BBK tobacco & Foods llp v. Ebay seller jillycut et al
OPINION AND ORDER granting in part and denying in part #24 Motion to dismiss for improper venue and transferring case to the Northern District of Georgia. Signed by District Judge Linda V. Parker. (DPer) [Transferred from Michigan Eastern on 2/16/2021.]
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 1 of 18
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
BBK TOBACCO & FOODS, LLP,
doing business as
Civil Case No. 20-12193
Honorable Linda V. Parker
MARK GIANGIULI, EBAY
SELLER JILLYCUT also known as
JILLYCUT’S JUNK; and
OPINION AND ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANTS’ MOTION TO DISMISS FOR IMPROPER VENUE OR, IN
THE ALTERNATIVE, TO TRANSFER VENUE
On August 14, 2020, Plaintiff BBK Tobacco & Foods, LLP, doing business
as HBI International (“HBI”), filed this trademark infringement and unfair
competition action against Defendants Mark Giangiuli, Dawn Giangiuli, and eBay
seller Jillycut, also known as Jillycut’s Junk (“Jillycut”). The matter is presently
before the Court on Defendants’ Motion to Dismiss for Improper Venue or, in the
Alternative, to Transfer Venue, filed October 13, 2020. (ECF No. 24.) The
motion has been fully briefed. (ECF Nos. 25, 27.) Finding the facts and the
parties’ arguments sufficiently presented in their briefs, the Court is dispensing
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 2 of 18
with oral argument with respect to Defendants’ motion pursuant to Eastern District
of Michigan Local Rule 7.1(f).
HBI is an Arizona limited liability partnership based in Phoenix, Arizona.
(Compl. ¶ 11, ECF No. 1. at Pg ID 3.) HBI owns and is the exclusive United
States distributor of RAW® Rolling Papers. (Id. ¶ 2, 12, Pg ID 1-3.) It owns
copyrights, trademarks, and trade dress that appear on all authentic RAW® Rolling
Papers authorized for sale in the United States. (Id.)
Jillycut is a Georgia company, with its principal place of business in
McDonough, Georgia. (Id. ¶ 13, Pg ID 4.) HBI alleges that Jillycut sells
counterfeit RAW® Rolling Papers bearing counterfeit RAW® trademarks,
copyrights, and trade dress. (Id. ¶ 4, Pg ID 2.) HBI claims that these alleged
counterfeit products are cheaper in price and poor-quality imitations. (Id. ¶ 5, Pg
ID 2.) Jillycut’s products are sold through an e-commerce eBay storefront. (Id.
¶ 73, Pg ID 20.)
HBI hired LSS Consulting, Inc. (“LSS”) to investigate the distribution of
counterfeit RAW® products. (Hood Decl. ¶ 6, ECF No. 8 at Pg ID 223-24.) On
four occasions between April 11, 2019 and April 2, 2020, LSS purchased Jillycut’s
alleged counterfeit products through its eBay storefront. (Compl. ¶¶ 75-82, ECF
No. 1 at Pg ID 20-21; Hood Decl. ¶¶ 29, 34, 39, 44, ECF No. 8 at Pg ID 227-30.)
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 3 of 18
LSS received the products at an alias address in Stamford, Connecticut. (Hood
Decl. ¶¶ 30, 35, 40, 45, ECF No. 8 at Pg ID 229-30.) The return address on the
shipping labels listed Mark A. Giangiuli at 146 Brookhaven Lane, McDonough,
Georgia. (Id.) LSS then shipped the products from Stamford, Connecticut to its
headquarters in Commerce Township, Michigan. (Id. ¶¶ 31, 36, 41, 46, Pg ID 22730.)
Mark Giangiuli, a Georgia resident, owns and operates Jillycut. (Id. ¶ 15-16,
Pg ID 4.) Dawn Giangiuli, Mark’s wife, also is a Georgia resident. (Id. ¶ 19, Pg
ID 4.) HBI alleges that Dawn owns and operates Jillycut (id. ¶ 19, Pg ID 4);
however, Dawn states that she neither owns, operates, nor is employed by Jillycut
(D. Giangiuli Decl. ¶ 2, ECF No. 24 at Pg ID 553.) According to Dawn, she has
never sold rolling papers and was neither involved in nor participated in the events
and/or omissions giving rise to HBI’s claims in this lawsuit. (Id.¶¶ 5-6, Pg ID
554.) HBI disputes this assertion, however, pointing to two voicemail messages
Dawn left for HBI’s counsel after HBI submitted a takedown complaint through
eBay’s Verified Rights Owner (“VeRO”) program concerning some of Jillycut’s
As HBI’s counsel explains, the VeRO program allows intellectual property
owners to report listings or products to eBay that infringe upon their intellectual
property rights. (Ruisi Decl. ¶ 11, ECF No. 9 at Pg ID 283.) If eBay finds a listing
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 4 of 18
or product to be infringing, it can remove the product listing, among other actions.
(Id.) HBI’s counsel submitted several reports through the VeRO program
concerning Jillycut’s RAW product listings. (Id. ¶¶ 14, 19, 32 Pg ID 284-85, 287.)
eBay removed Defendants’ listings in response. (Id. ¶ 16, 21, 34 at Pg ID 284-85.)
HBI’s counsel thereafter received numerous emails, phone calls, and a text
message from “Defendants” complaining about HBI and counsel. (Id. ¶¶ 17-18,
22-23, 25-31, 35-42, 44-52, 54-71, Pg ID 284-296.)
The emails were all sent from Mark Giangiuli’s email address and included
his name in closing. (See Ruisi Decl. Exs. 1-6, 8-14, 16-20, ECF No. 9-5 at Pg ID
301-313; 317-32, 336-348.) In his communications, Mark threatened one of HBI’s
attorneys and called her obscenities. (Id.) All but two of the telephone calls came
from Mark.1 (Ruisi Decl. Ex. 7, ECF No. 9-8; see also Ruisi Decl. ¶¶ 35-36, 4548, 54, 56-57, 64, 66, ECF No. 9 at Pg ID 288-93, 295.) Dawn called HBI’s
counsel on two occasions on July 14, 2020. (Ruisi Decl. Ex. 7, ECF No. 9-8; see
also Ruisi Decl. ¶¶ 51-52, 55, ECF No. 9 at Pg ID 291-92.)
At 1:29 p.m. on July 14, Dawn left the following voicemail message for
Kristen, my name is Dawn Giangiuli. I am from Jillycut’s
Junk. Apparently you’ve had a bunch of my RAW listings
pulled off and my husband sent you invoices and receipts and I
The text message also came from Mark. (Ruisi Decl. ¶ 60, ECF No. 9 at Pg ID
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 5 of 18
wanna know when you are going to get the problem corrected
or do I need to call an attorney to get it corrected. If you could
kindly call me back at 678-697-2947. Thank you.
(Ruisi Decl. Ex. 7, ECF No. 9-8; see also Resp. Br. at 7, See ECF No. 25 at Pg ID
567.) In a second voicemail message left at 1:43 p.m., Dawn stated:
Kristen this is Dawn Giangiuli from Jillycut’s Junk on eBay.
Apparently you have had a bunch of my listings pulled due to
counterfeit and my husband sent you receipts for everything
from the wholesaler so I would like our merchandise, for you to
call eBay and have our listings reposted, and if you are not
going to do that, I guess I’ll be calling an attorney but you need
to get back to me so I know what to do. Thank you. Bye.
In a second declaration submitted in this matter, Dawn indicates that she left
the voicemails to assist Mark and his business, and because she was concerned
about Mark who had become extremely frustrated by the refusal of HBI and its
counsel to respond to his communications. (Dawn Giangiuli Decl. ¶¶ 8-10, ECF
No. 27-2 at Pg ID 663-64.) Dawn explains that Mark suffers from bipolar disorder
and when he gets angry or upset, says regrettable things. (Id. ¶ 10, Pg ID 663.)
Dawn again states that she neither owns, operates, nor is employed by Jillycut. (Id.
¶ 3, Pg ID 662.) She states that she has worked for Delta Airlines, full-time, for
over 27 years. (Id.)
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Standard of Review
Defendants bring their motion to dismiss for improper venue under Federal
Rule of Civil Procedure 12(b)(3) or, alternatively, for transfer of venue pursuant to
28 U.S.C. § 1404(a).
On a motion to dismiss for improper venue under Rule 12(b)(3), the plaintiff
bears the burden of establishing that venue is proper. Audi AG & Volkswagen of
Am., Inc. v. Izumi, 204 F. Supp. 2d 1014, 1017 (E.D. Mich. 2002); Meng Huang v.
Ohio State Univ., No. 18-12727, 2019 WL 2120968, at *2 (E.D. Mich. May 14,
2019) (noting that the Sixth Circuit has not spoken on who bears the burden of
proof and relying on Anonymous v. Kaye, No. 95-9295, 1996 WL 734074, at *2
(2d Cir. 1996)); see also 14D Arthur R. Miller, Fed. Practice & Proc. § 3826 (4th
ed. 2020). The court may consider facts outside the complaint but “must draw all
reasonable inferences and resolve factual conflicts in favor of the plaintiff.” Audi
AG, 204 F. Supp. 2d at 1017. The plaintiff must show that venue is “proper for
each claim and as to each defendant in order for the court to retain the action.”
Verbis v. Iowa Dep’t of Human Servs., 18 F. Supp. 2d 770, 774 (W.D. Mich.
1998); see also Cunningham v. MEC Enterprises, Inc., No. 10-13409, 2011 WL
1869911, at *1 (E.D. Mich. April 20, 2011) (quoting Verbis). Where venue in the
district is improper, the court may dismiss the action or transfer it to a proper
venue in “the interest of justice.” 28 U.S.C. § 1406(a).
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 7 of 18
Even where venue is proper, “[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 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 moving party
bears the burden of establishing the need for a change of venue. Sullivan v.
Tribley, 602 F. Supp. 2d 795, 799 (E.D. Mich. 2009).
Courts “must evaluate both the convenience of the parties and various
public-interest considerations” when ruling on a motion to transfer venue under
§ 1404(a). Atl. Marine Constr. Co. v. U.S. Dist. Court of the W. Dist. of Texas, 571
U.S. 49, 62 (2013). As the Supreme Court summarized in Atlantic Marine:
Factors relating to the parties’ private interests include
relative ease of access to sources of proof; availability of
compulsory process for attendance of unwilling, and the cost of
obtaining attendance of willing, witnesses; possibility of view
of premises, if view would be appropriate to the action; and all
other practical problems that make trial of a case easy,
expeditious and inexpensive. Public-interest factors may
include the administrative difficulties flowing from court
congestion; the local interest in having localized controversies
decided at home; and the interest in having the trial of a
diversity case in a forum that is at home with the law.” The
Court must also give some weight to the plaintiffs’ choice of
Id. n.6 (internal quotation marks, citations, and brackets omitted). “Unless the
balance is strongly in favor of the defendants, the plaintiff’s choice of forum
should rarely be disturbed.” Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947).
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 8 of 18
However, “where the plaintiff does not reside in the chosen forum[,] courts assign
less weight to the plaintiff’s choice.” Means v. United States Conference of
Catholic Bishops, 836 F.3d 643, 651 (6th Cir. 2016). An action should not be
transferred to a different forum where “the result is simply to shift the
inconvenience from one party to another.” Sullivan, 602 F. Supp. 2d at 800
Whether Venue is Proper in the Eastern District of Michigan
Venue is governed by 28 U.S.C. § 1391(b). Section 1391(b) provides, in
relevant part, that venue is proper in “(1) a judicial district in which any defendant
resides, if all defendants are residents of the State in which the district is located;
[or] (2) a judicial district in which a substantial part of the events or omissions
giving rise to the claim occurred ….” 28 U.S.C. § 1391(b)(1), (2). Neither Mark
Giangiuli nor Dawn Giangiuli are residents of Michigan.2 Thus, “a substantial part
of the events or omissions” must have occurred in the Eastern District of Michigan
for venue to be proper here.
A natural person “reside[s] in the judicial district in which that person is
domiciled.” 28 U.S.C. § 1391(c)(1). Corporate defendants are deemed to reside in
“any judicial district in which such defendant is subject to the court’s personal
jurisdiction with respect to the civil action in question.” Id. § 1391(c)(2).
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 9 of 18
In trademark infringement cases, courts have held that venue may be proper
“in each jurisdiction where infringement is properly alleged to have occurred.”
Nine Point Mesa of Nashville, Inc. v. Nine Point Mesa of Lexington, Inc., 769 F.
Supp. 259, 261 (M.D. Tenn. 1991) (citing Tefal, S.A. v. Prods. Int’l Co., 529 F.2d
495, 496 n.1 (3d Cir. 1976)). “[C]ourts have found venue proper under
§ 1391(b)(2) in districts where confusion about the origin of the products is likely
to occur because this constitutes the ‘events or omissions giving rise to the claim.’”
IA Inc. v. Thermacell Tech., Inc., 983 F. Supp. 697, 700 (E.D. Mich. 1997)
(quoting 28 U.S.C. § 1931(b)(2) and citing cases). “‘At a minimum, the defendant
must have targeted its marketing and advertising efforts at the district in question,
or have actually sold its products there.’” EnviroCare Tech., LLC v. Simanovsky,
No. 11-cv-3458, 2012 WL 2001443, at *5 (E.D.N.Y. June 4, 2012) (quoting
Mattel, Inc. v. Adventure Apparel, No. 00 CIV 4085, 2001 WL 286728 at *4
(S.D.N.Y. Mar. 22, 2001)).
HBI argues that venue is proper in the Eastern District of Michigan because
Defendants sold and shipped counterfeit RAW® products there. (Resp. at 10, ECF
No. 25 at Pg ID 570.) However, HBI’s own evidence proves this assertion to be
incorrect. The only purchases HBI describes are the four controlled buys initiated
by its investigator, LLS.
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 10 of 18
According to John Hood, Director of Operations at LSS, who was
responsible for directing and supervising those purchases, Defendants shipped the
products from Georgia to Connecticut. (Hood Decl. ¶¶ 4, 8, 30, 35, 40, 45, ECF
No. 8 at Pg ID 223-24, 227-30.) The shipping labels attached to Hood’s
declaration reflect this, as well. (Id. Exs. A-D, ECF Nos 8-2 to 8-5.) It was only
because LSS then sent the counterfeit products to its headquarters in the Eastern
District of Michigan that they landed here. (Hood Decl. ¶¶ 31, 36, 41, 46, ECF No.
8 at Pg ID 227-30.) As such, this case is distinguishable from those cited by HBI,
where products sold on eBay and shipped to Michigan established personal
jurisdiction and venue over the defendants.3 (Resp. at 11, ECF No. 25 at Pg ID
571 (citing cases).)
HBI also argues that Defendants’ postings on eBay could be accessed and
viewed by Michigan consumers. (Resp. at 10, ECF No. 25 at Pg ID 570.) But
HBI alleges no facts to suggest that Defendants’ eBay postings confused or
deceived consumers in the Eastern District of Michigan. And HBI cites no case
Two of the four decisions cited by HBI are default judgment orders. Order, N.
Atlantic Operating Co. v. eBay Seller Dealz_f0r-you et al., No. 17-10964 (E.D.
Mich. 2019), ECF No. 205; Order, N. Atlantic Operating Co. v. JingJing Jang, et
al., No. 15-14013 (E.D. Mich. 2017), ECF No. 276. As the defendants defaulted,
they waived any challenge to personal jurisdiction and venue in those cases. More
importantly, a finding that venue was proper in those cases does not mean that
venue (even as to the same defendants) is proper here. It only means that the
defendants’ alleged conduct relating to a different plaintiff’s products gave rise to
that plaintiff’s claims here.
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 11 of 18
where venue was found proper based on internet postings alone, where those
postings are directed nation- or world-wide as opposed to being focused on the
Courts have said that “[i]n assessing the likelihood of confusion or deception
in th[e] district, the [c]ourt must look to whether [the d]efendants’ marketing
efforts targeted the district and whether sales occurred here.” Sechel Holdings, Inc.
v. Clapp, No. 3:12-cv-00108, 2012 WL 3150087, at *3 (W.D. Ky. Aug. 2, 2012)
(citing Overland, Inc. v. Taylor, 79 F. Supp. 2d 809, 811 (E.D. Mich. 2000)
(collecting cases)). More is required, however. The alleged harm must stem
directly from conduct in or directed to the forum. See Dedvukaj v. Maloney, 447 F.
Supp. 2d 813, 819 (E.D. Mich. 2006). “‘[I]n cases involving trademark
infringement and unfair competition, the wrong takes place not where the
deceptive labels are affixed to the goods or where the goods are wrapped in the
misleading packages, but where the passing off occurs, i.e., where the deceived
customer buys the defendant’s product in the belief that he is buying the
plaintiff’s.’” See Allstar Mktg. Grp., LLC v. Your Store Online, LLC, 666 F. Supp.
2d 1109, 1128 (C.D. Cal. 2009) (quoting Vanity Fair Mills v. T. Eaton Co., 234
F.2d 633, 639 (2d Cir. 1956)).
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Thus in Lanham Act cases, courts require some (albeit sometimes “modest”)
sales or shipments to the district through the defendant’s interactive website4 to
establish a likelihood of confusion.5 See, e.g., Sechel Holdings, 2012 WL
3150087, at *3 (citing cases). In Delta Sigma Theta Sorority Inc. v. Bivins, 20 F.
Supp. 3d 207 (D.D.C. 2014), the court concluded that two sales causing allegedly
infringing merchandise to be shipped into the district did not constitute “even a
‘modest’ number of sales.” Id. at 216-17. Without evidence of any advertising
purposefully directed by the defendant at the forum—distinct from the defendant’s
generally accessible website—the court concluded that venue in the forum was
improper. Id. at 217. Orders placed by a plaintiff’s employees or a private
investigator hired by the plaintiff are insufficient to establish “a substantial part of
the events or omissions giving rise to the claim” because “these individuals were
not confused by [the] defendants’ products.” Allstar Mktg., 666 F. Supp. 2d at
1129 n.44. Other courts have found venue to be improper where conduct arose
Interactive websites generally are maintained by the defendant and do not
passively post information. See Neogen Corp. v. Neo Gen Screening, Inc., 282
F.3d 883, 890-91 (6th Cir. 2002). Instead, they enable consumers to create
accounts, log in and obtain information, and/or conduct business. Id.; see also Bird
v. Parsons, 289 F.3d 865, 874-75 (6th Cir. 2002). Courts have found internet
auction sites, like eBay, interactive. See, e.g., Dedvukaj v. Maloney, 447 F. Supp.
2d 813, 821 (E.D. Mich. 2006); Zen Design Group, Ltd. v. Clint, No. 2009 WL
4050247, at *3 (E.D. Mich. Nov. 23, 2009).
Even if targeted marketing alone is enough, HBI does not allege facts suggesting
that Defendants purposely directed their advertising at this forum.
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from an interactive website but no actual contact (e.g., sales) occurred. Sechel
Holdings, 2012 WL 3150087, at *3 (citing cases).
Here, HBI identifies only Defendants’ sales to LSS to establish Defendants’
purposeful contacts with the venue. LSS and its investigators were not confused
by Defendants’ use of HBI’s trademarks or trade dress. Moreover, Defendants did
not ship the products to the Eastern District of Michigan and HBI has not
established that Defendants shipped any alleged counterfeit RAW® products to
this venue.6 There are no allegations of any other conduct by Defendants directed
at the forum. Accordingly, HBI fails to establish that “a substantial part of the
events or omissions giving rise to [HBI’s] claims” occurred here.7
As HBI points out (see Resp. at 8, ECF No. 25 at Pg ID 568), Mark Giangiuli and
Jillycut have been sued in the Eastern District of Michigan for infringing the
intellectual property rights associated with Zig-Zag® brand cigarette paper
products. See N. Atl. Operating Co. v. Hot Box Deals, et al., No. 18-cv-10134
(E.D. Mich. filed Jan. 11, 2018). But their sale and distribution of products that
infringed another defendant’s trademarks do not support a finding of venue in this
case, as those activities do not give rise to HBI’s claims.
The Court is inclined to also conclude that Dawn Giangiuli has not participated in
events giving rise to HBI’s claims, even when drawing all reasonable inferences
and resolving factual conflicts in HBI’s favor. See Allstar Mktg., 666 F. Supp. 2d
at 1129 (citing cases holding that plaintiffs may rely on the allegations in their
complaint to establish venue but only to the extent those allegations are not
controverted by the defendant’s evidence); see also Charles Alan Wright & Arthur
R. Miller, 5B Fed. Prac. & Proc. § 1352 (“All well-pleaded allegations in the
complaint bearing on the venue question are generally taken as true, unless
contradicted by the defendant’s affidavits.”). The only factual allegations
supporting HBI’s claim that Dawn owns and operates Jillycut are her statements in
her voicemails where she says that she is “from Jillycut’s Junk” and refers to the
listings and products as hers. Dawn’s declarations contradict and explain those
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 14 of 18
For these reasons, the Court concludes that the Eastern District of Michigan
is not a proper venue to adjudicate HBI’s claims. While a district court may, in its
discretion, dismiss or transfer a matter where venue is improper, 28 U.S.C.
§ 1406(a), “if there is another district in which the action could have been brought,
transfer is preferred to the harsh remedy of dismissal.” Kolodziej v. Gosciak, No.
1:06-cv-820, 2008 WL 786326, at *7 (W.D. Mich. Mar. 20, 2008) (citing Minnette
v. Time-Warner, 997 F.2d 1023, 1026-27 (2d Cir. 1993)). The District Court for
the Northern District of Georgia is a proper venue, see 28 U.S.C. § 1391(b)(1).
The Court, therefore, is transferring the matter there. Moreover, the relevant
factors favor a change of venue to the Northern District of Georgia even if venue is
proper in the Eastern District of Michigan.
First, the Court is unclear how the Eastern District of Michigan is convenient
for either party. Defendants are located in Georgia. HBI is an Arizona limited
liability partnership based in Phoenix, Arizona. (Compl. ¶ 11, ECF No. 1 at Pg ID
3.) For this reason, HBI’s selected forum also does not weigh strongly against
transferring the matter to Georgia. Means, 836 F.3d at 651.
HBI already has chosen to litigate far from its home forum and any
inconvenience it would suffer if compelled to litigate in Georgia seems far less
voicemails, however. Notably, those voicemails themselves do not give rise to any
of HBI’s claims.
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 15 of 18
than the inconvenience to Defendants if the case remains in Michigan. HBI is a
multinational corporation. See https://hbiinternational.com/about/. Jillycut, in
comparison, appears to be a one-man business operating from that individual’s
home. (See Compl. ¶ 13, ECF No. 1 at Pg ID 13); https://www.google.com/maps.
See Hernandez v. Graebel Van Lines, 761 F. Supp. 983, 989 (E.D.N.Y. 1991)
(“[W]here a disparity between the parties exists, such as an individual plaintiff
suing a large corporation, the court may also consider the relative means of the
parties in determining whether to transfer”); see also Tensor Group, Inc. v. All
Press Parts & Equip., Inc., 966 F. Supp. 727, 728-29 (N.D. Ill. 1997) (concluding
that the convenience of the parties weighed in favor of transferring a copyright
infringement action from the Northern District of Illinois to the Eastern District of
Wisconsin, because the plaintiff copyright holder was a large corporation that
would not be burdened by litigating in Wisconsin, while the alleged infringer was a
“one-man operation” that would face a great burden if forced to litigate in Illinois).
Defendants do not identify witnesses for whom Georgia would be a more
convenient forum than Michigan. While Defendants are located in Georgia, courts
generally give less weight to the location of a parties’ employees and experts when
weighing this factor. See William M. Yarbrough Found. v. Garcoa Labs., Inc., No.
1:11-cv-907, 2013 WL 4068176, at *5 (W.D. Mich. Aug. 12, 2013) (citing cases);
see also Allstar Mktg., 666 F. Supp. 2d at 1132-33 (collecting cases). HBI
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identifies one witness in Michigan for whom this venue is convenient: John Hood.
Hood, like LLS, is an agent of HBI, however. Thus, the Court must assume that
Hood will attend the trial regardless of whether it is held in this District or Georgia.
Nevertheless, Defendants do not show that the location of willing witnesses favors
The relative ease of access to proof does, however. No evidence appears to
be in Michigan. HBI is located in Arizona and Defendants and their allegedly
infringing products are in Georgia. “[I]n infringement cases, it makes sense that
‘the bulk of the relevant evidence usually comes from the accused infringer.
Consequently, the place where the defendant’s documents are kept weigh in favor
of transfer to that location.” ESPN, Inc. v. Quiksilver, Inc., 581 F. Supp. 2d 542,
548-49 (S.D.N.Y. 2008) (quotations marks and citation omitted); see also Republic
Tech. (NA), LLC v. BBK Tobacco & Foods, LLC, 240 F. Supp. 3d 848, 853 (N.D.
Ill. 2016); New Leaf Data Services, LLC v. PanXchange, Inc., No. 3:20-cv-00204,
2020 WL 5548857, at *7 (D. Conn. Sept. 16, 2020) (finding that this factor favored
the location of where the allegedly infringing website and reports were created and
distributed); Griffin Capital Co. v. Essential Properties Realty Trust, Inc., No.
1:18-cv-4255, 2019 WL 5586547, at *6 (N.D. Ga. Jan. 18, 2019) (collecting
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 17 of 18
Defendants do not address the availability of process to compel the
attendance of unwilling witnesses. HBI argues that the Eastern District of
Michigan can compel the attendance of likely relevant non-party witnesses in
Michigan, which it identifies as eBay, Inc. and PayPal, Inc. HBI provides that both
entities have addresses for service of process filed with the Michigan Secretary of
State in the Eastern District of Michigan. The Court presumes, however, that eBay
and PayPal maintain addresses for service of process with the Georgia Secretary of
State, as well—and most likely every State given their extensive nationwide reach.
Nevertheless, Defendants do not demonstrate that this factor weighs in favor of
transferring the matter to Georgia. Nor do Defendants address and therefore
demonstrate that the cost of obtaining unwilling witnesses favors a transfer of
Turning to the public-interest factors, the Court is not persuaded by
Defendants’ claim that the Georgia courts are conducting far more business
than courts in Michigan during the COVID-19 pandemic. (See Mot. at 10,
ECF No. 24 at Pg ID 549.) Nevertheless, Michigan has no interest in this
controversy, which involves entities in Arizona and Georgia and conduct
that occurred elsewhere. Georgia does. As discussed above, there is no
proof of a Michigan resident being confused by Defendants’ alleged
counterfeit products. While a Michigan court may have more familiarity
Case 1:21-cv-00666-ELR Document 28 Filed 02/16/21 Page 18 of 18
with the Michigan common law and statutory unfair competition claims
alleged in HBI’s Complaint, a federal court in Georgia will have no
difficulty understanding and applying that law.
On balance, the Court concludes that the relevant factors weigh in favor of
transferring this matter to the Northern District of Georgia.
IT IS ORDERED that Defendants’ Motion to Dismiss for Improper Venue
or, in the Alternative, to Transfer Venue (ECF No. 24) is GRANTED IN PART
AND DENIED IN PART in that the matter is not dismissed but shall be
transferred to the District Court for the Northern District of Georgia.
IT IS SO ORDERED.
s/ Linda V. Parker
LINDA V. PARKER
U.S. DISTRICT JUDGE
Dated: February 16, 2021
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