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Inventel Products LLC v. Penn LLC

United States District Court, S.D. New York

February 28, 2017

Inventel Products LLC, Plaintiff,
v.
Penn LLC, et al., Defendants.

          MEMORANDUM & ORDER

          ALISON J. NATHAN, District Judge.

         In this case, Defendants have filed a motion to transfer the case to the Northern District of Illinois and, in the alternative, a motion to dismiss. For the following reasons, the Court grants the motion to transfer to the Northern District of Illinois and therefore declines to address the motion to dismiss.

         I. Background

         Plaintiff Inventel Products ("Inventel") is a company that creates and markets "As Seen On TV" products. Compl. ¶¶10-11 (Dkt No. 1); Opp. at 2 (Dkt No. 25). Inventel is organized under the laws of, and based in, the state of New Jersey. Comp. ¶ 5. The company sells its products on television and online to customers across the United States. Compl. ¶¶ 11, 14; Opp. at 2. One of the company's products is the "DashCam Pro, " a personal security camera that mounts to the interior windshield of a car. Compl. ¶12-16. Inventel "prominently markets" its DashCam as an "As Seen on TV" product. Compl. ¶ 15.

         Defendant Penn LLC owns PulseTV.com, a website that sells various consumer products. Compl. ¶¶ 6, 17; Opp. at 7. Defendant Pulse Direct, Inc. is Penn LLC's managing member. Compl. ¶ 7; Mot. at 2 (Dkt No. 20); Zegar Deck ¶ 3 (Dkt No. 22). Both Defendants are located in Illinois. Compl. ¶¶ 6-7; Mot. at 2; Zegar Decl. ¶¶ 2-3, 25. One of Defendants' products is the "Hype Dashboard Camera, " which, like Inventel's DashCam, is a personal security camera for cars. Compl. ¶¶ 17-18; Mot. at 2-3. Defendants promote this product online to customers throughout the United States. Compl. ¶¶ 18, 24; Mot. at 2-3; Zegar Decl. ¶ 5.

         According to Inventel, Defendants have falsely advertised their Hype Dashboard Camera as an "As Seen On TV" product. Compl. ¶¶ 18, 36. Inventel alleges that Defendants use "the As Seen On TV marketing description" in order to induce customers to purchase the Hype Dashboard Camera, even though Defendants' camera is not actually an "As Seen on TV" product. Compl. ¶¶ 36-37; Opp. at 4. Inventel contends that these actions constitute, among other things, unfair competition in violation of the Lanham Act. Compl. ¶¶ 35-41; 15 U.S.C. §1125.

         Invented originally filed a lawsuit in New Jersey state court on December 11, 2015. Shravah Decl. Ex. A (Dkt No. 21-1); Mot. at 1-2; Opp. at 5. That lawsuit also raised a Lanham Act claim. Shravah Decl. Ex. A. Defendants removed the case to the United States District Court for the District of New Jersey on January 8, 2016. Shravah Decl. Ex. B (Dkt No. 21-2); Mot. at 2; Opp. at 5. On January 25, 2016, Inventel voluntarily dismissed the New Jersey action. Shravah Decl. Ex. C (Dkt No. 21-3); Mot. at 2; Opp. at 5. The parties dispute why Inventel did so. Inventel claims it dismissed the case because the parties reached an agreement that Defendants would stop using "As Seen on TV" marketing for the Hype Dashboard Camera. Opp. at 5; Abdul Decl. ¶ 48. Defendants respond that this allegation is fabricated and that there was never any such agreement. Reply at 4 (Dkt No. 28).

         A few months later, on March 3, 2016, Inventel filed the instant lawsuit. Dkt No. 1. Just as in the previously filed New Jersey case, Inventel contends that Defendants' "As Seen on TV" marketing campaign for the Hype Dashboard Camera violates the Lanham Act. Compl. ¶¶ 35-41. According to Inventel, it was forced to refile its lawsuit because Defendants continued to use "As Seen on TV" marketing in violation of the agreement allegedly reached in the New Jersey action. Opp. at 5. Inventel also asserts that it decided to refile this case in New York, rather than New Jersey, because it obtained new counsel that is located in New York. Opp. at 5-6; Abdul Deck ¶ 50.

         On April 11, 2016, Defendants filed a motion to dismiss and, in the alternative, a motion to transfer the case to the Northern District of Illinois. DktNo. 19. The motion to dismiss contends that the Court lacks personal jurisdiction over the Defendants, that venue is improper, and that two of Inventel's state law claims should be dismissed for failure to state a claim. Mot. at 4-10, 17-20. Upon receiving the motion to dismiss, the Court sua sponte gave Inventel an opportunity to amend its complaint, but the company declined to do so. Dkt Nos. 23-25. Instead, Inventel filed an opposition to the motion to dismiss and the motion to transfer. Dkt No. 25.

         II. Personal Jurisdiction

         Defendants' motion contends both that the Court lacks personal jurisdiction over them and that the case should be transferred in the interests of justice. Mot. at 4-9, 11-16. The Court need not rule on the personal jurisdiction question because a district court may resolve a motion to transfer without first resolving the issue of personal jurisdiction. See Sinochem Int'l Co. v. Malay. Int'l Shipping Corp., 549 U.S. 422, 431 (2007); Fort Knox Music, Inc. v. Baptiste, 257 F.3d 108, 112 (2d Cir. 2001) ("The district court has th[e] power to transfer venue [under § 1404(a)] even if it lacks personal jurisdiction over the defendants."); McGraw-Hill Cos. Inc. v. Jones, No. 12-CV-7085 (AJN), 2014 WL 988607, at *5 (S.D.N.Y. Mar. 12, 2014).

         III. The Court Grants the Motion to Transfer

         Defendants seek to transfer this case to the Northern District of Illinois pursuant to 28 U.S.C. § 1404(a). Mot. at 11. Under Section 1404(a), "[f]or 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 or to any district or division to which all parties have consented." 28 U.S.C. § 1404(a).

         To determine whether transfer is appropriate, the Court applies a two-step inquiry. First, the Court examines whether the action could have been brought in the proposed transferee court, in this case the Northern District of Illinois. Gross v. British Broad. Corp.,386 F.3d 224, 230 (2d Cir. 2004); P.E.A. Films, Inc. v. Metro-Goldwyn-Mayer, Inc., No. 14-CV-7263 (JSR), 2014 WL 6769377, at *1 (S.D.N.Y. Nov. 12, 2014); McGraw-Hill, 2014 WL 988607, at *5. Second, the Court "balance[s] the private and public interests, " Gross, 386 F.3d at 230, to determine ...


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