Shijin Vapor, LLC v. Bolt USA, LLC
| Decision Date | 23 November 2020 |
| Docket Number | Case No. 20-cv-05238-PJH |
| Parties | SHIJIN VAPOR, LLC, Plaintiff, v. BOLT USA, LLC, et al., Defendants. |
| Court | U.S. District Court — Northern District of California |
Before the court is defendant Bolt USA, LLC's motion to dismiss and motion to transfer venue. The matter is fully briefed and suitable for decision without oral argument. Having read the parties' papers and carefully considered their arguments and the relevant legal authority, and good cause appearing, the court rules as follows.
This declaratory judgment suit arises out of an alleged trademark infringement. Plaintiff Shijin Vapor, LLC ("plaintiff") is the manufacturer of e-liquids for use in electronic cigarettes, vaporizers, and similar products. Complaint, ¶ 7. Some of plaintiff's products were marked with the name "Bolt" and were sold through a third-party, VaporDNA.1 Id., ¶ 29.
On or about April 30, 2020, defendant Bolt USA, LLC ("defendant") applied for multiple trademarks on the word "Bolt" and on a stylized "Bolt" logo. Complaint, ¶¶ 11-24. On or about May 12, 2020, defendant sent a cease and desist letter to VaporDNA, identifying plaintiff's products as allegedly infringing defendant's trademarks. Complaint, Ex. 2. Defendant's letter directed VaporDNA to confirm that it would stop using the marks and provide a detailed financial accounting of all allegedly infringing products. Id. Defendant's letter further stated that it would "take any and all available legal action, including filing a civil suit" and that it would "take action without further notice or demand" if the letter's requests were not met. Id.
On June 10, 2020, defendant sent another cease and desist letter, to plaintiff. Complaint, Ex. 7. Plaintiff alleges that defendant's letter contains false assertions of fact, and further alleges that defendant made material false statements to the United States Patent and Trademark Office in order to secure its "Bolt"-related trademarks. Complaint, ¶¶ 38, 39.
Plaintiff further alleges that defendant's letter to VaporDNA "falsely claimed ownership" of the "Bolt"-related trademarks, and as a result of the letter, "VaporDNA terminated its business relationship with plaintiff with regard to plaintiff's Bolt marked products." Id., ¶¶ 27, 29.
On July 30, 2020, plaintiff filed this suit, seeking a declaratory judgment stating that plaintiff had used the "Bolt" mark prior to defendant's first use, and is thus legally entitled to use the mark.2 Complaint at 19. Plaintiff also asserts three other causes of action arising out of the trademark dispute and its effect on plaintiff's contract with VaporDNA: intentional interference with contractual relations, intentional interference with prospective economic relations, and violation of Cal. Bus. & Prof. Code § 17200. Complaint, ¶¶ 45-68.
Defendant now moves to dismiss or transfer the complaint for improper venue under Rule 12(b)(3) and 28 U.S.C. § 1406, or in the alternative, to transfer for convenience under 28 U.S.C. § 1404(a).
"The district court of a district in which is filed a case laying venue in the wrong division or district shall dismiss, or if it be in the interest of justice, transfer such case to any district or division in which it could have been brought." 28 U.S.C. § 1406(a). If a defendant files a motion under Federal Rule of Civil Procedure 12(b)(3) to dismiss for improper venue, it is the plaintiff's burden to establish that venue is properly in the district where the suit was filed. Piedmont Label Co. v. Sun Garden Packing Co., 598 F.2d 491, 496 (9th Cir. 1979). In considering a motion to dismiss under Rule 12(b)(3), a court need not accept the pleadings as true and may consider facts outside the pleadings. See Argueta v. Banco Mexicano, S.A., 87 F.3d 320, 324 (9th Cir. 1996).
Where venue is improper, a court has discretion to dismiss the case pursuant to Rule 12(b)(3) or transfer the case in the interests of justice to an appropriate jurisdiction under 28 U.S.C. § 1406(a). See King v. Russell, 963 F.2d 1301, 1304 (9th Cir. 1992) (per curiam). "The decision to dismiss for improper venue, or alternatively to transfer venue to a proper court, is a matter within the sound discretion of the district court." Klamath Tribes v. United States Bureau of Reclamation, 2018 WL 3570865 at *3 (N.D. Cal. July 25, 2018) (citing King, 963 F.2d at 1304).
In addition, "[f]or 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). The party moving for transfer for the convenience of parties and witnesses bears the burden of demonstrating transfer is appropriate. Commodity Futures Trading Comm'n v. Savage, 611 F.2d 270, 279 (9th Cir. 1979). In considering a § 1404(a) motion to transfer, the court must look at each of the enumerated factors—whether the action could have been brought in the proposed transferee district, the convenience of the parties, the convenience of the witnesses, and the interests of justice. Hatch v. Reliance Ins. Co., 758 F.2d 409, 414 (9th Cir. 1985).
If the action could have been brought in the transferee venue, the court then must determine if the defendant has made a "strong showing of inconvenience to warrant upsetting the plaintiff's choice of forum" by considering private factors relating to "the convenience of the parties and witnesses" and public factors relating to "the interest of justice," including "the administrative difficulties flowing from court congestion and [the] local interest in having localized controversies decided at home." Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986) (internal quotation marks omitted).
Courts in this district commonly examine the following factors to determine convenience and fairness under § 1404(a): (1) the plaintiff's choice of forum, (2) the convenience of the parties, (3) the convenience of the witnesses, (4) the ease of access to the evidence, (5) the familiarity of each forum with the applicable law, (6) the feasibility of consolidation with other claims, (7) any local interest in the controversy, and (8) the relative court congestion and time to trial in each forum. Williams v. Bowman, 157 F. Supp. 2d 1103, 1106 (N.D. Cal. 2001) (citation omitted); see Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-99 (9th Cir. 2000). Courts may examine all these factors, but "[n]o single factor is dispositive." Ctr. for Biological Diversity v. Kempthorne, 2008 WL 4543043, at *2 (N.D. Cal. Oct. 10, 2008) (citing Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988)). The weighing of the factors for and against transfer is within a trial court's discretion. Ventress v. Japan Airlines, 486 F.3d 1111, 1118 (9th Cir. 2007) (citation omitted).
Defendant makes two venue-related arguments. First, it contends that venue is not proper in the Northern District of California under 28 U.S.C. § 1391(b) and, therefore, the court should dismiss the complaint or, in the alternative, transfer the case to the district court for the Central District of California. Dkt. 12 at 7. Second, defendant argues that, even if venue is proper in this district, the court should transfer the case to the Central District of California pursuant to 28 U.S.C. § 1404(a). Id.
Venue in a civil action is proper in:
(1) a judicial district in which any defendant resides, if all defendants are residents of the State in which the district is located; (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 property that is the subject of the action is situated: or (3) if there is no district in which an action may otherwise be brought as provided in this section, any judicial district in which any defendant is subject to the court's personal jurisdiction with respect to such action.
Defendant's motion argues that venue is not proper under any subsection of section 1391(b). In its opposition brief, plaintiff argues only that "venue is proper in this court because a substantial part of the events giving rise to plaintiff's claims against defendant occurred in the Northern District," which invokes the language of section 1391(b)(2).
While plaintiff's opposition brief does present arguments about defendant's contacts with the Northern District, it does not meaningfully address the "residence" requirement of section 1391(b)(1). Indeed, plaintiff's opposition brief does not mention section 1391(d), which provides the test for determining the residence of a corporation in a state with multiple judicial districts, such as California. See 28 U.S.C. § 1391(d).
Similarly, plaintiff's opposition brief does not address whether venue is proper under section 1391(b)(3). Because, as mentioned above, plaintiff bears the burden of showing that venue is proper in this district, the court finds that plaintiff has not shown that venue is proper under section 1391(b)(1) or section 1391(b)(3), and will thus consider only whether venue is proper under section 1391(b)(2).
Defendant argues that venue is not proper under section 1391(b)(2) because "a substantial part of the events or omissions giving rise to the claim" did not occur in the Northern District of California. Dkt. 12 at 15. Specifically, defendant argues that "there are no events alleged in the complaint that occurred in the Northern District." Id.
Plaintiff responds by arguing that "the development of all its products at issue . . . including specifically the features that defendant has wrongly accused of infringing trademarks" was performed in this district. Dkt. 17 at 13; Dkt. 17-1, ¶ 10. Plaintiff further...
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