United States District Court, N.D. Illinois, Eastern Division
REPUBLIC TECHNOLOGIES (NA), LLC and REPUBLIC TOBACCO, L.P., Plaintiffs,
BBK TOBACCO & FOODS, LLC d/b/a HBI INTERNATIONAL, Defendant.
MEMORANDUM OPINION AND ORDER
E. Bucklo, United States District Judge.
me is a motion by defendant BBK Tobacco & Foods LLP,
d/b/a HBI International (“HBI”) to transfer this
action to the U.S. District Court for the District of
Arizona. For the reasons below, the motion is denied.
Republic Technologies (NA), LLC and Republic Tobacco, L.P.
(together, “Republic”) filed this suit against
HBI in March 2016, seeking a declaratory judgment that HBI
owns no protectable interest in its trade dress, or that
Republic has not infringed HBI's trade dress rights. HBI
moved to dismiss the complaint on the ground that there was
no actual controversy between the parties. On July 7, 2016, I
granted HBI's motion to dismiss, without prejudice to
Republic's right to file an amended complaint containing
additional factual allegations sufficient to demonstrate the
existence of an actual controversy between the parties.
August 4, 2016, Republic filed an amended complaint. In
addition to its claim for declaratory relief, the amended
complaint asserts claims for unfair competition under the
Lanham Act, 15 U.S.C. § 1125(a), common law unfair
competition, and violation of the Illinois Uniform Deceptive
Trade Practices Act, 815 ILCS 510. Meanwhile, on July 8, 2016
-- the day after I granted HBI's motion to dismiss -- HBI
filed a separate suit against Republic in the District of
Arizona. HBI's complaint alleges federal claims for
trademark infringement, 15 U.S.C. § 1114, “Federal
False Designation of Origin and Representation, ” 15
U.S.C. § 1125, and copyright infringement, as well as
claims under Arizona law for trademark infringement and
unfair competition. HBI did not inform Republic of the action
until three weeks later, on July 28, 2016. According to HBI,
this was because the parties' counsel had
“re-commenced settlement communications immediately
following this Court's dismissal of the initial complaint
and after the filing of the Arizona complaint and before
service of the Arizona complaint.” Reply Br. at 3.
filed a motion to stay in the Arizona action. BBK Tobacco
& Foods LLP v. Republic Technologies (NA) LLC et
al., No. 16 C 2263 (D. Ariz. filed Aug. 15, 2016), ECF
No. 11. The motion has not yet been decided. HBI filed a
motion to dismiss the amended complaint or to transfer this
action to Arizona.
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.” 28 U.S.C. § 1404(a).
“Courts may transfer a case under Section 1404(a) when:
(1) venue is proper in the transferor district; (2) venue is
proper in the transferee district; (3) the transfer will
serve the convenience of the parties and witnesses; and (4)
the transfer will serve the interests of justice.”
Hanover Ins. Co. v. N. Bldg, . Co., 891 F.Supp.2d
1019, 1025 (N.D. Ill. 2012). The movant bears the burden of
establishing that the transferee forum is clearly more
convenient. See, e.g., Coffey v. Van Dorn Iron
Works, 796 F.2d 217, 219-20 (7th Cir. 1986).
initial brief in support of its motion to dismiss or transfer
presents no argument in support of its request for transfer.
Although the brief recites the factors relevant to the
inquiry under § 1404, it is only in its reply brief that
HBI attempts to show why these factors support transfer of
the litigation. This alone warrants denial of HBI's
motion. See, e.g., Baeco Plastics,
Inc. v. Inacomp Fin. Servs., Inc., 51 F.3d 275 (7th Cir.
1995) (“A party's principal argument must appear in
the opening brief, so that it may be answered. A litigant may
not throw down a gauntlet in the opening brief and reserve
its argument for the reply brief.”). Even on the
merits, however, HBI's motion fails. Since the parties do
not dispute the propriety of venue in either district, the
only question here is whether transfer would be more
convenient for the parties and witnesses and would promote
the interests of justice. I conclude that it would not.
Convenience of the Parties and Witnesses
evaluating the convenience of the parties and witnesses,
courts weigh: “(1) the plaintiff's choice of forum;
(2) the situs of the material events; (3) the relative ease
of access to sources of proof; (4) the convenience of the
witnesses; and (5) the convenience to the parties of
litigating in the respective forums.” Hanover
Ins., 891 F.Supp.2d at 1025.
first factor -- the plaintiff's choice of forum -- is
typically accorded significant weight where, as here, the
plaintiff resides in the chosen forum. See, e.g.,
Basile v. Prometheus Glob. Media, LLC, No.
15-CV-10138, 2016 WL 2987004, at *5 (N.D. Ill. May 24, 2016).
However, as HBI correctly points out, where there are
parallel cases “involv[ing] a declaratory judgment
action and a mirror-image action seeking coercive relief[,
courts] ordinarily give priority to the coercive action,
regardless of which case was filed first, ”
Research Automation, Inc. v. Schrader-Bridgeport
Int'l, Inc., 626 F.3d 973, 980 (7th Cir. 2010).
Since Republic's suit initially sought only declaratory
relief and HBI's suit seeks coercive relief, HBI claims
that the Arizona action should be given priority.
argument fails for at least two reasons. First, in light of
the additional claims asserted in Republic's amended
complaint, both parties' actions are
“coercive.” While Republic's original
complaint sought only declaratory relief, HBI cites no
authority suggesting that this ought to make a difference in
the transfer analysis.
the Seventh Circuit has never held that coercive actions
automatically take precedence over declaratory judgment
actions. On the contrary, Research Automation, on
which HBI principally relies, emphasizes that “there is
no precise rule for resolving the problem created by
mirror-image lawsuits in two different federal courts,
” 626 F.3d at 982 (quotation marks omitted), and that
the transfer statute permits a “flexible and
individualized analysis and affords district courts the
opportunity to look beyond a narrow or rigid set of
considerations in their determinations, ” id.
at 978. While the court noted that priority is
“ordinarily” given to coercive actions, the
circumstances of this case are not ordinary. Typically,
parallel suits are filed within days of one another. See,
e.g., Research Automation, 626 F.3d at 976
(coercive action filed seventeen days after declaratory
judgment action); Tempco Elec. Heater Corp. v. Omega
Eng'g, Inc., 819 F.2d 746, 749 (7th Cir. 1987)
(infringement action filed four days after declaratory
judgment action). Here, ...