The opinion of the court was delivered by: ROBERT W. SWEET
Defendant OroAmerica, Inc. ("OroAmerica") has moved to transfer this suit for the infringement of a jewelry chain design patent to the central district of California pursuant to 28 U.S.C. § 1404(a) and for sanctions pursuant to Rule 11, F.R.Civ.P. For the reasons given below, the motion to transfer is granted, and the motion for sanctions is denied.
The Plaintiff, Cento S.p.A. ("Cento"), is an Italian corporation whose principal place of business is Milan and whose principal business is selling chain jewelry. The Cento Group ("Cento Group"), which is not a party to this action, is a registered New York partnership 40% owned by Cento S.p.A., 20% owned through Shem-Tov Holding Corporation, and 40% held by Balance Rival, Ltd.
OroAmerica is a California corporation whose principal place of business is located in Burbank, California.
On May 12, 1992, Cento was issued United States Design Patent No. D326,065 for a diamond cut 14-karat gold chain design with elongated links sold in its catalogs as Figarope (the "Figarope patent"). On May 14, 1992, Cento filed a complaint alleging, on information and belief, that the design of a jewelry chain produced by OroAmerica, sold under the tradename Milano Rope (the "Milano Rope"), infringed the Figarope patent.
OroAmerica answered the complaint by alleging that Cento does not have a place of business in New York and that the Figarope patent is invalid for a host of reasons.
Cento contends that the United States, especially New York, supplies such a major market for its jewelry that it maintains a permanent place of business here. The extent to which it actually does so is quite a bone of contention between the parties, although it is clear that Cento Group has shared office space at 580 Fifth Avenue with Empire Watches in New York's jewelry district.
OroAmerica, which maintains a showroom in a different suit at that same address, states that about a year before this action was commenced Cento, S.p.A., essentially closed up shop in this country and henceforth has done business with American clients through its Italian offices, its traveling sales staff, and an agent, Christina Lesco, who usually works out of her home in New York but sometimes works out of the office on Fifth Avenue. Cento states that employees in its Italian office have referred to its office as "closed" in the sense that its merchandise is no longer stored or shipped from that location, but that it has by no means ceased to do business in New York. Even OroAmerica admits, however, that Cento Group cannot have severed all ties with its former officemate: Cento's name is still on the door of the suite and on the directory of the building, and it is listed in the New York Telephone Directory at the same address.
OroAmerica filed this motion to transfer on June 23, 1992. Oral argument was heard on February 3, 1993, and the motion was considered fully submitted as of that date.
Transfer Pursuant to § 1404(a)
28 U.S.C. § 1404(a) provides 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." Venue in this case is proper in both the Southern District of New York, where Cento maintains its sells most of the jewelry it ships to the United States, and in the central district of California, where OroAmerica has its headquarters. Both sell their merchandise to stores located in New York and Los Angeles.
The moving party -- in this case, OroAmerica -- bears the burden to justify a change of venue. Factors, etc. Inc. v. Pro Arts, Inc., 579 F.2d 215, 218 (2d Cir. 1978), cert. denied, 440 U.S. 908, 59 L. Ed. 2d 455, 99 S. Ct. 1215 (1979); Christina Canada, Inc. v. Wior Corp., 702 F. Supp. 461, 463 (S.D.N.Y. 1988); Troyer v. Karcagi, 488 F. Supp. 1200, 1207 (S.D.N.Y. 1980); Schindelheim v. Braniff Airways, Inc., 202 F. Supp. 313, 315 (S.D.N.Y. 1962). Unless the balance weighs heavily in favor of the defendant, the plaintiff's choice of forum should rarely be disturbed. Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508, 91 L. Ed. 1055, 67 S. Ct. 839 (1947); Ayers v. Arabian Amer. Oil Co., 571 F. Supp. 707, 709 (S.D.N.Y. 1983). However, "Section 1404(a) is intended to place discretion in the District Court to adjudicate motions for transfer according to an 'individualized, case-by-case ...