Weis v. Kimsaprincess Inc.
296 F. Supp. 3d 926
E.D. Ill.2017Background
- Plaintiff Kirsten Kjaer Weis (Danish makeup artist, based in New York) owns registered trademarks for stylized "KW" and her full name used on luxury beauty products sold since 2010.
- Defendant Kimsaprincess Inc., a California loan-out corporation owned by Kim Kardashian West, markets "KKW Beauty" products (launched June 2017) designed/manufactured by Seed Beauty (Oxnard, CA); products sold nationwide via an online store.
- Plaintiff sued in the Northern District of Illinois asserting Lanham Act trademark infringement, unfair competition, Illinois deceptive trade practices, and common-law claims, alleging consumer confusion between "KW" and "KKW."
- Defendant moved under 28 U.S.C. § 1404(a) to transfer the case to the Central District of California; Plaintiff opposed and alternatively asked for transfer to the Southern District of New York.
- The district court examined venue propriety, convenience factors (plaintiff's forum choice, situs of material events, access to proof, witness convenience, party convenience), and interests of justice, and ordered transfer to the Central District of California.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether venue is proper in Northern District of Illinois | Illinois is proper because KKW products were sold/advertised there and Plaintiff alleged injury in this District | Venue is proper but Illinois has weak ties; California has stronger ties | Venue proper in both; transfer still permissible |
| Whether transfer to Central District of California is more convenient under § 1404(a) | Transfer would burden Plaintiff and her witnesses; Illinois is a neutral/middle forum; if transferred, should go to SDNY instead | California is more convenient: defendant, key witnesses (Kardashian manager, Seed Beauty personnel), and documents are in Central Dist. of CA | Transfer granted; California is clearly more convenient (situs of events, witnesses, documents favor CA) |
| Weight to give Plaintiff's choice of forum | Plaintiff's chosen forum deserves deference | Plaintiff is not a resident of the forum and few material events occurred there, so less weight should be given | Plaintiff's forum choice given little weight because she is not local and material events occurred elsewhere |
| Whether transfer serves interests of justice (docket speed, local interest, applicable law) | Northern District may be appropriate; SDNY preferable for Plaintiff | Central Dist. of CA has faster docket, closer relation to dispute, courts can apply Illinois law | Interests of justice favor transfer to Central District of California (faster docket and greater local relation) |
Key Cases Cited
- Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22 (Sup. Ct. 1988) (§ 1404(a) requires individualized, case-by-case consideration of convenience and fairness)
- Research Automation, Inc. v. Schrader-Bridgeport Int'l, Inc., 626 F.3d 973 (7th Cir. 2010) (substantial deference to district court's transfer decision)
- Coffey v. Van Dorn Iron Works, 796 F.2d 217 (7th Cir. 1986) (movant bears burden to show transferee forum is clearly more convenient)
- Heller Fin., Inc. v. Midwhey Powder Co., Inc., 883 F.2d 1286 (7th Cir. 1989) (requirement that movant identify key witnesses and the substance of their testimony)
- In re Nat'l Presto Indus., Inc., 347 F.3d 662 (7th Cir. 2003) (importance of subpoena power and witness location in transfer analysis)
- CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660 (7th Cir. 2001) (factors particularly important to Lanham Act likelihood-of-confusion analysis)
- Atl. Marine Constr. Co. v. U.S. Dist. Ct. for W. Dist. of Tex., 571 U.S. 49 (Sup. Ct. 2013) (federal courts routinely apply law of another state)