           IN THE UNITED STATES COURT OF APPEALS
                    FOR THE FIFTH CIRCUIT  United States Court of Appeals
                                                    Fifth Circuit

                                                 FILED
                                                                           March 11, 2009

                                     No. 09-10098                      Charles R. Fulbruge III
                                   Summary Calendar                            Clerk



In re: Yahoo! Inc; Overture Services, Inc.

                                                   Petitioners




                           Petition for Writ of Mandamus
                         to the United States District Court
                          for the Northern District of Texas
                               Case No. 4:08-cv-00626-A


Before HIGGINBOTHAM, BARKSDALE, and ELROD, Circuit Judges.
PER CURIAM:*
       American Airlines sued Yahoo! Inc. in the Northern District of Texas for
trademark, misappropriation, and tort violations alleging that when Yahoo users
type various American trademarks into Yahoo’s search engine, a list of paid
advertisements from American’s competitors appear as sponsored results on the
screen. Yahoo filed a motion to transfer venue pointing to a forum selection
clause that American and Yahoo had entered into as part of a contract, termed
the Sponsored Search Agreement, under which American pays Yahoo for
American’s website to appear as a sponsored result when certain search terms


       *
         Pursuant to 5TH CIR . R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5TH CIR .
R. 47.5.4.
                                        No. 09-10098

are entered on Yahoo’s website. The forum selection clause in the Sponsored
Search Agreement reads:
             The terms of the Agreement and any dispute relating thereto
             or between you and us will be governed by the laws of the
             State of California, without regard to conflict/choice of law
             principles. The United Nations Convention on Contracts for
             the International Sale of Goods does not apply to the
             Agreement. You agree to submit to the exclusive jurisdiction
             of the state and federal courts located in Los Angeles County
             or Santa Clara County, California, or another location
             designated by us. Any claim against us will be adjudicated on
             an individual basis and will not be consolidated in any
             proceeding with any claim or controversy of any other party.

The district court declined to transfer the action to the Northern District of
California, finding that the forum selection clause only requires American to
submit to the California forum in claims brought against it by Yahoo, that the
clause is ambiguous, and that American’s claims arise out of a relationship
completely separate from the relationship created by the Sponsored Search
Agreement that contains the forum selection clause.                     Yahoo now seeks
mandamus.
      We grant mandamus only upon a determination that there has been a
clear abuse of discretion that produces a patently erroneous result.1 This high
standard is not met in this case. We cannot fault the finding by the district court
that the forum selection clause does not apply to the type of claims asserted by
American.        American’s claims against Yahoo are based on trademark
infringement allegedly occurring through relationships between Yahoo and third
parties. The claims do not depend on the contractual relationship between
American and Yahoo, do not require interpretation of the Sponsored Search
Agreement contract, and involve different operative facts than would exist if



      1
          In re: Volkswagen of Am., Inc., 545 F.3d 304, 309 (5th Cir. 2008).

                                               2
                                       No. 09-10098

American brought a breach of contract claim against Yahoo under the Sponsored
Search Agreement.2 We cannot find that the district court clearly abused its
discretion in refusing to transfer the suit to the Northern District of California.
The high hurdle for obtaining the extraordinary writ of mandamus has not been
cleared in this case. The petition for writ of mandamus is DENIED.




       2
         Yahoo asserts that American’s complaint implicates the forum selection clause
because it requests as one element of damages the return of the fees it has paid to Yahoo
under the Sponsored Search Agreement. American requests the return of these fees on the
grounds that it was forced to enter the Sponsored Search Agreement to minimize the harm
caused by Yahoo’s trademark violations. This is one element of damages amongst ten claims
for injunctive relief and a prayer for an accounting and restitution for Yahoo’s infringements.
The district court did not err in finding that American’s suit is a trademark action unrelated
to the contract bearing the forum selection clause.

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