Kaldy v. Urshow.TV, Inc et al (RLJ2)
Filing
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MEMORANDUM AND OPINION. Signed by District Judge R Leon Jordan on 1/10/17. (JBR)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TENNESSEE
GREENEVILLE DIVISION
PAUL KALDY, d/b/a URFIGHT,
Plaintiff,
v.
URSHOW.TV, INC., URSHOW.TV
PRODUCTIONS, INC., and UR-CHANNEL
BROADCASTING COMPANY,
Defendants.
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No. 2:16-CV-54
MEMORANDUM OPINION
This matter is before the Court on Defendants’ Motion to Dismiss, or in the
Alternative, Motion to Transfer [doc. 18]; Defendants’ Brief in Support of the Motion [doc.
19]; and Plaintiff’s Response in Opposition to the Motion [doc. 24]. For the reasons herein,
the Court will deny the motion.
I.
BACKGROUND
Plaintiff Paul Kaldy (“Mr. Kaldy”) claims to be the proprietor of a business entity
known as “UrFight,” [Am. Compl., doc. 12, ¶ 1], which “specializes in promoting Mixed
Martial Arts” and “is dedicated to helping fighters, gyms & promoters get noticed through
graphic design, websites, signs, cards, along with T-Shirt and full color printing,”
[Screenshot, doc. 12-1, at 2]. Mr. Kaldy alleges that for several years he has used certain
unregistered trademarks to promote, advertise, and sell UrFight’s services and products to
the public, and these unregistered trademarks include “It’s UrFight – Win It!,” “UrFight,”
“UrFightGear.com,” and “UrFightSite.com.” [Am. Compl. ¶¶ 12–15]. For one of these
trademarks, “It’s UrFight – Win It!,” Mr. Kaldy has since secured federal registration from
the United States Patent and Trademark Office for use in connection with “athletic apparel,
namely, shirts, pants, jackets, footwear, hats and caps, [and] athletic uniforms,” which
qualify as Class 25 goods under the International Classification Schedule. [Trademark No.
4,520,258, doc. 12-2, at 2].1 Mr. Kaldy maintains that he has “expended substantial sums
in promoting [UrFight’s] goods and services” under the four trademarks, which he claims
have “become well known to the public as a distinctive indication of the source and origin
of [UrFight’s] products and services.” [Am. Compl. ¶ 18].
According to Mr. Kaldy, Defendants Urshow.tv, Inc.; Urshow.tv Productions, Inc.;
and UR-Channel Broadcasting Company (“Defendants”) promote, produce, and broadcast
martial arts events through the television and the internet and, in doing so, use the trade
name “URFight” and other similar trade names. [Id. ¶¶ 19–20]. Mr. Kaldy alleges that these
trade names are not only “confusingly similar” but also “identical to” his own trademarks.
[Id. ¶¶ 20]. As a result, Mr. Kaldy has brought this action, in which he claims trademark
infringement under 15 U.S.C. § 1114 of the Trademark Act of 1946 (Lanham Act) and
under Tennessee common law (Count I), unfair competition under 15 U.S.C. § 1125(a) of
the Lanham Act and under Tennessee common law (Count II), and violations of
subsections 47-18-104(b)(1)–(5), (27) of the Tennessee Consumer Protection Act
(“TCPA”). [Am. Compl. ¶¶ 6, 37]. Defendants now seek dismissal of all three counts, and
1
The International Classification Schedule is codified in 37 C.F.R. § 6.1, under which
Class 25 goods include “[c]lothing, footwear, [and] headgear.”
2
in the alternative, they request that the Court transfer this case to the District of Delaware
under 28 U.S.C. § 1404(a). [Mot. to Dismiss or Transfer at 1].
II.
MOTION TO DISMISS
Under Federal Rule of Civil Procedure 8(a)(2), “[a] pleading that states a claim for
relief must contain . . . a short and plain statement of the claim showing that the pleader is
entitled to relief.” In determining whether to dismiss a complaint under Federal Rule of
Civil Procedure 12(b)(6), a court accepts the factual allegations in the complaint as true
and construes them in a light most favorable to the non-moving party. See Mixon v. Ohio,
193 F.3d 389, 400 (6th Cir. 1999). “[T]he tenet that a court must accept as true all of the
allegations contained in a complaint is inapplicable to legal conclusions,” however, and
“[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
statements, do not suffice.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted).
In addition, “[t]o survive a motion to dismiss, a complaint must contain sufficient factual
matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Id. (quoting
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial plausibility
when the plaintiff pleads factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct alleged.” Id.
A. Trademark Infringement under § 1114
Under § 1114(1)(a)–(b), no person, without the consent of the registered holder of a
trademark, may:
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(a) use in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark in connection with the sale, offering for
sale, distribution, or advertising of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and
apply such reproduction, counterfeit, copy, or colorable imitation to
labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection with the sale,
offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive[.]2
To prevail on a claim for trademark infringement under § 1114, a plaintiff must show “(1)
that it owns a valid, protectable trademark; (2) that the defendant used the trademark in
commerce and without the registrant’s consent; and (3) there was a likelihood of consumer
confusion.” Ford Motor Co. v. Heritage Mgmt. Grp., Inc., 911 F. Supp. 2d 616, 621 (E.D.
Tenn. 2012) (quotation omitted). The third element, a likelihood of consumer confusion,
is “[t]he touchstone of liability under § 1114,” Daddy’s Junky Music Stores, Inc. v. Big
Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997), and it requires a showing
of confusion as to the origin of the goods or services that each party offers in the
marketplace, Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 629 (6th Cir. 2002);
see Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir.
Under § 1114(1)(a)–(b), the term “person” includes “all individuals, firms, corporations,
or other persons acting for the United States and with the authorization and consent of the United
States, and any State, any instrumentality of a State, and any officer or employee of a State or
instrumentality of a State acting in his or her official capacity,” as well as “any nongovernmental
entit[ies].” § 1114(1).
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1991) (“The ultimate question [is] whether relevant consumers are likely to believe that the
products or services offered by the parties are affiliated in some way.”).
Defendants argue that Mr. Kaldy has not alleged sufficient facts to support a
likelihood of confusion. [Defs.’ Br. at 2–3]. Specifically, Defendants maintain that a
likelihood of confusion is absent because they are “in the digital broadcasting industry,”
not the business of making athletic apparel—that is, “goods or services within class 25.”
[Id. at 3–4]. In response, Mr. Kaldy contends that any analysis concerning a likelihood of
confusion involves “issue[s] of material fact to be determined by the court.” [Pl.’s Resp. at
2]. As a result, Mr. Kaldy asserts that the dismissal of his claim under § 1114 is
inappropriate because the Court has an obligation to refrain from resolving questions of
material fact here at the pleading stage. [Id.].
As a general matter, the Court begins by noting that under Rule 12(b)(6) it is unable
to consider a question of fact on a motion to dismiss. See, e.g., Ecclesiastical Order of the
ISM of AM, Inc. v. IRS, 725 F.2d 398, 403 (6th Cir. 1984) (Jones, J., concurring in part and
dissenting in part); Mike Vaughn Custom Sports, Inc. v. Piku, 15 F. Supp. 3d 735, 753 (E.D.
Mich. 2014). For more than three decades, courts in the Sixth Circuit have conducted a
multi-factor analysis to determine whether a defendant’s use of a trademark creates a
likelihood of confusion among consumers. See Frisch’s Rests. v. Elby’s Big Boy of
Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982) (setting out eight factors). An analysis
under these factors requires a court to resolve both factual and legal questions. See Wynn
Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988) (“This Circuit considers the
question of whether there is a likelihood of confusion a mixed question of fact and law.”).
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A court must first resolve the factual questions before it can address the legal questions.
See id. (stating that after a court makes a finding as to the “foundational facts,” it should
then resolve the “legal question [of] whether . . . those facts constitute a ‘likelihood of
confusion’” (quotation omitted)).
Although Defendants acknowledge that a likelihood of confusion “is typically
regarded as a question of fact that is not amenable to resolution on a Rule 12(b)(6) motion,”
they propose that an exception exists “when the goods are so unrelated as a matter of law
that dismissal at the pleadings stage is appropriate.” [Defs.’ Br. at 3]. Defendants invite the
Court to embrace this exception but have not noted any court within this circuit that has
recognized it. Instead, Defendants rely on two cases from outside this circuit—one from
the Ninth Circuit Court of Appeals and one from the Eastern District of Virginia—in
proposing that the Court’s espousal of this exception is proper. [Id.]. Because they supply
the Court with no case in which a court in this circuit has addressed, let alone endorsed,
this exception, the Court will not apply it. Cf. Burden v. Check into Cash of Ky., LLC, 267
F.3d 483, 489 (6th Cir. 2001) (finding that the district court erred by adopting the view of
the Ninth Circuit without reconciling it with precedent from the Sixth Circuit). The Court
instead will adhere to the Sixth Circuit’s instruction—an instruction that the Sixth Circuit
pronounced without limitation—that factual issues underlie the question of whether a
likelihood of confusion exists among consumers. Based on this instruction, the Court will
refrain from dismissing Mr. Kaldy’s claim under § 1114, an act that would require it to
overstep its bounds by resolving factual issues here at the pleading stage.
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B. Trademark Infringement under Tennessee Common Law
“Under Tennessee common law regarding trademark and unfair practices, like federal
trademark statutes, the ultimate question is whether the defendant has created a likelihood
of confusion among consumers.” McDonald’s Corp. v. Shop at Home, Inc., 82 F. Supp. 2d
801, 817 (M.D. Tenn. 2000) (citing Men of Measure Clothing, Inc. v. Men of Measure,
Inc., 710 S.W.2d 43, 47 (Tenn. Ct. App. 1985)); see Men of Measure, 710 S.W.2d at 47
(“The ultimate test of infringement is whether the subsequent user’s use of the same or
similar mark would create a likelihood of confusion among consumers.” (citations
omitted)). In arguing for the dismissal of Mr. Kaldy’s claim for trademark infringement
under Tennessee common law, Defendants renew their assertion that dismissal is proper
because “no consumer would be confused” in this case. [Defs.’ Br. at 5]. In short,
Defendants cling to their position that the question of whether consumers are prone to a
likelihood of confusion is resolvable at the pleading stage.
Tennessee’s courts, however, have articulated no distinction between the standard
that governs a likelihood of confusion under Tennessee common law and that governs a
likelihood of confusion at the federal level, namely under the Lanham Act. In Men of
Measure, the Tennessee Court of Appeals considered whether a party infringed on another
party’s rights in a trademark, 710 S.W.2d at 45, and in conducting its analysis, it in fact
relied on the Sixth Circuit’s eight-factor test—in addition to a larger body of federal law—
to determine whether a likelihood of confusion existed among consumers, id. at 47–48.
Although the appellant contended that the court erred by applying federal law rather than
state law because “federal and Tennessee case law differ” on the issue of trademark
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infringement, the court stated that “there is nothing to suggest a divergence among federal
law, Tennessee common law or general principles of trade-mark law.” Id. at 48–49
(Sanders, J., concurring); cf. Hamilton v. Stardust Theatre, Inc., No. M2001-00678-COAR3-CV, 2002 WL 1284280, at *3 n.1 (Tenn. Ct. App. June 11, 2002) (acknowledging that
the Tennessee legislature enacted a statutory framework for trademark infringement “with
the express purpose of creating a system substantially consistent with the federal trademark
statutes.”); see Gen. Conference Corp. of Seventh-Day Adventists v. McGill, 624 F. Supp.
2d 883, 891 (W.D. Tenn. 2008) (“Tennessee . . . common law infringement claims are
analyzed under the same standards as federal claims.” (citing Microsoft Corp. v. Sellers,
411 F. Supp. 2d 913, 920 (E.D. Tenn. 2006))). Because the relevant case law in Tennessee
is in keeping with how the federal courts interpret the Lanham Act, the Court sees no reason
to stray from the federal viewpoint that a likelihood of confusion among consumers is a
mixed factual and legal question—and therefore not appropriate for adjudication here at
the pleading stage.
Defendants also urges the Court to dismiss Mr. Kaldy’s common law claim because
they say the marks are generic and therefore not protectable, [Defs.’ Br. at 5], but as with
their previous argument, this argument would require the Court to resolve an issue of fact
here at the pleading stage, see Bath & Body Works, Inc. v. Luzier Personalized Cosmetics,
Inc., 76 F.3d 743, 748 (6th Cir. 1996) (“Whether a name is generic is a question of fact.”
(citation omitted)); see also Gen. Conference Corp. of Seventh-Day Adventists, 624 F.
Supp. 2d at 892. The question of whether a trademark is generic is factual in nature because
it overlaps with the same analysis that underlies a court’s determination of consumer8
related confusion. See Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d
1111, 1117 (6th Cir. 1996) (“[W]hether a mark is . . . generic . . . is but one of the elements
to be considered in determining whether confusion is likely to result.” (internal quotation
marks and quotation omitted)); see also Gen. Conference Corp. of Seventh-Day Adventists,
624 F. Supp. 2d at 892 (“The appropriate test for whether a mark is generic is ‘whether the
public perceives the term primarily as the designation of the article.’” (internal quotation
marks omitted) (quoting Bath & Body Works, 76 F.3d at 748)). The Court must therefore
refrain from dismissing Mr. Kaldy’s common law claim for trademark infringement, which
is comprised of factual issues.
C. Unfair Competition under § 1125(a) and Tennessee Common Law
Defendants argue that Mr. Kaldy’s claims for unfair competition under § 1125(a) and
under Tennessee common law warrant dismissal because—like the claims for trademark
infringement—they require a showing of a likelihood of confusion among consumers.
[Defs.’ Br. at 6]. The Court agrees that Mr. Kaldy’s claim under § 1125(a) requires a
determination of whether a likelihood of confusion exists among consumers. See Audi AG
v. D’Amato, 469 F.3d 534, 542 (6th Cir. 2006) (“Under the Lanham Act, we use the same
test to decide whether there has been trademark infringement, unfair competition, or false
designation of origin: the likelihood of confusion between the two marks.” (citation and
internal citation omitted)). The Court also agrees that Mr. Kaldy’s common law claim
under Tennessee law requires a determination of whether a likelihood of confusion exists
among consumers. See Gen. Conference Corp. of Seventh-Day Adventists, 624 F. Supp. 2d
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at 891 (“Tennessee unfair competition claims . . . are analyzed under the same standards as
federal claims.” (citation omitted)); McDonald’s, 82 F. Supp. 2d at 816 (“The same
analysis that applies to the federal Lanham Act claims also applies to state claims of unfair
competition under Tennessee common law[.]”). Because each of Mr. Kaldy’s claims for
unfair competition, like the claims for trademark infringement, requires the Court to engage
in an analysis under the likelihood-of-confusion test—an inquiry that is at least partly factintensive, see Wynn Oil, 839 F.2d at 1186—the Court is unable to delve into them here and
must decline Defendants’ request to dismiss these claims.
D. Violations of the Tennessee Consumer Protection Act
Recycling the same argument, Defendants maintain that Mr. Kaldy’s claims under
the TCPA are subject to dismissal because “an essential element” of these claims is a
likelihood of confusion. [Defs.’ Br. at 7]. A likelihood of confusion among consumers is
indeed an essential element of Mr. Kaldy’s claims under the TCPA. See Sellers, 411 F.
Supp. 2d at 920 (“Likelihood of customer confusion is the essence of the test for a violation
of the Tennessee Consumer Protection Act.” (citation omitted)); McDonald’s, 82 F. Supp.
2d at 816 (“The same analysis that applies to the federal Lanham Act claims also applies
to . . . violations of the Tennessee Consumer Protection Act[.]”). As with Defendants’
previous arguments, however, Defendants’ argument here does not support dismissal
because, again, the Court at this stage must not address the factual issues that are part and
parcel of the likelihood-of-confusion test.
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III. SECTION 1404(a)
Venue is the “geographic specification of the proper court or courts for the litigation
of a civil action that is within the subject-matter jurisdiction of the district courts in
general.” 29 U.S.C. § 1390(a). Section 1404(a) states that “[f]or 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 or to any district or division to
which all parties have consented.” Section 1404(a)’s purpose is to protect litigants,
witnesses, and the public from unnecessary expense and inconvenience. Inghram v. Univ.
Indus. Gases, Inc., No. 1:05-CV-19, 2006 WL 306650, at *4 (E.D. Tenn. Feb. 8, 2006)
(citing Van Dusen v. Barrack, 376 U.S. 612, 616 (1964)).
A district court’s “first concern” when considering a motion to transfer under
§ 1404(a) is “whether the action ‘might have been brought,’ in the first instance in the
transferee district.” Weltmann v. Fletcher, 431 F. Supp. 448, 450 (N.D. Ohio 1976)
(footnote omitted) (citing Cont’l Grain Co. v. FBL-585, 364 U.S. 19, 22 (1960)); see One
StockDuq Holdings, LLC v. Becton, Dickerson, & Co., 2013 WL 1336726, No. 2:12-cv03307-JPM-tmp, at *2 (M.D. Tenn. Mar. 18, 2013) (“[U]nder § 1404(a), a court must first
find that the civil action could have been brought in the requested transferee district.”
(citing Reese v. CNH Am. LLC, 574 F.3d 315, 320 (6th Cir. 2009))). An action might have
been brought in the transferee district if (1) the court in that district has subject matter
jurisdiction; (2) the defendant is amenable to service of process from that court; and (3)
venue is proper there. McLouth Steel Corp. v. Jewell Coal & Coke Co., 432 F. Supp. 10,
11 (E.D. Tenn. 1976). If a court determines that an action might have been brought in the
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transferee district, the issue then becomes “whether transfer is justified under the balance
of the language of § 1404(a).” Jamhour v. Scottsdale Ins. Co., 211 F. Supp. 2d 941, 945
(S.D. Ohio 2002); see McKee Foods Kingman v. Kellogg Co., 474 F. Supp. 2d 934, 936
(E.D. Tenn. 2006) (“First, a defendant must identify an alternate forum in which venue is
proper. Next, the defendant must show that the convenience of the parties and witnesses,
and the interest of justice, warrant transfer.” (citations omitted)).
A district court “has broad discretion to grant or deny a motion to transfer [a] case
under § 1404,” Phelps v. McClellan, 30 F.3d 658, 663 (6th Cir. 1994) (quotation omitted),
“according to an ‘individualized, case-by-case consideration of convenience and
fairness,’” Stewart Org., Inc. v. Richo Corp., 487 U.S. 22, 29 (1988) (quotation omitted).
Although the federal courts do not have a “definitive formula” or “comprehensive list of
factors” that they employ when making this case-by-case consideration of convenience and
fairness, Inghram, 2006 WL 306650 at *5, they do consider various private and public
interests, see Moses v. Bus. Card Express, Inc., 929 F.2d 1131, 1137 (6th Cir. 1991), which,
in this circuit, include:
(1) convenience of witnesses; (2) availability of judicial process to
compel the attendance of unwilling or uncooperative witnesses; (3)
location of the relevant documents or records, and the relative ease of
access to sources of proof; (4) residence and convenience of the parties;
(5) relative financial means of the parties; (6) locus of the operative facts
and events that gave rise to the dispute or lawsuit; (7) each forum’s
familiarity with the governing law; (8) the deference and weight accorded
to the plaintiff's choice of forum; and (9) trial efficiency, fairness, and the
interests of justice based on the totality of the circumstances.
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Ingraham, 2006 WL 306659 at *5; see Reese, 574 F.3d at 320. This list of factors is not
exhaustive,3 and the Court may consider “all relevant factors that may make the litigation
easy, less expensive, and expeditious.” Dorsey v. Hartford Life & Accident Ins. Co., No.
1:08-cv-243, 2009 WL 703384, at *3 (E.D. Tenn. Mar. 16, 2009).
A. Might Have Been Brought
Mr. Kaldy concedes that this action might have been brought in the District of
Delaware. [Pl.’s Resp. at 7]. The Court will therefore now proceed to the second leg of the
analysis, under which the Court will address the factors that Defendants raise regarding
convenience and the interest of justice.
B. Convenience and the Interest of Justice
When considering convenience and the interest of justice, the Court must keep in
mind that at the outset a plaintiff’s choice of venue typically is entitled to greater weight
than other factors. See Maberry v. Nuclear Fuel Servs., No. 3:13-CV-499, 2013 WL
5560318, at *2 (E.D. Tenn. Oct. 7, 2003) (“[T]he plaintiff’s original choice of forum is
normally given ‘considerable weight,’ [with] ‘the balance of convenience, considering all
the relevant factors, [needing to] be strongly in favor of a transfer before such will be
3
These factors are an amalgamation of the public and private interests that underlie the
doctrine of forum non conveniens. See Atl. Marine Constr. Co. v. U.S. Dist. Court for W. Dist. of
Tex.,134 S. Ct. 568, 580 (2013) (“Section 1404(a) is merely a codification of the doctrine of forum
non conveniens” and “both § 1404(a) and the forum non conveniens doctrine . . . entail the same
balancing-of-interests standard” (citations omitted)); Dowling v. Richardson-Merrell, Inc., 727
F.2d 608, 612 (6th Cir. 1984) (describing the “relevant public interest factors” and “private interest
considerations” that comprise an analysis under the doctrine of forum non convenience (citations
omitted)).
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granted’” (quotation omitted)); see also W. Am. Ins. Co. v. Potts, No. 89-6091, 1990 WL
104034, at *2 (6th Cir. July 25, 1990) (“Foremost consideration must be given to the
plaintiff’s choice of forum.”); Weinstein v. Friedman, 859 F. Supp. 786, 788 (E.D. Pa.
1994) (“[A] plaintiff’s choice of forum is a paramount consideration which should not be
lightly disturbed and thus the court should hold defendants to establishing a strong
preponderance in favor of transfer.” (citations omitted)); but see Maberry, 2013 WL
5560318 at *4 (stating that “courts have indicated that a plaintiff’s choice [of forum] is less
important when the plaintiff does not reside in the forum” (citation omitted)). Unless a
defendant shows that convenience and the interest of justice “strongly favor” transfer by a
preponderance of the evidence, a plaintiff’s choice of forum is generally decisive. See
Inghram, 2006 WL 306650 at *4 (quotations omitted); see Hoffman v. Blaski, 363 U.S.
335, 366 (1960) (“[T]he defendant must satisfy a very substantial burden of demonstrating
where ‘justice’ and ‘convenience’ lie, in order to have his objection to a forum of
hardship . . . respected.”).
1. Mr. Kaldy’s Choice of Forum
Mr. Kaldy is a resident of the Eastern District of Tennessee and does business in
this district; he is at home here and not a foreign entity. [Am. Compl. ¶ 1]. The Court will
therefore treat his choice of forum in this district with fidelity, and Defendants must show
that the remaining factors strongly favor transfer by a preponderance of the evidence.
Inghram, 2006 WL 306650 at *4.
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2. Convenience
The convenience of the witnesses is “considered to be the most important factor
when determining which forum is the most convenient,” KANL, LLC v. Savage Sports
Corp., No. 3:13-CV-265-TAV-CCS, 2014 WL 1745443, at *3 (E.D. Tenn. Apr. 30, 2014)
(quotation omitted), and it requires the party seeking transfer to show that the witnesses
will be “severely inconvenienced” if the litigation were to proceed in the plaintiff’s chosen
forum, Malibu Boats, No. 3:13-CV-656-TAV-HBG, 2014 WL 202379, at *5 (E.D. Tenn.
Jan. 16, 2014) (quotation omitted); KANL, 2014 WL 1745443 at *3 (quotation omitted);
see Hoffman, 363 U.S. at 366 (citing the defendant’s “very substantial burden” in objecting
to a plaintiff’s chosen forum).
Defendants make few if any strides in establishing that the convenience of the
parties or the witnesses favors transfer to the District of Delaware. In attempting to show
that litigation in the Eastern District of Tennessee is inconvenient for them, they present
their argument to the Court in one sentence, in which they state: “It is not convenient for
the Defendants or their potential witnesses to travel to the Eastern District of Tennessee to
litigate this case.” [Defs.’ Br. at 9]. A party’s need to travel during litigation, however, is
relatively commonplace and is not an occurrence that is indicative, in and of itself, of severe
inconvenience stemming from a lawsuit in a particular forum: “Unless all parties reside in
the selected jurisdiction, any litigation will be more expensive for some than for others.”
Moses, 929 F.2d at 1139. Defendants also do not account for the fact that the change they
request in venue would force Mr. Kaldy to absorb the same travel-related inconvenience
that Defendants wish to avoid—a shift in inconvenience between the parties that the Court
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is simply unable to allow under § 1404(a). See Van Dusen, 376 U.S. at 645–46 (“Section
1404(a) provides for transfer to a more convenient forum, not to a forum likely to prove
equally convenient or inconvenient.”); see also McKee Foods, 474 F. Supp. 2d at 942 (“A
transfer of venue under 28 U.S.C. § 1404(a) must render litigation more convenient as a
whole; it cannot merely shift inconvenience between the parties.” (citing id.)).
In addition—and maybe more importantly—Defendants do not identify the
witnesses who they claim will suffer inconvenience from litigation in this district or
describe the testimony that they will offer. See Smith v. Kyphon, Inc., 578 F. Supp. 2d 954,
963 (M.D. Tenn. 2008) (“[T]he party seeking the transfer must clearly specify the essential
witnesses to be called and must make a general statement of what their testimony will
cover” (citation omitted); Thomas v. Home Depot, U.S.A., Inc., 131 F. Supp. 2d 934, 937
(E.D. Mich. 2001) (stating that “the parties should provide each witness’s name and outline
of what material testimony that witness would provide”). As a result, the Court has no basis
to determine how many witnesses are likely to encounter inconvenience, whether they
would be relevant and material witnesses in this litigation, or whether they are employee
witnesses or non-party witnesses—all important determinations on a motion to transfer
under § 1404(a). See Oakley v. Remy Int’l, Inc., No. 2:09-0107, 2010 WL 503125, at *4
(M.D. Tenn. Feb. 5, 2010) (noting that the convenience of the witnesses is more than a
head count and includes “a consideration of the importance of each witness”); see also
FIMCO Servs., LLC v. FirstMerit Bank, N.A., No. 1:10-cv-72, 2010 WL 5184885, at *10
(E.D. Tenn. Dec. 15, 2010) (“Convenience of non-party witnesses, as opposed to employee
witnesses, is one of the most important factors in the transfer analysis[.]” (quotation
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omitted)). Defendants therefore fall well short of showing that the factor of convenience
favors transfer to the District of Delaware.
3. Locus of Operative Facts
Lastly, in perfunctory fashion, Defendants also argue that transfer is appropriate
because “there is no real nexus to the Eastern District of Tennessee,” a statement the Court
interprets as Defendants’ attempt to address the locus of operative facts, or the location of
the events giving rise to this lawsuit. [Defs.’ Br. at 9–10]. Simply, Defendants do not
support their argument with legal or factual enhancement, citing no case law. The Court is
not at liberty to consider their argument without some effort at analysis that shows why or
how the locus of operative facts in this case actually favors transfer to the District of
Delaware. See McPherson v. Kelsey, 125 F.3d 989, 995–96 (6th Cir. 1997) (“[I]ssues
adverted to in a perfunctory manner, unaccompanied by some effort at developed
argumentation, are deemed waived. It is not sufficient for a party to mention a possible
argument in the most skeletal way, leaving the court to . . . put flesh on its bones.”
(quotation omitted)); see also E.D. Tenn. L.R. 7.1(b) (requiring briefs to contain both “the
factual and legal grounds which justify the ruling sought from the Court”). In short,
Defendants’ argument for transfer—both here and throughout Defendants’ brief—is
incomplete, and Defendants do not establish that transfer, based on the locus of operative
facts or any other factor, is proper.
17
IV. CONCLUSION
Defendants’ arguments for dismissal would require the Court to resolve factual issues
here at the pleading stage, and therefore they are not viable. In addition, Defendants’
pursuit of transfer under § 1404(a) fails not only because it is incomplete but also because
none of the factors—that is, the factors that Defendants identify for the Court—support
transfer to the District of Delaware. Defendants’ Motion to Dismiss, or in the Alternative,
Motion to Transfer [doc. 18] is therefore DENIED. Defendants SHALL serve a responsive
pleading within fourteen days from the date of this Order.
IT IS SO ORDERED.
ENTER:
s/ Leon Jordan
United States District Judge
18
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