Grand River Enterprises Six Nations Ltd. v. VMR Products LLC

Filing 37

ORDER denying as moot 28 Motion for Leave to File a sur-reply by plaintiff ; denying 15 Motion to Dismiss for Lack of Jurisdiction by defendant. Signed by District Judge William M. Conley on 11/26/2013. (voc)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

GRAND RIVER ENTERPRISES SIX
NATIONS LTD.,
Plaintiff,
v.

OPINION & ORDER
13-cv-104-wmc

VMR PRODUCTS LLC d/b/a
V2CIGS,
Defendant.
In this civil action, plaintiff Grand River Enterprises Six Nations, Ltd. (“Grand
River”) states various claims under the Lanham Act, 15 U.S.C. § 1051, et seq., and
common law against defendant VMR Products LLC (“VMR”), all arising out of its
production and sale of products bearing the VAPOR COUTURE trademark. VMR has
moved to dismiss the action for lack of personal jurisdiction or, in the alternative, to
transfer venue to the United States District Court for the Southern District of Florida
pursuant to 28 U.S.C. § 1404(a). (Dkt. #15.) The court concludes: (1) VMR is subject
to personal jurisdiction in the Western District of Wisconsin; and (2) VMR has
established neither that the convenience of the parties and witnesses, nor that the
interests of justice warrant transfer. The court will, therefore, deny VMR’s motion to
dismiss or transfer. 1

1

Also before the court is plaintiff Grand River’s motion for leave to file a sur-reply (dkt.
#28), which the court will deny as moot in light of its decision denying defendant’s
motion to dismiss.

ALLEGATIONS OF FACT
Plaintiff Grand River is a Canadian limited liability company based in Ohsweken,
Ontario. (Compl. (dkt. #1) ¶ 2.) Grand River is a cigarette manufacturer and sells
sundry tobacco products, including cigarettes, to importers, who in turn sell and
distribute those products throughout the United States.

(Id.)

Grand River owns a

federal trademark registration and a trademark application for the COUTURE trademark
for use in connection with cigarettes and smoking accessories. (Id. at ¶ 3.)
Defendant VMR is a Florida limited liability company with its headquarters in
Miami, Florida. (Id. at ¶ 1.) VMR designs, manufactures, and distributes electronic
cigarettes and associated accessories.

(Def.’s Mot. (dkt. #15) 3.) 2

products over the internet and through retail stores.

VMR sells its

Grand River has produced

documents showing internet sales for the alleged infringing products from July 2012
through December 2012. (Burkland Decl., Ex. A (dkt. #22-1).) These documents also
show that VMR sold these same products across the United States, including 38 internet
sales shipped to 23 different customers in Wisconsin. (Id.; Pl.’s Resp. (dkt. #20) 3.) In
addition to internet sales, VMR alleges that infringing products were available for sale
over the counter in Hudson, Cottage Grove, and New Berlin, Wisconsin.

(Burkland

Decl., Ex. B (dkt. #22-2); Pl.’s Resp. (dkt. #20) 3.)

2

“[I]n deciding whether a party has made the necessary showing of personal jurisdiction,
a court may rely on the allegations of the complaint and also may receive and weigh
affidavits submitted by the parties.” Bolte v. Koscove, No. 04-C-935-C, 2005 WL 396609,
at *1 (W.D. Wis. Feb. 16, 2005) (citing Nelson v. Park Indus., Inc., 717 F.2d 1120, 1123
(7th Cir. 1983)).
2

OPINION
I. Personal Jurisdiction
“[F]ederal personal jurisdiction is proper whenever the person would be amenable to
suit under the laws of the state in which the federal court sits (typically under a
state long-arm statute), subject always to the constitutional due process limitations
encapsulated in the familiar ‘minimum contacts’ test.”

KM Enterprises, Inc. v. Global

Traffic Technologies, Inc., 725 F.3d 718, 723 (7th Cir. 2013). Therefore, the defendant
here is subject to personal jurisdiction in this district if it is subject to jurisdiction under
Wisconsin’s long-arm statute and the exercise of jurisdiction comports with federal due
process. Id. at 779. Because Wisconsin’s long-arm statute, Wis. Stat. § 801.05, has been
interpreted to confer jurisdiction to the fullest extent allowed under the due process
clause, this court need only focus on the question of whether the court’s exercise of
specific personal jurisdiction over VMR comports with the requirements of federal due
process. Felland v. Clifton, 682 F. 3d 665, 678 (7th Cir. 2012).
Plaintiffs bear the burden of demonstrating the existence of personal jurisdiction,
RAR, Inc. v. Turner Diesel, Ltd., 107 F.3d 1272, 1276 (7th Cir. 1997), but need only
make a prima facie showing when a defendant’s motion to dismiss relies on the
submission of written materials without the benefit of an evidentiary hearing. Purdue
Research Found. v. Sanofi-Synthelabo, S.A, 338 F.3d 773, 782 (7th Cir. 2003).

“In

evaluating whether the prima facie standard has been satisfied, the plaintiff is entitled to
the resolution in its favor of all disputes concerning relevant facts presented in the
record.” Id. (internal quotation marks and citation omitted).
3

The key constitutional question here is whether VMR had sufficient “minimum
contacts” with Wisconsin such that the maintenance of this suit “does not offend
traditional notions of fair play and substantial justice.” Int’l Shoe Co. v. Washington, 326
U.S. 310, 316 (1945) (internal quotation marks omitted); see also Illinois v. Hemi Group,
LLC, 622 F.3d 754, 757 (7th Cir. 2010) (quoting Kinslow v. Pullara, 538 F.3d 687, 691
(7th Cir. 2008)).

The court considers whether “the defendant should reasonably

anticipate being haled into court in the forum state, because the defendant has
purposefully availed itself of the privilege of conducting activities there.” Kinslow, 538
F.3d at 691. Grand River limits its assertion of personal jurisdiction to specific, rather
than general, personal jurisdiction. (Pl.’s Resp. (dkt. #20) 4.) See Helicopteros Nacionales
de Colombia, S.A. v. Hall, 466 U.S. 408, 414 n.8 (1984) (“It has been said that when a
State exercises personal jurisdiction over a defendant in a suit arising out of or related to
the defendant’s contacts with the forum, the State is exercising ‘specific jurisdiction’ over
the defendant.”). As explained below, VMR’s numerous, repetitive and specific online
sales to Wisconsin customers are sufficient to warrant this court’s exercise of personal
jurisdiction over VMR on Grand River’s claim.

A. VMR’s Contacts with Wisconsin
The Court of Appeals for the Seventh Circuit has stressed the care required to
resolve questions about personal jurisdiction involving online contacts. See Hemi Group,
622 F.3d at 760. Specifically, the Seventh Circuit cautions that personal jurisdiction
does not lie simply because a defendant operates an interactive, or even highly
4

interactive, website accessible from the forum state. Id.; be2 LLC v. Ivanov, 642 F.3d 555,
559 (7th Cir. 2011). Rather, the defendant must in some way target and exploit the forum
state’s market.

be2 LLC, 642 F.3d at 558 (“Our inquiry boils down to [has the

defendant] purposely exploited the [forum] market?”); Hemi Group, 622 F.3d at 758;
uBid, Inc. v. GoDaddy Group, Inc., 623 F.3d 421, 427-29 (7th Cir. 2010).
VMR disputes the existence of personal jurisdiction here because it “has not
targeted Wisconsin in any way.” (Def.’s Mot. (dkt. #15) 6; Def.’s Reply (dkt. #26) 4.)
Instead, VMR asserts that its “contacts with Wisconsin were incidental, at best,” and
that VMR had not “secured sufficient customers or generated the amount of revenues
such that it would [have] anticipate[d] being haled into court in Wisconsin.” (Def.’s
Mot. (dkt. #15) 6.)
In this respect, VMR likens its conduct to that of the defendant’s in be2 LLC,
where the Seventh Circuit found a lack of personal jurisdiction in the State of Illinois
over an interactive website, which allowed users to register dating profiles. (Id.) In be2
LLC, however, the website in dispute was a free dating website. 642 F.3d at 559. The
only contact with the forum state the plaintiff was able to show in that case was 20 users
who registered for the free service and supplied an Illinois address. Id. Aside from the
fact that there was no proof that the 20 users actually resided in Illinois, the Seventh
Circuit stressed the lack of evidence that the defendant interacted in any way with the
users.

Id. (“We do not see evidence of any interactions between [plaintiff] and the

be2.net members.”). Because of this lack of interaction, the Court of Appeals compared
the contact to a user simply accessing a website, albeit a highly interactive one.
5

Id.

Combined with the fact that the site was free, the Seventh Circuit found the lack of any
user-defendant interaction meant that be2 LLC neither exploited nor targeted their users.
In contrast, VMR did much more than run a free, interactive website accessed by
Wisconsin citizens.

VMR purposefully targeted and exploited the Wisconsin

marketplace by engaging in a pattern of repeated commercial sales with customers in this
state.

Genetic Techs., Ltd. v. Interleukin Genetics, Inc., No. 10-cv-69-bbc, 2010 WL

3122304, at *3 (W.D. Wis. Aug. 9, 2010) (“When a company solicits a state’s residents
to buy its products, it is specifically targeting that state and receiving benefits from it.”).
By engaging in repeat sales with Wisconsin customers, VMR not only interacted with
them on its website, but physically shipped products to them in Wisconsin. uBid, 623
F.3d at 428-29 (explaining that a defendant cannot shed customer-defendant interaction
simply by creating an online commercial process that does not require human action on
the part of the defendant); see also Hemi Group, 622 F.3d at 758.
Still, VMR argues that its mere 38 sales in Wisconsin compare favorably to the 20
users in be2 LLC which were found insufficient to constitute purposeful targeting or
exploitation of the forum to establish personal jurisdiction in Illinois, as compared to the
hundreds of thousands of customers and millions of dollars in revenue in uBid, which did
result in a finding of personal jurisdiction. (Def.’s Reply (dkt. #26) 4-6.) While VMR’s
exploitation of the forum’s market did not reach the level seen in uBid, the nature of
VMR’s contacts is significantly more similar to uBid than be2 LLC. Though there may be
a situation in which a greater quantity of contacts may be required (for example, if
general personal jurisdiction were asserted), the quality of the specific contacts here -6

repeated commercial sales, including into locations in this state in which the defendant’s
products compete, or at least potentially complete, with plaintiff’s products -- is
determinative. See McGee v. Int’l Life Ins. Co., 355 U.S. 220, 223 (1957) (explaining so
long as it creates a “substantial connection” with forum state, even a single act can
support jurisdiction); Snyder v. Smith, 736 F.2d 409, 416 (7th Cir. 1984) (holding that a
single act may be sufficient to confer jurisdiction as long as cause of action arises from
that act).
Even if VMR’s online sales were not sufficient to satisfy due process, Grand River
contends that this court has personal jurisdiction because VMR also sold electronic
cigarettes in at least three retail locations in Wisconsin.

(Pl.’s Resp. (dkt. #20) 7.)

Relegating its response to a single footnote, VMR neither denies that it actively offers
products for sale at physical locations in Wisconsin, nor that its sale representatives guide
potential customers to the physical locations. Instead, VMR emphasizes that the VMR
sales representative expressed some uncertainty when providing Grand River’s attorney
with the locations of the retail sites. At most, this response leaves uncertain on this
current record the physical retail locations, if any, within this State and to what extent
VMR is involved, but the court must resolve the factual disputes in plaintiff’s favor for
purposes of determining personal jurisdiction. Purdue, 338 F.3d at 782. (“[T]he plaintiff
is entitled to the resolution in its favor of all disputes concerning relevant facts presented
in the record.”). As a result, Grand River has also proffered sufficient evidence of VMR’s
minimum contacts through sales in multiple, physical locations in Wisconsin and its sales
representatives’ targeting of potential Wisconsin customers by directing them to those
7

locations. Asahi Metal Indus. Co. v. Superior Court of Cal., 480 U.S. 102 (1987) (holding
that the establishment of channels for forum customer advice, or marketing a product
through a distributor who has agreed to serve as the sales agent in the forum state, is
sufficient contact under stream of commerce personal jurisdiction).

B. The Relationship Between VMR’s Contact and Grand River’s Claim
In addition to finding purposeful minimum contacts with Wisconsin, Grand
River’s claims against VMR must also “arise out of or relate to” those contacts. Burger
King Corp. v. Rudzewicz, 471 U.S. 462, 472-73; uBid, 623 F.3d at 429. This “relatedness”
element of specific jurisdiction is intended to provide defendants with the predictability
that their contact with a forum in one context will not make them liable to suit in an
entirely different context in the past, or into the future, as the existence of general
personal jurisdiction might. RAR, 107 F.3d at 1277.
In considering the nexus between the contact and the claim, the Seventh Circuit
has avoided a mechanical test in favor of a more pragmatic focus on the “tacit quid pro
quo that makes litigation in the forum reasonably foreseeable.” uBid, 623 F.3d at 430
(quoting O’Conner v. Sandy Lane Hotel Co., 496 F.3d 312, 322 (3d Cir. 2007)). Under
this view, when a defendant avails itself of the benefits and protections of doing business
in Wisconsin, it does so in exchange for submitting to jurisdiction in Wisconsin for
claims arising from or related to those activities -- thus making those claims foreseeable.
The court explained, “the precise causal relationship between contacts and claim [is] not
important,” so long as the reciprocal relationship between the contact and claim makes
8

jurisdiction in the state foreseeable. uBid, 623 F.3d at 430.
As already discussed, VMR’s purposeful contact arises out of its sale of VAPOR
COUTURE products through the internet and retail locations to Wisconsin customers.
Now Grand River brings claims of trademark infringement, alleging that VMR’s use of
the VAPOR COUTURE mark is “likely to cause confusion, mistake, or deception as to
the source, origin, affiliation, connection, or association of VMR’s products with Grand
River.” (Compl. (dkt. #1) 6-7.) As such, it is reasonable to conclude the benefit VMR
received through the sale of its products to Wisconsin customers by allegedly using
Grand River’s trademark was done in exchange for submitting itself to claims related to
those products, including claims alleging the products infringed on a competitor’s
trademark. Cf. Hemi Group, 622 F.3d at 759 (finding relatedness between defendant’s
online sale of cigarettes to Illinois customers and the plaintiff’s claim that defendant
failed to report the sales to the proper Illinois authority).

C. Fairness
Finally, jurisdiction over VMR is only proper if exercising jurisdiction “does not
offend traditional notions of fair play and substantial justice.” Int’l Shoe Co., 326 U.S. at
316; Hemi Group, 622 F.3d at 759.

This inquiry focuses on:

the burden on the

defendant; the forum state’s interest in adjudicating the dispute; the plaintiff’s interest in
obtaining convenient and effective relief; the interstate judicial system’s interest in
efficiently resolving controversies; and the shared interest of the states in furthering
fundamental substantive social policies. Burger King, 471 U.S. at 477 (quoting World9

Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980)).
The burden of persuasion on the fairness issue falls on the defendant to show that
jurisdiction would not be proper. Burger King, 471 U.S. at 477 (“[W]here a defendant
who purposefully has directed his activities at forum residents seeks to defeat jurisdiction,
he must present a compelling case that the presence of some other consideration would
render jurisdiction unreasonable.”). Here, VMR simply makes a conclusory statement
insisting a finding of personal jurisdiction would offend fair play and substantial justice,
which is a far cry from a “compelling case.” (Def.’s Mot. (dkt. #15) 6-7; Def.’s Reply
(dkt. #26) 6-7.)3 Thus, the court concludes that VMR has also not met its burden of
demonstrating that this court’s exercise of personal jurisdiction over VMR offends the
notions of fair play and substantial justice.
By making numerous and repeated sales to Wisconsin customers over the internet
and at retail locations in the state, VMR opened itself to claims arising out of and related
to those sales, and should have reasonably anticipated being haled into court in
Wisconsin for this purpose.

3

The result is the same even if the court were to consider VMR’s arguments in support
of a transfer in venue. See Hemi Group, 622 F.3d at 760 (“‘These [fair play and
substantial justice] factors rarely will justify a determination against personal jurisdiction’
because there are other mechanisms available to the court—such as choice of law and
transfer of venue—to accommodate the various interests at play.”) (quoting Purdue, 338
F.3d at 781 n.10). As explained below, the court did not find the reasons justified
transfer and certainly do not present a “compelling case” that exercising jurisdiction
would be unreasonable.
10

II. Transfer of Venue under § 1404(a)
Under 28 U.S.C. § 1404(a), a district court with proper venue may “[f]or the
convenience of parties and witnesses, [and] in the interest of justice . . . transfer any civil
action to any other district or division where it might have been brought.” 28 U.S.C. §
1404(a); Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219 (7th Cir. 1986); Roberts &
Schaefer Co. v. Merit Contracting, Inc., 99 F.3d 248, 254 (7th Cir. 1996). When deciding
whether to grant a motion to transfer a case to another district, the court must consider
whether, under the specific circumstances of the case, transfer would: (a) be for the
convenience of the parties and witnesses; and (b) promote the interests of justice. Id.
The burden rests on the moving party, here VMR, to establish “that the transferee forum
is clearly more convenient.” Coffey, 796 F. 2d at 219-20.

A. Convenience
When determining whether a transferee forum is clearly more convenient the
court should first analyze: “(1) the plaintiff’s choice of forum; (2) the convenience to
parties; [and] (3) the convenience to witnesses.” Illumina, Inc. v. Affymetrix Inc., No. 09CV-277-BBC, 2009 WL 3062786, at *2 (W.D. Wis. Sept. 21, 2009). Despite the fact
that the Western District of Wisconsin is not Grand River’s home forum, nor is it the
location of the evidence or witnesses relevant to the case, VMR has not demonstrated
that the Southern District of Florida is clearly a more convenient forum.
i.

Plaintiff’s Choice of Forum

A plaintiff’s choice of forum is generally given deference because of its

11

convenience to him. See Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255-56 (1981). When
the plaintiff’s choice of forum is not its home forum, as in this case, the choice is to be
given equal weight with the other factors considered by the court. Symbol Techs., Inc. v.
Intermec Techs. Corp., No. 05-C-256-C, 2005 WL 1657091, at *3 (W.D. Wis. July 14,
2005).
Here, Grand River is a Canadian business. (Pl.’s Resp. (dkt. #20) 2.) Grand
River claims to have chosen the Western District of Wisconsin “based on its dealings
with Wisconsin, familiarity with the forum, . . . for the convenience of employees of
Grand River in the event this matter proceeds to trial,” for the court’s “famously speedy
docket, its familiarity with intellectual property cases, and the fact that it was a relatively
neutral forum for both parties.” (Id. at 11-12.) VMR argues that because Grand River is
a foreign plaintiff, and litigating in any forum in the United States will involve
international travel for Grand River, Grand River’s choice of forum deserves “little, if
any, deference from this Court.” (Def.’s Mot. (dkt. #15) 8-9.)
Even when a plaintiff is not litigating in his home forum, however, his choice of
forum will not be disturbed unless the transfer factors strongly favor the defendant. In re
Nat’l Presto Indus., Inc., 347 F.3d 662, 663-64 (7th Cir. 2003); see also Chi. Rock Island &
Pac. R.R. Co. v. Igoe, 220 F.2d 299, 302 (7th Cir. 1955) (“[T]he District Court should
bear in mind that in filing an action the plaintiff is permitted to choose any proper forum
and that the plaintiff’s choice of forum should not be lightly set aside.”). Therefore,
while the court weighs Grand River’s choice of forum equally with the other transfer
factors, VMR must still show a change in the status quo is appropriate.
12

ii.

Convenience of the Parties

When determining the convenience of a particular forum to the parties, the court
will take into consideration the location of the sources of proof. Illumina, 2009 WL
3062786 at *3; e2Interactive, Inc. v. Blackhawk Network, Inc., No. 09-CV-629-SLC, 2010
WL 3937911, *3 (W.D. Wis. Oct. 6, 2010). Sources of proof may include the allegedly
infringing products and any documents the parties view as informative to the litigation.
In re Affymetrix, Inc., Misc. No. 913, 2010 WL 1525010 at *2 (Fed. Cir. Apr. 13, 2010).
VMR argues that this factor weighs heavily in favor of transfer because (1)
litigating this action in Wisconsin would be very inconvenient and (2) transfer to the
Southern District of Florida would be significantly more convenient or, at worst, just as
convenient as this forum for Grand River. Defendant cites the location of its business
records, technical documents, and physical product in support of its convenience claims.
This court is unconvinced VMR satisfied its burden of “clearly more convenient” in
regard to any of these claims.
In support of its motion, VMR also claims a transfer to the Southern District of
Florida would be more convenient because the litigation will likely involve “the
production of a substantial number of VMR’s corporate documents” and “business
records and technical documents,” which are all located in Miami, Florida. (Def.’s Mot.
(dkt. #15) 10-11.) Additionally, VMR claims that litigation will involve the physical
inspection of VMR’s actual products bearing the trademark. (Id.) Even if that is all true,
both the Seventh Circuit and this court have recognized that technological advancements
have all but eliminated the importance of the location of documents and other sources of
13

proof in § 1404(a) transfer analysis. Bd. of Trs., Sheet Metal Workers Nat’l Pension Fund v.
Elite Erectors, Inc., 212 F.3d 1031, 1037 (7th Cir. 2000) (“Easy air transportation, the
rapid transmission of documents, and the abundance of law firms with nationwide
practices, make it easy these days for cases to be litigated with little extra burden in any
of the major metropolitan areas.”); Milwaukee Elec. Tool Corp. v. Black & Decker (N.A.) Inc.,
392 F. Supp. 2d 1062, 1064 (W.D. Wis. 2005) (“[T]echnological advancements have
diminished traditional concerns related to ease of access to sources of proof.”); Illumina,
2009 WL 3062786 at *3 (finding even the transport of a 300-pound genetics machine
was “a neutral factor”).
VMR even argues that the Southern District of Florida is a more convenient
forum for Grand River, pointing out that Grand River would save both time and money
flying to Florida from Canada rather than Madison.

(Def.’s Reply (dkt. #26) 8-9.)

Whatever merit there may be in these observations, it is difficult to give much weight to
a defendant’s claimed concern for the inconvenience of its opponent. This court has
previously held that a “plaintiff is free to emphasize other factors over her own
conveniences.”

Gibson v. Unum Life Ins. Co. of Am., No. 10-CV-246-BBC, 2010 WL

3244901, at *2 (W.D. Wis. Aug. 16, 2010). On this record at least, VMR has failed to
demonstrate that convenience to the parties tips the balance of factors sufficiently, if at
all, to warrant transfer.
iii.

Convenience of the Witnesses

When analyzing the convenience factors to determine whether a proposed
transferee district is clearly more convenient, the court may also take into consideration
14

the convenience of both party and non-party witnesses. However, the defendant again
bears the burden to “‘clearly specify the key witnesses to be called’ and submit ‘affidavits,
depositions, stipulations, or any other type of document containing facts tending to
establish who (specifically) it planned to call or the materiality of that testimony.’”
Gibson, 2010 WL 3244901 at *2 (quoting Generac Corp. v. Omni Energy Sys., Inc., 19 F.
Supp. 2d 917, 923 (E.D. Wis. 1998)). While VMR has identified several witnesses they
may call, they provide little more than a brief general comment to establish the subject or
relevancy of their testimony for all but one of the witnesses. 4
The majority of the witnesses identified by VMR are also employees and,
therefore, within the control of VMR and available for testimony regardless of the
location of the litigation.

Illumina, 2009 WL 3062786 at *3 (“The location of the

defendant’s employee witnesses is not a heavily weighted factor because of the
assumption that ‘witnesses within the control of the party calling them, such as
employees, will appear voluntarily,’ that is, at least without subpoena.”) (citations
omitted). As with convenience to parties, technological advances have diminished the
significance of the cost of transporting witnesses to a particular forum. Illumina, 2009

4

In its motion to dismiss, VMR merely states the litigation of Grand River’s claims “will
require testimony from VMR’s current and former employees who have business
knowledge of the VAPOR COUTURE trademark and related goods.” (Def.’s Mot. (dkt.
#15) 10); see also Def.’s Reply (dkt. #26) 10 (“VMR named four (4) witnesses residing in
Miami, Florida, as well as individuals residing in Canada.”).); Def.’s Reply, Ex. 2 (dkt.
#26-2) 3 (“[The witness] has knowledge of uses of the phrase ‘VAPOR COUTURE’ and
the term ‘vapor’ in commerce and the electronic cigarette industry.”).) VMR does not
articulate any clear need, or even intention, to call these individuals as live, in person
witnesses at trial, as opposed to appearing by video conference or deposition, if at all.
Rather, all of these individuals are just listed as having discoverable information.
15

WL 3062786 at *3.
Finally, neither VMR nor Grand River have identified any third-party witnesses.
Even if they had, in person testimony plays a less important role in patent and trademark
litigation, where “depositions are customary and are satisfactory as a substitute for
technical issues,” and live video conferencing has become more common. Adams v. Newell
Rubbermaid Inc., No. 07-C-313-S, 2007 WL 5613420, at *3 (W.D. Wis. Aug. 21, 2007);
Illumina, 2009 WL 3062786 at *3.
While the proposed transferee district would be more convenient for those few
witnesses VMR names that live in the district, the Southern District of Florida is not
“clearly more convenient” for all the witnesses named by the parties. Nor is VMR’s
proposed cost and time of travel a legitimate argument, when some witnesses will have to
travel regardless and transferring the case would result in a delay and increased litigation
costs. Illumina, 2009 WL 3062786 at *6 (“[T]here is no evidence that the greater travel
or transfer costs would not be canceled out by the money saved by reaching the end of
the litigation 18 months sooner than if this case were litigated in the Northern District of
California.”). As a result, VMR has failed to demonstrate that the Southern District of
Florida is a “clearly more convenient forum.”

B. Interests of Justice
“The ‘interests of justice’ is a separate component of a §1404(a) transfer analysis,”
which may be determinative and demand a decision contrary to analysis of the
convenience factors. Coffey, 796 F.2d at 220. Traditionally, this analysis relates to the
16

“efficient administration of the court system,” with courts considering such factors as:
(1) the district in which the litigants would receive a speedier trial; (2) whether there is
related litigation in the transferee district that may allow consolidation; (3) the courts’
relative familiarity with the applicable law; and (4) the relation of each community to the
controversy at issue.

Id. at 221; Illumina, 2009 WL 3062786 at *5; Research Automation,

Inc. v. Schrader-Bridgeport Int’l, Inc., 626 F.3d 973, 978 (7th Cir. 2010).
Neither party questions the court’s familiarity with federal trademark law, nor
does either party raise duplicative litigation as an issue. While VMR cites to the relative
speed of each court, it ultimately acknowledges the “forums are comparable” with regard
to the speed of their respective dockets. (Def.’s Reply (dkt. #26) 15.) 5 Thus, VMR rests
its argument on the relation of each district to the controversy at issue. VMR argues that
because it is a Florida company with its headquarters in South Florida, and because it
designs the disputed product in Florida, the Southern District of Florida has a stronger
relationship with the controversy at issue. (Def.’s Reply (dkt. #26) 14-15.)
An essential element of any trademark infringement claim is the potential effect
the alleged infringement will have on consumers. Promatek Indus., LTD v. Equitrac Corp.,
300 F.3d 808 (7th Cir. 2002) (“[Plaintiff] must establish that . . . [defendant’s] use of
the term is likely to cause confusion among consumers.”). Here, Grand River addresses
5

While the relative docket speeds of the Western District of Wisconsin and the
Southern District of Florida from filing to trial are relatively equivalent (Burkland Decl.,
Ex. D (dkt. #22-4)), the trial date for this case is in roughly six and a half months (Order
(dkt. #19) 5). A transfer to the Southern District of Florida raises the potential for delay
in rescheduling deadlines and a trial date. e2Interactive, 2010 WL 3937911, *11 (“[Even
if a transferee court considers events to date, there is] no reason to believe that the judge
would be willing or able to bump this case to trial on a faster track.”).
17

this element by focusing on VMR’s sales to repeat Wisconsin customers over the internet
and through physical locations in Wisconsin.

(Def. Reply (dkt. #26) 15 (“[The]

relationship that the Western District of Wisconsin has with this controversy would be
to protect Wisconsin consumers from potential confusion between the two marks at issue
here.”)).
While the “interests of justice” gives some weight to the location of the design of
the disputed product, this case will likely turn on the effect of the product on potential
consumers.

This court is unconvinced that the Southern District of Florida is

considerably more attached to this controversy than is the Western District of Wisconsin
or other federal forums where customers have made purchases of the allegedly offending
products. See Toy Biz v. Centuri Corp., 990 F. Supp. 328, 331 (S.D.N.Y. 1998) (holding
that, in an action for trademark infringement and unfair competition, the initial forum
was the locus of operative facts because the allegedly infringing model rockets were sold
in the initial forum, regardless of the fact that defendant manufactured the allegedly
infringing product in the transferee forum).
Considering all of the factors of a § 1404(a) transfer analysis, the court finds VMR
has not met its burden of establishing that the Southern District of Florida is clearly
more convenient, nor that the interests of justice warrant transfer.

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ORDER
IT IS ORDERED that:
1) defendant VMR Products LLC’s motion to dismiss or, in the alternative,
transfer to the United States District Court for the Southern District of Florida
(dkt. #15) is DENIED; and
2) plaintiff Grand River Enterprises Six Nations Ltd.’s motion for leave to file a
sur-reply (dkt. #28) is DENIED as moot.
Entered this 26th day of November, 2013.
BY THE COURT:
/s/
________________________________________
WILLIAM M. CONLEY
District Judge

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