Friends of Scotland, Inc. v. Carroll

Filing 48

ORDER GRANTING MOTION TO TRANSFER AND VACATING HEARING by Judge William Alsup [granting 23 Motion to Transfer Case]. (whasec, COURT STAFF) (Filed on 3/22/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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For the Northern District of California

United States District Court

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FRIENDS OF SCOTLAND,
INCORPORATED,
No. C 12-01255 WHA
Plaintiff,

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v.
ORDER GRANTING MOTION
TO TRANSFER AND
VACATING HEARING

GEOFFREY SCOTT CARROLL,
Defendant.
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INTRODUCTION
In this trademark action, defendant moves to transfer venue pursuant to 28 U.S.C. 1404.
For the reasons stated below, the motion to transfer is GRANTED.

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STATEMENT

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Plaintiff Friends of Scotland is a Californian corporation with its principal place of

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business in Saratoga, California (Compl. ¶ 3). Since its incorporation, Friends of Scotland

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“has been engaged in charitable work promoting a contemporary view of modern Scotland by

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showcasing Scottish cultural, educational, historical, and genealogical connections between the

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United States and Scotland” (id. at ¶ 9). This involved holding a fashion show called “Dressed

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to Kilt” (ibid.) (internal quotation marks omitted). Plaintiff alleged that it is the registered owner

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of the “Dressed to Kilt” mark and that it has used it in commerce associated with various fashion

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shows since the first Dressed to Kilt show on April 2003 (id. at ¶¶ 10–11, 18).

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Defendant Geoffrey Scott Carroll is a Scottish citizen and resident of New York (Mtn.,

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Carroll Decl. ¶ 1). According to defendant, he met with friends in 2002 to discuss organizing

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events that would “promote a more contemporary vision of Scotland . . . showcase and highlight

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Scottish talent, raise funds for philanthropic initiatives in the United States and Scotland, and

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help create the impression that ‘made in Scotland’ is a benchmark of the highest quality” (id.

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at ¶ 2). One of these events, a charity fashion show featuring Scottish fashion, design, and

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celebrities, would be called “Dressed to Kilt” (id. at ¶ 3) (internal quotation marks omitted).

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Plaintiff alleged it hired defendant to produce the first Dressed to Kilt fashion show

produced the first show themselves, and that defendant’s business relationship with plaintiff did

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For the Northern District of California

on April 2003 (Compl. ¶ 18); defendant, however, seems to claim that he and his show partner

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United States District Court

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not begin until after the first show (Mtn., Carroll Decl. ¶¶ 7–8). Both sides agree that Mr.

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Carroll produced at least nine additional Dressed to Kilt shows (Mtn., Carroll Decl. ¶ 9; Compl.

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¶ 18). Both sides also seem to agree that at some point before defendant began producing a

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different Scottish-themed fashion show, the business relationship between plaintiff and

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defendant terminated (Mtn., Carroll Decl. ¶ 11; Compl. ¶¶ 19–20). Plaintiff’s claims revolve

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around defendant’s alleged trademark violations from the continued use of the “Dressed to Kilt”

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trademark after the termination of the business relationship (Compl. ¶¶ 20–24). Defendant

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alleged related counterclaims. Defendant counterclaimed that he is the original creator of the

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“Dressed to Kilt” trademark and that plaintiff fraudulently applied for its trademark with the

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USPTO with full knowledge the mark belonged to defendant (Answer Br., Dkt. No. 13, at 8–14).

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Defendant now moves to transfer this action to the Southern District of New York.

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ANALYSIS
Defendant argues that pursuant to 28 U.S.C. 1404(a), this action should be transferred to

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the Southern District of New York because the Northern District of California is an improper

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venue. For the reasons below, this order agrees.
LEGAL STANDARD.

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1.

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28 U.S.C. 1404(a) states that “[f]or the convenience of parties and witnesses, in the

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interest of justice, a district court may transfer any civil action to any other district or division
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where it might have been brought . . . .” Our circuit has identified several factors a court may

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consider when determining whether a Section 1404 change of venue should be granted:

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(1) the location where the relevant agreements were negotiated and
executed, (2) the state that is most familiar with the governing law,
(3) the plaintiff’s choice of forum, (4) the respective parties’
contacts with the forum, (5) the contacts relating to the plaintiff’s
cause of action in the chosen forum, (6) the differences in the costs
of litigation in the two forums, (7) the availability of compulsory
process to compel attendance of unwilling non-party witnesses,
and (8) the ease of access to sources of proof.

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Jones v. GNC Franchising, Inc., 211 F.3d 495, 498–99 (9th Cir. 2000) (citations omitted).
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The district judge has discretion to conduct “individualized, case-by-case consideration of
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convenience and fairness” when weighing the various factors. See Van Dusen v. Barrack,
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For the Northern District of California

United States District Court

376 U.S. 612, 622 (1964). This order will now consider each Jones factor.
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CONVENIENCE AND FAIRNESS DICTATE
THAT THE ACTION BE TRANSFERRED.

Given the unique circumstances present here, and after weighing the Jones factors, this

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order finds that convenience and fairness dictate that the instant action be transferred to the

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Southern District of New York.

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First, most, if not all, of the events in controversy occurred outside this district.

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Defendant was in New York when he corresponded with plaintiff to set up their now terminated

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business relationship (Mtn., Carroll Decl. ¶ 8). Plaintiff does not dispute this. Its president,

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however, negotiated from California, though plaintiff does not specify where (Opp., Dkt. No. 24,

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Baron Decl. ¶¶ 3, 6). Of the nine Dressed to Kilt shows after its April 2003 inaugural in New

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York, only two were not in New York (Opp., Dkt. No. 24, Baron Decl. ¶ 13). Those two shows

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were held outside this district, in Los Angeles (ibid.). Therefore, this factor favors the defendant.

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Second, this action involves a federal question, and neither forum is more familiar than
the other with the governing law. Therefore, this factor favors neither party.
Third, deference should be given to plaintiff’s choice of its home forum, Jones, 211 F.3d

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at 498–99, and the burden placed on defendant to justify the transfer. See Commodity Futures

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Trading Comm’n v. Savage, 611 F.2d 270, 279 (9th Cir. 1979). This order recognizes that there

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is no indication that plaintiff went “forum shopping” by filing the instant action in its home
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forum. This factor favors plaintiff, but for reasons this order will continue to discuss, a transfer

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will ultimately result in a forum more convenient for all parties involved and better serve the

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interests of justice.

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Fourth, only plaintiff has any substantive connection with this forum. Plaintiff’s

¶ 2–4). Defendant is a resident of New York (Mtn., Carroll Decl. ¶ 1). While defendant is the

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Chairman of the Advisory Board of FCI, a consulting firm based in Half Moon Bay, California,

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all transactions with that firm are conducted telephonically; defendant has never visited

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California for FCI business (Reply, Dkt. No. 27, Nelson Decl. ¶¶ 1–4). Contrary to plaintiff’s

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assertion, this does not establish that defendant has “an active presence in California” (Opp.,

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For the Northern District of California

principal place of business and president resides in Saratoga, California (Opp, Baron Decl.

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United States District Court

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Dkt. No. 24, at 5). Therefore, this factor favors the defendant.

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Fifth, the contacts relating to plaintiff’s claims in this forum are minimal.

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Defendant’s alleged infringing conduct all take place outside this district or on the Internet

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(Compl. ¶¶ 18–25). Therefore, this factor favors the defendant.

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The sixth, seventh, and eighth Jones factors are related. Defendant asserts documents

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related to the claims are in New York or in Scotland (Mtn., Dkt. No. 23, at 9), but the

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undersigned judge has previously acknowledged that “[w]ith technological advances in

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document storage and retrieval, transporting documents does not generally create a burden.”

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Corley v. Kinder Morgan, Inc., No. 12-03209, 2012 WL 5077128, at *1 (N.D. Cal. Oct. 18,

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2012).

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As for witnesses, plaintiff’s initial disclosure listed one potential witness in this district

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(plaintiff’s president) (Mtn., Defendant’s Exh. D). Defendant’s initial disclosure listed 29

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potential witnesses: fourteen in New York; six in Scotland or England; the location of three are

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unlisted; two in New Jersey; one in Canada; one in Los Angeles; one in Boston; and one in

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Portland, Oregon (Mtn., Defendant’s Exh. E). One of the three whose location was not listed is

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Mr. Baron, plaintiff’s president. This means at least two, but at most three, of all the potential

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witnesses listed in the initial disclosures reside in California and can be compelled to provide

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live testimony within this district. But numbers alone do not confer advantage to defendant;
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the undersigned judge previously acknowledged that moving parties must describe the testimony

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of these potential witnesses and its relevance. Symantec Corp. v. Johns Creek Software, Inc.,

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No. 11-03146, 2011 WL 4026873, at *7 (N.D. Cal. Sept. 12, 2011) (citation omitted).

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Defendant does so here. In his initial disclosure, he states:

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The [29] individuals . . . possess knowledge related to . . . the
Dressed to Kilt shows, the production of the Dressed to Kilt Shows,
Friends of Scotland’s use of their name for Dressed to Kilt Shows,
the parties’ working relationship regarding the Dressed to Kilt
Shows, the creation of the Dressed to Kilt marks, and sponsorship
of the Dressed to Kilt [S]hows.”

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Mtn., Defendant’s Exh. E). Therefore, this factor weighs in defendant’s favor.
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Defendant’s medical condition also favors transfer of venue. Plaintiff would require a
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cannot cite to any controlling authority that requires this order to do so. The authorities plaintiff
For the Northern District of California

United States District Court

heavy burden to be placed on defendant to prove his limitations (Opp., Dkt. No. 24, 6), but it
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does cite can be further distinguished because here, defendant provided a sworn and signed
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declaration from his physician that he is to “not travel by air or automobile for any extended
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period of time or over long distances due to his medical condition”(Reply, Dkt. No. 27, Getsos
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Decl. ¶ 5) (emphasis removed), and defendant’s medical condition is not the primary
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justification this order relies on.
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Plaintiff, however, raises a valid point in that defendant appended his doctor’s declaration
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in his reply and not in his original motion. The undersigned judge disfavors such surprises.
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But following plaintiff’s objection to the declaration, an order issued to allow both parties to
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further explore defendant’s medical condition and limitations (Dkt. Nos. 33–35). This order
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finds the subsequent depositions only highlighted the need to be sensitive of defendant’s medical
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condition. Defendant’s doctor, under oath, recommended that defendant not travel to California
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“because of the extent and length of travel that would put him at potential risk for developing
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another clot and potentially another pulmonary embolism” (Getsos Dep. 31:13–17). It is
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unreasonable — as plaintiff suggests — to require defendant “[b]reak up his travel into shorter
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flights of one-and-a-half hours,” “[f]ly in first or business class so that he may stretch,”
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or “[w]ear graduated compression stockings designed to increase circulation.”
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(Plaintiff Supplemental Br., Dkt. No. 45, at 1).
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This order agrees with plaintiff that defendant should have filed this motion earlier,

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preferably with the first responsive pleading. But given the facts at hand, and the balance of

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factors to the extent above, the instant action should be transferred. The motion to transfer venue

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is GRANTED.

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CONCLUSION
This action represents one of the rare instances in which a plaintiff’s choice of venue

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must be disturbed. Given the circumstances and for the reasons stated above, defendant’s

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motion to transfer venue pursuant to 28 U.S.C. 1404 is GRANTED. The hearing on March 28,

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2013 is VACATED. The clerk shall transfer this action to the United States District Court for the
Southern District of New York.

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For the Northern District of California

United States District Court

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IT IS SO ORDERED.

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Dated: March 21, 2013.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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