commits infringement through sales by independent brokers or retail merchants in New York, this constitutes tortious conduct within New York and subjects the defendant to jurisdiction under CPLR Section 302. Heritage House frame and Moulding Co., Inc. v. Boyce Highlands Furniture Co., Inc. 88 F.R.D. 172, 173, 212 U.S.P.Q. (BNA) 189 (E.D.N.Y. 1980). Here, Wein's infringing Multitudes terms are being sold by Nature, an independent licensor, in New York. The tort therefore takes place at the place of purchase in New York. Since Lipton allegedly suffered a loss in New York, New York is the situs of the tort. The actual seller of the allegedly infringing product need not be a formal agent of the defendant; the term agent is given a broad interpretation. Grove Press, Inc. v. Angleton, 649 F.2d 121, 122 (2d Cir. 1981). Nature acted pursuant to its licensing agreement with Wein, paid him royalties based on sales, and used Wein's name in its advertising literature. Wein's license agreement provided that he would receive from Nature royalties ranging from 3% to at least 5%, and sometimes more, of the retail sale price of each Multitudes product sold through Nature's mail order catalogue or stores.
Similarly, Wein receives royalties and benefits from media advertising and the mail order catalogue including the Multitudes products. Although Nature is not in an agency relationship with Wein, Wein is certainly responsible for and benefitting from the sale of Nature products in New York. Wein thus falls within New York's long-arm statute: the claims for relief that Lipton make clearly arise from Wein's contract to supply goods or services in the state, arguably constitute the commission by Wein of a tortious act either causing Lipton injury within New York. If Lipton has suffered actionable harm, he has clearly suffered it in New York, and Wein's compilation of terms is the proximate cause of that harm.
Also, on this record it could be found that Wein has committed a tortious act outside New York with consequences in New York by entering into license agreements warranting that the collective terms infringed no other copyrights. The licensor of an infringing trademark commits a predicate tort for the purposes of New York long-arm jurisdiction by the act of licensing, and may be held accountable in New York. Pony International, Inc. v. Genfoot America, Inc., 223 U.S.P.Q. (S.D.N.Y. 1983). He should reasonably have foreseen that the consequences of this agreement would result in injury to Lipton in New York.
Addressing Nature's argument that the balance of the conveniences to the various parties strongly favors California, even if jurisdiction is proper in New York, I find that Nature has not met its burden of persuasion required to override Lipton's choice of forum. Nature, operating ten stores in the area covered by the Northern District of California, and only one store in the Southern District of New York, contends that jurisdiction would be far more appropriate in California. However, the plaintiffs choice of forum is generally accorded great weight, and is deferred to unless the balance is strongly in favor of the defendant. Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508, 91 L. Ed. 1055, 67 S. Ct. 839 (1947); Seagoing Uniform Corp. v. Texaco, Inc., 705 F. Supp. 918, 936 (S.D.N.Y. 1989).
The moving party bears the heavy burden of demonstrating the desirability of transfer. Rackman v. Texas Instruments, Inc., 712 F. Supp. 448, 450, 12 U.S.P.Q.2D (BNA) 1836 (S.D.N.Y. 1989). Here, Lipton has chosen the Southern District of New York; Nature and Wein are both subject to jurisdiction here but would prefer to litigate in California. The convenience of the parties appears split between New York and California. I cannot reach a firm enough assessment as to the relative convenience of witnesses or ease of production of documentary evidence. I therefore deny Nature's motion to transfer.
United States District Judge
Dated January 16, 1992
New York, New York