Andrews McMeel Publishing, LLC v. Publications International, Ltd.

Filing 22

ORDER denying (38) motion to reassign/transfer case. in case 4:11-cv-00816-HFS; denying (13) motion to reassign/transfer case. in case 4:11-cv-00419-HFS. Signed on 10/21/11 by District Judge Howard F. Sachs. (Duer, Tina)

IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
ANDREWS MCMEEL PUBLISHING,
LLC,
Plaintiff/Defendant,
v.
PUBLICATIONS INTERNATIONAL,
LTD.,
Defendant/Plaintiff.

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Case No. 11-0419-CV-W-HFS
Case No. 11-0816-CV-W-HFS

ORDER

Publications International, Ltd., defendant in Case No. 11-0419 and plaintiff in Case No. 11816, has moved to transfer these actions to the Southern District of New York (ECF Doc. 13, 38).
Andrews McMeel Publishing, LLC, plaintiff and defendant in the respective cases, opposes transfer.
Having considered the matter, the court will deny the motion.
PIL seeks transfer under 28 U.S.C. § 1404(a),1 which gives district courts discretion to
transfer civil actions “[f]or the convenience of parties and witnesses, in the interest of justice.” AMP
filed its complaint in this district on April 20, 2011 and provided a courtesy copy to PIL’s counsel
before effectuating service on May 20. After it received a copy of AMP’s complaint, PIL filed its

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PIL recites both 28 U.S.C. § 1404(a) and Federal Rule of Civil Procedure 42(a) as the
basis of its request. However, Rule 42(a) pertains to consolidation of actions. PIL refers to these
two actions as consolidated, states that the parties have tentatively agreed to so stipulate, and
indicates that the parties intended to file something to that effect. No such motion has been filed,
and I will not order consolidation without the parties’ request.

complaint in the Southern District of New York. Both actions concern pocket sized puzzle books
that each party publishes, and the complaints allege infringement of trade dress rights and trademark.
AMP filed a motion in the New York case asking that the case be dismissed for improper
venue or transferred to this court. By order dated August 15, Judge Castel of the Southern District
of New York transferred PIL’s action to the Western District of Missouri so that this court could
determine which forum is appropriate to hear both cases. PIL’s motion to transfer followed.
Transfer to another district under Section 1404(a) is possible only if the action could have
been brought in the proposed district. AMP argues that PIL could not have brought the state
common law claims of trademark infringement included in its complaint because it was not
registered to do business in New York at the time PIL filed its federal court action. PIL asserts that
it is now in good standing and active with New York’s Department of State, and that it has cured
any jurisdictional defect. The record does not contain evidence from which I can make this
determination. Assuming for the purposes of this motion that PIL could have brought its action in
the Southern District of New York, PIL now has the burden to overcome the considerable deference
afforded to AMP’s choice of forum and prove that transfer is appropriate.

Janson v.

Legalzoom.com, Inc., 727 F. Supp. 2d 782, 785 (W.D. Mo. 2010). In considering PIL’s motion to
transfer, this court is to “weigh any ‘case-specific factors’ relevant to convenience and fairness”
when considering whether transfer is warranted. In re Apple, Inc., 602 F.3d 909, 912 (8th Cir. 2010)
(citations omitted).
PIL asserts that many convenience factors are neutral as between Missouri and New York,
but that the location and convenience of non-party witnesses make New York the appropriate forum.
AMP vigorously contests the first statement, pointing to a factual misstatement in PIL’s brief

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concerning the party’s respective positions on which state is most convenient.2 Aside from arguing
in favor of non-party witness availability, PIL has demonstrated no way in which New York is more
convenient to either party. It is logical that the evidence related to AMP’s books is located in
Missouri, where its corporate offices are and where defendant Hugh Andrews and witness Melville
reside. Indeed, PIL asserts in its complaint that Hugh Andrews is an owner of AMP, is responsible
for AMP’s day-to-day operations, and personally directed the acts PIL alleges are infringing.
As for non-party witnesses, PIL has not identified individual witnesses – in New York or
elsewhere – who will provide testimony about relevant factual or legal issues. It has not stated what
evidence or testimony will indeed be necessary for this court to consider when applying the
controlling law to the facts. Accordingly, PIL has not met its burden to demonstrate that New York
is an appropriate or more convenient forum.
PIL’s motion to transfer these actions to the Southern District of New York (ECF Doc. 13
in Case 11-419, Doc. 38 in Case 11-816) is DENIED.
SO ORDERED.

/s/ Howard F. Sachs
HOWARD F. SACHS
UNITED STATES DISTRICT JUDGE
October 21 , 2011
Kansas City, Missouri

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PIL writes: “As AMP has previously conceded, litigation in New York is more
convenient for PIL.” AMP states: “AMP previously argued that ‘Clearly, Kansas City would be
more convenient for AMP and Mr. Andrews. Chicago would be more convenient for PIL. New
York is not convenient for either party.”
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