Ascension Health Alliance v. Ascension Insurance, Inc.

Filing 39

MEMORANDUM AND ORDER. (See Full Order.) IT IS HEREBY ORDERED that Defendant Ascension Insurance's motion to transfer [# 18 ] is denied. Signed by District Judge Catherine D. Perry on 10/13/2015. (CBL)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
ASCENSION HEALTH ALLIANCE,
a Missouri non-profit corporation,
Plaintiff,
vs.
ASCENSION INSURANCE, INC.,
Defendant.

)
)
)
)
)
) Case No. 4:15CV283 CDP
)
)
)
)

MEMORANDUM AND ORDER
This case arises out of the alleged infringement of plaintiff Ascension Health
Alliance’s trademark by defendant Ascension Insurance, Inc. Defendant seeks to
have the action transferred to the Northern District of California under 28 U.S.C.
§ 1404(a). Because Defendant has not shown that a transfer would benefit the
convenience of the parties and witnesses or promote the interests of justice, I will
deny the motion to transfer.
Background
Plaintiff Ascension Health is a nonprofit corporation organized under
Missouri law, with its principal place of business in St. Louis, Missouri. It has
operated since 1999 and provides Catholic and non-profit healthcare throughout
the United States. These services include financial and insurance services under

the Ascension name. Plaintiff has several registered trademarks that incorporate
the word “Ascension.”
Defendant Ascension Insurance is a corporation organized under the laws of
Delaware. Its principal place of business is now Walnut Creek, California, but at
some of the relevant time periods it was based in either Kansas City, Missouri or
Overland Park, Kansas. In 2007, Defendant began using the “Ascension” moniker
in its insurance business.
Discussion
Federal courts generally give “considerable deference to a plaintiff’s choice
of forum, and thus the party seeking a transfer under § 1404(a) typically bears the
burden of proving that a transfer is warranted.” Terra Int’l v. Miss. Chem. Corp.,
119 F.3d 688, 695 (8th Cir. 1997); Biometics, LLC v. New Womyn, Inc., 112
F. Supp. 2d 869, 875 (E.D. Mo. 2000). The party seeking transfer is required to
make a “clear showing that the balance of interests weighs in favor of the proposed
transfer, and unless that balance is strongly in favor of the moving party, the
plaintiff’s choice of forum should not be disturbed.” May Dep’t Stores Co. v.
Wilansky, 900 F. Supp. 1154, 1166 (E.D. Mo. 1995); Houk v. Kimberly-Clark
Corp., 613 F. Supp. 923, 927 (E.D. Mo. 1985). A transfer that would merely shift
the inconvenience from one party to another should not be granted. Houk, 613
F. Supp. at 928; Anheuser-Busch, Inc. v. All Sports Arena Amusement, Inc., 244 F.
Supp. 2d 1015, 1022 (E.D. Mo. 2002).
-2-

By its terms, § 1404(a) sets out three broad categories of interests that must
be considered in ruling on a motion to transfer: (1) the convenience of the parties;
(2) the convenience of the witnesses; and (3) the interests of justice. Terra Int’l,
119 F.3d at 691. Of these, convenience of the witnesses is considered a primary, if
not the most important, consideration. Biometics, 112 F. Supp. 2d at 876; May
Dep’t Stores, 900 F. Supp. at 1165. A court is not limited, however, to just these
enumerated factors. Determinations under § 1404(a) require a “case-by-case
evaluation of the particular circumstances at hand and a consideration of all
relevant factors.” Terra Int’l, 119 F.3d at 691. The “myriad of factors” which may
be considered include access to sources of proof, availability of compulsory
process for witnesses, expenses attendant to the production of witnesses, the
governing law, the possibility of delay and prejudice if a transfer is granted, and
the relative advantages and obstacles to a fair trial. May Dep’t Stores, 900 F. Supp.
at 1165; Houk, 613 F. Supp. at 927; Woolridge v. Beech Aircraft Corp., 479
F. Supp. 1041, 1057 (W.D. Mo. 1979). Various “public factors” which can be
considered in the interest of justice include “the administrative difficulties flowing
from court congestion, the local interest in having localized controversies decided
at home, . . . the avoidance of unnecessary problems in conflict of laws, and the
unfairness of burdening citizens in an unrelated forum with jury duty.” Piper
Aircraft v. Reyno, 454 U.S. 235, 241 (1981). While considering all relevant factors

-3-

in the circumstances of this particular case, I turn now to the three broad categories
of interests set forth in § 1404(a).
Convenience of the Parties
Courts give less weight to the plaintiff’s choice of forum when the operative
facts occurred in another forum. See Biometics, LLC, 112 F. Supp. 2d at 877 (“The
Court therefore gives less deference . . . than it would if . . . defendants’ allegedly
infringing activity was centered here.”). Defendant argues that the operative
events occurred in the Northern District of California because, it says, that is where
it made the decision to begin its “rebranding” efforts using the Ascension name. It
admits that it began using the Ascension name nationally in 2007. Plaintiff alleges
that Defendant moved to California after it began using the Ascension mark and
cites to a number of filings showing that Defendant had a corporate presence in
Overland Park, Kansas, as recently as March 2014. See U.S. Patent and
Trademark Office, Wordmark: A Ascension, ECF No. 28-3 (listing Overland Park
as the applicant’s address on filing dated March 4, 2014); see also See U.S. Patent
and Trademark Office, Wordmark: Ascension Benefits & Insurance Solutions,
ECF No. 28-2 (listing applicant’s address at Kansas City, Missouri on August 14,
2012 application). On the record before me I cannot say that all the operative facts
took place in California.

-4-

Each side argues that its documentary and physical evidence is located in its
desired forum. As a result, this consideration is neutral, and in any event, I expect
that much of the documentary evidence is stored electronically.
Defendant believes that transfer would be more convenient because of its
presence in California and because Plaintiff has affiliate hospitals in that state.
However, the existing presumption in favor of the plaintiff’s choice of forum is
given greater weight when the plaintiff is a resident of the forum in which suit is
brought. Waterway Gas & Wash Co. v. OneBeacon Am. Ins. Co., No. 4:09-CV2121 (CEJ), 2010 WL 3724854, at *2 (E.D. Mo. Sept. 16, 2010) (citing Houk, 613
F. Supp. at 927). In this case, the convenience of the parties remains in favor of
Plaintiff, which maintains its principal place of business in this forum.
Interests of Justice
Next, I gauge whether considerations of justice and fairness favor a transfer
to the Northern District of California. Both potential venues are equally capable of
applying federal trademark law, and so this factor remains neutral. Defendant
argues that because it is based in California, that state has a strong interest in
deciding the matter. However, the state where the intellectual property owner is
located typically has a great interest in adjudicating an intellectual property
dispute. Anheuser-Busch, Inc. v. City Merch., 176 F. Supp. 2d 951, 958 (E.D. Mo.
2001) (evaluating issue in context of personal jurisdiction). Plaintiff is located in

-5-

Missouri and owns the trademark that is the subject of this infringement action,
and so this factor disfavors transfer.
Convenience of the Witnesses
Finally, I turn to the convenience of the witnesses. As noted previously,
convenience of the witnesses is a “primary, if not the most important”
consideration when ruling on a motion to transfer venue. Biometics, 112 F. Supp.
2d at 876; May Dep’t Stores, 900 F. Supp. at 1165. “[S]heer numbers of witnesses
will not decide which way the convenience factor tips.” Terra Int’l, 119 F.3d at
696.
Defendant identifies in its reply brief a list of potential non-party witnesses
who are California residents. Though it is possible that these potential witnesses
are highly important to Defendant’s case, Defendant has made no showing that any
of these witnesses will not testify in Missouri. Although Defendant notes that
some of its customer-witnesses have agreed to testify, it protests that “it will be
extremely difficult for Defendant to ask its customers to travel to Missouri to
testify.” Notably, Defendant does not state whether it has actually asked any
witness whether she would be willing to testify in Missouri.
Even assuming that some or all of these nonparty witnesses are essential to
the resolution of this dispute,1 Defendant has not made any showing that its

1

Defendant’s own filings place this proposition into doubt. Defendant claims that it is
imperative that its customers testify, but Defendant also states that it does some business in the
Eastern District of Missouri. Edward Nathan Page Decl., ECF No. 19-1 at ¶ 11 (“Although

-6-

witnesses could not be made available by deposition or other means.2 This failure
weighs against transfer. Cf. Maritz Inc. v. C/Base, Inc., No. 4:06-CV-761 CAS,
2007 WL 6893019, at *12-13 (E.D. Mo. Feb. 7, 2007).
The Court acknowledges that non-party witnesses would be inconvenienced
if they have to travel. However, the specter of this inconvenience is not sufficient
to override the other considerations of the Court. As noted above, the party
seeking transfer must overcome a heavy burden. See May Dep’t Stores, 900 F.
Supp. at 1166. Defendant has not met that burden.
Accordingly,
IT IS HEREBY ORDERED that Defendant Ascension Insurance’s motion
to transfer [# 18] is denied.

CATHERINE D. PERRY
UNITED STATES DISTRICT JUDGE
Dated this 13th day of October, 2015.

[Defendant]’s products and services are sold throughout the United States, less than 1% of sales
occurred in the Eastern District of Missouri.”). Defendant has not said whether its local
customers are unavailable to testify on its behalf. Defendant also claims that third-party
marketing individuals are essential to its case. However, in its Answers to Interrogatories,
Defendant stated that its own employees are primarily responsible for marketing, advertising,
and promotion of all products or services offered under its Marks. Registrant’s Resp. to Pet’rs’
1st Interrogs., ECF No. 28-5 at p.6 & ¶ 7.
2
This Court has had some success with the appearance of a witness at trial by video conference.

-7-