(3) from shipping the BCST can opener in response to sales or offers to sell the BCST can opener in packaging containing the logo "AS SEEN ON T.V.," or variations thereof, for four months; and
(4) from advertising, promoting, offering for sale, or distributing the BCST can opener for four months.
It is further ordered that defendants are required:
(1) to cancel all outstanding orders for the BCST can opener and refund any money received; orders may not be accepted for the BCST can opener for four months;
(2) to recall all BCST can openers in packaging with the "AS SEEN ON T.V." logo, or variations thereof except for those units located in the suburban Chicago area; and
(3) to include in the recall notice a statement that the BCST can opener was not advertised on television and is not connected in any way to plaintiff's SAFETY CAN, which is advertised on television.
Defendants have moved for an order pursuant to 28 U.S.C. § 1404(a) transferring the action from this Court to the Northern District of Illinois. The motion is denied.
Title 28, United States Code, Section 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." 28 U.S.C.A. § 1404(a) (West 1993). The parties do not dispute that the Southern District of New York is a proper forum in which to bring this action. There is also no dispute that the Northern District of Illinois is a forum in which this action could have been brought originally. The only issue is whether the convenience of the parties and witnesses and the interest of justice require a transfer.
In deciding this issue, the relevant factors to consider include: (1) the location of the facts giving rise to the action; (2) the convenience of the parties; (3) the convenience of the witnesses; (4) the relative ease of access to sources of proof; (5) the availability of process to compel the attendance of unwilling witnesses; (6) the respect accorded to the plaintiff's choice of forum; (7) the forum's familiarity with the governing law; (8) trial efficiency; and (9) the interest of justice. See Linzer v. EMI Blackwood Music, Inc., 904 F. Supp. 207, 216 (S.D.N.Y. 1995); Dwyer v. General Motors Corp., 853 F. Supp. 690, 692 (S.D.N.Y. 1994).
It is the burden of the moving party to demonstrate that transfer is warranted. See Linzer, 904 F. Supp. at 216; Dwyer, 853 F. Supp. at 692. Before disturbing the plaintiff's choice of forum, there must be a clear showing that transfer is in the best interests of the litigation. See Linzer, 904 F. Supp. at 216; Dwyer, 853 F. Supp. at 692. Defendants cannot make this showing.
Defendants argue that the Northern District of Illinois would be a more convenient forum for themselves and their witnesses. Wilton is located in suburban Chicago. The employees with the most knowledge of Wilton's marketing, sales, and distribution efforts are similarly located in the suburban Chicago area. (Erwin Decl. P 4). Non-party witnesses such as employees of General Mills who can testify concerning the Betty Crocker trademark are located in Minneapolis, Minnesota. (Id. P 8). Another non-party witness who helped design the packaging of the BCST can opener is located in Sheboygan, Wisconsin. (Id. P 10). Wilton argues it would be more convenient for these non-party witnesses to travel to Chicago than to New York.
The convenience of the parties and witnesses is generally the most important factor for a court to consider when deciding whether a change of venue is proper. See Dwyer, 853 F. Supp. at 692. However, the costs and burdens should not merely be shifted from one party to the other. See id. at 693. Plaintiff argues that its principal witnesses work out of its New Jersey office located very near this District. Its documents are similarly located in New Jersey. In response to the defendants' argument that their non-party witnesses are closer to the Northern District of Illinois than to this District, plaintiff argues it would be equally convenient for the defendants' non-party witnesses to fly to New York and stay in a hotel as it would be for them to fly to Chicago and stay in a hotel. Alternatively, the testimony of non-party witnesses could be taken by deposition. Transferring the action has not been shown to be demonstrably more convenient for non-party witnesses. Moreover, it would relieve the burden on the defendants' witnesses located in Chicago only at the expense of plaintiff and its witnesses. Where the convenience of the parties and witnesses does not appear to favor one district over the other, plaintiff's choice of forum should not be disturbed. See Editorial Musical Latino Americana, S.A. v. Mar Int'l Records, Inc., 829 F. Supp. 62, 67 (S.D.N.Y. 1993).
An additional factor weighing against transfer is judicial economy. There have been a number of actions involving SAFETY CAN pending in this Court.
Thus, the Court is already familiar with the applicable law and the background of the manner in which products are marketed by direct response television advertising. To require another judge in the Northern District of Illinois to familiarize herself or himself with these issues would be a waste of judicial resources.
Finally, plaintiff has connections to this forum other than the earlier actions it brought here. Plaintiff alleges that acts of unfair competition by defendants occurred within this District and its complaint includes causes of action under New York law.
Plaintiff's motion for a preliminary injunction is granted as described herein. Plaintiff is required to post a bond as security in the amount of $ 10,000 by November 5, 1997. Defendants' motion to transfer venue is denied.
IT IS SO ORDERED.
Dated: New York, New York
November 5, 1997
Robert P. Patterson, Jr.