United States District Court, S.D. New York
OPINION & ORDER
M. WOOD, UNITED STATES DISTRICT JUDGE
Court has reviewed the several Defendants' (collectively,
“Moving Defendants”) Motion to Dismiss for
Forum non Conveniens (Doc. No. 29) and Moving
Defendants' Motion to Release Frozen Funds (“Mot.
to Release”) (Doc No. 36). This Court DENIES the Motion
to Dismiss for Forum Non Conveniens and DENIES the
Motion to Release Frozen Funds.
Ideavillage Products Corp. (“Plaintiff”) owns the
trademark to Copper Fit, a line of products designed to
relieve muscle and joint pain. (Complaint ¶ 28 (Doc. No.
5)). Plaintiff also owns registered and unregistered
copyrights related to packaging and marketing materials for
its Copper Fit products, (id. ¶ 33), which
Plaintiff markets and sells primarily online and through
television. (Id. ¶ 38). Plaintiff brings this
action against Defendants Bling Boutique Store,, for
manufacturing, marketing, selling, etc. counterfeit versions
of Plaintiff's Copper Fit products. (Id. ¶
1). The Complaint makes eight claims against Defendants:
trademark counterfeiting, trademark infringement, and false
designation of origin under the Lanham Act; copyright
infringement under the Copyright Act; as well as violation of
deceptive acts and practices, false advertising, unfair
competition, and unjust enrichment under New York state law.
(Id. ¶¶ 69-128).
Court granted Plaintiff's Motion for a Preliminary
Injunction on December 8, 2016 (Doc. No. 3) [“PI
Order”], under Federal Rule of Civil Procedure 65 and
Section 34 of the Lanham Act, to remain in place throughout
the pendency of the litigation. The Preliminary Injunction
enjoins all Defendants from manufacturing, importing,
marketing, and selling, etc. any goods bearing Copper Fit,
Plaintiff's trademark, or counterfeit versions of Copper
Fit. The Preliminary Injunction also included an Asset Freeze
Order, which restrains the transfer or dissipation of assets
in Defendants' bank accounts. (See PI Order
¶ 2). On December 19, 2016, the Clerk of Court issued an
entry of default due to Defendants' failure to answer the
Complaint. (Doc. No. 21). On December 29, 2016, Moving
Defendants filed a Motion to Vacate the Entry of Default and
a Motion to Dismiss for Forum non Conveniens. (Doc.
No. 29). The Court vacated the entry of default on February
8, 2017, in light of the Moving Defendants' assertion
that the failure to appear or answer was unintentional, and
due to the short time frame Moving Defendants were given to
appear and respond. (See Doc. No. 33). On February
23, 2017, Moving Defendants filed a Motion to Release Frozen
Funds (Doc. No. 36). This Opinion addresses both the Moving
Defendants' Motion to Dismiss and the Motion to Release
MOTION TO DISMISS FOR FORUM NON CONVENIENS
Defendants ask the Court to dismiss the Complaint based on
forum non conveniens, which this Court has the
discretion to do, if another forum would be a more efficient
venue to litigate this case. See Am. Dredging Co. v.
Miller, 510 U.S. 443, 448 (1994). However, the doctrine
of forum non conveniens “has continuing
application [in federal courts] only in cases where the
alternative forum is abroad, and perhaps in rare instances
where a state or territorial court serves litigational
convenience best.” Sinochem Int'l Co. v.
Malaysia Int'l Shipping Corp., 549 U.S. 422, 430
(2007) (internal citations and quotation marks omitted). The
alternative forum Defendants choose is the District of New
Jersey, which is not an international forum.
the proper course of action would be for this Court to
transfer the case to a sister federal court, under 28 U.S.C.
§ 1404(a), if that court is a more convenient venue for
the litigation. Id. The moving party bears the
burden to demonstrate that transfer is warranted “[f]or
the convenience of the parties and witnesses, in the interest
of justice.” 28 U.S.C. § 1404(a). The Second
Circuit guides district courts, in determining whether to
transfer a case, to consider factors such as: “(1) the
plaintiff's choice of forum, (2) the convenience of
witnesses, (3) the location of relevant documents and
relative ease of access to sources of proof, (4) the
convenience of parties, (5) the locus of operative facts, (6)
the availability of process to compel the attendance of
unwilling witnesses, and (7) the relative means of the
parties.” D.H. Blair & Co. v. Gottdiener,
462 F.3d 95, 106-07 (2d Cir. 2006) (quoting Albert Fadem
Trust v. Duke Energy Corp., 214 F.Supp.2d 341, 343
(S.D.N.Y. 2002) (Rakoff, J.)).
Defendants argue that Plaintiff should not be afforded
deference for its choice of forum in the Southern District,
because Plaintiff is incorporated in New Jersey.
Nevertheless, the Court finds that the balance of factors
does not warrant a transfer to the District of New Jersey.
Plaintiff chose to bring this action in the Southern District
of New York. Moreover, Plaintiff's New Jersey
headquarters are a mere 50 miles from the Southern District;
thus, litigating in the District of New Jersey would offer
marginal, if any, convenience over litigating in the present
forum. Second, Moving Defendants fail to identify witnesses
for whom it would be more convenient to appear in the
District of New Jersey as opposed to the Southern District of
New York, or whom the Court could not compel to testify if
they were unwilling to appear in the Southern District of New
York. See Am. Eagle Outfitters, Inc. v. Tala Bros.
Corp., 457 F.Supp.2d 474, 479 (S.D.N.Y. 2006) (Sweet,
J.). Third, Plaintiff argues that many of the transactions
that allegedly violated Plaintiff's trademark took place
within the Southern District of New York. (Opp'n to MTD
at 15-16 (Doc. No. 31)). Thus, a significant locus of
operative facts is in the Southern District, which weighs in
favor of maintaining this venue. See Am. Eagle
Outfitters, 457 F.Supp. at 477. Finally, Defendants have
not shown that litigating in the Southern District of New
York would be unduly burdensome in comparison to litigating
in the District of New Jersey. See NBA Props., Inc. v.
Salvino, Inc., 2000 WL 323257, at *8 (S.D.N.Y. Mar. 27,
2000) (Schwartz, J.).
the balance of factors and the interest of justice militate
in favor of maintaining the action in this District. The
Court denies Moving Defendants' Motion to Dismiss for
Forum non Conveniens. The Court also finds that
transfer of the case pursuant to 28 U.S.C. § 1404(a) is
MOTION TO RELEASE FROZEN FUNDS
Moving Defendants ask this Court to revisit the Preliminary
Injunction. (Mot. to Release at 5-8). Moving Defendants
challenge the Preliminary Injunction by merely reciting the
standard that this Court used and disagreeing with this
Court's analysis. The Court denies the Moving
Defendants' motion for the following reasons: (1) the
Moving Defendants fail to present the Court any new evidence
to show that the PI Order should be amended, vacated, or
reconsidered, or any new or binding decisions to challenge
the Court's decision in the PI Order; (2) Plaintiff has
demonstrated irreparable harm, a likelihood of success on the
merits, and that the balance of hardships tips in
Plaintiff's favor-which Moving Defendants fail to rebut;
(3) Plaintiff did not unreasonably delay in bringing this
action; (4) the Court has the authority to freeze Moving
Defendants' assets; (5) the Moving Defendants fail to
meet their burden to show that the Asset Freeze Order should
be lifted, or otherwise modified, ...