Educational Impact, Inc. v. Scott

Filing 29

ORDER granting 9 Motion to Change Venue. This case shall be transferred to the United States District Court for the Western District of Kentucky at Louisville upon the expiration of the 14-day period for filing a motion for reconsideration, or if such a motion is filed, upon the District Judge's ruling, should that ruling deny reconsideration. Signed by Magistrate Judge Terence P. Kemp on 3/22/2017. (agm)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
Educational Impact, Inc.,

:

Plaintiff,

:

v.

:Case No. 2:16-cv-941
:CHIEF JUDGE EDMUND A. SARGUS, JR.
Magistrate Judge Kemp

Terrance M. Scott,
Defendant.

:
ORDER

This matter is now before the Court on a motion to change
venue by defendant Terrance M. Scott (“Dr. Scott”) pursuant to 28
U.S.C. §1404. The motion has been fully briefed and is now ripe
for decision.

For the following reasons, the motion to transfer

venue (Doc. 9) will be granted and this case will be transferred
to the United States District Court for the Western District of
Kentucky at Louisville.
I.

Background

This case was filed on September 30, 2016 by plaintiff
Education Impact, Inc. (“EI”) seeking a judgment against Dr.
Scott declaring that his threatened Lanham Act and related state
law claims are without merit. By way of background, Dr. Scott is
“one of the founders of the positive behavior interventions and
support movements (“PBIS”).” Doc. 1, Ex. A.

He provides training

to school districts around the United States and internationally
to assist in the development of policies and procedures for
dealing with challenging behaviors in schools. Id.

Dr. Scott

resides in Louisville, Kentucky, and is currently the Director of
the University of Louisville’s Center for Instructional and
Behavioral Research in Schools. (Doc. 1 ¶3; Doc. 9, Ex. 1). EI is
a Pennsylvania corporation with its principal place of business
in Lansdale, Pennsylvania. Doc. 1, ¶2.

EI is in the business of

developing, creating, marking, and selling online professional
development programs and services for teacher evaluation and
training.

Id. ¶7.

On September 13, 2004, Dr. Scott attended a seminar in
Columbus, Ohio called “Sig PBS and Dibbles Integrated Training.”
Id. ¶12. On or about that same date, Dr. Scott entered into a
contract with the Ohio Department of Education (“Ohio DOE”) to
provide a professional development presentation to a group of
Ohio teachers.

Id. ¶13.

In relation to the Ohio DOE contract,

the Ohio DOE requested that EI film Dr. Scott presenting at the
seminar. Id. ¶14.

Prior to the filming of the presentation, Dr.

Scott was presented with a “Talent Release,” which he signed,
giving EI permission to use or publish images in which Dr. Scott
and his training might be included. Id. ¶15; Ex. 2. The Talent
Release does not contain a clause indicating governing law or
forum selection. Id.
Years later, on June 25, 2010, Dr. Scott emailed EI
expressing his displeasure with the use of his name and material
on EI’s website. Id. There was some email correspondence between
the parties regarding this dispute, during which EI provided Dr.
Scott with a copy of the Talent Release. ¶16, Ex. C.
Approximately six years later, in July of 2016, there was more
email correspondence in which Dr. Scott again expressed his
displeasure to EI about its use of his materials.
C.

Id. ¶ 17, Ex.

On August 23, 2016, Dr. Scott, through counsel, sent a letter

to EI demanding that it cease and desist using his name and
likeness in connection with its products and services, and
threatening legal action if it did not do so. Id. ¶19; Ex. A.

EI

filed this declaratory judgment action in response. Doc. 1.
On the merits, Dr. Scott argues that EI did not have
permission to use of his image and materials, and claims that he
understood the Talent Release to permit the Ohio DOE to use his
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materials only for non-public or in-house purposes.
1 (“Scott Aff.”), ¶8.

Doc. 9, Ex.

He asserts that he recently discovered

that EI sold materials which included an online PBIS course
taught by Dr. Scott to the Jefferson County, Kentucky Public
Schools (“JCPS”) (Louisville is located in Jefferson County). Id.
¶¶ 9-10. After looking further into the EI website, Dr. Scott
learned that EI had a section containing his image and a
biographical page that implied that Dr. Scott was one of EI’s
experts.

It also contains a large portion of his 2004 video

recorded presentation. Id. ¶¶ 10-11.

On November 8, 2016,

together with this motion for transfer of venue, Dr. Scott filed
his answer and brought counterclaims against EI for false
endorsement under the Lanham Act, violation of his statutory
right of publicity, misappropriation of name and likeness for
commercial gain, unjust enrichment, and for a judgment declaring
that the Talent Release is unenforceable. Doc. 10.
II.

Legal Standard

The general principles relating to a transfer of venue
under 28 U.S.C. §1404(a) have been extensively

discussed in

various Court of Appeals and District Court decisions within the
Sixth Circuit.

The purposes of transferring a case from one

federal district to another, where venue is proper in each, are
to permit access to proof with greater ease, to allow witnesses
to attend a trial, to enhance enforceability of any judgment
rendered, and otherwise to permit a transfer when to do so would
further the goal of a fair and efficient trial and remove any
obstacles thereto.

Holiday Rambler Corp. v. American Motors

Corp., 254 F.Supp. 137 (W.D.Mich. 1966).

Providing for a change

of venue allows the Court to prevent unnecessary waste of time,
energy and money and to protect witnesses and the public against
unnecessary inconvenience and expense.
520 F.Supp. 15 (E.D.Mich. 1981).
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Rowe v. Chrysler Corp.,

“However, when balancing those various factors, the Court
does not start with the assumption that the case should proceed
in whichever forum is slightly more advantageous to the parties
or the witnesses.

Rather, it has long been held that the

plaintiff's choice of a forum is entitled to considerable weight,
and, consequently, the party moving for a change of venue must
demonstrate that the interests served by 28 U.S.C. §1404(a)
clearly favor a change of venue.” Lassak v. American Defense
Systems, Inc., 2007 WL 1469402, *2 (S.D. Ohio May 18, 2007),
quoting

Sun Oil Co. v. Lederle, 199 F.2d 423 (6th Cir. 1952);

International Union of Electrical Radio and Machine Workers v.
United Electrical, Radio and Machine Workers of America, 192 F.2d
847 (6th Cir. 1951); Nicol v. Koscinski, 188 F.2d 537, 537 (6th
Cir. 1951); Central Investment Corp. v. Mutual Leasing
Associates, Inc., 523 F.Supp. 74 (S.D. Ohio 1981). Of course,
although “a plaintiff's choice of forum should be given weight
when deciding whether to grant a motion to change venue, this
factor is not dispositive.” Lewis v. ACB Business Services, Inc.,
135 F.3d 389, 413 (6th Cir. 1998).

Nevertheless, unless it can

be said that, balancing all appropriate factors, plaintiff's
choice of a forum is "clearly... inconvenient," a change of venue
should not be ordered.

Lassak, supra, quoting Texas Eastern

Transmission Corp. v. Marine Office-Appleton & Cox Corp., 579
F.2d 561, 568 (10th Cir. 1978).
Where more than one venue is available in which to try a
case, some inconvenience to one or more parties will exist no
matter which forum is chosen. Consequently, if a change of venue
serves merely to shift the inconvenience from the plaintiff to
the defendant, a change of venue is improper.

Raymond E. Danto

Associates, Inc. v. Arthur D. Little, Inc., 316 F.Supp. 1350
(E.D.Mich. 1970). Consistent with that principle, a generalized

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assertion by a defendant that witnesses reside in, and documents
are located in, the proposed transferee district, is generally
insufficient to support a change of venue.

Hartford Accident

& Indemnity Co. v. Dalgarno Transportation, Inc., 618 F.Supp
1450 (S.D.Miss. 1985).

Rather, the defendant must show a

specific hardship involved in transporting documents to the
plaintiff's chosen district, see AMF, Inc. v. Computer
Automation, Inc., 532 F.Supp. 1335 (S.D.Ohio 1982). The Court may
also take into account other factors, including which party is
more easily able to bear the hardship involved in litigating in a
distant forum, where the conduct underlying the plaintiff's
claims occurred, the comparative docket congestion in the
districts under consideration, and the plaintiff's connection, if
any, with the proposed transferee forum.

See Nicol v. Koscinski,

supra; Artisan Development v. Mountain States Development Corp.,
402 F.Supp. 1312 (S.D. Ohio 1975).

The instant motion for a

change of venue will be decided with reference to these
principles.
III.

Discussion

Dr. Scott urges the Court to transfer this case to the
United States District Court for the Western District of
Kentucky, Louisville Division.

The threshold consideration in

analyzing a motion to transfer is to determine whether the action
could have been brought in the proposed new venue.

However, that

is not an issue here. The case could have been brought in the
Western District of Kentucky because that is where the defendant
resides.

28 U.S.C. §1404(a). Dr. Scott argues that this case has

very little connection to Ohio and that the private and public
interests weigh in favor of this litigation being conducted in
Kentucky.

EI argues that Dr. Scott has not met his burden to

show that transfer is appropriate and that the public and private
interests weigh in favor of venue in Ohio.
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In considering the private interests of the parties with
respect to venue, the Court should consider the plaintiff’s
choice of forum, ease of access to relevant evidence, convenience
of parties and witnesses, the availability of process to compel
attendance of unwilling witnesses, and practical problems
impacting the efficiency of the litigation. See, e.g. Moses v.
Business Card Express, Inc., 929 F.2d 1131 (6th Cir. 1991). As
noted above, the plaintiff’s choice of forum is entitled to some
weight. However, when the plaintiff’s choice is not its home
forum, the presumption in the plaintiff’s favor “applies with
less force,” because the assumption that the chosen forum is
appropriate is less reasonable. Sinochem Intern. Co. Ltd. V.
Malaysia Intern. Shipping Corp., 549 U.S. 422, 430 (2007), citing
Piper Aircraft Co. v. Reyo, 454 U.S. 235, 255-56 (1981).

EI is

not an Ohio resident and has never maintained an office in the
state of Ohio.

EI’s home office is in Pennsylvania and it

appears to engage in its business activities throughout a wide
physical geographical region as well as online.

The main

connection to Ohio in this case is that Ohio appears to be where
the parties entered into the initial transaction involving the
filming of Dr. Scott’s presentation and the signing of the Talent
Release.
The parties each argue that the private interests favor
their choice of venue, primarily due to availability of
witnesses. Dr. Scott argues that no party to the case resides in
Ohio, that the transaction that prompted Dr. Scott’s cease and
desist letter (the purported sale of materials featuring his
presentation to JCPS) occurred in Louisville, and that
individuals involved in this aspect of his counterclaim are
located in Louisville.

He also asserts that it would be more

burdensome on him as a private individual to travel to Columbus
for proceedings than it would be for EI, as a corporation, to
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travel to Louisville.

EI responds that the case arises out of

the parties’ mutual relationships with the Ohio DOE, and that
there are likely to be Ohio-based witnesses related to the Ohio
DOE contract and the Talent Release.

EI further asserts that

because Dr. Scott travels extensively for his profession, his
claim that he would be unduly burdened by travel from Louisville
to Columbus is unconvincing.
Although Ohio is slightly closer to EI headquarters than is
Louisville, EI’s witnesses will be required to travel whether the
litigation is conducted in either forum.

Access to documentary

or other non-witness evidence is not a significant issue here,
given that most, if not all, of it is available online or in a
digital format. Considering all these issues, including the
relative inconvenience of the Ohio forum to both parties, and in
light of the counterclaims brought by Dr. Scott based on the
alleged transaction in Louisville, the private interest factors
weigh in favor of a Kentucky venue.
Public interests to consider in determining whether a change
of venue is appropriate include the enforceability of the
judgment; practical considerations that could make the trial
easy, expeditious, or inexpensive; the relative administrative
difficulty in the two fora resulting from court congestion; the
local interest in deciding local controversies at home; the
public policies of the fora; and the familiarity of the trial
judge with the applicable state law in diversity cases.

Jumara

v. State Farm Ins. Co., 55 F.3d 873, 879–80 (3rd Cir. 1995); see
also Slate Rock Const. Co. Ltd. v. Admiral Ins. Co., 2011 WL
3841691, *6 (S.D. Ohio Aug.30, 2011). Dr. Scott asserts that the
local interest in deciding local controversies at home strongly
favors a Kentucky venue. He argues that Kentucky courts have a
strong interest in assessing whether the Talent Release, a 12year-old document purporting to give a wide range of rights over
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Dr. Scott’s intellectual property, is enforceable against a
Kentucky resident. Doc. 9 at 10.

Conversely, EI asserts that

Ohio has a strong interest in enforcing an agreement signed in
Ohio between EI and Dr. Scott, who is (or was) a training
specialist working with the Ohio DOE.
EI argues that Ohio is the better venue because the case
arises out of both parties’ relationships with the Ohio DOE.

In

addition, EI seeks judgment in its favor on the Lanham Act claim
based on the equitable doctrine of laches.

Because the Lanham

Act does not include its own statute of limitations, the Ohio
two-year statute of limitations will be relevant to the question
of whether there is a “presumption of laches” due to Dr. Scott’s
delay in pursuing EI for allegedly misusing his information.
Tandy Corp. V. Malone & Hyde, Inc., 769 F.2d 362, 365 (6th Cir.
1985); see also Reed v. United Transp. Union, 488 U.S. 319, 334
(1989) (noting the “well established rule that statutes of
limitations for federal causes of action not supplied with their
own limitations period will be borrowed from state law”).

EI

asserts that Ohio substantive law will be applied to the state
law claims even if the case is transferred because the transferee
court must apply the original state’s choice of law.

Doc. 15 at

7, citing Van Dusen v. Barrack, 376 U.S. 612, 639 (1964).

The

Court also notes that Dr. Scott has alleged counterclaims against
EI based on the Lanham Act as well as Kentucky statutes and
common law, and that some of the causes of action (i.e. the
alleged use and sale of Dr. Scott’s materials to JCPS) arose in
Kentucky.

Nonetheless, what substantive state law is ultimately

applied to the claims need not be determined here.

Dr. Scott

correctly points out that the judges in the Western District of
Kentucky have regularly applied Ohio law to cases in that
district.

See, e.g. Westlake Vinyls, Inc. V. Goodrich Corp., 518

F.Supp.2d 918) (W.D. Ky. 2007); Ireland v. King, 2009 WL 5126597
8

(W.D. Ky. Dec. 21, 2009); Herzig v. Oncology/Hematology Care,
Inc., 2001 WL 1775378 (W.D. Ky. May 24, 2001).

The Court is not

persuaded that the judges in the Western District of Kentucky
would be any less able to apply Ohio law if necessary than the
judges in this Court.
Looking at the practical issue of relative congestion of
docket, Dr. Scott supplies the 2015 Judicial Business Report for
2015, which indicates the median time in civil cases from filing
to disposition in the Western District of Kentucky is eight
months, as compared to nine months in the Southern District of
Ohio. Id. at Ex. 2. That difference here is not dramatic, but it
weighs slightly in favor of transfer.

Courts have broad

discretion in determining transfer of venue and “may consider any
factor that may make any eventual trial ‘easy, expeditious and
inexpensive.’” Helder v. Hitachi Power Tools, USA Ltd., 764
F.Supp. 93, 96 (E.D. Mich. 1991) (quoting Gulf Oil Corp. v.
Gilbert, 330 U.S. 501, 508 (1947)).
This case does not involve a situation where a large number
of documents or an extraordinary number of witnesses are located
at great distances from the EI’s chosen forum.

EI has no

particular connection to Ohio, and the parties are Pennsylvania
and Kentucky residents, respectively. It appears that the only
factors that would favor retention of this case in Ohio are that,
at some point, Dr. Scott contracted with the Ohio DOE, the Talent
Release was signed in Ohio, and the video training which
comprises some of the disputed intellectual property was recorded
in Ohio.
Given the tenuous relationship of this case to Ohio and the
fact that there are identifiable and specific interests which
favor a transfer to Kentucky, the Court concludes that this is an
appropriate case for transfer under § 1404(a). See generally Bell
v. K-Mart Corp., 848 F.Supp. 996 (N.D.Ga. 1994).
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IV. Conclusion
For the reasons set forth above, the motion to transfer
venue pursuant to 28 U.S.C. §1404(a) (Doc. 9) is granted and this
case shall be transferred to the United States District Court for
the Western District of Kentucky at Louisville upon the
expiration of the 14-day period for filing a motion for
reconsideration or, if such a motion is filed, upon the District
Judge’s ruling, should that ruling deny reconsideration.
V.

Motion for Reconsideration

Any party may, within fourteen days after this Order is
filed, file and serve on the opposing party a motion for
reconsideration by a District Judge.

28 U.S.C. §636(b)(1)(A),

Rule 72(a), Fed. R. Civ. P.; Eastern Division Order No. 91-3, pt.
I., F., 5.

The motion must specifically designate the order or

part in question and the basis for any objection.

Responses to

objections are due fourteen days after objections are filed and
replies by the objecting party are due seven days thereafter.
The District Judge, upon consideration of the motion, shall set
aside any part of this Order found to be clearly erroneous or
contrary to law.
This order is in full force and effect, notwithstanding the
filing of any objections, unless stayed by the Magistrate Judge
or District Judge.

S.D. Ohio L.R. 72.4.

/s/ Terence P. Kemp
United States Magistrate Judge

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