Summary
finding convenience to party's lawyers not relevant consideration for § 1404 analysis
Summary of this case from Pergo, Inc. v. Alloc, Inc.Opinion
00 Civ. 7367 (MBM)
May 14, 2001
MYRON GREENSPAN, ESQ., ROBERT B. GOLDEN, ESQ., SEANA F.C. LAPLACE, ESQ. (Attorneys for Plaintiff), Lackenbach Siegel, Scarsdale, NY.
ANTHONY L. FLETCHER, ESQ., STACY J. GROSSMAN, ESQ., (Attorneys for Defendant) Fish Richardson, P.C., New York, NY.
OPINION ORDER
Plaintiff Olympia Group, Inc. sues defendant Cooper Industries, Inc. pursuant to the Lanham Act, 15 U.S.C. § 1114 (1) 1125(a), New York Gen. Bus. Law §§ 133, 349 360-1, and New York state common law, for, inter alia, alleged infringement of Olympia's "E-Z Read" trademark. Cooper Industries moves to transfer to the Eastern District of North Carolina pursuant to 28 U.S.C. § 1404 (a). For the reasons stated below, Cooper's motion is granted.
I.
Olympia is a California corporation that manufactures, distributes, and sells hand tools and hardware products, including a tape measure sold under the "E-Z Read" trademark. (Comp. ¶¶ 6, 8, 9) Cooper Industries is an Ohio corporation. (Comp. ¶ 7) Cooper Tools, Inc., is a wholly-owned subsidiary of Cooper Industries that sells tools and other hardware. (Goldstone Aff. ¶¶ 4, 5) Among Cooper Tools' products is the "Quickread" tape measure, which was designed, manufactured and sold through Cooper Tools' Lufkin operation, located in Apex, North Carolina. (Goldstone Aff. ¶ 5) Olympia alleges that Cooper's use of the "Quickread" mark in connection with its tape measure infringes Olympia's "E-Z Read" trademark. (Comp. ¶¶ 16, 18, 21).
II.
Two inquiries determine a motion to transfer. First is whether the action is one which "might have been brought" in the district to which the movant seeks transfer. Second is whether the transfer serves the convenience of the parties and the interest of justice. U.S. Fidelity Guar. Co. v. Republic Drug Co., 800 F. Supp. 1076, 1080 (E.D.N.Y. 1992). An action "might have been brought" in a district where the defendant was subject to personal jurisdiction at the time the action was brought, and where venue is proper. Nabisco, Inc. v. Brach's Confections, Inc., 2000 WL 1677935, at *1 (S.D.N.Y. 2000). Cooper contends, and Olympia does not dispute, that this suit might have been brought in the Eastern District of North Carolina.
When deciding whether a transfer serves the convenience of the parties and the interest of justice, courts consider, among other things, (1) the convenience of the witnesses, (2) the convenience of the parties, (3) the locus of operative facts, (4) the availability of compulsory process to compel the attendance of unwilling witnesses, (5) the location of relevant documents and relative ease of access to sources of proof, (6) the relative familiarity of the courts with the governing law, (7) and the weight accorded to plaintiff's choice of forum. See, e.g., Pilates, Inc. v. Pilates Inst., Inc., 891 F. Supp. 175, 183 (S.D.N.Y. 1995);Nabisco, 2000 WL 1677935, at *2. The party seeking transfer bears the burden of demonstrating that these factors weigh in favor of transfer.Pilates, 891 F. Supp. at 183; U.S. Fidelity Guar. Co., 800 F. Supp. at 1080 (citing Factors, Etc. v. Pro Arts, Inc., 579 F.2d 215, 218-19 (2d Cir. 1978)).
Cooper has established that several of these considerations favor transfer. The convenience of the witnesses is the most important consideration, and here, favors transfer. See Nabisco, 2000 WL 1677935, at *2; Pilates, 891 F. Supp. at 183; Hernandez v. Graebel Van Lines, 761 F. Supp. 983, 988 (E.D.N Y 1991). Cooper identifies nine current and two former Cooper employees who reside within the Eastern District of North Carolina and are expected to testify about the development of the "Quickread" tape measure, its marketing and sales, and/or the alleged lack of consumer confusion. (Goldstone Aff. ¶ 7(a)-(k)); see Nabisco, 2000 WL 1677935, at *2 (finding that convenience of witnesses favored transfer where defendant identified six witnesses who would testify regarding similar matters in a trademark infringement case);U.S. Fidelity Guar. Co., 800 F. Supp. at 1080-81. Olympia has not identified any expected witnesses who reside in this District to counter Cooper's showing. Instead, Olympia argues that there are more flights to New York from California, where Olympia's employees are located. However, the availability of flights into New York only slightly lessens the inconvenience of witnesses located in California. They will nonetheless be required to travel across the country. See Coker v. Bank of America, 984 F. Supp. 757, 765-66 (S.D.N Y 1997) (listing cases); U.S. Fidelity Guar. Co., 800 F. Supp. at 1081. Olympia argues also that the witnesses identified by Cooper are duplicative, and their absences from North Carolina will not be lengthy. However, even assuming that only two or three of the 11 witnesses identified by Cooper testify, and that their trips to testify in New York would be brief, the convenience of the witnesses weighs strongly in favor of transfer to the Eastern District of North Carolina in the absence of any identified witnesses who reside in the Southern District of New York. See Coker, 984 F. Supp. at 765; U.S. Fidelity Guar. Co., 800 F. Supp. at 1081.
The convenience of the parties also favors transfer. "This is not a case where transfer merely shifts the inconveniences of litigation from one party to another. Rather, this is a case where transfer would aid one party and not disadvantage its adversary." Bionx Implants, Inc. v.Biomet, Inc., 1999 WL 342306, at *4 (S.D.N.Y. 1999). Olympia was not incorporated in New York and does not maintain its headquarters here. There is no evidence that it maintains an office in this District. Olympia's desire to litigate this case in the Southern District of New York appears to arise from the fact that its lawyers are located nearby. Olympia states in its memorandum that "[i]t would be more expeditious and cost effective to allow the New York attorneys already familiar with Olympia, . . . to resolve the instant matter." (Pl. Mem. at 6-7) However, the convenience of the parties' lawyers is not relevant to the decision whether to transfer. Hernandez, 761 F. Supp at 988. Although Cooper Industries has two facilities in New York — one in Syracuse and the other in Long Island City — neither is located in this District or affiliated with Cooper Tools, Inc., the subsidiary of Cooper Industries that developed and marketed the "Quickread" tape measure. Rather, the Cooper operation responsible for the manufacture and marketing of the tape measure at issue is located in the Eastern District of North Carolina. The inconvenience to Cooper would be reduced by a transfer to the Eastern District of North Carolina; the inconvenience to Olympia would remain essentially the same, as it has demonstrated no relevant connection to the Southern District of New York. Therefore, the convenience of the parties favors transfer.
Olympia contends, based on internet research, that Cooper Tools is headquartered in South Carolina. Cooper explains that Cooper Tools, Inc. and Cooper Power Tools, Inc. have been combined under one division called Cooper Tools. The president of Cooper Tools Division works out of South Carolina. However, Cooper maintains that Cooper Tools, Inc. is headquartered in North Carolina. (Goldstone Sec. Aff. ¶ 5).
As Cooper concedes, not all the relevant considerations favor transfer. Several factors favor retention. However, as discussed below, the factors favoring retention do not outweigh the factors favoring transfer. Olympia, in addition to its claims under the Lanham Act, raises several claims under New York law. This court is more likely to be familiar with New York law than the North Carolina court. However, the state law claims are not complex, and therefore this factor only weakly favors retention. See 5-Fer Intern, Inc. v. Paladion Partners, Ltd., 906 F. Supp. 211, 215-16 (S.D.N.Y. 1995).
Some courts have found that the locus of operative facts in an infringement case is the place where the allegedly infringing product was developed and manufactured. See Schuur v. Walt Disney Co., 1998 WL 190321, at *3 (S.D.N.Y. 1998). Other courts have held that the sale of the allegedly infringing product in the initial forum makes the initial forum the locus of operative facts. See Nabisco, 2000 WL 1677935, at *3 (listing cases). Even assuming that the sales of Cooper's tape measures in New York make New York the locus of operative facts, see Toy Biz, Inc. v. Centuri Corp., 990 F. Supp. 328, 331 (S.D.N Y 1998), the sales are this case's only connection with the Southern District of New York. No other significant events occurred in this District. Therefore, at the most, this factor only weakly favors retention. See Nabisco, 2000 WL 1677935, at *3 Cf. Anadigics, Inc. v. Raytheon, Co., 903 F. Supp. 615, 617 (S.D.N.Y. 1995) (granting transfer where only connection with initial forum was that the defendant did business there)
The remaining factors favor neither transfer nor retention. Although Cooper claims that its documents are located in North Carolina, (Goldstone Aff. ¶ 10) its simple assertion is not enough to favor transfer. See Nabisco, 2000 WL 1677935, at
*3 Olympia's claim that its documents are already compiled and
marked in New York does not favor retention. The burden on Olympia of moving documents that are already organized is not greater than the burden on Cooper of moving its documents. And, Cooper does not demonstrate that the availability of process to compel unwilling witnesses favors transfer. Cooper identifies two non-party witnesses, but presents no evidence that they would be unwilling to testify. See NBA Properties, Inc. v. Salvino, Inc., 2000 WL 323257, at *8 (S.D.N Y 2000). Olympia does not identify any non-party witnesses who might need to be compelled to testify.
Cooper has demonstrated that the convenience of the witnesses — the most significant factor — and the convenience of the parties strongly favor transfer. Its showing is sufficient to overcome the weight given to plaintiff's choice of forum. The plaintiff's choice is entitled to less deference when the plaintiff does not reside in the chosen forum. Student Advantage, Inc. v. International Student Exch. Cards, Inc., 2000 WL 1290585, at *8 (S.D.N.Y. 2000) (citing Coker, 984 F. Supp. at 766); see also Orb Factory, Ltd. v. Design Science Toys, Ltd., 6
F. Supp.2d 203, 210 (S.D.N.Y. 1998). As noted above, Olympia claims no connection with this District other than that its attorneys are based here and that the documents it intends to introduce are compiled here. Therefore, a transfer of this case to the Eastern District of North Carolina is appropriate for the convenience of the witnesses and parties and in the interest of justice. 28 U.S.C. § 1404 (a).
* * *
For the reasons stated above, Cooper Industries' motion to transfer to the Eastern District of North Carolina is granted. The Clerk of the Court will transfer all records and papers in this action to the Clerk of the Court for the Eastern District of North Carolina.
SO ORDERED: