United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
M. Dow, Jr. United States District Judge
Kirsten Kjaer Weis (“Plaintiff”) brings suit
against Defendant Kimsaprincess Inc.
(“Defendant”) for trademark infringement and
unfair competition in violation of the Lanham Act, the
Illinois Uniform Deceptive Trade Practices Act, and Illinois
common law. Currently before the Court is Defendant's
motion  to transfer venue to the Central District of
California pursuant to 28 U.S.C. § 1404(a). For the
reasons explained below, Defendant's motion is granted.
The Clerk is directed to transfer the case to the Central
District of California for all further proceedings.
is a Danish makeup artist. [1 ¶ 4.] Since 2010,
Plaintiff has developed and sold a line of luxury organic
beauty products, including cosmetics, makeup, and skin care
products, through her licensee Kjaer Weis, LLC. [Id.
¶¶ 4, 28.] These products have been featured in
several national publications and are available for purchase
at various retail outlets. [Id. ¶¶ 29-
31.] In connection with this product line, Plaintiff owns
several registered trademarks for stylized versions of her
initials (“KW”) and her full last name
(“Kjaer Weis”). [Id. ¶¶ 7-14.]
All of Plaintiff's beauty products are branded with
Plaintiff's marks. [Id. ¶ 16.] Plaintiff
lives in New York, New York, and her company is also based
there. [Id. ¶ 4.]
is a California loan-out corporation with a principal place
of business in Woodland Hills, California. [1 ¶ 17; 19
at 4.] Defendant has no offices or employees in Illinois. [19
at 4.] Defendant is owned by television personality Kim
Kardashian West (“Kardashian”). [Id.]
Through Defendant, Kardashian endorses various products and
services, including beauty and cosmetics products, which are
branded with her name and/or her initials. [Id.; 1
¶ 37.] Kardashian is a resident of Calabasas,
California, and she does not live in or own property in
Illinois. [19 at 4; 19-1 ¶ 2.]
dispute involves a cosmetics line called “KKW
Beauty” that was released publicly in June 2017. [1
¶ 38; 19 at 4.] Kardashian endorses and sponsors this
brand, and the products are branded with Kardashian's
initials (“KKW”). [19 at 4.] KKW Beauty products
are sold exclusively online and are available to consumers
across the United States (including those in Illinois). [1
¶¶ 22-23; 19-1 ¶ 7.] Seed Beauty (a third
party not named as a defendant) designs, manufactures, and
distributes the KKW Beauty products. [1 at Ex. J; 32 at 9.]
Seed Beauty is based in Oxnard, California. [19 at 5; 32 at
9.] Kardashian's manager Kris Jenner was responsible for
negotiating the agreements underlying Kardashian's
involvement with KKW Beauty products. [19 at 5; 19-1 ¶
11.] Ms. Jenner resides in Los Angeles County, California.
[19-1 ¶ 11.]
alleges that Defendant is a direct competitor in the beauty
product market and that Defendant's “KKW”
designations on KKW Beauty products are confusingly similar
to Plaintiff's marks. [1 ¶¶ 18-24, 37-43.]
Plaintiff further alleges that because of this similarity,
consumers will likely be confused and mistakenly believe that
her beauty products are affiliated with Kardashian.
[Id. ¶¶ 24, 33-36.] Plaintiff filed this
action on July 25, 2017, asserting claims for trademark
infringement under the Lanham Act, unfair competition under
the Lanham Act, violation of the Illinois Uniform Deceptive
Trade Practices Act, common law trademark infringement, and
common law unfair competition. [Id. ¶¶
44-75.] Plaintiff seeks both damages and equitable relief.
[Id. at 15-17.]
has moved pursuant to 28 U.S.C. § 1404(a) to transfer
this case to the Central District of California. [See 17.]
Defendant argues that the Central District of California is a
more appropriate forum because it provides better access to
documents and witnesses, it is the situs of the acts of
alleged infringement, and California has a stronger interest
in adjudicating this dispute than Illinois. Plaintiff
counters that venue is proper in Illinois, material events
occurred in Illinois, and it would be inconvenient for
Plaintiff and Plaintiff's witnesses to travel to
California. [See 24.] Alternatively, Plaintiff argues that if
transfer is considered appropriate, this action should be
transferred to the Southern District of New York instead.
1404(a) provides 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.” 28
U.S.C. § 1404(a). Section 1404(a) authorizes the Court
to transfer matters based on an “individualized,
case-by-case consideration of convenience and
fairness.” Stewart Org., Inc. v. Ricoh Corp.,
487 U.S. 22, 29 (1988). Therefore, the Seventh Circuit
“grant[s] a substantial degree of deference to the
district court in deciding whether transfer is
appropriate.” Research Automation, Inc. v.
Schrader-Bridgeport Int'l, Inc., 626 F.3d 973,
977-78 (7th Cir. 2010). The Court 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
Court will consider these factors in turn.
Is venue proper in the transferor and transferee
parties do not dispute that venue is proper in both the
transferor and transferee district.
Court agrees that venue is proper in this District. Pursuant
to 28 U.S.C. § 1391(b)(2), “[a] civil action may
be brought in * * * a judicial district in which a
substantial part of the events or omissions giving rise to
the claim occurred.” Plaintiff has established venue in
this district “because [she] allege[s] that [she]
suffered injury in this District as a result of
Defendant['s] alleged trademark infringement [and] unfair
competition.” Midas Int'l Corp. v.
Chesley, 2012 WL 1357708, at *2 (N.D. Ill. Apr. 19,
2012) (citing Clipp Designs, Inc. v. Tag Bags, Inc.,
996 F.Supp. 766, 769 (N.D. Ill. 1998)).
Court also agrees that venue would be proper in the Central
District of California because it is a district “where
[the action] might have been brought.” 28 U.S.C. §
1404(a). Defendant resides in the Central District of
California, meaning venue is proper in that district. See 28
U.S.C. § 1391(b)(1) (venue is proper in “a
judicial district in which any defendant resides”).
Will transfer serve the convenience of the parties and
evaluating the convenience of the parties and witnesses,
courts weigh the following factors: (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. Co., 891 F.Supp.2d at 1025 (citing
Allied Van Lines, Inc. v. Aaron Transfer & Storage,
Inc.,200 F.Supp.2d 941, 946 (N.D. Ill. 2002)).
Defendant “has the burden of establishing, by reference
to particular circumstances, that the transferee forum is
clearly more ...