Michael H. Simon, District Judge.
In this lawsuit, adidas America, Inc. and adidas AG (collectively, "Adidas") allege claims of trademark infringement, unfair competition, trademark dilution, and deceptive trade practices against Cougar Sport, Inc. ("Cougar Sport"). Cougar Sport has moved to dismiss the case for lack of personal jurisdiction and improper venue, or, alternatively, to transfer venue to the Southern District of New York. Dkt. 29. For the following reasons, Cougar Sport's motion is denied.
On a motion to dismiss for lack of personal jurisdiction brought pursuant to Fed.R.Civ.P. 12(b)(2), the plaintiff bears the burden of demonstrating that the court's exercise of jurisdiction is proper. See CollegeSource, Inc. v. AcademyOne, Inc., 653 F.3d 1066, 1073 (9th Cir.2011) (citing Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th Cir.2008)). When the court's determination is based on written materials rather than an evidentiary hearing, "the plaintiff need only make a prima facie showing of jurisdictional facts." Boschetto, 539 F.3d at 1015 (quotation marks and citation omitted). In resolving the motion on written materials, the court must "only inquire into whether [the plaintiff's] pleadings and affidavits make a prima facie showing of personal jurisdiction." Id. (alteration in original) (quotation marks omitted) (quoting Caruth v. Int'l Psychoanalytical Ass'n, 59 F.3d 126, 128 (9th Cir.1995)). A plaintiff cannot solely rest on the bare allegations of its complaint, but uncontroverted allegations in the complaint must be taken as true. Id. "Conflicts between the parties over statements contained in affidavits must be resolved in the plaintiff's favor." Id. (quoting Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir.2004)).
On a motion to dismiss for improper venue brought pursuant to Fed. R.Civ.P. 12(b)(3), a "defendant over whom personal jurisdiction exists but for whom venue is improper may move for dismissal or transfer under 28 U.S.C. § 1406(a)." Action Embroidery Corp. v. Atl. Embroidery, Inc., 368 F.3d 1174, 1181 (9th Cir. 2004). 28 U.S.C. § 1406(a) provides, "The district court of a district in which is filed a case laying venue in the wrong division or district shall dismiss, or if it be in the interest of justice, transfer such case to any district or division in which it could have been brought." The plaintiff bears the burden of showing that venue is proper. See Piedmont Label Co. v. Sun Garden Packing Co., 598 F.2d 491, 496 (9th Cir. 1979) ("Plaintiff had the burden of showing
On a motion to transfer venue brought pursuant to 28 U.S.C. § 1404(a), a court may transfer any civil action "[f]or the convenience of the parties and witnesses, in the interests of justice." 28 U.S.C. § 1404(a). The forum to which transfer of venue is sought must be a district court where the case "might have been brought." Id. Under § 1404(a), the district court has discretion "to adjudicate motions for transfer according to an individualized, case-by-case consideration of convenience and fairness." Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988) (internal quotation marks and citation omitted); see Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-99 (9th Cir.2000).
Plaintiff adidas America, Inc. is a Delaware corporation, and Plaintiff adidas AG is a German company. adidas America, Inc., the principal distributor of adidas AG's merchandise, is headquartered and maintains its principal place of business in Portland, Oregon. Adidas manufactures and sells apparel and footwear bearing its "Three Stripe" trademark. Cougar Sport is a New York corporation with its principal place of business in New York City, New York. Cougar Sport is a small company with four employees, including its President, Raymond Dayan. Cougar Sport manufactures athletic wear, which it sells on an international scale. Cougar Sport's merchandise can be found at stores such as Ross Stores, Inc. and Burlington Coat Factory, both of which have retail locations in Portland, Oregon. Cougar Sport additionally sells its merchandise online, including through its own website, cougarsportinc.com; Amazon.com; and eBay.com. Cougar Sport has knowingly sold five items to buyers located in Oregon.
Adidas's claims arise out of the "2 Pipe/ 2 Stripe" design for apparel used on Cougar Sport's manufactured goods. Adidas alleges that Cougar Sport's "2 Pipe/2 Stripe" design is a confusingly similar imitation of Adidas's trademarked "Three-Stripe" mark. Adidas alleges that Cougar Sport intentionally adopted its "2 Pipe/2 Stripe" design to trade on the goodwill associated with Adidas's "Three-Stripe" mark and that the alleged imitation has diluted Adidas's "Three-Stripe" mark and caused Adidas substantial injury.
Adidas brings the following claims against Cougar Sport: (1) federal trademark infringement, in violation of 15 U.S.C. § 1114; (2) false representation, false description, and false designation, in violation of 15 U.S.C. § 1125(a); (3) unfair and deceptive trade practices, in violation of the statutes of several states including California, Colorado, Delaware, Georgia, Hawaii, Illinois, Maine, Minnesota, Nebraska, New Mexico, New York, Ohio, and Oklahoma; (4) common law trademark infringement and unfair competition; (5) and federal trademark dilution, in violation of 15 U.S.C. § 1125(c).
Cougar Sport asserts three arguments in its motion. First, Cougar Sport argues that this case should be dismissed under Fed.R.Civ.P. 12(b)(2) for lack of personal jurisdiction. Second, Cougar Sport argues
Unless a federal statute governs personal jurisdiction, a district court applies the law of the forum state. See CollegeSource, Inc., 653 F.3d at 1073 (citing Fed.R.Civ.P. 4(k)(1)(A)). Oregon's long-arm statute is co-extensive with constitutional standards. Capsugel Belgium NV v. Bright Pharma Caps, Inc., 2015 WL 7185463, at *2 (D.Or. Nov. 13, 2015) (citing Or. R. Civ. P. 4(L)). Thus, this Court need only determine whether its exercise of personal jurisdiction over Cougar Sport would offend constitutional due process requirements. See Boschetto, 539 F.3d at 1015; see also Hydraulic Servocontrols Corp. v. Dale, 294 Or. 381, 384, 657 P.2d 211 (1982).
Due process requires that the defendant "have certain minimum contacts with [the forum] such that the maintenance of the suit does not offend `traditional notions of fair play and substantial justice.'" Int'l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463, 61 S.Ct. 339, 85 L.Ed. 278 (1940)). The Supreme Court has rejected the application of "mechanical" tests to determine personal jurisdiction. Id. at 319, 66 S.Ct. 154; see also Burger King Corp. v. Rudzewicz, 471 U.S. 462, 478, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985). Rather, a court should consider the "quality and nature of the activity in relation to the fair and orderly administration of the laws which it was the purpose of the due process clause to ensure." Int'l Shoe, 326 U.S. at 319, 66 S.Ct. 154.
"There are two forms of personal jurisdiction that a forum state may exercise over a nonresident defendant — general jurisdiction and specific jurisdiction." Boschetto, 539 F.3d at 1016. A court has general personal jurisdiction over a defendant whose contacts with the forum are "so `continuous and systematic' as to render them essentially at home in the forum state." Daimler AG v. Bauman, ___ U.S. ___, 134 S.Ct. 746, 754, 187 L.Ed.2d 624 (2014) (citing Goodyear v. Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 131 S.Ct. 2846, 2851, 180 L.Ed.2d 796 (2011)). If the court lacks general personal jurisdiction, it may have specific personal jurisdiction if the defendant has certain minimum contacts with the forum state, the controversy arose out of those contacts, and the exercise of jurisdiction is reasonable. See Burger King, 471 U.S. at 472-74, 105 S.Ct. 2174. Although Adidas speculates that "Cougar Sport's activities may well rise to the level of `continuous and systematic' contacts necessary to support a finding of general jurisdiction," Adidas argues that this Court has specific jurisdiction over Cougar Sport. Dkt. 32 at 15.
The Ninth Circuit applies a three-part test to determine if the exercise of specific jurisdiction over a nonresident defendant is appropriate:
Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir.2010)(quoting Schwarzenegger, 374 F.3d at 802). The plaintiff bears the burden on the first two prongs, but if both are established, then "the defendant must come forward with a `compelling case' that the exercise of jurisdiction would not be reasonable." Boschetto, 539 F.3d at 1016 (quoting Schwarzenegger, 374 F.3d at 802).
The first prong embodies two distinct, although sometimes conflated, concepts: purposeful availment and purposeful direction. See Washington Shoe Co. v. A-Z Sporting Goods Inc., 704 F.3d 668, 672 (9th Cir.2012); Brayton Purcell, 606 F.3d at 1128. "A purposeful availment analysis is most often used in suits sounding in contract. A purposeful direction analysis, on the other hand, is most often used in suits sounding in tort." Schwarzenegger, 374 F.3d at 802 (internal citations omitted). Because Adidas's trademark infringement claims arise in tort, this Court applies the purposeful direction analysis. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 2:7 (4th ed.2008) (characterizing trademark infringement as a commercial tort).
Ninth Circuit courts use a three-part test (the "effects test") from the Supreme Court's opinion Calder v. Jones, 465 U.S. 783, 104 S.Ct. 1482, 79 L.Ed.2d 804 (1984), to evaluate purposeful direction in trademark claims.
Under the first prong of the effects test, Adidas must demonstrate that Cougar Sport committed an "intentional act." In the context of the effects test, an "intentional act" is "an external manifestation of the actor's intent to perform an actual, physical act in the real world." Washington Shoe, 704 F.3d at 674. Adidas
Under the second prong of the effects test, Adidas must demonstrate that Cougar Sport expressly aimed its actions at the forum state. The Ninth Circuit has "emphasized that `something more' than mere foreseeability [is required] in order to justify the assertion of personal jurisdiction,... and that `something more' means conduct expressly aimed at the forum." Brayton Purcell, 606 F.3d at 1129 (first alteration in original) (citations omitted).
Adidas argues, in part, that the aiming prong of the effects test is satisfied because Cougar Sport maintains an interactive and commercial website that is accessible to Oregon residents. "Not all material placed on the Internet is, solely by virtue of its universal accessibility, expressly aimed at every state in which it is accessed." Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218, 1231 (9th Cir. 2011). Courts in the Ninth Circuit "typically examine the `level of interactivity and commercial nature of the exchange of information that occurs on the website to determine if sufficient contacts exist to warrant the exercise of jurisdiction.'" Craigslist, Inc. v. Kerbel, 2012 WL 3166798, at *4 (N.D.Cal. Aug. 2, 2012) (quoting Cybersell v. Cybersell, 130 F.3d 414, 416 (9th Cir.1997)).
Here, the parties do not dispute that Cougar Sport's website is interactive and commercial in nature, as Cougar Sport advertises and sells its merchandise through the website. Adidas, however, has not presented any evidence or allegation that Cougar Sport has had contact with Oregon residents through its website. Cf. Tech Heads, Inc. v. Desktop Serv. Cntr., Inc., 105 F.Supp.2d 1142, 1150-51 (D.Or.2000) (finding personal jurisdiction proper where the plaintiff presented evidence of a transaction involving an Oregon resident made through the defendant's interactive website); Rice v. PetEdge, Inc., 975 F.Supp.2d 1364, 1371-72 (N.D.Ga. 2013) (finding that defendant's interactive website and small amount of sales in the forum state made through the website were sufficient for purposeful availment). Additionally, there is no evidence or allegation in the record that the website specifically targets residents of Oregon. Cf. Mavrix, 647 F.3d at 1230 (finding the aiming prong of the effects met where the defendant operated a website with a specific focus on industries centered in the forum state). Thus, Cougar Sport's website, by itself, is insufficient to satisfy the express aiming requirement of the effects test. See Millennium Enterprises, Inc. v. Millennium Music, LP, 33 F.Supp.2d 907, 923 (D.Or.1999) (declining to find personal jurisdiction based on an interactive website when there was no evidence of transactions with forum residents or evidence that the forum was targeted).
The Ninth Circuit has repeatedly stated, however, that "`operating even a passive website in conjunction with `something more' — conduct directly targeting the forum — is sufficient to confer personal jurisdiction.'" Brayton Purcell, 606 F.3d at
Id. Here, Cougar Sport uses not only eBay.com but also Amazon.com and its own website to market and sell its merchandise throughout the United States. Thus, Cougar Sport uses the third-party seller platforms as "broader vehicle[s] for commercial activity." Id. Cougar Sport has also used its online selling platforms as a means for establishing business in Oregon. See id.
Cougar Sport argues that the three transactions made with Oregon customers are de minimis and too small to support personal jurisdiction, citing Tuna Processors, Inc. v. Anova Food, Inc., 2007 WL 3232609 (D.Or. Nov. 1, 2007). In Tuna Processors, the court held that two sales of allegedly infringing tuna products made through the defendant's website "were random and fortuitous contacts rather than the result of purposeful conduct directed at [the] forum." Id. at *4; cf. Benchmade Knife Co., Inc. v. Benson, 2010 WL 988465, at *5 (D.Or. Mar. 15, 2010) (finding personal jurisdiction proper despite a small amount of Oregon sales where the defendant's interactive website advertised its Oregon connections). The district court case law on this point may be conflicting, as Adidas points to Tech Heads, Inc. v. Desktop Service Center, Inc., where the court held that it had personal jurisdiction over a nonresident defendant because the plaintiff "presented evidence of a highly interactive Web site and one actual transaction involving an Oregon resident." 105 F.Supp.2d at 1150. Thus, the case law is unclear as to whether a highly interactive website, combined with a small amount of sales into the forum, is sufficient to establish that the defendant engaged in "conduct expressly aimed at the forum." Brayton Purcell, 606 F.3d at 1129.
Adidas, however, argues that the express aiming prong may be satisfied under another theory as well. The Ninth Circuit has "repeatedly stated that the `express aiming' requirement is satisfied, and specific jurisdiction exists, `when the defendant is alleged to have engaged in wrongful conduct targeted at a plaintiff whom the defendant knows to be a resident of the forum state.'" Washington Shoe, 704 F.3d at 675 (quoting Dole Food Co. v. Watts, 303 F.3d 1104, 1111 (9th Cir.2002)); see also Bancroft & Masters, Inc. v. Augusta Nat'l, Inc., 223 F.3d 1082, 1087 (9th Cir.2000) (concluding that "`express aiming' encompasses wrongful conduct individually targeting a known forum resident."). Adidas argues that the express aiming
Adidas cites Bancroft & Masters, Inc. v. Augusta National Inc. in support of its argument. In Bancroft, the plaintiff, a California corporation, alleged that the defendant sent a letter to the plaintiff in California demanding that the plaintiff cease and desist its use of a domain name and transfer it immediately to the defendant. Id. at 1084-85. The defendant also sent a letter to Network Solutions, Inc. ("NSI"), at the time the sole registrar of domain names in the United States, challenging the plaintiff's use of the domain name. Id. The defendant's letter to NSI triggered NSI's dispute resolution policy, under which the plaintiff had three options: (1) voluntarily transfer the name to the defendant; (2) allow the domain name to be placed on hold such that it could not be used by either party; or (3) obtain a declaratory judgment establishing its right to use the domain name. Id. at 1085. The plaintiff chose the third option, filing declaratory judgment action against the defendant in California. Id. The defendant moved to dismiss for lack of personal jurisdiction. Id.
The plaintiff alleged in its complaint that the defendant sent the letter to NSI in order deliberately to trigger NSI's dispute resolution procedures and thus wrongfully to interfere with the plaintiff's use of its domain name. Id. at 1087. Applying the theory that the express aiming "requirement is satisfied when the defendant is alleged to have engaged in wrongful conduct targeted at a plaintiff whom the defendant knows to be a resident of the forum state," the Ninth Circuit found that the district court properly exercised specific personal jurisdiction over the defendant. Id. at 1087-88.
In Washington Shoe Co. v. A-Z Sporting Goods Inc., the Ninth Circuit applied the same theory and reversed the district court's dismissal for lack of personal jurisdiction, holding, in part, that the defendant's "alleged willful infringement of [the plaintiff's] copyright, and its knowledge of both the existence of the copyright and the forum of the copyright holder, is sufficient `individualized targeting' to establish the `something more' necessary to satisfy the express aiming requirement." 704 F.3d at 678-79; see also Panavision, 141 F.3d at 1322 (holding that the effects test is satisfied where "[the plaintiff] engaged in a scheme to register [the defendant's] trademark as his domain names for the purpose of extorting money from [the plaintiff]. His conduct, as he knew it likely would, had the effect of injuring [the defendant] in California where [the defendant] has its principal place of business and where the movie and television industry is centered.").
Under Bancroft, Washington Shoe, and Panavision, these alleged facts are sufficient to establish that Cougar Sport purposefully directed its allegedly infringing activities at Oregon, knowing that the brunt of the harm would be suffered in this forum. See Amini Innovation Corp. v. JS Imports, Inc., 497 F.Supp.2d 1093, 1107 (C.D.Cal. May 22, 2007) (finding the purposeful direction test satisfied where the defendants willfully infringed upon the plaintiff's copyrights and the plaintiff alleged that the defendants "must have known it was located in California"). Additionally, Cougar Sport sold allegedly infringing merchandise directly into the forum state, albeit on a small scale, and maintains a highly interactive, commercial website accessible to Oregon residents.
Under the third prong of the effects test, Adidas must demonstrate that Cougar Sport's "conduct caused harm that it knew was likely to be suffered in the forum." Id. at 1131. "This element is satisfied when a defendant's intentional act has `foreseeable effects' in the forum." Id. "The `brunt' of the harm need not be suffered in the forum state," and this element may be established even if "the bulk of the harm" occurs outside the forum. Yahoo! Inc., 433 F.3d at 1207. As noted above, Cougar Sport does not deny knowledge of Adidas's location in Oregon. Thus, it was foreseeable that Adidas would be harmed by the alleged trademark infringement, including harm to Adidas's goodwill and reputation. Additionally, Cougar Sport sold its allegedly infringing merchandise to forum residents. Accordingly, the Court finds that Adidas has satisfied the third prong of the effects test.
The second requirement for the Court to exercise specific personal jurisdiction "is that the claim asserted in the litigation arises out of the defendant's forum related activities." Panavision, 141 F.3d at 1322. The Ninth Circuit applies a "but for" test under which the Court must determine whether the plaintiff would not have suffered injury "but for" the defendant's forum-related conduct. Id.; see also Planned Parenthood v. Am. Coalition of Life Activists, 945 F.Supp. 1355, 1368 (D.Or.1996) (citing Shute v. Carnival Cruise Lines, 897 F.2d 377, 385 (9th Cir. 1990), rev'd on other grounds, 499 U.S. 585, 111 S.Ct. 1522, 113 L.Ed.2d 622 (1991)) ("The `but for' test should not be narrowly applied; rather, the requirement is merely designed to confirm that there is some nexus between the cause of action and defendant's contact with the forum."). Generally, the resolution of this prong relies heavily on the court's resolution of the minimum contacts prong.
Adidas's claims are based on Cougar Sport's allegedly infringing use of its "2 Pipe/2 Stripe" design on Cougar
Because the previous two requirements are met, a strong presumption of jurisdiction exists and Cougar Sport "must `present a compelling case that the presence of some other considerations would render jurisdiction unreasonable.'" Ballard v. Savage, 65 F.3d 1495, 1500 (9th Cir.1995) (quoting Burger King, 471 U.S. at 477, 105 S.Ct. 2174) (emphasis in original). Jurisdiction is unreasonable if it does not comport with the notion of fair play and substantial justice. Burger King, 471 U.S. at 476, 105 S.Ct. 2174. The Ninth Circuit has identified seven specific factors to consider in making the reasonableness determination:
Bancroft, 223 F.3d at 1088 (citation omitted).
If a court determines that a defendant has purposefully directed its actions at the forum state, as discussed above, then the purposeful interjection factor favors the plaintiff. See CollegeSource, 653 F.3d at 1080 ("Actions directed at a forum resident expected to cause harm in the forum constitute purposeful injection."). Accordingly, this factor favors jurisdiction.
Cougar Sport argues that litigating this matter in Oregon would be a significant burden because Cougar Sport is a small company based in New York. Cougar Sport asserts that all of its employees are residents of New York, all of its witnesses are located in New York, and that all of its documents and records that would be relevant to this case are located in New York. "`[W]ith the advances in transportation and telecommunications and the increasing interstate practice of law, any burden [of litigation in a forum other than one's residence] is substantially less than in days past.'" Id. (quoting Menken v. Emm, 503 F.3d 1050, 1060 (9th Cir.2007)). This factor slightly favors Cougar Sport.
This factor concerns the extent of any risk that the Court's exercise of jurisdiction in Oregon might conflict with the sovereignty of New York, Cougar Sport's state of citizenship. See Panavision, 141 F.3d at 1323. Adidas asserts primarily federal claims. Although Adidas's claim for unfair and deceptive trade practices is brought under New York statutory law,
The Ninth Circuit assumes that a forum state "`maintains a strong interest in providing an effective means of redress for its residents tortuously injured.'" Id. (quoting Gordy v. Daily News, L.P., 95 F.3d 829, 836 (9th Cir.1996)). Accordingly, this factor favors jurisdiction.
"This factor focuses on the location of the evidence and witnesses." Id. As with the factor considering the burden on the defendant, this factor "is no longer weighed heavily given the modern advances in communication and transportation." Id. Both parties assert that their evidence and witnesses are located in their respective home states. Thus, this factor is neutral.
If Oregon is not a proper forum, then Adidas would most likely be required to litigate this matter in the Southern District of New York. Although litigating in New York would most likely inconvenience Adidas, the Ninth Circuit does not give much weight to the plaintiff's inconvenience. Ziegler v. Indian River Cnty., 64 F.3d 470, 476 (9th Cir.1995). Thus, this factor only slightly favors jurisdiction.
The Southern District of New York is an alternative forum; however, the existence of an alternative forum only becomes an issue "when the [original] forum state is shown to be unreasonable." See CollegeSource, 653 F.3d at 1080 (quoting Bauman v. DaimlerChrysler Corp., 644 F.3d 909, 929 n. 19 (9th Cir.2011), overruled on other grounds by Daimler AG, ___ U.S. ___, 134 S.Ct. 746, 187 L.Ed.2d 624). Cougar Sport has not established that Oregon is an unreasonable forum.
Weighing these seven considerations favors finding of personal jurisdiction in this District. Cougar Sport fails to present a compelling case that the exercise of jurisdiction would be unreasonable. Thus, the Court has specific jurisdiction over Cougar Sport. Accordingly, the Court denies Cougar Sport's motion to dismiss for lack of personal jurisdiction under Fed.R.Civ.P. 12(b)(2).
Cougar Sport argues that venue is improper in this District and moves for dismissal or transfer of this case to the Southern District of New York under Fed. R.Civ.P. 12(b)(3). The general venue statute, 28 U.S.C. § 1391(b), governs trademark claims. Kaia Foods, Inc. v. T.J. Bellafiore, 70 F.Supp.3d 1178, 1184 (N.D.Cal.2014). Under 28 U.S.C. § 1391(b), a civil action may be brought in "a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred." In a suit alleging trademark infringement, "a `substantial part' of the events giving rise to the claims occur in any district where consumers are likely to be confused by the accused goods, `whether that occurs solely in one district or in many.'" Golden Scorpio Corp. v. Steel Horse Bar & Grill, 596 F.Supp.2d 1282, 1286 (D.Ariz.2009) (quoting Cottman Transmission Sys. v. Martino, 36 F.3d 291, 295 (3d Cir.1994)); see also Kaia Foods, 70 F.Supp.3d at 1184 ("In a trademark infringement action, a substantial part of the events occur both where the labels are affixed and where confusion of purchasers is likely to occur.").
Consumer confusion "occurs where the passing off occurs, that is, where the deceived customer buys the defendant's
Cougar Sport alternatively moves for transfer of venue under 28 U.S.C. § 1404(a) to the Southern District of New York. Section 1404(a) provides: "For 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." It is undisputed that this case could have been brought in the Southern District of New York,
The inquiry under § 1404(a) is fact specific, and a "district court has discretion `to adjudicate motions for transfer according to an `individualized, case-by-case consideration of convenience and fairness.'" Jones, 211 F.3d at 498 (quoting Stewart Org. v. Ricoh Corp., 487 U.S. 22, 29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988)); see also 15 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 3847 (4th ed. 2015) ("[T]he statute leaves a great deal to the discretion of the trial judge."). "The defendant must make a strong showing of inconvenience to warrant upsetting the plaintiff's choice of forum." Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986).
A court must weigh multiple factors when considering a motion to transfer. Jones, 211 F.3d at 498. Factors to consider may include:
Id. at 498-99. The weight accorded to each factor varies with the facts of each case and is left to the discretion of the court. Decker Coal, 805 F.2d at 843.
This factor is neutral because neither party has identified any relevant agreements.
Adidas asserts primarily federal claims, and both this District and the Southern
This factor does not support transfer because Oregon is Adidas's forum of choice. Generally, this factor is given great weight. See Lou v. Belzberg, 834 F.2d 730, 739 (9th Cir.1987). "The plaintiff's choice of forum is especially given deference where the plaintiff is a resident of the forum in which the action is brought." Wilwerding v. Edwards, 2008 WL 4388713, at *3 (D.Or. Sept. 26, 2008) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255-56, 102 S.Ct. 252, 70 L.Ed.2d 419 (1981)). As Adidas has its United States headquarters and principal place of business in Oregon, the Court finds that this factor weighs heavily against transfer.
Cougar Sport asserts that while it is located entirely within New York, Adidas has stores in Manhattan and has previously brought lawsuits in New York courts. Dkt. 29 at 11. As the Court discussed above, however, Cougar Sport has transacted business with Oregon residents online. Additionally, while Adidas may have retail locations in New York, Adidas asserts that those locations are irrelevant to this action as it will not call any of the employees from those stores as witnesses and the stores do not process or maintain any relevant documents. Finally, all of the previous lawsuits referenced by Cougar Sport were filed more than ten years ago. Thus, the Court finds that this factor is neutral.
Neither party presents any evidence concerning how the costs of litigation would differ between the two forums. Thus, this factor is neutral.
Neither party has asserted that compulsory process will be needed in this matter. Thus, this factor is neutral.
Cougar Sport asserts that all of its witnesses and records are located in New York, and that it would be inconvenient to transport the witnesses and documents to Oregon for hearings and trial. Adidas responds that its witnesses and records are located in Oregon, and that transfer of this case to New York would "merely shift rather than eliminate the inconvenience." Decker Coal, 805 F.2d at 843.
"The convenience of witnesses, particularly nonparty witnesses important to the resolution of the case, is often cited as the most significant factor in a ruling on a motion to transfer." 15 Charles Alan Wright and Arthur R. Miller, Federal Practice & Procedure § 3851 (4th ed.2015). As neither party identifies its witnesses with specificity, the Court finds it difficult meaningfully to evaluate the effect that a change of venue would have on any witnesses. Additionally, Adidas asserts its
Balancing these factors, most of which are neutral, the Court finds that Cougar Sport has not made a showing of inconvenience sufficient "to warrant upsetting the plaintiff's choice of forum." See Decker Coal, 805 F.2d at 843. Accordingly, the Court denies Cougar Sport's motion to transfer venue under § 1404(a).
Cougar Sport's motion to dismiss for lack of personal jurisdiction and improper venue, or, alternatively, to transfer venue (Dkt.29) is DENIED.
In Walden, the Court stated that in the minimum contacts inquiry, "the plaintiff cannot be the only link between the defendant and the forum." 134 S.Ct. at 1122. Walden involved a Bivens action resulting from an interaction in the Atlanta airport between a DEA agent and two professional gamblers on their way to Las Vegas. The Ninth Circuit had found that Nevada could exercise personal jurisdiction over the DEA agent for his actions in Georgia because "petitioner `expressly aimed' his submission of [an] allegedly false affidavit at Nevada by submitting the affidavit with knowledge that it would affect persons with a `significant connection' to Nevada." Id. at 1120. The Supreme Court reversed, emphasizing that the "proper focus of the `minimum contacts' inquiry in intentional-tort cases is `the relationship among the defendant, the forum, and the litigation.'" Id. at 1126 (quoting Calder, 465 U.S. at 788, 104 S.Ct. 1482).
"The Ninth Circuit itself has not decided whether, and to what extent, Walden overruled prior Ninth Circuit precedent." Adobe Sys., 2015 WL 5834135, at *4. Walden may be factually distinguishable from trademark and copyright cases, such as the action here. Additionally, Adidas is not the only connection between Cougar Sport and this forum, as Cougar Sport has sold merchandise to forum residents. Finally, Cougar Sport did not raise the argument that Walden calls into question the line of Ninth Circuit cases stating that "the `express aiming' requirement is satisfied, and specific jurisdiction exists, `when the defendant is alleged to have engaged in wrongful conduct targeted at a plaintiff whom the defendant knows to be a resident of the forum state.'" Washington Shoe, 704 F.3d at 675 (quoting Dole Food, 303 F.3d at 1111); see also Bancroft, 223 F.3d at 1087. The Court declines to reach the issue sua sponte.
Id. at 594, 316 P.3d 287. Adidas alleges that Cougar Sport engaged in tortious conduct intentionally aimed at Adidas, whom Cougar Sport knew to be a resident of Oregon. Additionally, Cougar Sport sold merchandise directly into this forum. Thus, there is "a basis for an objective determination that the litigation was reasonably foreseeable" to Cougar Sport, and the Robinson standard is met. Id.
