Seal Shield, LLC v. Otter Products, LLC et al
Filing
57
ORDER denying as moot 13 motion to dismiss; granting 14 Motion to transfer case. Signed by Judge Roy B. Dalton, Jr. on 11/13/2013. (VMF) [Transferred from Florida Middle on 11/14/2013.]
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
SEAL SHIELD, LLC,
Plaintiff,
v.
Case No. 6:13-cv-967-Orl-37DAB
OTTER PRODUCTS, LLC; and
TREEFROG DEVELOPMENTS, INC.,
Defendants.
ORDER
This cause is before the Court on the following:
1.
Defendants’ Motion to Transfer Venue to the Southern District of California
(Doc. 14), filed July 24, 2013;
2.
Plaintiff’s Response in Opposition to Defendants’ Motion to Transfer
Venue
to
the
Southern
District
of
California
and
Incorporated
Memorandum of Law (Doc. 37), filed August 22, 2013;
3.
Defendants’ Amended Reply in Response to Plaintiff’s Opposition to
Defendants’ Motion to Transfer Venue to the Southern District of California
(Doc. 56), filed October 25, 2013;
4.
Defendants’ Motion to Dismiss Claims V Through VIII Pursuant to
F.R.C.P. 12(b)(6) (Doc. 13), filed July 24, 2013; and
5.
Plaintiff’s Response to Defendants’ Motion to Dismiss Claims V through
VIII Pursuant to F.R.C.P. 12(b)(6) (Doc. 36), filed August 14, 2013.
Upon consideration, the Court finds that Defendants’ Motion to Transfer Venue (Doc.
14) is due to be granted, and Defendants’ Motion to Dismiss (Doc. 13) is due to be
denied as moot.
BACKGROUND
This trademark-infringement case involves four businesses operating in four
states. Plaintiff Seal Shield is a Florida LLC operating primarily out of Jacksonville and
Orlando. (See Doc. 35, ¶ 9.) Seal Shield owns KlearKase, LLC, a Washington limited
liability company. (See id., p. 29.) Defendant Otter Products (“Otter”) is a Colorado LLC.
(Doc. 14, p. 8.) Otter allegedly1 owns Treefrog Developments, Inc., a Delaware
corporation principally operating out of San Diego, California. (Doc. 35 ¶ 11.) All four
companies develop and sell protective cases for portable electronic devices. (See Doc.
35, ¶¶ 18–30; Doc. 14, p. 8.) Seal Shield is suing Otter and Treefrog (“Defendants”),
claiming the Defendants are infringing upon rights that Seal Shield acquired in the
LIFEPROOF family of marks when it purchased KlearKase.
This action will turn on whether Treefrog or KlearKase first established priority
over the LIFEPROOF family of marks. Seal Shield (the owner of KlearKase) alleges that
KlearKase developed the LIFEPROOF marks in Washington state “[a]t least as early as
June 2010.” (See Doc. 35, ¶ 20.) Treefrog counters that, acting out of its San Diego
headquarters, it developed and sold products under the LIFEPROOF brand prior to
June, 2010. (See Doc. 14, p. 5.) Treefrog is the current registered owner of the
LIFEPROOF trademark. (See Doc. 35, ¶ 3; Doc. 14, p. 5.) Neither Seal Shield nor Otter
played any role in the initial development of the LIFEPROOF marks; rather, they are
1
Defendant contends that OtterBox Holdings, Inc., a Colorado-based corporate
affiliate of Defendant Otter, is the actual owner of Treefrog. (See Doc. 14, p. 9.)
Moreover, Otter notes that “LifeProof’s employees became employees of Otter
Products, Inc.” (Id. at 5 n.2.) Defendant Otter does not clarify the relationship between
itself and its corporate affiliates, but it acknowledges that all of Lifeproof’s former
employees continue to reside and work in San Diego, which is most relevant to this
motion to transfer. (Id.)
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involved in this suit solely because they subsequently acquired the companies
responsible for the marks’ development.
Plaintiff filed suit in the Middle District of Florida. (Doc. 1). Defendants move to
transfer this case to the Southern District of California. (Doc. 14.) Plaintiff opposes.
(Doc. 37.) Defendants replied. (Doc. 56.) This matter is now ripe for the Court’s
adjudication.
STANDARDS
“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). “There is ordinarily a strong presumption in favor of the plaintiff’s
choice of forum,” especially where the plaintiff chooses to litigate in his home forum.
Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255–56 (1981); see also In re Ricoh Corp.,
870 F.2d 570, 572–73 (11th Cir. 1989). “Thus, in the usual motion for transfer under
section 1404(a), the burden is on the movant to establish that the suggested forum is
more convenient.” In re Ricoh Corp., 870 F.2d at 573. However, courts have discretion
to evaluate 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 (1988).
Motions to transfer under § 1404(a) require a two-step inquiry. First, the Court
must determine whether the case could have been brought in the transferee forum. See
28 U.S.C. § 1404(a); see also S.E.C. v. BIH Corp., No. 2:10-cv-577-FtM-29DNF, 2011
WL 3862530, *2 (M.D. Fla. Aug. 31, 2011). If the transferee forum is proper, then the
Court balances the conveniences of the parties. See BIH Corp., 2011 WL at *2. While
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no single factor controls, courts consider:
(1) the convenience of the witnesses; (2) the location of relevant
documents and the relative ease of access to sources of proof; (3) the
convenience of the parties; (4) the locus of operative facts; (5) the
availability of process to compel the attendance of unwilling witnesses; (6)
the relative means of the parties; (7) a forum's familiarity with the
governing law; (8) the weight accorded a plaintiff's choice of forum; and (9)
trial efficiency and the interests of justice, based on the totality of the
circumstances.
Manuel v. Convergys Corp., 430 F.3d 1132, 1135 n.1 (11th Cir. 2005).
DISCUSSION
I.
Motion to Transfer
A. The Transferee Forum
As a threshold matter, the Court finds that this case could have been brought in
the Southern District of California. “An action might have been brought in a proposed
transferee court if: (1) the court had jurisdiction over the subject matter of the action; (2)
venue is proper there; and (3) the defendant is amenable to process issuing out of the
transferee court.” Suomen Colorize Oy v. DISH Network LLC, 801 F. Supp. 2d 1334,
1337 (M.D. Fla. 2011). Like the Middle District of Florida, the Southern District of
California has federal-question jurisdiction over this action pursuant to 28 U.S.C.
§ 1331. Venue is proper pursuant to 28 U.S.C. § 1391(b) because the Southern District
of California is “a judicial district in which a substantial part of the events or omissions
giving rise to the claim occurred”—namely the development, marketing, and sales of
products bearing the LIFEPROOF marks in San Diego (see Doc. 14 p. 15; Doc. 56,
p. 6). Both parties are amenable to process in the Southern District of California. Thus,
this action could have been brought in the transferee forum.
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B. Convenience
i.
Plaintiff’s Choice of Forum.
Plaintiff invokes the traditional rule that its decision to bring suit in its home forum
should not be disturbed. (See Doc. 37, p. 18 (citing Piper Aircraft Co., 454 U.S. at 255).)
Since its inception, Plaintiff has operated out of Jacksonville and Orlando—both located
in the Middle District of Florida—and all but three of its nineteen employees currently
reside in Florida. (See Doc. 37-2, ¶¶ 3, 21.) Thus, there is little doubt that the Middle
District of Florida is Plaintiff’s home forum. Defendants, however, maintain that Plaintiff’s
choice of forum should be entitled to little or no weight because “only the fortuitous act
of Seal Shield acquiring Washington-based KlearKase in January 2013, a few short
months ago, gives Florida any connection [to this action] whatsoever.” (Doc. 13, p. 22.)
The Court agrees with Defendants.
A plaintiff’s choice of forum is entitled to less consideration where the operative
facts underlying the cause of action did not occur within the chosen forum. See Suomen
Colorize Oy, 801 F. Supp. 2d at 1338; Silong v. United States, No. 5:05-cv-55-Oc10GRJ, 2006 WL 948048, *2 (M.D. Fla. Apr. 12, 2006). This is especially true where an
action is connected to a plaintiff’s home forum solely by way of the plaintiff’s relocation
there after the bulk of the operative facts occurred elsewhere. See Cortez v. First City
Nat’l Bank of Houston, 735 F. Supp. 1021, 1024 (M.D. Fla. 1990) (transferring an action
from the plaintiff’s home forum in Florida to Texas where “[o]nly the fortuitous act of
Plaintiff moving to Florida [gave] this State any connection to [the] controversy”). Here,
essentially all of the operative facts concerning the development, marketing, and
commercialization of the LIFEPROOF marks occurred in California and Washington.
(See Doc. 14, p. 22; Doc. 16, ¶¶ 4–7; Doc. 37-2, ¶¶ 6–10.) Plaintiff’s acquisition of
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KlearKase subsequent to KlearKase’s development and commercialization of its marks
appears to be the only substantial link that this litigation has to the Middle District of
Florida. As discussed further below, Plaintiff’s contentions that Defendants sell infringing
products in the Middle District of Florida and that Plaintiff’s witnesses reside here are
insufficient in this case to trigger the presumption in favor of its choice of forum.
Accordingly, Plaintiff’s decision to litigate in the Middle District of Florida merits less
deference than would typically awarded to a choice of home forum.
ii.
Locus of Operative Facts & Location of Relevant Evidence
Typically, the locus of operative facts in intellectual property infringement cases
is where the “allegedly infringing product was designed, developed, and produced.”
Carroll v. Texas Instruments, Inc., 910 F. Supp. 2d 1331, 1339–40 (M.D. Ala. 2012);
see also Spiegelberg v. Collegiate Licensing Co., 402 F. Supp. 2d 786, 791 (S.D. Tex.
2005); cf. Proven Winners N. Am., LLC v. Cascade Greenhouse, No. 2:06-cv-428-FtM29DNF, 2007 WL 1655387, *2 (M.D. Fla. June 6, 2007) (“In finding that ‘center of
gravity’ [of a patent infringement case,] a district court ought to be as close as possible
to the milieu of the infringing device and the hub of activity centered around its
production.”) (citation omitted). Nearly all of the operative facts concerning Treefrog’s
“creation, development, marketing, and use of its LIFEPROOF mark” occurred in
California. (See Doc. 14, p. 19.) Moreover, nearly all the evidence related to Treefrog’s
marks, including documentation in both paper and electronic form, is located at
Treefrog’s headquarters in San Diego. (See Doc. 23, ¶¶ 5–10.) Thus, the locus of
operative facts would typically be in the Southern District of California.
Plaintiff contends that the locus of operative facts is in the Middle District of
Florida because Defendants have sold infringing products here. However, Defendant
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Treefrog markets and sells its products nationally. (See Doc. 56, p. 6 n.1.) “The sale of
an accused product offered nationwide does not give rise to a substantial interest in any
single venue.” In re Acer Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010). Accordingly,
these factors also weigh in favor of transfer.
iii.
Convenience of Witnesses & Availability of Process to
Compel Attendance of Unwilling Witnesses
While the convenience of the witnesses is a significant factor in determining
whether transfer is warranted, “its significance is diminished when the witnesses . . . are
employees of a party and their presence at trial can be obtained by that party.” Trinity
Christian Ctr. of Santa Ana, Inc. v. New Frontier Media, Inc., 761 F. Supp. 2d 1322,
1327 (M.D. Fla. 2010). Thus, the location of non-party witnesses typically controls this
factor.
Plaintiff contends that it “anticipates calling numerous non-party witnesses,
including managers of . . . retail stores within the M.D. Fla.” (Doc. 37, pp. 11–12.)
Specifically, to prove infringement, Plaintiff plans to call several managers from
“Walmart, Target, Best Buy, Verizon Wireless, and AT&T stores.” (Id.; see also Doc.
37-1, ¶ 5.) Additionally, Plaintiff intends to call the manager of Clear Channel Outdoor’s
Orlando office to testify regarding billboards in Orlando bearing the LIFEPROOF marks.
(Doc. 37-2, ¶ 23.) However, as of October 22, 2013, Plaintiff has only disclosed three
specific witnesses who reside in Florida—all of whom are Plaintiff’s employees. (See
Doc. 56-4.) Despite his intentions, Plaintiff has not disclosed the names or expected
testimony of any local retail managers, and therefore they are too speculative to be
considered in the § 1404(a) convenience analysis.2 See Trinity Christian Ctr., 761 F.
2
Moreover, Plaintiff’s potential witnesses are managers of national retail chains
7
Supp. 2d at 1327.
By contrast, Treefrog contends that it plans to call several specific non-party
witnesses to testify to the development and marketing of the LIFEPROOF marks. (Doc.
14, p. 17.) These witnesses reside in the San Diego area and include Daniel Kozoil,3
Treefrog’s original Vice President of Marketing and Sales, and employees from multiple
businesses that contributed to advertising and marketing the LIFEPROOF marks in their
early stages, such as Digital Operative in San Diego and Magnetic in Temecula. (Id.;
see also Doc. 17, ¶¶ 7, 12; Doc. 56-5, p. 3.) Defendants further allege that several of
these non-party witnesses reside within 100 miles of San Diego and therefore fall within
the subpoena power of the Southern District of California but outside of the subpoena
power of the Middle District of Florida. See Fed. R. Civ. P. 45(c)(1)(A).
Overall, this factor weighs strongly favor of transfer.
iv.
Convenience & Relative Means of Parties
Plaintiff alleges that litigating in California would be far more burdensome on its
business than litigating in Florida would be for Defendants, largely because Defendants
purportedly have “three corporate jets for business travel and revenues more than 60
times than that of Plaintiff.” (Doc. 37, pp. 13–14.) Defendants contend that both
companies are established corporate entities with the means to litigate in either forum,
and that Florida litigation would be more disruptive for their businesses because a
who were purportedly going to testify about local sales of a product offered nationwide.
(Doc. 37, pp. 11–12; Doc. 37-1 ¶ 5.) As addressed above, the nationwide sale of an
accused product does not favor any particular venue. See Acer, 626 F.3d at 1256. By
the same reasoning, the convenience of retail managers from the local branch of a
nationwide chain should not favor any single venue when the testimony of those
managers is offered only to prove the sale of a nationally marketed product.
3
Mr. Koizoil no longer works for Defendants and was among those third-party
witnesses specifically listed in Defendants’ initial disclosures. (See Doc. 56-5, p. 3.)
8
substantially greater number of their California-based employees will be called to testify
in Florida than Plaintiff’s Florida-based employees would in California. (See Doc. 14, pp.
20–21 (citing Response Reward Sys., L.C. v. Meijer, Inc., 189 F. Supp. 2d 1332 (M.D.
Fla. 2002)).)
Though litigating outside its preferred forum undoubtedly inconveniences any
party, the Court determines that neither forum in this action would place a
disproportionate hardship on the traveling party. Thus, this factor is neutral.
v.
Forum’s Familiarity with Governing Law
In addition to the four claims that Plaintiff brings under federal law, Plaintiff
asserts claims of Florida common law trademark infringement and unfair competition.
(See Doc. 33, ¶¶ 91–104.) Though Plaintiff suggests that this factor weighs against
transferring this action, this Court has no reservation about the Southern District of
California’s ability to interpret and apply Florida law. Accordingly, this factor is neutral or
weighs only slightly against transfer.
vi.
Trial Efficiency & Interests of Justice
Finally, the Middle District of Florida and the Southern District of California have
equal interests in enforcing trademark and unfair competition laws. Plaintiff, however,
suggests that judicial economy would best be served if this action remained in the
Middle District of Florida, which historically resolves cases more expeditiously than the
Southern District of California. (See Doc. 37, p. 19.) While the relative congestion of
dockets might normally weigh in favor of the Middle District of Florida retaining this
action, the Court notes that the Southern District of California recently denied Seal
Shield’s motion to transfer venue to the Middle District of Florida in a patentinfringement action between Seal Shield, KlearKase, and Treefrog. See Treefrog
9
Developments, Inc. v. Seal Shield, LLC and KlearKase, LLC, No. 3:13-CV-01575-IEG
(S.D. Cal. July 5, 2013). Though the matters are not directly related,4 judicial economy
would likely be best served by transferring this action to the Southern District of
California and avoiding the need for the parties and the courts to coordinate parallel
litigation proceeding in fora nearly 2,500 miles apart.5
On balance then, the § 1404(a) convenience factors weigh in favor of transferring
this action out of the Middle District of Florida. The locus of operative facts, the location
of the evidence, the convenience of non-party witnesses, and the availability of
compulsory process, trial efficiency, and the interests of justice all weigh in favor of
transfer. The convenience and relative means of the parties are neutral, and the forum’s
familiarity with the relevant law is neutral or weighs only slightly in favor this Court
retaining this action. Thus, given that the weight of the convenience factors favors
transfer and that deference due to Plaintiff’s choice of forum is lessened in this case,
this action is due to be transferred to the Southern District of California.
II.
Motion to Dismiss
Plaintiff filed its Complaint on June 21, 2013. (Doc. 1.) Defendants moved to
dismiss several claims in Plaintiff’s Complaint on July 24, 2013. (Doc. 13.) On
August 12, 2013, Plaintiff filed an Amended Complaint. (Doc. 33.) “As a general matter,
4
The U.S. District Court for the Southern District of California determined that the
products at issue in the California patent action do not bear the LIFEPROOF marks at
issue in this trademark action. See Treefrog Dev’s, No. 3:13-CV-01575-IEG, Doc. 36, p.
2.
5
Otter is also bringing a patent infringement claim against Seal Shield and
KlearKase in the U.S. District Court for the District of Colorado. See Otter Products, LLC
v. Seal Shield, LLC and KlearKase, LLC, No. 1:13-cv-1734-MSK (D. Colo. July 1, 2013).
There is a motion to transfer that latest-filed action to the Middle District of Florida
currently pending. See id., Doc. 69. The Colorado action, however, contains different
claims and appears to involve products not bearing the LIFEPROOF mark. See id., Doc.
1, pp. 3–7.
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‘[a]n amended pleading supersedes the former pleading; the original pleading is
abandoned by the amendment, and is no longer a part of the pleader's averments
against his adversary.’” Pintando v. Miami-Dade Hous. Agency, 501 F.3d 1241, 1243
(11th Cir. 2007) (citation omitted). Motions directed at the former pleading are therefore
mooted by the filing of an amended pleading. See, e.g., Meterlogic, Inc. v. Copier
Solutions, Inc., 185 F. Supp. 2d 1292, 1297 (S.D. Fla. 2002). Accordingly, Defendants’
Motion to Dismiss (Doc. 13) is due to be denied as moot.
CONCLUSION
Accordingly, it is hereby ORDERED AND ADJUDGED:
1.
Defendants’ Motion to Dismiss Claims V Through VIII Pursuant to
F.R.C.P. 12(b)(6) (Doc. 13) is DENIED AS MOOT.
2.
Defendants’ Motion to Transfer Venue to the Southern District of California
(Doc. 14) is GRANTED.
3.
The Clerk is DIRECTED to transfer this case to the U.S. District Court,
Southern District of California, for all further proceedings and to close the
file.
DONE AND ORDERED in Chambers in Orlando, Florida, on November 13, 2013.
Copies:
Counsel of Record
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U.S. District Court, Southern District of California
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