PuraPharm International (H.K.) Limited v. PurePharma, Inc. et al

Filing 27

MEMORANDUM AND ORDER Granting 12 Motion to Transfer Venue to Northern District of California, San Francisco Division. (Signed by Judge Ewing Werlein, Jr) Parties notified. (marflores, 4)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
PURAPHARM INTERNATIONAL (H.K.)
LIMITED,
Plaintiff,
v.
PUREPHARMA, INC. and
PUREPHARMA APS,
Defendants.

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CIVIL ACTION NO. H-14-3181

MEMORANDUM AND ORDER
Pending is Defendants’ Motion to Transfer Venue (Document
No. 12).

After carefully considering the motion, response, reply,

and applicable law, the Court concludes as follows.
I. Background
Plaintiff PuraPharm International (H.K.) Limited (“Plaintiff”)
is a Hong Kong limited liability company that produces health,
nutritional and pharmaceutical products, which it sells under the
federally registered trademark “PURAPHARM.”1

Plaintiff alleges

that since 2001 it has continuously used the PURAPHARM mark in
commerce in the United States, including in Texas, in connection
with

the

1

sale

of

food

supplements,

Document No. 7 (1st Am. Compl.).

dietary

and

nutritional

supplements,

pharmaceutical

products,

and

medicines.2

Chinese

Defendant PurePharma APS is a Danish limited liability company
which

allegedly

nutritional

began

marketing

supplements,

food

and

distributing

supplements,

and

dietary

and

pharmaceutical

products under the mark PUREPHARMA in 2009.3 Defendant PurePharma,
Inc. (together with PurePharma APS, “Defendants”), a corporation
incorporated

in

Delaware

and

headquartered

in

Mill

Valley,

California, is a wholly-owned subsidiary of PurePharma APS, which
“is

in

charge

of

the

advertising,

sale,

production,

and

distribution of products in the United States under the PUREPHARMA
mark.”4
On October 30, 2012, PurePharma APS filed an application to
federally register the mark PUREPHARMA, which Plaintiff opposed.5
Plaintiff

then

filed

this

suit,

alleging

federal

trademark

infringement and false designation of origin under the Lanham Act,
15 U.S.C. §§ 1114(1) and 1125(a).6

Defendants move to transfer

venue to the San Francisco Division of the Northern District of
California, pursuant to 28 U.S.C. § 1404(a).7

2

Id. ¶ 9.

3

Id. ¶¶ 15, 17.

4

Document No. 12 at 2-3.

5

Document No. 7 ¶¶ 18, 21.

6

Id. ¶¶ 34-42.

7

Document No. 12.
2

II. Legal Standard
“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 or to
any district or division to which all parties have consented.”
28 U.S.C. § 1404(a). The purpose of section 1404(a) is “to protect
litigants,

witnesses,

and

the

public

against

unnecessary

inconvenience and expense, and to avoid wasted time, energy, and
money.”

Spiegelberg v. Collegiate Licensing Co., 402 F. Supp. 2d

786, 789 (S.D. Tex. 2005) (citing Van Dusen v. Barrack, 84 S. Ct.
805, 809 (1964)).

The transfer of an action under section 1404 is

committed to the sound discretion of the district court.

Jarvis

Christian Coll. v. Exxon Corp., 845 F.2d 523, 528 (5th Cir. 1988).
Under section 1404(a), the movant bears the burden of showing
“good cause” to transfer venue.

In re Volkswagen of Am., Inc.

(“Volkswagen II”), 545 F.3d 304, 315 (5th Cir. 2008), cert. denied,
129 S. Ct. 1336 (2009).8

“This ‘good cause’ burden reflects the

8

Plaintiff refers to Defendants’ burden as “heavy” and
“significant,” Document No. 18 at 2, but mistakenly relies on a
standard in Volkswagen II
which the Fifth Circuit was
distinguishing. See 545 F.3d at 314 (“[T]he burden that a moving
party must meet to justify a venue transfer is less demanding than
that a moving party must meet to warrant a forum non conveniens
dismissal. And we have recognized as much, noting that the ‘heavy
burden traditionally imposed upon defendants by the forum non
conveniens doctrine--dismissal permitted only in favor of a
substantially more convenient alternative--was dropped in the
§ 1404(a) context. In order to obtain a new federal [venue], the
statute requires only that the transfer be ‘[f]or the convenience
3

appropriate deference to which the plaintiff’s choice of venue is
entitled.”

Id.

“When the movant demonstrates that the transferee

venue is clearly more convenient . . . it has shown good cause and
the district court should therefore grant the transfer.” Id.
However, “when the transferee venue is not clearly more convenient
than the venue chosen by the plaintiff, the plaintiff’s choice
should be respected.”

Id.

A court should not transfer a case “if

the only practical effect is to shift inconvenience from the moving
party to the nonmoving party.”

Goodman Co., L.P. v. A & H Supply,

Inc., 396 F. Supp. 2d 766, 776 (S.D. Tex. 2005) (quotation marks
and

citation

omitted).

“[W]here,

as

is

the

case

here,

the

plaintiff is not from the forum it has chosen, the plaintiff’s
choice is given less deference.”

Molina v. Vilsack, No. CIV. A.

V-09-40, 2009 WL 5214098, at *2 (S.D. Tex. Dec. 23, 2009).
The threshold issue under section 1404(a) is whether the
plaintiff’s claim could have been filed in the judicial district to
which transfer is sought.

In re Volkswagen AG (“Volkswagen I”),

371 F.3d 201, 203 (5th Cir. 2004).

If so, the court then considers

a number of private interest and public interest factors to
determine whether transfer is for the convenience of the parties
Volkswagen II, 545 F.3d at 315.

and in the interest of justice.
The private interest factors are:

(1) the relative ease of access

of the parties, in the interest of justice.’’”) (quoting VebaChemie A.G. v. M/V Getafix, 711 F.2d 1243, 1247 (5th Cir. 1983)).
4

to sources of proof; (2) the availability of compulsory process to
secure the attendance of witnesses; (3) the cost of attendance for
willing witnesses; and (4) all other practical problems that make
trial of a case easy, expeditious and inexpensive. Id.
interest factors are:

The public

(1) the administrative difficulties flowing

from court congestion; (2) the local interest in having localized
interests decided at home; (3) the familiarity of the forum with
the law that will govern the case; and (4) the avoidance of
unnecessary problems of conflict of laws or in the application of
foreign law. Id. Although these factors “are appropriate for most
transfer cases, they are not necessarily exhaustive or exclusive.”
Id.
III. Analysis
It is undisputed that Plaintiff could have filed suit in the
Northern

District

of

California,

where

PurePharma,

Inc.

is

headquartered and where Defendants make all of their United States
production, marketing, and sales decisions.

Defendants argue that

the relevant key witnesses and documents are all located in
California, and that there is no reason to try this case in
Houston, where neither Plaintiff nor its distributors are located9

9

Plaintiff alleges that it distributes its products in the
United States through partnerships with Uncle Bill USA Trading,
Inc. and Tronex Herbal Solutions, which are located in New York and
New Jersey, respectively. See Document No. 7 ¶ 10; Document No. 13
at 11 of 75 to 15 of 75.
5

and where none of Defendants’ decisions relating to trademark
useage are made.10

Plaintiff argues that “many of the operative

events giving rise to this lawsuit occurred in this District,”11 and
identifies five Houston businesses that sell Defendants’ products,
but provides no explanation for why sales by Houston businesses
differ in any respect from sales by businesses elsewhere, including
California, which is Defendants’ largest market.

After all, it is

undisputed that both Defendants and Plaintiff sell their products
globally and nationwide.
A.

Private Factors
Defendants

produce

evidence

that

“[t]he

majority

of

Defendants’ United States corporate employees, including those
primarily responsible for the production, advertising, and sale of
PUREPHARMA branded products in the United States, are located in
[their] headquarters office in Mill Valley, California,” and that
“the

majority

of

the

documents

relevant

to

[advertising,

production, and sale of products under the PUREPHARMA mark] are
located in Mill Valley.”12
791-92

(“Courts

have

See Spiegelberg, 402 F. Supp. 2d at

observed

that

‘[i]ntellectual

property

infringement suits often focus on the activities of the alleged

10

Document No. 12.

11

Document No. 18 at 7.

12

Document No. 13 at 5 of 75 to 6 of 75.
6

infringer, its employees, and its documents; therefore the location
of the alleged infringer’s principal place of business is often the
critical and controlling consideration’ in adjudicating transfer of
venue motions.”) (quoting Houston Trial Reports, Inc. v. LRP
Publ’ns, Inc., 85 F.Supp.2d 663, 668 (S.D. Tex. 1999)).
Without naming even one individual as a witness and outlining
that witness’s probable testimony and importance to Plaintiff’s
case,

Plaintiff

business

names,

identifies
which

have

five

Houston

sold

businesses

Defendants’

by

their

products,

and

characterizes those businesses as “material, non-party witnesses,”
from which Plaintiff asserts that it “intends to seek documents
. . . including documents showing sales of PurePharma.”13

Of

course, to obtain document production, the case need not be in this
venue.

Moreover, Defendants freely admit that they offer products

bearing the PurePharma mark “around the world and throughout the
United

States,

including

in

Texas,”14

and

Plaintiff

does

not

identify any documentary or other evidence in Texas related to
infringement that would not be equally available in California or
anywhere else in the nation where Defendants sell their products.15

13

Document No. 19 at 7 of 58 to 8 of 58.

14

Document No. 13 at 4 of 75.

15

Plaintiff points to a single instance in which Paper Street
Crossfit in Houston mistakenly identified Defendants’ brand as
“PuraPharma” instead of “PurePharma,” in an online advertisement.
See Document No. 24 at 4 of 8. However, this substitution of an
“a” for the “e” in “PureForma” may be merely a typo and not--as
7

Furthermore,

Defendants

present

uncontroverted

evidence

that

“PurePharma does not do any marketing or sales promotions in the
Southern District of Texas differently than in all other areas of
the U.S. where [Defendants] market [their] products” and that
California is “by far [Defendants’] biggest and most important
market.”16 Accordingly, the relative ease of access to proof favors
transfer to California.
Defendants

identify

three

key

employees--Lars

Jensen

(President North America of PurePharma, Inc.), Oliver Amdrup (Chief
Executive Officer of both Defendants), and Holly Willis (Digital
Marketing

Manager

for

PurePharma,

Inc.)--who

have

knowledge

regarding the use of Defendants’ mark in commerce, and their
advertising, sales, profits, and customers in the United States.17
Although Plaintiff identifies a single employee of Defendants, Lore
Layton, who works as a sales manager in Houston and whom Plaintiff
intends to call as a witness, Defendants produce uncontroverted
evidence that Layton “is not involved in the design and creation of
PurePharma’s advertising and promotional materials displaying the
PUREPHARMA mark,” and that all such materials used in the United

Plaintiff represents--an instance of actual confusion with
Plaintiff’s mark, which is “PuraPharm,” with no “a” at the end of
that mark. Furthermore, the similarity of the parties’ marks and
the resulting alleged likelihood of confusion is unrelated to their
particular use in Texas.
16

Document No. 23 at 4 of 21 to 5 of 21.

17

Document No. 12 at 6.
8

States are developed in the California headquarters.18

As noted

above, Plaintiff identifies five Houston businesses as potential
“witnesses,” but--except arguably for one website advertisement
mentioned above substituting an “a” for the “e” in “PurePharma,”-makes no representation of any information relating to Defendants’
alleged

infringement

that

is

uniquely

available

to

those

businesses.
Although

the

transfer

analysis

is

more

concerned

with

convenience to party witnesses than to non-party witnesses, “a
court

must

concentrate

primarily

convenience of key witnesses.”

upon

the

availability

and

Remmers v. United States, No. CIV.

A. 1:09-CV-345, 2009 WL 3617597, at *5 (E.D. Tex. Oct. 28, 2009)
(collecting cases).

“In determining whether a particular venue is

more convenient to witnesses, the court should inquire into the
nature and quality of the witnesses’ potential testimony with
regard to the issues in dispute rather than limit its investigation
to a review of which party can produce the longer witness list.”
Id.; see also Houston Trial Reports, Inc. v. LRP Publications,
Inc., 85 F. Supp. 2d 663, 668 (S.D. Tex. 1999) (“The convenience of
one key witness may outweigh the convenience of numerous less
important witnesses.”) (citation omitted).

The only individuals

who have been identified as key witnesses all reside in the
Northern District of California.

18

Document No. 23 at 4 of 21.
9

Moreover, Plaintiff has not

identified

any

relevant

information

or

anticipated

testimony

expected from any Texas witness that could not also be elicited
from similar witnesses who reside in California.

Furthermore,

Plaintiff’s headquarters are in Hong Kong, and PurePharma APS is
headquartered in Denmark, and Defendants produce evidence that
nonstop flights are available to San Francisco but not to Houston
from both Hong Kong and Copenhagen.19

Accordingly, on balance the

private factors relating to witnesses and other practical problems
weigh decidedly in favor of transfer.20
B.

Public Factors
Because this case involves federal trademark law, the public

factors involving the court’s familiarity with the governing law
and the avoidance of unnecessary conflicts are neutral. As for the
court

congestion

factor,

judges

in

the

Northern

District

of

California had an average of 502 cases filed in 2014, compared to
767 cases in the Southern District of Texas, but the Northern
District of California had a higher percentage of civil cases and
a longer median time from filing to trial, so on balance this

19

Document No. 13 at 8 of 75 to 9 of 75

20

Plaintiff argues that the availability of compulsory process
is a neutral factor, and the Court agrees. Defendants have not
identified any key witnesses not within the employ of Defendants.
10

factor

is

neutral.21

Finally,

the

local

interest

localized interests decided at home favors transfer.

in

having

Defendants’

business in the United States is headquartered in California, and
all of Defendants’ decisions relevant to this lawsuit emanate from
there.

Plaintiff argues that Texas has a strong local interest in

the case because “Defendants have marketed and sold their products
in multiple locations in Texas” and have a territorial sales
manager in Houston.22

However, as Plaintiff acknowledges, “[t]his

case arises out of Defendants’ adoption and use of an infringing
trademark in the Southern District of Texas and throughout the
United States.”23

Texas has not been shown to have any greater

localized interest in this trademark dispute than any other state
where

Defendants

uncontroverted

sell

evidence

their
is

products

that

and,

in

California,

not

fact,
Texas,

the
is

Defendants’ biggest market.
C.

Conclusion
After careful consideration of the private and public interest

factors, the Court finds that Defendants have established that for
the convenience of the parties and witnesses, in the interest of

21

Document No. 13 at 49 of 75 to 50 of 75.

22

Document No. 18 at 15.

23

Id. at 14 (emphasis added).
11

justice this cause should be transferred to the Northern District
of California.

IV. Order
For the foregoing reasons, it is
ORDERED that Defendants’ Motion to Transfer Venue (Document
No. 12) is GRANTED and this case is TRANSFERRED to the United
States District Court for the Northern District of California, San
Francisco Division.
The Clerk will mail a copy of this Order of Transfer to the
Clerk of the United States District Court for the Northern District
of California, San Francisco Division, and shall notify all parties
and provide them with a true copy of this Order.
The Clerk will enter this Order and provide a correct copy to
all parties.
SIGNED at Houston, Texas, on this 20th day of April, 2015.

____________________________________
EWING WERLEIN, JR.
UNITED STATES DISTRICT JUDGE

12