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finding that convenience of witnesses weighed against transfer because movant "failed to supply the Court with any list, detailed or otherwise," of witnesses inconvenienced by the current forum
Summary of this case from E. Mishan & Sons, Inc. v. Smart & Eazy Corp.Opinion
02 Civ. 2645 (RCC)
September 29, 2003
OPINION AND ORDER
I. BACKGROUND
On April 5, 2002, Kiss My Face Corp. ("Plaintiff) filed a complaint alleging trademark infringement resulting from Nancy Hall Bunting's, d/b/a Kiss My Feet ("Defendant's") production and marketing of hand painted sandals, t-shirts and nail polish. Plaintiff, a New York corporation with its principle place of business in Gardiner, New York, designs and distributes cosmetic products and other related clothing items such as t-shirts and hats. (See Dkt. No. 1: Compl. ¶ 2.) Defendant's principle place of business is Nashville, Tennessee, where she employs six full-time workers and conducts part of her business via an internet website. (Id. ¶ 3; Dkt. No. 8: Decl. of Nancy Hall Bunting ¶ 2-4.) The case is now before the Court on Defendant's motion to transfer to the United States District Court for the Middle District of Tennessee. As set forth below, Defendant's motion is DENIED.
This action, originally assigned to Judge Whitman Knapp, was subsequently reassigned to this Court. (See Dkt. No. 11) The Court notes that it has reviewed the June 27, 2002 and July 1, 2002 letters previously submitted to Judge Knapp concerning Plaintiffs request for oral argument. Having done so, the Court determined oral argument on this matter was not necessary.
Plaintiff alleges three causes of action in its complaint. First, Plaintiff alleges violations under section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), for federal trademark infringement. Second, Plaintiff # asserts a claim for false designation of origin in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Finally, Plaintiff asserts a common law claim for unfair competition by misappropriating the goodwill of Plaintiffs mark.
II. DISCUSSION
Section 1404(a) provides that "[f]or the convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district court where it might have been brought." 28 U.S.C. § 1404(a); see also Pergo, Inc. v. Alloc, Inc., 262 F. Supp.2d 122, 129 (S.D.N.Y. 2003); NBA Props. Inc. v. Salvino, Inc., 2000 U.S. Dist. LEXIS 3799, at *7 (S.D.N.Y. Mar. 27, 2000). On such a motion, the moving party bears a heavy burden to establish that the interests of convenience and fairness will be better served by transfer to another forum. See Nabisco, Inc. v. Brach's Confections, Inc., 2000 U.S. Dist. LEXIS 16168, at *3 (S.D.N.Y. Nov. 6, 2000); Toy Biz, Inc. v. Centuri Corp., 990 F. Supp. 328, 330 (S.D.N.Y. 1998); Christina Canada Inc. v. Wior Corp., 702 F. Supp. 461, 464 (S.D.N.Y. 1988). To sustain this burden, the movant must support its motion with a detailed factual affidavit. See Orb Factory, Ltd, v. Design Science Toys, Ltd., 6 F. Supp.2d 203, 208 (S.D.N.Y. 1998). "Motions for transfer lie within the broad discretion of the district court and are determined upon notions of convenience and fairness on a case-by-case basis." Linzer v. EMI Blackwood Music, Inc., 904 F. Supp. 207, 216 (S.D.N.Y. 1995) (quoting In re Cuyahoga Equip. Corp., 980 F.2d 110, 117 (2d Cir. 1992)).
In assessing whether an action "might have been brought" in the proposed transferee forum, the Court must determine whether the defendant is subject to personal jurisdiction in the transferee forum when the action was commenced and whether venue would properly lie there. Defendant moves to transfer this matter to her home forum in the Middle District of Tennessee and Plaintiff does not challenge the fact that this matter "might have been brought" in that forum.
Thus, the Court's decision turns on whether transfer will better promote the convenience of and fairness to the witnesses and parties. The Second Circuit routinely considers nine factors to assess "convenience" and "fairness." These factors are the: (1) convenience of the witnesses; (2) location of relevant documents and the relative ease of access to sources of proof; (3) locus of operative facts; (4) convenience of the parties; (5) availability of process to compel attendance of unwilling witnesses; (6) relative means of the parties; (7) forum's familiarity with the governing law; (8) weight accorded a plaintiffs choice of forum; and (9) trial efficiency and the interests of justice based on the totality of the circumstances. See Nabisco, 2000 U.S. Dist. LEXIS 16168, at *4; Bionx Implants, Inc. v. Biomet, Inc., 1999 U.S. Dist. LEXIS 8031, at *8 (S.D.N.Y. May 25, 1999); Telebrands Corp. v. Wilton Indus., Inc., 983 F. Supp. 471, 477 (S.D.N.Y. 1997). The Court considers each of these factors in turn.
A. Convenience of Parties and Witnesses
The single most important factor under a section 1404(a) transfer analysis may be the convenience of parties and witnesses. See Intria Corp. v. Intira Corp., 2000 U.S. Dist. LEXIS 17039, at *8 (S.D.N.Y. Nov. 27, 2000). Given this factor's importance, the moving party must provide the Court with a detailed list of probable witnesses who will be inconvenienced if required to testify in the current forum. See id. at *8-9 ("A party seeking to transfer based on the convenience of witnesses must provide the court with a specific list of witnesses who will be inconvenienced by the current forum and a general statement of what the witnesses' testimony will cover"); Arrow Elecs. Inc. v. Ducommun Inc., 724 F. Supp. 264, 267 n. 1 (S.D.N.Y. 1989) ("A party making a motion to transfer based on the convenience of the witnesses does have an obligation to provide the Court with a list of the witnesses inconvenienced by the current forum and must `make a general statement of what their testimony will cover'") (quoting Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 218 (2d Cir. 1978)). Here, Defendant has failed to supply the Court with any list, detailed or otherwise, to meet this burden. Rather, Defendant merely asserts that Ms. Bunting and her employees will compromise the "bulk of [the] defense witnesses" without providing more information about who these employee witnesses are and what each will testify to. (See Dkt. No. 6: Def.'s Mem. in Supp. of Transfer, at 5.) Defendant has thus failed to satisfy her burden of demonstrating precisely which witnesses will be inconvenienced absent transfer. Accordingly, this factor weighs against transfer. See, e.g., Pilates, Inc. v. Pilates. Inst., Inc., 891 F. Supp. 175, 183 (S.D.N.Y. 1995) (holding that a party's 1404(a) motion should be denied absent a detailed list documenting potential "witnesses on which the party intends to rely in the transferee district, along with a general statement of the topics of each witness' testimony").
B. Location of Relevant Documents and the Relative Ease of Access to Sources of Proof
Likewise, Defendant's assertion that relevant documents and sources of proof warrant transfer is accorded little weight absent a detailed showing as to the burden Defendant would incur absent transfer. See NBA Props., Inc., 2000 U.S. Dist. LEXIS 3799, at *24. Defendant's cursory attempt to justify transfer based on the location of documents and evidence does little more than claim that "documents relating to the accused trademark and corresponding goods are located" within Defendant's home forum. See, e.g., Intria. 2000 U.S. Dist. LEXIS 17039, at *15 (stating defendant's blanket assertion that all documents relating to the litigation were in defendant's home forum was not enough to favor transfer under section 1404(a)). Accordingly, given Defendant's failure to provide the Court with the nature and volume of the documents she plans to use in support of her case, or the difficulty in transporting such documents, this factor weighs against transfer.
C. Locus of Operative Facts
In actions alleging trademark infringement or unfair competition, courts in this district have held the locus of operative facts to be in the initially chosen forum if acts of infringement, dilution, or unfair competition occur in that forum. See, e.g., Ontel Prods., Inc. v. Project Strategies Corp., 899 F. Supp. 1144, 1154 (S.D.N.Y. 1995);Student Advantage, Inc. v. Int'l Student Exch. Cards, Inc., 2000 U.S. Dist. LEXIS 13138, at *21 (S.D.N.Y. Sep. 13, 2000) (finding locus of operative facts to be in the Southern District of New York where defendant sold business cards in New York via the internet and through third party businesses, despite the fact that defendant was an Arizona corporation with its principle place of business in Arizona). Here, Defendant does not dispute that her allegedly infringing products are sold and displayed in this District, or that Defendant's marketing and sales representatives are located in New York. (See Dkt. No. 10: Def.'s Reply Br., at 3.) Rather, Defendant argues that the Middle District of Tennessee is a more appropriate venue because her merchandise is produced there and then ultimately sold in several states, including New York. In an attempt to bolster this argument, Defendant relies on Invivo Research, Inc. v. Magnetic Resonance Equipment Corp., a patent infringement action in which the locus of operative facts included facts relating to the design, development, and production of a patented product. See 119 F. Supp.2d 433, 439 (S.D.N.Y. 2000). However, Invivo is distinguishable from this case. Cases involving trademark infringement apply the somewhat different standard enunciated inStudent Advantage, and turn on whether infringement, dilution, or unfair competition have occurred in the transferor forum. Thus, if the allegedly infringing products are sold within the Southern District of New York, even if sold elsewhere, there exists a sufficient connection with this District. See e.g., Toy Biz. Inc. v. Centuri Corp., 990 F. Supp. 328, 331 (S.D.N.Y. 1998) (concluding that locus of operative facts was in New York despite the fact that the allegedly infringing products were manufactured in Colorado). Here, given that this is a trademark infringement case, the fact that Defendant sells products in New York establishes a sufficient connection with this District.See Dkt. No. 9: Cornman Decl. ¶¶ 4-5, 8-9; PL's Letter dated June 27, 2002. For this reason, Defendant has not sufficiently demonstrated that this factor weighs in favor of transfer.
Defendant cites Invivo for the proposition that "sales alone are insufficient to establish a material connection to the forum and to override other factors favoring transfer." (See Dkt. No. 10: Def.'s Reply Br., at 3 n. 2 (citing Invivo. 119 F. Supp.2d at 440.))
D. Convenience of the Parties
The convenience of the parties does not favor transfer when it would merely shift any inconvenience from defendant to plaintiff. See Nabiso, Inc., 2000 U.S. Dist. LEXIS 16168, at *8. Here, Plaintiff has identified various party and non-party witnesses all of whom reside in, or very close to, the Southern District of New York. (See Dkt. No. 8: Pl.'s Mem. in Opp'n, at 3-6.) While Defendant notes that her witnesses will most likely include herself and her employees, Defendant provides no further detail. The Court thus concludes that Plaintiffs party and non-party witnesses would be no more inconvenienced traveling to Tennessee as would Defendant's witnesses who are required to travel to New York. Accordingly, this factor does not weigh in favor of transfer.
E. The Availability of Process to Compel Attendance of Unwilling Witnesses
Defendant generally states that her employees are from Tennessee and thus would not be subject to process in New York, while at the same time she has failed to provide the Court with any affidavits from potential witnesses stating that such witnesses would not voluntarily appear absent transfer. See GPA Inc. v. Liggett Group, Inc., 1994 U.S. Dist. LEXIS 14043, at *2 (S.D.N.Y. Oct. 4, 1994) (declining to find availability of process to compel unwilling witnesses as a factor in favor of transfer where Defendant failed to offer evidence that witnesses would be unwilling to travel). Defendant has proffered no evidence that potential party or non-party witnesses would be unwilling to travel. Accordingly, this factor does not weigh in favor of transfer.
F. Relative Means of Parties
While Defendant generally attempts to frame the case as one of David versus Goliath proportions, Defendant does not specifically argue for transfer based upon the relative means of the parties alone. Because Defendant did not explicitly raise this issue as a factor warranting transfer, the Court does not conclude that this factor weighs in favor of transfer. See Nabisco, 2000 U.S. Dist. LEXIS, at *11 (declining to consider the relative means of the parties in transfer analysis when moving party failed to raise the issue in argument).
G. Forum's Familiarity with Governing Law
Trademark infringement and unfair competition fall within the ambit of federal patent law. "Patent law is federal law, [and therefore] any district court may handle a patent case with equal skill." See Recoton Corp. v. Allsop. Inc., 999 F. Supp. 574, 578 (S.D.N.Y. 1998). As such, the forum's familiarity with the governing law neither weighs for nor against transfer.
H. Plaintiffs Choice of Forum
While ordinarily plaintiffs choice of forum is accorded significant weight, when the forum chosen is not the plaintiffs home forum, the choice is given less deference. See Student Advantage, 2000 U.S. Dist. LEXIS 13138, at *25. Where there is ongoing business activity in the chosen forum, however, plaintiffs choice of forum is given "more deference than it would if the connection to this forum were trulyde minimis." Virgin Enters. Ltd, v. Am. Longevity, 2001 U.S. Dist. LEXIS 2046, at *37 (S.D.N.Y. Feb. 28, 2001) (giving weight to foreign plaintiffs choice of forum, where plaintiff engaged in ongoing business activity within the Southern District). Plaintiffs choice of forum is thus accorded slight deference due to its business activities here. Accordingly, this factor weighs against transfer.
I. Trial Efficiency and the Interests of Justice
Defendant's argument that the Middle District of Tennessee favors transfer due to the caseload of this District is entitled to little weight. See Nabisco, 2000 U.S. Dist. LEXIS 16168, at *15-16 (explaining that factor comparing the case loads of two different federal district courts is "entitled to little weight" in a section 1404 motion). The Court nevertheless concludes that Defendant has not satisfied her burden of demonstrating that this factor weighs in favor of transfer.
III. CONCLUSION
Upon balancing the factors discussed above, the Court concludes that Defendant has failed to meet her burden of demonstrating that transfer to the Middle District of Tennessee is warranted. For the foregoing reasons, Defendant's motion to transfer is DENIED. The Clerk of the Court is therefore directed to retain the case on the Court's docket.The parties are to appear before the Court for a conference on October 10, 2003 at 9:30 a.m. in Courtroom 17B, at which time a case management plan, completed in conformity with the Court's Individual Practices, must be submitted for the Court's approval.
So Ordered.