selection clause is a question of state law, typically
contracted for by the parties, and reviewed de novo. 330 F.3d at 1064.
Our review includes the meaning of the clause’s terms, its mandatory versus
permissive character, and its scope. Servewell, 439 F.3d at 788. “[T]he meaning,
scope, [and] applicability of the forum selection clause . . . [are] questions of
contract interpretation . . . .” Id. (citing Rainforest Cafe Inc. v. EklecCo, 340 F.3d
544, 546 (8th Cir. 2003); Dunne, 330 F.3d at 1063). We need not rely on the parties’
urging or encouragement to apply state law to questions of contract interpretation,
as under Erie2 principles, state law governs interpretation and validity; federal law
governs enforcement. See, e.g., M.B. Restaurants, 183 F.3d at 752 (discussing the
“disagreement among the circuits regarding whether [enforcement of a forum
selection clause] is a procedural question governed by federal law or a substantive
question governed by state law under” Erie); see generally Erie, 304 U.S. at 78.
2Erie R. Co. v. Tompkins, 304 U.S. 64, 78 (1938).

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c. Choice of Law and Enforcement
Our treatment of enforcement has been less straightforward historically. Our
analysis began with Sun World Lines, Ltd. v. March Shipping Corp., 801 F.2d 1066
(8th Cir. 1986), an admiralty case. There, in dictum, we stated that “[t]he
enforceability of a forum selection clause” was a federal question governed by The
Bremen’s presumption of applicability rather than Missouri’s hostile public-policy,
even in diversity cases. Id. at 1068–69. But months later, we abandoned this dictum
in Farmland Industries, Inc. v. Frazier-Parrott Commodities, Inc., 806 F.2d 848 (8th
Cir. 1986). In Farmland we held that state policy can control whether to enforce a
forum selection clause, but we did not settle the question fully. Id. at 852. It remained
unaddressed until the early 2000s. See, e.g., Rainforest Cafe, 340 F.3d at 546.
We ultimately determined that whether to enforce a forum selection clause is
a question of procedure, and so a federal court sitting in diversity must apply the
federal The Bremen standard. Union Elec. Co. v. Energy Ins. Mutual Ltd., 689 F.3d
968, 973 (8th Cir. 2012). But we also held that federal district courts must perform
a Farmland analysis and consider “the public policy of the forum state” as part of
its decision whether to enforce the clause. Id. at 974.
The Supreme Court’s decision in Atlantic Marine Construction Co. v. United
States District Court for the W.D. Tex., 571 U.S. 49 (2013), clarified the federal side
of the enforcement analysis around a modified § 1404(a) and forum non conveniens
framework in which valid forum selection clauses receive “controlling weight in all
but the most exceptional cases.” Id. at 60.
Read together, these decisions look to state contract law to resolve questions
of validity and construction of forum selection clauses. Federal law governs whether
the state court’s construction will be enforced, with state policy incorporated as a
possible The Bremen exception through Farmland.3 That is, state interests may
3 Other courts have agreed that looking to state public policy is a valid exercise
under federal common law. See, e.g., Jones v. GNC Franchising, Inc., 211 F.3d 495,
497 (9th Cir. 2000).

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provide an exceptional case not to apply the clause, and district courts must consider
them. See Atl. Marine, 571 U.S. at 60; Union Elec. Co., 689 F.3d at 973 (requiring
that district courts must give “due consideration” to state public policy).
2. Interpretation of the Agreement’s Forum Selection Clause
Plaintiffs seek reversal of the district court’s interpretation of the Agreement’s
forum selection clause. They advance a permissive reading that favors, but does not
require, bringing claims in the state court; they further assert that the clause fails to
strip other courts, and in particular federal court, of jurisdiction. Plaintiffs also argue
that the mandatory construction runs afoul of national public policy; namely, that
federal courts enforce a party’s right to litigate in a federal forum, particularly when
the cause involves federal law. Defendants, on the other hand, support the district
court’s mandatory construction and argue that the clause bars any other court from
hearing the dispute.
Having determined that Plaintiffs’ claims arise out of the Agreement, we will
give effect to the choice-of-law provision and apply South Dakota law to interpret
the Agreement, as the Agreement’s choice-of-law provision provides. South Dakota
courts apply “the law of the state chosen by the parties.” Northland Cap. Fin. Servs.,
LLC v. Robinson, 976 N.W.2d 252, 256 (S.D. 2022) (citation modified).
South Dakota courts interpret contracts seeking to effectuate the parties’ intent
according to the plain meaning of the agreement’s terms. See Bunkers v. Jacobson,
653 N.W.2d 732, 738 (S.D. 2002). Courts aim “to ascertain and give effect to the
intention of the parties.” Read v. McKennan Hosp., 610 N.W.2d 782, 786 (S.D.
2000) (quoting Malcolm v. Malcolm, 365 N.W.2d 863, 865 (S.D. 1985)); accord
Kimball Inv. Land, Ltd. v. Chmela, 604 N.W.2d 289, 293 (S.D. 2000). Determining
the parties’ intent requires studying the contract and giving “terms ‘their plain and
ordinary meaning.’” Harms v. Northland Ford Dealers, 602 N.W.2d 58, 61 (S.D.
1999) (quoting Econ. Aero Club, Inc. v. Avemco Ins. Co., 540 N.W.2d 644, 645 (S.D.
1995)). Courts in South Dakota do not presume ambiguity, but whether a contract is

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ambiguous is a question of law. Pesicka v. Pesicka, 618 N.W.2d 725, 726 (S.D.
2000).
In South Dakota, ambiguity exists only where a term “is capable of more than
one meaning when viewed objectively by a reasonably intelligent person who has
examined the context of the entire integrated agreement.” Divich v. Divich, 640
N.W.2d 758, 761 (S.D. 2002) (quoting Singpiel v. Morris, 582 N.W.2d 715, 719
(S.D. 1998)); see also Poeppel v. Lester, 827 N.W.2d 580, 584 (S.D. 2013) (“When
the words of a contract are clear and explicit and lead to no absurd consequences,
the search for the parties’ common intent is at an end.” (quoting Detmers v. Costner,
814 N.W.2d 146, 151 (S.D. 2012))). When provisions conflict and harmonization
strains the text, courts deem “the more specific clauses . . . to reflect the parties’
intentions—a specific provision controls a general one.” AFSCME-Loc. 1025 Sioux
Falls Sch. Maint. & Custodial Workers v. Sioux Falls Sch. Dist., 605 N.W.2d 811,
813–14 (S.D. 2000) (quoting State v. Greger, 559 N.W.2d 854, 864 (S.D. 1997)).
Applying these principles of South Dakota law, we hold that the forum
selection clause is unambiguous. The clause states plainly that the “circuit court in
Lawrence County, South Dakota shall have jurisdiction” over all disputes. R. Doc.
12-2 at 16; see Pesicka, 618 N.W.2d at 726; Divich, 640 N.W.2d at 761. The
meaning of “shall,” is the focus of the fight. Black’s Law Dictionary lists several
possible meanings but favors a mandatory sense:
1. Has a duty to; more broadly, is required to <the requester shall send
notice> <notice shall be sent>. • This is the mandatory sense that
drafters typically intend and that courts typically uphold.
2. Should (as often interpreted by courts) <all claimants shall request
mediation>.
3. May <no person shall enter the building without first signing the
roster>. • When a negative word such as not or no precedes shall (as in

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the example in angle brackets), the word shall often means may. What
is being negated is permission, not a requirement.
Shall, Black’s Law Dictionary (12th ed. 2024).
On this record, we accord the word “shall” its ordinary mandatory sense.4 See
Hunt Ltd. v. Lifschultz Fast Freight, Inc., 889 F.2d 1274, 1277 (2d Cir. 1989)
(“Language whose meaning is otherwise plain does not become ambiguous merely
because the parties urge different interpretations in the litigation. The court is not
required to find the language ambiguous where the interpretation urged by one party
would strain the contract language beyond its reasonable and ordinary meaning.”
(citation modified)).
As for Plaintiffs’ secondary argument that a mandatory construction does not
foreclose other courts, we disagree. The clause unambiguously states the parties’
intent that the state court in Lawrence County hear disputes arising out of the
agreement. Plaintiffs take issue with the district court’s finding that, because no
federal court sits in Lawrence County, the clause could not refer to a federal court.
They argue that the language can support jurisdiction for the federal court that has
4 Plaintiffs raised Dunne at oral argument for the proposition that “shall” may
mean “may” in this circuit, but the case holds the opposite. Oral Argument at 21:00,
Boyd v. Deadwood Tobacco Co. (8th Cir. 2025) (No. 25-1659), https://media-
oa.ca8.uscourts.gov/OAaudio/2025/10/251659.MP3. In Dunne, this court discussed
a clause containing both choice of law and consent to jurisdiction language. 330 F.3d
at 1063 (“The forum selection clause provides, ‘[t]his agreement shall be governed
by and construed and enforced in accordance with the laws of the State of Illinois,
and the parties consent to jurisdiction to [sic] the state courts of the State of Illinois.’”
(alterations in original)). This court split the clause into two parts: the choice of law
provision, which contains the word “shall,” and the consent to jurisdiction provision,
which does not. For the second provision, we found, applying Illinois law, “no
language that has an ordinary meaning that would suggest exclusivity.” Id. at 1064.
We made this determination through a comparison to “the immediately preceding
choice of law provision, which unambiguously mandates the application of Illinois
law for the purpose of construing the contract,” because of its use of the word “shall.”
Id.

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jurisdiction over Lawrence County. We again disagree. The clause states that the
“circuit court” in Lawrence County “shall have jurisdiction.” R. Doc. 12-2, at 16.
The phrase “circuit court” eliminates a federal district court. See Yakin v. Tyler Hill
Corp., 566 F.3d 72, 76 (2d Cir. 2009) (interpreting forum selection clause that refers
to a specific county that does not have a federal court to mean the parties agreed to
a specific forum that was not federal); City of Albany v. CH2M Hill, Inc., 924 F.3d
1306, 1308 (9th Cir. 2019) (holding that “[a]n agreement limiting venue for litigation
to a particular county unambiguously prohibits litigation in federal court when there
is no federal courthouse located in the designated county”).
3. Enforcement of the Agreement’s Forum Selection Clause
Because the forum selection clause is mandatory, not permissive, we next
determine whether the district court erred by enforcing it. We make this
determination applying federal common law, and we review for an abuse of
discretion. The district court did not correctly consider the state policy interests, but
it did not abuse its discretion.
a. Federal Common Law Mandates Enforcement of the Agreement’s Forum
Selection Clause
When a “contract contains a valid forum-selection clause, which represents
the parties’ agreement as to the most proper forum,” that clause “should be given
controlling weight in all but the most exceptional cases.” Atl. Marine, 571 U.S. at 63
(citation modified). This rule favors the parties’ “legitimate expectations and
furthers vital interests of the justice system.” Id. Parties agree to these clauses
“presumably in exchange for other binding promises,” and so the plaintiff “has
effectively exercised its ‘venue privilege’ before a dispute arises.” Id. Therefore,
“the plaintiff’s choice of forum merits no weight.” Id. Moreover, “[w]hen parties
agree to a forum-selection clause, they waive the right to challenge the preselected

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forum as inconvenient or less convenient for themselves or their witnesses, or for
their pursuit of the litigation.” Id. at 64.
Instead, “a district court may consider arguments about public-interest factors
only,” id., which may include “the administrative difficulties flowing from court
congestion; the local interest in having localized controversies decided at home; and
the interest in having the trial of a diversity case in a forum that is at home with the
law,” Atl. Marine, 571 U.S. at 63 n.6 (citation modified). District courts must also
consider the public policy interests of the forum state to ensure that applying the
forum selection clause respects the law and policy of that state. See Farmland, 806
F.2d at 852; Union Elec. Co., 689 F.3d at 974. Here, the district court did not
consider the state interests, but the parties did not brief them. On this record, any
error on the district court’s part is harmless. We discern no abuse of discretion in the
district court’s enforcement of the Agreement’s forum selection clause.
b. South Dakota Law and Policy do not Bar Enforcement Pursuant to Farmland
and Atlantic Marine
The district court did not consider the public policy of South Dakota as
required under Farmland. This error, however, was harmless because the outcome
would not change if the court had considered it. See Fed. R. Civ. P. 61; cf. Strong v.
Mercantile Trust Co., N.A., 816 F.2d 429, 432 (8th Cir. 1987).
South Dakota law generally favors forum selection clauses. Its Supreme Court
has said as much, stating “that when the parties to a contract agree that actions arising
from that contract will be brought in a particular jurisdiction, that agreement should
be given effect unless it is shown that to do so would be unfair or unreasonable.”
Green v. Clinic Masters, Inc., 272 N.W.2d 813, 815 (S.D. 1978). South Dakota
courts employ a four-factor test for determining the reasonableness of a forum
selection clause: “(1) the law which governs the formation and construction of the
contract; (2) the residency of the parties; (3) the place of execution and/or
performance of the contract; and (4) the location of the parties and witnesses
involved in the litigation.” Baldwin v. Heinold Commodities, Inc., 363 N.W.2d 191,

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194 (S.D. 1985). An otherwise reasonable clause remains “subject to invalidation by
overriding public policy considerations,” however. Id. at 195. “The primary sources
for declarations of . . . South Dakota public policy . . . are the constitution, statutory
law and judicial decisions.” State ex rel. Meierhenry v. Spiegel, Inc., 277 N.W.2d
298, 300 (S.D. 1979). “[A]ny contract provision which is contrary to an express
statute or to the policy of an express statute is unlawful.” Id.
Here, the Agreement’s forum selection clause passes the four-factor test. The
Agreement’s forum selection clause violates no South Dakota public policy or
demonstrates a grievous opposition to its enforcement. South Dakota law governed
the formation and construction of the Agreement, as evidenced both by the location
of Deadwood Tobacco Company and the choice-of-law clause. Both defendants are
citizens of South Dakota, the contract centers in South Dakota, and the parties and
witnesses would be in South Dakota. See R. Doc. 1, at 1–2; see also Klenz v. AVI
Int’l, 647 N.W.2d 734, 737 (S.D. 2002) (“Personal jurisdiction may be obtained over
a foreign defendant if the plaintiff’s claim arises out of or relates to the defendant’s
contacts with the forum. Furthermore, a single contact with the forum is sufficient if
the plaintiff’s claim arises out of that contact.” (citation modified)). And although
the state flatly bans forum selection clauses in some instances, see, e.g., S.D.
Codified Laws § 57A-2A-106 (limitation on power of parties to consumer lease to
choose applicable law and judicial forum); id. § 32-6B-49.1 (limitation on power of
parties to franchise agreement to choose applicable law and judicial forum); id. § 58-
15-50 (ban on forum selection clauses in life insurance policies), none of these
exceptions apply here.
For these reasons, we affirm the findings of the district court and add only that
the mandatory Farmland analysis with respect to enforcement does not present any
exceptional circumstance pursuant to Atlantic Marine and is therefore harmless
error.

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D. State Courts May Hear Federal Lanham Act Claims
Plaintiffs argue that the Lanham Act contemplates exclusive federal
jurisdiction for claims brought under it. We disagree and affirm the district court.
1. Jurisdiction of the Federal and State Courts
The Constitution vests the judicial power of the United States “in one supreme
Court, and in such inferior Courts as the Congress may from time to time ordain and
establish.” U.S. Const. art. III, § 1. Therefore, unless Congress affirmatively grants
a lower federal court authority over some case or controversy, that court lacks power
to adjudicate it. See Sheldon v. Sill, 49 U.S. 441, 449 (1850) (holding that “Congress
may withhold from any court of its creation jurisdiction of any of the enumerated
controversies” in Article III).
In contrast, the state courts enjoy inherent general jurisdiction, exercising the
entire juridical power of their respective sovereignties unless affirmatively limited
by Congress. See Gulf Offshore Co. v. Mobil Oil Corp., 453 U.S. 473, 477 (1981)
(“[S]tate courts may assume subject-matter jurisdiction over a federal cause of action
absent provision by Congress to the contrary.”); Tafflin v. Levitt, 493 U.S. 455, 459
(1990) (reaffirming the “deeply rooted presumption in favor of concurrent state court
jurisdiction”).
Congress may determine that certain legal issues, generally those implicating
uniquely federal interests, should be reserved for the federal courts alone. See, e.g.,
28 U.S.C. § 1334(a) (granting federal district courts “original and exclusive
jurisdiction of all cases under title 11”); 28 U.S.C. § 1338(a) (confining copyright,
plant-variety, and patent cases to federal court). Nonetheless, state courts, vested
with general jurisdiction, are presumed competent to adjudicate nearly all matters,
including those that test the outer boundaries of law and equity alike, unless
Congress clearly states otherwise. Gulf Offshore, 453 U.S. at 479 (explaining that
federal courts will not “oust a state court from concurrent jurisdiction” absent clear

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statutory language indicating Congress intended to create exclusive federal
jurisdiction).
2. Jurisdictional Analysis of the Lanham Act
Congress did not restrict resolution of disputes arising under the Lanham
Trademark Act to federal courts. Therefore, state and federal courts entertain
concurrent jurisdiction for claims arising under the Act. McCarthy § 32:1; Berlitz
Schs. of Languages of Am., Inc. v. Everest House, 619 F.2d 211, 216 (2d Cir.
1980) (holding that “state courts have concurrent jurisdiction to determine [Lanham
Act] claims”).5
3. Whether Prior Circuit Precedent Limits State Court Jurisdiction
Plaintiffs assert that prior Eighth Circuit precedent holds that “federal court[s]
[are] the appropriate forum for claims arising under federal trademark law,” and that
therefore we are therefore bound to that conclusion. Appellants’ Br. 11. Plaintiffs
cite Verizon Communications, Inc. v. Inverizon International, Inc., 295 F.3d 870 (8th
Cir. 2002), for this. Verizon does not control here. Verizon lies within the Brillhart
and Wilton line of cases governing a district court’s discretion to entertain or decline
declaratory judgment actions under 28 U.S.C. § 2201.6 See Brillhart v. Excess Ins.
Co. of Am., 316 U.S. 491 (1942); Wilton v. Seven Falls Co., 515 U.S. 277 (1995).
Under these two cases, federal courts may abstain from hearing declaratory suits
5 Plaintiffs filed a Federal Rule of Appellate 28(j) letter notifying this panel of
activity in the ongoing South Dakota state court action. After review, we have
determined that that order has no bearing on our decision here.
6 Section 2201(a) of 28 U.S.C. provides:
In a case of actual controversy within its jurisdiction . . . any court of
the United States, upon the filing of an appropriate pleading, may
declare the rights and other legal relations of any interested party
seeking such declaration, whether or not further relief is or could be
sought. Any such declaration shall have the force and effect of a final
judgment or decree and shall be reviewable as such.

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when parallel state proceedings exist, provided the court weighs comity, efficiency,
and the usefulness of federal relief. This discretion stems from the permissive “may
declare” language found in § 2201, not from a lack of jurisdiction.
In Verizon the telecommunications company filed a federal declaratory
judgment action seeking a determination that its use of the “Verizon” mark did not
infringe or dilute the rights of Inverizon International under either the Lanham Act
or state law. 295 F.3d at 871–72. Inverizon filed its own state court action asserting
only state law claims. Id. at 872. The federal district court stayed the federal action
in deference to the state action, and Verizon appealed. Id. On appeal, this court
reversed. Id. However, we did not find that the presence of federal issues compelled
the exercise of jurisdiction, but only that the district court failed to weigh the
significance of the federal claims before abstaining. Id. at 874 (“The district court
failed to consider the fact that federal law governs the primary claims raised in the
declaratory judgment suit and only issues of state law are raised in the state court
action.”); see Cincinnati Indem. Co. v. A & K Constr. Co., 542 F.3d 623, 625 (8th
Cir. 2008) (“Deciding whether to entertain a declaratory judgment action, a district
court should determine if the question in controversy would be better settled in the
proceedings in the state court.”); EMCASCO Ins. Co. v. Walker, 108 F.4th 634, 637
(8th Cir. 2024) (“Beyond whether the actions are parallel, this analysis includes
whether the issues are governed by federal law, whether all claims can be decided
in state court, and whether all parties are joined and amenable to process there.”
(citation modified)).
Thus, Verizon and related cases do not limit trademark claims to federal
courts. Instead, they merely hold that district courts must weigh the significance of
the federal claims. See Verizon, 295 F.3d at 874. It may be true that litigants prefer
to bring complicated trademark disputes in federal courts, see McCarthy § 32:1 (“As
a matter of litigation strategy . . . most plaintiffs appear to bring [these] cases in the
federal courts, perhaps on the assumption that federal judges are more likely to be
familiar with problems of trademark infringement under a federal statute.”), but
whether a legal question is too thorny for the courts of general jurisdiction is a matter

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for Congress to resolve, see Sheldon, 49 U.S. at 449. Moreover, as noted above, if
Verizon held otherwise, it would directly conflict with both Supreme Court
precedent and the spirit of the Constitution itself.
The district court in this case faced questions of federal law, took careful
account of the lengthy procedural history and parallel state-law case, and ultimately
found that the Agreement governed the disputes and mandated dismissal in favor of
the parties’ chosen forum. It is not relevant that the claims presented are exclusively
federal; only that the district court considered this. We affirm the district court.
III. Conclusion
For these reasons, we affirm the district court, noting only that the lack of a
Farmland analysis below constituted harmless error.
KELLY, Circuit Judge, concurring, and concurring in the judgment.
The forum selection clause in the parties’ Stock Purchase Agreement applies
to any “dispute arising out of” the Agreement. In my view, the clause applies to
Boyd’s claims here because the Agreement included an obligation for the
Rectenwalds—as buyers of Deadwood Tobacco Company (DTC)—to effectuate
transfer of ownership of DEADWOOD TOBACCO CO. SWEET JANE,
DEADWOOD TOBACCO CO. FAT BOTTOM BETTY, and DEADWOOD
TOBACCO CO. CRAZY ALICE (the Cigar Trademarks) to Boyd. At the time of the
Agreement, DTC—not Boyd—owned the Cigar Trademarks. Ownership is an
element of Boyd’s prima facie case for her trademark infringement claim. See B &
B Hardware, Inc. v. Hargis Indus., Inc., 569 F.3d 383, 389 (8th Cir. 2009) (explaining
the first element of a trademark infringement claim is “establish[ing] ownership in a
legally protectible mark” (citation omitted)). As a result, her suit “arises out of” the
Agreement and falls within the scope of the Agreement’s mandatory forum selection
clause. For this reason, while I concur in the Court’s opinion, I concur only in the
judgment as to Parts II.B–C.1 and C.3.

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To the extent the parties dispute the appropriate test for determining whether
a claim “arises out of” a contract, the dispute is immaterial to resolving this issue.
Compare IAC/InterActiveCorp v. Roston, 44 F.4th 635, 641 (7th Cir. 2022)
(“[W]hen resolving disputes arguably depends on the construction of an agreement,
those disputes ‘arise out of’ that agreement.”), with Phillips v. Audio Active Ltd.,
494 F.3d 378, 391 (2d Cir. 2007) (“Because the . . . contract is only relevant as a
defense in this suit, we cannot say that [Plaintiff’s] . . . claims originate from, and
therefore ‘arise out of,’ the contract.”), and Reading Health Sys. v. Bear Sterns &
Co., 900 F.3d 87, 99 (3rd Cir. 2018) (holding that “arising out of” is equivalent to
“originat[ing] from a specified source”). Even under the more restrictive
interpretation of “arising out of,” see Phillips, 494 F.3d at 390–92; Reading Health
Sys., 900 F.3d at 98–100, Boyd’s claims here “arise out of” the Agreement.
Prior to the Agreement, Boyd had no individual ownership interest in the
Cigar Trademarks. Instead, they were owned by DTC. Section 5 of the Agreement
then obligated the Rectenwalds to “cooperate and assign to [Boyd] . . . on behalf of
[DTC], all intellectual property rights in the trademarks identified in Exhibit B,”
which included the Cigar Trademarks at issue here. Therefore, Boyd’s personal
ownership interest in the Cigar Trademarks—a necessary element in Boyd’s prima
facie case—both depends on and originates from the Agreement, because it was the
Agreement that created the obligation to assign the Cigar Trademarks to her. See
Reading Health Sys., 900 F.3d at 99. Boyd’s claims “arise out of” the Agreement,
and she is bound by its mandatory forum selection clause.
I also note that Boyd first brought the claims at issue here in a lawsuit filed in
the Southern District of Florida. That court dismissed the claims on the grounds that
they arose out of the parties’ contracts, including the Agreement. Boyd v. Deadwood
Tobacco Co., No. 23-CV-22215, 2024 WL 940822, at *6–7, *11 (S.D. Fla. Mar. 5,
2024). In doing so, the court relied on Boyd’s Complaint, which alleged that
defendant DTC was “disregarding the terms of the contracts in an effort to invalidate
[her] contractual rights.” Id. at *7 (citation modified). The court also cited to the
relief Boyd sought in the case, which included a declaratory judgment that she had

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not breached any of the various contracts—including the Agreement—and that the
contracts themselves were enforceable. Id.
Boyd excised these prayers for relief—and, indeed, any mention of the
Agreement—from her complaint in this action. But we have held that “[s]trategic or
artfully drawn pleadings . . . will not work to circumvent an otherwise applicable
forum selection clause.” Terra Int’l, Inc. v. Miss. Chem. Corp., 119 F.3d 688, 695
(8th Cir. 1997) (citations omitted). In Terra, the parties entered a contract with a
forum selection clause that applied only to disputes arising under the contract. Id. at
690. Terra later filed a complaint alleging only tort claims, but we concluded the
forum selection clause nevertheless applied. Id. at 690, 692, 695. We explained that
“Terra plainly could have asserted a parallel claim for breach of contract in the same
complaint,” even though Terra did not. Id. at 695. Here, Boyd did previously allege
claims based on the enforceability of the Agreement. Boyd, 2024 WL 940822, at *7.
And she did so relying on the same set of facts as the claims in the instant case. See
Terra, 119 F.3d at 695.
GRASZ, Circuit Judge, dissenting.
On April 1, 2018, Vaughn Boyd entered into a Stock Purchase Agreement
(Agreement) to sell Deadwood Tobacco Company (DTC) to William and Jodene
Rectenwald and other purchasers. The Agreement, however, did not transfer all of
Boyd’s assets. Instead, in an exhibit attached to the Agreement, the parties clarified
that certain assets, including the trademarks at issue, were excluded from the sale.
The Agreement also contained a forum selection clause providing that “Venue for
any dispute arising out of this Agreement shall be in Lawrence County, South
Dakota, and the circuit court in Lawrence County, South Dakota shall have
jurisdiction over the parties and subject matter of the dispute.” (Emphasis added).
On the same day the Agreement was executed, DTC assigned to Boyd certain items
that had been excluded from the sale, namely the right under a license agreement “to
use the phrase, ‘DEADWOOD TOBACCO CO.,’ in association with the terms

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‘CRAZY ALICE,’ ‘SWEET JANE,’ and ‘FAT BOTTOM BETTY’” (collectively,
the Deadwood marks).
After a dispute concerning the Deadwood marks arose, Boyd and Drew Estate
commenced this action in the District Court of South Dakota. They alleged three
counts under the Lanham Act for federal trademark infringement, unfair competition
and false designation of origin, and cancellation of federal trademark registration.
DTC filed a motion to dismiss based on the doctrine of forum non conveniens and
failure to state a claim under Rule 12(b)(6). The district court issued an order
granting DTC’s motion to dismiss based on forum non conveniens. The district court
found, as pertinent, that the forum selection clause applied because the resolution of
Boyd’s and Drew Estate’s federal claims would require examination of the scope
and nature of the sale under the Agreement.
On appeal, Boyd and Drew Estate contend this dispute does not implicate the
forum selection clause. Applying de novo review, I agree and would reverse for
several reasons.
First, when determining the applicability of a contractual provision like a
forum selection clause, courts look at the substance of the particular claims. Phillips
v. Audio Active Ltd., 494 F.3d 378, 388 (2d Cir. 2007). Under the facts of this case,
the forum selection clause is not implicated because the substance of the Lanham
Act claims does not “arise out of” the Agreement. The Lanham Act claims brought
by Boyd and Drew Estate do not derive from any action taken while the contract was
being fulfilled, nor do they “depend on an understanding of the parties’ written
bargain and of its implied terms.”7 Omron Healthcare, Inc. v. Maclaren Exps. Ltd.,
28 F.3d 600, 602 (7th Cir. 1994) (holding that a trademark dispute arose out of an
7 The Agreement did not change the status quo as to the Deadwood marks’
ownership. Instead, in Exhibit B to the Agreement, the parties “expressly carved out
of the sale the federally registered marks” and “carved out all licensing and royalty
payments from Drew Estate relating to the Deadwood Marks.” Exhibit B clarified
that the sale did not impact the Deadwood marks’ ownership.

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agreement because the agreement “implicitly licensed [the defendant] to use the
[plaintiff’s] marks” on products the plaintiff ordered). Rather, the claims stem from
alleged infringing actions taken by DTC after the sale had been completed. The
parties do not dispute Boyd’s ownership of the Deadwood marks. Therefore, the
substance of their claims requires examination of the actions taken by DTC and the
trademarks at issue, not the Agreement.
That the claims do not arise under the Agreement becomes even more clear
when one examines the specific elements of the claims at issue. The Lanham Act
“creates a federal civil cause of action for unauthorized use of a registered
trademark.” Slep-Tone Ent. Corp. v. Wired for Sound Karaoke & DJ Servs., LLC.,
845 F.3d 1246, 1248 (9th Cir. 2017). In order to state a claim for trademark
infringement under the Lanham Act, the plaintiff must show that (1) the plaintiff has
a protectible ownership interest in the mark, or for some claims, a registered mark;
(2) the defendant used the mark “in connection with” goods or services; and (3) that
use of the mark is likely to cause confusion. 15 U.S.C. §§ 1114(1)(a), 1125(a); see
also B&B Hardware, Inc. v. Hargis Indus., Inc., 569 F.3d 383, 389 (8th Cir. 2009).
The first element, ownership interest, would likely be proven by the trademark
registrations and assignments. The last two elements, use and confusion, would
simply not involve the Agreement. If Boyd and Drew Estate were to succeed on
their federal trademark claims, the Agreement would remain undisturbed. See
Phillips, 494 F.3d at 391. Even if the Agreement were to somehow become relevant,
for example, as a defense to ownership, the claims at this stage do not implicate the
Agreement. See id. (finding that where a contract is only relevant as a defense, the
court “cannot say that [the] copyright claims originate from, and therefore ‘arise out
of,’ the contract”). Likewise, even if the Agreement was a consideration in
determining the ownership of the Deadwood marks (although ownership has not
been disputed), simply because the Agreement is relevant to the analysis does not
mean the parties’ rights arise out of it.

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Second, I believe the majority’s discussion of goodwill and the consequent
implication is flawed. The majority concludes that the trademark dispute arises out
of the Agreement because “trademarks must attach to goodwill and cannot otherwise
exist.” Ante p. 13. In my view, that concept does not apply here. As the majority
acknowledges, the Agreement did not transfer the Deadwood marks. Id. at 3–4.
Exhibit B to the Agreement clarified this understanding. Since the sale did not
transfer the Deadwood marks, no goodwill is required to accompany a non-transfer.
See, e.g., Defiance Button Mach. Co. v. C & C Metal Prods. Corp., 759 F.2d 1053,
1062 (2d Cir. 1985) (“The fundamental error in defendants’ position is their
assumption that a business’ goodwill and the mark symbolizing it are lost whenever
the business loses its tangible assets or ceases active conduct of its operation. If that
were the case, the destruction of a business’ factory or its bankruptcy would
terminate its goodwill, even though it resumed business and use of the mark after
reconstruction of the plant or emergence from bankruptcy.”). Phrased differently,
trademark rights do not pass in general asset or capital sales, unless expressly
assigned. Only when trademarks are assigned is goodwill required to accompany
them.
Third, decisions from other circuits support this reasoning. In Phillips, the
musician-plaintiff brought a federal copyright infringement suit. 494 F.3d at 383.
The defendants moved to dismiss, citing a recording contract with a forum selection
clause requiring the musician-plaintiff to bring “any legal proceedings that may arise
out of it . . . in England.” Id. at 382–83. The court held that the forum selection
clause did not apply because the musician-plaintiff owned the copyrights to his songs
based on “his authorship of the work,” not on the recording contract. Id. at 390.
Similarly, Boyd’s ownership of the Deadwood marks is based on his trademark
registrations and use, not based on the Agreement because the marks were excluded
from the sale.
In Traton News, LLC v. Traton Corp., 528 Fed. App’x. 525 (6th Cir. 2013),
the court found that certain Lanham Act claims fell outside the scope of a forum
selection clause. Id. at 528. Specifically, there, the plaintiff asserted Lanham Act

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claims against an entity that owned and operated a website that contained uses of the
plaintiff’s marks. Id. at 527. The plaintiff claimed that its own website, which was
visited several times by the defendant, contained a browsewrap agreement, which
“include[d] a forum selection clause,” and, thus, bound the defendant. Id. The court
disagreed, holding that the forum selection clause in the browsewrap agreement did
not bind the defendant because it was unconnected to the plaintiff’s Lanham Act
claims. See id. at 530. It reasoned the plaintiff’s “Lanham Act claims do not depend
upon or involve anyone’s use of [the website] or its browsewrap agreement.” Id.
Instead, the plaintiff’s claims “ar[o]se from its purported ownership of the mark . . .
and not from the browsewrap agreement.” Id. And the allegations supporting the
Lanham Act claims in the plaintiff’s complaint did “not mention . . . [the]
browsewrap agreement.” Id. Here too, the dispute between the parties has nothing
to do with the Agreement. Moreover, unlike the lawsuit filed in the Southern District
of Florida, the present complaint does not contain allegations about the Agreement.
See Boyd v. Deadwood Tobacco Co., No. 23-22215, 2024 U.S. Dist. LEXIS 37915,
at *21 (S.D. Fla. Mar. 5, 2024).
In sum, the claims at issue do not arise out of the Agreement and the forum
selection clause is not implicated. No party disputes Boyd’s ownership of the
excluded Deadwood marks, so there is no need to examine the scope and nature of
the sale under the Agreement as the district court concluded. Boyd became the
owner in her personal capacity via an independent assignment from DTC which did
not have a forum selection clause. For these reasons, I respectfully dissent.
_______________________

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