Lodestar Anstalt v. Bacardi & Company Limited
2:17-cv-04739
C.D. Cal.Apr 21, 2017Background
- Plaintiff Lodestar Anstalt (Liechtenstein/Cyprus) owns U.S. registrations for the mark UNTAMED for alcoholic beverages and alleges Bacardi’s use of BACARDI UNTAMEABLE infringes those marks.
- Lodestar filed claims for federal trademark infringement (15 U.S.C. § 1114), false designation/unfair competition (15 U.S.C. § 1125), California UCL, and California common law unfair competition.
- Defendants are Bacardi Limited (Bermuda), Bacardi & Co. (Liechtenstein/Bahamas), and Bacardi USA (Delaware, principal place of business Miami, Florida).
- Bacardi moved to transfer the case from the Central District of California to the Southern District of Florida under 28 U.S.C. § 1404(a); Lodestar opposed.
- Key contested transfer considerations: convenience of parties and witnesses (many Bacardi witnesses located in Southern District of Florida and an advertising agency in London), plaintiff’s choice of forum and California-law claims, and access to documentary evidence (Bacardi records in Florida/London).
- Court balanced statutory § 1404(a) factors and granted transfer to the Southern District of Florida.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether venue should be transferred under 28 U.S.C. § 1404(a) | Lodestar urged deference to its chosen California forum, stressed California-law claims and local non-party witnesses/distributors. | Bacardi argued Florida is more convenient: principal U.S. place of business and most witnesses and records located in Southern District of Florida (and some witnesses in UK). | Transfer granted — convenience and interests of justice slightly favor Florida. |
| Convenience of parties | Lodestar argued California is appropriate forum tied to sales/distributors. | Bacardi noted its principal U.S. operations are in Miami; Florida is closer for most defendants and more convenient for foreign parties. | Weighs in favor of transfer. |
| Convenience of witnesses (party and non-party) | Lodestar identified three non-party witnesses in Central District (local distributor/retailer and Bacardi’s former LA distributor) and argued inability to compel them is prejudicial. | Bacardi identified 7–8 relevant witnesses mainly in Southern District of Florida and BETC in London; argued witness convenience favors Florida. | Considered neutral overall but leaned toward transfer due to majority of Bacardi witnesses and location of documentary evidence. |
| Interests of justice (including familiarity with state law, plaintiff’s forum choice, access to evidence, litigation costs) | Lodestar emphasized California-law claims and local ties; argued forum should be retained. | Bacardi argued national campaign, documentary evidence in Florida/UK, and reduced deference to plaintiff’s forum because neither party resides in California. | Interests of justice slightly favor transfer (California law familiarity weighed slightly against transfer but overall factors supported transfer). |
Key Cases Cited
- Jones v. GNC Franchising, Inc., 211 F.3d 495 (9th Cir. 2000) (lists factors for § 1404(a) interests-of-justice analysis).
- Stewart Org. v. Ricoh Corp., 487 U.S. 22 (U.S. 1988) (standard for transfer and deference to plaintiff’s choice of forum).
- Commodity Futures Trading Comm’n v. Savage, 611 F.2d 270 (9th Cir. 1979) (burden on movant to show transfer appropriate).
- Sparling v. Hoffman Constr. Co., 864 F.2d 635 (9th Cir. 1988) (transfer decision lies within court’s discretion).
- Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (U.S. 1947) (plaintiff’s forum choice ordinarily afforded deference).
- In re Ferrero Litig., 768 F. Supp. 2d 1074 (S.D. Cal. 2011) (California courts more familiar with state law; familiarity factor in transfer analysis).