United States District Court, S.D. New York
MEMORANDUM & ORDER
J. NATHAN, District Judge.
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
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.
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.
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.
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.
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.
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.
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).
The Court Grants the Motion to Transfer
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).
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 ...