Summary
concluding that this Court as well as the Central District of California "are equally able to address each of Plaintiff's claims" where the Ohio statute is a codification of federal law and where the breach of contract claim did not appear to raise novel or complex issues under Ohio law
Summary of this case from Kendle v. Whig Enters., LLCOpinion
Case No. C-3-99-270
March 13, 2000.
Thomas W. Flynn, for plaintiff.
Karen T. Dunlevey, David C. Greer, Rod S. Berman, for defendant.
Plaintiff Antioch Company ("Antioch") is in the business of selling photograph and scrapbook albums, along with related accessories and supplies, which it markets under the Creative Memories and Webway trademarks. Defendant Pioneer Photo Albums, Inc. ("Pioneer"), is also in the business of selling photograph and scrapbook album supplies. This litigation, the second such action between the parties, arises out of the advertising by Defendant Pioneer of its photo and scrapbook album supplies, using the mark Creative E-Z Load Memory Book. In the present action, Antioch alleges that Pioneer breached the settlement agreement between the parties, which constituted the basis for the dismissal of the first lawsuit, and has engaged in trademark infringement, false designation of origin, unfair competition, and false advertising, under state and federal law. Pending before the Court is Pioneer's Motion to Transfer Venue to the Central District of California, pursuant to 28 U.S.C. § 1404(a) (Doc. #9). For the reasons assigned, Defendant's Motion is SUSTAINED.
The following facts are taken from Plaintiff's Complaint (Doc. #1).
In its first lawsuit, filed on February 9, 1998, in this Court (Case No. C-3-98-48), Antioch alleged trademark infringement, unfair competition, and deceptive trade practices, under state and federal law. Following a confidential settlement between the parties, that lawsuit was dismissed, with prejudice, on September 14, 1998. In paragraph 26 of its current Complaint (Doc. #1), Antioch states that a copy of the settlement agreement is attached thereto as Exhibit A, and that it is filed under seal. Plaintiff has failed to file said document with the Court.
Section 1404(a) provides that "[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." 28 U.S.C. § 1404(a). Although based on the doctrine of forum non conveniens, section 1404 was intended to be a revision rather than a codification of the common law. Norwood v. Kirkpatrick, 349 U.S. 29 (1955). District courts have more discretion to transfer under § 1404 than they had to dismiss on the grounds of forum non conveniens. Id. at 31-32;Piper Aircraft Co. v. Reyno, 454 U.S. 235, 253 (1981).
For purposes of this Motion, Antioch concedes that this action might have been brought in the Central District of California (Doc. #16, n. 1)
"In ruling on a motion to transfer under § 1404(a), a district court should consider the private interests of the parties, including witnesses, as well as other public interest concerns, such as systemic integrity and fairness, which come under the rubric of `interests of justice.'" Moses v. Business Card Express, Inc., 929 F.2d 1131, 1137 (6th Cir.) (quoting Stewart Org'n, Inc., v. Ricoh, 487 U.S. 22, 30 (1988)), cert. denied, 502 U.S. 821 (1991). The court must consider a number of case-specific factors, including, but not limited to: "(1) the Plaintiff's choice of forum; (2) the relative ease of access to proof, including the convenience and proximity of witnesses and the location of documentary evidence; (3) the respective court's familiarity with applicable law; (4) the need for a view of the premises; and (5) the likelihood of expeditious hearing in the respective courts." Mead Data Central, Inc. v. West Publishing Co., 679 F. Supp. 1455 (1987) (Rice, J.); see Midwest Motor Supply Co., Inc. v. Kimball, 761 F. Supp. 1316, 1318 (S.D.Ohio 1991) (Holschuh, J.) (factors include: "the nature of the suit; the place of the events involved; the relative ease of access to sources of proof; the nature and materiality of testimony to be elicited from witnesses who must be transported; the respective courts' familiarity with applicable law and the condition of their dockets; and the residences of the parties."). The burden is on the moving party to establish "a strong showing of inconvenience to warrant upsetting the Plaintiff's choice of forum." Id. at 805 (citing Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986). The district court should deny the defendant's motion when transfer would merely shift the inconvenience from one party to another. Id.; see Van Dusen v. Barrack, 376 U.S. 612, 645-46 (1964) ("Section 1404(a) provides for transfer to a more convenient forum, not a forum likely to prove equally convenient or inconvenient."); 15 Charles A. Wright, et al., Federal Practice Procedure § 3848 at 385-86.
1. Plaintiff's Choice of Forum
"Despite the fact that the enactment of § 1404(a) may have lessened the weight to be given the Plaintiff's choice of forum, it is still a factor to be considered in determining the balance of convenience." Mead Data Central, 679 F. Supp. at 1465; see Hobson v. Princeton-New York Investors, Inc., 799 F. Supp. 802, 804 (S.D.Ohio 1992) (citation omitted) ("plaintiff's choice of forum is given great weight."). Plaintiff argues that its choice of forum should be given deference, because its principal place of business is located in Yellow Springs, Ohio. Plaintiff also argues that its choice of forum should be given substantial weight, because this litigation arises out of a settlement agreement between the parties, which was negotiated in the context of the prior lawsuit in this Court. Antioch notes that Pioneer never sought to dismiss or to transfer that prior action.
In response, Sheldon Plutsky, President of Pioneer, submitted an affidavit, stating that Defendant "would rather negotiate fair and reasonable settlements than litigate, particularly in a forum as inconvenient as Ohio. Therefore, Pioneer, solely to avoid the expense and inconvenience of litigation, entered into the Settlement Agreement . . . [B]ecause it appears that the matter will have to be litigated, Pioneers asks that the Court transfer this case. . . ." (Plutsky Aff. ¶ 10) Pioneer further argues that the Plaintiff's business division at issue in this litigation is located in Minnesota, not in Yellow Springs, Ohio (Compl. ¶ 2).
In the present case, Plaintiff's principal place of business is located in Ohio, thus strengthening the weight to be given to its choice of forum. However, the fact that the business division at issue is located in Minnesota tempers somewhat the importance of the location of Antioch's principal place of business. The fact that this litigation arises from a previous action before this Court also supports the Plaintiff's choice to litigate in this forum. However, the weight to be given to the fact that this Court was the venue of the prior litigation is also lessened in light of Pioneer's explanation for its failure to seek a change of venue for that litigation, and its eagerness for a quick settlement in that action. Accordingly, the Court concludes that, although the facts brought forth by Defendant do not, by themselves, shift the balance in favor of transferring this litigation to the Central District of California, Plaintiff's choice of forum should be afforded only minimal deference.
2. Convenience and Residence of the Parties
The parties fervently dispute whether Pioneer will be greatly inconvenienced should it be required to litigate in Ohio. In support of its argument that it would suffer serious hardship, Mr. Plutsky stated, under oath, that Pioneer is a small, privately-owned company with less than 200 employees, that it resides in California, and that it has no offices in Ohio (Plutsky ¶¶ 4-5)., He further stated Defendant would effectively shutdown operations if its President, Sheldon Plutsky, and two key employees had to travel to Ohio to litigate. (Plutsky ¶¶ 4-8). Specifically, Mr. Plutsky states that he is the most active person involved in day-to-day operations of the company; that he supervises and participates in all aspects of Pioneer's operations, including sales, marketing, product development and finance; and that, "if [he] were absent from Pioneer's Chatsworth [, California,] offices in order to attend a trial in Ohio, Pioneer would effectively shut-down and suffer extreme hardship." (Id. ¶ 6) In addition to the effects caused by his absence, Mr. Plutsky states that the absences of Roger Cortight, Regional Sales Manager, and Mat Mateo, Inside Sales Manager, from Pioneer's Chatsworth offices would impair its sales operations and customer relations (id. ¶¶ 7-8). Pioneer further asserts that, although Antioch resides in Ohio, its business division at the center of this litigation is located in Minnesota (Compl. ¶ 2), and therefore, Plaintiff will not be greatly inconvenienced by litigating in California rather than in Ohio, unlike Defendant, which will suffer hardship if forced to litigate in Ohio rather than in California.
He states, albeit through inadmissible hearsay in ¶ 4 of his Affidavit, that he understands that Plaintiff is a substantially larger company with over 10,000 employees and higher levels of sales and revenue.
It appears that Pioneer has maintained an independent sales representative in Ohio for the past ten years. Deposition of Plutsky, pg. 12-13, 57; Kovach Aff. ¶¶ 1, 2, attached to Defendant's Reply Memorandum (Doc. #21).
In response, Antioch attempts to refute Pioneer's argument that it will shut down if Mr. Plutsky were required to testify in Ohio. It cites to the deposition of Mr. Plutsky, taken on September 17, 1999, in which he acknowledges that he traveled to numerous trade shows in 1999, including shows in Chicago, Illinois; Las Vegas, Nevada; Dallas, Texas; New Orleans, Louisiana; and near Los Angeles, California. In his deposition, Mr. Plutsky further stated that he vacationed in Tampa, Florida, for a week (Plutsky Dep. at 39), and that he traveled to Chicago, Illinois, for his son's graduation (id. at 40). Although Mr. Plutsky testified that he tried to attend trade shows on weekends, so that he would not be away from the office (id. at 54), he further stated that while away from his office, he continued to conduct business using his cellular telephone, and that he was in "constant contact" with the company (id. at 46, 51-52). Based on this testimony, Antioch argues that Pioneer would not "shut-down" if Mr. Plutsky were required to travel to Ohio to testify.
The sum of Mr. Plutsky's affidavit and deposition testimony is that he is a vital aspect of Pioneer's business. However, the Court agrees with Plaintiff that Mr. Plutsky's deposition testimony indicates that Pioneer will not shut-down if he were forced to travel to Ohio for short periods of time as a result of this litigation. Rather, that testimony indicates that he is able to (and does) conduct business from remote locations when it is necessary for him to be away from his office, and that it is likely that he could and would do likewise from Ohio. Although Pioneer has provided evidence that it would be inconvenient for its President to travel to Ohio, it has not demonstrated that it would suffer severe hardship.
As to Mr. Cortight and Mr. Mateo, Plaintiff has provided no evidence to refute Mr. Plutsky's statements that Pioneer's business would be seriously impaired if those individuals, along with Mr. Plutsky, were absent from Pioneer's Chatsworth offices. Accordingly, the undisputed evidence is that Pioneer would suffer severe hardship if Mr. Cortight, Mr. Mateo,and Mr. Plutsky, were absent from that entity's California offices for purposes of this litigation. In addition, Antioch has provided no evidence that it would be inconvenienced if the Court were to transfer this litigation to California, such that the Court could conclude that transferring this action would merely shift the inconvenience from Defendant to Plaintiff. Accordingly, the convenience of the parties factor, based on the evidence that Pioneer would be seriously impaired if Mr. Plutsky, Mr. Cortight, and Mr. Mateo were all absent from Defendant's California offices, favors Defendant.
Although Mr. Plutsky testified during his deposition that Mr. Cortight has traveled to trade shows and to work with sales representatives, there is no evidence as to the frequency or length of these trips (Plutsky Dep. at 13).
3. Convenience of Witnesses
"There is no question that the `factors to be considered in ruling upon a forum non conveniens motion should include the availability of compulsory process to obtain the attendance of unwilling witnesses, and the costs of obtaining attendance of willing witnesses'." Mead Data Central, 679 F. Supp. at 1466 (quoting AMF, Inc. v. Computer Automation, Inc., 532 F. Supp. 1335, 1341 (S.D.Ohio 1982)).
Defendant argues that litigating in California would be more convenient, because its three main witnesses, Mr. Plutsky, Mr. Cortight, and Mr. Mateo, are California residents, and are vital to Pioneer's operations (Plutsky Aff. ¶ 6-8). It further argues that both parties are likely to rely on Pioneer employees, who work and reside in California. Antioch replies that it has not determined which witnesses it will present at trial, but that its corporate headquarters are located in Yellow Springs and that itmight rely on witnesses located there. There is no indication by either party that it will rely on the testimony of any non-employee witness.
The Court notes that, to date, each of the individuals named by the parties as anticipated lay witnesses is an employee of one of the parties (Doc. #18, Doc. #22).
Because their anticipated witnesses are employees, both parties have the power to compel those witnesses to testify, regardless of the location of this litigation. Id. Thus, it is unlikely that either party's case will be compromised by an inability to produce its witnesses. Id. However, while Pioneer has provided evidence that litigation in Ohio would be inconvenient to its likely witnesses, Antioch has no provided no evidence that it is likely to produce witnesses who reside in Ohio, thus indicating that it would be more inconvenient for its witnesses to litigate in California rather than in this Court. Because Plaintiff has provided the Court with no basis to conclude that transferring this litigation to the Central District of California would merely shift the inconvenience of litigating from Pioneer to Antioch, this factor weighs in favor of transferring this litigation to California.
4. Access to Documentary Sources of Proof
While the location of physical evidence ought to be given more weight in the balancing analysis under § 1404(a), the location of documentary evidence is a minor consideration. Picker Internat'l, Inc., v. Travelers Indemnity Co., 35 F. Supp.2d 570, 574 (N.D.Ohio. 1998). In arguing that transfer is warranted, Defendant contends that the relevant evidence is located at Pioneer's principal place of business, or is equally accessible regardless of location of the lawsuit. In support of Pioneer's argument, Mr. Plutsky has stated that "all of the documents relative to Pioneer's products, advertising and [on the issue of] damages are located in. . . . California" (Plutsky ¶ 9). Thus, Pioneer has provided evidence that litigating in Ohio is inconvenient, due to the location of its documentary evidence.
Antioch argues that Pioneer's argument should not be given weight, considering that Defendant has not specified the number of documents involved. Plaintiff also states that, while it has not determined what documents it will present at trial (a rather surprising admission, given that it is the party which has filed this lawsuit), it might rely on documents located in Ohio. As with the convenience of witnesses factor, Antioch has no provided no evidence that any of the documentary evidence that it anticipates using at trial is located at its corporate headquarters in Ohio, thus suggesting that it would be inconvenient for it to litigate in the Southern District of California. Plaintiff has provided the Court with no basis to conclude that litigation of this lawsuit in California would merely shift the inconvenience from Defendant to Antioch. Although the location of documentary evidence is only a minor consideration, this factor weighs in favor of transferring this litigation to California.
5. Familiarity with Applicable Law
Defendant argues that trademark claims are often litigated in California and, therefore, California courts are highly familiar with the applicable law. In response, Plaintiff states that paragraph 12 of the settlement agreement between the parties provides that the "legal relations between the parties shall be governed by and construed in accordance with the laws of the state of Ohio, except where such are governed exclusively by federal law." Antioch therefore argues that, because the settlement agreement and its state law claims are governed by Ohio law, this Court is the proper forum in which to litigate.
Although Plaintiff has not filed a copy of the settlement agreement, Defendant does not dispute Antioch's quotation of this paragraph in its reply memorandum. Accordingly, the Court will assume that the quotation is accurate.
Where resolution of a diversity case requires application of state law, there is a legitimate interest in allowing the court that is most familiar with the applicable law to resolve the dispute. Shapiro v. Merrill Lynch Co., 634 F. Supp. 587, 590 (S.D.Ohio 1986). However, the mere presence of a choice of law provision is not dispositive of a § 1404 motion. As stated by Judge Holschuh:
"[A]lthough choice of law provisions are relevant to venue, such provisions are not dispositive." The present case, an action for breach of a covenant not to compete, does not appear to present any novel or complex issues under Ohio law. Thus, although this Court is more familiar with Ohio law than the Northern District of Georgia, it does not appear that Ohio contract law is so unique that this fact alone should strongly militate against transfer.Midwest Motors, 761 F. Supp. at 1318 (citation omitted).
In the present case, Plaintiff has brought trademark violation claims under the Lanham Act, the Ohio Deceptive Trade Practices Act, and common law, in addition to a common law claim for breach of contract based on the breach of the settlement agreement. Although the Central District of California is likely less familiar with Ohio law, that lack of familiarity has little import in light of Plaintiff's claims. Generally, the Ohio Deceptive Trade Practices Act is a codification of common law, Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1431 (S.D.Ohio 1990), and that statute is substantially similar to the Lanham Act. Yocono's Restaurant, Inc. v. Yocono, 100 Ohio App.3d 11, 17, 651 N.E.2d 1347, 1350-51 (Summit Cty. 1994) (Chapter 4125 is substantially similar to section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)). Accordingly, courts have stated that cases interpreting the Lanham Act are relevant to analysis of claims under the Ohio Deceptive Practices Act or the common law of trademarks. Id.; Libbey Glass, Inc. v. Oneida Ltd., 61 F. Supp.2d 700, 716 (N.D.Ohio. 1999) (analysis of trade dress infringement claim under Ohio Deceptive Trade Practices Act and Lanham Act is the same); Royal Appliance Mfg. Co. v. Hoover Co., Inc., 845 F. Supp. 469, 471, n. 4 (N.D.Ohio. 1991) ("Ohio's Deceptive Trade Practices Act mirrors the Lanham Act for the most part, and the same analysis is used to determine liability under either act."). Therefore, this Court's greater familiarity with Ohio law has little significance with regard to Plaintiff's trademark claims under Ohio law. Moreover, Plaintiff's breach of contract claim does not appear to raise novel or complex issues under Ohio law. Thus, the Central District of California and this Court are equally able to address each of Plaintiff's claims. Accordingly, the familiarity with applicable law factor strongly favors neither Antioch or Pioneer.
6. Location of Events Giving Rise to Claim
Pioneer asserts that this litigation arises out of Antioch's advertising practices and, therefore, the events giving rise to this litigation occurred in California. Although Plaintiff has not responded to this argument, the events giving rise to this litigation occurred in those locations where confusion about the origin of Pioneer's product was likely to occur. See Overland, Inc. v. Taylor, 79 F. Supp.2d 809, 811 (E.D.Mich. 2000) ("For claims of `passing off' under the Lanham Act, courts have found venue proper under section 1391(b)(2) in districts where confusion about the original of the product is likely to occur because this constitutes the `events or omissions giving rise to the claim.'");Cottman Transmission Sys., Inc. v. Martino, 36 F.3d 291, 295 (3d Cir. 1994) (venue in Lanham Act cases focuses on location where the unauthorized passing off takes place). Defendant has sold the allegedly infringing products in Ohio, by means of an independent sales representative (Doc. #21, Kovach Aff.). Thus, the events giving rise to this litigation occurred as much in Ohio as in California. This factor, therefore, does not weigh in favor of transfer to the Central District of California.
7. Remaining factors
None of the remaining factors (need for a view of the premises, and the likelihood of expeditious hearing in the respective courts) provides a basis for transfer to California. There is no need for a view of premises in the present action, and there is no evidence of that this case would receive a more expeditious hearing in California.
Although the factors discussed above do not reach a unanimous conclusion that transfer is proper, the Court concludes, after a review of those factors, that the balance of convenience weighs in the favor of transfer. Although Plaintiff has selected the Southern District of Ohio as its chosen forum and the events giving rise to this litigation occurred, at least in part, in this state, Defendant has provided evidence that it would be greatly inconvenienced by the absence of three of its key personnel for purposes of litigation. In addition, it has provided evidence that its witnesses and documentary evidence are located in California. In contrast, Plaintiff has not provided the Court with any firm indication as to the location of its witnesses and evidence. Nor has Plaintiff proffered any evidence that litigating in California would present an inconvenience to it, and that transferring this litigation to the Central District of California would merely shift the inconvenience of litigation to it from Pioneer. In addition, although Plaintiff raises claims under Ohio law, the nature of those claims are such that the Court is confident that the Central District of California is equally capable of addressing them. In sum, Defendant has established a strong showing of inconvenience sufficient to upset Plaintiff's choice of forum.
For the foregoing reasons, the Defendant's Motion to Transfer (Doc. #9), pursuant to 28 U.S.C. § 1404(a), is SUSTAINED.
The captioned cause is hereby ordered transferred to the United States District Court for the Central District of California.
The captioned cause is hereby ordered terminated upon the docket records of the United States District Court for the Southern District of Ohio, Western Division, at Dayton.