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D'Amato v. ECHL, Inc.

United States District Court, W.D. New York

May 7, 2015

DAVID D'AMATO, an individual residing in New York and successor in interest to CHAMPION GRAPHICS, INC., Plaintiff,
ECHL, INC., et al., Defendants.


HUGH B. SCOTT, Magistrate Judge.

Before the Court is defendants' motion to change venue to the Middle District of Florida, Orlando Division (Docket No. 34). After initially referring only non-dispositive matters to the undersigned (Docket No. 18), Judge William Skretny referred dispositive matters to the undersigned on November 17, 2014 (Docket No. 37). Responses to defendants' motion initially were due December 3, 2014, any reply by December 10, 2014, and the motion was deemed submitted (without oral argument) on December 10, 2014 (Docket No. 35). Upon stipulation (Docket No. 38), responses to this motion were due by December 10, 2014, with the reply due December 17, 2014 (Docket No. 39).

Plaintiff's counsel then moved to withdraw from this case and asked for an extension of the response deadline for their erstwhile client to allow plaintiff time to locate new counsel and to respond to this motion (Docket No. 40); that motion was granted (Docket No. 41). Under the new, extended schedule, plaintiff's response was due by January 26, 2015, and any reply by February 2, 2015, with the matter to be submitted on February 2, 2015 (Docket No. 42). On January 23, 2015, plaintiff, now proceeding pro se, e-mailed the Chambers of the undersigned requesting a 120-day extension of the response deadline "due to the difficult matter of my case and to explore my options of having this case set aside and continue in the Trademark Office which may offer this court a better foundation" (Docket No. 43). This request was denied without prejudice to plaintiff renewing it in a properly filed and served motion (Docket No. 44); no such motion to extend was filed. Plaintiff alternatively sought 90 days to find new counsel (Docket No. 43).

No response or reply was filed for the motion to change venue. Plaintiff was given until April 24, 2015, either to retain new counsel or to file a response (through counsel or pro se) to defendants' pending motion (Docket No. 45). Plaintiff has not appeared with new counsel and is thus proceeding pro se. This motion was deemed submitted, without oral argument on May 4, 2015.


This motion for change of venue under 28 U.S.C. § 1404 presents an initial jurisdictional issue whether this motion can be decided by this Court on an Order or must this Court first render to Judge Skretny a Report and Recommendation. District courts have been divided on this issue, including this Court. This Order adopts what is now believed to be the better practice.

A motion for change of venue is not listed among the relief in 28 U.S.C. § 636(b) that is expressly dispositive (that is, requiring a Report and Recommendation). District courts nationally (including this Court) have split on whether a motion to change venue is dispositive or non-dispositive, see Skolnick v. Wainer, No. CV 20134694, 2013 U.S. Dist. LEXIS 135139, at *2 n.1 (E.D.N.Y. Sept. 20, 2013) (Go, Mag. J.)(Order citing cases). Some district courts have held that it is a non-dispositive pretrial matter which the Magistrate Judge may decide by Order pursuant to 28 U.S.C. § 636(b)(1)(A), e.g., Skolnick, supra, 2013 U.S. Dist. LEXIS 135139, at *2 n.1 (agreeing to adopt the majority view within the Second Circuit that transfer of venue motions are non-dispositive); American Ctr. for Civil Justice v. Ambush, 794 F.Supp.2d 123, 129 (D.D.C. 2011); see also George K. Walker, 17 Moore's Federal Practice-Civil § 72.02[4], at n.15.3 (2014). That is, this motion is deemed to be within the "jurisdiction and sound discretion of a United States Magistrate Judge under 28 U.S.C. § 636(b)(1)(A), subject to appeal to the district court for an abuse of that discretion, '" Jones v. Wetzel, No. 4:13-CIV-1718, 2013 U.S. Dist. LEXIS 94352, at *6 (M.D. Pa. July 8, 2013) (Carlson, Mag. J.) (quoting Berg v. Aetna Freight Lines, No. CIV. A. 07-1393, 2008 U.S. Dist. LEXIS 54905, at *1 n.1 (W.D. Pa. July 15, 2008) (Hay, Mag. J.), which cited in turn cases, including O'Brien v. Goldstar Tech., Inc., 812 F.Supp. 383 (W.D.N.Y. 1993) (Heckman, Mag. J.) (Decision and Order on motion to transfer venue)); Alessandra v. Colvin, No. 12CV397, 2013 U.S. Dist. LEXIS 111975, at *4-5 (W.D.N.Y. Aug. 8, 2013) (Scott, Mag. J.). Courts have reasoned that since the transfer decision is not dispositive of the merits or determines federal jurisdiction, this motion to change venue is thus viewed as non-dispositive, Adams v. Key Tronic Corp., No. 94 Civ. AO535, 1996 U.S. Dist. LEXIS 19244, at *3-4 (S.D.N.Y. Jan. 2, 1997); Jones, supra, 2013 U.S. Dist. LEXIS 94352, at *6.

Other courts, even this one, Cott Corp. v. Decas Botanical Synergies, LLC, No. 11CV552, Docket No. 35, Report and Recommendation of Dec. 23, 2011, 2011 U.S. Dist. LEXIS 156223, at *12-13 (W.D.N.Y. Dec. 23, 2011) (Scott, Mag. J.), adopted, Docket No. 56, Order of Sept. 19, 2012, 2012 U.S. Dist. LEXIS 134168 (W.D.N.Y. Sept. 19, 2012) (Arcara, J.), have held that the transfer of venue motion is dispositive and thus require a Report and Recommendation and subject to de novo review if objections are filed, e.g., Payton v. Saginaw County Jail, 743 F.Supp.2d 691 (E.D. Mich. 2010). Magistrate Judge Go in Hamlett noted in her Report that courts disagree whether or not a motion to transfer venue is dispositive under § 636, Hamlett v. Widtzler, No. 11CV3106, 2013 U.S. Dist. LEXIS 47102, at *3 & n.1 (E.D.N.Y. Mar. 8, 2013) (Go, Mag. J.) (Report and Recommendation rendered at request of Chief Judge Amon), adopted, 2013 U.S. Dist. LEXIS 45497 (E.D.N.Y. Mar. 28, 2013) (Amon, Ch. J.). Magistrate Judge Hodges in Hamilton v. Patelco Credit Union, C/A No.: 1:12-22-TLW-SVH, 2012 U.S. Dist. LEXIS 66397, at *1 n.1 (D.S.C. Mar. 20, 2012) (Hodges, Mag. J.) (Report and Recommendation), found that, in the absence of definitive authority within the Fourth Circuit, the motion to transfer venue was "arguably dispositive" and the approach of Report and Recommendation "preserves the prerogative of the parties to argue and the presiding District Judge to determine whether to review the undersigned's opinion under a de novo or clearly erroneous standard of review."

This very Court has found in separate cases the motion to change venue was dispositive, Cott Corp., supra, 2011 U.S. Dist. LEXIS 156223, at *12-13, and not dispositive, Alessandra, supra, 2013 U.S. Dist. LEXIS 111975, at *4-5. In Cott Corp., this Court first analogized the motion to change venue with a motion to remand and the remand motion was recently held by the Second Circuit to be dispositive, despite the fact that neither motion was listed in 28 U.S.C. § 636(b) as being dispositive, Cott Corp., supra, 2011 U.S. Dist. LEXIS 156223, at *12-13 (citing Williams v. Beemiller, Inc., 527 F.3d 259 (2d Cir. 2008)). There, this Court stated that "a motion to transfer venue divests the transferring Court of jurisdiction over the matter, Huff v. CSX Transp., Inc., 461 F.Supp.2d 853 (S.D. Ill. 2006); Tharp v. Transworld Drilling Co., 367 F.Supp. 521 (W.D. Okla. 1973); see also Fisher v. United Airlines, Inc., 218 F.Supp. 223 (S.D.N.Y. 1963), " Cott Corp., supra, 2011 U.S. Dist. LEXIS 156223, at *12-13. There, it was concluded that "if granted, so far as this Court is concerned the action would no longer exist and that decision is essentially dispositive as to this Court, " thus a Report and Recommendation was issued, id.

On the other hand, in Alessandra v. Colvin, this Court later decided a motion to transfer a Social Security case by an Order, 2013 U.S. Dist. LEXIS 111975, at *4-5, citing several of the cases (previously noted) that also decided these motions by a Magistrate Judge's Order. Alessandra did not distinguish Cott Corp. or reject the method applied in the earlier case.

Whether a motion to change venue is dispositive matters because of the standard of review of this Court's decision will differ whether it is an Order or a Report and Recommendation. As an Order, it would be reviewed on appeal to the Chief Judge under the clearly erroneous or contrary to law standard of 28 U.S.C. § 636(b)(1)(A), while as a Report and Recommendation, objections to the Report would be reviewed under de novo standard of Fed.R.Civ.P. 72, see Hamilton, supra, 2012 U.S. Dist. LEXIS 66397, at *1 n.1.

* * * *

In light of the uncertainty of how to proceed and the split among district courts, this Court will adhere to its more recent practice and consider the motion to change venue as non-dispositive and hence decided here by an Order. This Court thus rejects its earlier insistence that motions to transfer venue were dispositive (cf. Cott Corp., supra, 2011 U.S. Dist. LEXIS 156223) because, unlike the analogized remand motion, the motion to change venue does not end federal court jurisdiction. A transfer of venue keeps the case open and within the federal judiciary, but merely moves the action from one district to another; sometimes within the same district from one division to another, but cf. Payton, supra, 743 F.Supp.2d at 692. In Payton, the District Judge there held that a motion to dismiss or alternatively to transfer the case to an alternative division (from the Southern Division to the Northern Division of the Eastern District of Michigan, see 28 U.S.C. § 102(a)(1), (2)) was dispositive like a remand motion since in both instances that particular court loses jurisdiction over the case if either motion is granted, Payton, supra, 743 F.Supp.2d at 693. While the transferor court loses that case upon the grant of a motion to transfer venue, the case remains viable within the federal system in the new venue, with no adjudication of the federal court's jurisdiction or the merits of any defense or claim. This Court rejects the reasoning of the Eastern District of Michigan in Payton and its analogy to the jurisdiction revoking motion to remand.

Granting or denying this change of venue motion will not divest the United States District Courts of jurisdiction, unlike ruling on a remand motion. This motion merely challenges plaintiff's choice of venue. Unlike the cases from some other courts, Chief Judge Skretny (in issuing a dispositive referral Order, Docket No. 37, in this case) has not instructed this Court to render a Report and Recommendation on this pending motion.

This motion involves, as discussed in some detail below, an exercise in discretion. An appeal of the decision on this motion, whether considered by Chief Judge Skretny on de novo review (as with an objection to a Report and Recommendation) or abuse of discretion as a matter of law on appeal of an Order, could (if desired) reach the question of the exercise of that discretion on this motion to change venue. Thus, this Court will proceed to decide defendants' motion by this Order.


This is a trademark infringement action by plaintiff, a New York State resident and the successor in interest to Champion Graphics, Inc., a Fort Lauderdale, Florida, corporation (Docket No. 1, Compl. ¶¶ 1, 16). Plaintiff alleges that defendants are the ECHL, Inc., a New Jersey corporation; the Orlando Pro Hockey Operations, a Florida limited partnership who own the Orlando Solar Bears; and three individuals residing in Florida (id. ¶¶ 2-6). The Answer asserts that ECHL is a Virginia non-profit corporation with its principal place of business in Princeton, New Jersey (Docket No. 10, Ans. at 13). Plaintiff asserts venue is appropriate in the Western District of New York from his residence and doing business in this District (Docket No. 1, Compl. ¶ 10).

Plaintiff claims that he and his predecessor in interest, Champion Graphics, began using the mark and design "SOLAR BEARS" in interstate commerce and trademarked the mark and designs (id. ¶¶ 12-17). Meanwhile, defendants ECHL and Orlando Pro Hockey proposed a team name of "SOLAR BEARS" without researching whether that name was already in use, with defendants filing for trademark application in September 2011 (id. ¶¶ 18-22). Plaintiff claims that defendants' trademark is substantially similar to his mark and uses the trademarked words "SOLAR BEARS" (id. ¶¶ 32, 31, 23-34). Plaintiff here alleges federal common law trademark infringement (id. ¶¶ 41-47); federal unfair competition (id. ¶¶ 49-53); federal trademark dilution (id.¶¶ 55-60); federal copyright infringement (id. ¶¶ 62-68); false or fraudulent registration (id. ¶¶ 70-71); New York State common law trademark infringement, see N.Y. Gen. Bus. Law § 360(k) (id. ¶¶ 73-79); New York common law unfair competition (id. ¶¶ 81-86); fraudulent registration, see N.Y. Gen. Bus. Law § 380(j) (id. ¶¶ 88-90); violation of New York dilution statute (id. ¶¶ 92-93); and violation of New York State deceptive trade practices law, see N.Y. Gen. Bus. Law § 349 (id. ¶¶ 95-97). Plaintiff seeks declaratory relief (id. § 99-101) and damages (id. Prayer for Relief at 21).

Defendants collectively answered and asserted counterclaims (Docket No. 10), which plaintiff answered (Docket No. 21). In the counterclaims, defendants assert claims under New York law and contend that this District is the appropriate venue because ...

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