The opinion of the court was delivered by: JOHN KEENAN, Senior District Judge
Plaintiff brings claims for patent infringement, breach of
contract, and unfair competition. Before the Court is defendants'
motion to transfer this action, pursuant to 28 U.S.C. § 1404(a),
to the Western District of New York.
Plaintiff is a New Jersey corporation that consists of
president/director/sole shareholder Steven Campanella and
vice-president Donna Campanella, Steven Campanella's wife.
Declaration of Steve Campanella ¶¶ 1-2. Plaintiff's only place of
business is at Steven Campanella's home in Middletown, New
Jersey. Id. ¶ 2.
Defendant Mattel, Inc. ("Mattel") is a Delaware corporation
with its principal place of business in El Segunda, California.
Affidavit of Jeffrey Miller ("Miller Aff.") ¶ 7. Defendant
Fisher-Price, Inc. ("Fisher-Price"), a wholly-owned subsidiary of
Mattel, is a Delaware corporation with its principal place of
business in East Aurora, New York. Id. ¶¶ 5-6.
B. The Suit and the Instant Motion
John Campanella, the brother of Steven Campanella, is the
inventor of an "Interactive Children's Game" that has been
designated U.S. Patent No. 5,829,985. Declaration of John
Campanella ¶¶ 2-3 John Campanella assigned this patent to plaintiff. Id. ¶ 2. Plaintiff alleges that, through the product
development firm PDQ Product Development LLC ("PDQ"), plaintiff
obtained non-disclosure agreements from, and presented drawings
and a prototype of a toy based on the patent to, several toy
companies, including defendants. Complaint ("Cplt.") ¶¶ 8-12.
According to plaintiff, defendants have manufactured and sold a
product, the Magna Doodle Doodle Talker ("the Talker"), that
infringes plaintiff's patent. Id. ¶ 19. Such infringement,
plaintiff contends, violates the non-disclosure agreement and
constitutes unfair competition. Id. ¶¶ 25, 33.
Arguing that all decisions concerning the marketing, design,
product development, and consumer relations relative to the
Talker were made and continue to be made in East Aurora, New
York, that all relevant documents are maintained at Fisher-Price
headquarters in East Aurora, New York, and that all employees
involved with marketing, design, product development, and
consumer relations regarding the Talker are located in East
Aurora, New York, defendants have moved to transfer venue to the
Western District of New York, in which district East Aurora is
located. Defendants' Memorandum of Law at 2-3; see Miller Aff.
¶¶ 9-14; Affidavit of Vladimir Buzga ¶¶ 9-13. Mattel consents to
venue in the Western District of New York. Defendants' Reply
Memorandum of Law at 5 n. 1.
Plaintiff contends that, because it does not generate any significant income, a change of venue to the Western District of
New York would make continuance of this litigation financially
impossible. Plaintiff's Memorandum of Law ("Pl. Mem.") at 3.
Indeed, plaintiff claims to have selected the Southern District
of New York as the least expensive, most easily accessible court
for plaintiff and plaintiff's potential witnesses. Id. at 2.
These witnesses include representatives and employees of PDQ, the
offices of which are in New Jersey and in New York City, and a
former employee of PDQ who resides in New Jersey. Id. at 3-4.
Plaintiff also argues that all documents related to the patent
are located at plaintiff's place of business in New Jersey or at
the office of plaintiff's attorney in New York City. Id. at 5.
In addition, based on three listings for job openings in New York
City that were posted on Fisher-Price's website, plaintiff
contends that the Talker must have been designed, at least in
part, in the Southern District of New York. Plaintiff's
Supplemental Memorandum of Law at 2-4. Finally, plaintiff
contends that even if defendants had designed, developed and
marketed the Talker in East Aurora, New York, the non-disclosure
agreement was signed and the breach of contract occurred in the
Southern District of New York. Pl. Mem. at 8-9.
"Venue refers to locality; it concerns the forum where a
lawsuit may be brought and judicial authority exercised."
Rocket Jewelry Box, Inc. v. Noble Gift Packaging, Inc., 869 F. Supp. 152,
154 (S.D.N.Y. 1994) (citing 15 Wright, Miller & Cooper,
Federal Practice & Procedure: Jurisdiction 2d § 3801). Unlike
subject matter jurisdiction, venue is a "personal privilege"
that a party may waive. Leroy v. Great W. United Corp.,
443 U.S. 173, 180 (1979); see RC Entertainment, Inc. v.
Rodriguez, No. 98 Civ. 8585 (BSJ), 1999 WL 777903 at *2
(S.D.N.Y. Sept. 29, 1999). In addition, a court may transfer a
case from one district court to another, even if venue in the
original location is proper: "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. § 1404(a). On a motion to
transfer venue, a court must decide whether the action could have
been brought in the transferee forum, and whether the convenience
of the parties and the interests of justice warrant transfer.
See Millennium, L.P. v. Hyland Software, Inc., No. 03 Civ.
3900 (DC), 2003 WL 22928644 at *2 (S.D.N.Y. Dec. 10, 2003);
Savoy Owners Assocs., Inc. v. The Ins. Corp., No. 02 Civ. 6145
(JFK), 2003 WL 941098 at *1 (S.D.N.Y. Mar. 6, 2003).
Courts weigh a number of factors in determining whether a
transfer serves the convenience of the parties and the interests
of justice. These factors include (1) the locus of operative
facts, (2) the convenience of witnesses, (3) the convenience of parties, (4) the location of relevant documents and ease of
access to sources of proof, (5) the availability of process to
compel attendance of unwilling witnesses, (6) the relative means
of the parties, (7) the transferee forum's familiarity with
governing law, (8) the weight accorded plaintiff's choice of
forum, and (9) trial efficiency and the interests of justice,
based on the totality of the circumstances. See 800-Flowers,
Inc. v. Intercont'l Florist, Inc., 860 F. Supp. 128, 133
(S.D.N.Y. 1994); see also Hyland, 2003 WL 22928644 at *2;
Savoy Owners, 2003 WL 941098 at *1. No single factor is
determinative, and a court's discretion will not be overturned on
appeal absent a clear showing of abuse. Hyland, 2003 WL
22928644 at *3 (citing, inter alia, In re Cuyahoga Equip.
Corp., 980 F.2d 110, 117 (2d Cir. 1992)); see Bristol-Myers
Squibb Co. v. Andrx Pharmaceuticals, LLC, No. 03 Civ. 2503