USDCSDNY DOCUMENT ELECTRONICALLY FILED DOC#: DATE FILED~;AUG

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1 Case 1:12-cv AJN Document 20 Filed 08/02/13 Page 1 of 7 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK )( ALE)( AND ANI, LLC, USDCSDNY DOCUMENT ELECTRONICALLY FILED DOC#: DATE FILED~;AUG v- Plaintiff, 12 Civ (AJN) RANDA I. REEP and RODNEY REEP d/b/a BELLA RYANN and R&L MERCHANDISING, LLC, MEMORANDUM & ORDER Defendants )( ALISON J. NATHAN, District Judge: Plaintiff, Alex and Ani LLC, brings this action against Defendants Randa Reep, Rodney Reep, and R&L Merchandising, LLC ("R&L"), alleging patent infringement, trade dress infringement, unfair competition, and dilution. (Dkt, # 3, Am. Cmplt.) Before the Court is Randa Reep and Rodney Reep's ("the Reeps") motion to dismiss for lack of personal jurisdiction and improper venue or, in the alternative, to transfer this action to the United States District Court for the Middle District of Tennessee. (Dkt. # 8) R&L joins the motion solely with respect to the request to transfer venue. (Id.) For the reasons set forth below, the Court finds that transfer ofthis action to the Middle District of Tennessee is warranted. As a result, the Court does not reach the Reeps' personal jurisdiction argument. I. BACKGROUND Plaintiff is a jewelry company organized under the laws of Rhode Island with a principal place of business in Cranston, Rhode Island. (Am. Cmplt. ~~ 2, 7) It created, manufactured and distributed a bracelet which is the subject of United States Letters Patent No. D498, 167 entitled "Expandable Wire Bracelet." (Am. Cmplt. ~ 2) Plaintiff contends that its line of bracelets and charms has also achieved secondary meaning in the United States marketplace. (Id.) 1

2 Case 1:12-cv AJN Document 20 Filed 08/02/13 Page 2 of 7 The Reeps are individuals residing in Nashville, Tennessee. (Am. Cmplt. 'if'if 8-9) According to Plaintiff, the Reeps have been doing business under the name Bella Ryann and, under this name, have manufactured, imported and sold knockoff bracelets throughout the United States and attempted to capitalize on the goodwill of Plaintiffs brand. (Am. Cmplt. 'if 3) Although Bella Ryann has no corporate form or affiliation, the Reeps have allegedly held themselves out as the owners of Bella Ryann. (Am. Cmplt. 'if'if 25-26) Defendant R&L Merchandising, LLC ("R&L") is a limited liability company organized under the laws of Tennessee. (Am. Cmplt. 'if'if 4,26) The Reeps contend that it is actually R&L that has been doing business under the name Bella Ryann. (Am. Cmplt. 'if'if 4,5, 11,26) Plaintiff alleges that in 2011, Defendants retained Don Mar Associates to facilitate the sale of jewelry in New York City and Long Island. (Am. Cmplt. 'if'if 17,21-22) Subsequent to their retention, Don Mar entered into numerous contracts with New York retailers to sell Bella Ryann products. (Am. Cmplt. 'if'if 22,24) In addition, the allegedly infringing Bella Ryann jewelry was sold at various trade shows in New York from July 2011 through (Am. Cmplt. 'if 23) Defendants also entered into contracts with national retailers including Hallmark stores for the distribution of Bella Ryannjewelry. (Am. Cmplt. 'if 24) Between October 17,2012 and October 20,2012, Plaintiffs counsel sent several letters to the Reeps informing them of Plaintiffs patent and trade dress claims and warning that failure to resolve the dispute would result in the filing of a lawsuit. (Bar-Kokhba Decl. Exs. 5-7) On October 21,2012, R&L commenced a declaratory judgment action against Plaintiff in the Middle District of Tennessee seeking a ruling that its Bella Ryannjewelry was non-infringing. (Bar-Kokhba Decl. Ex. 8) Plaintiff commenced the instant action in this Court on October 22, (Dkt. # 1) 2

3 Case 1:12-cv AJN Document 20 Filed 08/02/13 Page 3 of 7 II. DISCUSSION "Although it is common to resolve challenges to personal jurisdiction before addressing motions to transfer venue, courts are not required to do so. COUlis may instead address venue applications at the threshold, when there is a sound prudential justification for doing so, because neither personal jurisdiction nor venue is fundamentally preliminary in the sense that subjectmatter jurisdiction is." SBAV LP v. Porter Bancorp, Inc., No. 13 Civ. 372,2013 WL , at *2 (S.D.N.Y. July 10,2013) (internal quotes and citations omitted). "To address a venue challenge does not require a preliminary finding that the transferring court has personal jurisdiction over the defendants[, and] where personal jurisdiction would likely exist in the transferee district over a defendant who contests personal jurisdiction in the Southern District of New York, it is prudentially appropriate to address venue first since a decision to transfer would render personal jurisdiction analysis with respect to the Southern District irrelevant." Id. (internal quotes and citations omitted). In light of the forgoing, and because it is uncontested that both the Reeps and R&L are subject to personal jurisdiction in the Middle District of Tennessee, the Court resolves Defendants' motion to transfer venue without reaching the Reeps' motion to dismiss for lack of personal jurisdiction. Pursuant to 28 U.S.C. 1404(a), "[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." "The determination whether to grant a change of venue requires a balancing of conveniences, which is left to the sound discretion of the district court." Forjone v. Cal{[ornia, No ,425 Fed. Appx. 73, 74 (2d Cir. July 06,2011) (quoting Filmline (Cross-Country) Productions, Inc. v. United Artists Corp., 865 F.2d 513,520 (2d Cir. 1989)). The movant bears the burden of establishing, by clear and convincing evidence, that a 3

4 Case 1:12-cv AJN Document 20 Filed 08/02/13 Page 4 of 7 transfer of venue is warranted. NY Marine & Gen. Ins. Co. v. Lafarge N Am., Inc., 599 F.3d 102, 114 (2d Cir. 2010). The first step in deciding a motion to transfer venue under 1404(a) is to assess whether the action could have been brought in the transferee district. SBAV LP, 2013 WL , at *3. Because the Reeps reside in Tennessee and because R&L is a Tennessee limited liability company, this action could have been brought in the Middle District of Tennessee. Next, the Court must determine whether transfer would be an appropriate exercise of its discretion. SBAV LP, 2013 WL , at *3. To do so, it must balance the following factors: (1) the convenience of the witnesses; (2) the convenience of the parties; (3) the location of relevant documents and the relative ease of access to sources of proof; (4) the locus of operative facts; (5) the availability of process to compel the attendance of unwilling witnesses; (6) the relative means of the parties; (7) the forum's familiarity with the governing law; (8) the weight accorded the plaintiff s choice of forum; and (9) trial efficiency and the interests of justice. Id. The balance of relevant factors favors transferring this action to the Middle District of Tennessee. 1. Trial Efficiency and the Interests of Justice This factor favors transfer. "The benefits of consolidating related cases in a common forum are often substantial." Everlast World's Boxing Headquarters Corp. v. Ringside, Inc., No. 12 Civ. 5297,2013 WL , at * 10 (S.D.N.Y. Mar. 04,2013). "Such consolidation may advance the strong policy interests of achieving efficient pretrial discovery, avoiding duplicative litigation, and avoiding inconsistent results." Id. See also Foothill Capital Corp. v. Kidan, No. 03 Civ. 3976, 2004 WL , at *4 (S.D.N.Y. Mar. 8,2004) ("Transfer of an action to a district where a related case is pending enables more efficient conduct of pretrial discovery, 4

5 Case 1:12-cv AJN Document 20 Filed 08/02/13 Page 5 of 7 saves witnesses time and money in both trial and pretrial proceedings thereby eliminating unnecessary expense to the parties while at the same time serving the public interest."). Essentially the mirror image of this action is currently proceeding before the United States District Court for the Middle District of Tennessee; the same parties are litigating the central issue raised here - are the Bella Ryann products infringing goods? Transfer of this action the Middle District of Tennessee would allow consolidation of these two actions, would conserve the resources of the parties, their witnesses and the courts, and would prevent inconsistent results. This factor therefore weighs in favor of transfer. 2. Plaintiff's Choice of Forum and the Locus of Operative Facts These factors ultimately weigh in favor of transfer. Although a plaintiff's choice of forum is generally accorded significant weight in the 1404(a) balancing test, this is not the case if the chosen forum has a limited connection with the locus of operative facts. SBA V, 2013 WL , at * 11. With respect to claims of trade dress infringement, dilution, and unfair competition, the locus of operative facts is where the infringement, dilution, and unfair competition occurred. CYL Inc. v. Ja-Ru, Inc., 913 F. Supp. 2d 16, 19 (S.D.N.Y. 2012). While Plaintiff certainly alleges that some of these acts occurred in New York, Plaintiff also contends that the Bella Ryann products were marketed and sold throughout the United States. In other words, this forum's connection to the operative facts is not unique. Furthermore, the locus of the operative facts with respect to patent infringement claims is generally where the patented invention was developed or where the allegedly infringing product was designed, developed, and produced. France Telecom S.A. v. Marvell Semiconductor, Inc., No. 12 Civ. 4986,2012 WL , at * 1 (S.D.N.Y. Dec. 28, 2012). Here, that includes Rhode Island and Tennessee but not New York. 5

6 Case 1:12-cv AJN Document 20 Filed 08/02/13 Page 6 of 7 3. The Forum's Familiarity With the Governing Law This factor is neutral because the Middle District of Tennessee is equally competent to hear Plaintiff's federal claims, and "federal courts are deemed capable of applying the substantive law of other states," Indian Harbor Ins. Co. v. NL Environmental Mgmt., No. 12 Civ. 2045,2013 WL , at *10 (S.D.N.Y. Mar. 19,2013). 4. The Convenience of the Parties This factor weighs in favor transfer. While all three defendants are located in Tennessee, Plaintiff's only connection to New York is that it maintains retail locations in New York City; Plaintiff is otherwise based in Rhode Island. 5. The Convenience of the Witnesses, the Relative Means of the Parties, the Location of Relevant Documents and the Relative Ease of Access to Sources of Proof The convenience of the parties, the location of relevant documents, the availability of process to compel the attendance of unwilling witnesses, and the relative means of the parties are largely neutral factors. * * * Having duly considered the above-listed factors, the Court finds that transfer of this action to the Middle District of Tennessee is appropriate. 6

7 Case 1:12-cv AJN Document 20 Filed 08/02/13 Page 7 of 7 III. CONCLUSION For the forgoing reasons, Defendants' motion to transfer venue is GRANTED. Defendants' motion is otherwise denied without prejudice. The Clerk of the COUli is directed to transfer this action to the United States District Court for the Middle District of Tennessee. This resolves docket number 8. SO ORDERED. Dated: August 2, 2013 New York, New York United States District Judge 7