Amorphous V. Flipboard INC.
OPINION AND ORDER re: 27 MOTION to Transfer Case filed by Flipboard, Inc.: For the foregoing reasons, Defendant's motion to transfer is granted. The Clerk of Court is ORDERED to transfer this case to the United States District Court for the Northern District of California. The Clerk of Court is further ordered to terminate docket entry 27. (Signed by Judge Katherine Polk Failla on 4/26/2016) (tn)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
DOC #: _________________
DATE FILED: April 26, 2016
15 Civ. 5802 (KPF)
OPINION AND ORDER
KATHERINE POLK FAILLA, District Judge:
On July 27, 2015, Plaintiff Kalliope Amorphous initiated the instant
action, alleging that Defendant Flipboard, Inc. had infringed several of
Plaintiff’s copyrights. On October 16, 2015, Defendant filed the instant motion
to transfer this case to the United States District Court for the Northern
District of California, where a related action — Flipboard, Inc. v. Kalliope
Amorphous, a/k/a Michelle Walsh, No. 15 Civ. 3255 (BLF) — is currently
pending. For the following reasons, Defendant’s motion is granted.
Plaintiff is a photographer who currently lives in Rhode Island. (Compl.
¶ 11). Plaintiff has posted some of her photographs online, using sites such as
Bored Panda, Flickr, and Tumblr. (Id. at ¶ 1).
The facts in this case are drawn from the parties’ briefs and supporting materials,
including the declaration of Brian Willen (“Willen Decl.”) (Dkt. #29); the declaration of
David Creemer (“Creemer Decl.”) (Dkt. #30); the declaration of Chris Tobin (“Tobin
Decl.”) (Dkt. # 31); the declaration of Kalliope Amorphous (“Amorphous Decl.”) (Dkt.
Defendant is a Delaware corporation with its principal place of business
in Palo Alto, California. (Creemer Decl. ¶ 2). Defendant provides an online
service that gathers content from various websites — including Bored Panda,
Flickr, and Tumblr — and presents the content on a single webpage in a format
that resembles a magazine. (Id. at ¶¶ 3, 8, 11).
On June 3, 2015, Barbara Hoffman, Plaintiff’s attorney, sent a letter to
Defendant, alleging that: (i) Plaintiff owned copyrights for photographs that she
posted on Bored Panda (the “Bored Panda photographs”); and (ii) Defendant
had infringed those copyrights when it shared the Bored Panda photographs on
its platform. (See Willen Decl., Ex. A). The letter stated, in relevant part, that
“it would be simple enough for [Plaintiff] … to file suit against [Defendant] for
copyright infringement and seek the maximum statutory damages … in the
amount of $150,000 for each work infringed.” (Id.). On June 10, 2015, Brian
Willen, Defendant’s attorney, responded to Ms. Hoffman’s letter, explaining why
he believed that Defendant had not violated any of Plaintiff’s copyrights. (Id.,
On June 15, 2015, Ms. Hoffman sent a follow-up email to Mr. Willen,
asking to see copies of various documents. (Willen Decl., Ex. C). The email
said that, once Defendant produced the requested documents, the parties
#38); and the declaration of Barbara Hoffman (“Hoffman Decl.”) (Dkt. #39). The Court
has also considered the allegations in Plaintiff’s Complaint (“Compl.”) (Dkt. #1).
For the sake of brevity, the Court will refer to Defendant’s opening brief as “Def. Br.”
(Dkt. #28); Plaintiff’s response brief as “Pl. Br.” (Dkt. #37); and Defendant’s reply brief
as “Def. Reply” (Dkt. #42).
“should plan to talk … to see how and if this matter can be resolved without
litigation.” (Id.). Mr. Willen emailed Ms. Hoffman the relevant documents that
day. (Id.). After seeing these documents, Ms. Hoffman explained that she still
believed Plaintiff had a valid copyright claim, and suggested that the parties
“try to resolve this by next week.” (Id.). Ms. Hoffman also stated: “If you feel
the matter is at an end, unfortunately for both our clients our discussions will
take place in the district court.” (Id.).
On June 16, 2015, Ms. Hoffman sent another email to Mr. Willen,
alleging that Defendant had infringed Plaintiff’s copyrights when it allowed its
users to view photographs that Plaintiff had posted on Flickr and Tumblr (the
“Flickr and Tumblr photographs”). (See Willen Decl., Ex. D). Ms. Hoffman
insisted that Defendant’s “blatant infringement” of Plaintiff’s copyrights was
“illegal, unparalleled, and unacceptable.” (Id.). Ms. Hoffman asked Defendant
to “acknowledge this email and indicate whether you still think there is nothing
to discuss. If we do not hear from [Defendant] by Friday, we will take
appropriate legal actions to deal with this illegal activity.” (Id.). Mr. Willen
immediately responded to this email, explaining that “these latest accusations
have no more merit than those you made previously about content on Bored
Panda.” (Id.). However, Mr. Willen added that he had “no desire to fight with
[Plaintiff] about these matters,” and would “be happy to discuss any remaining
On June 19, 2015, Ms. Hoffman sent Mr. Willen an email stating her
position on various legal issues. (See Willen Decl., Ex. E). At the conclusion of
the email, Ms. Hoffman noted that she was “hopeful” that the parties could
“arrive at a reasonable monetary settlement without litigation; however, if
litigation is necessary, [Plaintiff] will prevail on summary judgment.” (Id.).
On June 23, 2015, Ms. Hoffman and Mr. Willen discussed the parties’
disagreement by phone. (See Willen Decl. ¶ 7). Mr. Willen avers that, during
the call, he asked for information supporting Plaintiff’s arguments, and Ms.
Hoffman responded that “she might provide that information” or “she might
just sue.” (Id.). Ms. Hoffman says that she recalls this conversation differently,
but has not explained her memory of the call. (Hoffman Decl. ¶ 7).
Between June 24, 2015, and July 8, 2015, Ms. Hoffman and Mr. Willen
continued to trade emails. (Willen Decl., Ex. F-I). In one of these emails, Ms.
Hoffman stated that Plaintiff was “willing to settle for one million dollars,” but
Mr. Willen rejected this monetary demand. (See id., Ex. F-G).
On July 13, 2015, counsel participated in another telephone conference.
(See Willen Decl. ¶ 12). Ms. Hoffman states that, during the call, it became
clear that “[s]ettlement discussions were over,” and she said that she would
“[s]ee [Mr. Willen] in court.” (Hoffman Decl. ¶ 12). Mr. Willen remembers this
conversation somewhat differently. (See Willen Decl. ¶ 12). He says that,
during the call, Ms. Hoffman threatened to take Defendant to court “if
[Defendant] did not agree to her demands or make a monetary offer to settle
the dispute.” (Id. (emphasis added)). “Ms. Hoffman … did not set a deadline
for responding to her demands, and did not state the venue in which she might
A few hours after the July 13 phone call, Defendant filed a declaratory
action in the Northern District of California (the “California litigation”),
captioned Flipboard, Inc. v. Kalliope Amorphous, a/k/a Michelle Walsh, No. 15
Civ. 3255 (BLF). (See Willen Decl. ¶ 15). In the California litigation, Defendant
is seeking a declaration that it did not infringe Plaintiff’s copyrights by making
Plaintiff’s photographs available to its users. (Id., Ex. J). Two weeks later,
Plaintiff initiated the action before this Court (the “New York litigation”). (See
Compl. at 26).
On September 21, 2015, Plaintiff filed a motion to dismiss the California
litigation for lack of personal jurisdiction. (See Dkt. #44, Ex. A). 2 Plaintiff’s
motion was denied on December 10, 2015. (Id.). Plaintiff agreed not to seek an
interlocutory appeal of that decision. (See Dkt. #46).
On October 16, 2015, Defendant filed the instant motion to transfer the
New York litigation to the Northern District of California. (Dkt. #27).
The First-Filed Rule
The first-filed rule provides that, when litigants have filed two competing
actions in different judicial districts, their dispute should be resolved in the
district where the first suit was filed. See, e.g., New York Marine & Gen. Ins.
Co. v. Lafarge N. Am., Inc., 599 F.3d 102, 112 (2d Cir. 2010); D.H. Blair & Co. v.
Gottdiener, 462 F.3d 95, 106 (2d Cir. 2006). The Second Circuit has
Unless otherwise indicated, citations to docket entries refer to this instant litigation.
recognized “only two exceptions to the first-filed rule.” Employers Ins. of
Wausau v. Fox Entm’t Grp., Inc., 522 F.3d 271, 275 (2d Cir. 2008). First, the
rule is inapplicable where “special circumstances” suggest that the dispute
should be litigated in the district where the second suit was filed. Id.; see also,
e.g., First City Nat. Bank & Trust Co. v. Simmons, 878 F.2d 76, 79 (2d Cir.
1989). Second, the rule is inapplicable when the “balance of convenience”
favors litigation in the district where the second-filed action is pending.
Employers Ins. of Wausau, 522 F.3d at 275; see also, e.g., Motion Picture Lab.
Technicians Local 780, I.A.T.S.E. v. McGregor & Werner, Inc., 804 F.2d 16, 19
(2d Cir. 1986). The party opposing application of the first-filed doctrine bears
the burden of demonstrating that one of these exceptions is applicable. See
Reliance Ins. Co. v. Six Star, Inc., 155 F. Supp. 2d 49, 54 (S.D.N.Y. 2001); 800Flowers, Inc. v. Intercontinental Florist, Inc., 860 F. Supp. 128, 132 (S.D.N.Y.
1994); see also Employers Ins. of Wausau, 522 F.3d 275 (explaining that the
party opposing the application of the first-filed rule can “rebut” the
presumption that the first-filed case has priority with “proof of the desirability
of proceeding in the forum of the second-filed action”).
The First-Filed Rule Suggests That the Parties’ Dispute Should Be
Resolved in the Northern District of California
The California litigation is the first-filed action. 3 Thus, the Northern
District of California is the proper forum for this case unless Plaintiff has
This Court does not accept Plaintiff’s suggestion that the “first-filed” action might be the
first action in which the complaint was properly served. A majority of courts in this
District have rejected this interpretation of the first-filed rule. See, e.g., Holiday Image
LLC v. Victoria’s Secret Stores Brand Mgmt., Inc., No. 14 Civ. 8660 (JMF), 2015 WL
demonstrated that there are “special circumstances” at play, or that the
“balance of convenience” favors litigation in New York. Employers Ins. of
Wausau, 522 F.3d at 275. Plaintiff has not made either showing.
There Are No “Special Circumstances” Here
Plaintiff contends that there is a “special circumstance” at play in this
case: the California litigation is an “improper anticipatory declaratory judgment
action.” (Pl. Br. 7 (quoting Employers Ins. of Wausau, 522 F.3d at 275)). It is
true that a court may depart from the first-filed rule if a first-filed case is an
“anticipatory action” — i.e., an action designed to beat the other party in a race
to the courthouse. Employers Ins. of Wausau, 522 F.3d at 275. “[I]n order for
a declaratory judgment action to be anticipatory,” however, “it must be filed in
response to a direct threat of litigation that gives specific warnings as to
deadlines and subsequent legal action.” Id. at 176. Crucially, Plaintiff has not
demonstrated that the California litigation was filed in response to a threat of
litigation that contained “specific warnings as to deadlines and subsequent
legal action.” Employers Ins. of Wausau, 522 F.3d at 276. Rather, the evidence
suggests that Plaintiff and Defendant spent weeks attempting to resolve their
dispute without judicial intervention, and during the last discussion between
366931, at *2 (S.D.N.Y. Jan. 28, 2015) (collecting cases); Interwood Mktg. Ltd. v. Media
Arts Int’l, Ltd., No. 90 Civ. 4690 (LBS), 1990 WL 209432, at *3 (S.D.N.Y. Dec. 12, 1990)
(same). Moreover, the Court does not believe that it would be equitable to apply
Plaintiff’s interpretation of the first-filed rule to these facts. While it is true that the
complaint in the New York litigation was served first, this is only because Plaintiff
successfully evaded service. (Willen Decl. ¶¶ 18-26). See Masluf Realty Corp. v. Markel
Ins. Corp., No. 13 Civ. 3031 (DLI)(JMA), 2014 WL 1278102, at *4 (E.D.N.Y. Mar. 27,
2014) (“It would be unjust to permit Plaintiff … to benefit from the ‘first-filed’ rule
where, but for [Plaintiff’s] success in resisting the effectuation of service, Defendant …
might have effected service in the [other] [a]ction some time ago.”).
Plaintiff’s counsel and defense counsel, Plaintiff’s counsel made a vague threat
to sue at an indefinite point in the future. (See Hoffman Decl. ¶ 12 (Ms.
Hoffman remarking that she would “[s]ee [Mr. Willen] in court”); Willen Decl.
¶ 12 (“Ms. Hoffman provided no indication that any … lawsuit would be filed
imminently, if ever, did not set a deadline for responding to her demands, and
did not state the venue in which she might sue.”)). 4 Thus, Plaintiff has not
shown that special circumstances counsel in favor of litigating the parties’
dispute in New York.
The “Balance of Convenience” Does Not Favor Litigation in
Alternatively, Plaintiff argues, the “balance of convenience” suggests that
this dispute should be litigated in New York. (Pl. Br. 15). The “factors relevant
to the balance of convenience analysis are essentially the same as those
considered in connection with motions to transfer venue pursuant to 28 U.S.C.
§ 1404(a).” Employers Ins. of Wausau, 522 F.3d at 275 (quoting Everest Capital
Ltd. v. Everest Funds Mgmt., L.L.C., 178 F. Supp. 2d 459, 465 (S.D.N.Y. 2002));
accord New York Marine & Gen. Ins. Co., 599 F.3d at 112. These factors
[i] the plaintiff’s choice of forum, [ii] the convenience of
witnesses, [iii] the location of relevant documents and
relative ease of access to sources of proof, [iv] the
convenience of the parties, [v] the locus of operative
It is true that, on Tuesday, June 16, 2015, Ms. Hoffman told Mr. Willen: “If we do not
hear from [Defendant] by Friday, we will take appropriate legal actions to deal with this
illegal activity. (See Willen Decl., Ex. D). But Mr. Willen responded to Ms. Hoffman well
before the Friday deadline, thereby ameliorating the threat of litigation. (Id.). Thus,
this Court cannot say that the California litigation was filed in response to Ms.
Hoffman’s June 16 statements.
facts, [vi] the availability of process to compel the
attendance of unwilling witnesses, [and] [vii] the relative
means of the parties.
Employers Ins. of Wausau, 522 F.3d at 275; accord D.H. Blair & Co., 462 F.3d
at 106-07. As the Court balances these factors, it must be mindful that there
is a “strong presumption” in favor of resolving the parties’ dispute in the
Northern District of California, where the first action was filed. 800-Flowers,
Inc., 860 F. Supp. at 135. Ultimately, the Court concludes that Plaintiff cannot
overcome this presumption.
Plaintiff’s Choice of Forum
Ordinarily, the plaintiff’s choice of forum is entitled to “significant
weight.” 800-Flowers, Inc., 860 F. Supp. at 135. However, the weight
“accorded to the plaintiff’s choice of forum is diminished substantially where
[the] plaintiff has chosen a forum which is neither his [or her] home nor the
place where the cause of action arose.” Id. Here, Plaintiff has chosen to litigate
in New York, despite the fact that she lives and works in Rhode Island (Compl.
¶ 11), and she is suing a California-based company for copyright infringement
(Creemer Decl. ¶ 2). As a result, this Court will accord only some weight to
Plaintiff’s preference for litigating this case in New York.
Convenience of Witnesses
Defendant has given the Court a list of its key witnesses, all of whom are
located in or near the Northern District of California. (See Willen Decl. ¶¶ 2729). In response, Plaintiff says that she might call some of Defendant’s New
York employees as rebuttal witnesses. (See Pl. Br. 22; Amorphous Decl. ¶ 21).
However, Defendant — who is in a much better position to understand its own
corporate structure — has represented to the Court that all of the key decisions
at issue in this case were made by employees in California. (See Def. Br. 3;
Tobin Decl. ¶ 6). In addition, Plaintiff says she will call “Tumblr, Flickr, Bored
[P]anda, and Shot employees in New York City” as witnesses (see Pl. Br. 22),
but she does not identify who these witnesses are (see Pl. Br. 22; see generally
Amorphous Decl.), and as Plaintiff herself acknowledges, a party making an
argument “based on the availability of witnesses must provide the Court with a
specific list of probable witnesses who will be inconvenienced” by the
proceedings in a particular forum. (Pl. Br. 22-23). As a result, the convenience
of the witnesses suggests that this dispute should be heard in California.
Location of Relevant Documents and Other Evidence
The location of the documents and other relevant evidence in this case is
neutral. “[M]odern technologies such as photocopying and faxing permit any
documents … to be transported to [or from] New York with presumably
minimal difficulty.” Herbert Ltd. P’ship v. Elec. Arts Inc., 325 F. Supp. 2d 282,
289 (S.D.N.Y. 2004). Consequently, the Court will not give much weight to this
Convenience of the Parties
Litigating this case in California will be much more convenient for
Defendant because it has its headquarters in California, and the employees
with knowledge relevant to this case are located in California. (See Def. Br. 3;
Tobin Decl. ¶ 6). By contrast, litigating this case in New York will be more
convenient for Plaintiff because it is closer to her home in Rhode Island, and
she would have to switch attorneys or proceed pro se if the litigation proceeds
in California. (See generally Amorphous Decl.). Thus, the Court considers this
to be a neutral factor.
Locus of Operative Facts
The locus of operative facts in this case is the Northern District of
California. All of the relevant, potentially infringing decisions — including
decisions related to the design and operation of Defendant’s product — were
made in Palo Alto, California. (See Def. Br. 3; Tobin Decl. ¶ 6). See AEC One
Stop Grp., Inc. v. CD Listening Bar, Inc., 326 F. Supp. 2d 525, 530 (S.D.N.Y.
2004) (“The operative facts in infringement cases usually relate to the design,
development and production of an infringing product.”). As a result, it would
make sense for the parties to litigate their dispute in California.
Availability of Process to Compel Witnesses
Flipboard has identified at least one key witness — a former employee —
who is within the subpoena power of the Northern District of California but
outside the subpoena power of this Court. (Def. Br. 21). This factor counsels
in favor of transferring this case to the Northern District of California. See
Billing v. Commerce One, Inc., 186 F. Supp. 2d 375, 378 (S.D.N.Y. 2002) (“The
availability of process to compel the testimony of important witnesses is an
important consideration in transfer motions.” (internal quotation marks
Relative Means of the Parties
While the Court is sensitive to the fact that litigation in the Northern
District of California would be more financially burdensome for Plaintiff, this
factor is not dispositive in the Court’s analysis, in light of the quality and
quantity of the other factors that favor transfer.
Taking all the relevant factors into consideration, the Court believes that
the parties should litigate their dispute in the Northern District of California.
The key decisions were made in California; key witnesses are located in
California; and Plaintiff is not asking to litigate in her home state. As a result,
Plaintiff cannot overcome the presumption that this case should proceed in
California, where the first complaint was filed. See Employers Ins. of Wausau,
522 F.3d at 275.
For the foregoing reasons, Defendant’s motion to transfer is granted. The
Clerk of Court is ORDERED to transfer this case to the United States District
Court for the Northern District of California. The Clerk of Court is further
ordered to terminate docket entry 27.
April 26, 2016
New York, New York
KATHERINE POLK FAILLA
United States District Judge
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