Elmendorf v. D.S. America

USCA1 Opinion









UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT

______________________



No. 94-1695


ELMENDORF GRAFICA, INC.,

Plaintiff, Appellant,

v.

D.S. AMERICA (EAST), INC. d/b/a SCREEN (EAST),

Defendant, Appellee.

_______________

ERRATA SHEET ERRATA SHEET


The opinion of this Court issued on February 21, 1995, is
amended as follows:

Page 5, line 11: Change "April 8, 1993" to "April 8, 1994".
























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UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
____________________

No. 94-1695

ELMENDORF GRAFICA, INC.,

Plaintiff, Appellant,

v.

D.S. AMERICA (EAST), INC. d/b/a SCREEN (EAST),

Defendant, Appellee.

____________________

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO

[Hon. Raymond L. Acosta, U.S. District Judge] ___________________

____________________

Before

Boudin, Circuit Judge, _____________
Campbell, Senior Circuit Judge, ____________________
and Boyle, Senior District Judge.* _____________________
____________________

Jose L. Rivero Vergne, Moredo & Moredo, Ramon Rosado-Vila and _______________________ ________________ __________________
Ramon Rosado-Vila Law Offices on brief for appellant. _____________________________
Francisco M. Troncoso, Troncoso & Becker, Edward J. Underhill, ______________________ __________________ ____________________
Steven L. Katz, and Masuda, Funai, Eifert & Mitchell, Ltd. on brief _______________ _______________________________________
for appellee.

____________________

February 21, 1995
____________________








____________________

*Of the District of Rhode Island, sitting by designation.













CAMPBELL, Senior Circuit Judge. Elmendorf Grafica, ____________________

Inc. appeals from an order of the district court granting

D.S. America (East), Inc.'s motion to stay a pending federal

diversity action until similar litigation in the state courts

of Illinois is concluded. The United States District Court

for the District of Puerto Rico accepted the recommendation

of the magistrate judge that a stay was justified under

principles declared in Colorado River Water Conservation ___________________________________

District v. United States, 424 U.S. 800 (1976). We vacate ________ _____________

the stay and remand for proceedings in the district court.

I. I.

This case arises out of a dispute between Elmendorf

Grafica, Inc., a Puerto Rico corporation with its principal

place of business in Puerto Nuevo, Puerto Rico, and D.S.

America (East), Inc., d/b/a Screen (East) (hereinafter

"Screen"), an Illinois corporation with its principal place

of business in Rolling Meadows, Illinois. On March 20, 1992,

the parties entered into an equipment purchase agreement

under which Elmendorf agreed to purchase computer hardware

and software at a price of $120,000. Elmendorf paid $84,000

in advance, leaving a balance due of $36,000. The equipment

failed to perform to its satisfaction, and Elmendorf,

claiming ongoing damage to its business as a result of this

failure, refused to pay.

A. The Illinois Action A. The Illinois Action



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On November 25, 1992, Screen sued Elmendorf for

$36,000 in the Circuit Court of Cook County, Illinois. The

summons and complaint in that case were served on Elmendorf's

president on December 3, 1992. Instead of answering,

Elmendorf filed a limited appearance. On February 2, 1993,

Elmendorf moved to dismiss for want of personal jurisdiction

and, after briefing and argument, the Cook County Circuit

Court allowed Elmendorf's motion on May 17, 1993, and

dismissed Screen's action for want of personal jurisdiction.

While the court modified its order on June 8, 1993, the

dismissal remained. Screen appealed to the Illinois

Appellate Court, seeking to overturn the dismissal, on July

8, 1993.

The parties thereupon engaged in a war of motions

in the appellate forum. On October 14, 1993, Screen filed a

motion for stay of proceedings to amend record on appeal,

which included a request for additional time to file its

brief. The appellate court denied that motion in February

1994. Elmendorf, having strongly opposed Screen's motion,

filed its own motion for leave to supplement the record on

March 24, 1994, requesting additional time to file its brief.

After the appellate court's disposition of this motion,

Elmendorf moved for clarification on May 11, 1994. That

motion was allowed on August 10, 1994, with yet another

extension of time for Elmendorf to file its brief. On



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September 16, 1994, Elmendorf filed a third request for

additional time to file its brief because its attorney was

preparing for another trial and lacked the time to prepare

its brief. Insofar as we are aware, the appeal has yet to be

decided.

B. The Puerto Rico Action B. The Puerto Rico Action

On January 15, 1993, two months after Screen sued

Elmendorf in Illinois, and a few weeks before Elmendorf moved

to dismiss that action, Elmendorf sued Screen in the Superior

Court of Puerto Rico, San Juan Part, alleging, inter alia, ___________

breach of contract, false advertising, and fraud stemming

from the same equipment purchase agreement which was the

subject of the Illinois litigation. Elmendorf requested a

declaration that the agreement was null and void, damages in

the amount of $684,700 plus interest, and reimbursement of

the $84,000 advance payment. Screen was not served with the

summons and complaint in the Puerto Rico action until June

14, 1993, one week after the Cook County Circuit Court's

amended dismissal of the Illinois action for want of personal

jurisdiction.

On July 13, 1993, alleging diversity of

citizenship, Screen removed the Puerto Rico action to the

United States District Court for the District of Puerto Rico.

On September 8, 1993, Screen moved to dismiss and/or stay the

Puerto Rico federal proceedings citing principles established



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by the Supreme Court in Colorado River Water Conservation __________________________________

District v. United States, 424 U.S. 800 (1976) and subsequent ________ _____________

cases. This motion was referred to a magistrate judge, who,

on October 12, 1993, and in the absence of any opposition by

Elmendorf, recommended a stay of proceedings pending the

outcome of the Illinois litigation. Elmendorf filed its

opposition on October 15, 1993, apparently before receiving

word of the magistrate judge's decision, and on October 21,

1993, also filed objections to the magistrate judge's report

and recommendations, along with an explanation for the delay

in filing its opposition. The district court referred the

matter to the magistrate judge for reconsideration in light

of Elmendorf's objections.

On April 8, 1994, the magistrate judge issued a

second report, again recommending a stay. Elmendorf filed

objections to this second report on April 25, 1994.1 On May

____________________

1. Screen states in its brief that "it is unclear whether"
Elmendorf's objections to the April 8, 1994 magistrate
judge's report, filed on April 25, 1994, were filed within
the 10-day period required by 28 U.S.C. 636(b)(1)(C)
(1988). This seems to suggest that we should deem
Elmendorf's appeal waived. See, e.g., Henley Drilling Co. v. ___ ____ ___________________
McGee, 36 F.3d 143, 150-51 (1st Cir. 1994) (failure to object _____
within 636(b)(1)(C)'s ten-day period waives claim for
purposes of appellate review); Fed. R. Civ. P. 72(b) (same).
However, it appears that Elmendorf's objections were timely
filed. See Fed. R. Civ. P. 72(b) (allowing service by mail ___
of magistrate's report); Fed. R. Civ. P. 6(a) and (e)
(describing method of computing time period under federal
rules, and stating that, where period allowed is less than 11
days, intervening Saturdays, Sundays and holidays shall not
be counted, and, where service upon a party is to be made by
mail, adding three days to the period is allowed).

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5, 1994, the district court issued an order adopting the

magistrate judge's conclusions and ordering a stay of the

proceedings. Elmendorf appeals.

II. II.

A. A Preliminary Matter A. A Preliminary Matter

Elmendorf argues that the district court failed to

perform a de novo review of the magistrate judge's proposed _______

findings, as required by 28 U.S.C. 636(b)(1)(C) (1988).2

____________________

2. 28 U.S.C. 636 states, in pertinent part:

(b)(1) Notwithstanding any provision of
law to the contrary--
(A) a judge may designate a
magistrate to hear and
determine any pretrial matter
pending before the court,
except a motion . . . to
involuntarily dismiss an action
. . . .
(B) a judge may also designate
a magistrate . . . to submit to
a judge of the court proposed
findings of fact and
recommendations for the
disposition, by a judge of the
court, of any motion excepted
in subparagraph (A) . . . .
(C) the magistrate shall file
his proposed findings and
recommendations under
subparagraph (B) with the court
and a copy shall forthwith be
mailed to all parties.

Within ten days after being served with a
copy, any party may serve and file
written objections to such proposed
findings and recommendations as provided
by rules of court. A judge of the court
shall make a de novo determination of
those portions of the report or specified

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The district court's order of May 5, 1994 states, "The Court,

having reviewed the conclusions of the U.S. Magistrate in the

two Report and Recommendations filed in this case, finds that

his decisions are warranted in law and fact." Elmendorf

argues that this statement is inconsistent with 636's

requirement.

Elmendorf has called no authority to our attention

holding that, in order to demonstrate compliance with 636's

de novo review requirement, a district court must make ________

findings and rulings of its own rather than adopting those of

the magistrate judge. The statute authorizes the district

court to adopt in whole as well as in part the proposed

findings or recommendations of the magistrate judge. Where,

as here, the magistrate judge decided on an undisputed

factual record, the district court was certainly not required

to rehash the magistrate judge's reasoning. The role of the

magistrate judge is "to relieve courts of unnecessary work."

Henley Drilling Co. v. McGee, 36 F.3d 143, 151 (1st Cir. ____________________ _____




____________________

proposed findings or recommendations to
which objection is made. A judge of the
court may accept, reject, or modify, in __________ __
whole or in part, the findings or _____
recommendations made by the magistrate.
The judge may also receive further
evidence or recommit the matter to the
magistrate with instructions.

28 U.S.C. 636(b)(1) (1988) (emphasis added).

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1994), quoting Park Motor Mart, Inc. v. Ford Motor Co., 616 _______ ______________________ _______________

F.2d 603, 605 (1st Cir. 1980).

III. III.

A. The Colorado River Doctrine A. The Colorado River Doctrine ______________

The Supreme Court in Colorado River established a ______________

narrow basis for district courts to stay or dismiss federal

lawsuits in deference to parallel state proceedings. The

Court held that, in "exceptional" circumstances, 424 U.S. at

818, a federal court could decline jurisdiction based on

"'considerations of "[w]ise judicial administration, giving

regard to conservation of judicial resources and

comprehensive disposition of litigation,"'" Moses H. Cone, ______________

460 U.S. at 15 (quoting Colorado River, 424 U.S. at 817 _______________

(quoting Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 342 __________________ ________________________

U.S. 180, 183 (1952))).

The Court in Colorado River mentioned four _______________

illustrative factors for determining whether "exceptional

circumstances" exist: (1) whether either court has assumed

jurisdiction over a res; (2) the inconvenience of the federal ___

forum; (3) the desirability of avoiding piecemeal litigation,

and (4) the order in which the forums obtained jurisdiction.

In Moses H. Cone, the Court added two additional factors: (5) _____________

whether state or federal law controls, and (6) the adequacy

of the state forum to protect the parties' rights. Another

factor, mentioned but not applied in Moses H. Cone, 460 U.S. _____________



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at 17 n.20, and counted by some courts, is the vexatious or

reactive nature of the federal lawsuit, see, e.g., Fuller Co. _________ __________

v. Ramon I. Gil, Inc., 782 F.2d 306, 308-10 (1st Cir. 1986). __________________

In Colorado River, the Supreme Court emphasized _______________

that the stay or dismissal authorized there should be used

sparingly. The Court spoke of the "virtually unflagging

obligation of the federal courts to exercise the jurisdiction

given them," 424 U.S. at 817, and cautioned that "[o]nly the

clearest of justifications will warrant dismissal," id. at ___

819. The weight a court should give any single factor may

vary greatly depending on the case, and "[n]o one factor is

necessarily determinative; a carefully considered judgment

taking into account both the obligation to exercise

jurisdiction and the combination of factors counselling

against that exercise is required," id. at 818-19. The ___

district court must weigh the important factors "with the

balance heavily weighted in favor of the exercise of

jurisdiction," Moses H. Cone, 460 U.S. at 16. _____________

The decision whether to surrender jurisdiction is

"necessarily left to the discretion of the district court in

the first instance," id. at 19, and the district court's ___

decision may be reversed only for an abuse of that

discretion. Such discretion must be exercised, however,

within the constraints of the "exceptional-circumstances

test." Id.; see also Villa Marina Yacht Sales, Inc. v. ___ _________ _________________________________



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Hatteras Yachts, 947 F.2d 529 (1st Cir. 1991), cert. denied, _______________ ____________

__ U.S. __, 112 S. Ct. 1674 (1992). In a discussion which

concluded that it made no difference in this context whether

the district court ordered a stay or dismissal, the Court

emphasized the limits of this discretion, saying:

When a district court decides to dismiss
or stay under Colorado River, it _______________
presumably concludes that the parallel
state-court litigation will be an
adequate vehicle for the complete and
prompt resolution of the issues between
the parties. If there is any substantial
doubt as to this, it would be a serious
abuse of discretion to grant the stay or
dismissal at all.

Moses H. Cone, 460 U.S at 28. _____________

B. The Magistrate Judge's Recommendation B. The Magistrate Judge's Recommendation

The magistrate judge's second report and

recommendation considered Colorado River, reiterating rightly ______________

that the balance in any decision to stay or dismiss under

that doctrine should be "heavily weighted in favor of the

exercise of jurisdiction." The magistrate judge nonetheless

felt that a stay was appropriate here:

In this case, plaintiff is not seeking to
obtain possession of a res. The evidence
and witnesses are split between Illinois
and Puerto Rico. No one forum is more
convenient for both parties at the same
time. If this court exercises its
jurisdiction, the two parties would be
litigating very similar issues in two
separate forums. The Illinois court was
the first to assume jurisdiction. Since
the purchase agreement entered into by
the parties provides for the application
of Illinois law, it would be more


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appropriate for the Illinois court to
interpret it. In sum, the totality of
the circumstances favors the stay pending
resolution of the Illinois litigation.

Id. at 3. As the district court adopted this analysis, we ___

focus on the magistrate judge's reasoning.

IV. IV.

In the first three sentences of the above-quoted

reasoning, the magistrate judge concluded that the factors he

was considering favored neither party. We have no difficulty

with the magistrate judge's assessment of those three items.

The magistrate judge went on to conclude, however,

that the next three factors weighed in favor of staying the

federal action so that Screen could go forward in Illinois.

We disagree. In our view, the magistrate judge did not give

appropriate attention to the fact that, at the time the issue

of a stay was before the district court (indeed, up until

now), the Illinois action consisted of no more than a pending

appeal from the order of the Cook County Circuit Court

dismissing the action for lack of personal jurisdiction.

This was not a case where the parallel state action was

strongly underway, making it perhaps reasonable, depending on

the facts, to await the outcome in the state case before

proceeding in the federal court. Here, if the Cook Country

Circuit Court's dismissal for lack of personal jurisdiction

should be affirmed by the Illinois Appellate Court, there

will be left in existence no state action whatever; while if


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the lower court's dismissal should be reversed on appeal, the

parties will merely be back at the very beginning of the

process of litigating the merits of their controversy. Under

such circumstances, the federal diversity action in Puerto

Rico, which was not encumbered by any threshold

jurisdictional question, was the more immediately available

vehicle for litigating the dispute.

The magistrate judge said that if the district

court action were allowed to proceed, "the two parties would

be litigating very similar issues in two separate forums."

But this description suggests a parallelism that did not then

exist, given that the Illinois case had been dismissed on

jurisdictional grounds, leaving only an appeal from the

dismissal. Only if plaintiffs were to win the appeal would

the Illinois proceedings become truly parallel to those in

the federal district court. By then, were it not for the

stay, the district court in Puerto Rico might be well into

the merits of the controversy. To be sure, calling a halt to

the federal case would permit the parties to devote all their

energies to the battle over jurisdiction in the Illinois

appellate court, and, depending on the outcome, perhaps

eventually to litigate their dispute in the Illinois circuit

court. But forcing the plaintiff in the federal case to sit

on its hands for so long is not consonant with Colorado River ______________

and its progeny, which describe the balance as "heavily



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weighted in favor of the exercise of [federal court]

jurisdiction. Moses H. Cone, 460 U. S. at 16. Those cases _____________

require an affirmative showing of "the clearest of

justifications," Colorado River, 424 U.S. at 819, or some ______________

"exceptional basis," before a federal court properly defers

to a state court proceeding. Burns v. Watler, 931 F.2d 140, _____ ______

146 (1st Cir. 1991).

Here, given the problem with the state proceedings

we have mentioned, we cannot discern an exceptional basis

clearly favoring federal court deference. Screen's primary

argument to the district court was that to proceed in both

courts would entail a duplication of "the costs and delays of

litigation." Duplication, standing alone, is rarely an

exceptional basis that warrants a stay or dismissal of the

federal action. Rojas-Hernandez v. Puerto Rico Elec. Power _______________ ________________________

Auth., 925 F.2d 492, 496 (1st Cir. 1991). But even assuming _____

duplication were an important concern, the cure is scarcely

to abandon a viable federal forum in favor of a questionable

state one.

Nor are we impressed with Screen's argument that,

if forced to proceed in the federal action in Puerto Rico,

its state claim will be subject to dismissal because of an

Illinois procedural rule providing for dismissal "where there

is another action pending between the same parties for the

same cause." Whatever the force of this argument in some



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different factual context, we see no good reason for a

federal court to defer to a problematic state proceeding

merely because the existence of the federal case may give the

state courts some further reason to dismiss the state action.

Indeed, if Screen's argument is correctly premised, the

duplication of proceedings which worries Screen will cease.

And, of course, Screen is free to assert its claim to the

balance due under the equipment purchase agreement as a

counterclaim in the federal action, see Fed. R. Civ. P. 13. ___

We further disagree that deference should be paid

to the Illinois court simply because that court was the first

"to assume jurisdiction." It is true the Illinois case was

filed first. But soon after the Illinois case was filed, it

was dismissed for lack of personal jurisdiction, and that was

the posture of events when the federal court decided the stay

motion. In such circumstances, it is hard to understand why

the mere fact of priority in filing would be a point in favor

of a stay. To be sure, if jurisdiction were found on appeal,

the Illinois case could eventually go forward on the merits.

But in Moses H. Cone the Supreme Court indicated that the ______________

order in which jurisdiction was taken is not a mechanical

concept automatically favoring the party who files first, but

rather a concept that favors the case that is the more

advanced at the time the Colorado River balancing is being ______________

done. Moses H. Cone, 460 U.S. at 21. Courts are instructed _____________



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by the Supreme Court to measure which action the suit in

the federal court or that in the state court is the more

advanced in a "pragmatic, flexible manner, with a view to the

realities of the case at hand." Id. Here the dismissal for ___

lack of personal jurisdiction in the Illinois case made the

federal action the front-runner. Hence, having regard for

"the realities of the case at hand," the Illinois action did

not enjoy priority in time over the federal case, and the

magistrate judge erred in citing this factor as a reason for

the stay.

The magistrate judge was also impressed with the

fact that Illinois law is likely to be involved in the

present contract dispute. We will concede the expertise of

an Illinois court in its own law, and that federal law is not

in issue here, but we do not believe that this factor is

entitled to much weight for present purposes. Nothing

suggests that the parties' claims present particularly novel,

unusual or difficult questions of legal interpretation.

Federal courts are used to researching and analyzing the law

of different jurisdictions. The federal district court in

Puerto Rico will be able to apply Illinois law to the extent

required. See Gonzalez v. Cruz, 926 F.2d 1, 5 (1st Cir. ___ ________ ____

1991) ("The mere fact that the outcome of the case is

governed by state law does not warrant dismissal to hold

otherwise would undermine the purpose and reach of federal



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diversity jurisdiction."); Rojas-Hernandez, 925 F.2d at 496 _______________

(reversing a stay where the issues of state law to be

considered by the federal court were "neither unsettled nor

complex").

A further factor, which the magistrate judge did

not mention, and which strongly counsels against a stay here,

is whether the state forum can adequately protect the

parties' rights. Moses H. Cone, 460 U.S. at 26.3 Given the _____________

fact that when the district court was considering the request

for a stay, it was entirely uncertain whether the Illinois

courts had jurisdiction over the person of the defendant, the

protection available to the parties' rights in Illinois was

necessarily problematic. The Illinois court would, of

course, be as well able as the federal court to dispose of

the case if it had jurisdiction, but unless and until the

personal jurisdictional question was resolved by the

appellate court in favor of plaintiff, the utility of

Illinois as a forum remained in grave doubt.4

____________________

3. As we have previously mentioned, the Court in Moses H. _________
Cone also spoke of the need to find "that the parallel state- ____
court litigation will be an adequate vehicle for the complete
and prompt resolution of the issues between the parties."
460 U.S. at 28. Should there be doubt of this, it would be,
the Court said, "a serious abuse of discretion" to grant a
stay. Id. ___

4. We also note Screen's contention that the federal action
is vexatious and reactive. See Moses H. Cone, 460 U.S. at 17 ___ _____________
n.20; Fuller, 782 F.2d at 308-310. We do not find merit in ______
this argument. Elmendorf's action was filed two months after
Screen's, but Elmendorf waited to serve process upon Screen

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We hold, therefore, that the balance of the

Colorado River factors favored denying the stay, and ________________

certainly did not favor granting it, having regard for the

uncertain status of the Illinois litigation. The exceptional

circumstances that Colorado River calls for in order to stay ______________

or dismiss an action brought in a federal court, in favor of

proceedings in a state tribunal, were not present. The

district court should expeditiously proceed with the action.

Stay vacated and case remanded to the district court for ________________________________________________________

continued proceedings consistent herewith. Costs for _____________________________________________ ___________

appellant. _________























____________________

until after the circuit court's dismissal of the state action
for want of personal jurisdiction over Elmendorf. In these
circumstances, Elmendorf's decisions to fight jurisdiction in
Illinois and sue in its home court in Puerto Rico were not
improper tactics such as to weigh in favor of a stay.

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