Mead Data Cent., Inc. v. West Pub. Co.

• Decision Date: 15 December 1987
• Docket Number: No. C-3-87-426.,C-3-87-426.
• Citation: 679 F. Supp. 1455
• Parties: MEAD DATA CENTRAL, INC., Plaintiff, v. WEST PUBLISHING COMPANY, Defendant.
• Court: U.S. District Court — Southern District of Ohio

679 F. Supp. 1455

MEAD DATA CENTRAL, INC., Plaintiff, v. WEST PUBLISHING COMPANY, Defendant.

No. C-3-87-426.

United States District Court, S.D. Ohio, W.D.

December 15, 1987.

David Greer, Armistead, W. Gilliam, Jr., Dayton, Ohio, Alan M. Wiseman, Marguerite Boyd, Washington, D.C., for plaintiff.

Vance K. Opperman, Joseph R. Kernan, Jr., Diane M. Helland, Richard A. Lockridge, Minneapolis, Minn., Gordon H. Savage, Andrew C. Storar, Dayton, Ohio, for defendant.

RICE, District Judge.

This case is before the Court on the Defendant West Publishing Company's Motion for Transfer of Venue (Doc. # 7). For the reasons set forth below, the Defendant's Motion is overruled in its entirety.

Plaintiff Mead Data Central, Inc. (MDC) commenced this antitrust action against Defendant West Publishing Company (West) on August 18, 1987. Two arguably related actions are currently pending in the District of Minnesota. In West Publishing Co. v. Mead Data Central, Inc., West seeks a declaratory judgment preventing MDC from infringing upon certain copyrights allegedly held by West. West Publishing Co. v. Mead Data Central, Inc., No. 4-85-931 (D.Minn. filed July 29, 1985).^* In Bancroft-Whitney Co. v. West Publishing Co., Bancroft-Whitney seeks a declaratory judgment to the effect that West's copyrights in West's annotated compilation of Texas statutes are invalid. Bancroft-Whitney Co. v. West Publishing Co., No. 4-86-473 (D.Minn. filed Dec. 16, 1985).¹ In addition, the case at bar is also similar to a previous antitrust suit filed by MDC against West in the Southern District of New York in 1976.^**

West asserts that two factors — the fact that this action is a compulsory counterclaim to the Minnesota copyright action and the fact that the doctrine of collateral estoppel bars relitigation of the transfer issue — mandate or require transfer of this action to the District of Minnesota.² West further asserts that the possibility of inconsistent decisions provides independent grounds for transfer. Finally, West asserts that the balance of convenience strongly weighs in favor of trial in Minnesota. The Court will examine each of Defendant West's assertions, seriatim.

I. DISCUSSION

Defendant West has brought this motion pursuant to 28 U.S.C. § 1404(a) which states 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." Section 1404(a) is intended to "protect litigants, witnesses and the public against unnecessary inconvenience and expense...." Continental Grain Co. v. Barge FBL-585, 364 U.S. 19, 27, 80 S.Ct. 1470, 1475, 4 L.Ed.2d 1540 (1960). The seminal issue before the Court in this case is whether transfer to the District of Minnesota "is warranted by the convenience of parties and witnesses and promotes the interest of justice." Van Dusen v. Barrack, 376 U.S. 612, 616, 84 S.Ct. 805, 809, 11 L.Ed.2d 945 (1964).

"The burden of showing the desirability of transfer is on the moving party." Shapiro v. Merrill Lynch & Co., 634 F.Supp. 587, 589 (S.D.Ohio 1986). This burden is substantial. See Nemmers v. Truesdale, 612 F.Supp. 245, 246 (N.D.Ohio 1985). The movant must establish "that once all the relevant factors are scrutinized, fairness and practicality strongly favor the forum to which transfer is sought." Rowe v. Chrysler Corp., 520 F.Supp. 15, 16 (E.D. Mich.1981).

Before a transfer under § 1404(a) may be considered, it must first be established that the action could have been brought in the proposed transferee district court. Continental Grain Co., 364 U.S. at 21-22, 80 S.Ct. at 1472. In the case at bar, the jurisdiction of the Minnesota court would be proper under 28 U.S.C. §§ 1331, 1332, 1337 and the venue of the Minnesota court would be proper under 15 U.S.C. § 22. Thus, this Court concludes that transfer to the District of Minnesota is permissible.

A. IS TRANSFER MANDATED?

Defendant West makes two basic arguments in support of its assertion that transfer to the District of Minnesota is mandated. First, West argues that the relationship between MDC's claims in the case at bar and the issues raised by the Minnesota copyright action is such that MDC's claims constitute compulsory counterclaims. As MDC's claims are allegedly compulsory counterclaims, West asserts that transfer is mandated. Second, West argues that collateral estoppel bars relitigation of the transfer issue, and, thus, transfer to the District of Minnesota is mandatory.

1. The relationship of MDC's claims to the Minnesota copyright action

Defendant West first argues that MDC's claims are compulsory counterclaims to West's copyright action in Minnesota. West asserts that as compulsory counterclaims, MDC's claims must be brought in Minnesota. Thus, West maintains that transfer of MDC's claims is mandatory.

Rule 13(a) of the Federal Rules of Civil Procedure governs compulsory counterclaims. Rule 13 provides in pertinent part:

A pleading shall state as a counterclaim any claim which at the time of serving the pleading the pleader has against any opposing party, if it arises out of the transaction or occurrence that is the subject matter of the opposing party's claim and does not require for its adjudication the presence of third parties of whom the court cannot acquire jurisdiction.

The Sixth Circuit has ruled that the test to be "applied in determining whether a counterclaim is compulsory is whether there is a logical relationship between the claim and counterclaim." See United States v. Southern Construction Co., 293 F.2d 493, 500 (6th Cir.1961), cert. granted, Southern Construction Co. v. Pickard, 368 U.S. 975, 82 S.Ct. 478, 7 L.Ed.2d 437, rev'd in part on other grounds, 371 U.S. 57, 83 S.Ct. 108, 9 L.Ed.2d 31 (1962). Among the factors which must be considered are whether the claims present "different legal, factual, and evidentiary questions." Maddox v. Kentucky Finance Co., 736 F.2d 380, 383 (6th Cir.1984). In determining whether a particular claim is a compulsory counterclaim, a court must consider whether "the interests of judicial economy and efficiency would be served ... by requiring that the two claims be heard together." Id. In order to make such a determination in the case at bar, it is necessary for the Court to examine the nature of West's Complaint in the Minnesota copyright action and the nature of MDC's Complaint in the case at bar.

An understanding of the history of Defendant West and Plaintiff MDC is vital to an understanding of their respective Complaints. West is a corporation organized and existing under the laws of the state of Minnesota, with its principal place of business in St. Paul, Minnesota. Since before the turn of the century, West has engaged in collecting, selecting, compiling, arranging, and reporting the Opinions of many state and federal courts. West reformats and arranges the text of each Opinion it elects to publish in West's own style. It adds headnotes, parallel citations, and key numbers. In some instances, West corrects clerical errors. After West has completed its editing procedure, it assigns the report to one of the series of publications within its national reporter system by court and/or subject matter of the Opinion. West further categorizes and arranges its reports in each and every volume within each series. The volumes and pages are then numbered to allow judges, lawyers, and scholars to communicate precisely and efficiently the location of the specific text within a West report. West also publishes the statutes of various states. In addition, West is one of the major publishers of comprehensive legal digests of federal and state court opinions, publishes legal encyclopedias, and is a major publisher of legal case books in the United States. In recent years, West has introduced its WESTLAW service, a computer-assisted legal research service containing Opinions of state and federal courts.

Plaintiff MDC is a corporation organized and existing under the laws of the state of Delaware, with its principal place of business in Miamisburg, Ohio. MDC's businesses include a computer-assisted legal research and reporting service, known as LEXIS, which makes available to subscribers opinions of the federal and state courts and statutes of the United States and the fifty states. LEXIS subscribers are located in all fifty states and the District of Columbia, and include private law firms, law schools, federal, state, and local government agencies, as well as the United States Courts. MDC is a subsidiary of the Mead Corporation.

The Minnesota copyright action was commenced on July 26, 1985, in the United States District Court for the District of Minnesota. West's claim arose when MDC announced that it intended to include "star pagination" within the text of LEXIS reports. Star pagination would allow a LEXIS user to cite to specific pages within one of West's reporters without ever seeing that reporter. West alleges that MDC's intended use of West's page numbers within the text of LEXIS reports will adversely affect the value of West's national reporter system publications. West's basic argument is that each publication's pagination is protected by the copyrights West holds on that publication. Count One of West's Complaint asserts that MDC's intended use of West's page numbers will constitute copyright infringement in violation of the copyright laws of the United States, 17 U.S.C. § 101 et seq. West is also concerned that star pagination will confuse and mislead LEXIS users.³ In addition, Count Ten of West's Complaint asserts that MDC's use of West page numbers will diminish the value of West's national reporter system publications and divert trade from West to MDC thus constituting misappropriation under the common law. Finally, Count Eleven of West's Complaint asserts that MDC's intended use of West page numbers constitutes unfair competition under the common law.

In its prayer...