Spiegelberg v. Collegiate Licensing Co.

• Decision Date: 30 November 2005
• Docket Number: No. CIV.A. H-05-1264.,CIV.A. H-05-1264.
• Citation: 402 F.Supp.2d 786
• Parties: John SPIEGELBERG, d/b/a Red Raider Outfitter, Plaintiff, v. The COLLEGIATE LICENSING COMPANY, Defendant.
• Court: U.S. District Court — Southern District of Texas

402 F.Supp.2d 786

John SPIEGELBERG, d/b/a Red Raider Outfitter, Plaintiff, v. The COLLEGIATE LICENSING COMPANY, Defendant.

No. CIV.A. H-05-1264.

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

November 30, 2005.

Erik Joseph Osterrieder, Schubert Osterrieder et al, Austin, TX, for John Spiegelberg doing business as Red Raider Outfitter, Plaintiff.

Alicia Grahn Jones, Kilpatrick Stockton, LLP, Atlanta, GA, Bruce Charles Morris Beirne Maynard and Parsons, Houston, TX, Christopher J. Kellner, Killpatrick Stockton LLP, R. Charles Henn, Kilpatrick Stockton, LLP, Atlanta, GA, David Alan Walton, Beirne Maynard et al, Houston, TX, for Collegiate Licensing Company, Defendant.

MEMORANDUM AND ORDER

ATLAS, District Judge.

This is a trademark infringement case between plaintiff John Spiegelberg, d/b/a Red Raider Outfitter ("Plaintiff"), and defendant The Collegiate Licensing Company ("CLC") involving marks owned by nonparty Texas Tech University ("TTU"). CLC is the licensing agent for TTU. Plaintiff sues CLC for a declaratory judgment that Plaintiff has not infringed, unfairly competed with, or diluted TTU's trademarks.

This Court has before it CLC's Motion to Dismiss, Transfer, or Stay ("CLC's Motion") [Doc. # 14] seeking alternatively dismissal of Plaintiff's claims pursuant to Federal Rule of Civil Procedure 19, dismissal for improper venue pursuant to 28 U.S.C. § 1406(a), transfer of venue pursuant to 28 U.S.C. § 1404(a), and/or a stay pending the outcome of related litigation in the United States District Court for the Northern District of Texas. Plaintiff filed a Response CLC's Motion ("Plaintiff's Response") [Doc. # 16], CLC filed a Reply ("CLC's Reply") [Doc. # 19], and Plaintiff filed a Surresponse ("Plaintiff's Surresponse") [Doc. # 21].

The Court has considered all of the parties' submissions and the applicable legal authorities. Because the Court finds that this case should proceed in Lubbock to better serve the interests of the parties, the witnesses, and the judicial system, the Court grants the motion to transfer venue pursuant to § 1404(a) and transfers this case to the Lubbock Division of the United States District Court for the Northern District of Texas.

I. BACKGROUND

TTU is a state-funded institution of higher learning based in Lubbock, Texas. Plaintiff is a Lubbock-based private business that operates a retail store adjacent to TTU's campus. CLC is a Georgia corporation headquartered in Atlanta, Georgia that represents more than 190 universities, including TTU. CLC tries to protect and control TTU's logos through trademark licensing and related activities.

CLC sent a "cease and desist" letter to Plaintiff on April 1, 2005, complaining that Plaintiff sold unlicenced merchandise bearing trademarks owned by TTU. CLC, on the behalf of TTU, demanded that Plaintiff "immediately discontinue the production, sale, offering for sale and/or distribution of ... apparel and non-apparel items that bear the Marks of the University."¹

On April 14, 2005, Plaintiff filed this lawsuit in this Court against CLC seeking a declaratory judgment that Plaintiff has not infringed upon, unfairly competed with, or diluted TTU's trademarks. TTU later sued Plaintiff in the Lubbock Division of the United States District Court for the Northern District of Texas in Texas Tech University v. John Spiegelberg, et al., No. 5:05-CV-192-C (N.D. Tex. filed Aug. 24, 2005) ("TTU's Lawsuit").² The parties agree that TTU's Lawsuit raises the same trademark issues that are implicated here — namely, whether Plaintiff's goods infringe TTU's trademarks. See CLC's Motion, at 2; Plaintiff's Response, at 17.

II. SECTION 1404(a) MOTION TO TRANSFER VENUE

CLC contends the Lubbock Division is a more appropriate forum and moves to transfer this action for the convenience of the parties and witnesses, and in the interest of justice under 28 U.S.C. § 1404(a). CLC's Motion, at 14-17. For the reasons set forth below, the Court agrees and transfers this case to Lubbock.

A. Legal Standard

"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). The purpose of this statute is to protect litigants, witnesses, and the public against unnecessary inconvenience and expense, and to avoid wasted time, energy, and money. Van Dusen v. Barrack, 376 U.S. 612, 616, 84 S.Ct. 805, 11 L.Ed.2d 945 (1964). "A motion to transfer venue is addressed to the discretion of the trial court and will not be reversed on appeal absent an abuse of discretion." Peteet v. Dow Chem. Co., 868 F.2d 1428, 1436 (5th Cir.1989) (citing Marbury-Pattillo Constr. Co. v. Bayside Warehouse Co., 490 F.2d 155, 158 (5th Cir.1974)).

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) (internal citations omitted); Gundle Lining Const. Corp. v. Fireman's Fund Ins. Co., 844 F.Supp. 1163, 1165 (S.D.Tex.1994) (Crone, J.) (citing Time, Inc. v. Manning, 366 F.2d 690, 698 (5th Cir.1966)). Further, courts should not transfer a case "if the only practical effect is to shift inconvenience from the moving party to the nonmoving party." Goodman Co., L.P. v. A & H Supply Co., 396 F.Supp.2d 766, 776 (S.D.Tex.2005) (Rosenthal, J.) (internal citation omitted).

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)). If so, a court then examines "the convenience of the parties and witnesses." Id. "The determination of `convenience' turns on a number of private and public interest factors, none of which are given dispositive weight." Id. (quoting Action Indus., Inc. v. U.S. Fidelity & Guar. Co., 358 F.3d 337, 340 (5th Cir.2004)). The private interest factors include:

(1) the plaintiff's choice of forum;

(2) the convenience of parties and witnesses;

(3) the cost of attendance of witnesses and other trial expenses;

(4) the availability of compulsory process;

(5) the relative ease of access to sources of proof;

(6) the place of the alleged wrong; and

(7) the possibility of delay and prejudice.

In re Volkswagen AG, 371 F.3d at 203 (citing Piper Aircraft v. Reyno, 454 U.S. 235, 241 n. 6, 102 S.Ct. 252, 70 L.Ed.2d 419 (1981)); accord In re Horseshoe Entm't, 337 F.3d at 433-34.

The public interest factors are:

(1) the administrative difficulties flowing from court congestion (2) the local interest in having localized interests decided at home;

(3) the familiarity of the forum with the law that will govern the case; and

(4) the avoidance of unnecessary conflict of law problems.

In re Volkswagen AG, 371 F.3d at 203.

B. Threshold Consideration: Is Venue Proper in the Transferee District?

The first determination to be made here is whether venue for Plaintiff's claims is proper in the Northern District. See In re Volkswagen, 371 F.3d at 203. The parties do not dispute that this case could have been brought in the Northern District of Texas. Plaintiff's alleged unlawful use of TTU's trademarks, such as Plaintiff's sale of items with TTU's marks, occurred in Lubbock. Plaintiff's principal, Spiegelberg, and his business are located there. Venue is therefore proper in the Lubbock Division of the Northern District of Texas as a "judicial district in which a substantial part of the events or omissions giving rise to the claim occurred." See 28 U.S.C. § 1391(a)(2).

C. Analysis of the Private Interest Factors

Analysis of the private factors demonstrates that transfer of this case to Lubbock is warranted.

(1) Plaintiff's Choice of Forum

As a general rule, the Plaintiff's choice of forum is entitled to substantial deference. Peteet, 868 F.2d at 1436. However, because Houston lacks any legally relevant factual nexus with Plaintiff or the claims in this case, Plaintiff's choice of the Houston forum receives less deference. See Martinez v. City of Fort Worth, Texas, 2003 WL 21289654, at *2 (N.D.Tex. May 28, 2003) (Lynn, J.) (citing Cooper v. Pied Piper Mills, Inc., 1998 WL 713270, at *1 (N.D.Tex. Oct. 5, 1998); BJI Indus., Inc. v. Old Dominion Freight Line, Inc., 1997 WL 148035, at *2 (N.D.Tex. Mar.25, 1997); Greiner v. Am. Motor Sales Corp., 645 F.Supp. 277, 279 (E.D.Tex.1986); Coons v. Am. Horse Show Assoc., Inc., 533 F.Supp. 398, 400 (S.D.Tex.1982)).³

Here, the only connection Plaintiff has with the Southern District is the office of Plaintiff's counsel, which is located in the Southern District. However, the Fifth Circuit does not consider the "location of counsel" a relevant factor in deciding a § 1404(a) motion. In re Horseshoe Entm't, 337 F.3d at 434. Thus, although Plaintiff's choice of forum per se is entitled to some deference, this factor under the present circumstances weighs only slightly against transfer.⁴

(2) Convenience of Parties and Witnesses

The relative convenience to the witnesses is often recognized as the most important factor under § 1404(a). E.g., LeBouef v. Gulf Operators, Inc., 20 F.Supp.2d 1057, 1060 (S.D.Tex.1998); Dupre v. Spanier Marine Corp., 810 F.Supp. 823, 825 (S.D.Tex.1993). "Moreover, it 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) (Crone, J.) (internal citations omitted).

Lubbock is more convenient than Houston for the parties and the witnesses. CLC has identified two nonparty witnesses that reside in Lubbock: Paige Holland, TTU's Director of Special Products, Licensing, and Athletic Web Services, and Craig Wells, TTU's Associate Athletic Director. CLC's Reply, at 13. Plaintiff also inevitably...