United States District Court, Northern District of Illinois, E.D
July 18, 1984
GALLERY HOUSE, INC., PLAINTIFF,
ALAN YI, D/B/A CAPITAL TRADING COMPANY, AND JOY'S CLOCK SHOP, LTD., DEFENDANTS.
The opinion of the court was delivered by: Bua, District Judge.
Before the Court is defendants' motion to transfer this case to
the District Court for the Western District of Washington at
Seattle, Washington pursuant 28 U.S.C. § 1404(a). For the reasons
stated herein, defendants' motion to transfer is denied.
The following facts are set forth in the complaint filed by
plaintiff Gallery House on February 15, 1984, and affidavits
submitted by the parties.
Plaintiff Gallery House, Inc. ("Gallery House"), an Illinois
corporation with its principal place of business in Chicago,
Illinois, is in the business of designing and marketing brass
statues on a nationwide basis. Defendant Capital Trading Company
("Capital") is a sole proprietorship owned and operated by Alan
Yi, an individual having offices in Redmond, Washington. Capital
is an importer and nationwide distributor of brass statues and
works of art. Defendant Joy's Clock Shop, Ltd. ("Joy's"), an
Illinois corporation with its principal place of business in
Chicago, Illinois, is a retail outlet offering items for sale to
Gallery House brings this action to recover damages for Capital
and Joy's alleged infringement of the Copyright Laws of the
United States, 17 U.S.C. § 101 et seq. Capital purchases brass
statutes made by Keang Nam Brassware Company ("Keang Nam") of
Seoul, South Korea. Keang Nam formerly manufactured copyrighted
brass statues sold by Gallery House under the trade name
"Dolbi-Cashier." The statues in question sold by Capital are
indistinguishable from statues sold by Gallery House. Gallery
House claims to own copyrights on the statues in issue.
During the week of January 30, 1984, Mr. Alan Yi, owner and
operator of Capital, attended the Chicago Gift Show held in
Chicago, Illinois. At the show, Capital distributed its catalog
containing pictures of the alleged infringing works, offered
those items for sale, and sold certain items to the trade and
purchasing public. Two items were sold and delivered to Joy's,
which Joy's in turn sold to the purchasing public.
On February 17, 1984, pursuant to motion, this Court entered a
temporary restraining order enjoining Capital and Joy's from
further sale, offering for sale and distribution of the alleged
infringing works. On March 26, 1984, this Court granted
plaintiff's motion for a preliminary injunction enjoining Capital
and Joy's from selling, offering for sale, advertising or
displaying the alleged infringing items. On April 20, 1984,
Capital filed a notice of appeal in the United States Court of
Appeals for the Seventh Circuit. Prior to that filing, on April
9, 1984, Capital filed a motion to transfer venue to the Western
District of Washington under 28 U.S.C. § 1404(a).
Capital requests transfer to the Western District of Washington
at Seattle, Washington under 28 U.S.C. § 1404(a). Section 1404(a)
For 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.
The decision to transfer venue lies within the sound discretion
of the district court judge. Cunningham v. Cunningham,
477 F. Supp. 632, 634 (N.D.Ill. 1979). Although § 1404(a) evolved out
of the doctrine of forum non conveniens, the scope of a district
court's discretion is broader than under the common law. Norwood
v. Kirkpatrick, 349 U.S. 29, 75 S.Ct. 544, 99 L.Ed. 789 (1955);
Brown v. Grimm, 624 F.2d 58 (7th Cir. 1980). The party seeking
transfer has the burden of proving transfer is proper and must
establish that the balance weighs strongly in favor of the
transferee's district. Cunningham, 477 F. Supp. at 634; Cinema
Systems, Inc. v. Lab Methods Corp., 545 F. Supp. 403 (N.D.Ill.
In order to show that transfer of venue is proper under
28 U.S.C. § 1404(a), the moving party must establish that (1) venue
is proper in the transferor district; (2) venue is proper in the
transferee district; (3) the transfer is for the convenience of
parties and witnesses and in the interest of justice. Midwest
Precision Services v. PTM Industries, 574 F. Supp. 657, 659
A. Proper Venue in Transferor District
Venue is proper in the transferor district, the Northern
District of Illinois, as to defendants Capital Trading Co. and
Joy's Clock Shop. Although Capital implies that venue as pertains
to it is "tenuous at best," Capital does not dispute this Court's
determination of proper venue pursuant to 28 U.S.C. § 1391 and §
Section 1400(a) provides:
Civil actions, suits or proceedings arising under any
Act of Congress relating to copyrights may be
instituted in the district
where defendant or his agent may be found.
Under 28 U.S.C. § 1400(a) the test for determining whether a
nonresident defendant "may be found" within a district is the
same as that for determining personal jurisdiction. Kogan v.
Longstreet, 374 F. Supp. 47
, 50 (N.D.Ill. 1974); Battle Creek
Equipment Co. v. Roberts Mfg. Co., 460 F. Supp. 18, 21-22
(W.D.Mich. 1978). This test requires that the defendant have
certain minimum contacts with the forum so that maintenance of
the suit does not offend "traditional notions of fair play and
substantial justice." International Shoe Co. v. Washington,
326 U.S. 310
, 316, 66 S.Ct. 154, 158, 90 L.Ed. 95 (1945). The contact
must only be such that the defendant could reasonably anticipate
being subject to suit in the forum state. Ronco, Inc. v.
Plastics, Inc., 539 F. Supp. 391
,399 (N.D.Ill. 1982).
In this regard, Capital's activities within Illinois do satisfy
the "minimum contacts" test of International Shoe. Capital
traveled to and stayed in Chicago, Illinois, during the week of
January 30, 1984. While in the Northern District of Illinois,
Capital offered for sale all of the allegedly infringing works,
displayed some of them at the Chicago Gift Show, and sold and
delivered certain of them. Capital sold several items to Joy's,
an Illinois corporation with a retail outlet in Chicago,
Illinois. Thus, Capital availed itself of the benefit of doing
business in Illinois markets. It does not offend "notions of fair
play" to subject Capital to suit in this forum. See Ronco, 539
F. Supp. at 400. Since the "minimum contacts" test is satisfied,
venue under § 1400(a) in this district is proper.
B. Proper Venue in Transferee District
Venue is proper in the transferee district, the Western
District of Washington, as to defendant Capital. Plaintiff
Gallery House asserts, however, and Capital does not dispute,
that Joy's is not within the reach of process of the Western
District of Washington. Since Joy's cannot be sued in Washington,
venue is not proper as to Joy's under 28 U.S.C. § 1400(a).
Therefore, the suit involving Joy's cannot be transferred to
Washington pursuant to 28 U.S.C. § 1404(a). Hoffman v. Blaski,
363 U.S. 335, 80 S.Ct. 1084, 4 L.Ed.2d 1254 (1960).
Defendants, however, argue that Joy's is a nominal defendant
and can be eliminated from consideration. In a case involving
multiple defendants, transfer may not be made if one of the
defendants is not subject to suit in the transferee's district.
Relf v. Gasch, 511 F.2d 804 (D.C. Cir. 1975); Schutte v. Armco
Steel Corp., 431 F.2d 22 (3d Cir. 1970). It is possible, however,
where one defendant is only secondarily involved in a case, to
sever the action and transfer the new cause of action against the
defendant as to whom transfer is permissible. Hess v. Gray, 85
F.R.D. 15, 22 (N.D.Ill. 1979); Burroughs Corp. v. Newark
Electronics Corp., 317 F. Supp. 191, 192 (N.D.Ill. 1970).
Severance in order to permit the transfer of the action is
permitted when: (1) the administration of justice would be
materially advanced, and (2) the absence of the secondarily
involved defendant would not inconvenience the transferee court
or the parties. Hess, 85 F.R.D. at 22-23. "However, the most
compelling factor in determining appropriateness of transfer [of
venue] is the interest of society in efficient administration of
justice." Magnavox Co. v. APF Electronics, Inc., 496 F. Supp. 29,
34 (N.D.Ill. 1980).
The most efficient administration of justice in this case
compels the continuation of this action against both defendants
Capital and Joy's in the same forum. Several issues relevant to
this suit have already been decided by this Court and one motion
is pending on appeal before the United States Court of Appeals
for the Seventh Circuit. Clearly, the most efficient
administration of justice can be had in this forum where the
action has already proceeded for several months and matters
relating to both defendants can be resolved in the same suit.
Therefore, transfer of this case is not appropriate under §
1404(a) because venue in the Western District of
Washington is not proper as to Joy's under § 1400(a).
C. Convenience of the Parties
Capital asserts that transfer of venue to the Western District
of Washington is more convenient for it, although inconvenient
for Gallery House. Capital suggests that Gallery House, being the
larger company, is better able to bear the costs of litigation in
a foreign forum and thus should be the party inconvenienced.
While the relative bargaining power and the financial position
of the parties can be taken into consideration, it is only one of
several factors to be evaluated. Bolton v. Tesoro Petroleum
Corp., 549 F. Supp. 1312, 1317 (E.D.Pa. 1982); Mutual of Omaha
Insurance Company v. Dolby, 531 F. Supp. 511, 514 (E.D.Pa. 1982).
The plaintiff's choice of forum is a factor entitled to
substantial weight under 28 U.S.C. § 1404(a), particularly when
the plaintiff has selected his home forum. Piper Aircraft v.
Reyno, 454 U.S. 235, 102 S.Ct. 252, 70 L.Ed.2d 419 (1981); Ronco,
Inc. v. Plastics, Inc., 539 F. Supp. 391 (N.D.Ill. 1982). Unless
there is a clear difference in convenience, the plaintiff's
choice of forum is determinative. NTN Bearing Corp. v. Charles E.
Scott, Inc., 557 F. Supp. 1273 (N.D.Ill. 1983).
Although there is some inconvenience to Capital, transfer of
this case to the Western District of Washington would simply
shift the inconvenience from Capital to Gallery House. A mere
shift in inconvenience is not a strong enough reason to disturb
the plaintiff's choice of forum. Id. at 1279; Bodines, Inc. v.
Sunny-O, Inc., 494 F. Supp. 1279, 1286 (N.D.Ill. 1980).
D. Convenience of the Witnesses
In this case it appears most of the known witnesses live in
Illinois. Corporate officers and employees of Gallery House who
may give testimony live in Illinois, and Joy's Clock Shop is
here. The only possible witness mentioned by Capital other than
Mr. Yi, owner and operator of the company, is Mr. K.K. Lee of
Korea. Although Chicago is farther from Korea than Seattle, once
Mr. Lee is in transit a few more hours on an airplane is not much
of an imposition.
E. Interest of Justice
Factors listed by the Supreme Court to be considered in
evaluating whether transfer is in the interest of justice are:
. . relative ease of access to sources of proof;
availability of compulsory process for attendance of
unwilling, and the cost of obtaining attendance of
willing, witnesses; . . . and all other practical
problems that make a trial easy, expeditious. and
Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508, 67 S.Ct. 839, 843,
91 L.Ed. 1055 (1947); Cunningham v. Cunningham, 477 F. Supp. 632,
635 (N.D.Ill. 1979).
In this case it appears most of the sources of proof are in
Illinois. The majority of witnesses are located in Illinois and
would not be subject to compulsory process if the forum were
transferred to Washington. The cost of transporting a number of
persons from Chicago to Seattle is greater than the cost of one
person, Mr. Yi, traveling from Seattle to Chicago.
Defendant Capital Trading Company has not sustained its burden
to justify transfer. The substantial weight granted to plaintiff
Gallery House's choice of forum has not been overcome by showing
that this district is an inconvenient forum or that convenience
of the parties, convenience of the witnesses, and the interest of
justice would be best served by transfer.
Accordingly, defendants' motion to transfer to the Western
District of Washington under 28 U.S.C. § 1404(a) is denied.
IT IS SO ORDERED.
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