LANARD TOYS LIMITED v. TOYS "R" US-DELAWARE,INC. et al

Filing 92

OPINION AND ORDER granting 82 Motion to Transfer Case to Middle District of Florida ***CIVIL CASE TERMINATED. Signed by Magistrate Judge Steven C. Mannion on 6/16/2015. (nr, )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
NOT FOR PUBLICATION
LANARD TOYS LIMITED,

Civil Action No.

Plaintiff,

2:14-1939-SDW-SCM

v.

OPINION AND ORDER ON
DEFENDANTS’ MOTION TO
TRANSFER VENUE [D.E. 82]

TOYS “R” US-DELAWARE, INC.,
DOLGENCORP, LLC, and JA-RU,
INC.,
Defendants.
I.

INTRODUCTION
This matter comes before the Court upon defendants Toys “R”

Us-Delaware,
(collectively

Inc.,

Dolgencorp,

“Defendants’”)

LLC,

motion

to

and

transfer

Ja-Ru,
venue

Inc.
to

the

Middle District of Florida (ECF Docket Entry No. (“D.E.”) 82).
The Honorable Susan D. Wigenton, U.S.D.J., referred the motion
to

the

undersigned

for

disposition

Civil Rule 72.1(a)(1). (D.E. 91).
Upon

consideration

of

the

in

accordance

with

Local

There was no oral argument.

parties'

submissions

and

for

the

reasons set forth herein, Defendants' motion to transfer venue
is GRANTED.

1

II.

BACKGROUND
This

is

unauthorized

an

action

copying

arising

and

use

out

of

of

a

Defendants’

distinctive

alleged

chalk

holder

design embodied in toy products sold by Plaintiff Lanard Toys
Limited

(“Plaintiff”

or

“Lanard”).

Plaintiff

is

a

Compl.).

throughout the world.

See

manufacturer

Id. at ¶6.

(D.E.

and

61,

seller

Amended
of

toys

Defendant, Ja-Ru Inc. (“Ja-

Ru”), is a manufacturer, seller and importer of toys in the
United States and worldwide.

Id. at ¶9.

Defendant, Toys-R-Us

Delaware (“Toys ‘R’ Us”), is a large toy retailer, with stores
throughout the United States, including in New Jersey.
¶7.

Id. at

Defendant, Dolgencorp, LLC (“Dolgencorp”), is a distributor

for Dollar General Corporation, which is a retailer with stores
in 40 states.
accused

Id. at ¶8.

product,

Dolgencorp

and

and

Toys

its
‘R’

Ja-Ru designed and developed the
affiliate,

Us.

See

Ja-Ru

Decl.

of

HK,

sold

it

Russell

to

Selevan

(“Selevan Decl.”) at ¶¶6 and 8 (D.E. 86).
Plaintiff brought this action against all three defendants
for

unfair

competition,

infringement.
2010,

copyright,

See (D.E. 61).

Plaintiff’s

designers

patent,

and

trade

dress

According to the Complaint, in

developed

“a

unique

and

original

chalk holder — a device that can hold pieces of colored chalk to
allow

children

to

draw

outdoors.”

Id.

at

¶11.

Plaintiff

published its work and obtained a copyright and a design patent
2

on its product.1

Id. at ¶¶13-14.

Plaintiff alleges that Ja-Ru

manufactured and supplied chalk pencil products for Toys R-Us
and

Dolgencorp

that

copy

the

protectable

expression

in

Plaintiff’s design, are substantially similar to the design in
Plaintiff’s design patent, and embody trade dress confusingly
similar to Plaintiff’s chalk pencil trade dress.

Id. at ¶¶ 21,

23, 24 and 26-29.
Plaintiff is a Hong Kong company with its principal place
of business in Hong Kong.

Id. at ¶6.

Ja-Ru is a Florida

corporation with its principal place of business in Florida.
Id. at ¶9.

Toys ‘R’ Us is a Delaware corporation with its

principal place of business in New Jersey. (D.E. 61, Amended
Compl. at ¶7).
Kentucky.
Ja-Ru

Dolgencorp is a limited liability company in

Id. at ¶8.
designed

and

developed

the

accused

product

in

Florida, and the artwork, tangible things, and documents related
to

the

development

and

design

of

the

maintained at Ja-Ru’s offices in Florida.
Decl. at ¶¶ 6 and 18).

accused

product

are

See (D.E. 86, Selevan

Ja-Ru’s affiliate, Ja-Ru HK, sold the

accused product to Dolgencorp and Tru-D.

Id. at ¶8.

Toys ‘R’

Us sold the accused product in its retail stores throughout the
United States.

See (D.E. 84, Decl. of Kimberly Mayben (“Mayben

1

As of the date the Complaint was filed, a second design patent was expected
to issue on April 1, 2014, as U.S. Design Patent No. D701, 902.

3

Decl.”) at ¶5).

Dolgencorp sold the accused product throughout

the United States.

See (D.E. 85, Decl. of Robert Stephenson

(“Stephenson Decl.”) ¶6).

III. DISCUSSION & ANALYSIS
A. § 636, Magistrate Judge Authority
A

motion

to

transfer

a

case

to

another

district

is

considered a non-dispositive motion, which may be decided by a
magistrate

judge

pursuant

to

28

U.S.C.

§

636(b)(1)(A).

See

Siemens Fin. Servs., Inc. v. Open Advantage M.R.I. II L.P., No.
07-1229, 2008 U.S. Dist. LEXIS 15623, 2008 WL 564707, at *2
(D.N.J. Feb. 29, 2008).

Further, the decision to grant or deny

an application for transfer is discretionary.

Cadapult Graphic

Sys. v. Tektronix, Inc., 98 F. Supp. 2d 560, 564 (D.N.J. 2000).
Consequently, if such a decision is appealed, the district court
must affirm the decision unless it is "clearly erroneous or
contrary to law." See Marks v. Struble, 347 F. Supp. 2d 136, 149
(D.N.J. 2004).

B. § 1404, Venue Transfer
Defendants move to transfer venue to the Middle District of
Florida pursuant to 28 U.S.C. § 1404(a), which provides:
For
the
convenience
of
parties
and
witnesses, in the interest of justice, a
district court may transfer any civil action
4

to any other district or division where it
might have been brought.
“The purpose of §1404(a) is to avoid the waste of time,
energy

and

money

and,

in

addition,

to

safeguard

litigants,

witnesses, and the public against avoidable inconvenience and
expense.”
481,

Rappoport v. Steven Spielberg, Inc., 16 F. Supp. 2d

497

flexible

(D.N.J.
and

1998).

Transfer

individualized,

court’s determination.

with

analysis
no

rigid

under
rule

§

1404

governing

is
a

See Ricoh Co. v. Honeywell, Inc., 817 F.

Supp. 473, 479 (D.N.J. 1993) (citing Stewart Org., Inc. v. Ricoh
Corp., 487 U.S. 22, 29-30 (1988)); Selective Ins. Co. v. Food
Mktg.

Merch.,

(D.N.J.

May

omitted).

Inc.,
16,

No.

2013)

13-cv-193,
(internal

2013

WL

citations

2149686,
and

at

*3

quotations

A § 1404 analysis “turns on the particular facts of

the case.”

NCR Credit Corp. v. Ye Seekers Horizon, Inc., 17 F.

Supp. 2d 317, 320 (D.N.J. 1998).
As a threshold matter, this Court must determine whether
this

action

could

have

been

properly

brought

in

the

Middle

District of Florida. See LG Elecs. Inc. v. First Int'l Computer,
138 F. Supp. 2d 574, 586 (D.N.J. 2001)(explaining that under
section 1404(a), an action may be transferred to a district
“where the action might have been brought for the convenience of
parties and witnesses and in the interest of justice”).

5

Venue

is

proper

in

“a

judicial

district

in

which

a

substantial part of the events or omissions giving rise to the
claim occurred.”

28 U.S.C. § 1391(a)(2).

subsection

(a)(2)

require

majority

a

is

satisfied,
of

the

the

events

To determine whether

Third
to

Circuit

take

“does

place

not

[in

the

district], nor that the challenged forum be the best forum for
the lawsuit to be venued.”

See Park Inn International, L.L.C.,

105 F. Supp. 2d at 376 (citing Cottman Transmission Sys., Inc.
v. Martino, 36 F.3d 291, 294 (3d Cir. 1994)).

“The statute only

requires a ‘substantial part’ of the events to have occurred in
the District to establish venue.”
In
action

this

action,

“might

have

Florida.

Plaintiff

been

Id.
does

brought”

not

in

dispute

the

whether

the

Middle

District

of

The action concerns the unauthorized copying and use

of a design, whereby the research and development of the accused
product
Florida.

embodying

the

allegedly

copied

design

took

place

in

Thus, the events giving rise to the copyright, design

patent, and trade dress infringement claims, i.e., the research
and development of the accused products, largely took place in
Florida,
§

and

1391(a)(2).

Florida

is

venue

there

is

Jurisdiction

proper

because

proper
over

all

personal jurisdiction there.

of

pursuant
the

to

all

of

the

defendants

28

U.S.C.

defendants
consent

in
to

Therefore, the action may have

6

been brought in the Middle District of Florida, and the first
step of the § 1404 transfer analysis is satisfied.
Next

we

turn

to

whether

transfer

is

appropriate.

In

analyzing a request to transfer venue, courts have not limited
consideration to the factors enumerated in § 1404(a). See Jumara
v.

State

Farm

Rather,

courts

whether

on

proceed

and

transfer

to

Ins.

55

"consider

balance
the
a

Co.,

the

all

873,

relevant

litigation

interests

different

F.3d

of

Id.

(3d

factors

would

justice

forum."

879

be

Cir.
to

more

determine

conveniently

better

(internal

1995).

served

citations

by
and

quotation marks omitted).
Depending on the facts of case, particular factors may be
more critical to a court’s analysis than others.

See e.g., Days

Inn Worldwide, Inc. v. Ram Lodging, LLC, No. 09-2275 (SDW), 2010
W.L.

1540926

at

*6

(D.N.J.

April

14,

2010)(Wigenton,

J.)(discussing that factor of “where the claims arose” is the
most critical to the analysis and granting motion to transfer).
The Jumara Court established factors in two categories to assist
a court’s analysis of a motion to transfer: private interests
and public interests. Id.
In examining the private interests, courts should look to
the following factors: (1) the plaintiff's forum preference; (2)
the

defendant's

preference;

(3)

whether

the

claim

arose

elsewhere; (4) the convenience of the parties indicated by their
7

relative physical and financial condition; (5) the convenience
of witnesses; and (6) the location of books and records relevant
to the dispute. Id.
unless

the

witnesses

The last two factors are not relevant
and/or

records

would

be

unavailable

at

trial in one of the two fora. Id.
When

considering

the

public

interests,

courts

are

instructed to analyze: (1) the enforceability of the judgment;
(2) practical concerns that could reduce the time and expense
necessary

to

resolve

the

claims

at

issue;

(3)

the

relative

administrative difficulty in the two fora resulting from court
congestion; (4) the local interest in deciding controversies at
home;

(5)

the

public

policies

of

the

fora;

and

(6)

the

familiarity of the trial judge with the applicable state law in
diversity cases.

Id. at 879-80.

The moving party bears the burden of proving the need for
transfer. LG Elecs. v. First Int'l Computer, 138 F. Supp. 2d
574, 586 (D.N.J. 2001).

The party seeking to transfer must show

that the alternative venue is not only adequate, but also more
convenient than the current one.

Jumara, 55 F.3d at 879; Ricoh

Co., Ltd. v. Honeywell, Inc., 817 F. Supp. 473, 480 (D.N.J.
1993).

This burden is a heavy one; as the Third Circuit has

noted, "unless the balance of convenience of the parties is
strongly in favor of defendant, the plaintiff's choice of forum

8

should prevail."

Shutte v. Armco Steel Corp., 431 F.2d 22, 25

(3d Cir. 1970).
The
transfer

balance

of

of

matter:

this

private
(1)

and
The

public
center

factors
of

here

gravity

compel
of

this

dispute is in the Middle District of Florida where the accused
product was designed and developed;2 (2) Plaintiff’s chosen forum
is

not

entitled

to

much

deference

under

the

circumstances

presented;3 (3) all three defendants seek to litigate the case in

2

The operative facts in design patent, copyright and trade dress infringement
cases relate to the design, development, and production of the allegedly
infringing product. CYI, Inc. v. Ja-Ru, Inc., et al, 913 F. Supp. 2d 16, 19
(S.D.N.Y. 2012) (discussing design patent and copyright infringement cases);
Mola, Inc. v. Kacey Enters., LLC, 2011 WL 3667505, at *8-9 (W.D.N.Y. Aug. 21,
2011) (discussing trade dress infringement cases); see, e.g., AB Coaster
Holdings, Inc. v. Icon Health & Fitness, Inc., No. 10-cv-06760, 2011 WL
6887724 (D.N.J. Dec. 29, 2011) (examining defendant’s design and creation of
plans for accused product in patent infringement case). Examining the design
and development of an accused product makes logical sense in trade dress
infringement cases, as “[t]rade dress refers to the design or packaging of a
product which serves to identify the product’s source.” See Buzz Bee Toys,
Inc. v. Swimways Corp., 20 F. Supp. 3d 483, 496 (D.N.J. 2014) (quoting Shire
U.S. Inc. v. Barr Labs, Inc., 329 F.3d 348, 353 (3d Cir. 2003)).
Moreover, the potentially infringing activities of Toys ‘R’ Us in selling the
accused product occurred all over the United States. “[W]here a party’s
products are sold in many states, sales alone are insufficient to establish a
material connection to the forum and to override other factors favoring
transfer.” CYI, Inc., 913 F. Supp. 2d at 20-21 (quotations omitted).
3

Even though Plaintiff chose New Jersey as its forum, “choice of forum by a
plaintiff is simply a preference; it is not a right.” Hoffer v.
InfoSpace.com, Inc., 102 F. Supp. 2d 556, 573 (D.N.J. 2000). Plaintiff’s
choice of forum here is also accorded less deference because New Jersey is
not Plaintiff’s home forum. See U.S. Mineral Products Co. v. T-Mar Constr.,
No. 09-cv-5895, 2010 WL 703190, at *3 (D.N.J. Feb. 23, 2010) (citing Lony v.
E.I. Dupont de Nemours & Co., 886 F.2d 628, 633 (3d Cir. 1989) (discussing
that because the convenience to the parties is a central purpose for
transferring a case, a foreign plaintiff’s choice deserves less deference)).
Moreover, a plaintiff’s choice deserves little deference when the chosen
forum has little connection to the facts underlying the claims. See Wm. H.
McGee & Co. v. United Arab Shipping Co., 6 F. Supp. 2d 283, 290 (D.N.J.
1997). Plaintiff’s only connection to New Jersey is that Defendant Toys ‘R’
Us, has its principal place of business here. See National Property
Investors v. Shell Oil Co., 917 F. Supp. 324, 327 (D.N.J. 1995) (affording

9

Florida which is entitled to deference as the center of gravity
in the case; (4) requiring Plaintiff to litigate in the Middle
District of Florida, rather than in New Jersey, will only create
a

small

inconvenience

to

the

Plaintiff

whose

representatives

will need to travel internationally to either forum; (5) the
artwork

and

tangible

things

related

to

the

design

and

development of the accused product, which cannot be duplicated
electronically, are located in Florida; (6) the majority of the
fact

witnesses

and

key

evidence

concerning

the

design

and

development of the accused product, are located in Florida; (7)
the interest in deciding local controversies at home also favors
transfer;4 and (8) “New Jersey jurors should not be burdened with
adjudicating

a

matter

concerning

decisions

and[/]or

conduct

which occurred predominantly outside the State of New Jersey.”
Tischio v. Bontex, Inc., 16 F. Supp. 2d 481, 526 (D.N.J. 1998).
Thus,

taking

the

private

interest

factors

and

the

public

plaintiff’s choice of a foreign forum little weight where the only connection
Plaintiff had to New Jersey was that New Jersey was the defendant’s principal
place of business). However, the potentially infringing activities of Toys
‘R’ Us in selling the accused product occurred all over the United States.
“[W]here a party’s products are sold in many states, sales alone are
insufficient to establish a material connection to the forum and to override
other factors favoring transfer.” CYI, Inc. v. Ja-Ru, Inc., 913 F. Supp. 2d
at 20-21 (quoting Mola, 2011 WL 3667505, at *9).
4

“When both states have an interest in protecting its citizens, courts in
this District have found the balance to tip in favor of the State that was
found to be the center of gravity of the actions giving rise to the
litigation.” Allied Old English, Inc. v. Uwajimaya, Inc., et al., No. 111239, 2012 W.L. 3564172 at *7 (D.N.J. Aug. 16, 2012).

10

interest

factors

together,

transferring

venue

to

the

Middle

District of Florida is appropriate under § 1404(a).

IV.

CONCLUSION
On

balance,

the

Jumara

factors

favor

transfer

and

Defendants have met their burden in demonstrating that transfer
is proper under 28 U.S.C. § 1404(a).

The Court finds that

transfer is appropriate in the interests of justice.
For the foregoing reasons,
IT IS on this Tuesday, June 16, 2015,
1. Ordered that Defendants’ Motion to Transfer (D.E. 82) is
GRANTED; and it is further
2. Ordered that the Clerk of the Court shall transfer this
action to the Middle District of Florida.

6/16/2015 4:57:54 PM

Original: Clerk of the Court
Hon. Susan D. Wigenton, U.S.D.J.
cc: All parties
File
11