Amini Inn. v. Bank & Estate Liquidators

• Decision Date: 20 June 2007
• Docket Number: Civil Action No. H-06-1561.
• Parties: AMINI INNOVATION CORPORATION, a California corporation, Plaintiff, v. BANK & ESTATE LIQUIDATORS, INC. d/b/a Bel Furniture, a Texas corporation, Jamal Mollai, an individual, and Collezione Europa U.S.A., Inc., a New Jersey corporation, Defendants.
• Court: U.S. District Court — Southern District of Texas

512 F.Supp.2d 1039

AMINI INNOVATION CORPORATION, a California corporation, Plaintiff, v. BANK & ESTATE LIQUIDATORS, INC. d/b/a Bel Furniture, a Texas corporation, Jamal Mollai, an individual, and Collezione Europa U.S.A., Inc., a New Jersey corporation, Defendants.

Civil Action No. H-06-1561.

United States District Court, S.D. Texas, Houston Division.

June 20, 2007.

COPYRIGHT MATERIAL OMITTED

Daniel M. Cislo, Mark D. Nielsen, Cislo Thomas L.P., Santa Monica, CA, Donald David Jackson, Haynes Boone L.L.P., Houston, TX, for Plaintiff.

Brett Hutton, Nick Mesiti, Heslin Rothenberg Farley & Mesiti P.C., Albany, NY, for Defendants.

MEMORANDUM AND ORDER

EWING WERLEIN, JR., United States District Judge.

Pending is Defendant Collezione Europa U.S.A., Inc.'s Motion to Dismiss Or Transfer, Or Alternatively, For a More Definite Statement (Document No. 41). After carefully considering the motion, response, reply, and applicable law, the Court concludes as follows.

I. Background

This is an action for copyright and design patent infringement arising out of the importation, advertisement, distribution, sale, and public display of certain home furniture items. Plaintiff Amini Innovation Corp. ("AICO"), a California corporation with its principal place of business in Pico Rivera, California, is in the business of furniture design and manufacturing. AICO originally sued Texas corporation Bank & Estate Liquidators, Inc. d/b/a BEL Furniture ("BEL") and BEL's President Jamal Mollai ("Mollai") (collectively, the "BEL Defendants") in this Court in May, 2006, alleging copyright and design patent infringement related to the advertising, display, and sale of AICO's entertainment walls and a bed frame. In pretrial discovery, AICO learned that Collezione Europa U.S.A., Inc. ("Collezione"), a New Jersey corporation with its principal place of business in Englewood, New Jersey, had supplied BEL with "at least one" of the accused products in this case. See Document No. 44 ex. A ¶ 3. In late October, 2006, AICO amended its complaint to add Collezione as a Defendant, and AICO asserted additional claims of infringement against Collezione.

Earlier that month, in mid-October, 2006, Collezione brought suit against AICO in the District of New Jersey for a declaration of non-infringement and invalidity with respect to certain of AICO's copyrights and design patents (the "New Jersey action"). In the New Jersey action, Collezione also seeks relief relating to cease and desist letters sent by AICO to Collezione and several of Collezione's customers in Virginia and Florida, and asserts claims for unfair competition, tortious interference with existing and prospective business relationships, tortious interference with contract, and commercial disparagement under Section 43(a) of the Lanham Act. Document No. 41 ex. A. Currently pending in the New Jersey action are AICO's motion to dismiss, strike, and/or transfer the New Jersey action to this court, and Collezione's motion to enjoin prosecution of this action.

In late 2006, AICO and the BEL Defendants settled their claims and counterclaims against each other, and the BEL Defendants were dismissed from this action. Document No. 40. Now pending is Collezione's motion to dismiss this "action on the basis of forum non conveniens, or alternatively, to transfer the action to the District of New Jersey pursuant to 28 U.S.C. § 1404(a). Alternatively, Collezione moves for a more definite statement.

II. Discussion

A. Motion to Dismiss Based Upon Forum Non Conveniens

The doctrine of forum non conveniens is an improper method of transfer in this instance because Collezione seeks to have this case transferred to another federal district court. "Only when the more convenient forum is a foreign country can a suit brought in a proper federal venue be dismissed on grounds of forum non conveniens." In re Air Crash Disaster Near New Orleans, 821 F.2d 1147, 1159 n. 15, (5th Cir.1987), vacated on other grounds, sub nom., Pan Am. World Airways, Inc. v. Lopez, 490 U.S. 1032, 109 S.Ct. 1928, 104 L.Ed.2d 400 (1989); Holmes v. Energy Catering Servs., LLC, 270 F.Supp.2d 882, 886 (S.D.Tex.2003); '14D Wright, Miller, and Cooper, Federal Practice and Procedure: Jurisdiction § 3828, at 620-23 (3d ed.2007). "If a party seeks to change venue within the federal system based on convenience, 28 U.S.C. § 1404(a) is the proper method." Holmes, 270 F.Supp.2d at 886; see also Cowan v. Ford Motor Co., 713 F.2d 100, 103 (5th Cir.1983) (finding that where the "more convenient forum" proposed is an alternate federal district court, the forum non conveniens doctrine has been superseded by 28 U.S.C. § 1404(a)); Quackenbush v. Allstate Ins. Co., 517 U.S. 706, 116 S.Ct. 1712, 1724, 135 L.Ed.2d 1 (1996). As such, Collezione's motion to dismiss on the basis of forum non conveniens will be denied.

B. Motion to Transfer Under 28 U.S.C. 1404 (a)

Collezione moves to transfer this action to the District of New Jersey pursuant to 28 U.S.C. § 1404(a). Section 1404(a) permits a district court to transfer a civil action to another proper venue "[f] or the convenience of parties and witnesses, [and] in the interest of justice ...." 28 U.S.C. § 1404(a). The purpose of § 1404(a) is "to prevent the waste of time, energy, and money and to protect litigants, witnesses, and the public against unnecessary inconvenience and expense.", Data-Treasury Corp. v. First Data Corp., 243 F.Supp.2d 591, 593 (N.D.Tex.2003) (citations omitted); see also Spiegelberg v. Collegiate Licensing Co., 402 F.Supp.2d 786, 789 (S.D.Tex.2005). The transfer of an action under § 1404 is committed to the sound discretion of the district court. Jarvis Christian Coll. v. Exxon Corp., 845 F.2d 523, 528 (5th Cir.1988).

The movant bears the burden of demonstrating a transfer of venue is warranted. Brown. v. Petroleum Helicopters, Inc., 347 F.Supp.2d 370, 372 (S.D.Tex. 2004); see also Peteet v. Dow Chem. Co., 868 F.2d 1428, 1436 (5th Cir.1989). A court should not transfer a case "if the only practical effect is to shift inconvenience from the moving party to the nonmoving party." Spiegelberg, 402 F.Supp.2d at 789 (quoting Goodman Co., L.P. v. A & H Supply, Inc., 396 F.Supp.2d 766, 776 (S.D.Tex.2005)).

The threshold issue under § 1404(a) is whether the plaintiff's claim could have been filed in the judicial district to which transfer is sought. In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (citing In re Horseshoe Entm't, 337 F.3d 429, 433 (5th Cir.2003)). Here, it is undisputed that this action could have been brought in the District of New Jersey, and venue is proper in that district under 28 U.S.C. § 1400(b). See Document No. 41 at 10-11; Document No. 43 at 8. The Court therefore considers the § 1404(a) balancing factors.

Whether to transfer a case under Section 1404(a) "turns on a number of private and public interest factors, none of which are given dispositive weight." In re Volkswagen AG, 371 F.3d at 203. These concerns include: (1) the convenience of parties and witnesses; (2) the cost of obtaining attendance of witnesses and other trial expenses; (3) the availability of compulsory process; (4) the relative ease of access to sources of proof; (5) the place of the alleged wrong; (6) the plaintiffs choice of forum; (7) the possibility of delay and prejudice; (8) administrative difficulties flowing from court congestion; (9) the local interest in having localized interests decided at home; (10) the familiarity of the forum with the law that will govern the case; (11) the avoidance of unnecessary conflict of law problems; and (12) the interests of justice in general. See id. (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 102 S.Ct. 252, 258 n. 6, 70 L.Ed.2d 419 (1981)); see also Spiegelberg, 402 F.Supp.2d at 789-90; Gundle Lining Constr. Corp. v. Fireman's Fund Ins. Co., 844 F.Supp. 1163, 1165 (S.D.Tex.1994); DataTreasury, 243 F.Supp.2d at 593. "A court may consider a wide range of circumstances in evaluating the facts involved in each case." Goodman, 396 F.Supp.2d at 776.

1. Analysis of Private Interest Factors Convenience of Parties and Witnesses, Cost of Obtaining Witnesses and Other Trial Expenses

"The relative convenience to the witnesses is often recognized as the most important factor under § 1404(a)." Spiegelberg, 402 F.Supp.2d at 790. "[I]t is the convenience of non-party witnesses, rather than that of party witnesses, that is the more important factor and is accorded greater weight in a transfer of venue analysis." State Street Capital Corp. v. Dente, 855 F.Supp. 192, 198 (S.D.Tex.1994) (internal citations omitted). "The convenience of one key witness may outweigh the convenience of numerous less important witnesses." LeBouef v. Gulf Operators, Inc., 20 F.Supp.2d 1057, 1060 (S.D.Tex.1998); Houston Trial Reports, Inc. v. LRP Publ'ns, Inc., 85 F.Supp.2d 663, 668 (S.D.Tex.1999).

Collezione asserts that all of its key witnesses, including key non-party witness Thomas Hassett, reside in New Jersey. Hassett, who is Collezione's independent furniture designer, designed some of the alleged infringing products at issue. Collezione claims Hassett will testify and, as well, its principals and co-founders, Leonard and Paul Frankel, who are expected to testify as to Collezione's design choices, manufacturing process, and various financial and marketing- strategies. Hassett, along with the Frankels and other of Collezione's employees, reside in New Jersey, where Collezione is located and has its principal place of business, and where Collezione's sales, marketing, and pricing decisions related to the accused products occur. AICO, which is a California corporation with its principal place of business in Southern California, identifies only one inconvenienced by a transfer of this case Mollai, a dismissed co-Defendant who resides witness who will be to New Jersey: Jamal in the Houston area.¹ Mollai is the principal of BEL Furniture and is expected to testify about some of...