PuraPharm International (H.K.) Limited v. PurePharma, Inc. DO NOT DOCKET. CASE TRANSFERRED TO (Northern District of California, San Francisco Division).
4:14-cv-03181
S.D. Tex.Apr 20, 2015Background
- Plaintiff PuraPharm International (H.K.) Ltd., a Hong Kong company, owns the federally registered PURAPHARM mark and alleges U.S. use since 2001 in connection with nutritional and pharmaceutical products.
- Defendants PurePharma APS (Denmark) and PurePharma, Inc. (Delaware corp., headquartered in Mill Valley, CA) market and sell products under PUREPHARMA in the U.S.; PurePharma, Inc. handles U.S. advertising, sales, production and distribution.
- PurePharma APS applied to register PUREPHARMA federally in 2012; Plaintiff opposed and then filed this Lanham Act infringement and false designation suit in the Southern District of Texas (Houston Division).
- Defendants moved under 28 U.S.C. § 1404(a) to transfer the case to the Northern District of California, San Francisco Division, where Defendants’ U.S. headquarters, key employees, and primary documentary evidence are located.
- Plaintiff identified several Houston sellers of Defendants’ products and one purported instance of misidentification online, but did not identify Texas-based witnesses with unique, material testimony or documents unavailable in California.
- The district court found that key party witnesses and most relevant documents are in California, nonstop flights favor San Francisco for foreign/higher-level witnesses, and California has at least as strong a local interest—so transfer promotes convenience and justice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether venue should be transferred under 28 U.S.C. § 1404(a) | Houston is a proper and convenient forum because Defendants sell in Texas and some Texas businesses have sold Defendants’ products | Northern District of California is clearly more convenient: Defendants’ U.S. HQ, key witnesses, and most documents are in Mill Valley/San Francisco | Transfer granted: Northern District of California is clearly more convenient |
| Availability and convenience of witnesses | Houston sellers and a local sales manager (Layton) will provide material testimony | Key witnesses (CEO, President NA, Digital Marketing Manager) reside in Northern District of California and have primary knowledge; Layton lacks knowledge of advertising decisions | Court credits California-based key witnesses; convenience favors transfer |
| Access to documentary proof | Plaintiff: will seek sales documents from Houston sellers | Defendants: majority of relevant documents (advertising, sales, production) are located in California; nationwide sales documents accessible there | Access to proof favors transfer to California |
| Public-interest considerations (local interest, court congestion, governing law) | Texas has local interest because sales occurred there and a territorial manager is in Houston | California has stronger localized interest because Defendants’ U.S. operations and decision-making are headquartered there | Public factors neutral-to-favor transfer; local interest favors California; overall supports transfer |
Key Cases Cited
- In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (movant must show transferee venue is clearly more convenient to meet § 1404(a) good-cause standard)
- In re Volkswagen AG, 371 F.3d 201 (5th Cir. 2004) (threshold: transferee district must be one in which the action might have been brought; sets out private/public interest factors)
- Jarvis Christian Coll. v. Exxon Corp., 845 F.2d 523 (5th Cir. 1988) (transfer under § 1404(a) is within district court’s discretion)
- Spiegelberg v. Collegiate Licensing Co., 402 F. Supp. 2d 786 (S.D. Tex. 2005) (in IP cases, location of alleged infringer’s principal place of business and documents is often controlling)
- Houston Trial Reports, Inc. v. LRP Publications, Inc., 85 F. Supp. 2d 663 (S.D. Tex. 1999) (a single key witness’s convenience may outweigh numerous less important witnesses)
- Goodman Co., L.P. v. A & H Supply, Inc., 396 F. Supp. 2d 766 (S.D. Tex. 2005) (court should not transfer if it only shifts inconvenience from movant to nonmovant)