Mattel, Inc. v. Robarb's, Inc.

• Court: U.S. District Court — Southern District of New York
• Writing for the Court: Sweet
• Citation: Mattel, Inc. v. Robarb's, Inc., 139 F.Supp.2d 487 (S.D. N.Y. 2001)
• Decision Date: 18 April 2001
• Docket Number: No. 00 CIV 4866 RWS.,00 CIV 4866 RWS.
• Parties: MATTEL, INC., Plaintiff, v. ROBARB'S, INC., et al., Defendants.

139 F.Supp.2d 487

MATTEL, INC., Plaintiff, v. ROBARB'S, INC., et al., Defendants.

No. 00 CIV 4866 RWS.

United States District Court, S.D. New York.

April 18, 2001.

Perkins & Dunnegan, New York City, By William Dunnegan, Ann Marie Croswell, Of Counsel, for Plaintiff.

Marshall & Melhorn, Toledo, OH, By Michael S. Scalzo, Jennifer J. Dawson, Of Counsel, for Defendants.

OPINION

SWEET, District Judge.

Defendants Robarb's, Inc. ("Robarb's"), Robert R. Carpenter, Robert E. Carpenter, Barbara Carpenter, and Rollin K. Carpenter (collectively "the defendants"), have moved for a transfer of venue pursuant to 28 U.S.C. § 1404(a) or dismissal for forum non conveniens, for judgment on the pleadings on the copyright infringement claims brought by plaintiff Mattel, Inc. ("Mattel") pursuant to Fed.R.Civ.P. 12(c), partial summary judgment pursuant to Fed. R.Civ.P. 56, and for an order pursuant to Fed.R.Civ.P. 30(d)(1) compelling Mattel to produce a witness for deposition and to extend the discovery deadline accordingly. Defendants also seek fees and costs in connection with these motions. Mattel opposes the motions.

For the reasons set forth below, the motions are granted in part and denied in part.

The Parties

Mattel is a Delaware Corporation with its principal place of business in El Segundo, California. Mattel is the world's largest manufacturer of toys, games and playthings. Two of its lines include the trademarked "Hot Wheels" and "Matchbox" brands of miniature toy vehicles.

Robarb's is a family-owned and operated Ohio corporation with a principal place of business in Liberty Center, Ohio, which manufactures Collectible Car Display Frames ("Collectible Car Displays") designed to display collectible miniature die-cast cars in their original blister packaging.

Robert R. Carpenter, a resident of Liberty Center, Ohio, is the owner and acting president of Robarb's.

Barbara Carpenter is a Robarb's employee and resides with her husband, Robert R. Carpenter, in Liberty Center, Ohio.

Robert E. Carpenter, Robert R. Carpenter's father, is a Robarb's employee who resides in Liberty Center, Ohio.

Rollin K. Carpenter, Robert R. Carpenter's brother, is the Vice President of Sales of Robarb's and resides in Liberty Center, Ohio.

Procedural History

The complaint in this action, filed on June 30, 2000, alleges that Robarb's infringed on Mattel's trademarks and copyrights by displaying inserts with the trademarked names, "Mattel," "Hot Wheels," and "Matchbox" in its Collectible Car Displays without authorization. Mattel seeks "a reasonable royalty" and treble fees pursuant to 15 U.S.C. § 1117(b). The defendants have filed a cross-claim alleging that Mattel has interfered with their contractual relations and engaged in unfair competition.

After an August 3, 2000 hearing, the Honorable Sidney H. Stein, U.S. District Judge, sitting in Part I, issued a preliminary injunction pursuant to Fed.R.Civ.P. 65. Judge Stein found that the trademarks at issue were protectable, and that Robarb's Collectible Car Display inserts were likely to confuse consumers as to the origin, manufacture, or affiliation of the display case. Furthermore, Judge Stein found that, although Robarb's could lawfully inform the public that its display case was compatible with Mattel's miniature car packages, the specific inserts Robarb's employed "far exceed the bounds of fair use." (Stein Aug. 22, 2000 Order at 5.) The injunction, issued on August 25, 2000, bars the defendants from "utilizing the current cardboard inserts or any replacement inserts which infringe the `Mattel,' `Hot Wheels,' or `Matchbox' trademarks in connection with the sale or marketing of the Robarb's display cases." (Id. at 6; Prel. Inj. at 2.)

On February 23 and 27, 2001, defendants filed the instant motions, and Mattel filed its opposition on March 15, 2001. Robarb's replied on March 21, 2001, whereupon the motion was deemed fully submitted. Meanwhile, the parties submitted a Joint Final Pretrial Order on March 16, 2001.

Facts

In their Statement pursuant to Local Civil Rule 56.1, defendants allege that the following are undisputed material facts: (1) they relied on the advice of counsel before using the inserts at issue in this action (the "Original Inserts"); (2) they relied on what they believed to be Mattel's express approval, which came in the form of positive feedback from three individuals who identified themselves as manufacturers of the cars exhibited in the Robarb's Collectible Car Display at an International Toy Fair in New York seventeen months before this action was filed; (3) another manufacturer whose cars were displayed in Robarb's inserts expressed no objection to the use of that trademark after receiving a response to an inquiry; and (4) shortly after the commencement of this action, counsel for Robarb's communicated in writing its willingness to stop shipping the Original Inserts and request that its customers pull the Original Inserts from existing Collectible Car Displays. Mattel asserts that there is a genuine issue of material fact as to each of these four allegations, and as to factual issues regarding actual confusion and bad faith.

Discussion

I. Transfer of Venue

A. Applicable Legal Standard

Section 1404(a) of Title 28 of the United States Code provides in relevant part that, "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).

This section is a statutory recognition of the common law doctrine of forum non conveniens as a facet of venue in the federal courts. See Wilshire Credit Corp. v. Barrett Capital Management Corp., 976 F.Supp. 174, 180 (W.D.N.Y.1997). Section 1404(a) strives to prevent waste "`of time, energy and money' and to `protect litigants, witnesses and the public against unnecessary inconvenience and expense.'" Wilshire, 976 F.Supp. at 180 (quoting Continental Grain Co. v. Barge FBL-585, 364 U.S. 19, 27, 80 S.Ct. 1470, 4 L.Ed.2d 1540 (1960)).

"`[M]otions for transfer lie within the broad discretion of the courts and are determined upon notions of convenience and fairness on a case-by-case basis.'" Linzer v. EMI Blackwood Music Inc., 904 F.Supp. 207, 216 (S.D.N.Y.1995) (quoting In re Cuyahoga Equip. Corp., 980 F.2d 110, 117 (2d Cir.1992)) (citing Stewart Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988)). The burden of demonstrating the desirability of transfer lies with the moving party. See, e.g., Hubbell Inc. v. Pass & Seymour, Inc., 883 F.Supp. 955, 962 (S.D.N.Y.1995).

Thus, the inquiry on a motion to transfer is two-fold. The court must first determine whether the action sought to be transferred is one that "might have been brought" in the transferee court. Second, the court must determine whether, considering the "convenience of parties and witnesses" and the "interest of justice," a transfer is appropriate. Wilshire, 976 F.Supp. at 180.

In determining whether transfer is warranted "for the convenience of the parties and witnesses [and] in the interest of justice," courts generally consider several factors, including: (1) the convenience of witnesses, (2) the convenience of the parties, (3) the locus of operative facts, (4) the availability of process to compel the attendance of unwilling witnesses, (5) the location of relevant documents and the relative ease of access to sources of proof, (6) the relative means of the parties, (7) the forum's familiarity with the governing law, (8) the weight accorded the plaintiff's choice of forum, and (9) trial efficiency and the interest of justice, based on the totality of the circumstances. See Orb Factory, Ltd. v. Design Science Toys, Ltd., 6 F.Supp.2d 203 (S.D.N.Y.1998) (citing Wilshire, 976 F.Supp. at 181); see also Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 507-08, 67 S.Ct. 839, 842-43, 91 L.Ed. 1055 (1947); Constitution Reinsurance Corp. v. Stonewall Ins. Co., 872 F.Supp. 1247, 1250 (S.D.N.Y.1995); Cento Group, S.p.A v. OroAmerica, Inc., 822 F.Supp. 1058, 1060 (S.D.N.Y.1993).

B. The Action Will Not Be Transferred Pursuant to § 1404 or Dismissed for Forum Non Conveniens

Although the defendants raise compelling grounds for transfer, the late timing of this motion creates concerns of judicial economy that outweigh considerations of inconvenience and expense to the defendants.

This action could have been brought in the Western Division of the United States District Court for the Northern District of Ohio, which has personal jurisdiction over the defendants. As defendants note, they and three of their potential nonparty witnesses live in Ohio. Between Robert E. Carpenter's poor health and Robert R. and Barbara Carpenter's three young children, the defendants will clearly be inconvenienced by having to travel to the Southern District of New York for trial. Moreover, whereas Mattel is a thriving national toy company whose employees will have to travel from California for trial in any event,¹ Robarb's and the individual defendants allege that they are on precarious financial grounds.

However, the parties have already expended considerable time and expense in conducting discovery and preparing a joint final pretrial order in this District. Given the extent of pretrial resolution of the relevant issues, the trial is unlikely to last more than two or three days. Transferring the case at this juncture would unnecessarily require another court to become familiar with this action. Finally, Robarb's has cited no case in which transfer of venue was granted after the filing of a final joint pretrial order.

The motion to transfer this action to the Western Division of the United States District Court for the Northern District of Ohio, or to dismiss for forum non conveniens, is denied.

As the adoption of § 1404 "relegated common law forum non conveniens to cases where the alternative forum to which a...