Gibson Brands Inc v. John Hornby Skewes & Co. Ltd et al

Filing 16

ORDER DENYING Defendant John Horby Skewes & Co. Ltd. MOTION TO TRANSFER VENUE 9 by Judge Dean D. Pregerson. (lc).Modified on 5/28/2014 (lc).

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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GIBSON BRANDS, INC., a
Delaware corporation,

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Plaintiff,
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v.
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JOHN HORNBY SKEWES & CO.
LTD.,

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Defendant.
___________________________

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Case No. CV 14-00609 DDP (SSx)
ORDER DENYING MOTION TO TRANSFER
VENUE
[Dkt No. 9]

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Before the court is Defendant John Horby Skewes & Co. Ltd.

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(“JHS”)’s Motion to Transfer. (Dkt. No. 9.) The matter is fully

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briefed and suitable for decision without oral argument. Having

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considered the parties’ submissions, the court adopts the following

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order denying the motion.

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I.

Introduction
Plaintiff Gibson Brands, Inc. (“Gibson”), a developer,

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manufacturer, and seller of musical instruments, is a Delaware

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corporation with a principal place of business in Nashville,

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Tennessee. (Declaration of Bruce Mitchell in Opposition to Motion ¶

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2; Complaint ¶ 2). Defendant JHS, a distributor of musical

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instruments, is a United Kingdom corporation with a principal place

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of business in Leeds, United Kingdom. (Compl. ¶ 4.)

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On January 27, 2014, Gibson filed the instant action before

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this court asserting claims for trademark infringement, unfair

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competition, trademark dilution, and other related causes of action

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under federal, state, and common law. (Dkt. No. 1) The complaint

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asserts that JHS promoted or sold products containing Gibson

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trademarks without authorization, including the sales of infringing

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goods through distributors with stores located in California and

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via internet sales to customers in California. (See Complaint ¶¶ 2,

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5, 20, 24.)

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On April 1, 2014, JHS filed the instant motion seeking an

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order transferring this action to the Middle District of Tennessee.

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(Dkt. No. 9.) In an unusual twist for a motion to transfer, the

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defendant seeks to have the action transferred to the judicial

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district where the plaintiff is based.

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II

Legal Standard
Motions for change of venue based on convenience are governed

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by 28 U.S.C. section 1404(a), which provides that, “[f]or the

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convenience of parties and witnesses, in the interest of justice, a

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district court may transfer any civil action to any other district

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or division where it might have been brought.” Thus, even when

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venue is proper where the action is pending, section 1404(a)

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provides the court with the discretion to transfer an action to a

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different venue under certain circumstances.

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The analysis for transfer is two-fold. First, the defendant

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must establish that the matter “might have been brought” in the

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district to which transfer is sought. 28 U.S.C. § 1404(a). This

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includes demonstrating that subject matter jurisdiction, personal

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jurisdiction, and venue would have been proper if the plaintiff had

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filed the action in the district to which transfer is sought.

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Hoffman v. Blaski, 363 U.S. 335, 343-44 (1960).

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Second, the Court must balance three general factors: (1) the
convenience of the parties; (2) the convenience of the witnesses;

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and (3) the interest of justice. The court construes these factors

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broadly to consider the specific facts appropriate in a given case

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E. & J. Gallo Winery v. F. & P.S.A., 899 F.Supp. 465, 466 (E.D.

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Cal. 1994).

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Substantial weight is generally accorded to the plaintiff's

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choice of forum, and a court should not order a transfer unless the

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“convenience” and “justice” factors set forth above weigh heavily

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in favor of venue elsewhere. Sec. Investor Prot. Corp. v. Vigman,

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764 F.2d 1309, 1317 (9th Cir. 1985). The party seeking the transfer

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bears the burden of persuasion. HollyAnne Corp. v. TFT, Inc., 199

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F.3d 1304, 1307 n. 2 (Fed. Cir. 1999); Commodity Futures Trading

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Comm'n v. Savage, 611 F.2d 270, 279 (9th Cir. 1979).

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III. Discussion

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A.

Venue in the Middle District of Tennessee

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The court concludes that this action “might have been brought”

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in the Middle District of Tennessee because the requirements for

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subject matter jurisdiction, personal jurisdiction, and proper

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venue are met. 28 U.S.C. § 1404(a); Hoffman, 363 U.S. at 343-44.
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First, because the claims are brought under the federal Lanham Act,

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the Middle District of Tennessee, like all district courts, has

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subject matter jurisdiction under 28 U.S.C. § 1331. Second, the

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Middle District of Tennessee could exercise personal jurisdiction

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over Gibson because Gibson’s principal place of business is in

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Nashville, Tennessee. See Daimler AG v. Bauman, 134 S. Ct. 746,

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772, 187 L. Ed. 2d 624 (2014) (“[A] State can exercise general

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jurisdiction where a corporate defendant has its corporate

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headquarters, and hence its principal place of business within the

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State.”) Third, venue is proper in “a judicial district in which a

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substantial part of the events ... giving rise fo the claim

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occurred, or a substantial part of the property that is the subject

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of the action is situated.” 28 U.S.C. 1391(b)(2). It appears

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undisputed that the trademarks at issue are registered to Gibson’s

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principal place of business in Nashville, Tennessee. (See Compl. at

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17-23.)

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As venue would be appropriate in the forum to which the movant

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seeks transfer, the court proceeds to balance the three general

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factors: (1) the convenience of the parties; (2) the convenience of

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the witnesses; and (3) the interest of justice. E. & J. Gallo

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Winery, 899 F.Supp. at 466.

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B.

Convenience of the Parties and Witnesses

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As noted, in determining the convenience of the parties, the

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court generally gives deference to the plaintiff's choice of forum.

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Allstar Mktg. Grp., LLC v. Your Store Online, LLC, 666 F. Supp. 2d

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1109, 1131 (C.D. Cal. 2009) (“Despite the broad discretion afforded

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the district court in determining whether to transfer venue, a

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plaintiff’s choice of venue is generally accorded deference.”);
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Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947) (“It is often

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said that the plaintiff may not, by choice of an inconvenient

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forum, ‘vex,’ ‘harass,’ or ‘oppress' the defendant by inflicting

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upon him expense or trouble not necessary to his own right to

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pursue his remedy. But unless the balance is strongly in favor of

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the defendant, the plaintiff's choice of forum should rarely be

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disturbed”). However, “[t]he plaintiff’s choice is given less

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weight where the plaintiff is a nonresident or the chosen forum

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lacks any significant contact with the activities giving rise to

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the litigation.” Catch Curve, Inc. v. Venalii, Inc., 2006 WL

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4568799, at *2 (C.D. Cal. 2006).

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Here, Gibson chose to file the instant action in this

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district. Although, as discussed below, the forum does have

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contacts with the activities giving rise to the litigation, Gibson

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is not a resident of California. (See Compl. ¶¶ 5, 20, 24.)

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Accordingly, Gibson’s choice of forum is accorded some but not

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strong deference.

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JHS asserts that the Middle District of Tennessee is more

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convenient for it because Nashville is closer to the United Kingdom

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than California. (Reply at 2.) However, the court is not persuaded

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that this is a significant factor supporting transfer. Plaintiff

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has submitted a sampling of flight travel offerings suggesting that

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the travel time and cost of travel do not vary significantly

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between the United Kingdom and this district relative to the Middle

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District of Tennessee. (See Declaration of Bruce Mitchell in

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Support of Opposition ¶ 19 & Ex. K.) Defendant has not pointed to

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any evidence supporting its contention regarding travel time and

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cost or otherwise demonstrating the relative degree of convenience

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for it between the forums.

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JHS also asserts that the Middle District of Tennessee would

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be more convenient to non-party witnesses. It asserts that the law

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firms that handled, or are handling, the Gibson trademark

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applications are located in Nashville, Tennessee, Oklahoma City,

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Oklahoma, and Atlanta, Georgia. (Motion at 6; Declaration of Brent

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M. Davis in Support of Motion ¶ 5.) However, Gibson asserts that

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these firms have no relationship to the present litigation and that

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Gibson’s exclusive intellectual property counsel since 2008, who is

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counsel of record in this case, is based in Los Angeles and does

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not have an office in Tennessee. (Declaration of Bruce Mitchell in

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Support of Opposition ¶ 13.) Because JHS has not specifically

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stated it intends to call attorneys or others from the out-of-state

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firms as witnesses and has not explained the subject matter or

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significance of their testimony, the court places little weight on

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the possibility of such testimony. JHS also asserts that it intends

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to call as an expert witness George Gruhn, who resides in

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Nashville, Tennessee. (See Motion at 3-4; Reply at 3-4.)

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Gibson contends that this district is a more convenient forum

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for it and non-parties whom it expects to call as witnesses. It

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asserts that Gibson has offices in California and anticipates

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calling employee witnesses in California with personal knowledge

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relevant to the suit (although it does not specify the subject

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matter of their testimony). (See Opposition at 14; Declaration of

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Bruce Mitchell in Support of Opposition ¶ 13.) As to non-parties,

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Gibson asserts that many of its major distributors are located

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and/or headquartered in California. (Mitchell Decl. ¶ 14 & Ex. G.)
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In particular, Gibson asserts that it is likely to call employees

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of Guitar Center, which is based in California, as non-party

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witnesses (although it likewise does not specify the subject matter

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of such anticipated testimony). (Id. ¶ 14.)

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On balance, the court finds that the interests of the parties

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and witnesses do not favor transfer. The sole fact asserted by JHS

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to which the court accords any weight is that a single expert

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witness it intends to call resides in Tennessee. This is not a

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sufficient basis to overcome the limited deference owed to Gibson’s

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choice of forum, particularly in light of Gibson’s reasonable

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explanation as to why it finds this district to be more convenient

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to it than its home district.

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C. The Interest of Justice

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In analyzing the “interests of justice,” a number of factors

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are potentially relevant. These include: (1) the location where the

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relevant agreements were negotiated and executed, (2) the state

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that is most familiar with the governing law, (3) the plaintiff's

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choice of forum, (4) the respective parties' contacts with the

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forum, (5) the contacts relating to the plaintiff's cause of action

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in the chosen forum, (6) the differences in the costs of litigation

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in the two forums, (7) the availability of compulsory process to

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compel attendance of unwilling non-party witnesses, (8) the ease of

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access to sources of proof, and (9) judicial economy. See Stewart

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Org. v. Ricoh Corp., 487 U.S. 22, 29–30 (1988); Van Dusen v.

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Barrack, 376 U .S. 612, 616 (1964); Jones v. GNC Franchising, Inc.,

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211 F.3d 495, 498–99 (9th Cir. 2000)

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As explained below, these factors are generally neutral or do
not favor transfer.
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This factor is not relevant as there are no agreements at

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Location of Agreement

issue.

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2.

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This factor is neutral. Federal district courts are equally

State Most Familiar with Governing Law

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capable of applying federal law. See Allstar Mktg. Grp., LLC v.

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Your Store Online, LLC, 666 F. Supp. 2d 1109 (C.D. Cal. 2009) (“As

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plaintiffs’ claims are primarily federal trademark and copyright

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claims..., the factor carries little weight.

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district and the Eastern District of Wisconsin are equally capable

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of applying federal law.”)

Courts in this

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As discussed above, although Gibson’s choice of forum is given

Plaintiff’s Choice of Forum

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less weight because it is a nonresident, it is still entitled to a

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degree of deference. See Catch Curve, Inc. v. Venalii, Inc., 2006

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WL 4568799, at *2 (C.D. Cal. 2006). This factor thus weighs against

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transfer, albeit not strongly.

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4.

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This factor is essentially neutral. Although Gibson’s

Contacts with the Forum

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principal place of business is in Nashville, Tennessee, it appears

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to have strong contacts with California. Gibson is registered with

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the California Secretary of State, has multiple offices in

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California, and appears to conduct significant business in

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California. (See Mitchell Decl. ¶¶ 13-15.) JHS, for its part, is a

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United Kingdom corporation which does not contend that it has

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contacts with either California or Tennessee.

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5.

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This factor weighs modestly against transfer. “In a trademark

Contacts Relating to the Plaintiff's Cause of Action

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infringement action, the actionable wrong takes place both where

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infringing labels are affixed to the goods and where confusion of

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purchasers is likely to occur.” Sutter Home Winery, Inc. v.

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Madrona Vineyards, L.P., 2005 WL 701599, at *4 n. 2 (N.D. Cal. Mar.

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23, 2005) (quotation marks and citation omitted). Here, Gibson

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alleges, and JHS does not contest, that the allegedly infringing

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products are available to and cause confusion among consumers in

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California. Two of the companies listed in the Complaint as

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offering the products at issue are allegedly based in California

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and Gibson asserts that its private investigator purchased

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allegedly infringing guitars from an out-of-state JHS distributor

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and had them shipped to Los Angeles, California. (See Complaint ¶

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5; Mitchell Decl. ¶ 15 7 Ex. I.) As JHS points out, JHS’s potential

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liability for the conduct of any of these vendors has not been

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established and no motions have been filed on the issue. However,

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the allegations are sufficient at this early stage in the

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litigation to establish a relationship between the claims and this

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forum such that this factor weighs modestly against transfer.

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6. The Cost of Litigation

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This factor weighs against transfer. The only argument JHS

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makes in support of its contention that transfer would reduce

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litigation costs is that hearing the case in the Middle District of

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Tennessee would eliminate the cost of travel for one JHS expert

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witness. (See Mot. at 6.) This is not a sufficient basis for

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transfer, particularly as Gibson asserts that it intends to call

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multiple employee witnesses and third party witnesses based in

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California. (Mitchell Decl. ¶¶ 14, 17.)

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7. Unwilling Witnesses

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This factor weighs modestly against transfer. As noted, JHS

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contends that non-party witnesses include firms involved in

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prosecuting and maintaining Gibson's trademarks based in Nashville,

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Tennessee, which is beyond the subpoena power of this court. (Mot.

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at 10.) However, the court places little weight on this contention,

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both because JHS provides no information regarding the anticipated

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subject matter of the testimony or evidence it expects to seek and

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because Gibson has raised questions about whether the firms in

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question in fact have any relationship to the subject matter of

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this litigation. (Mitchell Decl. ¶ 15.) As noted, Gibson asserts

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that it is likely to call as non-party witnesses California Guitar

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Center employees and consumers in California. Based on the

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information before it, the court concludes that to the extent that

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compulsory process is required to compel the attendance of non-

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party witnesses, such power is more likely to be necessary in this

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district than in the Middle District of Tennessee.

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8.

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This factor weighs against transfer. JHS contends that,

Access to Evidence

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because Gibson’s principal place of business is in Nashville, it

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would be easier to access any evidence in Tennessee as compared to

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California. (Mot. at 8.) However, JHS does not provide any

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information about the type and subject matter of the evidence to

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which it refers. To the extent that it refers to documents, various

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courts have observed that “ease of access to documents does not

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weigh heavily in the transfer analysis, given that advances in
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technology have made it easy for documents to be transferred to

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different locations.” Metz v. U.S. Life Ins. Co. in City of New

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York, 674 F. Supp. 2d 1141, 1149 (C.D. Cal. 2009) (quotation marks

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and citation omitted). Gibson asserts that the allegedly infringing

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guitars were purchased in California by Gibson’s California-based

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private investigator, whose employees it anticipates testifying in

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this case. (Mitchell Decl. ¶ 17.) On the information before the

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court, access to evidence does not favor transfer.

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9.

Judicial Economy

Finally, judicial economy weighs strongly against transfer.

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This court previously heard an action between the same parties and

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involving two of the same trademarks at issue in the present case.

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See Gibson Brands Inc. v. Viacom International Inc., John Hornby

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Skewes & Co., LTD, CV 12-cv-10870-DDP (AJW). Both cases involve

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Gibson’s Flying V Body Shape design mark, U.S. Trademark Reg. No.

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2051790 and Flying V Peghead design mark, U.S. Trademark Reg. No.

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3976205. The court’s familiarity with the parties and some of the

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subject matter at issue argues strongly against transfer.

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In sum, balancing the information before it with respect to

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the convenience of the parties, the convenience of the witnesses,

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and the interests of justice, the court finds that JHS has not

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demonstrated that a transfer of venue is warranted.

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IV.

Conclusion
For the reasons stated herein, JHS’s Motion to Transfer Venue

is DENIED.

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IT IS SO ORDERED.

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Dated:May 28, 2014
DEAN D. PREGERSON
United States District Judge

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