United States District Court, W.D. North Carolina, Charlotte Division
D. Whitney, Chief United States District Judge
MATTER is before the Court on Defendants' Motion to
Dismiss or, in the alternative, to Transfer (Doc. No. 15).
The motion has been fully briefed by the parties (Docs. Nos.
16, 18, 19), and the matter is ripe for disposition. For the
reasons stated below, the motion is DENIED.
Sauer Brands, Inc. (“Sauer Brands”) filed this
action on October 4, 2019, alleging federal trademark
infringement, unfair competition, false designation of
origin, and trademark dilution under the Lanham Act, 15
U.S.C. § 1051 et seq., violations of the North
Carolina Unfair and Deceptive Trade Practices Act, N.C. Gen.
Stat. § 75-1.1 et seq., and common law unfair
competition and false designation of origin claims, as well
as requesting a cancellation of Defendants' trademark
registrations. See generally (Doc. No. 1).
Defendants Duke Sandwich Productions, Inc. (“Duke
Sandwich”), DFP Sandwich Shops, LLC
(“DFP”), and Duke Brands (“Duke
Brands”) (collectively “Defendants”) then
moved to dismiss the case for improper venue under Rule
12(b)(3) of the Federal Rules of Civil Procedure, or in the
alternative, to transfer the case to the District of South
Carolina. (Doc. No. 15).
Motion to Dismiss for Improper Venue
28 U.S.C. § 1391(b), “a civil action may be
brought in-(1) a judicial district in which any defendant
resides, if all defendants are residents of the State in
which the district is located;” or “(2) a
judicial district in which a substantial part of the events
or omissions giving rise to the claim occurred, or a
substantial part of the property that is the subject of the
action is situated.” 28 U.S.C. § 1391(b). The
statute further clarifies that “an entity with the
capacity to sue and be sued in its common name under
applicable law . . . shall be deemed to reside, if a
defendant, in any judicial district in which such defendant
is subject to the court's personal jurisdiction with
respect to the civil action in question.” Id.
§ 1391(c)(2). In the present case, Plaintiff has pled
facts which establish the Court's personal jurisdiction
over Defendants. See Walden v. Fiore, 571 U.S. 277,
285 (2014) (discussing cases upholding personal jurisdiction
over defendants by using the “minimum contacts”
analysis); Burger King Corp. v. Rudzewicz, 471 U.S.
462, 475-77 (1985) (“So long as a commercial
actor's efforts are purposefully directed toward
residents of another State, we have consistently rejected the
notion that an absence of physical contacts can defeat
personal jurisdiction there.”) (internal quotations
omitted); see also, e.g., (Doc. No. 1, p.
5, ¶ 20) (“Defendants are engaged in the promotion
and sale of infringing products in and around Charlotte,
North Carolina. Attached as Exhibit A are representative
examples of photographs showing Defendants' infringing
DUKE'S branded products, which were purchased in Bi-Lo
and/or Ingles grocery stores in and around Charlotte.
Moreover, Defendants have announced that in the third quarter
of[ ]2019, they will open a manufacturing facility in this
judicial district that they will use to prepare, package, and
distribute the infringing products at issue in this
case.”). Equally important is the fact that
Defendants did not challenge the Court's personal
jurisdiction in their motion, thereby waiving any argument as
to this point. Fed.R.Civ.P. 12(h).
contend “the Complaint does not demonstrate that a
substantial part of the events giving rise to Plaintiff's
claims occurred in this judicial district, nor does it
demonstrate that a substantial part of the property that is
[the] subject of the action is situat[ed] in this judicial
district.” (Doc. No. 16, p. 5). The case before the
Court is a trademark infringement and unfair and deceptive
trade practices dispute. (Doc. No. 1, p. 3, ¶ 13). In
such cases, although venue in other fora may be appropriate
as well, venue “generally will lie where the events or
omissions that would give rise to a potential claim for
trademark infringement occur.” Jeffers Handbell
Supply, Inc. v. Schulmerich Bells, LLC, No.
0:16-cv-03918-JMC, 2017 WL 3582235, at *9 (D.S.C. Aug. 18,
2017). In other words, “[b]ecause transactional venue
for trademark infringement actions is appropriate in the
locations where there are sales or advertising of the
allegedly infringing goods or services, ” id.,
and because Plaintiff alleged trademark infringement from
sales in and around the Charlotte area, (Doc. No. 1, p. 5,
¶ 20), venue is appropriate in the Western District of
North Carolina. Accordingly, the motion to dismiss is DENIED.
Motion to Transfer to the District of South Carolina
alternative, Defendants request the Court to transfer the
case to the District of South Carolina. (Doc. No. 16, p. 1).
“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 or to any district or division to which all
parties have consented.” 28 U.S.C. § 1404(a).
Defendants claim, and Plaintiff does not dispute, that the
action could have originally been brought in the District of
South Carolina. (Doc. No. 16, p. 5).
evaluating whether to transfer a case to another
jurisdiction, the Court must weigh eleven factors to
determine whether Defendants have met their burden to
transfer venue. Scenic Mktg. Grp., LLC v. S. Home Med.
Equip., Inc., No. 3:11-CV-00551, 2012 WL 113664, at *1
(W.D. N.C. Jan. 13, 2012). As the Court has previously
In considering a motion to transfer, a court should consider,
among other things,  the plaintiff's initial choice of
forum;  the residence of the parties;  the relative
ease of access of proof;  the availability of compulsory
process for attendance of witnesses and the costs of
obtaining attendance of willing witnesses;  the
possibility of a view;  the enforceability of a judgment,
if obtained;  the relative advantages and obstacles to a
fair trial;  other practical problems that make a trial
easy, expeditious, and inexpensive;  the administrative
difficulties of court congestion;  the interest in having
localized controversies settled at home [and] the
appropriateness in having the trial of a diversity case in a
forum that is at home with the state law that must govern the
action;  and the avoidance of unnecessary problems with
conflict of laws.
Commercial Equip. Co., Inc. v. Barclay Furniture
Co., 738 F.Supp. 974, 976 (W.D. N.C. 1990). The
Defendants “carr[y] a particularly heavy burden,
” as “[a] court should not disturb the
plaintiff's choice of forum unless the moving party
demonstrates that the balance of convenience to the parties
and witnesses and the interests of justice weigh heavily in
favor of the transfer to another district.”
Id. (citations omitted). The mere shifting of
inconvenience from one party to another will not satisfy
Defendants' burden. Id.; see also Uniprop
Manufactured Hous. Cmtys. Income Fund II v. Home Owners
Funding Corp., 753 F.Supp. 1315, 1322 (W.D. N.C. 1990)
(noting that “if the equities lean but slightly in
favor of the movant after all factors are considered, ”
transfer is still not appropriate). In the present case, the
parties agree that factors (5), (6), and (9)- the ability to
view, the enforceability of judgment, and court
congestion-are neutral. The Court analyzes the remaining
factors in turn below.
Plaintiff's Initial Choice of Forum
chose North Carolina as its choice of forum, and courts have
given great weight to this factor of the analysis.”
Scenic Mktg. Grp., 2012 WL 113664, at *1; see
also Collins v. Straight, Inc., 748 F.2d 916, 921 (4th
Cir. 1984); Commercial Equip. Co., 738 F.Supp. at
976 (“[A] court ordinarily should accord the
plaintiff's choice of forum great weight.”). When
the plaintiff selects a foreign forum and the cause of action
bears little relation to that forum, however, such decision
is not entitled to the same deference. See JTH Tax, Inc.
v. Lee, 482 F.Supp.2d 731, 736 (E.D. Va. 2007). Even
then, there are at least two scenarios where a foreign
plaintiff's choice of venue is still entitled to
deference. The first is when the plaintiff cannot file suit
in its home jurisdiction(s) due to problems obtaining
personal jurisdiction over a defendant. See
Charlotte's Best Breads, LLC v. Pumpernickel Assocs.,
LLC, No. 3:16-CV-00121-GCM, 2016 WL 3078749, at *4 (W.D.
N.C. May 31, 2016) (“Because Defendant does not suggest
that it would consent to jurisdiction in [the plaintiff's
home jurisdiction], [Plaintiff's] decision not to file
there is immaterial to the transfer analysis.”). The
second scenario is when, in trademark cases, the plaintiff is
conducting business in that forum. See Kiss My Face Corp.
v. Bunting, No. 02CIV2645, 2003 WL 22244587, at *4
(S.D.N.Y. Sept. 30, 2003) (“Where there is ongoing
business activity in the chosen forum, however,
plaintiff's choice of forum is given ...