BERYL A. HOWELL, United States District Judge.
In this trademark infringement suit, the plaintiff, Delta Sigma Theta Sorority, Inc., seeks to enjoin the defendants, Letisha D. Bivins ("Bivins"), Alphonso D. Goins ("Goins"), and FratHouse Clothing, LLC ("FratHouse")
The defendants operate a clothing business in Naples, Florida, for which business they maintain a website. See Compl. ¶ 26. The plaintiff alleges that the defendants have engaged in the sale of merchandise bearing the plaintiff's trademarks without authorization. Id. ¶ 27. Despite serving the defendants with multiple cease and desist letters, the plaintiff alleges the defendants continued to sell the allegedly infringing merchandise. Id. ¶¶ 33-37.
The plaintiff initiated this lawsuit on February 26, 2013. See id. at 1. Defendants Bivins and FratHouse, proceeding pro se, timely moved to dismiss the complaint on grounds of lack of personal jurisdiction, improper venue, and, as to Defendant Bivins, failure to state a claim. See Mots. Dismiss, ECF Nos. 13 and 14. After the plaintiff improperly filed a Motion for Default against Defendant Goins,
In October, 2013 the plaintiff filed a Motion for Temporary Restraining Order ("TRO"), seeking, inter alia, the immediate
Oral argument was heard on the plaintiff's TRO motion on October 23, 2013.
Rule 12(b)(3) of the Federal Rules of Civil Procedure authorizes a party to move to dismiss a case for "improper venue." FED. R. CIV. P. 12(b)(3). Similarly, the federal venue statute, 28 U.S.C. § 1406(a), requires that a district court "dismiss, or if it be in the interest of justice, transfer" a case, which is filed "in the wrong division or district." 28 U.S.C. § 1406(a). Together, "Section 1406(a) and Rule 12(b)(3) allow dismissal only when venue is `wrong' or `improper'... in the forum in which [the case] was brought." Atl. Marine Constr. Co. v. U.S. Dist. Court, ___ U.S. ___, 134 S.Ct. 568, 187 L.Ed.2d 487 (2013). The Supreme Court explained that "[w]hether venue is `wrong' or `improper' depends exclusively on whether the court in which the case was brought satisfies the requirements of federal venue laws." Id.
"When venue is challenged, the court must determine whether the case falls within one of the three categories set out in § 1391(b)," id. which governs "the venue of all civil actions brought in district courts of the United States." 28 U.S.C. § 1391(a)(1). Specifically, venue of a civil case is properly laid in the following three categories of judicial district: where "any
The moving party objecting to venue must provide "sufficient specificity to put the plaintiff on notice of the defect" that the case fails to fall within one of the three categories set out in section 1391(b). 14D CHARLES ALAN WRIGHT ET AL., FEDERAL PRACTICE AND PROCEDURE § 3826, at 496 (4th ed.2013). Nevertheless, the burden remains on the plaintiff to establish that venue is proper since it is "`the plaintiff's obligation to institute the action in a permissible forum....'" Williams v. GEICO Corp., 792 F.Supp.2d 58, 62 (D.D.C.2011) (quoting Freeman v. Fallin, 254 F.Supp.2d 52, 56 (D.D.C.2003)); see also WRIGHT ET AL., § 3826, at 502, 505-06 ("[W]hen [an] objection has been raised, the burden is on the plaintiff to establish that the district he [or she] chose is a proper venue[,] ... consistent with the plaintiff's threshold obligation to show that the case belongs to the particular district court in which the suit has been instituted.").
In reviewing a motion to dismiss for improper venue, the court "`accepts the plaintiff's well-pled factual allegations regarding venue as true, draws all reasonable inferences from those allegations in the plaintiff's favor and resolves any factual conflicts in the plaintiff's favor.'" Wilson v. Obama, 770 F.Supp.2d 188, 190 (D.D.C.2011) (quoting James v. Verizon Servs. Corp., 639 F.Supp.2d 9, 11 (D.D.C. 2009)). The court may resolve the motion on the basis of the complaint alone, or, as necessary, examine facts outside the complaint that are presented by the parties, while drawing reasonable inferences in favor of the plaintiff. Herbert v. Sebelius, 925 F.Supp.2d 13, 17-18 (D.D.C.2013).
Since the propriety of venue in this district has been challenged, the Court must evaluate whether venue is proper here under any of the three prongs of 28 U.S.C. § 1391(b). See Atl. Marine Constr. Co., 134 S.Ct. at 577. According to the allegations in the Complaint, all three defendants are residents of the Middle District of Florida, specifically, the city of Naples, Florida. See Compl. ¶¶ 4-6. This allegation renders venue improper in this district under both § 1391(b)(1), since none of the defendants reside in this district, and § 1391(b)(3), since all defendants reside in Florida, making venue available in another district, namely, the Middle District of Florida. See 28 U.S.C. § 1391(b)(3) (providing for jurisdiction over a civil action in "any judicial district in which any defendant is subject to the court's personal jurisdiction with respect" to the action only if "there is no district in which an action may otherwise be brought.").
Thus, the plaintiff must show that venue is proper in this district under 28 U.S.C. § 1391(b)(2), which provides that "[a] civil action may be brought in — (2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated." Indeed, this is the prong of the general venue statute on which the plaintiff relies, alleging in the complaint that venue is proper in this district "because a substantial part of the events giving rise to the claims asserted herein arose in this district." Compl. ¶ 12; see also Modaressi
The plaintiff begins its argument as to the propriety of venue in this district by stating "a substantial part of the events giving rise to an action may occur in more than one district." Pl.'s Opp'n Defs.' Mot. ("Pl.'s Opp'n") at 19, ECF No. 52. It is true that "in some cases, a plaintiff will have a choice among multiple districts where a substantial portion of the underlying events occurred." Modaressi, 441 F.Supp.2d at 57. Nevertheless, the burden is still on the plaintiff to allege sufficient facts to indicate "a substantial part of the events or omissions giving rise to the claim occurred" in the chosen district. 28 U.S.C. § 1391(b)(2) (emphasis added). It is in this respect that the plaintiff fails to satisfy its burden.
During the period of jurisdictional discovery authorized by the Court, the plaintiff uncovered the total number of transactions and sales allegedly infringing upon the plaintiff's marks. See Pl.'s Opp'n at 3. In total, the plaintiff discovered that only ten of the defendants' total transactions since they started operating their business — out of 733 total transactions, or 1.3 percent of the defendants' sales — were shipped or billed to addresses within the District of Columbia. See id. For the purposes of determining appropriate venue, the plaintiff alleges that only two of those transactions involved goods bearing the allegedly infringing marks.
The D.C. Circuit has had few opportunities to address the propriety of venue when trademark infringement has been alleged,
Of particular importance to the D.C. Circuit in Noxell was the Supreme Court's instruction in Leroy that, when considering a plaintiff's choice of venue, "the convenience of the defendant (but not of the plaintiff)" was an appropriate factor to take into account. Id. at 316-17 (quoting Leroy, 443 U.S. at 185, 99 S.Ct. 2710). The D.C. Circuit found "this conclusion inescapable: [the plaintiff] has chosen the District of Columbia simply to suit its own convenience." Id. at 317; see also Great Socialist People's Libyan Arab Jamahiriya v. Miski, 496 F.Supp.2d 137, 142 (D.D.C.2007) ("Because venue is intended to protect defendants, `courts often focus on the relevant activities of the defendant... in determining where a substantial
The plaintiff's proffered basis for proper venue in this district pales in comparison to the facts found to be insufficient for venue in Noxell. For example, the Noxell court focused on the fact that only a small fraction, amounting to about 1.5 percent of the defendants' sales, occurred in this district, but that percentage is a larger proportion than the alleged number of sales of allegedly infringing merchandise sold in this district by the defendants in this matter. At best, crediting the plaintiff's "challenge" to the cancelled sale, the plaintiff alleges that two sales of allegedly infringing merchandise resulted in goods being shipped into this district. See Pl.'s Opp'n at 3. This amounts to two-tenths of one percent, or .2 percent, of the defendants' total sales. See id. (detailing 733 transactions and alleging "two (2) involved merchandise bearing [the plaintiff's] Marks.").
In addition, the Noxell court considered and rejected the plaintiff's argument that "confusion" for the purposes of trademark infringement, could have occurred in the District of Columbia because two stores in the District carried both the plaintiff's and defendant's barbeque sauce products. Noxell, 760 F.2d at 317. By contrast, the plaintiff's complaint does not allege that licensed merchandise bearing the plaintiff's marks is being sold in this District. See Compl. generally. Indeed, the plaintiff only alleges that it has "granted hundreds of such licenses" to vendors who "actively compete for the limited available spaces to exhibit at Delta's national conventions and other events." Compl. ¶ 22.
Finally, the plaintiff admitted at the hearing held on its TRO motion that it was plainly bringing suit in this district to suit its own convenience. The plaintiff responded to a question from the Court as to why this case should not be transferred to the Middle District of Florida by stating "it's a hardship to try to try [this case] in Florida with counsel being here ... so it would be a hardship for us in terms of what — where we're located and where our plaintiff is located." TRO Hrg. Tr. at 19:7-12, ECF No. 55. There is no need for the Court to infer that the plaintiff is bringing this case in this district solely for its own convenience since the plaintiff conceded this point in a direct answer to the Court.
The plaintiff's stated reason for bringing the instant suit in this district runs directly counter to the venue statute's "inten[t] to protect defendants," Miski, 496 F.Supp.2d at 142, and this circuit's "commonsense appraisal of the implications of those events [that gave rise to the claim at issue] for accessibility to witnesses and records." Sharp Electronics Corp. v. Hayman Cash Register Co., 655 F.2d 1228, 1229 (D.C.Cir.1981) (quoting Lamont, 590 F.2d at 1134). There is little doubt that the defendants' witnesses and records will mainly be found in the Middle District of Florida, where all of the defendants reside and the business is operated.
Common sense, in addition to D.C. Circuit precedent, counsels that venue should lie there, not in this district where the only connection to the claims are that, arguably, two people, one of whom was a member of the plaintiff, placed orders through a generally accessible website for shipment of a small amount of allegedly infringing merchandise to the District of Columbia. See Trenwyth Indus., Inc. v. Burns and Russell Co., 701 F.Supp. 852, 853; 856 (D.D.C. 1988) (holding that "one, although possibly two, direct sales to District of Columbia residents" was insufficient to trigger venue under previous version of 28 U.S.C. 1391(b) because "nearly all of the actions or events giving rise to [the suit] occurred
The plaintiff relies upon several cases from outside this circuit for the proposition that, in Lanham Act cases, a "substantial part" of the events giving rise to an infringement claim occurs where the alleged confusion as to the goods bearing the mark's origin occurs. See Pl.'s Opp'n at 19-20. These cases are either unpersuasive or undercut the plaintiff's argument, however, since each of the cases relied upon by the plaintiff, in addition to being non-binding on this Court, involved an additional factor not present in the instant matter, namely (1) advertising targeted at the forum or (2) substantial sales or other indicia of the presence of the defendant in the forum.
With respect to the first factor, the plaintiff relies on two cases that found venue proper in the plaintiff's chosen forum because the defendant in a trademark action had undertaken specific targeted actions, such as advertising, aimed at the challenged forum. In Sutter Home Winery, Inc. v. Madrona Vineyards, L.P. ("Sutter Home"), No. 05-0587, 2005 WL 701599, at *4 n. 2 (N.D.Cal. Mar. 23, 2005), the court addressed the defendants' venue argument in a footnote and then only in the context of the likelihood of the plaintiff's success on the merits in the context of a motion for preliminary injunction. The court in Sutter Home was careful to note that, while it found venue proper in the challenged district, it did "not foreclose the possibility that a different conclusion might be warranted upon consideration of a more complete record" and that its finding that consumers may be confused in the challenged district was merely sufficient to allow the court to reach the merits of the plaintiff's preliminary injunction motion. Id.
The Sutter Home court noted that sales in the challenged forum were "relatively modest," and based its finding that venue was proper in the challenged district on the authority of two cases, Radical Products, Inc. v. Sundays Distributing, 821 F.Supp. 648, 649-50 (W.D.Wash.1992) and Sidco Industries, Inc. v. Wimar Tahoe Corp., 768 F.Supp. 1343, 1346-47 (D.Or. 1991), which themselves based their findings of proper venue on the fact that the defendant in those cases directed advertising toward the challenged forum. Id. Here, the plaintiff has not shown any non-Internet based advertising engaged in by the defendants and has failed to show that the Internet advertising — primarily on social media sites — was aimed at this forum. See Pl.'s Opp'n at 12-13. Thus, to the extent that Sutter Home is persuasive, it cuts against the plaintiff in light of the absence of advertising from the defendants purposefully directed at this forum.
The court in Gary Scott International v. Baroudi ("Baroudi"), 981 F.Supp. 714, 718 (D.Mass.1997), another case on which the plaintiff relies, focused on the trademark infringement defendant's targeted advertising in the challenged district, together with additional steps by the defendant to generate business there, to find venue proper under 28 U.S.C. § 1391(b). Specifically, the Baroudi court found venue appropriate in a state where the defendant had sold twelve allegedly infringing items, was actively seeking distribution at a major retailer in the forum state, and was soliciting business from the forum state's residents through its website. See Baroudi, 981 F.Supp. at 718. The Baroudi court noted that courts considering where trademark infringement actions occurred typically "focused on the absence or presence of advertising and sales in the district." Id. (collecting cases). In the instant case, the plaintiff has been able to show no advertising directed at customers
The remaining cases on which the plaintiff relies address the second factor that courts have found dispositive in assessing venue, namely, the substantial sales or other indicia of the presence of the defendant in the forum. In Vanity Fair Mills, Inc. v. T. Eaton Co. ("Vanity Fair"), 234 F.2d 633, 639 (2d Cir.1956), for example, the court was primarily concerned with the extraterritorial application of the Lanham Act. The court found that because the majority of the allegedly infringing sales "with the exception of defendant's few mail order sales into the United States," occurred in Canada, Canadian law should apply. See id. Moreover, the Vanity Fair court found that since the American claims "appear to be of minor significance" when compared with the total allegedly infringing sales, dismissal on forum non conveniens grounds was appropriate. See id. at 647-48. Vanity Fair, therefore, implicitly acknowledged that venue may be appropriate in the district where a substantial number of sales are made, which plainly does not help the plaintiff here. See id.
Likewise, the court in Allstar Marketing Group, L.L.C. v. Your Store Online, L.L.C. ("Allstar"), 666 F.Supp.2d 1109 (C.D.Cal. 2009), focused on the significance of the allegedly infringing sales activity in the challenged forum. In Allstar, the defendants were accused of selling allegedly infringing merchandise through an Internet website. See id. at 1116. The plaintiffs alleged that nineteen percent of the defendants' sales occurred in California, where venue was being asserted. Id. at 1129. The evidence proffered by the plaintiffs consisted of an "internet printout of customer comments and complaints" related to the defendants. Id. The court, focusing on the level of sales that occurred in the challenged venue, found that "[e]ven drawing all inferences in plaintiffs' favor, the court cannot conclude, based on this evidence, that a substantial amount of infringing sales occurred in this district." Id. Nevertheless, the defendants came "forward with no evidence controverting plaintiffs' allegations regarding their sales." Id. The court found, therefore, that in the absence of any contradictory evidence from defendants, and in light of the holding in Sutter Home that "only a modest amount of sales of infringing product is sufficient to support venue in a particular district," the case would go forward. Id. at 1130 (internal quotation marks omitted).
Allstar, far from supporting the plaintiff's assertion of venue, weighs in favor of the defendants' motion. In the instant matter, there is substantial evidence regarding the sales engaged in by the defendants in this district, presented by both the plaintiff and the defendants, and it shows, at most, two sales causing allegedly infringing merchandise to be shipped into this district.
The last two cases on which the plaintiff relies are also unavailing since they too focused on the presence of the defendant or the defendants' sales in the challenged district. In Cottman Transmission Systems, Inc. v. Martino ("Cottman"), 36 F.3d 291, 292 (3d Cir.1994), the Third Circuit found venue improper when a Pennsylvania franchisor attempted to sue several Michigan auto repair facilities in a Pennsylvania court. The dispute in Cottman centered on alleged activities that occurred exclusively outside the plaintiff's selected forum, except for the alleged preparation of a yellow pages advertisement for the alleged infringers that purportedly used the plaintiff's trademark. See id. at 295. The Third Circuit found that because the defendants' business was located in Michigan, the allegedly infringing advertisements were published in Michigan, and the trademarks were alleged to have been used in Michigan, venue was improper in Pennsylvania. See id. at 295-96. Thus, Cottman also supports the defendants' position that the mere presence of allegedly infringing material in a district — in Cottman, the prepared advertisement — is insufficient to support venue in that district, particularly when the defendants reside and "most, if not all, of the significant events" occurred in another forum. See id. at 295.
Finally, the facts in R. Griggs Group Ltd. v. Consolidated Shoe, Inc. ("Griggs"), No. C98-4676, 1999 WL 226211, at *1; *4 (N.D.Cal. Apr. 9, 1999), which is cited by the plaintiff, are distinguishable because in that case, the court found venue proper against corporations that had a regular presence, through a national sales force, in many districts, including two permanent salespeople in the district in which the plaintiff sought to establish venue. In Griggs, the two defendants were Virginia-based corporations with offices in two other states and five countries, in addition to "a nationwide sales force." See id. at *1. The defendants employed "more than 300 people, ha[d] a net worth of $78,888,038, and realized sales revenue of $62,347,375" the year before the suit was brought. Id. The Griggs court found that because "there is evidence that both [the plaintiff's] shoes and defendants' shoes are sold in this district, this is one of the districts in which confusion is likely to occur." Id. at *4. Based upon these facts, the Griggs court cited, inter alia, Cottman and Vanity Fair for the proposition that a "`substantial part' of the events giving rise to [a Lanham Act] claim occurs in any district where consumers are likely to be confused by the accused goods." Id.
Since the plaintiff, after jurisdictional discovery, has failed to uncover evidence sufficient to show that a substantial part of the events giving rise to the plaintiff's claim occurred in this district, the plaintiff has failed to show that venue is proper in the District of Columbia under any of the prongs of 28 U.S.C. § 1391(b).
Nevertheless, the Court will exercise its "sound discretion" to transfer this case to the Middle District of Florida since "the interest of justice generally requires transferring a case to the appropriate judicial district in lieu of dismissal." Johnson v. Deloitte Servs., LLP, 939 F.Supp.2d 1, 6 (D.D.C.2013) (quoting Ellis-Smith v. Sec'y of the Army, 793 F.Supp.2d 173, 177 (D.D.C.2011)). As the Supreme Court cautions, plaintiffs should "not be penalized by ... `time-consuming and justice-defeating technicalities.'" Goldlawr, Inc. v. Heiman, 369 U.S. 463, 466, 82 S.Ct. 913, 8 L.Ed.2d 39 (1962) (quoting Internatio-Rotterdam, Inc. v. Thomsen, 218 F.2d 514, 517 (4th Cir. 1955)). The D.C. Circuit has held that transfer is "in the interest of justice" where procedural obstacles to the resolution
In the instant matter, the defendants concede that venue would be proper in the Middle District of Florida since "all Defendants reside [in] the Middle District of Florida" and because "a substantial part of events giving rise to the action occurred in the Middle District of Florida." Defs.' Mem. at 13. The defendants would not be prejudiced by a transfer "in light of [their] substantial connections to the district and the fact that the alleged [wrongful acts] occurred" in that district. O'Keefe v. Blue & Gold Fleet, L.P., 634 F.Supp.2d 284, 289 (E.D.N.Y.2009). Thus, since the claim "could have been brought" in the Middle District of Florida under 28 U.S.C. §§ 1391(b)(1) or (b)(2), the Court finds it is in the interest of justice to transfer this case, pursuant to 28 U.S.C. § 1406(a), to the Middle District of Florida.
For the foregoing reasons, the defendants' Joint Motion to Dismiss is granted in part to the extent that it alleges venue is improper in this District and requests that this matter be transferred to the Middle District of Florida. Since the Court need not reach the merits of the defendants' alternative arguments for dismissal under Federal Rule of Civil Procedure 12(b)(2) and 12(b)(6) in light of the finding that transfer is appropriate, those portions of the defendants' joint motion are denied without prejudice so that the defendants may re-file, if appropriate, after the case is transferred.
An appropriate Order accompanies this Memorandum Opinion.
