Come Quilt With Me v. Quilt Passions Inc.

Filing 37

MEMORANDUM AND ORDER dated 5/28/13 that the court affirms the April 12, 2013 Order 34 directing that this case be transferred to the District of Hawaii. The Court makes no determination as to plaintiff's motion to amend 35 as that determination will more appropriately be made by the transferee court, which will ultimately preside over this case. ( Ordered by Judge Sandra L. Townes on 5/28/2013 ) (Guzzi, Roseann)

FlLED
IN CLERK'S OFFICE
US tl!STRICT COURT EDN.Y

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK

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MAY 2 9 2013

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BROOKLYN OFFICE

COME QUILT WITH ME,
MEMORANDUM AND ORDER

Plaintiff,
-against-

12-cv-4532 (SLT) (JO)
QUILT PASSIONS, INC,
Defendant.

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------------------------------------------------------------------_.---TOWNES, United States District Judge:
By order to show cause filed September 11, 2012, Come Quilt With Me ("Plaintiff')
applied for a preliminary injunction to prevent Quilt Passions, Inc. ("Defendant") from using a
particular brochure to advertise for a quilting event Defendant was planning in Hawaii. That
same day, Plaintiff filed its complaint, alleging that Defendant engaged in copyright infringement
and unfair competition. Plaintiff alleged that Defendant violated its rights by using a copyrighted
brochure to advertise for its quilting event and by deciding to host a quilting event using a name
and location in Hawaii similar to those used by Plaintiff and Defendant in their jointly organized
quilting retreat in 2012.
On October 11, 2012 this court held a hearing on Plaintiff's application. The court
determined that it had jurisdiction over the parties pursuant to section 301 (a)(3) of the New
York Civil Practice Law and Rules. The court did not, however, reach the ultimate issue of
whether injunctive relief was proper because the parties indicated that, to save time and
resources, they might be able to reach a settlement on their own. That settlement did not
materialize and, on November 19, 2012, Defendant submitted an answer to the complaint.
On March 19, 2013, Magistrate Judge James Orenstein issued an order directing the
parties to show cause why the action should not be transferred to the District of Hawaii

pursuant to 28 U.S.C. § 1404(a), to which both parties responded. Upon considering the
parties' submissions, Judge Orenstein issued a memorandum and order directing that the case
be transferred to the District of Hawaii pursuant to section 1404(a) (the "April 12, 2013 Order).
Presently before the court is Plaintiff's appeal of that order, to which Karen Barry has
responded.'
I. Background
The president of the plaintiff corporation, Pat Yamin, first met Karen and Robert Barry at
a quilting show in Kona, Hawaii in July of 2008. (Complaint 1J10.) Following that meeting, in
February of 2011, Yamin, on behalf of Plaintiff, entered into discussions with the Barrys to host
a jOint retreat of their own in Kailua-Kona, a village on The Big Island in Hawaii. (Id. 111110, 12.)
Although there was no written contract between the parties, it was decided that Yamin would be
the organizer of the event and that the Barrys would sponsor the event. (Id. 1J 10.) Yamin also
created the brochure for the retreat and used pictures produced by a friend of hers. (Id. 11111112.)
The parties held their joint retreat in February of 2012. (Id. 1J 13.) In March of 2012,

The court notes that there has been some confusion as to who the proper defendant or
defendants are this case. Plaintiff initially named Quilt Passions, Inc. as a defendant.
However, at an October 11, 2012 hearing, Defendant's counsel indicated that such an entity
does not exist and that Karen Barry and her husband, Robert, merely do business as Quilt
Passions. (Tr. at 2.) In a letter to the court dated March 18,2013, Defendant's counsel
indicated that his clients did not wish him to take any further action on their behalf and wished
to proceed pro se. (Document No. 28.) Although Defendant's counsel has not made any
offiCial motion to withdraw as counsel and no such permission has been granted, all
subsequent written responses to the court on behalf of Defendant have been submitted by
Karen Barry. On April 29, 2013, Plaintiff filed a motion to amend, seeking to name as
defendants Karen Barry and Robert Barry d/b/a Quilt Passions. (Document No. 35.) However,
in Karen Barry's most recent submission to the court, she indicates that she alone operates
Quilt Passions and that her husband has no proper role in this litigation. (Response to
Plaintiff's Appeal.) In any event, resolution of these issues is not necessary for purposes of
addressing the Plaintiff's appeal. Rather, given that Plaintiff's motion to amend has not yet
been decided, the court uses the name of Defendant included in Plaintiff's original complaint.
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Yamin received a letter from Robert Barry requesting that the parties separate. (Id. 11 14.)
Robert Barry offered Plaintiff $1,000 in contemplation of the separation and also asked for a list
of contacts associated with the quilting retreat as well as an agreement whereby Plaintiff would
relinquish any right to the phrase, "Quilting on the Beach" as well as any plan to hold similar
events in the West Hawaii area of the Big Island of Hawaii. (Id.

1111 14-15.) In response,

Plaintiff, through counsel, requested that the Barrys cease using the phrase "Quilting on the
Beach" and asked them to change the date for their proposed beach retreat to January or
March of 2013 to avoid any confusion with the jOint retreat held by Plaintiff and the Barrys in
February of 2012. (Id. 11 18.) Plaintiff also asked that the Barrys refrain from using the
brochure format in any of their promotional materials. (Id.) The Barrys responded that costs of
creating the event brochure were shared equally by the parties and that they had equal
ownership rights to it. (Id. 1121.) In due course, Plaintiff filed the current lawsuit asserting that
the Barrys had infringed on its copyright in disseminating their brochure for their 2013 Quilting
on the Beach Retreat to be held in Hawaii and that they engaged in unfair competition by
hosting an event in the same area that Plaintiff would be holding its 2013 quilting retreat. (Id.
1133)
II. DISCUSSION
An order to change venue is a non-dispositive order that is reviewed under a "clearly
erroneous or contrary to law" standard. See 28 U.S.C. § 636(b)(1 )(A); FED. R. CIV. P. 72(a);
see also Williams Advanced Materials, Inc. v. Target Tech. Co., LLC, 2007 WL 2245886, at *3
(WD.N.Y. Aug. 1,2007); Shenker v. Murasky, 1996 WL 650974, at *1 (ED. N.Y. Nov. 6,1996);

Pemrick v. Stracher, 1992 WL 697636 (N.D.N.Y. Mar. 27,1992). A magistrate judge's order is
"clearly erroneous" where" 'on the entire evidence,' the [district court] is 'left with the definite
and firm conviction that a mistake has been committed.'" Easley v. Cromartie, 532 U.S. 234,

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243 (2001) (quoting United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948)).
Plaintiff argues that Magistrate Judge Orenstein erred when he determined that transfer
was warranted under 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 to any other
district or division where it mig ht have been broug ht.
See 28 U.S.C. § 1404(a).
In considering a motion to transfer venue under § 1404(a), the threshold inquiry is
whether the action could have been brought in the transferee district. Id.; see also In re Hanger
Orthopedic Group, Inc. Sec. Lit., 418 F. Supp. 2d 164 (E.D.N.Y. 2006). Here, there can be no

dispute that this action "might have been brought" in the District of Hawaii given that, as Judge
Orenstein noted, both Karen Barry and her husband reside in Hawaii. See 28 U.S.C.

§ 1391 (b)(1) (stating that a civil action may be brought in "a judicial district in Which any
defendant resides, if all defendants are residents of the State in which the district is located.").'
Given that Plaintiff's action could have been brought in the transferee district, the court
had to determine whether the convenience of the parties or the interests of justice weigh in
favor of transfer. Among the factors courts typically consider in making that determination are:
(1) the plaintiffs choice of forum, (2) the convenience of witnesses, (3) the location of relevant

2 In an oral decision rendered on October 11, 2012 that does not appear on the docket,
this court concluded that it has jurisdiction over Plaintiff's claims pursuant to New York Civil
Practice Law and Rules § 301 (a)(3). Plaintiff, in its objections to the April 12, 2013 Order,
argues that in light of the court's October 11 order regarding jurisdiction, transfer to the District
of Hawaii is not warranted. However, the fact that this court has jurisdiction over Plaintiff's
action does not necessarily mean that transfer is inappropriate pursuant to 28 U.S.C. § 1404(a).
See Dethier v. Nat'l Liquidators, 2010 WL 991573, at *4 (D. Conn. Mar. 18,2010) ("Where, as
here, the court possesses personal jurisdiction over defendants, the question of venue is
evaluated under the interest of justice standard of 28 U.S.C. § 1404(a)."). And, given that, as
indicated, Plaintiff does not dispute that its action might have been brought in the District of
Hawaii, the court considers whether the conclusion in the April 12, 2013 Order that transfer is
warranted in the interest of justice was clearly erroneous.

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documents and relative ease of access to sources of proof, the convenience of parties, (5) the
locus of operative facts, (6) the availability of process to compel the attendance of unwilling
witnesses, and (7) the relative means of the parties. See D.H. Blair & Co., Inc. v. Gottdiener,
462 F.3d 95, 106-07 (2d Cir. 2006). Motions for transfer lie within the broad discretion of the
courts and are determined upon notions of convenience and fairness on a case-by-case basis.

In re Cuyahoga Equip. Corp., 980 F.2d 110, 117 (2d Cir. 1992); Linzer V. EMI Blackwood Music
Inc., 904 F. Supp. 207, 216 (S.D. N.Y. 1995). The moving party bears the burden of
demonstrating that transfer is warranted. In vivo Research, Inc., 119 F. Supp. 2d at 436.
In the April 12, 2013 Order, Judge Orenstein found that Plaintiff's choice of the Eastern
District of New York "weighs heavily in the balance," but nonetheless concluded that transfer to
the District of Hawaii was warranted. Judge Orenstein found that Hawaii is "necessarily the
location of much of the evidence and the place where the parties will have the easiest access to
sources of proof and the ability to compel the attendance of unwilling witnesses" and that while
Karen and Robert Barry "lack the means to retain private counsel to defend this case in New
York," Plaintiff has the means to travel to Hawaii for business purposes and is therefore
likewise able to afford to litigate its claims there. (April 12, 2013 Order at 2-3.) Plaintiff's only
arguments on appeal concern specific challenges to these grounds.
Plaintiff challenges the April 12, 2013 Order on the basis that Judge Orenstein found
that it has the means to litigate in the District of Hawaii, stating that Yamin will not be able to
sustain her business if she is forced to litigate this matter in Hawaii because she has contracts
for local teaching engagements throughout the year that she cannot break. (PI. Mem. at 16.)
Notwithstanding this assertion, Yamin acknowledged in an affidavit attached to Plaintiff's
memorandum opposing transfer to the District of Hawaii that she occupies a rental home in
Hawaii, that Plaintiff holds an annual retreat in Hawaii, and that 5% of Plaintiff's business is

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derived from Hawaii. (Yamin Aff. at 2.) Moreover, Plaintiff's complaint indicates that Yamin met
the Barrys at a retreat in Hawaii, that the parties chose to conduct their joint retreat in Hawaii,
and that Plaintiff's own 2013 retreat will be held in Hawaii. (Complaint mI 10,13,33.) In
contrast, neither Karen Barry nor her husband Robert have visited New York since beginning
their business, Quilt Passions, in 2007. (See Document No. 30 (Karen Barry Response to
Order to Show Cause).) Thus, the court concludes that Judge Orenstein'S finding that Plaintiff
has better means to litigate in Hawaii than Defendant has to litigate in New York is not clearly
erroneous.
Moreover, in arguing whether Hawaii is the location of relevant evidence and sources of
proof, Plaintiff focuses exclusively on the fact that Yamin created the copyrighted brochure in
New York and all evidence related to its creation are maintained by Plaintiff in New York. (PI.
Mem. at 15.) However, Plaintiff ignores the fact that all of the evidence and sources of proof
related to the creation of the infringing document are located in Hawaii. (See Barry Response.
at 2-3.) As importantly, Plaintiff's assertion that Hawaii contains no relevant evidence is
undermined by its own complaint. In the complaint, Plaintiff states that it is pursuing this action
"to prevent the Defendant's Quilting on the Beach Retreat 2013 (Defendant's Retreat 2013)
from causing confusion with customers that would decrease the Plaintiff's potential revenue
from [its] Quilting in Kona Retreat 2013." (Complaint 1113.) Similarly, Plaintiff asserts that
Defendant was harming its business by advertising for a quilting retreat to be held in "the same
area as the Plaintiff's Retreat of 2013 in the same field." (Complaint 1133.) Given that the
unfair competition Plaintiff complains of arises solely because of two events scheduled to take
place in Hawaii, and is based in part on whether attendees to those events will be confused by
their close proximity, the court concludes that Judge Orenstein's finding that Hawaii is the
location of relevant evidence and sources of proof is also not clearly erroneous.

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Finally, Plaintiff disputes the conclusion in the April 12, 2013 Order that Hawaii will have
the ability to compel unwilling witnesses. In this regard, Plaintiff argues that two of its witnesses
who provided photographs for the copyrighted brochure live in Colorado, which is quite a
distance from both the New York and Hawaii courts, but that New York is more appropriate
because it is slightly less distance from Colorado. (PI. Mem. at 16.) The potential relevance of
these witnesses aside, whatever the distance between Colorado, Hawaii, and New York, it is
clear that these non-party witnesses are not subject to process in either New York or Hawaii.
See FED. R. CIV. P. 45(c}(3)(B)(ii} (limiting to 100 miles district courts' power to compel
non-party witnesses to travel). Thus, the fact that Plaintiff has identified witnesses in Colorado
provides no support for its position that New York is a more convenient forum than Hawaii.
Under these circumstances, and given the "broad discretion" accorded courts in
deciding whether notions of convenience and fairness warrant transfer, the court cannot say
that after considering all of the evidence it is "Ieft with the definite and firm conviction that a
mistake has been committed." Easley, 532 U.S. at 243 (citation omitted). Accordingly, the
court concludes that the April 12, 2013 Order was not clearly erroneous or contrary to law and
that transfer to the District of Hawaii is warranted. In re Cuyahoga Equip. Corp., 980 F.2d at
117; 28 U.S.C. § 636(b)(1)(A}; FED. R. CIV. P. 72(a}.

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III. CONCLUSION

For the reasons set forth above, the court affirms the April 12, 2013 Order [34] directing
that this case be transferred to the District of Hawaii. Accordingly, the court makes no
determination as to Plaintiff's motion to amend [35] as that determination will more appropriately
be made by the transferee court, which will ultimately preside over this case. The Clerk of
Court is respectfully directed to close this case.

/s/(SLT)

SO ORDERED.

to"

(
. SANDRA L. TOWNES

Dated:

United States District Judge

~2~ 2013

Brooklyn, New York

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