Montauk U.S.A., LLC v. 148 South Emerson Associates LLC 1 In the

16-3912
Montauk U.S.A., LLC v. 148 South Emerson Associates LLC
1
In the 2
United States Court of Appeals 3
For the Second Circuit 4
________ 5
6
AUGUST TERM, 2017 7
8
ARGUED: O CTOBER 5, 2017 9
D ECIDED: APRIL 20, 2018 10
11
No. 16-3912-cv 12
13
MARK H OROWITZ , 14
Plaintiff, 15
16
MONTAUK U.S.A., LLC, 17
Plaintiff-Appellant, 18
19
v. 20
21
148 S OUTH E MERSON ASSOCIATES LLC, 22
Defendant-Appellee. 23
________ 24
25
Appeal from the United States District Court 26
for the Eastern District of New York. 27
No. 16-cv-02741 – Sandra J. Feuerstein, Judge. 28
________ 29
30
Before: W ALKER , RAGGI , and H ALL , Circuit Judges. 31
________ 32
33

-- 1 of 30 --

2 No. 16-3912
Plaintiff-Appellant Montauk U.S.A., LLC (“Montauk”) appeals 1
from (i) the district court’s dismissal without prejudice of its Lanham 2
Act claims and motion for preliminary injunction under the “first- 3
filed” rule, and (ii) the district court’s order, pursuant to Fed. R. Civ. 4
P. 41(d), that Montauk pay the costs, including attorneys’ fees, that 5
Defendant-Appellee 148 South Emerson Associates LLC 6
(“Associates”) incurred in responding to a previous action Montauk 7
brought against Associates in Georgia state court that Montauk 8
voluntarily dismissed. Central to Montauk’s appeal is the contention 9
that Associates, a limited liability company, should have been held in 10
default because Associates could not litigate through a partial owner 11
who lacked derivative litigation rights under New York law. 12
Because New York law allows for derivative representation on 13
the facts presented, we conclude at the outset that the district court 14
correctly rejected Montauk’s request to hold Associates in default. 15
We nevertheless vacate the district court’s dismissal of Montauk’s 16
complaint and preliminary injunction motion in favor of a first-filed 17
federal Georgia action because the Georgia suit has been transferred 18
to the Eastern District of New York, so the reasoning behind the first- 19
filed ruling no longer pertains. We affirm the district court’s award 20
of costs under Rule 41(d), including attorneys’ fees, incurred by 21
Associates in the Georgia state action. Consequently, we AFFIRM in 22
part, VACATE in part, and REMAND for further proceedings. 23

-- 2 of 30 --

3 No. 16-3912
________ 1
2
MICHAEL B OWE , Kasowitz Benson Torres & 3
Friedman LLP, New York, NY, for Plaintiff- 4
Appellant. 5
J AMES M. C ATTERSON, Arnold & Porter Kaye 6
Scholer, LLP, New York, NY (Michael Burrows, 7
Greenberg Traurig, LLP, New York, NY, on the 8
brief), for Defendant-Appellee. 9
________ 10
11
J OHN M. WALKER , J R ., Circuit Judge: 12
Plaintiff-Appellant Montauk U.S.A., LLC (“Montauk”) appeals 13
from (i) the district court’s dismissal without prejudice of its Lanham 14
Act claims and motion for preliminary injunction under the “first- 15
filed” rule, and (ii) the district court’s order, pursuant to Fed. R. Civ. 16
P. 41(d), that Montauk pay the costs, including attorneys’ fees, that 17
Defendant-Appellee 148 South Emerson Associates LLC 18
(“Associates”) incurred in responding to a previous action Montauk 19
brought against Associates in Georgia state court that Montauk 20
voluntarily dismissed. Central to Montauk’s appeal is the contention 21
that Associates, a limited liability company, should have been held in 22
default because Associates could not litigate through a partial owner 23
who lacked derivative litigation rights under New York law. 24
Because New York law allows for derivative representation on 25
the facts presented, we conclude at the outset that the district court 26

-- 3 of 30 --

4 No. 16-3912
correctly rejected Montauk’s request to hold Associates in default. 1
We nevertheless vacate the district court’s dismissal of Montauk’s 2
complaint and preliminary injunction motion in favor of a first-filed 3
federal Georgia action because the Georgia suit has been transferred 4
to the Eastern District of New York, so the reasoning behind the first- 5
filed ruling no longer pertains. We affirm the district court’s award 6
of costs under Rule 41(d), including attorneys’ fees, incurred by 7
Associates in the Georgia state action. Consequently, we AFFIRM in 8
part, VACATE in part, and REMAND for further proceedings. 9
BACKGROUND1 10
This case is one in a series of bitterly contested suits 11
adjudicating rights associated with The Sloppy Tuna, a restaurant in 12
Montauk, NY. See App’x 707–09. In this installment, Montauk, the 13
holding company for intellectual property associated with The 14
Sloppy Tuna, and Montauk’s alleged manager, Mark Horowitz, sued 15
Associates, the owner and operator of The Sloppy Tuna, claiming that 16
Associates’ use of Montauk’s trademarks violates various provisions 17
of the Lanham Act. 18
1 These facts derive principally from the complaint and we accept them
as true. See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). Further, the
records and decisions in the various judicial proceedings involving the
parties and their constituent members are facts of which we may take
judicial notice. See Staehr v. Hartford Fin. Servs. Grp., Inc., 547 F.3d 406, 424–
25 (2d Cir. 2008).

-- 4 of 30 --

5 No. 16-3912
The individual players at the heart of the suit, Drew Doscher, 1
Michael Meyer, Stephen Smith, and Michael Meagher, are former 2
business partners at The Seaport Group, a Wall Street investment 3
firm. They and their respective entities share a long history, the 4
relevant parts of which we discuss below. 5
In 2010, Doscher pioneered the idea for The Sloppy Tuna while 6
working at The Seaport Group and sought out as partners and 7
investors then-colleagues Meyer, Smith, and Meagher. Doscher 8
thereafter formed Montauk, a Georgia limited liability company of 9
which he always has been the sole member. Doscher created 10
Montauk as a vehicle to hold The Sloppy Tuna’s intellectual property 11
and to license that intellectual property to Associates for use at the 12
restaurant. 13
In March 2011, Doscher, Meyer, Smith, and Meagher together 14
formed two New York limited liability companies: (i) Associates, to 15
own and operate The Sloppy Tuna; and (ii) 148 South Emerson 16
Partners, LLC (“Partners”), to purchase the property on which The 17
Sloppy Tuna would operate. Following various ownership disputes 18
not relevant here, the stakeholders in The Sloppy Tuna consist of: 19
(i) Montauk, with Doscher as the sole 100% partner; (ii) Associates, 20
with Meyer and Doscher as 50% partners; and (iii) Partners, with 21
Doscher, Meyer, Smith, and Meagher each as 25% partners. 22

-- 5 of 30 --

6 No. 16-3912
In May 2011, The Sloppy Tuna opened for business. At that 1
time, Montauk, wholly owned and controlled by Doscher, began to 2
successfully register several trademarks specifically designed for The 3
Sloppy Tuna with the United States Patent and Trademark Office. See 4
App’x 42, 44–49. According to the complaint, Montauk subsequently 5
permitted Associates to use those trademarks for The Sloppy Tuna 6
subject to an oral licensing agreement. App’x 11, 36; see also App’x 7
234. The parties operated under this arrangement for several years, 8
during which time the restaurant enjoyed considerable success. 9
In January 2013, however, conflict erupted between the 10
partners and The Seaport Group abruptly ended its relationship with 11
Doscher. See generally Doscher v. Sea Port Grp. Sec., LLC, 832 F.3d 372 12
(2d Cir. 2016). The record evinces the open and personal hostility 13
between the parties, most especially between Doscher and Meyer. See 14
App’x 629, 631. 15
On October 18, 2013, amidst this conflict, Montauk and 16
Associates entered into a written license agreement regarding 17
Associates’ use of Montauk’s Sloppy Tuna marks (the “License 18
Agreement”). App’x 35–41. The License Agreement’s stated aim was 19
to “effectively” and “clearly memorialize” Montauk and Associates’ 20
pre-existing oral agreement given that the parties “may be suffering 21
from some form of internal disagreement.” App’x 36. Horowitz 22
signed on behalf of Montauk, and Doscher, who owned 100% of 23

-- 6 of 30 --

7 No. 16-3912
Montauk and was a 50% partner in Associates, signed the License 1
Agreement on behalf of Associates. Meyer, the other 50% partner in 2
Associates, however, did not sign the License Agreement, which 3
required Associates to pay Montauk for use of the marks, and 4
provided that, upon the termination of the agreement, the license 5
“shall immediately cease, [and Associates] shall immediately 6
discontinue all use of the [m]arks.” App’x 37–38. Associates and 7
Meyer have consistently contended that the License Agreement is a 8
sham and is unenforceable.2 9
In 2014, Doscher, Meyer, Smith, and Meagher, as individuals 10
and through their respective entities, began litigating in various fora 11
numerous issues related to the ownership and operation of The 12
Sloppy Tuna. Pertinent to the issues on appeal are the following four 13
lawsuits, each adjudicating the rights to the intellectual property that 14
is the subject of the instant action. 15
First, on December 23, 2014, Montauk brought a declaratory 16
judgment action in the Northern District of Georgia against 17
Associates seeking a ruling that Montauk owns the relevant 18
trademarks and that Associates does not. As will be discussed, on 19
2 Following Montauk’s filing of its opening brief on this appeal, the New
York state court ruled that the License Agreement is “void, invalid and of
not [sic] force or effect.” Meyer v. Montauk U.S.A., LLC, No. 600830/2015,
Dkt. No. 239 at 10 (N.Y. Sup. Ct. May 9, 2017).

-- 7 of 30 --

8 No. 16-3912
August 14, 2017, more than two and one-half years later, the Georgia 1
federal action was transferred to the Eastern District of New York. 2
Second, on January 29, 2015, Meyer sued Montauk in New York 3
state court alleging that the License Agreement was not a valid arms- 4
length agreement and is therefore void ab initio, which ultimately 5
resulted in the Georgia federal action being stayed. On February 19, 6
2015, because Doscher and Meyer were deadlocked as co-owners of 7
Associates, the court appointed a temporary receiver (Receiver) for 8
Associates. On March 16, 2016, after Doscher failed to fully comply 9
with the Receiver, the New York state court further ordered that: 10
(i) the Receiver shall take full control of The Sloppy Tuna; (ii) Doscher 11
must surrender all of his restaurant-related property to the Receiver; 12
and (iii) Doscher is “restrained from interfering in any way with the 13
Court-appointed Temporary Receiver in his operation and 14
management of the company.” App’x 134. Shortly thereafter, on 15
March 24, 2016, Montauk terminated the License Agreement 16
purportedly because the New York state court’s order wrested too 17
much control of the restaurant from Doscher. 18
Third, on March 24, 2016, Montauk sued Associates in Georgia 19
state court for breach of contract, unjust enrichment, and quantum 20
meruit, relating to Associates’ continued use of The Sloppy Tuna 21
marks following Montauk’s termination of the License Agreement. 22
Montauk simultaneously moved for a temporary restraining order 23

-- 8 of 30 --

9 No. 16-3912
(TRO) and preliminary injunction (PI). On April 26, 2016, that court, 1
after a hearing, denied the TRO and at the same time suggested that 2
Montauk’s filing of that action interfered with the state action in New 3
York in violation of that court’s March 16, 2016 order. App’x 588. 4
Two days later, on April 28, 2016, Montauk voluntarily dismissed the 5
state action in Georgia. 6
Fourth and lastly, on May 31, 2016, Montauk and Horowitz 7
brought the instant action against Associates in the Eastern District of 8
New York. They alleged that Associates’ continued use of The Sloppy 9
Tuna marks after termination of the License Agreement violated 10
several provisions of the Lanham Act. Montauk and Horowitz 11
asserted four claims: (i) trademark infringement, 15 U.S.C. § 1114; (ii) 12
false designation of origin and unfair competition, 15 U.S.C. § 1125(a); 13
(iii) cybersquatting, 15 U.S.C. § 1125(d); and (iv) trademark dilution, 14
15 U.S.C. § 1125(c). Montauk and Horowitz sought recovery only for 15
Associates’ use of The Sloppy Tuna marks after March 24, 2016, the 16
date Montauk terminated the License Agreement. 17
On July 1, 2016, Montauk and Horowitz moved for a TRO and 18
PI in the instant action. That same day, the TRO was denied, and 19
attorneys James M. Catterson and Michael Burrows filed notices of 20
appearance “for Michael J. Meyer, derivatively on behalf of 21
Defendant 148 South Emerson Associates.” App’x 220–21. No other 22
counsel appeared for Associates. Days later, Meyer, on behalf of 23

-- 9 of 30 --

10 No. 16-3912
Associates, filed a motion to dismiss, raising three arguments: (i) the 1
complaint must be dismissed under the “first-filed” rule in favor of 2
the earlier-filed and still extant federal action Montauk brought in 3
Georgia; (ii) Montauk and Horowitz failed to state their 4
cybersquatting claim; and (iii) Montauk should be ordered to pay the 5
costs, including attorneys’ fees, Associates incurred defending the 6
discontinued state action in Georgia under the anti–forum shopping 7
provision of Fed. R. Civ. P. 41(d). 8
Meyer, on behalf of Associates, also responded to Montauk and 9
Horowitz’s PI motion, arguing that Montauk and Horowitz failed to 10
meet the standard for such relief. In reply, Montauk and Horowitz 11
argued not only that they had met the standard, but that the district 12
court should disregard any submissions filed by Meyer on behalf of 13
Associates. Specifically, they argued that “[t]here is no basis for a 14
non-party [such as Meyer] to defend this action ‘derivatively’ simply 15
because it disagrees with the Receiver’s business judgment or seeks 16
to litigate with plaintiffs for its own self-interested reasons.” No. 16- 17
cv-02741, Dkt. No. 18 at 4 (E.D.N.Y. July 13, 2016). Because Meyer’s 18
“derivative” submissions were not properly before the court, 19
Montauk and Horowitz contended, and Meyer’s was the only 20
opposition to the PI motion, the court should have granted the PI 21
motion by default. Meyer filed a sur-reply, still purportedly on behalf 22
of Associates, attaching a declaration of the New York state court 23

-- 10 of 30 --

11 No. 16-3912
Receiver, Charles C. Russo, in which he stated that he eagerly 1
consented to Meyer’s derivative defense of the case and that, in his 2
judgment, Meyer’s derivative representation was in Associates’ best 3
interest. App’x 665–68. 4
On October 19, 2016, the district court resolved the pending 5
motions substantially3 in Associates’ favor and dismissed the action. 6
Special App’x (“SA”) 1–31. First, the district court rejected Montauk 7
and Horowitz’s contention that Meyer did not have a derivative right 8
to defend on behalf of Associates under New York law. SA 19–22. 9
Second, the district court dismissed Montauk and Horowitz’s 10
complaint without prejudice under the “first-filed” rule based on the 11
action’s similarity to the earlier-filed federal action in Georgia. SA 22– 12
26. It followed that the district court denied without prejudice 13
Montauk’s PI motion. SA 26 n.10. Third, the district court ordered 14
Montauk to pay the costs, including attorneys’ fees, incurred by 15
Associates in defending the Georgia state action under Rule 41(d). SA 16
26–30. Montauk, but not Horowitz, appealed. 17
DISCUSSION 18
Montauk contends on appeal that the district court erred in 19
three ways: (i) allowing Meyer to defend the suit derivatively on 20
3 The district court did not resolve the aspect of Associates’ motion
seeking dismissal of Montauk and Horowitz’s cybersquatting claim (Count
III) for failure to state a claim.

-- 11 of 30 --

12 No. 16-3912
behalf of Associates; (ii) dismissing the action under the “first-filed” 1
rule; and (iii) awarding Associates costs under Rule 41(d). Associates 2
argues that all three rulings were correct. 3
We conclude that controlling New York law provides Meyer 4
with derivative rights to defend this suit on behalf of Associates and 5
we therefore find no error in the district court’s consideration of 6
Associates’ submissions. We conclude, however, that the district 7
court’s dismissal of the complaint under the “first-filed” rule should 8
be vacated in light of the subsequent transfer of the Georgia federal 9
action to the Eastern District of New York. We therefore vacate the 10
dismissal of Montauk’s complaint, which restores the preliminary 11
injunction motion which was never decided. We affirm in full, 12
however, the awarding of costs under Rule 41(d), including attorneys’ 13
fees, to Associates that relate to its defense of the previously 14
discontinued Georgia state action. 15
I. Meyer’s Derivative Right to Defend 16
The district court rejected Montauk’s contention that Meyer has 17
no right to defend this suit derivatively on behalf of Associates. The 18
district court did so by looking to state law, specifically, New York’s 19
rules for derivative representation. The district court noted New 20
York’s general disfavor of derivative litigation, but identified an 21
exception: New York law will allow for derivative representation in 22
certain contexts to avoid the “intolerable grievance” created where a 23

-- 12 of 30 --

13 No. 16-3912
corporate entity refuses to act and a stakeholder is left without a 1
remedy. SA 20–21. The district court concluded that to reject Meyer’s 2
right to defend derivatively here would be an “intolerable grievance,” 3
where one of the two 50% “owners of a[n] [LLC] cause[d] his wholly- 4
owned company, and the purported manager of that company, to 5
commence a lawsuit against th[at] LLC.” SA 20. Stated differently, 6
the district court concluded that to enter default against the LLC in 7
this instance would be inequitable because it would effectively 8
require the LLC to pay license fees to one 50% member (Doscher) at 9
the expense of the other 50% member (Meyer) who would be barred 10
from appearing in the suit. 11
The district court correctly concluded that New York law 12
governs whether Meyer may derivatively defend Associates in this 13
matter. See Fed. R. Civ. P. 17(b)(3); see also Allright Missouri, Inc. v. 14
Billeter, 829 F.2d 631, 635 (8th Cir. 1987).4 The district court’s 15
assessment being an interpretation and application of state law, we 16
4 Rule 17(b)(3) provides in relevant part that “[c]apacity to sue or be sued
is determined . . . by the law of the state where the court is located.” At first
glance, one could question whether this provision applies because Meyer is
not “be[ing] sued” in this action. However, “[c]apacity has been defined
[under Rule 17(b)] as a party’s personal right to come into court, and should
not be confused with the question of whether a party has an enforceable
right or interest or is the real party in interest. Generally, capacity is
conceived of as a procedural issue dealing with the personal qualifications
of a party to litigate and typically is determined without regard to the
particular claim or defense being asserted.” Wright & Miller, 6A Fed. Prac.
& Proc. Civ. § 1559 (3d ed. 2017) (footnotes omitted).

-- 13 of 30 --

14 No. 16-3912
review it de novo. See In re World Trade Ctr. Lower Manhattan Disaster 1
Site Litig., 846 F.3d 58, 63 (2d Cir. 2017); see also Firestone v. Galbreath, 2
976 F.2d 279, 283 (6th Cir. 1992). 3
Under New York law, a shareholder has no general right to 4
litigate on behalf of a corporation. See N.Y. Bus. Corp. Law (“BCL”) 5
§ 626. Such derivative litigation is disfavored “because [it] ask[s] 6
courts to second-guess the business judgment of the individuals 7
charged with managing the company.” Bansbach v. Zinn, 1 N.Y.3d 1, 8
8 (2003). Under certain conditions, however, a shareholder may 9
litigate to vindicate corporate rights. BCL § 626(c). The principal 10
condition is that the putative derivative litigant attempt to get the 11
corporate board to act or, alternatively, explain why such an attempt 12
should be excused. Id. The same principle applies when a receiver is 13
in charge. O’Brien v. King, 17 N.Y.S.2d 44, 45 (1st Dep’t 1940) (where 14
a corporation is run by a receiver, such pre-suit demand must be 15
made on that receiver, which “stands in the place of the managing 16
body”). The demand component stems from the requirement that a 17
derivative litigant demonstrate “a sufficient excuse” as to why it 18
should be allowed to overcome the board’s business judgment and 19
represent the interests of the corporation. See Tzolis v. Wolff, 10 N.Y.3d 20
100, 108 (2008) (quoting Robinson v. Smith, 3 Paige Ch. 222, 232–33 21
(N.Y. Ch. 1832)). This is because, at its core, the issue is whether the 22
litigation decision of the governing board represents the interests of 23

-- 14 of 30 --

15 No. 16-3912
the shareholders. See Auerbach v. Bennett, 47 N.Y.2d 619, 628 (1979). 1
The “real question is one of proper representation.” Id. The New York 2
Court of Appeals has also made clear that these rules as to derivative 3
rights apply with equal force to LLCs and their members. See Tzolis, 4
10 N.Y.3d at 103. 5
The question here is whether these derivative representation 6
rules allow Meyer to represent Associates’ interests in defense against 7
the instant suit. Montauk contends the answer is no, arguing that 8
derivative representation is unavailable on the present facts. It rests 9
its argument on two asserted principles of New York law: 10
(i) derivative representation is available only where a managing 11
body’s decision not to litigate was negligent, fraudulent, or in bad 12
faith, a showing that Meyer has not made as to Associates; and 13
(ii) derivative representation rights do not extend to litigation defense. 14
Finding no support for either principle, we conclude that Meyer was 15
free to derivatively defend this case on behalf of Associates. 16
Montauk cites no authority, and we are aware of none, 17
intimating that derivative representation is only permissible under 18
New York law where a managing body’s decision not to litigate was 19
negligent, fraudulent, or in bad faith. Tomczak v. Trepel, 724 N.Y.S.2d 20
737 (1st Dep’t 2001), cited repeatedly by Montauk for this proposition, 21
is instructive. There, the First Department affirmed the dismissal of a 22
derivative suit because the plaintiffs failed to allege sufficient 23

-- 15 of 30 --

16 No. 16-3912
wrongdoing on the part of the board. Id. at 738. Contrary to 1
Montauk’s contention, however, the court did not imply that board 2
wrongdoing was the only avenue to derivative representation; it 3
simply addressed the board’s wrongdoing because that was the 4
reason the plaintiffs proffered in that case for why the board was not 5
properly representing the interests of the shareholders. Tomczak 6
makes clear that, at bottom, the inquiry in a derivative rights question 7
is an assessment of the managing body’s intent in adopting a litigation 8
strategy. That the plaintiffs failed to adduce facts relevant to that 9
inquiry is evidenced from the following statement: 10
While plaintiffs allege that unsuccessful 11
demands were made on the Club’s Board of 12
Directors to initiate legal action, the 13
complaint provides no indication as to who 14
made the demands, when they were made, 15
which Board members they were made to, 16
the content of the demands or why the Board 17
refused to take action. 18
Id. (emphasis added). 19
If the board or other managing body’s intent in making its 20
litigation decision was to further the interests of the shareholders, 21
New York courts defer to that choice. If its intent was otherwise, they 22
may not. 23
With this basic principle in mind, it becomes clear that there is 24
little sense in a rule that confines derivative representation to 25
situations where a managing body’s decision not to litigate is made 26

-- 16 of 30 --

17 No. 16-3912
with some malfeasance. The flaw in Montauk’s contention is notably 1
apparent in the present context, which is distinct from the usual 2
derivative standing question in a significant way: the derivative 3
litigant and the company here fully agree as to the best litigation 4
strategy, specifically, that Meyer defend the action. New York’s 5
concerns behind its general reluctance to allow derivative litigation 6
are simply not present in this case. 7
A board’s malfeasance becomes relevant only where the board 8
and the shareholder disagree as to the path forward, i.e., where the 9
corporation affirmatively “decide[s] to terminate” litigation that the 10
shareholder desired, Amalgamated Sugar Co. v. NL Industries, Inc., 825 11
F.2d 634, 641 (2d Cir. 1987), or “decline[s] to institute . . . an action” 12
“that the plaintiff [shareholder] has requested the receiver to 13
maintain,” Koral v. Savory, Inc., 276 N.Y. 215, 219–20 (1937). This is 14
because, as discussed, New York law looks to a board’s malfeasance 15
only to the extent it may provide a reason to reject the board’s chosen 16
litigation strategy in favor of a different one proposed by a 17
shareholder. 18
But, we have no battle here between conflicting litigation 19
positions and therefore no need to show the Receiver’s malfeasance. 20
The Receiver—which is obligated as a fiduciary to act in the best 21
interest of Associates, see Insurance Co. of N. Am. v. City of New York, 22
71 N.Y.2d 983, 985 (1988)—wholly and eagerly consents to Meyer’s 23

-- 17 of 30 --

18 No. 16-3912
derivative defense. The Receiver explained in the record its insistence 1
that it was in the best interest of Associates for Meyer to defend this 2
litigation. App’x 666, 672. This decision is properly subject to the 3
business judgment rule, and it makes no difference that the governing 4
corporate entity is a receiver. See Golden Pac. Bancorp v. F.D.I.C., 2002 5
WL 31875395, at *9 (S.D.N.Y. Dec. 26, 2002) (under New York law, 6
“receivers, just like corporate directors, are entitled to the deference 7
of the business judgment rule”). Montauk does not contend that 8
Meyer’s derivative defense is somehow counter to the interests of 9
Associates or that the Receiver’s decision to allow Meyer to defend 10
this case was itself made in bad faith. In sum, Montauk’s argument 11
that Meyer was required to demonstrate malfeasance on the part of 12
the Receiver was properly rejected by the district court. 13
Montauk also argues that even if LLC members may bring 14
derivative lawsuits, they may not derivatively defend lawsuits. 15
Montauk cites no law, or reasoning, to support this contention, and 16
the argument is not pressed in its reply brief. The argument is 17
meritless nonetheless. As discussed, the core question in a derivative 18
litigation inquiry is who is a proper entity to represent the company’s 19
interests. There is no reason for different rules for that question when 20
the company defends against rather than brings a suit. 21
In sum, Meyer both (i) took efforts to get Associates to defend 22
the action, BCL § 626(c); and, once Associates elected not to defend 23

-- 18 of 30 --

19 No. 16-3912
the action, (ii) adequately explained why he should be allowed to 1
derivatively defend it: Associates’ good-faith and well-reasoned 2
consent. Meyer therefore met the obligations imposed on him by 3
New York law to derivatively defend this lawsuit. 4
II. The “First-Filed” Rule 5
The district court dismissed Montauk’s complaint without 6
prejudice under the “first-filed” rule, which provides that “where 7
there are two competing lawsuits, the first suit should have priority, 8
absent the showing of balance of convenience or special 9
circumstances giving priority to the second.” AEP Energy Servs. Gas 10
Holding Co. v. Bank of Am., N.A., 626 F.3d 699, 722 (2d Cir. 2010) 11
(internal quotation marks omitted). The rule “embodies 12
considerations of judicial administration and conservation of 13
resources, and recognizes that a party who first brings an issue into a 14
court of competent jurisdiction should be free from the vexation of 15
concurrent litigation over the same subject matter.” Id. (internal 16
quotation marks and citation omitted). 17
The district judge, over Montauk’s objection, concluded that 18
the instant action should give way to the Georgia federal action under 19
the “first-filed” rule. On August 14, 2017, however, the district court 20
judge presiding over the Georgia federal action transferred that case 21
to the Eastern District of New York where it was assigned to the 22
district judge in this case. No. 17-cv-4747, Dkt. Nos. 103–04 (E.D.N.Y. 23

-- 19 of 30 --

20 No. 16-3912
Aug. 14 & 16, 2017). Consequently, none of the considerations 1
motivating the district court’s application of the “first-filed” rule 2
remain. The “first-filed” rule has no import where, as here, the two 3
cases at issue reside on the docket of the same district judge. The able 4
district judge is perfectly capable of consolidating them as necessary. 5
We therefore vacate the district court’s dismissal of this action under 6
the “first-filed” rule, as well as its dismissal of Montauk’s motion for 7
a preliminary injunction. 8
III. Associates’ Rule 41(d) Motion 9
The district court concluded that Montauk must pay Associates 10
the costs, including attorneys’ fees, it incurred in the Georgia state 11
action pursuant to Rule 41(d), which provides that: 12
If a plaintiff who previously dismissed an 13
action in any court files an action based on 14
or including the same claim against the 15
same defendant, the court . . . may order the 16
plaintiff to pay all or part of the costs of that 17
previous action. 18
Fed. R. Civ. P. 41(d). The district court concluded that Rule 41(d) was 19
implicated due to the similarities in the allegations and relief sought 20
as between the instant action and the Georgia state action, for which 21
Montauk did not “demonstrat[e] that there was a good reason . . . to 22
dismiss.” SA 28–29. We review the question of whether specific types 23
of costs are available under a given statute de novo and the decision 24

-- 20 of 30 --

21 No. 16-3912
whether to grant costs for abuse of discretion. See Gortat v. Capala 1
Bros., 795 F.3d 292, 295 (2d Cir. 2015) (per curiam). 2
Montauk asserts that there are two errors in the district court’s 3
analysis. First, it argues that the district court abused its discretion in 4
concluding that the instant action is “based on or includ[es] the same 5
claim” as the Georgia state action. Second, it argues that even if 6
Associates is entitled to costs under Rule 41(d), the district court erred 7
in concluding that attorneys’ fees may be awarded as part of such 8
costs. Neither argument is persuasive. 9
a. The District Court Did Not Abuse its Discretion in 10
Concluding that the Instant Action is “[B]ased on . . . 11
the [S]ame [C]laim[s]” as the Georgia State Action 12
It is quite clear to us that the instant action is “based on . . . the 13
same claim[s]” as the Georgia state action. Montauk’s claims in both 14
actions depend on the same core showing about the same trademarks: 15
that Associates has no legal ownership of or right to use The Sloppy 16
Tuna marks. If Associates owns the marks or otherwise has rights to 17
their use, Associates likely neither breached the License Agreement 18
(the subject of the Georgia state action) nor violated the Lanham Act 19
(the subject of the instant action). On the other hand, if Montauk 20
owns the marks or if Associates had no right to their use, Associates 21
may have breached the License Agreement or violated the Lanham 22
Act. The different assertions in these actions are certainly “based on” 23
the same underlying claims of ownership and use rights. 24

-- 21 of 30 --

22 No. 16-3912
Montauk’s arguments to the contrary are unpersuasive. 1
Montauk points to the fact that the Georgia state action was contract- 2
based and the instant action is brought under the Lanham Act. That 3
two actions involve different theories of recovery, however, is not 4
dispositive for Rule 41(d), as its plain language—“based on . . . the 5
same claim”—makes clear. This is most especially the case here, 6
where Montauk could have asserted a Lanham Act violation in the 7
Georgia state action by simply amending its complaint. See, e.g., Corps 8
Grp. v. Afterburner, Inc., 779 S.E.2d 383, 386 n.3 (Ga. Ct. App. 2015). 9
Rather, Montauk chose instead to voluntarily dismiss the Georgia 10
state action and file its Lanham Act claims in federal court in another 11
state. Moreover, it did so immediately after the Georgia state court 12
stated its belief that the action was meritless and that its filing likely 13
contravened an order of another court, which was itself addressing 14
substantially related claims. This is the precise type of litigation tactic 15
that Rule 41(d) is meant to deter. See Andrews v. America’s Living Ctrs., 16
LLC, 827 F.3d 306, 309 (4th Cir. 2016) (“[T]he purpose of Rule 41(d) is 17
to serve as a deterrent to forum shopping and vexatious litigation.” 18
(internal quotation marks omitted)).5 19
5 We are not alone in our view that Montauk’s actions in relation to the
Georgia state action were part of a pattern of vexatious litigation. While
this appeal was pending, the justice presiding over the New York state
action held Montauk’s counsel in contempt in part for his filing of the
Georgia state action. Meyer v. 148 S. Emerson Assocs. LLC, No. 068379/2014,
Dkt. No. 1355 (N.Y. Sup. Ct. May 9, 2017).

-- 22 of 30 --

23 No. 16-3912
Montauk’s other contention that the actions are distinct for 1
purposes of Rule 41(d) is that the instant action seeks relief only for 2
infringements that occurred after the filing of the Georgia state action. 3
Specifically, Montauk points out that because it filed the Georgia state 4
action on March 24, 2016, the same day that it unilaterally terminated 5
the License Agreement, “none of the alleged trademark infringement, 6
dilution, or cybersquatting had taken place at the time the [Georgia 7
state action] was filed.” Br. of Appellant at 41. This argument, 8
although perhaps clever, fares no better. 9
The record makes clear that Associates has utilized the at-issue 10
marks at the restaurant and elsewhere since opening without 11
interruption and with Montauk’s knowledge. Consequently, 12
Montauk knew when it filed its Georgia state action that, under its 13
theory, Associates would be in violation of the Lanham Act from 14
March 25, 2016 onward, yet it neither sought Lanham Act relief in the 15
Georgia state action nor sought to amend its complaint prior to its 16
voluntary dismissal. In sum, that certain alleged acts occurred after 17
the filing of the Georgia state action does not alter the underlying 18
claim upon which both actions are based: that Associates did not own 19
and had no right to use The Sloppy Tuna trademarks. 20
Finally, relying on Phunware, Inc. v. Excelmind Group Ltd., 117 F. 21
Supp. 3d 613 (D. Del. 2015), Montauk argues that the instant action is 22
not sufficiently related to the Georgia state action for purposes of Rule 23

-- 23 of 30 --

24 No. 16-3912
41(d) because Montauk seeks distinct relief in each action. The 1
argument is meritless. For one, in Phunware, the plaintiff had a good- 2
faith concern that the relief sought in the second-filed action, money 3
damages, would have been unavailable in the first-filed forum, a 4
court of equity, id. at 623–24 & n.9, and Montauk makes no showing 5
that there was a form of relief available in the Eastern District of New 6
York that was unavailable in the Georgia state court. More 7
fundamentally, however, Montauk did not seek different relief in the 8
two relevant actions; in both, Montauk sought injunctive relief and 9
damages. 10
The district court did not abuse its discretion in granting 11
Associates’ Rule 41(d) motion. 12
b. The District Court Did Not Err in Awarding 13
Associates Attorneys’ Fees as Part of Costs 14
As discussed, Rule 41(d) allows a district court to order 15
plaintiffs “to pay all or part of the costs of that previous action.” Fed. 16
R. Civ. P. 41(d). Montauk challenges the district court’s conclusion 17
that “costs” in Rule 41(d) may include attorneys’ fees. 18
We have not addressed whether attorneys’ fees are available as 19
part of “costs” under Rule 41(d). The issue has split our sister circuit 20
courts. The Sixth Circuit has concluded in light of Rule 41(d)’s silence 21
as to attorneys’ fees that such fees are never available under the rule. 22
See Rogers v. Wal-Mart Stores, 230 F.3d 868, 874 (6th Cir. 2000). On the 23

-- 24 of 30 --

25 No. 16-3912
other hand, the Eighth and Tenth Circuits have concluded without 1
much discussion that attorneys’ fees may be awarded under Rule 2
41(d). See Evans v. Safeway Stores, Inc., 623 F.2d 121, 122 (8th Cir. 1980) 3
(per curiam); Meredith v. Stovall, 216 F.3d 1087 (10th Cir. 2000) 4
(unpublished). The Fourth, Fifth, and Seventh Circuits have taken a 5
hybrid approach and concluded that attorneys’ fees may not 6
generally be awarded as costs under the rule, but with an exception 7
for when the statute serving as the basis for the original suit itself 8
allows for attorneys’ fees (such as 42 U.S.C. § 1983). See Andrews, 827 9
F.3d at 309–12 (adopting rule from Esposito v. Piatrowski, 223 F.3d 497, 10
501 (7th Cir. 2000)); Portillo v. Cunningham, 872 F.3d 728, 738–39 (5th 11
Cir. 2017). For the reasons that follow, we agree with the outcomes 12
arrived at by the Eighth and Tenth Circuits: district courts may award 13
attorneys’ fees as part of costs under Rule 41(d). 14
There is no uniformity across federal authorities as to whether 15
the term “costs” includes attorneys’ fees. For example, the term 16
“costs” in Rule 39 of the Federal Rules of Appellate Procedure, as well 17
as an earlier version of 28 U.S.C. § 1927, have both been determined 18
not to incorporate attorneys’ fees. See Hines v. City of Albany, 862 F.3d 19
215, 220–21 (2d Cir. 2017); Roadway Express, Inc. v. Piper, 447 U.S. 752, 20
759 (1980). But, the term “costs” in Rule 54(d) of the Federal Rules of 21
Civil Procedure is written such that it includes attorneys’ fees. See 22
Andrews, 827 F.3d at 311 n.2. For other rules, such as Rule 68 of the 23

-- 25 of 30 --

26 No. 16-3912
Federal Rules of Civil Procedure and Rule 7 of the Federal Rules of 1
Appellate Procedure, “costs” includes attorneys’ fees in certain 2
instances, but not in others, specifically, such fees can be awarded 3
where the cause of action under which the suit at issue is brought so 4
allows, but not otherwise. See Marek v. Chesny, 473 U.S. 1, 9 (1985); 5
Adsani v. Miller, 139 F.3d 67, 79 (2d Cir. 1998). See generally Marek, 473 6
U.S. at 43–51 (Brennan, J. dissenting) (listing over 100 statutes with 7
varying usages of the term “attorney’s fees” relative to “costs”). 8
Two relevant lessons emerge from the case law on how to 9
assess the availability of attorneys’ fees pursuant to a provision, such 10
as Rule 41(d), which allows for “costs” but makes no express reference 11
to attorneys’ fees. First, “costs” do not include attorneys’ fees where 12
the rule incorporates a statutorily enumerated list of “costs” that itself 13
omits attorneys’ fees. See Hines, 862 F.3d at 220–21. In Hines, for 14
example, we concluded that the term “costs” in Rule 39 of the 15
appellate procedure rules does not include attorneys’ fees because the 16
advisory committee notes to the rule refer to the definition of “costs” 17
in 28 U.S.C. § 1920, which does not include attorneys’ fees in its 18
enumerated list of costs. Id. The Supreme Court took a similar tack 19
in Roadway Express, where it held that the definition of “costs” in 28 20
U.S.C. § 1920 should be incorporated into the then-operative version 21
of 28 U.S.C. § 1927’s cost-shifting provision because the two 22
provisions, given their shared history, “should be read together as 23

-- 26 of 30 --

27 No. 16-3912
part of [an] integrated statute.” 447 U.S. at 760. Here, Rule 41(d) 1
incorporates no other definition of costs, either expressly or by 2
reference, and therefore attorneys’ fees are not precluded by this 3
principle. 4
Second, in this situation—where the term “costs” is entirely 5
undefined, either expressly or by reference—we look to see “if the 6
statute otherwise evinces an intent to provide for [attorneys’] fees.” 7
Key Tronic Corp. v. United States, 511 U.S. 809, 815 (1994). 8
Consequently, we disagree with the Sixth Circuit’s conclusion that 9
attorneys’ fees are unavailable under Rule 41(d) “simpl[y] [because] 10
the rule does not explicitly provide for them.” Rogers, 230 F.3d at 874. 11
In Marek, for example, “given the importance of ‘costs’ to the Rule,” 12
the Court “infer[red]” “that the term ‘costs’ in Rule 68 was intended 13
to refer to all costs properly awardable under the relevant substantive 14
statute or other authority” on which the claimant brought suit. 473 15
U.S. at 9; see infra note 6. 16
Here, as the great weight of district court authority has 17
concluded in this circuit, see Pelczar v. Pelczar, 2017 WL 3105855, at *2 18
(E.D.N.Y. July 20, 2017) (collecting cases), the entire Rule 41(d) scheme 19
would be substantially undermined were the awarding of attorneys’ 20
fees to be precluded. We thus have no difficulty in concluding that 21
Rule 41(d) evinces an unmistakable intent for a district court to be 22
free, in its discretion, to award attorneys’ fees as part of costs. 23

-- 27 of 30 --

28 No. 16-3912
Rule 41(d)’s purpose is clear and undisputed: “to serve as a 1
deterrent to forum shopping and vexatious litigation.” Andrews, 827 2
F.3d at 309 (quoting Simeone v. First Bank Nat’l Ass’n, 971 F.2d 103, 108 3
(8th Cir. 1992) and citing Esposito, 223 F.3d at 501); Adams v. N.Y. State 4
Educ. Dep’t, 630 F. Supp. 2d 333, 343 (S.D.N.Y. 2009); 8 Moore’s Fed. 5
Prac. § 41.70[1] (3d ed. 2016). Rule 41(d) would be greatly limited as 6
an effective deterrent if district courts were precluded from assessing 7
attorneys’ fees as part of costs.6 The need for attorneys’ fees may be 8
6 We choose not to join the Fourth, Fifth, and Seventh Circuits in
adopting a rule based on Marek in which attorneys’ fees are available under
Rule 41(d) only if the underlying cause of action itself allows for attorneys’
fees. We think such a rule makes little sense as to Rule 41(d), where there
is no connection between the underlying cause of action and the behavior
the rule seeks to influence. Pegging the scope of the incentive to the
underlying cause of action might make sense in the context of Rule 68,
which is meant to encourage settlement, see Marek, 473 U.S. at 5, because a
parties’ incentives to settle are tied to the amount of available recovery. See
id. (“Rule [68] prompts both parties to a suit to evaluate the risks and costs
of litigation, and to balance them against the likelihood of success upon trial
on the merits.”); see also Adsani, 139 F.3d at 73–75. As discussed, however,
the purpose of Rule 41(d) is to deter litigants from forum shopping or filing
vexatious suits, acts largely untethered to the merits. The hybrid rule
therefore places an arbitrary condition on the Rule 41(d) deterrent. For
example, attorneys’ fees are allowed to prevailing parties under federal
anti-discrimination statutes but not under certain New York anti-
discrimination statutes, which are “essentially the same” as their federal
counterparts. See Lightfoot v. Union Carbide Corp., 110 F.3d 898, 913–14 (2d
Cir. 1997) (disallowing attorneys’ fees to victorious plaintiff where her
claim under the federal Age Discrimination in Employment Act, which
allows for the recovery of attorneys’ fees, was dismissed and plaintiff only
recovered on her claim under the New York State Human Rights Law,
which “does not provide for an award of [attorneys’] fees”). Under the

-- 28 of 30 --

29 No. 16-3912
especially acute in the Rule 41(d) context. The targets of deterrence 1
under the rule will often be litigants, such as Montauk, that file 2
complaints and quickly dismiss them, perhaps in reaction to initial 3
unfavorable rulings, or hoping for a subsequent case assignment to a 4
judge they view as more favorable. These are actions with minor costs 5
to the adversary other than attorneys’ fees, which may be substantial. 6
Indeed, such actions will rarely incur most of the expenses routinely 7
recoverable as costs. See 28 U.S.C. § 1920. The instant case is an apt 8
example. Apart from attorneys’ fees, the only costs paid by 9
Associates in defense of the Georgia state action were a $15.00 charge 10
for delivery of documents and a $60.48 charge for a transcript fee from 11
a court reporter. See No. 16-cv-2741, Dkt. No. 36-5 at 10 (E.D.N.Y. 12
Nov. 17, 2016). We are wholly unconvinced such small payments 13
would effectively deter litigants such as Montauk from forum 14
shopping or otherwise embarking on a course of vexatious litigation. 15
We affirm the district court’s ruling on Associates’ Rule 41(d) motion. 16
CONCLUSION 17
We find the parties’ remaining contentions to be without merit, 18
and, for the reasons stated above, we AFFIRM in part and VACATE 19
hybrid approach, Rule 41(d) would therefore place a larger deterrent on
vexatious federal discrimination suits than on vexatious New York
discrimination suits. We see no basis for this distinction.

-- 29 of 30 --

30 No. 16-3912
in part the judgment of the district court and REMAND for 1
proceedings consistent with this opinion. 2

-- 30 of 30 --