United States District Court, D. Arizona
G. Campbell United States District Judge
moves to transfer this case to the U.S. District Court for
the Eastern District of Wisconsin. Doc. 7. Plaintiff has
filed an opposition, to which Defendant has replied. Docs.
15, 16. No party has requested oral argument. For the reasons
that follow, the Court will deny the motion.
purposes of this motion, the allegations in the complaint are
accepted as true, unless contradicted by Defendant's
declarations. Plaintiff is an Arizona corporation, and
Defendant is a Wisconsin corporation with operations in the
Eastern District of Wisconsin. Doc. 1-1 at 4-9 (hereinafter
Complaint), ¶¶ 1-2; Doc. 8, ¶ 2. On
December 4, 2013, the parties entered an agreement (Doc. 1-1
at 10-19) whereby Plaintiff granted Defendant the exclusive
right to manufacture and sell mobile stores employing its
BizBox design. Complaint, ¶ 4. Defendant
agreed to pay a 15% royalty on each BizBox it sold and to
refrain from selling any products below a specified minimum
price. ¶¶ 10, 12. Defendant also agreed that
Plaintiff would retain exclusive ownership rights to the
BizBox design. ¶ 13. The parties agreed that the
contract would be "construed under the laws of the state
of Wisconsin." Doc. 1-1 at 14.
alleges that Defendant has violated the agreement by stealing
the BizBox design, building knock-off products, and selling
its knock-offs without paying royalties to Plaintiff.
Complaint, ¶ 17-18. "Moreover, on at least
one occasion, Defendant sold BizBox Product at a discount, in
violation of the Agreement, in order to steal a valuable
client away from Plaintiff." ¶ 21. Based on these
allegations, Plaintiff asserts claims for breach of contract,
breach of the implied covenant of good faith and fair
dealing, and tortious interference with business expectancy
or contractual relations. ¶¶ 22-40.
has filed an answer and asserted a counterclaim. Defendant
alleges that before initiating this action, Plaintiff's
counsel sent a letter to Defendant demanding payment of $1,
766, 000 for alleged wrongdoing including "multiple
counts of patent infringement." Doc. 6 at 13-16, ¶
1. Defendant alleges that this letter constituted a
"patent notification" letter for purposes of
Wis.Stat. § 100.197. ¶ 4. Defendant further alleges
that Plaintiff violated the Wisconsin statute by (1) failing
to include certain required information in the letter,
including the number of each relevant patent, and (2)
including false, misleading, or deceptive information in the
letter. ¶¶ 4-5.
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). The Court
must decide a motion to transfer under this provision
"according to an individualized, case-by-case
consideration of convenience and fairness." Jones v.
GNC Franchising, Inc., 211 F.3d 495, 498 (9th Cir. 2000)
(quotation marks omitted). The Ninth Circuit has identified
eight non-exclusive factors that are relevant to this
(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
Id. at 498-99. The movant has the burden of showing
that transfer is appropriate, see Piper Aircraft Co. v.
Reyno, 454 U.S. 235, 255-256 (1981), and "must make
a strong showing of inconvenience to warrant upsetting the
plaintiff's choice of forum, " Decker Coal Co.
v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir.
Defendant resides in the Eastern District of Wisconsin, this
action could have been brought in that district, 28 U.S.C.
§ 1391(b)(1), and could be transferred there if such
transfer would serve "the interest of justice, " 28
U.S.C. § 1404(a). But a review of the relevant factors
shows that transfer would not serve the interest of justice.
first factor favors Arizona. Plaintiff's president,
Charles Sidi, avers that he twice met with Defendant's
CFO Tom Berte in Arizona during contract negotiations.
Sidi Decl. ¶ 4(a), (b). Sidi also met with
Berte in Arizona the day after the agreement was executed.
Id. ¶ 4(d). Berte acknowledges that he met with
Sidi more than once during contract negotiations. Berte
Decl. ¶ 3. Defendant does not contend that Sidi
ever travelled to Wisconsin during the negotiations.
second factor favors Wisconsin. Plaintiff concedes that
Wisconsin law applies to its claims because of the choice of
law provision in the agreement. Doc. 15 at 4. Moreover,
Defendant's counterclaim is based on a Wisconsin statute.
But the legal issues raised by the ...