The opinion of the court was delivered by: SPRIZZO
Plaintiffs Matra et Manurhin, a French partnership Manufacture de Machines du Haut-Rhin, a French corporation, and Matra Manurhin International, Inc., a wholly-owned Delaware subsidiary of the French Corporation (collectively referred to as "Manurhin") bring this action for unfair competition and breach of contract against the defendants International Armament Co., ("Interarms"), a Delaware corporation with its principal place of business in Alexandria, Virginia, and Carl Walther Waffenfabrik, GMBH ("Carl Walther"), a German Corporation. Plaintiffs allege in their complaint that, pursuant to a licensing agreement between Carl Walther and Manurhin, Manurhin had the right to manufacture pistols bearing the tradename or trademark "Walther" and to distribute those pistols anywhere in the world except for Germany. See Complaint at 11. The graveman of plaintiffs' complaint is that Carl Walther wrongfully assigned U.S. trademark registrations of the mark "Walther" to Interarms, and that Interarms wrongfully induced this assignment, with the result that the United States Customs Service barred Manurhin from importing pistols bearing the "Walther" mark. See Complaint at §§ 12-20.
The complaint also alleges inter alia that the defendants made fraudulent statements to the Patent and Trademark office in obtaining the trademark registrations, see Complaint at §§ 30-39, and that the defendants are misleading the public by advertising their pistols and made by Carl Walther in Germany when in fact they are made by Manurhin in France. See Complaint at §§ 51-56. Plaintiffs seek both permanent and preliminary injunctions, the cancellation of the U.S. trademark registrations owned either by Interarms or Carl Walther, and damages.
Defendants move to dismiss the action for lack of personal jurisdiction and for improper venue. In the alternative, defendant's move to transfer this case to the Eastern District of Virginia, Alexandria Division, pursuant to 28 U.S.C. 1404(a)(1982).
Defendant Interarms has also counterclaimed alleging inter alia that Manurhin is infringing Interarm's trademarks in the "Walther" mark. For the reasons which follow, the Court grants defendants' motion to transfer and therefore need not decide defendants' motions to dismiss based on lack of personal jurisdiction or improper venue.
In support of their motion to transfer venue to the Eastern District of Virginia, defendants point to a variety of contacts with Virginia including the following: neither party has an office in New York while Interarms' offices are located in Alexandria, Virginia, the American witnesses all live and work in Virginia, and all of Interarms' documents and sample pistols are in Virginia. Moreover, a suit involving the very same trademark is already pending in the Eastern District of Virginia with Interarms as plaintiff, Matra Manurhin International, Inc. as the defendant, and Carl Walther as the action and a trial date has been set for March 10, 1986.
Plaintiffs on the other hand stress that this is essentially a European dispute with no relationship to Virginia except that defendant Interarms' office happens to be there. According to plaintiffs, most of the parties are from Europe, almost all of the witnesses will be from Europe, and the disputed contracts were all signed in Europe. Thus plaintiffs argue that New York is no less convenient than Virginia and that therefore plaintiffs choice of forum should be respected. Plaintiffs also argue that this action should not be transferred because substantially more of defendants' guns with the disputed Walther mark are sold and advertised in New York than in Virginia.
In considering a motion to transfer venue, the Court must consider a variety of factors including the convenience of the parties, the convenience of material witnesses, the availablity of process to compel the presence of unwilling witnesses, the relative ease of access to sources of proof, the place where the material events occurred, plaintiff's choice of forum, and the interests of justice. See Teachers Ins. & Annuity Ass'n of America v. Butler, 592 F. Supp. 1097, 1105 (S.D.N.Y. 1984); Leif Hoegh & Co. V. Alpha Motor Ways, Inc., 534 F. Supp. 624, 626 (S.D.N.Y. 1982). The defendants have the burden of clearly demonstrating that the balance of these factors tips in favor of transfer. See Troyer v. Karcagi, 488 F. Supp. 1200, 1207 (S.D.N.Y. 1980). Upon consideration of all the facts and circumstances, finds that the defendants have sustained their burden of demonstrating that this action should be transferred to the Eastern District of Virginia.
The convenience of the parties suggests that a transfer of this action to the Eastern District of Virginia would be appropriate. A Virginia forum will be considerably more convenient for the defendant Interarms because their office and all of their documents and sample products relevant to this action are located in Alexandria. The rest of the parties except for Matra Manurhin International ("MMI") are all located in Europe and therefore the convenience of these parties is at best a neutral factor. As to the plaintiff MMI, their principal offices are located in Ft. Lauderdale, Florida, a circumstance that does not support a finding that plaintiffs' convenience justifies retaining venue in this district.
On balance, therefore, it appears that the convenience of the parties tips in favor of a transfer insofar as the convenience of one party at least will be served by a transfer while the other parties will not be inconvenienced if the motion to transfer is granted. See Wibau, Westdeutsche Industrie Und Strassenbaumachinengesellschaft v. American Hoist & Derrick Company, 293 F. Supp. 273 (S.D.N.Y. 1968).
The convenience of witnesses also favors a transfer of this action. On the present record, it appears that all of the material non-expert American witnesses will be from Virginia.
At oral argument on January 10, 1986, plaintiff's counsel could only specify two witnesses o vicinity of New York -- two expert witnesses from New Jersey. See Transcript ("Tr.") at 15-16. The Court notes that the location of expert witnesses is entitled to little or no weight in deciding a transfer motion. See McCrystal v. Barnwell County, South Carolin a, 422 F. Supp. 219, 224 (S.D.N.Y. 1976). As for the remaining witnesses from Europe, whom plaintiffs claim will comprise the bulk of the material witneses in this action, they are in the same position as the European parties and will not be more or less inconvenienced whether the action is litigated in New York or Virginia.
Moreover, the interest of justice in seeing that this action is resolved promptly suggests that defendants' motion for transfer should be granted. The action pending in the Eastern District of Virginia, involving the same Walther trademark and substantially the same litigants,
is already set for trial on March 10, 1986 and it appears that the Virginia Court has already ruled on dispositive motions in that action. See supra footnote 3. A trial date in this district on the other hand, given this district's congested docket, would be at least six months away. This being the case, there simply is no just reason for maintaining a parallel action in this district. The parties' interest in an expeditious resolution of the action is certainly a proper although not dispositive factor for the Court to consider. See A. Olinick & Sons v. Dempster Brothers, Inc., 365 F.2d 439, 445 (2d Cir. 1966); McCrystal v. Barnwell County, Southern Carolina, 422 F. Supp. 219, 225 S.D.N.Y. 1961. Indeed, plaintiffs have emphasized the particular importance of a prompt ruling in this case by filing a motion for a preliminary injunction seeking inter alia an order barring Interarms from advertising Interarms' pistols as being the only genuine "Walther" pistols.
Finally, the Court notes that while plaintiffs' choice of forum is ordinarily entitled to considerable weight, where, as here, the transactions underlying the cause of action have no material connection to the chosen forum, plaintiffs' choice of forum becomes less relevant to a transfer motion. See Foster v. Litton Industries, Inc., 431 F. Supp. 86, 87 (S.D.N.Y. 1977). All of the material transactions in this case occurred either in Europe or in Virginia.
None occurred in New York. The only connection plaintiffs claim this action has with this forum is that substantially more of defendants' goods with the disputed Walther ...