                             UNPUBLISHED

                   UNITED STATES COURT OF APPEALS
                       FOR THE FOURTH CIRCUIT


                             No. 09-1044


RONALD J. RILEY,

                Plaintiff – Appellant,

           v.

DOZIER INTERNET LAW, PC; JOHN DOZIER,

                Defendants – Appellees.



Appeal from the United States District Court for the Eastern
District of Virginia, at Richmond.  Henry E. Hudson, District
Judge. (3:08-cv-00642-HEH)


Argued:   January 27, 2010                 Decided:   March 24, 2010


Before WILKINSON, DUNCAN, and DAVIS, Circuit Judges.


Affirmed by unpublished opinion.   Judge Wilkinson wrote the
majority opinion, in which Judge Duncan joined.   Judge Davis
wrote a dissenting opinion.


ARGUED: Paul Alan Levy, PUBLIC CITIZEN LITIGATION GROUP,
Washington, D.C., for Appellant.  John W. Dozier, Jr., DOZIER
INTERNET LAW, PC, Glen Allen, Virginia, for Appellees.      ON
BRIEF:   Gregory   Beck,  PUBLIC  CITIZEN  LITIGATION   GROUP,
Washington, D.C., for Appellant. Donald E. Morris, Nicholas T.
Moraites, DOZIER INTERNET LAW, PC, Glen Allen, Virginia, for
Appellees.


Unpublished opinions are not binding precedent in this circuit.
WILKINSON, Circuit Judge:

       Plaintiff-appellant          Ronald          J.    Riley     (“Riley”)            commenced

this action to obtain a declaratory judgment that he was not

liable to defendants-appellees John W. Dozier, Jr. (“Dozier”)

and    Dozier       Internet     Law,        P.C.        (“DIL”)       for     defamation       or

trademark    infringement.               The    district         court       abstained        from

exercising jurisdiction and consequently dismissed the action so

that the dispute could be resolved in a pending state court

proceeding       in     which      DIL        had        sued    Riley         for       trademark

infringement.          Reviewing for abuse of discretion, we hold that

the    district        court’s     decision          to     abstain       was        within    its

discretion under Wilton v. Seven Falls Co., 515 U.S. 277 (1995)

and    Brillhart         v.     Excess       Ins.     Co.,       316     U.S.      491     (1942).

Accordingly, we affirm the judgment.



                                               I.

       Defendant       Dozier    is      a     Virginia         lawyer       and     founder    of

defendant       DIL,     a    Virginia         law       firm      that      specializes        in

intellectual property law.                   Dozier maintains a website for his

law firm at cybertriallawyer.com.                         The underlying dispute in

this case arose when plaintiff Riley, a Michigan resident and

head    of      a      nonprofit      corporation,               created           the    website

cybertriallawyer-sucks.com.                    As        the    name      of       the    website



                                                2
suggests, cybertriallawyer-sucks.com was critical of Dozier and

his law firm.

      The first lawsuit was initiated in Virginia state court on

September 4, 2008.         In that suit, DIL sued Riley for trademark

infringement,        alleging   that    Riley’s         website   infringed    on    the

name “Dozier Internet Law, P.C.,” a registered trademark with

the Commonwealth of Virginia.             In response to the state action,

on October 2, 2008, Riley filed his own lawsuit in the United

States   District      Court    for    the       Eastern   District    of    Virginia.

Riley brought the action against both Dozier personally and DIL.

In his complaint, Riley sought a declaratory judgment that his

website neither defamed Dozier nor infringed on DIL’s trademark.

Riley also sought an injunction against any future claims of

defamation or trademark infringement and damages caused by the

attempted     suppression       of     his        website,    including       “nominal

damages,” “punitive damages . . . in the amount of $1000,” and

“reasonable attorney’s fees and costs.”                    Simultaneously with the

filing   of   his     complaint,      Riley      also    attempted    to    remove   the

state court action to federal court.

      Upon motions by the defendants, the district court remanded

the   case    back    to   state     court       and    dismissed    the    case.    In

dismissing, the district court explained that even if it had

subject matter jurisdiction over the case, it “decline[d] to

adjudicate this case under the abstention doctrine established

                                             3
in Burford v. Sun Oil Co., 309 U.S. 315 (1943).” It found that

the    state    court    action      would       afford      the     parties    “timely   and

adequate       state    court     review,”           and   that     federal    adjudication

would “be disruptive of state efforts to establish a coherent

policy with respect to a matter of substantial public concern.”

       Riley    promptly     filed         a    motion     to      reconsider,    which   the

district       court    denied.            In    doing       so,     the    district   court

reiterated that even if it had jurisdiction, it “must abstain

from    exercising        jurisdiction,”              this      time    citing    Employers

Resource Management Co. v. Shannon, 65 F.3d 1126, 1134-35 (4th

Cir. 1995), a case based on the abstention doctrine of Younger

v. Harris, 401 U.S. 37 (1971).                        The district court noted that

“Virginia’s interest in adjudicating claims involving a state-

registered       trademark      is    both       clear       and    compelling,    and    the

state-court proceeding affords Plaintiff an adequate opportunity

to present his claims.”



                                                II.

       Riley    now     appeals      the       district      court’s       dismissal   order,

claiming that the court abused its discretion in abstaining.

                                                A.

       The Supreme Court held in Brillhart                           v. Excess Ins. Co.,

316 U.S. 491 (1942) and reaffirmed in Wilton v. Seven Falls Co.,

515 U.S. 277 (1995) that when a plaintiff brings a declaratory

                                                 4
judgment     action,        the     district        court        enjoys     discretion       in

deciding     whether     to       assert       jurisdiction        over    the    action     or

abstain from hearing it.             This discretion stems from the federal

Declaratory Judgment Act, which expressly provides that district

courts “may declare the rights and other legal relations of any

interested party seeking a declaration.”                           28 U.S.C. § 2201(a)

(emphasis     added).         Given       this      “nonobligatory”         language,       the

Supreme Court has explained that “[i]n the declaratory judgment

context,     the     normal        principle        that     federal        courts      should

adjudicate        claims       within          their       jurisdiction          yields      to

considerations           of         practicality             and          wise       judicial

administration.”         Wilton, 515 U.S. at 288.

     Thus,        even     when      a     court       has       jurisdiction,       it     “is

authorized, in the sound exercise of its discretion, to stay or

to dismiss an action seeking a declaratory judgment.”                             Id.     This

court has likewise recognized that “district courts have great

latitude     in    determining           whether     to    assert     jurisdiction        over

declaratory       judgment        actions.”          United       Capitol    Ins.     Co.    v.

Kapiloff,    155     F.3d     488,       493    (4th      Cir.    1998)    (citations       and

internal quotations omitted).

     Although of course not unbounded, see Volvo Const. Equip.

N. Am., Inc. v. CLM Equip. Co., 386 F.3d 581, 594 (4th Cir.

2004),   a   district         court’s      discretion        “is     especially      crucial

when, as here, a parallel or related proceeding is pending in

                                                5
state    court.”        New    Wellington          Fin.    Corp.     v.    Flagship    Resort

Develop. Corp., 416 F.3d 290, 297 (4th Cir. 2005).                                    In such

cases,    district       courts       have         “wide     discretion”       to     decline

jurisdiction.          See Centennial Life Ins. Co. v. Poston, 88 F.3d

255, 257 (4th Cir. 1996).

     The Supreme Court and this court have provided district

courts    with     general         guidelines        to     aid      their     exercise    of

discretion.        Broadly speaking, when deciding whether or not to

stay or dismiss a declaratory judgment action when there is a

related proceeding underway in state court, a district court

should determine whether the controversy “can better be settled

in the proceeding pending in the state court.”                              Wilton v. Seven

Falls    Co.,    515    U.S.    277,    282        (1995)        (citation    and   internal

quotations omitted).            This requires the district court to weigh

principles       of     “federalism,           efficiency,           and      comity      that

traditionally      inform      a     federal       court’s       discretionary      decision

whether to abstain from exercising jurisdiction over state-law

claims in the face of parallel litigation in the state courts.”

Nautilis Ins. Co. v. Winchester Homes, Inc., 15 F.3d 371, 376

(4th Cir. 1994).              In making these determinations, a district

court    must      strive       to     avoid        “indulging         in     ‘[g]ratuitous

interference,’          [by]       permitt[ing]            the     federal      declaratory

judgment action to proceed.”                 Wilton, 515 U.S. at 283 (citation

omitted).

                                               6
       To further assist a district court in balancing the state

and federal interests at stake in such a decision, this court

has    articulated     four      factors         (the    “Kapiloff     factors”)   for

consideration.       United Capitol Ins. Co. v. Kapiloff, 155 F.3d

488, 493-94 (4th Cir. 1998) (citing Nautilis, 15 F.3d at 377).

A district court should consider:

       (1) whether the state has a strong interest in having
       the issues decided in its courts; (2) whether the
       state courts could resolve the issues more efficiently
       than the federal courts; (3) whether the presence of
       “overlapping issues of fact or law” might create
       unnecessary “entanglement” between the state and
       federal courts; and (4) whether the federal action is
       mere “procedural fencing,” in the sense that the
       action is merely the product of forum-shopping.

Kapiloff, 155 F.3d at 493-94.

                                            B.

       When a district court abstains from hearing a declaratory

judgment action in favor of a parallel state court proceeding,

we    must   be   careful   on     appeal       to   apply     the   Kapiloff   factors

deferentially, “because facts bearing on the usefulness of the

declaratory judgment remedy, and the fitness of the case for

resolution, are peculiarly within [the district court’s] grasp.”

Wilton, 515 U.S. at 289; see also S.C. Dep’t of Health & Envtl.

Control v. Commerce & Indus. Ins. Co., 372 F.3d 245, 260 (4th

Cir. 2004).

       In this case, we cannot say that the district court abused

its    discretion    when     it    abstained           from   entertaining     Riley’s

                                            7
request for declaratory relief and instead allowed the dispute

to    proceed       in   the   related     suit   already    underway     in     Virginia

state court.             The district court’s ruling was well within the

discretion          recognized   by     the   Supreme     Court   in    Brillhart        and

Wilton. 1

       It was likewise consistent with an application of the four

Kapiloff factors to the facts of this case.                         First, Virginia

“has       a   strong    interest     in   having   the    issues      decided      in   its

courts.”         See Kapiloff, 155 F.3d at 493-94.                This case requires

a determination of the liability of a Virginia resident and a

Virginia law firm, involves intellectual property registered in

Virginia, and demands an application of Virginia trademark law.

Cf. New Wellington Fin. Corp. v. Flagship Resort Develop. Corp.,

416 F.3d 290, 297 (4th Cir. 2005).                   Depending on how the legal

claims unfold, the questions of state law at issue may well be

“difficult, complex, or unsettled,” see Great Am. Ins. Co. v.

Gross, 468 F.3d 199, 211 (4th Cir. 2006), and a federal court

“should not elbow its way into this controversy to render what

may    be      an   ‘uncertain    and      ephemeral’     interpretation       of    state

law.”          Mitcheson v. Harris, 955 F.2d 235, 238 (4th Cir. 1992)


       1
       The fact that the district court varied in its abstention
rationales is of no moment, because its ultimate decision was a
sound one which we may affirm on alternate grounds. See Skipper
v. French, 130 F.3d 603, 610 (4th Cir. 1997).



                                              8
(citation omitted).         Indeed, as the district court in this case

found, “Virginia’s interest in adjudicating claims involving a

state-registered trademark is both clear and compelling,” and

federal adjudication would “be disruptive of state efforts to

establish     a   coherent     policy      with   respect    to   a    matter   of

substantial public concern.”

       Second, the Virginia state court could likely “resolve the

issues more efficiently” than this court.                   See Kapiloff, 155

F.3d at 493-94.       As a general rule, “the first suit should have

priority, absent the showing of balance of convenience in favor

of the second action.”          Ellicott Mach. Corp. v. Modern Welding

Co.,    502   F.2d   178,     180   n.2    (4th   Cir.    1974)   (citation     and

internal quotations omitted).              Here, the state suit was filed

before the federal suit.            The state proceeding is also further

along than the federal action.                This court’s interference with

the    pending    state     court   proceeding      would   therefore     produce

inefficiencies       by   needlessly      duplicating     efforts,     generating

piecemeal litigation, and expending limited judicial resources.

       Third, the Virginia state court proceeding and this federal

court proceeding involve “overlapping issues of fact [and] law,”

see Kapiloff, 155 F.3d at 493-94, because both cases center on

an identical core question:               Does Riley’s website infringe on

DIL’s   trademark     under    Virginia       trademark   law?    If   the   state

court and this court were to simultaneously find facts related

                                          9
to   alleged    trademark    infringement     and     make   pronouncements      on

Virginia trademark law, the common issues involved here could

easily result in an “unnecessary ‘entanglement’” between the two

tribunals.     See id.

      Entanglement is all the more likely where, as here, common

issues “are already being litigated by the same parties in the

related stat court action[].”             Nautilis Ins. Co. v. Winchester

Homes, Inc., 15 F.3d 371, 379 (4th Cir. 1994).                   In such cases,

there is a real risk that the state court’s prior resolution of

overlapping     issues    would    entitle    those    issues    to    preclusive

effect, thereby “frustrat[ing] the orderly progress of the []

proceedings by leaving . . . some parts of [the] case foreclosed

from further examination but still other parts in need of full

scale resolution.”        Id. at 377 (citation and internal quotations

omitted).

      Fourth,    the     final    Kapiloff    factor    weighs    in    favor   of

abstention insofar as Riley’s federal suit appears to be “mere

‘procedural     fencing.’”         See   Kapiloff,     155   F.3d      at   493-94.

Procedural fencing occurs when, as in this case, “a party has

raced to federal court in an effort to get certain issues that

are already pending before the state courts resolved first in a

more favorable forum.”           Great Am. Ins. Co. v. Gross, 468 F.3d

199, 212 (4th Cir. 2006).           Here, DIL sued Riley in state court,

but he did not want to be in state court.               So Riley brought his

                                         10
own suit in federal court, requesting a declaration that he was

not liable to DIL in state court.                  Such conduct is the sort of

forum-shopping against which abstention seeks to guard.

        Of course, a defendant is not powerless to influence the

forum that will determine his liability, and in this case, Riley

had the right to remove the state court action to federal court.

However, removal is the appropriate avenue into federal court,

and a declaratory judgment action may not be used “to achiev[e]

a federal hearing in a case otherwise not removable.”                       Nautilus,

15 F.3d at 377 (citation and internal quotations omitted).                         That

is precisely what happened here.                  The declaratory plaintiff did

try -- unsuccessfully -- to remove the case, and the district

court       remanded    the   case   back    to    state     court.      Because    the

federal       removal    statute     forecloses      Riley    from     appealing    the

district court’s remand order, see 28 U.S.C. § 1447(d), he is

now     attempting       to   get    into    federal     court    through    a     side

entrance,       by     contesting    and     appealing     the   district    court’s

dismissal of his declaratory judgment action.                         This attempted

end-run       around    the   removal       statutes   is     strong    evidence     of

“procedural fencing” and further weighs in favor of abstention. 2


        2
        Riley contends that the discretionary standard of
Brillhart/Wilton is inapplicable to his requests for an
injunction and for monetary damages.    However, the perfunctory
inclusion of nondeclaratory requests for relief does not suffice
to remove a plaintiff from the ambit of the Brillhart/Wilton
(Continued)
                                            11
                                         C.

       With all respect to our fine colleague in this case, we

cannot endorse the dissent’s approach or accept the effects that

would flow from it.           First, the dissent’s view would lead to

sprawling       litigation    in   multiple    forums      and   contravene    the

Declaratory Judgment Act.             The dissent does not even believe

Riley was sued in state court for a violation of the Lanham Act.

But it nonetheless believes that this court should reverse the

trial   court’s     discretionary     dismissal      and   essentially   require

the district court to declare Riley’s rights under that statute.

       Such a claim is troublesome.           As the Supreme Court has only

recently held in MedImmune, Inc. v. Genentech, Inc., 549 U.S.

118,    136   (2007),    a    district   court’s     jurisdiction     under    the

Declaratory Judgment Act is unquestionably discretionary.                       In

case    there    were   any   doubt   about    the   continuing     vitality   of

Wilton and Brillhart, the Supreme Court has put that doubt to

rest, reiterating what we ourselves have emphasized: that the

Declaratory Judgment Act “confer[s] on federal courts unique and

substantial discretion in deciding whether to declare the rights



rule.    A declaratory judgment plaintiff may not convert a
district     court’s     discretionary      jurisdiction   under
Brillhart/Wilton   into  nearly   mandatory   jurisdiction under
Colorado River Water Conservation District v. United States, 424
U.S. 800, 813, 817 (1976), simply by tossing in dependent or
boilerplate nondeclaratory requests.



                                         12
of litigants.”        Id. (citations and internal quotations omitted).

Moreover, the Court noted that district courts play a critical

role   in   this     regard,     emphasizing,       yet    again,         that   the   act

“vest[s] district courts with discretion in the first instance,

because     facts    bearing     on   the    usefulness        of    the    declaratory

judgment remedy, and the fitness of the case for resolution, are

peculiarly    within     their    grasp.”          Id.    (citation        and   internal

citations omitted).

       The dissent in fact declines to allow district courts to do

what the Supreme Court has said they are uniquely positioned to

do:    evaluate “the equitable, prudential, and policy arguments

in favor of such a discretionary dismissal.”                        Id.     The Supreme

Court made these statements, no less, in a declaratory judgment

action concerning intellectual property rights.                       See id. at 120.

By clearing the way for litigants to subvert pending state court

proceedings by doing little more than positing a federal law

under which they would like to be declared non-liable, we risk

“turn[ing]     into     the      federal         courts    a     vast       current    of

litigation.”        See Skelly Oil Co. v. Phillips Petroleum Co., 339

U.S. 667, 673 (1950).

       The proper route into federal court is under the removal

statutes --     not    by   a   collateral        attack    on      state   proceedings

under the Declaratory Judgment Act.                  When a federal court has

subject matter jurisdiction over a suit brought in state court,

                                            13
a   state   court     defendant     may    remove    the     case,   guided       by    the

comprehensive scheme Congress set out in the removal statutes.

When,   however,      a   state    court       defendant    bypasses       the    removal

mechanism and instead uses the Declaratory Judgment Act as his

ticket into federal court, a district court is entitled to take

that    very   fact    into    account     in     deciding    whether       or    not   to

abstain.

       We cannot agree with our colleague that the existence of

federal jurisdiction somehow nullifies or diminishes a district

court’s discretion in a declaratory action to abstain.                            To the

contrary, the question of jurisdiction is analytically distinct

from that of abstention, and indeed, is always a prerequisite to

an abstention analysis.            Thus, even in cases involving federal

law, “[t]he Declaratory Judgment Act [i]s an authorization, not

a command.      It g[ives] the federal courts competence to make a

declaration of rights; it d[oes] not impose a duty to do so.”

Pub.    Affairs     Assocs.,      Inc.    v.    Rickover,     369    U.S.    111,       112

(1962).     Whether or not appellant is correct to suggest that the

district court in this case would not have been prohibited from

asserting      jurisdiction,       we     cannot    conclude        that    the    trial




                                           14
court’s    discretion      was   so   constrained     in   these    circumstances

that it was required to exercise jurisdiction. 3

     As    a     final    matter,     we    cannot    subscribe    to    our   good

colleague’s conception of the proper relationship between state

and federal courts.         Whatever discretion a district court has to

abstain in a declaratory judgment action, that discretion can

only be enhanced when there is a related proceeding pending in

state court.       See New Wellington Fin. Corp. v. Flagship Resort

Develop. Corp., 416 F.3d 290, 297 (4th Cir. 2005); Centennial

Life Ins. Co. v. Poston, 88 F.3d 255, 257 (4th Cir. 1996).                     The

mere presence of a federal question in a declaratory suit does

not somehow extinguish Virginia’s interest in deciding a matter

that was first filed in the state system.                  Such a view would be

damaging    to    state    courts,     which,    of    course,     are   perfectly

competent to decide issues of federal law.                   As the Eighth and

     3
       The circuit court cases cited by the dissent are relevant
only to the separate issue of jurisdiction and not to the issue
of abstention.    In fact, two of those cases found that the
district court was entitled to exercise its discretion to
dismiss the declaratory judgment action.    See Surefoot, LC v.
Sure Foot Corp., 531 F.3d 1236, 1248 (10th Cir. 2008); McGraw-
Edison Co. v. Preformed Line Prods. Co., 362 F.2d 339, 344-45
(9th Cir. 1966).    And in other cases, the courts disallowed
discretionary dismissal under very different circumstances. See
Rhoades v. Avon Prods., Inc., 504 F.3d 1151, 1162, 1165 n.14
(9th Cir. 2007) (reversing dismissal order made on primary
jurisdiction grounds); PHC, Inc. v. Pioneer Healthcare, Inc., 75
F.3d 75, 81 (1st Cir. 1996) (reversing dismissal order made on
primary jurisdiction grounds as to Count I but allowing
discretionary dismissal as to Count II).



                                           15
Eleventh    Circuits           have   noted,        state   courts        have    concurrent

jurisdiction     under          the   Lanham        Act,    see     Alpharma,       Inc.    v.

Pennfield Oil Co., 411 F.3d 934, 938 (8th Cir. 2005); Aquatherm

Indus., Inc. v. Fla. Power & Light Co., 84 F.3d 1388, 1394 (11th

Cir. 1996), and, indeed, there are literally hundreds of state

court    cases   adjudicating          Lanham        Act    claims.         Thus,    Riley’s

request for a declaration of non-liability under federal law,

made    alongside     a    request       for    a    declaration      of     non-liability

under    Virginia         law,    does     not       render       Wilton    and     Kapiloff

inapplicable:       Virginia continues to have a strong interest in

resolving the state law issues; the Virginia court’s head-start

still    gives   it       an     efficiency         advantage;      overlapping       issues

continue to present a likelihood of “entanglement”; and evidence

of “procedural fencing” remains.

       Rather than vest the district court with the discretion to

which it is entitled, the dissent would offer, as a consolation

prize, the opportunity for it to exercise its discretion whether

to stay proceedings in this case pending the resolution of the

state action under Front Royal & Warren County Indus. Park Corp.

v. Town of Front Royal, 945 F.2d 760 (4th Cir. 1991).                                  Front

Royal, however, is inapplicable here.                         It did not address a

district    court’s        authority      to     dismiss      a    case    either    in    the

context of a declaratory judgment action or in the context of



                                               16
state court proceedings already initiated and underway.                              Id. at

765.



                                              III.

       We    hold      only   that    the    district       court     had    discretion   to

abstain      here       and   did    not    in    these      circumstances      abuse     its

discretion in doing so.                   A peremptory reversal of the district

court on these facts would entail serious risks, which we think

it inadvisable to incur.                   Among other things, such a reversal

would       rob    Brillhart        and     Wilton     of    any    meaningful       effect;

encourage collateral attacks upon state court proceedings under

the Declaratory Judgment Act, even where the state proceedings

presented only questions of state law; circumvent the removal

statutes;         undermine    the        purpose     of    federal    non-appealability

provisions with respect to remands; encourage gamesmanship by

litigants         in     multiple     forums,         preliminary       to     any   merits

resolution of their cases; and deny district courts the ability

to assess the variable facts and circumstances that arise in

these cases and that guide the sound exercise of trial court

discretion.            For all of the foregoing reasons, the judgment of

the district court is hereby

                                                                                 AFFIRMED.




                                                 17
DAVIS, Circuit Judge, dissenting:

        The majority states, “The dissent does not even believe

Riley was sued in state court for a violation of the Lanham

Act.” Maj. Op. at 13. To the contrary, I absolutely do believe,

despite      Dozier’s   best     efforts     to   disguise    it,   that   Dozier

asserted a Lanham Act claim in his state court complaint. 1 Dozier

will be surprised to learn that the entire panel rejects his

contention that he did not assert a Lanham Act claim in his

state       court   complaint.    See   Maj.      Op.   at   17   (“[T]here   are

literally hundreds of state court cases adjudicating Lanham Act

claims.”). 2 This is because Dozier has unremittingly insisted

that he did not assert a federal law claim in his state court

complaint. See Mem. in Supp. Mot. to Remand (Docket No. 13),

        1
       The complaint Dozier filed in state court in Virginia did
not expressly invoke the Lanham Act and Dozier purported to
assert only claims for “statutory and common law” trademark
infringement, citing no specific statutory basis —- federal or
state -- for the “statutory” claim. As the majority’s allusion
to “hundreds of state court cases adjudicating Lanham Act
claims” shows, however, he in fact alleged all the elements of a
federal claim in his state court complaint, and his failure to
cite to the federal statute is not dispositive. See Albert v.
Carovano, 851 F.2d 561, 571 n.3 (2d Cir. 1988) (“The failure in
a complaint to cite a statute, or to cite the correct one, in no
way affects the merits of a claim. Factual allegations alone are
what matters.”). Riley properly removed the state case on the
basis of federal question jurisdiction.
        2
        Of course, this statement confirms that we are in
agreement that Dozier stated a federal claim in his state court
complaint. And, Congress knows how to preclude removal of a
federal claim when it wishes to do so. See 28 U.S.C. § 1445(a).



                                        18
Dozier       Internet     Law,       P.C.     v.    Riley,        Civil      No.    3:08cv0643

(HEH)(E.D.Va.) (“[Dozier] has asserted only a state trademark

claim and does not possess any federally registered trademark.

As     such,    this     Court       would     lack       jurisdiction.”);          see    also

Appellee’s      Br.     at    1-2    (“Despite          Riley’s     repeated       contentions

that [Dozier]          had    stated       claims       [in   the    state    court   action]

under ‘federal law,’ [he] has not.”) (alterations added).

       Similarly,        Dozier      asserts        here,      quite      remarkably,      that

Riley did not allege a federal claim under the Lanham Act in

this case. See Appellee’s Br. at 1 (“The Trial Court Correctly

Held That There Was No Federal Question At Issue”); id. at 2

(“Riley refers to one letter [written by Dozier] and alleges

that    the    language       implicitly          invokes     federal      law     because   it

mentions the words “contributory trademark infringement. . . .

This is not so.”); id. at 4 (“Under any interpretation of the

facts and applicable law, the Court below correctly held that no

federal       question       was    present       and    as   such      prudently     declined

jurisdiction on this ground.”). This alleged lack of a federal

claim was the very basis upon which Dozier prevailed in the

district court in persuading the district court to remand the

state court action and to dismiss this action. Yet, the majority

rummages through its treasure chest of abstention doctrines to

find     a     basis     on        which     to     affirm        the     district        court.

Respectfully, I dissent.

                                               19
                                       I.

     This case presents a dust-up over the operation of on-line

“gripe sites” aimed at Dozier, a Virginia lawyer, by Riley, a

self-professed Michigan entrepreneur. Dozier delivered somewhat

over-heated     complaint       letters          to   Riley’s     Internet       Service

Providers    (“ISPs”)     threatening        legal     action     against    them      for

alleged libelous material and trademark infringement appearing

on   these    “gripe    sites.”       Accompanying          the   letters    was       the

Virginia state court complaint that Dozier had filed against

Riley for trademark infringement, seeking damages and injunctive

relief. Dozier pointedly limited his damages claim to less than

the $75,000 jurisdictional amount for diversity of citizenship

jurisdiction. He also sought to allege his “statutory” trademark

infringement    claim     in    a   sufficiently        vague     manner    so    as   to

defeat removal on the basis of federal question jurisdiction,

i.e., as if the claim arose solely under Virginia law. See supra

note 1.

     Notably, Dozier delayed serving process in the state court

action, no doubt in an effort to impede removal of the case to

federal court by Riley. Nevertheless, when Riley obtained a copy

of the unserved state court complaint from one of his ISPs, he

filed a timely notice of removal and removed the case to the

United    States     District       Court    for      the    Eastern    District       of

Virginia.    Given     Dozier’s     transparent        attempt     to   disguise       his

                                            20
Lanham    Act       claim,         Dozier     filed    this       contemporaneous         original

action    as    a     protective         step    to    respond       to    Dozier’s       apparent

cunning.       With       respect,       in    its     criticism       of    Riley       for    both

removing the state case and filing this protective action, the

majority mistakes good lawyering for “procedural fencing.”

      Both      actions        were     assigned       to     the    same    district       judge.

Dozier    moved          to   (1)     remand     the    removed       action       for    lack    of

subject matter jurisdiction and (2) dismiss this action for lack

of subject matter jurisdiction or, in the alternative, abstain.

Riley    argued          in    the    removed     case       that    federal       jurisdiction

existed on the basis of diversity of jurisdiction, insisting

that the facile limitation in Dozier’s ad damnum clause should

not obscure the fact that the amount in controversy, including,

inter    alia,       the       value     of    the     injunction         sought    by     Dozier,

clearly exceeded the jurisdictional minimum. Riley also argued

that federal question jurisdiction existed based on the Lanham

Act   claim.        In    this       case,     Riley    similarly         argued    that       there

clearly      existed           federal        question       jurisdiction          as    well    as

diversity of citizenship jurisdiction.

      Beguiled by Dozier, the district court stumbled into three

legally    erroneous               conclusions:       (1)    the     state       case    was    non-

removable       under         28    U.S.C.     § 1441       for    lack     of   the     requisite

amount in controversy and for lack of a federal claim; (2) the

instant case likewise did not satisfy the amount in controversy

                                                 21
requirement and did not present a federal question; and finally,

as a seeming afterthought, mentioned only in a footnote, (3)

under Burford v. Sun Oil Co., 319 U.S. 315 (1943), abstention

was appropriate even “assuming” there is federal subject matter

jurisdiction. 3 Thus, in brief orders, the district court remanded

the state case, dismissed this case, and denied a motion for

reconsideration. 4

     Of course, the district court’s erroneous remand of the

removed case is unreviewable in this court. See 28 U.S.C. §

1447(d) (“An order remanding a case to the State court from

which it was removed is not reviewable on appeal or otherwise”).



     3
         In  “assuming”   the   existence  of   subject   matter
jurisdiction, the district court seems clearly to have assumed
diversity of citizenship subject matter jurisdiction rather than
federal question subject matter jurisdiction. See J.A. 261
(“Even assuming that the amount in controversy in this case
exceeds $75,000, the Court must abstain from exercising
jurisdiction over Plaintiff’s claims.”) (emphasis added). See
also infra n. 5.
     4
       Strikingly, in keeping with its view that it lacked
subject matter jurisdiction, the district court stated that it
“must . . . decline to adjudicate this case” under Burford.
J.A. 208 (emphasis added). Thus, it is highly questionable
whether the district court engaged in an actual exercise of
discretion. A failure to exercise discretion may be treated as
an error of law and reviewed de novo. E.g., Garrett v. City and
County of San Francisco, 818 F.2d 1515, 1518 n.3 (9th Cir. 1987)
(“Because the district court did not exercise its discretion,
the issue of whether or not it should have presents a legal
question which is subject to de novo review.”); Iglesias v.
Mukasey, 540 F.3d 528, 531 (7th Cir. 2008); Richmond v. Brooks,
227 F.2d 490, 492 (2d Cir. 1955).



                               22
Rather than accepting defeat quietly and fighting things out

with   Dozier    in   state   court   (where,    as    of   the   time    of   oral

argument in this case, there had been no progress whatsoever,

and where there will likely be extensive proceedings regarding

personal jurisdiction over Riley, a Michigan citizen), Riley has

invited    our   appellate     review    of    the    machinations       described

above.

       Clearly, it is only because Dozier acted so strenuously to

defeat the removal of what was clearly a removable case within

the subject matter jurisdiction of the federal courts, as the

majority now attests, that Riley has found it necessary to jump

through so many hoops. Nevertheless, I accept (as I must) the

non-reviewability of the district court’s remand of the state

court action. But, unlike the majority, I would not give Dozier

a windfall by affirming on an “alternative ground” the erroneous

dismissal of this case on the ground of lack of subject matter

jurisdiction. In its cursory afterthought, the district court

purported to dismiss the case, in the alternative, on the ground

of “abstention” under an abstention doctrine, see Burford, that

the majority correctly abjures. Still, the majority rescues the

district    court’s     erroneous     ruling    by    substituting       its    own

version of “discretion” for the district court’s erroneous legal

determination.



                                        23
                                            II.

      Tellingly,         the    majority’s        opinion       does     not      forthrightly

address the district court’s primary reason for dismissing this

case – lack of subject matter jurisdiction. The district court

erred in dismissing the case because the complaint sufficiently

pled a federal question. Moreover, the district court did not

commit    a    mere     “abuse    of   discretion”             in   declining       to   assert

jurisdiction       over    Riley’s      request          for    declaratory         relief     on

Burford abstention; it committed legal error. See supra nn. 4 &

5.

                                              A.

      As grudgingly as the majority quietly concedes the point,

let it be clear that there is federal question jurisdiction in

this case based on the Lanham Act, just as there was federal

question removal jurisdiction in the remanded case. Gully v.

First Nat'l Bank, 299 U.S. 109, 112-13 (1936) (“[A] right or

immunity       created    by     the   Constitution            or   laws    of     the   United

States    must     be     an    element,      and    an        essential       one,      of   the

plaintiff's cause of action.”); Louisville & Nashville R.R. Co.

v. Mottley, 211 U.S. 149, 152 (1908); King v. Marriott Int’l,

Inc.,    337    F.3d     421,    424   (4th       Cir.    2003)      (quoting       Taylor     v.

Anderson, 234 U.S. 74, 75-76 (1914)).                      As       we     have     previously

stated, “[i]njunctive relief is available under the Lanham Act

in   proper     circumstances,         15    U.S.C.       §     1116,      and     declaratory

                                              24
relief    is    available      under      the    Declaratory      Judgment   Act,    28

U.S.C. § 2201.” Gibraltar, P.R., Inc. v. Otoki Group, 104 F.3d

616, 618 (4th Cir. 1997) (Wilkinson, J.). A declaratory judgment

plaintiff need only show a “reasonable apprehension” of being

sued for infringement under the Lanham Act in order to invoke

federal jurisdiction. J. Thomas McCarthy, McCarthy on Trademarks

and   Unfair     Competition        §    32:51    (4th   ed.     2010)   (hereinafter

McCarthy).

      Here, Riley’s complaint has sufficiently pled a cause of

action under the Lanham Act. Paragraph 2 of the complaint, which

includes the statement of jurisdiction, invokes the Lanham Act,

15 U.S.C. § 1121. J.A. 4. In fact, during oral argument, Dozier

admitted that he had registered the name “Dozier Internet Law,

P.C.” with the United States Patent and Trademark Office (“the

USPTO”).       This   name     is       trademarked      under    Registration      No.

3575012. Dozier filed the application on January 28, 2008, and

the mark was registered on February 17, 2009. Although Riley

filed    the    present      suit   before       Dozier’s   mark    was   officially

registered (but after Dozier filed the application), Dozier’s

current ownership of a federal trademark sufficiently creates a

threat of a federal suit, thereby satisfying the requirements of




                                            25
the Declaratory Judgment Act. 5 Even if it were true that Dozier

has not sued Riley under federal law,

     The purpose of declaratory judgment is to afford an
     added remedy to one who is uncertain of his rights and
     who desires an early adjudication thereof without
     having to wait until his adversary should decide to
     bring suit, and to act at his peril in the interim.
     The   purpose  of  federal  declaratory   judgment  in
     trademark cases is almost identical to that in patent
     cases, where declaratory judgment litigation is quite
     common.

McCarthy § 32:50 (citing McGraw-Edison Co. v. Preformed Line

Products Co., 362 F.2d 339 (9th Cir. 1966), cert. denied, 385

U.S. 919 (1966) (patent case)). With this in mind, the Second

Circuit    has    found   an   actual     controversy      even    though   the

defendant’s      CFO   testified   that   his   company     had    no   present

intentions to file a federal trademark infringement suit against

the declaratory judgment plaintiff. Starter Corp. v. Converse,

Inc., 84 F.3d 592 (2d Cir. 1996).

     Our sister circuits have also reversed district courts that

have dismissed trademark declaratory judgment actions where the

plaintiffs had reasonable apprehension of being sued. See, e.g.,

Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007)

(finding   sufficient     apprehension     of   imminent    suit    after   the

     5
       The First Circuit has even held that a cease and desist
letter from the owner of an unregistered mark that mentions only
state – not federal – law, sufficiently creates a reasonable
apprehension of suit of infringement under the Lanham Act. PHC,
Inc. v. Pioneer Healthcare, 75 F.3d 75 (1st Cir. 1996).



                                     26
party seeking trademark registration with the USPTO made threats

of    litigation   on   the    heels      of    unsuccessful        negotiations);

Surefoot, LC v. Sure Foot Corp., 531 F.3d 1236 (10th Cir. 2008)

(finding sufficient apprehension of imminent suit after owner of

trademark     repeatedly      accused     infringement        and     occasionally

threatened litigation).

      Here,   Riley’s    situation      was     more   perilous,      inasmuch   as

Dozier had already (1) threatened Riley’s ISPs with litigation

and (2) Dozier had filed a trademark infringement suit against

Riley for prior versions of the same website. 6 Indisputably,

Riley properly brought suit for declaratory judgment of non-

infringement under the Lanham Act in the Eastern District of

Virginia. Thus, the district court erred in dismissing this case

based on lack of jurisdiction.

                                     B.

      The district court also committed legal error in grounding

its   dismissal    in   Burford   abstention.          The   majority    does    not

dispute this. Contrary to the majority’s elastic application of

the    Kapiloff    factors,     which     are    particularly        relevant    in


      6
       The parties conceded during oral argument that Riley’s
declaratory judgment action asserted here does not deal with the
same websites at issue in the Virginia case, and that Dozier is
a party in his individual capacity in this case but not in the
state case. Manifestly, the similarities between the two cases
are not nearly as overlapping as the majority suggests.



                                        27
diversity cases as “guideposts” for the exercise of a district

court’s discretion, see 155 F.3d at 493-94, this case presents

substantial federal claims. 7 Under the circumstances here, we

should hew to our long-held view that “[a]bstention remains the

exception     and     the      exercise        of   congressionally            mandated

jurisdiction remains the rule.” Johnson v. Collins Entm't Co.,

199   F.3d    710,    722   (4th    Cir.        1999)      (Wilkinson,     J.).      The

majority’s    rescue    mission    is     undertaken        in    the   face    of   the

Supreme     Court’s    clear    recognition         that     a    district     court’s

exercise     of     discretion     to      abstain         from    adjudicating        a

declaratory judgment action in a federal question case may well

involve special considerations not fully captured by Brillhart

and Wilton:

      [W]e conclude that Brillhart v. Excess Ins. Co. of
      America, 316 U.S. 491, 62 S.Ct. 1173, 86 L.Ed. 1620
      (1942), governs this declaratory judgment action and
      that district courts’ decisions about the propriety of
      hearing   declaratory  judgment  actions,   which  are
      necessarily bound up with their decisions about the
      propriety of granting declaratory relief, should be
      reviewed for abuse of discretion. We do not attempt at
      this time to delineate the outer boundaries of that
      discretion in other cases, for example, cases raising
      issues of federal law or cases in which there are no
      parallel state proceedings.




      7
       The cases cited by the majority in which the Kapiloff
criteria are applied and abstention was sustained are diversity
cases. See, e.g., New Willington, 416 F.3d at 292; Centennial
Life, 88 F.3d at 256.



                                          28
Wilton, 515 U.S. at 289-90 (emphasis and alteration added). I

would not get out ahead of the Supreme Court as the majority

does here.



                                 III.

     I recognize that the disposition here is nonprecedential

under our rules. Still, I fear that we provide an incentive to

counsel seeking abstention to cite to the district courts the

full panoply of abstention doctrines in any case. 8 Thereafter,

having been provided with the full menu, a district court can

make a selection, whether or not correct under settled law, and

counsel can defend a ruling to abstain by offering this court

the opportunity to select whatever abstention doctrine fits the

court’s fancy. Kapiloff abstention, in particular, unmoored from

the considerations which animated its creation in the context of

insurance coverage disputes arising in diversity of citizenship

cases, will surely become known as “Catch-all Abstention.”

         I would reverse and remand this case to the district court

to afford it an opportunity to exercise an informed discretion,

that is, with an understanding that federal jurisdiction here is

     8
       See generally Railroad Comm'n v. Pullman Co., 312 U.S. 496
(1941); Burford v. Sun Oil Co., 319 U.S. 315 (1943); Colorado
River Water Conser. Dist. v. United States, 424 U.S. 800 (1976);
Younger v. Harris, 401 U.S. 37 (1971); and United Capitol Ins.
Co. v. Kapiloff, 155 F.3d 488, 493 (4th Cir. 1998).



                                  29
not doubtful, and to permit it to apply its discretion whether

to   stay     rather      than     dismiss    this   case    pending   further

proceedings    in   the    state    action.   Cf.,   e.g.,   Front   Royal   and

Warren County Indus. Park Corp. v. Town of Front Royal, 945 F.2d

760 (4th Cir. 1991), cert. denied, 503 U.S. 937 (1992).




                                        30
