United States District Court, E.D. New York
Suozzi, English & Klein, P.C. Attorneys for the
Plaintiff, By: Lynn Marcy Brown, Esq., Kevin Schlosser, Esq.,
Office of Bryan A. McKenna Co-Counsel for the Defendant, By:
Bryan A. McKenna, Esq., Of Counsel.
Eisenberg Tanchum & Levy Co-Counsel for the Defendant,
By: Stewart L. Levy, Esq., Of Counsel.
MEMORANDUM OF DECISION & ORDER
D. SPATT United States District Judge.
Plaintiff the Diamond Collection, LLC (the
“Plaintiff” or “Diamond”) brought
this action against the Defendant Underwraps Costume
Corporation (the “Defendant” or
“Underwraps”), asking for a declaratory judgment
that Diamond has not infringed on any of Underwraps'
claimed intellectual property; and seeking damages for claims
of unfair competition, tortious interference with prospective
advantage, and commercial defamation per se.
before the Court is a motion by Underwraps to transfer this
action to the Central District of California (the
“CDCA”) pursuant to 28 U.S.C. § 1404(a) and
forum non conveniens. For the following reasons,
Underwraps' motion is denied.
The Relevant Facts
following facts are drawn from the first amended complaint
(the “FAC”) as well as the exhibits attached to
the parties' memoranda. See City of Pontiac Gen.
Employees Ret. Sys. v. Dell Inc., No. 14-CV-3644 (VSB),
2015 WL 12659925, at *3 (S.D.N.Y. Apr. 30, 2015) (“In
deciding a motion to transfer, a court may consider material
outside of the pleadings.”); Everlast World's
Boxing Headquarters Corp. v. Ringside, Inc., 928
F.Supp.2d 735, 737 n.1 (S.D.N.Y. 2013) (“[I]n deciding
a motion to transfer venue, the Court may consider factual
submissions, including declarations, by defendants, who have
the burden to justify a change of venue.”).
is a Delaware limited liability company with a principal
place of business in Westbury, New York. Underwraps has its
principal place of business in California. Underwraps has a
showroom in New York, and does business in the state as well.
parties design, market and sell Halloween costumes. The
enmity between the parties emanates from one of Diamond's
recent catalogs, as well as a trade show in New York attended
by both parties in December 2016. Underwraps claims that
Diamond has been copying Underwraps catalogs, and has been
selling Underwraps' costumes, sometimes with the
Underwraps label still attached.
it is the Defendant in this action, Underwraps further claims
that Diamond is not the true party in interest in this
action. Underwraps states that its quarrel is with an entity
called Pizazz. The parties disagree as to whether Pizazz is a
subsidiary corporation or an unincorporated division of
Diamond. The catalog at issue is titled “Pizazz! Party
& Costumes, ” and at the bottom of the
catalog's cover, Diamond's logo appears. The back of
the catalog lists an email address and a California mailing
address below Diamond's logo, and is featured prominently
on the back cover. The Pizazz logo is on the bottom left; and
at the bottom right the catalog notes that “Pizazz LLC
is a division of the Diamond Corporation.” Diamond
states that a “[a] simple check of the public Secretary
of State business search records (in other words, basic due
diligence) would have shown Defendant Underwraps' lawyer
that The Diamond Collection, LLC is the legal entity and no
‘Pizazz LLC' exists.” (Pl.'s Mem. in Opp.
FAC, Diamond states that “[t]he Diamond Catalog
contained an editing error, erroneously identifying Pizazz as
an ‘LLC.'   Pizazz is a trade name, and it is
not an LLC. This editing error was inadvertently missed in
the production process, and has since been corrected.”
(FAC ¶¶ 30-33). Oddly, even though Underwraps
maintains that Pizazz is the true party in interest,
Underwraps stated “Even though Pizazz's catalog
states that Pizazz is an LLC, it is not an LLC or any other
kind of company. It is merely a ‘DBA' of The
Diamond Collection, which is why, presumably, The Diamond
Collection has brought this action.” (Def.'s Mem.
in Support at 4).
December 21, 2016, counsel for Underwraps sent a letter to
“Pizazz LLC[, ] [a] Division of The Diamond Collection
LLC.” (Pl.'s Ex. 1 to its FAC). In the letter,
Underwraps' counsel claimed that Diamond was producing
and selling costumes whose designs were exclusively owned by
Underwraps through intellectual property rights, and directed
Diamond to cease production and sales of the costumes.
Counsel for Underwraps stated that “[w]hile Underwraps
is not adverse to trying to resolve its myriad claims against
Pizazz informally, please be assured that if it is unable to
do so, Underwraps will immediately file an action in federal
court seeking an injunction, damages, including its lost
profits and actual damages and its attorneys[']
January 5, 2017, Diamond filed the instant lawsuit. On
January 13, 2017, Underwraps filed a complaint in the CDCA
against Pizazz (the “California action”).
it is unclear when, at some point after Underwraps filed the
California action, the parties attended a New Orleans trade
show. During that trade show, Underwraps purportedly told
potential customers of Diamond that Underwraps had filed a
lawsuit against Diamond for infringement and Diamond would be
unable to fill orders.
Relevant Procedural History
January 5, 2017, Diamond filed the complaint in the instant
lawsuit. The initial complaint only sought a declaratory
judgment stating that Diamond had not and is not infringing
on Underwraps' claimed intellectual property rights.
Underwraps was served with the summons and complaint on
January 11, 2017.
January 13, 2017, two days after being served with the
summons and complaint in the instant action, Underwraps filed
a complaint in the CDCA against Pizazz. The full caption of
the California action reads:
STATES DISTRICT COURT CENTRAL ...