Caldwell v. Slip-N-Slide Records, Inc. et al

Filing 37

OPINION AND ORDER (re: 11 MOTION to Change Venue. filed by Slip-N-Slide Records, Inc., 29 MOTION for Joinder in Slip-N-Slide's. MOTION to Transfer Case. filed by Algernod Lanier Washington). The facts and parties in this case have little t o no connection to New York. In weighing all the factors, the Court concludes that Defendants have met their burden of persuasion. The inconvenience to Defendants and their witnesses ofproceeding in this Court outweigh any deference given to the for eign Plaintiff's choice of forum. The interest of justice is best served by transferring this case to the Southern District of Florida, and therefore Defendants' motion to transfer venue [Docket Nos. 11, 29 36] is GRANTED.(Signed by Judge John F. Keenan on 7/26/11) (djc)

Case 1:09-md-02013-PAC Document 57

Filed 09/30/10 Page 1 of 45
USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #: _________________
DATE FILED: 7-26-11

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
------------------------------X
ROMELL CALDWELL,
:
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK :
Plaintiff,
:
-----------------------------------------------------------x
-against- 2008 SECURITIES :
In re FANNIE MAE
:
08 Civ. 7831 (PAC)
:
LITIGATION
:
09 MD 2013 (PAC)
SLIP-N-SLIDE RECORDS, INC.,
:
No. 10 Civ. 9106 (JFK)
:
ALGERNOD LANIER WASHINGTON,
:
Opinion and Order
:
OPINION & ORDER
a/k/a PLIES, LONNIE LOVE,
:
-----------------------------------------------------------x
d/b/a UDIGG RECORDS AND UDIGG :
MUSIC GROUP, and 101
:
DISTRIBUTION, LLC,
:
:
HONORABLE PAUL A. CROTTY, United States District Judge:
Defendants.
:
------------------------------X
APPEARANCES:
BACKGROUND1
For Plaintiff:
The early years of this decade saw
Danial A. Nelson, Esq. a boom in home financing which was fueled, among
Kevin P. McCulloch, Esq.
other things, by lowMcCULLOCH and lax credit conditions. New lending instruments, such as
NELSON & interest rates LLP
subprime mortgages (high credit risk loans) and Alt-A mortgages (low-documentation loans)
For Defendant Slip-N-Slide Records:
Jonathan D. Davis, Esq.
kept the boom going. Borrowers played a role too; they took on unmanageable risks on the
Richard C. Wolfe, Esq.
assumption that the market would continue to rise and that refinancing options would always be
EHRENSTEIN CHARBONNEAU CALDERIN
available in the future. Lending discipline was lacking in the system. Mortgage originators did
For Defendant Algernod Lanier Washington:
Christopher B. Spuches, Esq.
not hold these high-risk mortgage loans. CALDERIN carry the rising risk on their books, the
EHRENSTEIN CHARBONNEAU Rather than
originators sold their loans into the secondary mortgage market, often as securitized packages
For Defendant 101 Distribution:
Gregory O. Koerner, Esq.
knownTANNENBAUM HELPERN SYRACUSE & MBS markets grewLLP exponentially.
as mortgage-backed securities (“MBSs”). HIRSCHTRITT almost
But then the housing bubble burst. District Judge:
JOHN F. KEENAN, United States In 2006, the demand for housing dropped abruptly
and home prices began Court In light of the changing housing market,Records, Inc.
Before the to fall. is Defendant Slip-N-Slide banks modified their
lending practices and became unwilling to refinance (“Plies”), without refinancing.
(“SNS”), Algernod Lanier Washington home mortgages and 101
Distribution LLC’s (“101 Distribution”) motion to transfer venue
1

Unless otherwise indicated, all references cited as “(¶ _)” or to the “Complaint” are to the Amended Complaint,
dated June 22, 2009. For purposes of this Motion, all allegations in the Amended Complaint are taken as true.

1 

1

to the Southern District of Florida pursuant to 28 U.S.C. §
1404(a).

For the reasons that follow, the motion is granted.
I.

Background

Plaintiff Romell Caldwell (“Caldwell” or “Plaintiff”)
alleges that in 2001 he created the musical composition and
sound recording of a song entitled “Dim Hits,” which he later
registered with the United States Copyright Office.
9-10).

(Compl. ¶¶

In 2004, Caldwell gave a copy of “Dim Hits” to a

vocalist known as Trina, who has a recording contract with the
Defendants.

(Id. ¶¶ 11-12).

In 2008, Plaintiff discovered that

the Defendants had allegedly copied “Dim Hits,” without his
permission, and incorporated it into a song titled “Bond Money.”
(Id. ¶ 13).

Plaintiff also alleges that the Defendants have

distributed “Bond Money” on several albums, web sites, and other
outlets throughout the United States.

(Id. ¶ 14).

None of the parties have demonstrated ties to this forum.
Plaintiff is a resident of Charlotte, North Carolina.
3).

SNS is a Florida corporation that “promotes, develops,

markets and manages recording artists.”
2).

(Compl. ¶

(Decl. of Ted Lucas ¶

SNS’ principal place of business and sole office is in

Miami Beach, Florida.

(Id. ¶ 3).

agent, or employees in New York.

SNS does not have an office,
(Id. ¶ 4).

The song “Bond

Money” was purportedly written and recorded in Florida.

2 

(Def.

Mem. in Supp. of Transfer, at 1).

Plies is a Florida resident,

and 101 Distribution is a Phoenix, Arizona limited liability
company.

Defendant Lonnie Love is an Atlanta, Georgia resident.

(Compl. ¶¶ 5-7).
The two Florida Defendants, SNS and Plies, along with 101
Distribution, now move to transfer this case to the Southern
District of Florida.

101 Distribution joins in Plies’ motion

but asserts no independent grounds for transfer.

Lonnie Love

has not been served.
II.

Discussion

“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 might have
been brought.”

28 U.S.C. § 1404(a).

On such a motion, the

moving party must make a “clear and convincing” showing that
transfer under § 1404(a) is proper.

Atl. Recording Corp. v.

Project Playlist, Inc., 603 F. Supp. 2d 690, 695 (S.D.N.Y.
2009); see Frame v. Whole Foods Market, Inc., No. 06 Civ. 7058,
2007 WL 2815613, at *4 (S.D.N.Y. Sept. 24, 2007).

“Motions for

transfer lie within the broad discretion of the district court
and are determined upon notions of convenience and fairness on a
case-by-case basis.”

Frame, 2007 WL 2815613, at *4 (citing In

re Cuyahoga Equip. Corp., 980 F.2d 110, 117 (2d Cir. 1992)).

3 

“The inquiry on a motion to transfer venue is two-fold.
First, the district court must determine whether the case could
have been brought in the proposed transferee district.”

Id.;

see also Herbert v. Elec. Arts, Inc., 325 F. Supp. 2d 282, 285
(S.D.N.Y. 2004); In re Nematron Corp. Secs. Litig., 30 F. Supp.
2d 397, 400 (S.D.N.Y. 1998).

If the court determines that the

case could have been originally brought in the proposed
transferee district, the court must next balance several factors
to determine whether the transfer is appropriate.

See Frame,

2007 WL 2815613, at *4; Herbert, 325 F. Supp. 2d at 285-86; In
re Nematron, 30 F. Supp. 2d at 400.

These factors include: (1)

convenience of witnesses; (2) convenience of the parties; (3)
location of relevant documents and the relative ease of access
to sources of proof; (4) the locus of the operative facts; (5)
the availability of process to compel the attendance of
unwilling witnesses; (6) the relative means of the parties; (7)
the comparative familiarity of each district with the governing
law; (8) the weight accorded to plaintiff’s choice of forum; and
(9) judicial economy and the interests of justice.

See Johnson

& Johnson Vision Care, Inc. v. CIBA Vision Corp., No. 04 Civ.
7369, 2004 WL 2314424, at *1 (S.D.N.Y. Oct. 13, 2004); Capitol
Records, Inc. v. Kuang DYI Co. of RM, No. 03 Civ. 0520, 2004 WL
405961, at *3 (S.D.N.Y. Mar. 4, 2004); Prudential Secs. Inc. v.

4 

Norcom Dev., Inc., No. 97 Civ. 6308, 1998 WL 397889, at *3
(S.D.N.Y. July 16, 1998).
A.

Could Original Case Have Been Brought In Florida?

Venue in a federal copyright case lies “in the district in
which the defendant or his agent resides or may be found.”
U.S.C. § 1400(a).

28

“It is well established that a defendant ‘may

be found’ in any district in which he is amenable to personal
jurisdiction; thus venue and jurisdiction are co-extensive.”
Capitol Records, 2004 WL 405961, at *1.
SNS and Plies reside in Florida, and therefore are subject
to personal jurisdiction there.

101 Distribution, an Arizona

corporation, may have conducted business in Florida, and
therefore likely has sufficient connection to the forum.
Plaintiff does not challenge the fact that this matter could
have originally been brought in the Southern District of
Florida.
B.

Factor Test

When weighing all the factors “[t]here is no rigid formula”
and “no single one of them is determinative.”

Chiste v.

Hotels.com L.P., 756 F. Supp. 2d 382, 400 (S.D.N.Y. 2010)
(internal citation omitted).

However, the “weight accorded a

plaintiff’s forum choice affects the burden that a defendant
must meet on the other factors.”

Frame, 2007 WL 2815613, at *4.

5 

1.

Plaintiff’s Choice of Forum and the Locus of Operative
Facts
Generally, the plaintiff’s choice of venue is given

deference; however, where the chosen forum is not the
plaintiff’s home forum, the choice is given somewhat less
deference.

Colour & Design v. U.S. Vinyl Mfg. Corp., No. 04

Civ. 8332, 2005 WL 1337864, at *5 (S.D.N.Y. June 3, 2005).
“‘Further, the plaintiff’s choice is generally accorded more
deference where there is a material connection or significant
contact between the forum state’” and the locus of operative
facts underlying the claim.

Frame, 2007 WL 2815613, at *5

(quoting Orb Factory, Ltd. v. Design Science Toys, Ltd., 6 F.
Supp. 2d 203, 210 (S.D.N.Y. 1998)).

“In an infringement action,

one locus of operative facts is the place where the allegedly
infringing product was designed and developed.”
603 F. Supp. 2d at 697.

Atl. Recording,

However, “[w]here the nexus of the

allegedly infringing activity is in the transferee District, it
is insufficient to find a connection to New York based solely on
sales of the product that took place here.”

Walker v. Jon Renau

Collection, Inc., 423 F. Supp. 2d 115, 119 (S.D.N.Y. 2005).
Plaintiff is a resident of North Carolina, and therefore
New York is not the Plaintiff’s home forum.

Moreover, it is

undisputed that the original song “Dim Hits” was written in
North Carolina, and the song “Bond Money” was written in

6 

Florida.

Plaintiff brings this suit in New York under the

theory that the allegedly infringing song was distributed in New
York over the Internet, including through YouTube and iTunes.
As the only apparent connection to this forum is the
distribution of “Bond Money” over the Internet, a fact which
would support venue in any district court in this country,
Plaintiff’s choice of forum is entitled to little weight.
2.

Convenience of the Witnesses

Courts have generally regarded the convenience of party and
non-party witnesses as the most important factor in determining
whether to grant a motion to transfer venue.

See Chiste, 756 F.

Supp. 2d at 400; Colour, 2005 WL 1337864, at *4; Capitol
Records, 2004 WL 405961, at *3; Prudential, 1998 WL 397889, at
*3.

In a motion to transfer venue, the movant bears the burden

of identifying any and all potential witnesses who would
inconvenienced if the suit were to remain in the forum chosen by
plaintiff.

See Frame, 2007 WL 2815613, at *5.

“‘In order to

meet its burden, the motion of the party seeking transfer must
specifically list the evidence and witnesses on which the party
intends to rely in the transferee district, along with a general
statement of the topics of each witness’ testimony.’”

Capitol

Records, 2004 WL 405961, at *3 (quoting Editorial Musical Latino
Americana, S.A. v. Mar Int’l Records, Inc., 829 F. Supp. 62, 66-

7 

67 (S.D.N.Y. 1993)).

Other courts have concluded that “‘[w]hen

assessing the convenience of witnesses, a court does not merely
tally the number of witnesses who reside in the current forum in
comparison to the number located in the proposed transferee
forum.

Instead, the court must qualitatively evaluate the

materiality of the testimony that the witnesses may provide.’”
Frame, 2007 WL 2815613, at *5 (quoting Herbert, 325 F. Supp. 2d
at 286).
Although Plies and 101 Distribution have not put forth any
witnesses they might wish to call to testify, SNS has identified
16 potential witnesses “who have relevant information” relating
to the alleged infringement of “Dim Hits,” all of whom are
located in Florida.

Although SNS has not fully identified some

of the 16 witnesses by name, they do name several key witnesses,
all of whom reside in Florida.

For instance, Trina and the

writer of “Bond Money” would likely provide material testimony
about the creation of the song.

Defendant asserts that the

Florida witnesses are unwilling or unable to travel to New York.
Even though Plaintiff’s counsel has indicated his willingness to
travel to Florida for any necessary depositions, it would be in
the best interest for all the witnesses to have this case
transferred to their home forum.

8 

3.

Convenience of the Parties

“[T]ransfer of venue may be appropriate where inconvenience
for the party moving for transfer could be completely eliminated
without substantially adding to the non-moving party’s
inconvenience.”

Frame, 2007 WL 2815613, at *6.

SNS and Plies,

as Florida residents would clearly be inconvenienced if the case
were to remain in this Court.
Florida.

SNS’ one and only office is in

It does not have offices or officers in New York, nor

is it clear that SNS has conducted any business in New York.
Plies also resides in Florida and has very little, if any,
connection to New York.

101 Distribution, by joining in this

motion, has indicated that it would prefer the Florida venue
over New York.
If the case were to be moved to Florida, SNS and Plies
would no longer be forced to travel back and forth to New York,
and thus the inconvenience to them would be completely
eliminated.

101 Distribution has to travel across the country

regardless of whether this case is transferred, but transfer to
Florida would allow it to join the two Florida Defendants in
coordinated defense.

Furthermore, transfer would not impose any

burden on the North Carolina Plaintiff over and above that which
he willingly assumed by filing suit outside of his home state.
See Walker, 423 F. Supp. 2d at 118 (granting motion to transfer

9 

venue because “[i]f the case remains before this Court, both
parties will be forced to travel thousands of miles to New York
as the case proceeds.

If the case is transferred, the hardship

of travel on defendant will be eliminated, while the hardship of
travel on plaintiff will only be slightly increased, since she
would have to travel from London regardless”).

This factor

favors transfer.
4.

Location of Relevant Documents and the Relative Ease of
Access to Sources of Proof
Another important factor is the location of relevant

documents and other discoverable material.

“In an era of

electronic documents, easy copying and overnight shipping, this
factor assumes much less importance than it did formerly.”
ESPN, Inc. v. Quiksilver, Inc., 581 F. Supp. 2d 542, 548
(S.D.N.Y. 2008).

While this is the general rule, in

infringement cases “‘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.’”

Id. (quoting Millennium, L.P. v. Hyland

Software, Inc., No. 03 Civ. 3900, 2003 WL 22928644, at *4
(S.D.N.Y. Dec. 10, 2003)).
Here, SNS avers that any relevant documents it may have are
all located at its office in Miami.

10 

Therefore, proceeding in

Florida may aid in the speedy and efficient production of
discovery.
5.

Availability of Process to Compel the Attendance of
Unwilling Witnesses

SNS argues that it “cannot compel all of the material
witnesses to attend trial in New York City and it would be a
financial hardship for SNS to litigate the case in New York
since most of the witnesses in this case reside in Florida.”
(Lucas Decl. ¶ 14).

However, a Florida court would be in a

better position to compel the attendance of the 16 witnesses
residing in Florida.

See Chiste, 756 F. Supp. 2d at 400-01

(holding that “because most of the possible witnesses are
located in Texas, a Texas court is better able to compel their
attendance”).
6.

The Comparative Familiarity of Each District with the
Governing Law

It is presumed that both the Southern District of New York
as well as the Southern District of Florida are familiar with
the laws governing copyright infringement and would be able to
adequately adjudicate the case.

See Colour, 2005 WL 1337864, at

*3-5 (holding that federal courts are presumed to be equally
familiar with the law in federal copyright infringement
actions); AEC One Stop Grp., Inc. v CD Listening Bar, Inc., 326

11 

., 603

F. Supp. 2d 525, 531 (S.D.N.Y. 2004); Atl. Recordi
F. Supp. 2d at 697.

For

s reason,

s factor is neutral.

III. Conclusion

The facts

parties in t

connection to New York.

s case have little to no

In weighing all t

concludes that Defendants

met their

factors, the Court

of persuasion.

inconvenience to Defendants and their witnesses of
proceeding in this Court outwe

any deference given to the

Plaintiff's choice of

The interest of justice is

t served by transferring this case to the
of Florida, and t
[Docket Nos. 11, 29

District

fore Defendants' motion to transfer venue
36] is GRANTED.

SO ORDERED.

Dated: New York, New York
July 26, 2011

ted States

12

Keenan
strict Judge