DARRIN P. GAYLES, District Judge.
Plaintiff Oribe Hair Care, LLC ("OHC"), is a New York limited liability company that designs and distributes haircare and beauty products throughout the United States under the federally registered ORIBE trademark. [ECF No. 1 at 1]. Defendant Oribe Canales is a celebrity hairstylist who cofounded OHC in 2007 [Id. at 3], and Defendant Orizak, LLC, is a limited liability company that operates the Oribe Salon in Miami Beach, Florida under the direction and supervision of Canales. [Id. at 1]. From 2007 to 2012, Canales and OHC entered into four agreements governing, inter alia, the parties' ownership interests and the extent to which the parties are permitted to utilize Canales's name, image, and likeness.
On or about January 6, 2017, Canales posted an image on Instagram. [Id. at 7]. The image depicted a caricature of Canales crucified on a cross, holding shears and a blow dryer, and surrounded by women. [Id. at 7-9]. His first name, "ORIBE," and the words "KINDA GENIUS" appeared at the bottom of the image. [Id.]. On January 12, 2017, OHC filed an Emergency Motion for Temporary Restraining Order and Preliminary Injunction, arguing, inter alia, that Canales's Instagram image harmed OHC's trademarks and reputation. [ECF No. 6]. The Court granted OHC's Emergency Motion [ECF No. 11]. At a hearing on January 23, 2017, Defendants argued that this Court is not the appropriate forum for this action and agreed to refrain from using the image at issue while they filed their motion to transfer venue. [ECF No. 33]. Accordingly, the Court found good cause to extend the Temporary Restraining Order so that the Court could rule on the motion. [Id.].
On February 24, 2017, Defendants filed the instant Motion to Transfer, asserting that this action should be transferred to the U.S. District Court for the Southern District of New York pursuant to 28 U.S.C. § 1404(a) because four separate agreements contain valid and mandatory forum-selection clauses requiring that any controversy, claim, or matter "arising out of" or relating to the agreements be filed in the courts of New York. [ECF No. 49 at 6].
Specifically, the Contribution Agreement (and the Master Assignment and License Agreement, which incorporates the Contribution Agreement [ECF No. 30-2 ¶ 5]) contains the following forum-selection clause:
[ECF No. 30-1 § 9.06]. The Canales License Agreement
[ECF No. 30-4 § 9.10]. And the Settlement Agreement and Release contains the following forum-selection clause:
[ECF No. 21 ¶ 20(d)].
OHC does not dispute that the forum-selection clauses are valid; rather, it argues that the forum-selection clauses do not apply because the claims in the Complaint do not fall within the scope of the four agreements. [ECF No. 57 at 3].
The statute governing venue transfer, 28 U.S.C. § 1404(a), provides, in relevant part, that, "[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 . . . where it might have been brought." In the absence of a valid forum-selection clause, courts must consider various public and private interest factors to determine whether transfer under § 1404(a) is appropriate. "The calculus changes, however, when the parties' contract contains a valid forum-selection clause, which `represents the parties' agreement as to the most proper forum.'" Atl. Marine Const. Co. v. U.S. Dist. Ct. for W. Dist. of Tex., 134 S.Ct. 568, 581 (2013) (quoting Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 31 (1988)). When there is a valid forum-selection clause, the court's analysis changes in three ways: (1) "the plaintiff's choice of forum merits no weight"; (2) the court "should not consider arguments about the parties' private interests"; and (3) the choice-of-law rules of the original venue are not transferred to the new venue—"a factor that in some circumstances may affect public-interest considerations." Id. at 581-82. "As a consequence, a district court may consider arguments about public-interest factors only. Because those factors rarely defeat a transfer motion, the practical result is that forum-selection clauses should control except in unusual cases." Id. at 582 (citations omitted).
The resolution of this motion, therefore, involves two steps. First, the Court must determine whether the forum-selection clauses at issue are valid. See id. at 581 n.5. If the forum-selection clauses are valid, the Court must then apply the modified analysis from Atlantic Marine outlined above.
The parties do not dispute the validity of the forum-selection clauses; rather, they dispute the applicability of the clauses to the claims in the Complaint. Specifically, OHC argues that Defendants' transfer argument is focused on the Complaint's trademark infringement claims and that it fails to take thirteen
To determine whether a claim or relationship falls within the scope of a forum-selection clause, the Court must look to the language of the clause. See Bah. Sales Assoc., LLC v. Byers, 701 F.3d 1335, 1340 (11th Cir. 2012); Slater v. Energy Servs. Grp. Int'l, Inc., 634 F.3d 1326, 1330 (11th Cir. 2011) (holding that "the plain meaning of a contract's language governs its interpretation" in the context of interpreting a forum-selection clause). Here, all of the forum-selection clauses at issue require the parties to submit to the jurisdiction of New York courts for any actions "arising out of" the agreements "or relating to" [ECF No. 30-1 § 9.06, ECF No. 30-2 ¶ 5], "in connection with" [ECF No. 30-4 § 9.10], "or based upon" [ECF No. 21 ¶ 20(d)] the agreements. The Eleventh Circuit has held that "arising under or in connection with" language in a forum-selection clause should be interpreted to "include[ ] all causes of action arising directly or indirectly from the business relationship evidenced by the contract," Stewart Org., Inc. v. Ricoh Corp., 810 F.2d 1066, 1070 (11th Cir. 1987) (en banc), aff'd, 487 U.S. 22 (1988), including tort claims. See Stiles v. Bankers Healthcare Grp., Inc., 637 F. App'x 556, 560 (11th Cir. 2016) (per curiam).
OHC offers a narrow interpretation of the agreements as governing equity stakes, ownership interests, and asset transfers rather than its defamation, deceptive trade practices, and trademark infringement claims here. OHC argues that "[t]he forum-selection clauses do not apply to the `subject matter of' those Agreements, but rather are limited to claims arising out of or related to the Agreement or the breach or alleged breach thereof." [ECF No. 57 at 9]. In essence, OHC argues that the forum-selection clauses would apply in a breach of contract claim, but because it did not bring such a claim here, the forum-selection clauses are inapplicable. OHC's arguments are unconvincing.
OHC's decision to assert a variety of claims in its Complaint—while conveniently excluding a breach of contract claim—does not preclude the applicability or enforceability of the agreements' forum-selection clauses. The Court "cannot accept the invitation to reward attempts to evade enforcement of forum selection agreements through `artful pleading of [tort] claims' in the context of a contract dispute." Food Marketing Consultants, Inc. v. Sesame Workshop, No. 09-61776, 2010 WL 1571206, at *13 (S.D. Fla. Mar. 26, 2010) (quoting Lambert v. Kysar, 983 F.2d 1110, 1121 (1st Cir. 1993)), report and recommendation adopted, 2010 WL 1571210 (S.D. Fla. Apr. 20, 2010). Indeed, "it is inappropriate . . . to depend solely on the legal labels used by the plaintiff to decide if his case arises out of the contract" when determining whether a forum-selection clause governs its claims. "Instead, when ascertaining the applicability of a contractual provision to particular claims, [the Court must] examine the substance of those claims, shorn of their labels." Phillips v. Audio Active Ltd., 494 F.3d 378, 388 (2d Cir. 2007).
Regardless of how OHC would like to characterize its Complaint, the crux of this action is the extent to which Canales is permitted to use his own name, image, and likeness in light of the agreements. All four agreements
Although a valid forum-selection clause almost always governs, the Court must still engage in the modified forum non conveniens analysis. Post-Atlantic Marine, the Eleventh Circuit has ruled that "[a] binding forum-selection clause requires the court to find that the forum non conveniens
Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981).
None of these factors operate to defeat Defendants' Motion. While the Court makes no finding as to whether New York law (as provided in all four agreements) or Florida law applies, the judges in the Southern District of New York are eminently qualified to apply either in presiding over this case. See, e.g., Food Marketing Consultants, Inc., 2010 WL 1571206, at *10 ("While this Court is capable of construing New York law, federal courts in New York engage in that exercise with far greater frequency and, thus, can fairly be expected to have developed some expertise in that area."). The Court cannot predict whether unnecessary problems with conflicts of law will arise (particularly between Florida law and New York law), but it can see no potential conflicts that the Southern District of New York would have to resolve that this Court would not also have to resolve, so this factor similarly does not weigh against transfer.
Regarding the value of having local controversies litigated locally, the Court finds that there would be value in having a New York court adjudicate a controversy brought by a New York limited liability company. The administrative difficulties flowing from court congestion weigh in favor of transfer, given that "the Southern District of Florida has one of the busiest dockets in the country." Beaman v. Maco Caribe, Inc., 790 F.Supp.2d 1371, 1379 (S.D. Fla. 2011). That said, "this factor generally does not warrant significant consideration in the forum non conveniens analysis, and the Court does not accord it much weight." Id. at 1379-80. And finally, the Court does not see any potential unfairness in burdening citizens in New York with jury duty; quite the contrary, New York citizens likely have a compelling interest in adjudicating activities that affect companies headquartered within the state's borders. In sum, there is no indication that this is one of the "unusual cases" in which the public factors outweigh a valid forum-selection clause. Atl. Marine, 134 S. Ct. at 582.
Accordingly, because the parties' contractual forum-selection clauses are valid, broad in scope, and govern all claims asserted by OHC here, the Court concludes that the Defendants are entitled to a transfer of this action.
Based on the foregoing, it is
This action is