Opinion
03 Civ. 8033 (MGC)
December 22, 2003
OPINION
Defendant Sun Microsystems, Inc. moves to transfer this copyright action to the United States District Court for the Northern District of California pursuant to 28 U.S.C. § 1404 (a) For the following reasons, defendant's motion to transfer is granted.
BACKGROUND
Sun Microsystems, Inc. ("Sun") is headquartered in California and is the former employer of plaintiffs Daniel Farmer and Matthew Archibald. Farmer and Archibald are California residents who worked for Sun in California. According to the complaint, beginning in 1994, Farmer, Archibald and a third Sun employee, Brad Powell (who is not a party to this action), developed a software program while in Sun's employ. The program became known as "Titan" or "Titan Security Toolkit." Plaintiffs allege that in 1998, Sun agreed to relinquish any claim of ownership of copyright in Titan and to allow the employees to market the software as they wished. This agreement was contingent on all distributed software carrying a disclaimer stating that Sun would bear no liability or responsibility for the software. The employee plaintiffs have been distributing Titan to the public since 1998 with that disclaimer. In March 2003 plaintiffs Archibald and Farmer along with Brad Powell registered the copyright in the Titan software with the United States Copyright Office.
Plaintiffs complain that Sun has been incorporating Titan into its own software products without their permission. Moreover, the complaint alleges that Sun has warned plaintiffs not to distribute Titan, and is itself claiming the copyright.
Plaintiff WLD Price Global, Inc. ("WLD") is a New York corporation formed in January 2003. In June 2003, Farmer and Archibald sold an interest in their copyright in Titan to WLD.
On September 19, 2003 plaintiffs filed a complaint against Sun in the Supreme Court of New York. The complaint seeks damages for breach of contract and unjust enrichment. On October 10, 2003 Sun filed a notice of removal on the ground that the purported state law claims are actually artfully pled federal claims arising under the Copyright Act, 17 U.S.C. § 101 et seq. At oral argument, plaintiffs' counsel conceded as much.
DISCUSSION
"For 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). Thus, a district court has the power to transfer a case to another judicial district in the interest of justice whether or not venue is proper in the transferor district. Alexander Alexander, Inc. v. Donald F. Muldoon Co., 685 F. Supp. 346, 348 (S.D.N.Y. 1988) (citing Goldlawr, Inc. v. Heiman, 369 U.S. 463 (1962)). However, the court may transfer pursuant to § 1404(a) only if the transferee forum is one where, at the time the suit was brought, the defendants were subject to personal jurisdiction and venue would have been proper. Giuliani, S.p.A. v. Vickers, Inc., 997 F. Supp. 501, 502 (S.D.N.Y. 1998) (citing Hoffman v. Blaski, 363 U.S. 335, 342-3 (1960)).
Among the factors a court should consider in exercising its discretion to transfer venue in the interest of justice pursuant to § 1404(a) are plaintiffs' choice of forum, the convenience of the witnesses and parties, the location of events giving rise to the suit, the relative ease of access to sources of proof, each forum's familiarity with the governing law, and trial efficiency.Giuliani, 997 F. Supp. at 503. Defendants bear the burden of showing that the relevant factors weigh strongly in favor of transfer.See Ramada Franchise Sys., Inc. v. Cusack Dev. Inc., 96 Civ. 8085 (MGC), 1997 WL 304885, at *2 (S.D.N.Y. June 6, 1997).
As an initial matter, it is apparent that this action could have been brought in the Northern District of California. Sun is subject to personal jurisdiction in California because, according to the complaint, it is a California corporation with its principal place of business in California. Moreover, its headquarters are located in the Northern District of the state. Furthermore, venue is proper there, both because Sun is a resident of the state and because "a substantial part of the events or omissions giving rise to the claim occurred" in California. § 1391(b)(1), (2).
In this case, the relevant factors weigh strongly in favor of transfer to California. Two of the three plaintiffs, Farmer and Archibald, are residents of California. Significantly, the Titan copyright is registered in their names as well as a third party who resides in California. The individual plaintiffs worked for Sun in California, developed Titan in California, and continue to reside there. Any drafting of the 1998 disclaimer or any negotiation of Sun's alleged agreement to relinquish its copyright claim to Titan would have taken place in California. Accordingly, California is the location of virtually all of the events giving rise to this action. In fact, the complaint alleges no facts relating to activity in New York whatsoever. The only alleged connection to New York is that "[i]n June 2003, Farmer and Archibald sold a portion of their rights in Titan to WLD, which based that purchase on the assumption that it would have the unfettered right to further develop Titan and market it." However, WLD was formed in January of 2003, five years after the creation of Titan and five years after all of the other parties had entered an agreement about Titan. Moreover, the dispute in this action between the individual plaintiffs and Sun arose before WLD had any interest in Titan. Thus, the determinative events regarding ownership of the rights to Titan all occurred in California, well before any involvement on the part of WLD.
The convenience of the witnesses also weighs in favor of transfer to California. According to the complaint, the Titan disclaimer was negotiated and drafted by Sun's General Counsel, Charles Dolci, who remains a California employee of Sun and who will be a witness. Moreover, Brad Powell, who is a joint owner of the copyright in question, remains an employee of Sun in California and an important witness. Sun represents that it will call its custodian of records to testify as to the execution and content of Farmer and Archibald's employment contracts. Both this witness and these documents are located in California. Sun also represents that among its witnesses are members of its engineering, legal and marketing teams, all of whom work and reside in California. On the other hand, plaintiffs point to only one individual, Brad Haskins, President of WLD, as a potential witness who may reside outside the state of California. However, while Haskins' preference may be to proceed in New York, it is nowhere asserted that he is a resident of New York. Plaintiffs also argue that some discoverable material is located in the New York offices of WLD. However, plaintiffs neither describe what this material consists of nor give any reason why it cannot easily be sent to California if necessary.
The only factor that weighs against transfer is plaintiffs' choice of forum. Although all three plaintiffs assert their desire to proceed with the action in this district, the two individual plaintiffs are themselves residents of California and the Titan copyright is registered in their names. While WLD is a New York corporation, it was formed well after the events giving rise to this action took place. Thus, the importance of WLD's choice of forum is minimal, as it has no connection to the alleged 1998 agreement between the California parties. See Giuliani, 997 F. Supp. at 503 (finding that in a multi-plaintiff action, the New York citizenship of one corporate plaintiff did not outweigh the "numerous and substantial connections" the action had to the alternate venue, where it could not seriously be argued that any events giving rise to the action occurred in New York.).
CONCLUSION
The center of gravity of this litigation is California. Titan was developed in California by the individual California plaintiffs at Sun's California headquarters. These California plaintiffs registered the copyright in question, and any agreement between these plaintiffs and Sun regarding the rights to Titan took place in that state. Because WLD had no role in these material events, this action has little connection to New York.
For the foregoing reasons, Sun's motion to transfer this action to the Northern District of California is granted, and the Clerk is directed to transfer the action as soon as possible.
SO ORDERED.