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TOY BIZ, INC. v. CENTURI CORP.

January 13, 1998

TOY BIZ, INC., Plaintiff, against CENTURI CORPORATION t/a ESTES INDUSTRIES, Defendant.


The opinion of the court was delivered by: BAER

 Hon. Harold Baer, Jr., District Judge:

 Defendant Centuri Corporation, t/a Estes Industries ("Centuri") moves to transfer this action to the District of Colorado, pursuant to 28 U.S.C. § 1404(a). Plaintiff Toy Biz, Inc. ("Toy Biz") moves for an order enjoining Centuri from prosecuting its action in the District of Colorado. For the reasons stated below, Centuri's motion to transfer this action is DENIED and Toy Biz's motion to enjoin Centuri's Colorado action is GRANTED.

 I. Background

 This is one of two pending actions arising out of the sale of competing small hobby model flying rockets. Toy Biz, a manufacturer and distributer of toys and games, is a Delaware corporation with its principal place of business in New York. Plaintiff's Quest Aerospace Division ("Quest Aerospace"), manufactures a line of small hobby flying model rockets under the name "READY TO FLY." Quest Aerospace's manufacturing facilities are located in Arizona, although it is run from Toy Biz's New York offices. Defendant Centuri, a manufacturer and seller of model rockets, is a privately held Delaware company with its principal place of business in Penrose, Colorado.

 On August 29, 1997 Toy Biz commenced this action in the Southern District of New York against Centuri for antitrust violations, copyright infringement, trademark infringement and unfair competition. In its complaint, Toy Biz alleges that Centuri committed a number of illegal acts to eliminate Toy Biz as a competitor in the small hobby flying model rocket market. Toy Biz also alleges that Centuri is using Toy Biz's "READY TO FLY" trademark on its rockets and has copied Toy Biz's copyrighted artwork. *fn1" Prior to commencing this action, on August 8, 1997, Toy Biz had filed an identical action against Centuri in the Eastern District of Pennsylvania, which action has been voluntarily dismissed. *fn2"

 On September 18, 1997, after Toy Biz filed this action, Centuri commenced a patent infringement and tortious interference with contract action against Toy Biz in the District of Colorado (the "Colorado action") captioned Centuri Corp. v. Toy Biz, Inc., C.A. No. 97-S-2020. In the Colorado action, Centuri claims that Toy Biz's Quest Aerospace model rockets allegedly infringe patents held by Centuri and that Toy Biz tortiously interfered with Centuri's contract with its engine tube supplier. Toy Biz asserted counter-claims in the Colorado action that are the same as the claims it brought in the New York action.

 On October 17, 1997 Centuri answered the complaint in the New York action and asserted trademark, copyright and unfair competition counterclaims against Toy Biz; some of the affirmative defenses and counterclaims asserted by Centuri in the New York action encompass claims almost identical to those it made in the Colorado action. On the same day it answered the complaint, Centuri moved to transfer the New York action to the District of Colorado. I heard argument on this motion on November 13, 1997. On December 17, 1997, Toy Biz moved for an order enjoining Centuri from prosecuting the Colorado action and contemporaneously moved the Colorado court to stay the Colorado action pending this Court's determination of the motion to transfer and the motion to enjoin the Colorado action. By Order dated December 23, 1997, the District of Colorado stayed the Colorado action pending this Court's determination of these two motions. The Colorado court stated: "The New York court should decide whether it would be appropriate to enjoin this action or transfer its action here."

 II. Discussion

 A. Motion to Transfer

 28 U.S.C. § 1404(a) provides that "for the convenience of the 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." Under 28 U.S.C. § 1404(a), the movant bears the burden of showing the availability of an alternative forum and that that forum is clearly more appropriate than the plaintiff's choice of forum. Baron Philippe de Rothschild, S.A. v. Paramount Distillers, Inc., 923 F. Supp. 433, 437 (S.D.N.Y. 1996). The plaintiff's choice of forum is to be given substantial weight and should not be disturbed unless the balance of convenience and justice weight heavily in favor of defendant's proposed forum, especially where, as here, plaintiff's chosen forum is its principal place of business. See Golconda Mining Corp. v. Herlands, 365 F.2d 856, 857 (2d Cir. 1966); Mibar Enterprises, Ltd. v. NEC Information Systems Inc., 745 F. Supp. 193, 195 (S.D.N.Y. 1990); In re Complaint of Connecticut Nat'l Bank, 687 F. Supp. 111, 113 (S.D.N.Y. 1988).

 The determination whether to transfer an action requires a balancing of conveniences. Filmline (Cross-Country) Productions, Inc. v. United Artists Corp., 865 F.2d 513, 520 (2d. Cir. 1989). In making this determination, the Court is to consider the following factors: plaintiff's choice of forum, location of the operative facts, convenience of the parties and witnesses, location of documents and ease of access to sources of proof, relative means of the parties, the forum's familiarity with the governing law and trial efficiency and the interests of justice. Paramount Distillers, 923 F. Supp. at 438. The convenience of the parties and witnesses is generally the most significant factor that a court should consider. Bicicletas Windsor, S.A. v. Bicycle Corp. of Am., 783 F. Supp. 781, 789 (S.D.N.Y. 1992).

 Defendant has presented the Court with several arguments as to why the action should be transferred. Centuri first argues that the convenience of the parties compels transfer. To support this argument, Centuri argues that most of its documents and witnesses are located in Colorado, except for two of its sales representatives who reside in California and Illinois. In addition, Centuri asserts that it has identified seven other non-party witnesses located in Colorado and in Arizona. However, this is not convincing because Toy Biz's headquarters are located in New York and most of Toy Biz's witnesses and relevant documents are located in New York, although some witnesses are located in Arizona. Toy Biz also identified several non-party witnesses who are located in New York and New Jersey. Centuri is thus essentially attempting to shift the inconveniences to the plaintiff, which is not enough to compel transfer. Sunshine Cellular v. Vanguard Cellular Sys. Inc., 810 F. Supp. 486, 501 (S.D.N.Y. 1992)(where transfer would merely shift the inconveniences from defendant to plaintiff, the action should not be transferred); See also Connecticut Nat'l Bank, 687 F. Supp. at 113 (where balance of factors is equal, plaintiff's choice will not be disturbed). Indeed, if the location of Centuri and its witnesses were enough to compel transfer, plaintiff's forum choice would have little meaning. Arrow Electronics Inc. v. Ducommun Inc., 724 F. Supp. 264, 266 (S.D.N.Y. 1989).

 Centuri also argues that the activities giving rise to this dispute are based in Colorado because Centuri manufactures the products at issue in Colorado. However, this is an action for trademark infringement, antitrust violations and unfair competition. The allegedly infringing model rockets at issue are sold in the Southern District of New York (as well as throughout the country). Therefore, New York has a significant connection with this dispute. See Ontel Products, Inc. v. Project Strategies Corp., 899 F. Supp. 1144, 1154 (S.D.N.Y. 1995). In addition, Toy Biz claims that the ...


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