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Sauer Brands, Inc. v. Duke Sandwich Productions, Inc.

United States District Court, W.D. North Carolina, Charlotte Division

January 6, 2020

SAUER BRANDS, INC., a/k/a Duke's, Plaintiff,
v.
DUKE SANDWICH PRODUCTIONS, INC., DFP SANDWICH SHOPS, LLC, and DUKE BRANDS, Defendants.

          ORDER

          Frank D. Whitney, Chief United States District Judge

         THIS 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.

         I. Background

         Plaintiff 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).

         II. Motion to Dismiss for Improper Venue

         Under 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.”).[1] 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).

         Defendants 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.

         III. Motion to Transfer to the District of South Carolina

         In the 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).

         In 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 stated,

In considering a motion to transfer, a court should consider, among other things, [1] the plaintiff's initial choice of forum; [2] the residence of the parties; [3] the relative ease of access of proof; [4] the availability of compulsory process for attendance of witnesses and the costs of obtaining attendance of willing witnesses; [5] the possibility of a view; [6] the enforceability of a judgment, if obtained; [7] the relative advantages and obstacles to a fair trial; [8] other practical problems that make a trial easy, expeditious, and inexpensive; [9] the administrative difficulties of court congestion; [10] 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; [11] 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.

         A. Plaintiff's Initial Choice of Forum

         “Plaintiff 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 ...


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