Gebr.Brasseler GmbH & Co. KG et al v. Abrasive Technology, Inc.

Filing 28

MEMORANDUM ORDER re 11 MOTION to Transfer Case to a More Convenient Forum. ORDERED that the Motion to Transfer Venue to a More Convenient Forum Pursuant to 28:1404(a) is GRANTED in part and DENIED in part. ORDERED that this case be transferred to the District of South Carolina, Columbia Division. Signed by District Judge Gerald Bruce Lee on 3/27/2009. (rban, ) [Transferred from Virginia Eastern on 3/30/2009.]

IN THE UNITED STATES FOR THE EASTERN
ALEXANDRIA

DISTRICT COURT

DISTRICT OF VIRGINIA
DIVISION

GEBR.
et

BRASSELER GMBH

&

CO.

KG,

)
)

al.,

Plaintiffs,

)
)

)

vABRASIVE TECHNOLOGY, INC.,

)
)
)

Case No.

l:08cvl246

(GBL/TCB)

Defendant.

)

)

MEMORANDUM ORDER

THIS MATTER is before the Court on Defendant Abrasive's

Motion to Transfer Venue to the Southern District of Ohio.
case is an action for declaratory judgment arising out of a

This

trademark dispute.

Upon learning that Plaintiffs planned to

sell a rotary dental bur with two adjacently spaced annular
grooves, Defendant sent a number of cease-and-desist letters,

alleging that this practice infringed its trademark.

After the

parties exchanged letters without resolution,
this action.

Plaintiffs brought

The first issue before the Court is whether the convenience of parties and witnesses requires transfer to Defendant's home
forum in the Southern District of Ohio because Defendant has no

connection to the Eastern District of Virginia and Defendant's
headquarters and primary place of business are in Ohio, and

Plaintiffs'
Germany

parties and witnesses are primarily located in

and South Carolina.

The second issue before the Court of venue is appropriate,

is,

assuming a transfer

whether the balance of convenience to

parties and witnesses requires transfer to Plaintiff Komet's home forum, the District of South Carolina, because a transfer

to Ohio would merely shift the burden of inconvenience from one
party to the other given the location of all the witnesses,

including Plaintiffs'

South Carolina witnesses.
but not to

The Court holds that transfer is warranted,

Defendant's proposed forum in the Southern District of Ohio.

The Court reaches this conclusion because the balance of

convenience to parties and witnesses, justice,

in the interest of

requires a transfer to the District of South Carolina

because South Carolina is Plaintiff Komet's home forum and
transferring to Ohio would do no more than shift the

inconvenience from Defendant to Plaintiffs.
I. BACKGROUND

The parties in this case are competitors in the dental tool

industry.

Plaintiffs are Gebr.

Brasseler GmbH & Co.

KG

("GBL"),
in

a German corporation with its principal place of business
Legmo, Germany and its subsidiary and exclusive U.S.

distributor

Komet USA LLC

("Komet"),

a South Carolina corporation with its

principal place of business in Rock Hill,

South Carolina

(collectively "GBL").
("Abrasive")

Defendant Abrasive Technology,

Inc.

is an Ohio corporation with its principal place of

business in Lewis Center, nationally,

Ohio.

Abrasive sells products

including in the Eastern District of Virginia.

After it discovered that GBL intended to sell a rotary dental
bur with two adjacently spaced annular grooves on its shank,

Abrasive sent cease-and-desist letters to GBL,
GBL's product infringed its trademark.

alleging that

GBL denied this

allegation,

and the parties exchanged a number of letters

without resolving their disagreement. Consequently, December 2, 2008, GBL brought this action against Abrasive on seeking a declaratory judgment of non-

infringement.

Abrasive filed its Answer on January 29,

2009,

denying that GBL is entitled to declaratory relief,

asserting

several affirmative defenses and counterclaiming for trademark

infringement.
18, 2009,

GBL answered Abrasive's counterclaim on February

denying that GBL engaged in infringing conduct and
Abrasive moved to

asserting sixteen affirmative defenses.

transfer venue to its home forum in the Southern District of

Ohio,

asserting inconvenience to parties and witnesses.

Plaintiffs oppose the motion and alternatively propose transfer

to

the

District Carolina

of is

South Carolina, Plaintiff
II.

Columbia home

Division,

because

South

Komet's

forum.

DISCUSSION

A.

Standard of Review

"For the interest of

convenience of parties

and witnesses,

in the

justice,

a district court may transfer any civil it might have
a decision is committed

action to any other district or division where
been brought." whether to 28 U.S.C. § 1404(a) (2008).

Thus,

transfer an

action

to another

district

to the district court's
235 F.2d 198, 201

sound discretion.
1956), cert,

S.

Ry.

Co.
352

v.
U.S.

Madden,
953

(4th Cir.

denied, of venue

(1956). burden of
Sys., Va. B.

The party moving showing that the
v.

for a transfer transfer
Inc.,

bears

the

is

warranted.
F. Supp.

Beam Laser
518 (E.D.

Inc.

Cox Commc'ns,

117

2d 515,

2000). Analysis

The Court holds that transfer

is

appropriate because the

Eastern
case and transfer

District of Virginia has a minimal
the to a convenience venue with of parties a stronger

connection to this
favors It is

and witnesses connection.

undisputed that this
Southern District of

case could have been brought
Ohio or that the District of

in either the

South Carolina. and

The Court concludes

the convenience

of parties

witnesses,

in the interest of justice,

requires a transfer to

the District of South Carolina because transferring the case to

Ohio would merely shift the inconvenience from Defendant to
Plaintiffs.

The Court has

the power to transfer this

case to Ohio or

South Carolina because it may transfer the case "to any other

district or division where it might have been brought."
U.S.C. § 1404(a) (2008).

28

In considering whether to transfer

venue,

a district court considers whether the claim could have

been brought in the potential transferee forum and whether the

interest of justice and convenience of the parties and witnesses
justify transfer. Lycos, Inc. v. Tivo, Inc., 499 F. Supp. 2d

685,

689

(E.D. Va.

2007).

The following factors1 guide the

Court's determination:

the plaintiff's initial choice of forum,

the convenience and cost to witnesses and parties,
of justice,

the interest
see

and the ease of access to sources of proof,
v. Oak Beverage, Inc., 549 F. Supp.

Coors Brewing Co.

2d 764,

771

(E.D.

Va.

2008),

and the availability of compulsory process,

1 While there is consensus in the cases that certain factors guide the Court's
discretion,
LEXIS

different decisions articulate slightly different versions of

those factors.
93952 at v. Fellores

Compare Precision Financing,
*6 (E.D. 2007 Va. Dec. 27, 2006) LEXIS U.S. Dist.

LLC v.
(E.D.

Coombs,
Va.

2006 U.S.
8, 2007)

Dist.
with

(articulating 9073

four Feb.

factors),

Winter,

(articulating seven factors). slightly different factors.
factors), with PI. Opp'n at 6

Similarly,

the parties have articulated at 7 (identifying seven

Compare Def. Mem.

(identifying four factors).

see BHP Int'1
493, 498 (E.D.

Inv.,
Va.

Inc.
2000).

v.

Online Exch.,

Inc.,

105

F.

Supp.

2d

1.

GBL's

Choice of

Forum

GBL's Virginia brought

initial

choice

of

forum in the Eastern District of significant weight not its home because GBL and therefore

is not this

entitled to

suit

in Virginia,

forum,

its choice of venue is entitled to minimal deference.
has few connections with Virginia. to A plaintiff's

This
of

case

choice Lycos,

forum is normally entitled Supp. 2d at 692. But

substantial weight.

499

F.

the plaintiff's if it is not

chosen forum is

entitled forum it. Id.;

to very little weight and the cause of

the plaintiff's

home

action bears

little or no

relation to

Koh v. 2003). fact is

Microtek Int'l,

Inc.,

250

F.

Supp.

2d

627, home

633

(E.D. that

Va.

Even when the plaintiff sues not by itself

in its

forum, of that Bd.

controlling and the weight to the
Inc.,

factor v.

depends

on the nexus tying the case

forum.
F.

of Tr.
1253,

Baylor Heating & Air Conditioning, (E.D. Va. 1988). It is

702 GBL's

Supp.

1257

undisputed that

home

forum is

either in Germany or South Carolina,
places of business are located,

where Plaintiffs'

principal
forum

and that Abrasive's

home

is in Ohio.2

Abrasive does not have any office space, facilities

2Abrasive has systematic,
with Ohio: its research,

continuous and substantial contacts
manufacturing, operations,

or employees in Virginia.

The mere fact that customers in

Virginia may have purchased rotary dental instruments from GBL
or Abrasive is an insufficient connection to justify retaining a
case arising out of the alleged misuse of a trademark on

products distributed by an Ohio company.
Patent Co. v. Met-RX USA, Inc.,

See Original Creatine
568 (E.D.

387 F. Supp. 2d 564,

Va. 2005)

(finding four percent of defendant's sales in Virginia

did not create sufficient connection with Virginia for purpose
of motion to transfer venue); Ion Beam Applications S.A. v.

Titan Corp.,

156 F. Supp. 2d 552, 562

(E.D. Va. 2000)

("[S]ales

visits alone are not sufficient to establish a connection with a
forum."). In sum, the Court finds that GBL's election to bring

suit in the Eastern District of Virginia is entitled to minimal

weight because it is not GBL's home forum and the case lacks
sufficient connections to Virginia.

2.

Ease of Access to Sources of Proof

The Court gives very little weight to the ease of access to
sources of proof because "[w]hen documents can be transported

[or] easily photocopied, their location is entitled to little
weight."
Pharm.

GlaxoSmithKline Consumer Healthcare, L.P. v. Merix
Dist. LEXIS 40007, at *20 (D. N.J. May

Corp., 2005 U.S.

advertising, marketing and business development are conducted
there.

10,

2005).

While Abrasive

argues

that

this

factor
are

favors
in Ohio, the

transfer to Ohio because

its

relevant

documents

Court

rejects

this

argument because Abrasive,

like most

mainstream businesses in electronic form.

today,

produces,

stores and maintains

data

Electronic documents are mobile and are

conveniently accessible. of proof favors

The Court

finds that access

to sources

transfer away from Virginia and is equally

balanced between Ohio and South Carolina because those states
represent the home fora of the parties and discoverable evidence

is

likely located in both places,

in contrast to Virginia. this balance

Because Abrasive carries
does not support

the burden on this motion,

transfer to Ohio.

3.

Availability of Compulsory Process

This factor slightly favors transfer away from Virginia and

to either Ohio or South Carolina because the courts

in Ohio and

South Carolina could compel the attendance of the witnesses
based in those states, Court could not. of which there are several, P. whereas this (requiring

See Fed. R. Civ.

45 (c) (3) (A) (ii)

that subpoena be quashed if witness forced to travel more than
100 miles from residence or employment, but imposing no such

restriction when witness
occurs). While this

resides or works
favors

in state where trial
away from Virginia,

factor

transfer

it is neutral as between Ohio and South Carolina because all of

8

the Ohio and South Carolina witnesses are employees or are

otherwise associated with the parties.

It is therefore unlikely

that a court would need to employ compulsory process to secure
their attendance.

4.

Convenience and Cost to Parties and Witnesses

The convenience factor favors transfer to the District of
South Carolina because while this case lacks a meaningful connection to Virginia, transferring to Ohio would do no more

than shift the burden of inconvenience onto GBL.

Moreover, the

Court concludes that the majority of Abrasive's witnesses would
not be especially inconvenienced to travel to the District of
South Carolina because Abrasive can easily compel their

attendance and because,

for at least one of them,

South Carolina

is actually more convenient than Ohio.

Witness convenience and

access is often the most important factor in determining whether
transfer is appropriate. 731, 737 (E.D. Va. 2007). JHT Tax, Inc. v. Lee, 4*82 F. Supp. 2d

"[W]hen using this factor to

influence a transfer of venue,

the movant must identify the
[sic]

prospective witness and specifically describe their

proposed testimony."

Coors Brewing Co.

v.

Oak Bev.

Inc.,

549 F.

Supp. 2d 764,

772

(E.D. Va. 2008); see also Koh,

250 F.

Supp. 2d

at 636.

Moreover,

the Court "draws a distinction between party-

witnesses and non-party witnesses and affords greater weight to

the convenience at the 693.

of non-party witnesses." is to inappropriate when the other party."

Lycos,

499

F.

Supp.

2d

Transfer

it would "merely JHT Tax, Inc.,

^shift 482 F.

inconvenience'

Supp.

2d at 736

(internal citations

omitted).

The Court witnesses with

therefore balances the convenience of Abrasive's the convenience of GBL's witnesses
shifting the inconvenience. not Id.

in order to avoid merely
In conducting this analysis,

the Court does

consider convenience to counsel.

Cognitronics
Supp. 2d 689,

Imaging Sys.
698 (E.D.

v.

Recognition Research
2000).

Inc.,

83

F.

Va.

The

residence of the parties and witnesses
only one witness,

favors transfer
is

away from Virginia because

James Gallagher,

from Virginia.

Defendant and Plaintiffs

identify in their in Ohio, two in

papers nine witnesses,
Germany, Counsel and one each

four of which reside
in Georgia,

Pennsylvania

and Virginia. GBL has two

for GBL also

stated at oral

argument that

witnesses in South Carolina.

Considering just the residence of then, overall convenience

these various prospective witnesses, weighs

in favor of transfer away from Virginia because only Mr. sales representative--is from Virginia. The See

Gallagher--GBL's

weight of the convenience to Mr.
Lycos,
sales

Gallagher is very slight.

499

F.

Supp.

2d at

693

(finding the mere existence of
has same sales

activity in Virginia,

where defendant

10

contact with every other state in nation, Moreover,

weighs very little). is entitled

the convenience to GBL's German witnesses

to little weight,

if any,

because they are already committed to
and it would be

traveling to the United States to testify,

equally convenient

(or inconvenient)

for them to fly to

Virginia, 2007 U.S.

Ohio or South Carolina. Dist. LEXIS 85268 at *20

See generally Finmeccanica, (finding a minimal impact on

plaintiff's party witnesses from Italy in transferring the case to California: "[I]t simply requires that they spend a few more

hours on a plane than they would have to if the case remained in the Eastern District of Virginia."). The Court therefore finds

that the convenience factor favors transfer away from Virginia.
Next the Court must address whether the convenience factor

favors transfer to Ohio or to South Carolina.

On the balance,

convenience favors transfer to South Carolina because South Carolina is Plaintiff Komet's home forum and transferring to

Ohio would "merely shift the inconvenience to the other party."
JET Tax, Inc., 482 F. Supp. 2d at 736 (citations and formatting

omitted).

While Abrasive argues that the convenience to Ohio

party-witnesses outweighs the convenience to South Carolina party-witnesses, this argument fails because Abrasive can easily
at least to the extent

compel the attendance of its witnesses,

that they are employees.

In re Ralston Purina Co.,
11

726 F.2d

1002,

1006

(4th Cir.

1984).

And while Abrasive

argues

that

defending suit

in Ohio would reduce the time,

expense and the Court rejects business Abrasive

disruption to Abrasive's business operations, this argument because is an

some disruption to both parties'

operations

inevitable consequence of litigation.

gives the Court no reason to conclude that transferring this
case to Ohio would not simply shift the burden of disruption to

GBL in terms of time or expense. Supp. 2d at 736

See JHT Tax,

Inc.,

482

F.

(citations omitted)

(declining transfer that

would "merely

'shift the inconvenience'

to the other party").
both non-

Abrasive points to Sam Meyer and Don Schlitz,

party witnesses who would be less burdened traveling to court in
the Southern District of Ohio than to Virginia, to South Carolina.
non-party witnesses

and presumably,

The Court agrees that the convenience of
is entitled to more weight than is the

convenience of party-witnesses.

See Lycos,

499 F.

Supp.

2d at

693.

This factor therefore nudges the balance of convenience
but it does not reach it and it does not weigh

closer to even,

in favor of transfer to Ohio in this case.
Schlitz's residence in Rome,
Southern District of Ohio

This is because Mr.
from the
only 285 miles Thus,

Georgia is 524 miles
Division) but

(Columbus

from the District of South Carolina

(Columbia Division).

for Mr.

Schlitz,

South Carolina is actually more convenient than

12

Ohio.
Ms.

Even granting increased weight to the inconvenience of
the Court finds that the overall balance of

Meyer,

convenience to the more numerous other parties and witnesses,

including GBL's South Carolina and Virginia witnesses,

favors

transfer to Plaintiff Komet's home forum of South Carolina.
5. The Interest of Justice

The Court finds that the interest of justice slightly

favors transfer away from Virginia because the interest of having local controversies decided at home favors either South
Carolina or Ohio over Virginia.
category is designedly broad."

"The
Bd.

'interest of justice'
Supp. at

of Jr., 702 F.

1260.

It is meant to encompass all those factors bearing on
Precision (E.D. Va.

transfer that are unrelated to the other factors. Franchising, LLC, v. Coombs, 2006 WL 3840334, at *6

Dec. 27,

2006).

Such factors include the pendency of a related

action, the court's familiarity with the applicable law, docket
conditions, access to premises that might have to be viewed, the

possibility of unfair trial, the ability to join other parties,
and the possibility of harassment.
Inc. v. Qualcomm, Inc., 71 F. Supp.

Id.

(citing GTE Wireless,
519 (E.D. Va.

2d 517,

1999)).

Another factor is the interest of having local
See, e.g., Lycos, 4 99 F. Supp.

controversies decided at home.
2d at 695.

13

As

most

of

the

factors

are

neutral

and

uncontested,

they

merit

little mention.

Compare,

e.g.,

Def.

Mem.

at

13-14

(asserting the Court's

familiarity with applicable

law is not

determinative and docket congestion is a trivial
PI. Opp'n at 12 (agreeing there of Virginia is

factor),

with

no reason to believe the federal

Eastern

District

is unfamiliar with

trademark law and docket

conditions

are not dispositive).

One

factor,

however-the

interest of having local

controversies District lacks a

decided at home-favors transfer because this
strong interest sales and GBL's in this case. counsel

Other than Abrasive's Virginia D.C., the first of which

in Washington

as discussed above bears bears none at all,

little weight

and the second of which

the Eastern District of Virginia has no

interest in retaining the case.

By contrast,

the Southern

District of Ohio and the District of South Carolina each have a stronger connection because those states represent the home of the parties.
local

fora

The Court

finds that

the interest of having
as between Ohio and

disputes resolved at home is neutral

South Carolina because, in this case is

to the extent that the trademark dispute it is local to both

"local" to any one place,

Defendant's headquarters distributor headquarters

in Ohio and Plaintiff Komet's in South Carolina. On the whole, the

14

interest of justice slightly favors transfer away from Virginia
and is neutral as between South Carolina and Ohio.

In sum, when balancing the factors that guide the Court's

discretion on this motion to transfer venue, the Court concludes
that this case should be transferred to the District of South
Carolina because GBL's initial choice of forum is entitled to
little weight, the interest of justice, ease of access to
sources of proof and availability of compulsory process favor

transfer away from Virginia, and the convenience and cost to parties and witnesses favor transfer to South Carolina.
III. CONCLUSION

The balance of factors favors transfer away from Virginia

because this case has only a slight connection to Virginia and a
stronger connection to Ohio and South Carolina. Because the

balance of convenience to parties and witnesses favors transfer
to the District of South Carolina, in the interest of justice,

the Court concludes that this case should be transferred to the
District of South Carolina.

For the foregoing reasons,

it is hereby

ORDERED that Defendant Abrasive's Motion to Transfer Venue
to a More Convenient Forum Pursuant to 28 U.S.C. § 1404 (a) is
GRANTED in part and DENIED in part. It is further

15

ORDERED that this South Carolina,

case be transferred to the District of Division.
forward a copy of this Order to

Columbia

The Clerk is directed to counsel. ^ i#

Entered this C* * day of March, 2009.

Alexandria,

Virginia

Gerald Bruce Lee

United States District Judge

16