making an effort to target its product in New York." Bensusan
Restaurant Corp. v. King, 937 F. Supp. 295 (S.D.N.Y. 1996),
aff'd, 126 F.3d 25 (2d Cir. 1997).
However, "the significance of the web sites shifts to the
extent that there is interaction between the [defendant] and New
York residents." Citigroup Inc., 97 F. Supp.2d at 567. Courts
associate interactive websites with advertising purposefully
directed toward the forum state. See, e.g., IA, Inc., 983
F. Supp. at 701 (finding venue proper where misrepresentations
that underlie trademark infringement claim are made on an
As discussed supra Part III.B.1.a, the Websites permit a high
level of interactivity between Clark and New York residents. For
example, a viewer may purchase the Exercise Machine online,
download an order form, download an application to become an
"independent affiliate", and ask a Clark representative questions
online. Applying the same principles as applied in the personal
jurisdiction context, this level of interactivity supports venue
over plaintiff's trademark infringement claim in this district.
2. Patent Infringement
Venue in a patent infringement suit is governed by
28 U.S.C. § 1400(b), which provides that a civil action for patent
infringement may be brought either (1) in the judicial district
where the defendant resides, or (2) where the defendant has
committed acts of infringement and has a regular and established
place of business. As discussed supra Part III.C.1.a, Clark
does not reside in New York. Accordingly, venue for the patent
infringement claim is appropriate only if Clark has committed
acts of infringement and has a regular and established place of
business in this district.
Clark does not satisfy the requirements of the second test
under section 1400(b).*fn11 Even assuming that Clark has
committed acts of patent infringement in the Southern District of
New York, Clark does not have a regular and established business
in any judicial district in New York. See Clark Aff. ¶ 6
("[Clark] do[es] not maintain a place of business within the
Southern District of New York, or indeed within the entire State
of New York."). "A `regular and established place of business'
involves more than `doing business,' and the mere presence of a
sales representative is not sufficient." Kinetic Instruments,
Inc. v. Lares, 802 F. Supp. 976, 987 (S.D.N.Y. 1992). Rather,
"[a] defendant must be regularly engaged in carrying on a
substantial part of its ordinary business on a permanent basis in
a physical location within the district over which it exercises
some measure of control." Id. (quotation marks omitted).
Although Clark has affiliates in New York and has had
representatives at trade shows in New York, these facts do not
establish that it has a "regular and established place of
business" in New York. See id. ("[Defendant's] attendance at
the trade show, as well as his other trips to New York, do not
meet the standards of a `regular and established place of
business' under the patent venue statute."). Accordingly,
plaintiff's patent infringement claim is not properly venued in
D. Pendent Venue*fn12
Generally, venue must be established for each separate claim in
a complaint. See Saferstein v. Paul, Mardinly, Durham, James,
Flandreau & Rodger, P.C., 927 F. Supp. 731, 736 (S.D.N.Y. 1996).
However, courts have increasingly recognized the doctrine of
"pendent venue", derived from the concept of pendent
jurisdiction. See, e.g., Beattie v. United States, 756 F.2d 91,
101 (D.C.Cir. 1984) ("The doctrine of `pendent venue' is now well
established, particularly in cases where the court has previously
exercised its discretion to hear a certain claim under pendent
jurisdiction."). Under the doctrine of pendent venue, "a federal
court may in its discretion hear pendent claims which arise out
of the same nucleus of operative fact as a properly venued
federal claim, even if venue of the pendent claim otherwise would
not lie." Banfield v. UHS Home Attendants, Inc., No. 96 Civ.
4850, 1997 WL 342422, at *2 (S.D.N.Y. June 23, 1997). In making
its decision, a court must consider factors such as "judicial
economy, convenience to the parties and the court system,
avoidance of piecemeal litigation and fairness to the litigants."
Id. (citing Rodriguez v. Chandler, 641 F. Supp. 1292, 1302
1. Pendent venue over the state law claims
"The doctrine of pendent venue is ordinarily employed where
venue is lacking for a state law claim that arises from the same
nucleus of operative facts as a `properly venued' federal claim."
Garrel v. NYLCare Health Plans, Inc., No. 98 Civ. 9077, 1999 WL
459925, at *4 (S.D.N.Y. June 29, 1999). Courts within this
circuit routinely exercise pendent venue over state law claims in
such situations. See, e.g., Hudson Venture Partners, L.P. v.
Patriot Aviation Group, Inc., No. 98 Civ. 4132, 1999 WL 76803,
at *5 (S.D.N.Y. Feb. 17, 1999); Banfield, 1997 WL 342422, at
*2; Topolnycky v. Ukrainian Sav. & Loan Ass'n, No.
Civ.-90-878E, 1991 WL 117397, at *2 (W.D.N.Y. June 12, 1991);
Fox-Rich Textiles, Inc. v. Malden Mills Indus., Inc., No. 89
Civ. 0773, 1989 WL 140246, at *3 (S.D.N.Y. Nov. 13, 1989).
Here, the state law claims — for unfair competition under New
York common law and deceptive acts and practices under the New
York General Business Law — arise out of defendants' use of the
"Chi" mark. These claims, therefore, arise out of the same
nucleus of operative fact as the trademark infringement claim.
Accordingly, the exercise of pendent venue over plaintiff's state
law claims is appropriate.
2. Pendent venue over the patent infringement claim
The exercise of pendent venue over federal claims involves a
different analysis than the exercise of pendent venue over state
Where . . . a party advocates exercise of pendent
venue over an additional federal claim which is
subject to its own specific venue provisions, courts
have generally taken one of two approaches. First,
some courts have found that the more specific venue
provisions control, and have required that the case
be brought in a venue which satisfies the more
specific statute. Second, following an approach
developed by courts in the District
of Columbia Circuit, some courts determine which of
the two federal claims is the "primary" claim, and
apply the venue statute applicable to that claim. . .
. [I]t is apparently a question of first impression
in this Circuit which, if either, of the two
approaches described above is the proper method to
analyze pendent federal venue claims.
Garrel, 1999 WL 459925, at *5.
Utilizing the second approach, the exercise of pendent venue
over plaintiff's patent infringement claim makes sense because
the "primary" claim appears to be the trademark infringement
claim. Hsin Ten is principally aggrieved by Clark's use of
plaintiff's mark to promote the Exercise Machines. Plaintiff also
alleges that Clark has infringed patents over which plaintiff has
an exclusive license. Of the five claims asserted in the Amended
Complaint, three claims concern the use of the "Chi" trademark.
At best, the patent and trademark infringement claims are of
Furthermore, there is substantial overlap in the proof of the
patent and trademark infringement claims. For instance, to prove
its trademark infringement claim, Hsin Ten must demonstrate a
likelihood of confusion between plaintiff's mark and Clark's
mark. To satisfy the eight-factor likelihood of confusion test of
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d
Cir. 1961), plaintiff will introduce evidence concerning the
competitive proximity of plaintiff's and Clark's products,*fn13
the quality of defendant's product, defendant's bad faith in
adopting the mark, and the existence of actual confusion in the
market. Such proof may include evidence that Clark willfully
copied plaintiff's designs and patents over which plaintiff has
an exclusive license. Accordingly, the interests of judicial
economy, fairness to the litigants, and avoidance of piecemeal
litigation compel the exercise of pendent venue over plaintiff's
patent infringement claim.
There is no question that most of the courts that have
addressed this issue have refused to exercise pendent venue over
a federal patent claim governed by section 1400(b). See, e.g.,
PKWare, 79 F. Supp.2d at 1019; Johlar Indus., Inc. v. Essex
Eng'g Co., Inc., No. 87 C 9013, 1988 WL 71222, at *3 (N.D.Ill.
1988); Zin-Plas Corp. v. Plumbing Quality AGF. Co., 622 F. Supp. 415,
422 (W.D.Mich. 1985); Network Sys. Corp. v. Masstor Sys.
Corp., 612 F. Supp. 438 (D.Minn. 1984); Hoffacker v. Bike
House, 540 F. Supp. 148, 150 (N.D.Cal. 1981); Goggi Corp. v.
Outboard Marine Corp., 422 F. Supp. 361, 366 (S.D.N.Y. 1976).
Nonetheless, there is good reason to depart from these
persuasive, but non-binding authorities.
First, no appellate court has held that pendent venue is
never appropriate over a patent infringement claim. Second, a
number of the cases rejecting pendent venue over patent claims
are easily distinguished. In several of those cases, the
plaintiff attempted to "ferryboat in" the patent claim by joining
less important federal claims or state law claims which were
properly venued. Johlar Indus., 1988 WL 71222, at *3; see also
Network Sys. Corp., 612 F. Supp. at 440; Hoffacker, 540 F. Supp.
at 149. Unlike the present case, the primary claims in those
cases were the patent infringement claims, which were brought in
inappropriate districts under
section 1400(c). Third, at the time of these rulings the patent
venue statute was highly restrictive with respect to the
This special venue statute [28 U.S.C. § 1400(b)]
reflects a Congressional awareness of the technical
nature of patent litigation and the particular
advantage in limiting its prosecution to forums where
the acts of infringement occurred and where the
defendant is located. . . . Recognizing the specific
character of the patent venue statute, the Supreme
Court has held that venue in infringement actions is
governed exclusively by section 1400 and that parties
will not be permitted to circumvent this specific
venue rule by satisfaction of the general venue
statute. Fourco Glass Co. v. Transmirra Prods.
Corp., 353 U.S. 222, 77 S.Ct. 787, 1 L.Ed.2d 786
(1957); Stonite Prods. Co. v. Melvin Lloyd Co.,
315 U.S. 561, 62 S.Ct. 780, 86 L.Ed. 1026 (1942).
Hoffacker, 540 F. Supp. at 149.
The 1988 amendment to section 1391(c) — the general venue
statute governing corporations — significantly changed the legal
landscape surrounding section 1400(b). Prior to that amendment, a
patent infringement claim against a corporation could only be
brought in the district of the defendant's state of
incorporation. See In re Cordis Corp., 769 F.2d 733, 735
(Fed.Cir. 1985). However, in 1990, the Federal Circuit Court of
Appeals held that when Congress amended section 1391(c), it
intended to amend section 1400(b) as well. See VE Holding
Corp., 917 F.2d at 1584.*fn14 The court held that section
1400(b) now permitted suit in any district in which the defendant
corporation was subject to personal jurisdiction at the time the
action was commenced.*fn15 The restrictive view of section
1400(b) is no longer an appropriate reading of the patent venue
statute.*fn16 Although the reach of section 1400(b) is not
co-extensive with that of the general venue statute, section
1400(b) is a much broader statute today than it was when most
courts held that pendent venue cannot be exercised over a patent
infringement claim. Therefore, pendent venue is permitted over
patent claims where the claim that is properly venued in the
forum is a substantial or primary claim, and the exercise of
pendent venue would result in judicial efficiency, convenience to
the parties, and would avoid piecemeal litigation.
E. Transfer of Venue
Hsin Ten has requested that this case be transferred to the
Eastern District of New York. Plaintiff maintains that the
Eastern District of New York is the more appropriate venue
because plaintiff resides in that district and there are two
actions, both of which involve the same patents and
trademark involved in this suit, currently pending in the Eastern
District of New York. See Pl. Opp. at 16-17.*fn17
Section 1404(a) provides: "For the convenience of parties and
witnesses, in the interest of justice, a district court may
transfer any civil action to any other district court or division
where it might have been brought." The burden is on the moving
party "to make a clear and convincing showing that `transfer will
serve the interests of convenience and fairness.'" NBA Props. v.
Salvino, Inc., No. 99 Civ. 11799, 2000 WL 323257, at *3
(S.D.N.Y. Mar. 27, 2000) (citations omitted). The movant must
support its motion with a detailed factual affidavit. See
Nabisco, Inc. v. Brach's Confections, Inc., No. 00 Civ. 5875,
2000 WL 1677935, at *1 (S.D.N.Y. Nov. 8, 2000).
"A motion to transfer venue is not ordinarily granted at the
request of the party who chose the forum in the first place."
Ferrostaal, Inc. v. Union Pac. R.R. Co., 109 F. Supp.2d 146, 152
(S.D.N.Y. 2000) (quotation marks omitted). Therefore, a plaintiff
moving to transfer must demonstrate that, since the action was
filed, there has been a change of circumstances which warrants
transfer of venue. See id.; see also Crane v. Metro-North
Commuter R.R., No. 87 Civ. 2876, 1989 WL 74954, at *3 (S.D.N Y
June 26, 1989).
First, plaintiff has not submitted an affidavit in support of
its transfer request. Second, plaintiff has not alleged any
change of circumstances warranting transfer of this suit. Indeed,
as the plaintiff in all three suits, Hsin Ten could control where
each action was filed. Hsin Ten chose to file this action in the
Southern District of New York even though it could have filed it
in the Eastern District of New York. Accordingly, plaintiff's
request to transfer venue is denied.*fn18
For the reasons stated above, defendants' motion to dismiss for
lack of personal jurisdiction and improper venue is granted in
part and denied in part. The claims against Clifford D. Clark are
dismissed. A pretrial conference is scheduled for January 16,
2001 at 4:30 p.m.