United States District Court, Northern District of Illinois, E.D
June 15, 1984
ASSOCIATED MILLS, INC., PLAINTIFF,
RUSH-HAMPTON INDUSTRIES, INC., DEFENDANT.
The opinion of the court was delivered by: Shadur, District Judge.
MEMORANDUM OPINION AND ORDER
Associated Mills, Inc. ("Associated Mills") has filed a
multi-count Complaint against Rush-Hampton Industries, Inc.
1. Count I is brought under the Lanham Act,
charging infringement of Associated Mills'
federally-registered "Pollenex" trademarks.
2. Count II asserts the federal version of
commonlaw unfair competition under Lanham Act §
43(a), 15 U.S.C. § 1125(a).
3. Count III (asserting both diversity of
citizenship and pendent jurisdiction) charges unfair
competition and deceptive trade practices.
Rush-Hampton has both answered and gone on the attack via
affirmative defenses and a counterclaim against Associated Mills'
registrations, but its principal interest just now is in transfer
to the United States District Court for the Middle District of
Florida, Orlando Division under 28 U.S.C. § 1404(a) ("Section
1404(a)"). For the reasons stated in this memorandum opinion and
order, that motion is granted.
Analysis Under Section 1404(a)
In the days before enactment of Section 1404(a), the
judicially-created doctrine of forum non conveniens was the
courts' only vehicle to moderate the sometimes-unfair effects of
the expansion of in personam jurisdiction wrought by
International Shoe Co. v. State of Washington, 326 U.S. 310, 66
S.Ct. 154, 90 L.Ed. 95 (1945) and its progeny. Those cases taught
it was constitutional to hale a defendant into court in a
far-away forum once that forum was shown to have enough contacts
with the defendant to support the assertion of jurisdiction
(either in "general jurisdiction" or "specific jurisdiction"
terms*fn1). But constitutionality was not necessarily controlling
where the burdens of defense away from home materially outweighed
the countervailing considerations favoring the forum — hence
"forum non conveniens."
At the same time, the remedy of outright dismissal on forum non
conveniens grounds involved substantial costs to the plaintiff.
Rejection of the forum as "inconvenient" forced a plaintiff to
begin all over again in a new forum: hiring new counsel, adapting
the complaint to the new jurisdiction's pleading requirements,
having to serve the defendant afresh, dealing with new
choice-of-law rules and perhaps new substantive law — and the
list can go on.
Understandably then the forum non conveniens doctrine gave a
good deal of weight to the plaintiff's forum selection. Gulf Oil
Co. v. Gilbert, 330 U.S. 501, 508, 67 S.Ct. 839, 843, 91 L.Ed.
1055 (1947) put it simply:
But unless the balance is strongly in favor of the
defendant, the plaintiff's choice of forum should
rarely be disturbed.
Only when general jurisdiction was involved and "none of the
conduct complained of occurred in the forum selected by the
plaintiff" was the plaintiff's preference viewed as having
"minimal value." Chicago, Rock Island & Pacific R.R. Co. v. Igoe,
220 F.2d 299
, 304 (7th Cir. 1955).
Now Section 1404(a) transfers eliminate most of the adverse
effects of forum
non conveniens dismissal recited earlier.*fn2 It is therefore
equally understandable that the plaintiff's choice of forum is
not given the same heavy emphasis in Section 1404(a)
determinations as under forum non conveniens. Norwood v.
Kirkpatrick, 349 U.S. 29, 32, 75 S.Ct. 544, 546, 99 L.Ed. 789
(1955); and see Piper Aircraft Co. v. Reyno, 454 U.S. 235, 253,
102 S.Ct. 252, 264, 70 L.Ed.2d 419 (1981). Instead choice of
forum is one relevant factor in the balancing among the
trichotomy identified in Section 1404(a): convenience of parties,
convenience of witnesses and the interest of justice. Assuredly
the forum choice is a component of plaintiff's "convenience," and
it may also enter into the "interest of justice" analysis, but it
no longer has overpowering force.
Here the facts do not literally fit the Chicago, Rock Island
mold, but they are not far from it. Rush-Hampton has no ongoing
Illinois presence as all: It maintains no executive,
administrative or sales offices in Illinois, nor does it have any
facilities or employees here. It has no Illinois bank accounts or
telephone listings, and it is not registered to do business here.
It insists it has never made a sale of the alleged infringing
products within this state, but Associated Mills retorts the
accused items were offered for sale during the week of April 9,
1984 at the National Housewares Manufacturers Exposition at
McCormick Place here in Chicago.
In terms of the basic dispute between the parties,
Rush-Hampton's limited Illinois involvement (by displaying
merchandise and passing out literature at the Housewares' show)
may have been enough to subject it to this Court's power, but it
is not the smoking gun that makes such Illinois conduct the
principal basis for Associated Mills' claimed relief. Instead the
Complaint is about Rush-Hampton's general conduct in having
designed and developed its packages and literature featuring the
Pollenex name.*fn3 Consequently this opinion's Section 1404(a)
analysis will proceed unburdened by undue emphasis on the fact
Associated Mills selected Illinois as its chosen forum.
1. Convenience of the Parties
"Convenience of the parties" (except as impacted by the
convenience of witnesses) is a true standoff. Except for some
regional sales offices located elsewhere, Associated Mills is
wholly Illinois-based: Its manufacturing and distribution
facilities, officers, managing agents, technical personnel and
all other employees are located in this District. Rush-Hampton
had an identical relationship to Sanford, Florida. Last month it
sold its assets relating to the replacement air filter business
to General Time Corporation of Phoenix, Arizona, but if and to
the extent General Time continues the same business at all
(apparently a matter of some question), it does not appear that
activity is likely to be transplanted to Arizona. Most
importantly, though, the transaction was indeed a sale of assets,
and all of Rush-Hampton's own people and records remain in
One added point should be discussed — the location of
documents. That too is usually a standoff except in a case
involving massive documents. Each party would of course be
discommoded by the need to transport documents to the other's
base, but the photocopying of documents is always necessary no
matter where the lawsuit is to be tried, and their transmittal is
often not a really serious burden.
In any case each party, would be discommoded by having to
litigate on the other's turf. Were this the only element to be
considered, Associated Mills' choice of forum would prevail.
2. Convenience of Witnesses
Again the same pattern of diverse locations presents itself:
Associated Mills' prospective witnesses are in Illinois, while
Rush-Hampton's are mostly (but not all) in Florida. But two
important differences weight the analysis heavily toward
1. Of the seven potential witnesses identified in
the affidavit of Associated Mills' President Richard
Stern, several are likely to be unnecessary (or of
minimal marginal utility), because there is not
likely to be any dispute about the areas Stern
identifies for their testimony. Associated Mills'
purely optional addition of witnesses should not be
allowed to enter heavily into the balance. Moreover
Associated Mills can control all its witnesses (all
except its advertising firm are its own employees)
and could readily deliver them to testify in a
2. Rush-Hampton's President J. Rushton Bailey has
identified a comparable roster of prospective
witnesses. There are basically the same number of its
own people as Associated Mills has set out (except
that all the Rush-Hampton witnesses appear to be
needed to testify in areas more likely to be
controverted), plus an outside advertising agency
located at Rush-Hampton's home base.*fn4 But the sale of
its business has occasioned a dramatic change, for it
can no longer assure the presence of its key people,
and they would not be subject to process here as they
would in Florida. Gulf Oil, 330 U.S. at 511, 67 S.Ct.
at 844, made plain a principle that has as much force
for Section 1404(a) as it did for forum non
Certainly to fix the place of trial at a point
where litigants cannot compel personal attendance
and may be forced to try their cases on deposition,
is to create a condition not satisfactory to court,
jury or most litigants.
It is plain the convenience of witnesses tilts very
substantially toward Florida. Rush-Hampton's position is far more
3. Interest of Justice
For the most part the factors enumerated in Gulf Oil that have
come to be associated with "interest of justice" analysis (330
U.S. at 508-09, 67 S.Ct. at 843) are equally balanced. Each
jurisdiction has much to be said for it, when viewed only from
the perspective of the litigant advocating it. But one important
factor points to Florida: Examination of the trial calendar for
the Florida District Court indicates that trial of civil actions
usually takes place within a year of their commencement.
That is far from true here. Our District Court annually ranks
first, second or third in the weighted case loads for United
States District Courts nationally, and that burden manifests
itself in part by substantial delays in getting to trial. Of
course litigants may with diligence be ready for trial in a year,
and this Court has on rare occasions tried a civil case in that
kind of time span. But in fairness to all litigants on a calendar
of some 400 cases, this Court assigns cases for trial in the
order in which they reach the final pretrial order stage. Right
now cases in that category represent an estimated 40 or more
weeks of trial time. Add to that the fact criminal trials
regularly appear to occupy from one-third to one-half the active
trial time in our District,
and the unreality of a trial within one year for a newly-filed
case is apparent.
Thus the interest of justice too would be served by transfer to
Florida. This last of the three Section 1404(a) factors points in
the same direction as the convenience of witnesses.
This Court has considered all the relevant factors mandated by
Section 1404(a), including appropriate consideration for
Associated Mills' decision to file suit here. Because those
factors call for transfer, this action is transferred to the
United States District Court for the Middle District of Florida,