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I CREATE INTERNATIONAL, INC. v. MATTEL

August 6, 2004.

I CREATE INTERNATIONAL, INC., Plaintiff,
v.
MATTEL, INC. AND FISHER PRICE, INC., Defendants.



The opinion of the court was delivered by: JOHN KEENAN, Senior District Judge

OPINION and ORDER

I. BACKGROUND

  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.

  A. The Parties

  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.

  II. VENUE

  "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 (SHS), ...


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