Hood River Distillers Inc v Sleeping Giant Beverage Company Inc, No. 2:2019cv00048 - Document 30 (E.D. Wash. 2019)
Court Description: ORDER DENYING 17 MOTION TO CHANGE VENUE. Signed by Judge Salvador Mendoza, Jr. (SG, Case Administrator)
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Hood River Distillers Inc v Sleeping Giant Beverage Company Inc Doc. 30 1 FI LED I N THE U.S. DI STRI CT COURT EASTERN DI STRI CT OF WASHI NGTON 2 Apr 30, 2019 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WASHINGTON 3 SEAN F. MCAVOY, CLERK 4 HOOD RIVER DISTILLERS INC., No. 2:19-cv-00048-SMJ 5 Plaintiff, ORDER DENYING MOTION TO CHANGE VENUE 6 v. 7 8 SLEEPING GIANT BEVERAGE COMPANY INC., doing business as Lewis & Clark Brewing Company, 9 Defendant. 10 11 Before the Court is Defendant Sleeping Giant Beverage Company Inc.’s 12 Motion for Transfer, ECF No. 17. Defendant moves to transfer venue under 28 13 U.S.C. § 1404(a) to the District Court for the District of Montana, specifically to 14 the courthouse located in Helena, Montana. Plaintiff Hood River Distillers Inc. 15 opposes the motion. ECF No. 27. As the Court finds that oral argument is not 16 warranted under Local Civil Rule 7(i)(3)(B)(iii), the Court considered the motion 17 without oral argument on the date signed below. Having reviewed the pleadings and 18 the documents submitted, the Court is fully informed and denies the motion. 19 20 BACKGROUND Plaintiff is an Oregon corporation with its principal place of business in Hood ORDER DENYING MOTION TO CHANGE VENUE - 1 Dockets.Justia.com 1 River, Oregon. ECF No. 1, 4. In 2004, Plaintiff obtained the trademark rights to 2 LEWIS & CLARK (the “trademark”) from Montana Distillers, which had been 3 using the trademark since at least as early as 1986. Id. at 2. Plaintiff sells distilled 4 spirits under the trademark LEWIS & CLARK throughout the United States, 5 including in Spokane, Washington. Id. Indeed, each year since 2013, Plaintiff has 6 sold at least 2250 nine-liter cases of spirits branded with the trademark in Spokane, 7 Washington. Id. 8 On October 24, 2004, Plaintiff filed a United States Trademark Application 9 to protect the LEWIS & CLARK trademark for distilled spirits. Id. The Patent and 10 Trademark Office initially refused to register Plaintiff’s trademark because it 11 alleged “a likelihood of confusion with the mark LEWIS & CLARK LAGER 12 (“lager” disclaimed) in U.S. Registration No. 2940715.” ECF No. 1-2 at 2. LEWIS 13 & CLARK LAGER (“lager” disclaimed) was registered to Defendant, a Montana 14 corporation with its principal place of business and corporate headquarters in 15 Helena, Montana. See ECF No. 17 at 2. 16 Plaintiff filed a cancellation petition against Defendant’s Registration No. 17 2940715. ECF No. 1 at 3. It ultimately prevailed and Defendant’s Registration No. 18 2940715 was canceled. Id. Plaintiff was then able to obtain Registration No. 19 3,113,475, registered on July 11, 2006 to trademark LEWIS & CLARK for distilled 20 spirits. ECF No. 1-1 at 2. ORDER DENYING MOTION TO CHANGE VENUE - 2 1 Despite knowing that the use of both marks would likely cause confusion, 2 Defendant did not discontinue, and in fact geographically expanded, its use of 3 LEWIS & CLARK LAGER (“lager” disclaimed) for beer. ECF No. 1 at 3. On 4 February 6, 2019, Plaintiff brought this action for (1) federal trademark 5 infringement, (2) Washington state trademark infringement, and (3) federal unfair 6 competition. Id. at 8–11. 7 LEGAL STANDARD 8 Under 28 U.S.C. § 1391(b), a case may be brought in the venue (1) where 9 any defendant resides, if all defendants are residents of the state in which the district 10 is located, (2) where a “substantial part of the events or omissions giving rise to the 11 claim occurred,” or (3) if there is no other district, in any district where any 12 defendant is subject to the court’s personal jurisdiction. If a matter is not brought in 13 the correct venue, the Court may dismiss the case, or, in the interest of justice, 14 transfer the case to the appropriate venue. 28 U.S.C. § 1406(a). 15 Even where jurisdiction is proper, the Court may transfer an action to any 16 other district or division where it might have been brought “for the convenience of 17 parties and witnesses, in the interest of justice.” 28 U.S.C. § 1404(a). Transfer may 18 be warranted “to prevent the waste of time, energy and money and to protect 19 litigants, witnesses and the public against unnecessary inconvenience and expense.” 20 Van Dusen v. Barrack, 376 U.S. 612, 616 (1964) (quoting Cont’l Grain Co. v. Barge ORDER DENYING MOTION TO CHANGE VENUE - 3 1 FBL – 585, 364 U.S. 19, 26–27 (1960)). The Court may flexibly consider a variety 2 of factors in evaluating a § 1404(a) motion to transfer, including 3 4 5 6 (1) the location where the relevant agreements were negotiated and executed, (2) the state that is most familiar with the governing law, (3) the plaintiff’s choice of forum, (4) the respective parties’ contacts with the forum, (5) the contacts relating to the plaintiff’s cause of action in the chosen forum, (6) the differences in the costs of litigation in the two forums, (7) the availability of compulsory process to compel attendance of unwilling non-party witnesses, and (8) the ease of access to sources of proof. 7 Jones v. GNC Franchising, Inc., 211 F.3d 495, 498–99 (9th Cir. 2000). 8 DISCUSSION 9 Defendant does not dispute that venue is proper in this district, but requests 10 a § 1404(a) transfer in the interest of justice to the District of Montana, as this matter 11 could have been brought there. ECF No. 17. Plaintiff does not dispute that the action 12 could have been brought in the District of Montana. See ECF No. 27. 13 The Court now turns to a flexible, individualized inquiry to determine 14 whether transfer is appropriate. Several considerations weigh against transfer. This 15 district is Plaintiff’s choice of forum, which it chose because it has sold at least 16 20,000 liters per year of distilled spirits in the Spokane area since 2013 and because 17 Defendant has expanded its sales into areas such as Washington. Thus, there are 18 witnesses from Spokane who can testify to the issue of confusion. Moreover, while 19 the Court harbors no doubt that the learned judges in the District of Montana can 20 capably apply Washington law on trademark infringement, the fact remains that this ORDER DENYING MOTION TO CHANGE VENUE - 4 1 Court is familiar with the law of the state in which it sits. 2 On the other hand, other considerations weigh in favor of transfer. Defendant 3 has its principal place of business and corporate headquarters in Helena, where 4 decisions on advertisement, marketing, and distribution of products that gave rise 5 to the claims were presumably made. Moreover, the District of Montana has a 6 substantially lower number of civil case filings, which may allow the parties to 7 obtain a more expeditious resolution of Plaintiff’s claims. See UNITED STATES 8 COURTS, STATISTICAL TABLES FOR THE FEDERAL JUDICIARY tbl.C-1: U.S. District 9 Courts—Civil Cases Commenced, Terminated, and Pending During the 12-Month 10 Period Ending December 31, 2018 (2019), https://www.uscourts.gov/statistics/ 11 table/c-1/statistical-tables-federal-judiciary/2018/12/31; 12 Midwhey Powder Co. 883 F.2d 1286, 1293 (9th Cir. 1989) (noting that speedy trials 13 are in the interest of justice). Heller Fin., Inc. v. 14 Further, Defendant’s seven identified witnesses, all of whom are employed 15 by Defendant, live and work in Helena, so a subpoena under Federal Rule of Civil 16 Procedure 45(c)(1)(A) is not an available compulsory process for attendance of 17 unwilling1 witnesses. ECF No. 18 at 5–8. 18 19 20 1 Of course, these witnesses may be designated by the company to testify on its behalf under Rule 30(b)(6). ORDER DENYING MOTION TO CHANGE VENUE - 5 1 Overall, some factors are neutral or balanced, such as the ease of access to 2 sources of proof. Moreover, both parties face travel-related inconvenience because 3 there are no direct flights from the parties’ respective locations to either the 4 Montana federal courthouse or the Spokane federal courthouse. 5 Ultimately, the Court concludes that the factors are fairly evenly balanced, 6 and the inconvenience to the parties, witnesses, and the public presents a close call. 7 However, when considering the convenience to witnesses, “the convenience of non- 8 party witnesses is the more important factor.” Saleh v. Titan Corp., 361 F. Supp. 2d 9 1152, 1160 (S.D. Cal. 2005) (quoting Aquatic Amusement Assocs., Ltd. v. Walt 10 Disney World Co., 734 F. Supp. 54, 57 (N.D.N.Y 1990)). The Court considers not 11 only how many witnesses each side may have, but also the relative importance of 12 their testimony. Id. There is no question that for a trademark infringement and unfair 13 competition claim, the testimony of “confusion witnesses” is critical. And these 14 non-party witnesses are likely less able to endure litigation-related costs and 15 expenses than a company is. 16 Moreover, granting a transfer here would appear to simply shift the 17 inconvenience from one party to another. See Decker Coal Co. v. Commonwealth 18 Edison Co., 805 F.2d 834, 843 (9th Cir. 1986) (affirming a district court’s denial of 19 transfer where it would merely shift, as opposing to eliminate, the inconvenience). 20 ORDER DENYING MOTION TO CHANGE VENUE - 6 1 Thus, the Court concludes that Defendant did not make a “strong showing of 2 inconvenience to warrant upsetting the plaintiff’s choice of forum.” Id. 3 Accordingly, IT IS HEREBY ORDERED: 4 Defendant Sleeping Giant Beverage Company Inc.’s Motion for 5 Transfer, ECF No. 17, is DENIED. 6 7 8 9 10 IT IS SO ORDERED. The Clerk’s Office is directed to enter this Order and provide copies to all counsel. DATED this 30th day of April 2019. ____________________________ SALVADOR MENDOZA, JR. United States District Judge 11 12 13 14 15 16 17 18 19 20 ORDER DENYING MOTION TO CHANGE VENUE - 7
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