The opinion of the court was delivered by: SONIA SOTOMAYOR
In this trademark action, defendants National Football League ("NFL"), National Football League Properties, Inc. ("NFLP"), and Jacksonville Jaguars, Ltd. ("JJL"), seek to dismiss or transfer this caee pursuant to 28 U.S.C. §§ 1406 (a) and 1404(a). For the reasons discussed below, the motions are denied.
In the early 1990's the NFL, an unincorporated New York association, solicited applications for two new professional football franchises. Numerous corporate entities, in conjunction with their home cities, competed for the franchises. JJL, through its corporate predecessor Touchdown Jacksonville!, Ltd. ("Touchdown Jacksonville"), sought a franchise to be located in Jacksonville, Florida. JJL is a Florida limited partnership with offices located in Jacksonville, Florida.
To rally the support of the Jacksonville community, Touchdown Jacksonville conducted a "Name Our Team" contest in 1991. The contest received entries from 172 contestants. See Declaration of David M. Seldin ("Seldin Decl."), sworn to October 14, 1994, at P 5. On the basis of these entries, a panel composed of JJL representatives, members of the local media, and the Mayor of Jacksonville, selected the name "Jacksonville Jaguars" as the winner. The name was selected in part because the Jacksonville Zoo was the home to North America's oldest Jaguar, as well as for the symbolic value of that animal's speed and strength. Id. at P 6. On December 18, 1991, Touchdown Jacksonville filed a federal registration application for the "Jacksonville Jaguars" trademark. Supplemental Declaration of Gary M. Gertzog ("Supp Gertzog Decl."), sworn but undated, at Ex. C.
On April 3, 1992, JJL President David M. Seldin wrote Jaguar Cars, Ltd. ("Jaguar Cars"), seeking its sponsorship of the proposed team. See Seldin Aff. at Ex. B. Jaguar Cars is a British Corporation, with offices in Mahwah, New Jersey. On April 30, 1994, Jaguar Cars wrote JJL, informing it that Jaguar Cars was not in a position to offer any corporate sponsorships. See id. at Ex. C.
On November 3, 1992, the United States Patent and Trademark Office issued a notice that no successful opposition had been filed with regard to Touchdown Jacksonville's trademark application. On December 10, 1992, the Florida Department of State issued a trademark registration to Touchdown Jacksonville for the Jacksonville Jaguar mark. On September 16, 1993, and October 21, 1993, however, the NFL filed applications before the United States Patent and Trademark Office to register the name "Jacksonville Jaguars" and a jaguar logo. See Declaration of Kimberly N. Alcantara ("Alcantara Decl."), sworn to August 3, 1994, at Ex. A. In both applications, NFL Executive Vice President and League Counsel Jay Moyer declared that he believed the NFL was the owner of the marks to be registered. Id. On November 30, 1993, the NFL awarded a professional football franchise to JJL. Also on November 30, 1993, the NFL and JJL entered into a trust agreement (the "Trust Agreement"). The Trust Agreement provided that JJL owns "the trademarks, service marks, and trade names used in connection [with the operation of the team]. . . ." See Supp. Gertzog Decl. at Ex. F. The Trust Agreement also required JJL to grant "the exclusive right to use Club Marks for commercial purposes" to NFLP. See id.
On May 13, 1994, Jaguar Cars and The Jaguar Collection, Ltd
. ("Jaguar Collection"), filed the instant action (the "New York Action"), naming the NFL and NFLP
as defendants. The gravamen of plaintiffs' claims is that the use of the Jaguar name and logo on shirts, hats, tote bags, and other consumer items is a violation of the Lanham Act, 15 U.S.C. § 1051-1127. On June 2, 1994, the NFL assigned its interest in the Jacksonville Jaguar marks to JJL. Alcantara Decl. at Ex. B. Also on June 2, 1994, JJL filed a declaratory judgment action in the United States District Court for the Middle District of Florida (the "Florida Action"). On August 3, 1994, plaintiffs amended their complaint to add JJL as a defendant. The parties do not dispute that the underlying legal and factual issues in the New York and Florida actions are identical.
28 U.S.C. § 1391(b) (1992) provides in relevant part:
[a] civil action wherein jurisdiction is not founded solely on diversity of citizenship may. . . be brought only in. . . (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 the property that is the subject of the action is situated
. . . .
When venue is challenged by a defendant, plaintiff bears the burden of proving that venue is proper in the forum state. Jordache Enterprises, Inc. v. Brobeck, Phelger & Harrison, 1994 WL 74860 at *3 (S.D.N.Y. March 7, 1994) (Wood, J.) (citation omitted). Where venue is improper, the district court may dismiss the action, or in the interests of justice transfer the action to a district where venue is proper. 28 U.S.C. § 1406(a).
The essence of defendants' 1406(a) argument is that because the bulk of the alleged infringing activities, specifically the sale of consumer goods, took place in the Jacksonville area, that city is the situs of the events giving rise to plaintiffs' claims. Plaintiffs contend that venue is proper in the Southern District of New York because at the time they filed the instant action, May 13, 1994, the NFL and NFLP owned the federal ...