Thus, defendant's objections to this Court's subject matter jurisdiction are without merit.
In summary, defendant has not shown that the relevant interests tilt so strongly in its favor as to overcome the strong presumption in favor of plaintiff's choice of forum. See Peregrine, 89 F.3d at 46; Schertenlieb, 589 F.2d at 1160. Thus, defendant's motion to dismiss for forum non conveniens is denied.
B. Fed.R.Civ.P. 12(b)(6)/Comity
Defendant also argues that under the doctrine of comity, plaintiff fails to state a claim upon which relief may be granted. Specifically relying on Clarkson Co., Ltd. v. Shaheen, 544 F.2d 624 (2d Cir. 1976), defendant argues that "in this case, Frink America is collaterally attacking the Canadian. bankruptcy proceeding, and the authority of the Canadian bankruptcy to transfer assets under a Canadian Court Order." (Def. Mem. of Law at 12). Once again, however, defendant mischaracterizes the theory behind plaintiff's claims. While considerations of comity certainly would militate against any collateral attack on the Canadian bankruptcy proceedings, see Clarkson, 544 F.2d at 629, the Court is unconvinced that plaintiff's case stands or falls on the validity of those proceedings. Rather, as plaintiff asserts, "the Complaint in this action emanates from Compro's failure to and breach of its Agreement to, return the intellectual property . . . lent to it by Frink in 1991." (Battaglia Aff. P 19).
The Ontario Court order approving the purchase by Champion from FEI of "certain of the assets" of FEI noted that the transfer was free and clear of claims by certain parties, but plaintiff was not among those listed. Moreover, the purchase agreement itself listed the intellectual property that was part of the transfer. (Gray Aff. Ex. 6 [Schedule "E"]). As plaintiff points out, the intellectual property transferred included only four Canadian patents, one lapsed U.S. patent and three Canadian trademarks; any intellectual property not included in Schedule "E" was specifically excluded. (Id.). Assuming that the items listed in Schedule "E" are not at issue in this lawsuit, the intellectual property in controversy here was not even ostensibly transferred by virtue of the Champion purchase. Thus, neither the validity of the Canadian Bankruptcy Order, nor the trustee's "authority" to transfer the assets listed in the agreement are implicated. For these reasons, defendants motion to dismiss under Fed.R.Civ.P. 12(b)(6) is denied.
C. Failure to Join a Necessary Party
Finally, defendant argues that because plaintiff alleges a conspiracy between the Royal Bank and defendant to deprive plaintiff of the intellectual property at issue, the Royal Bank (and possibly Ernst & Young, the trustee) should have been joined in this action.
Defendant's analysis, however, is incomplete. Rule 12(b)(7) lists, as a ground for dismissal, "failure to join a party under Rule 19." Rule 19 in turn provides a two-step process to determine whether an action may proceed in a party's absence. Rule 19(a) first provides that a person subject to service of process "whose joinder will not deprive the court of subject matter jurisdiction" must be joined (1) if full relief may not be granted among those already parties in the person's absence; or (2) if the person has an interest in the subject matter of the action, and disposition of the action in that person's absence would either impede the person's ability to protect that interest, or leave the original parties subject to multiple or inconsistent obligations. Fed.R.Civ.P. 19(a).
Second, if the person is determined to be a "necessary" party under Rule 19(a) but cannot be joined (either because they not amenable to service of process or would deprive the court of subject matter jurisdiction), the Court must determine whether the person is "indispensable," i.e., wether the action must be dismissed due to the person's absence. Id.; see generally 7 CHARLES A. WRIGHT, ARTHUR R. MILLER, AND MARY K. KANE, FEDERAL PRACTICE AND PROCEDURE, § 1604 at 41 (1986) ("By proceeding in this orderly fashion the court will be able to avoid grappling with the difficult question of indispensability whenever it initially decides that the absentee's interest is not sufficient to warrant compelling his joinder."). In making this determination, the factors to be considered include:
first, to what extent a judgment rendered in the person's absence might be prejudicial to the person or those already parties; second, the extent to which, by protective provisions in the judgment, by the shaping of relief, or other measures, the prejudice can be lessened or avoided; third, whether a judgment rendered in the person's absence will be adequate; fourth, whether the plaintiff will have an adequate remedy if the action is dismissed for nonjoinder.
Defendant has failed, as a threshold matter, to establish that either the Royal Bank or Ernst & Young is a necessary party under Rule 19(a). Defendant merely argues that since plaintiff may have settled with the Royal Bank, such a settlement may provide defendant with a defense. Defendant fails, however, to establish that the Royal Bank has any interest in the subject matter of this action, or that complete relief may not be accorded among the parties in the Royal Bank's absence.
Furthermore, it is well-established that under federal law, neither joint tortfeasors nor co-conspirators are indispensable parties. See State of Georgia v. Pennsylvania R. Co., 324 U.S. 439, 463, 89 L. Ed. 1051, 65 S. Ct. 716 (1945); Bomar Resources, Inc. v. Sierra Rutile Ltd., 1991 U.S. Dist. LEXIS 396, 1991 WL 4544, at *6 (S.D.N.Y. 1991) (citing Samaha v. Presbyterian Hosp., 757 F.2d 529, 531 (2d Cir.1985). Therefore, defendant's motion to dismiss for failure to join a party under Rule 19 is denied.
For all of the foregoing reasons, then, it is hereby
ORDERED, that defendant's motion to dismiss is denied on all grounds.
IT IS SO ORDERED.
Binghamton, New York
April 8, 1997
Hon. Thomas J. McAvoy
Chief U.S. District Judge