United States District Court, N.D. Alabama, Southern Division
MEMORANDUM OPINION AND ORDER 
H. ENGLAND, III UNITED STATES MAGISTRATE JUDGE
March 17, 2017, Defendant Regions Financial Corporation
(“Regions”) moved for the Court to enter an order
compelling arbitration of all claims brought by Plaintiff
Emerson Software Solutions, Inc. (“Emerson”) and
staying this case. (Doc. 7). Emerson opposes the motion.
(Doc. 11). The motion is fully briefed, (docs. 7, 11, &
14), and ripe for review. For the reasons stated more fully
below, the motion is GRANTED.
Factual and Procedural Background 
and Regions have entered into several agreements in which
Regions has obtained licenses to use software produced by
Emerson. On May 24, 2004, the parties entered into a written
End Use License Agreement for Risk Management Software, under
which Emerson licensed “Risk Information Management
Software” (“RIMS”) to Regions. (Doc. 1 at
¶ 6). Emerson and Regions executed several additional
agreements related to RIMS. On October 27, 2006, the parties
entered into a Master Agreement, a Software License
Agreement, and a Software Maintenance Agreement.
(Id. at ¶ 7). The Software License Agreement
gave Regions a perpetual, royalty-free, nonexclusive license
to install, execute, and use RIMS. (Id. at ¶
8). The parties also entered into a new Software Maintenance
Agreement effective September 30, 2011, which provided that
Emerson would continue to maintain and provide technical
support for RIMS. (Id. at ¶ 9).
2010, Emerson presented a new piece of software,
“eRIMS2, ” to Regions, and the parties developed
a schedule for transitioning from RIMS to eRIMS2.
(Id. at ¶ 11). Regions began using eRIMS2 in
2012, with significant modifications requested in 2013.
(Id. at ¶¶ 10, 12). Unlike RIMS, eRIMS2 is
cloud-based (rather than server-based) and is compatible with
mobile devices; the software is also written using a
different code and has a different feature set. (Id.
at ¶ 13). Pursuant to an oral agreement between the
parties, Regions was permitted to transition from RIMS to
eRIMS2 and use eRIMS2 without paying a license fee as long as
it continued paying Emerson's maintenance and technical
support fees. (Id. at ¶ 14). No written
purchase order was submitted for eRIMS2, nor was a written
agreement ever made between the parties expressly concerning
eRIMS2. (Id. at ¶¶ 15-16).
continued to pay technical support and maintenance fees to
Emerson through September 30, 2016, and Emerson continued to
provide maintenance and technical support for eRIMS2.
(Id. at ¶ 17). However, in August 2016, Regions
verbally informed Emerson it no longer intended to use eRIMS2
after September 30, 2016. (Id. at ¶ 18).
Responding to an inquiry by Emerson, Regions informed Emerson
on September 7, 2016, that it believed it could continue to
use eRIMS2 after September 30, 2016, without paying
Emerson's technical support and maintenance fees.
(Id. at ¶ 19). Emerson responded via email,
demanding Regions cease using eRIMS2 after September 30,
2016, and return all copies of the software to Emerson on
October 1, 2016; however, Regions has retained possession of
the software and has not paid technical support or
maintenance fees for any period after September 30, 2016.
(Id. at ¶¶ 20-21).
February 22, 2017, Emerson initiated this action, alleging
claims for breach of contract, promissory estoppel,
conversion, and unjust enrichment. (Id. at
¶¶ 22-33). It seeks injunctive relief and monetary
damages. (Id.). On March 17, 2017, Regions filed the
instant motion to compel arbitration, alleging an arbitration
clause in the Master Agreement requires the matter to be
submitted to arbitration. (Doc. 7).
Federal Arbitration Act, 9 U.S.C. § 1 et seq.,
(the “FAA”), evinces “a liberal federal
policy favoring arbitration agreements.”
CompuCredit Corp. v. Greenwood, 565 U.S. 95, 98, 132
S.Ct. 665, 669, 181 L.Ed.2d 586 (2012) (quoting Moses H.
Cone Memorial Hospital v. Mercury Constr. Corp., 460
U.S. 1, 24, 103 S.Ct. 927, 74 L.Ed.2d 765 (1983)).
“Federal law establishes the enforceability of
arbitration agreements, while state law governs the
interpretation and formation of such agreements.”
Employers Ins. of Wausau v. Bright Metal Specialties,
Inc., 251 F.3d 1316, 1322 (11th Cir. 2001). Before a
court sends a claim to arbitration, it must determine (1)
whether a valid arbitration agreement exists; (2) whether it
affects interstate commerce; and (3) whether the claim falls
within the scope of the arbitration provision. See, e.g.,
Anders v. Hometown Mortg. Servs., Inc., 346 F.3d 1024,
1027 (11th Cir. 2003); Allied-Bruce Terminix Companies,
Inc. v. Dobson, 513 U.S. 265, 277 (1995). Any doubts as
to the arbitrability of a claim are resolved in favor of
coverage. International Association of Machinists and
Aerospace Workers, Seminole Lodge 971 v. United Technologies
Corp., 778 F.2d 1562, 1564 (11th Cir. 1986).
contends an arbitration provision found in the October 27,
2006 Master Agreement controls this dispute. That provision
provides in relevant part:
REGIONS AND EMERSON AGREE THAT ALL DISPUTES, CLAIMS, AND
CONTROVERSIES BETWEEN THEM, WHETHER INDIVIDUAL, JOIN, OR
CLASS IN NATURE, ARISING FROM THIS AGREEMENT OR OTHERWISE,
INCLUDING WITHOUT LIMITATION CONTRACT AND TORT DISPUTES,
SHALL BE ARBITRATED IN BIRMINGHAM, ALABAMA, PURSUANT TO THE
COMMERCIAL ARBITRATION RULES OF THE AMERICAN ARBITRATION
ASSOCIATION UPON REQUEST OF EITHER PARTY. ANY DISPUTE AS TO
WHETHER A PARTICULAR DISPUTE OR CLAIM IS SUBJECT TO
ARBITRATION UNDER THIS SECTION SHALL BE DECIDED BY
ARBITRATION IN ACCORDANCE WITH THE PROVISIONS OF THIS SECTION
. . . NOTHING IN THIS SECTION SHALL PRECLUDE ANY PARTY FROM
SEEKING EQUITABLE RELIEF FROM A COURT OF COMPETENT
JURISDICTION . . . .
(Doc. 7-1 at 19, § 14). Neither party contests the
validity of this agreement or that it affects interstate
commerce; instead, the parties dispute whether the verbal
eRIMS2 agreement falls within the scope of the Master
Agreement's arbitration provision. Regions argues the
broad language sweeps up all disputes between the parties,
whether related to the Master Agreement and RIMS or not.
(Doc. 7 at 5-6; doc. 14 at 2). Emerson contends disputes
related to eRIMS2, a separate product, are not governed by
the Master Agreement at all and, even if they are,
Emerson's claims for equitable relief may nevertheless be
pursued outside arbitration. (Doc. 11 at 2-3).
Applicability of the Master Agreement
primary argument is the Master Agreement's arbitration
clause does not apply because eRIMS2 is a distinct product
not covered by the Master Agreement, which Emerson argues
only relates to RIMS. Emerson points to several sections of the
Master Agreement to support this contention, beginning with
an introductory clause of the agreement stating
“Regions desires to utilize and receive certain
Products and Services provided by Emerson and such other
related tasks as Regions specifies, and Emerson agrees to
provide to Regions . . ., ” (doc. 7-1 at 6). Next,
Emerson highlights the Master Agreement's definition of
the capitalized term “Products”:
“‘Products' shall include,
but not be limited to, all products to be provided by Emerson
pursuant to an Order and/or that are subject to this
Agreement, ” (id. at 7, § 1.20). The term
“Order” is defined as “a purchase order,
addendum, separate agreement, or [Statement of Work subject
to the Agreement], together with this ...