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.

IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 09-10098

Summary Calendar

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

United States Court of Appeals

Fifth Circuit

F I L E D

March 11, 2009

Charles R. Fulbruge III

Clerk
No. 09-10098

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

2

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. This high 1

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
No. 09-10098

Yahoo asserts that American’s complaint implicates the forum selection clause 2

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.

3

American brought a breach of contract claim against Yahoo under the Sponsored

Search Agreement. We cannot find that the district court clearly abused its 2

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.