W.M. Barr & Company, Inc. v. Dumond, Inc.

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF NORTH CAROLINA

CHARLOTTE DIVISION

DOCKET NO. 3:22-cv-00447-FDW-DCK

W.M. BARR & COMPANY, INC., )

)

Plaintiff, )

)

vs. )

) ORDER

DUMOND, INC., )

)

Defendant. )

)

)

THIS MATTER is before the Court on Defendant’s Motion to Dismiss, and in the

alternative, to Transfer to the Eastern District of Pennsylvania, (Doc. No. 14). The Court

originally set a hearing on this motion, as well as Plaintiff’s pending Motion for a Preliminary

Injunction, (Doc. No. 7). (Doc. No. 24). However, in reviewing the pleadings and applicable law

in preparation for the hearing, it became clear to the Court that the facts and legal contentions are

adequately presented in the materials before this Court and argument would not aid the decisional

process. For the following reasons, the Court DENIES IN PART and GRANTS IN PART

Defendant’s Motion.

I. Background

According to the Complaint, Plaintiff is a Tennessee organization with its principal place

of business in Memphis, Tennessee. Plaintiff manufactures, markets, and sells specialty products

in the cleaning, household, home improvement, anti-microbial, and automotive industries.

Defendant is a New York corporation with its principal place of business in Downingtown,

Pennsylvania, where its physical offices, operations, and assets are located. Defendant also

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manufactures, markets, and sells surface preparation and cleaning products through a nationwide

network of distributors. Defendant is a direct competitor of Plaintiff.

Plaintiff commenced this action alleging trade dress and trademark infringement, false

designation of origin and unfair competition pursuant to the Lanham Act, 15 U.S.C. § 1051, et

seq.; unfair and deceptive trade practices under the laws of the State of North Carolina pursuant to

N.C. Gen. Stat. § 75-1.1, et seq.; and unfair competition under North Carolina common law. In

short, Plaintiff contends Defendant is engaging in unlawful conduct in knowingly and intentionally

adopting and using a trade dress that is identical to Plaintiff’s federally registered orange product

color trade dress and confusingly similar to Plaintiff’s related CITRISTRIP® trademark and

product packaging trade dress. (Doc. No. 1).

In response to service of the Complaint, Defendant filed the instant motion to dismiss

pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure and asserts this Court lacks

personal jurisdiction over it. Defendant also moves alternatively for transfer of this case to the

United States District Court for the Eastern District of Pennsylvania pursuant to pursuant to 28

U.S.C. § 1404(a). Defendant summarizes its connection to and operations in North Carolina,

supported by the affidavit of its President Rick Grear, as the following:

Dumond is not now and has never been authorized to transact business in North

Carolina. ([Declaration of Rick Grear (Doc. No. 16) ¶ 8].) Dumond is not registered

as a foreign entity to transact business in North Carolina, or anywhere else in the

United States. (Id.) Dumond does not maintain any offices, have any registered

agents or employees, pay any taxes, have any bank accounts or phone listings, or

rent or own any real or personal property in North Carolina. (Id. ¶¶ at 8–10.)

Dumond also has no distributors in North Carolina. (Id. ¶ 9.)

Dumond has never targeted the North Carolina market. (Id. ¶ 10.) Besides

individual, one off sales, Dumond has no recurrent contracts with anyone in North

Carolina. (Id. ¶ 11.) In 2021, sales of Dumond’s Citrus Paint Remover totaled

approximately $13,064 in North Carolina. (Id. ¶ 12.) From January through

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September of 2022, the sales totaled approximately $21,910. (Id. ¶ 13.) All those

sales were made and fulfilled through Amazon.com. (Id. ¶¶ 12, 13, 18.)

By comparison, over 97% of Dumond’s total Citrus Paint Remover sales occurred

outside North Carolina for that same period. (Id. ¶ 14, 15.) Dumond’s total U.S.

sales for its Citrus Paint Remover was approximately $469,549 in 2021 and

$741,105 in 2022. (Id.) Sales to North Carolina based purchasers comprised less

than 3% of that total each year. (Id.) The Dumond website also features a Citrus

Paint Remover product page. (Id. ¶ 17.) The “shopping cart” feature of this website

is hosted by Shopify. (Id.) Dumond has also made approximately $227 in online

sales for its Citrus Paint Remover through the Dumond Shopify website for the

period from January 1, 2021 through September 30, 2022. (Id. ¶ 18.)

Dumond has never directed advertising, marketing, or web activity at North

Carolina. (Id. ¶10.) Neither the Amazon product page, nor Dumond’s website’s

product page, contain anything targeting North Carolina. (Id. ¶¶ 16, 17.) Dumond’s

Shopify-hosted product page states that the Citrus Paint Remover is “available only

in USA” and permits users to “ship to” any state in the U.S. (Id. ¶ 17.) But from

January 1, 2021 through September 30, 2022 Dumond did not make any such sales

to North Carolina. (Id. ¶ 18.) In sum, Dumond’s only relevant “connection” to

North Carolina is that, over two years, individual purchasers bought and shipped

less than $35,000 worth of Citrus Paint Remover to the state via Amazon.

(Doc. No. 15, pp. 8-9). Plaintiff does not substantively dispute Defendant’s characterization of its

activities in North Carolina but objects to the motion in its entirety arguing that these contacts, as

well as other activity directed to North Carolina, are sufficient to confer both general and specific

personal jurisdiction in this case. Plaintiff provides the following additional summary of contacts,

which it supports with exhibits and affidavits attached to the opposition brief:

Defendant admits to nearly1,400 sales of the Infringing Product in the course of 21

months to consumers in North Carolina—which is nearly 1,400 potential instances

of consumer confusion in North Carolina. The Infringing Products infringe Barr’s

trademark rights, and thus are at the core of Barr’s claims. Accordingly, there are

nearly 1,400 reasons why Defendant is subject to specific personal jurisdiction in

this forum, and it only takes one.

Additionally, the ‘Find Our Stores’ functionality on Defendant’s own website

demonstrates its ‘systematic and continuous contacts’ with this forum; i.e.,

approximately 200 retail locations across the state carrying Defendant’s portfolio

of products, including 25 locations in the Charlotte area alone. Several of

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Defendant’s retail partners only operate in North Carolina, evidencing Defendant’s

intent to direct sales into North Carolina.

(Doc. No. 2, p. 7). This matter has been fully briefed and is ripe for review.

II. Standard of Review

The standards of review for considering a motion to dismiss for lack of personal

jurisdiction and a motion to transfer venue are well settled.

A. Personal Jurisdiction

Plaintiff bears the burden to make a prima facie showing of this Court’s personal

jurisdiction over Defendant, and the Court must take all disputed facts and reasonableness

inferences in Plaintiff’s favor. Carefirst of Maryland, Inc. v. Carefirst Pregnancy Centers, Inc.,

334 F.3d 390, 396 (4th Cir. 2003). A recent decision by a distinguished colleague in the Eastern

District of North Carolina eloquently summarized the applicable law governing the Court’s inquiry

when a defendant challenges personal jurisdiction:

“A lawful assertion of personal jurisdiction over a defendant requires satisfying the

standards of the forum state's long-arm statute and respecting the safeguards

enshrined in the Fourteenth Amendment's Due Process Clause.” Tire Eng'g &

Distribution, LLC v. Shandong Linglong Rubber Co., 682 F.3d 292, 301 (4th Cir.

2012); Carefirst, 334 F.3d at 396 (“Under Federal Rule of Civil Procedure

4(k)(1)(A), a federal court may exercise personal jurisdiction over a defendant in

the manner provided by state law.”). North Carolina’s long-arm statute, N.C. Gen.

Stat. § 1-75.4(1)(d), “permits the exercise of personal jurisdiction over a defendant

to the outer limits allowable under federal due process.” Universal Leather, LLC v.

Koro AR, S.A., 773 F.3d 553, 558-59 (4th Cir. 2014) (citing Dillon v. Numismatic

Funding Corp., 291 N.C. 674, 231 S.E.2d 629 (1977)). Thus, the court’s “statutory

inquiry merges with [its] constitutional inquiry.” Carefirst, 334 F.3d at 396;

Christian Sci. Bd. of Dirs. of First Church of Christ, Scientist v. Nolan, 259 F.3d

209, 215 (4th Cir. 2001) (explaining that because “North Carolina's long-arm

statute is construed to extend jurisdiction over nonresident defendants to the full

extent permitted by the Due Process Clause, . . . the dual jurisdictional requirements

collapse into a single inquiry”).

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“A court's exercise of jurisdiction over a nonresident defendant comports with due

process if the defendant has ‘minimum contacts’ with the forum, such that to

require the defendant to defend its interests in that state ‘does not offend traditional

notions of fair play and substantial justice.’” Carefirst, 334 F.3d at 397 (quoting

Int'l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945)).

This standard can be satisfied “through two different approaches—by finding

specific jurisdiction ... or by finding general jurisdiction.” ALS Scan, Inc. v. Digital

Serv. Consultants, Inc., 293 F.3d 707, 711 (4th Cir. 2002); Universal Leather, 773

F.3d at 559 (“[T]here are two paths permitting a court to assert personal jurisdiction

over a nonresident defendant.”).

General jurisdiction requires “demonstrating the defendant's continuous and

systematic contact with the forum state,” Sneha Media & Ent., LLC v. Associated

Broad. Co. P Ltd., 911 F.3d 192, 198 (4th Cir. 2018), and “extends to any and all

claims brought against a defendant.” Ford Motor Co. v. Mont. Eighth Jud. Dist. Ct.,

––– U.S. ––––, 141 S. Ct. 1017, 1024, 209 L.Ed.2d 225 (2021). On the other hand,

specific jurisdiction requires “demonstrating that the defendant purposely

established minimum contacts in the forum state such that it should reasonably

anticipate being haled into court there on a claim arising out of those contacts,”

Sneha Media, 911 F.3d at 198, and reaches only the specific “claims [that] . . . arise

out of or relate to the defendant's contacts with the forum.” Id.

Yacht Basin Provision Co. v. Bates, No. 7:21-CV-117-FL, 2022 WL 2651845, at *5 (E.D.N.C.

July 8, 2022) (cleaned up).

B. Transfer of Venue under Section 1404(a)

Section 1404 of Title 28 of the United States Code allows “a district court [to] transfer any

civil action to any other district where it might have been brought” “[f]or the convenience of parties

and witnesses, in the interest of justice.” 28 U.S.C. § 1404(a); In re Carefirst of Maryland, Inc.,

305 F.3d 253, 255 (4th Cir. 2002) (“Section 1404(a) authorizes inter-district or inter-division

transfers for the convenience of parties and witnesses, in the interest of justice[.]”). A district court

may do so even where the court lacks personal jurisdiction over the defendants. See generally

Goldlawr, Inc. v. Heiman, 369 U.S. 463, 466 (1962) (“The language of § 1406(a) is amply broad

enough to authorize the transfer of cases, however wrong the plaintiff may have been in filing his

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case as to venue, whether the court in which it was filed had personal jurisdiction over the

defendants or not[.]”); 14D Charles Alan Wright & Arthur R. Miller, Federal Practice and

Procedure § 3827 (3d ed. 2010) (explaining that “[t]he correct way to achieve” transfer when

“venue is proper in the district of origin” but “personal jurisdiction cannot be obtained over the

defendant in that district” “is to apply the Goldlawr principle to transfers under Section 1404(a)”).

The question of whether to transfer pursuant to § 1404 is committed to the discretion of the district

court, which analyzes a motion to transfer based on an “individualized, case-by-case consideration

of convenience and fairness.” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (cleaned

up).

In evaluating whether to transfer a case to another jurisdiction under § 1404, courts in this

district weigh eleven factors to determine whether a defendant has its burden to transfer venue.

Scenic Mktg.Grp., LLC v. S. Home Med. Equip., Inc., No. 3:11-cv-00551, 2012 WL 113664, at

*1 (W.D.N.C. Jan 13, 2012). The eleven factors are:

(1) the plaintiff's initial choice of forum; (2) the residence of the parties; (3) the

relative ease of access of proof; (4) the availability of compulsory process for

attendance of witnesses and the costs of obtaining attendance of willing witnesses;

(5) the possibility of a view; (6) the enforceability of a judgment, if obtained; (7)

the relative advantages and obstacles to a fair trial; (8) other practical problems that

make a trial easy, expeditious, and inexpensive; (9) the administrative difficulties

of court congestion; (10) the interest in having localized controversies settled at

home [and] the appropriateness in having the trial of a diversity case in a forum that

is at home with the state law that must govern the action; and (11), the avoidance

of unnecessary problems with conflict of laws.

Com. Equip. Co., Inc. v. Barclay Furniture Co., 738 F. Supp. 974, 976 (W.D.N.C. 1990). A

defendant “carries a particularly heavy burden,” as “[a] court should not disturb the plaintiff's

choice of forum unless the moving party demonstrates that the balance of convenience to the

parties and witnesses and the interests of justice weigh heavily in favor of the transfer to another

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district.” Id. (citations omitted). The mere shifting of inconvenience from one party to another

will not satisfy a defendant’s burden. Id.; see also Uniprop Manufactured Hous. Cmtys. Income

Fund II v. Home Owners Funding Corp., 753 F. Supp. 1315, 1322 (W.D.N.C. 1990) (noting that

“if the equities lean but slightly in favor of the movant after all factors are considered,” transfer is

still not appropriate).

III. Analysis

A. Personal Jurisdiction

The Court summarily concludes Plaintiff has failed to meet its burden to show this Court

has general jurisdiction over Defendant. Defendant is not incorporated in North Carolina, nor does

it have its principal place of business in North Carolina. Plaintiff has not presented any other facts

to indicate that Defendant is “essentially at home” in North Carolina. See generally, Daimler AG

v. Bauman, 571 U.S. 117 (2014); Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S.

915 (2011). Therefore, general jurisdiction does not exist over Defendant.

As to specific jurisdiction, this Court also summarily concludes that Plaintiff has failed to

demonstrate specific jurisdiction over Defendant, and the Court adopts the reasons stated and

authorities cited in Defendant’s pleadings as persuasive on this issue. (See Doc. Nos. 15, 27). In

short, the record before the Court indicates Defendant has not purposefully availed itself of the

privilege of conducting activities in North Carolina. See Perdue Foods LLC v. BRF S.A., 814

F.3d 185, 189 (4th Cir. 2016) (“In the business context, these factors include whether the defendant

maintains offices or agents in the forum state, owns property in the forum state; reached into the

forum state to solicit or initiate business; deliberately engaged in significant or long-term business

activities in the forum state; or made in-person contact with the resident of the forum in the forum

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state regarding the business relationship.). The record fails to show Defendant satisfies any of these

Purdue factors.

The Fourth Circuit’s decision Fidrych v. Marriott International, Inc., 952 F.3d 124 (4th Cir.

2020), is also particularly instructive here, especially because Plaintiff relies heavily on

Defendant’s website to supports its arguments regarding personal jurisdiction. The Fourth Circuit

explained in Fidrych:

While Marriott obviously uses its website to engage in commercial transactions,

the website does not target South Carolina residents for commercial transactions

any more than it targets any other state. Instead of targeting any particular state, the

website makes itself available to any one who seeks it out, regardless of where they

live. In our view, the mere fact that the website is accessible in a given state does

not mean that Marriott is targeting its activities at that state.

Id. at 139-41 (citing ESAB Group, Inc. v. Centricut, Inc., 126 F.3d 617, 625 (4th Cir. 1997)

(rejecting claim of specific jurisdiction where defendant did not direct its activities at South

Carolina but instead “focused its activities more generally on customers located throughout the

United States and Canada without focusing on and targeting South Carolina”)). The Fidych court

also considered the interactivity of a website, noting that “the level of interactivity of a website

like Marriott's is not enough, on its own, to make the website a sufficient basis to support the

exercise of specific jurisdiction,” and highlighting that the “website is not used to create a

continuing, back-and-forth relationship between Marriott and the website user.” 952 F.3d at 142

(emphasis added). The court cautioned, “[I]f we attached too much significance on the mere fact

of interactivity, we risk losing sight of the key issue in a specific jurisdiction case—whether ‘the

defendant has purposefully directed [its] activities at residents of the forum.’” Id. (quoting Burger

King, 471 U.S. at 472, 105 S.Ct. 2174 (alteration in original)). The Court rejects Plaintiff’s

arguments for the reasons stated in Fidrych.

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Although it is undisputed that North Carolinians have purchased Defendant’s product

through third parties, the evidence before the Court fails to demonstrate Defendant’s purposeful

availment of the privilege of operating in North Carolina. “[U]nilateral activity of another party

or a third person is not an appropriate consideration when determining whether a defendant has

sufficient contacts with a forum [s]tate to justify an assertion of jurisdiction.” Helicopteros

Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 417 (1984); In re Celotex Corp., 124 F.3d

619, 629 (4th Cir. 1997) (affirming rejection of “a rule [that] would subject defendants to judgment

in locations based on the activity of third persons and not the deliberate conduct of the defendant,

making it impossible for defendants to plan and structure their business contacts and risks”).

Additionally, a defendant’s contacts must be “with the forum [s]tate itself,” not merely “contacts

with persons who reside there.” Walden v. Fiore, 571 U.S. 277, 284-85 (2014) (explaining that

the connection between the defendant and the forum “must arise out of contacts that the defendant

himself creates with the forum [s]tate”). For example, the United States Court of Appeals for the

Fourth Circuit has rejected evidence of “sales . . . initiated by . . . customer[s]” from the forum

state as constituting cognizable evidence of a defendant’s requisite minimum contacts with a forum

state. Fed. Ins. Co. v. Lake Shore Inc., 886 F.2d 654, 658 (4th Cir. 1989). Accordingly, the limited

sales of Defendant’s allegedly infringing product in North Carolina by third-party vendors is

insufficient under this record to confer specific jurisdiction.

Because neither general nor specific jurisdiction may be exercised in this case, granting

Defendant’s motion to dismiss is but one available remedy here.

B. Transfer of Venue

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While dismissal of the Complaint is appropriate where personal jurisdiction is lacking,

courts within the Fourth Circuit favor transfer over dismissal of an action. Cirillo v. Citrix Sys.

Inc., No. 320CV00540RJCDSC, 2021 WL 308597, at *4 (W.D.N.C. Jan. 29, 2021) (citing

Continental Cas. Co. v. Argentine Republic, 893 F. Supp. 2d 747, 754 (E.D. Va. 2012)). And,

where the parties have already fully briefed a motion for preliminary injunction, the Court finds

that transfer—and not dismissal—is the more appropriate remedy in this case.

Here, transfer to the United States District Court for the Eastern District of Pennsylvania

would be for the convenience of parties and in the interest of justice, and the parties agree this

action could have been brought originally there. This Court’s lack of personal jurisdiction can be

cured by transfer to the United States District Court for the Eastern District of Pennsylvania

because all indications are that Defendant would be subject to general jurisdiction there since its

principal place of business is located in Dowingtown, Pennsylvania.

These reasons, as well as consideration of the § 1404 factors, favor of transfer. For

purposes of analysis, the Court categorizes the eleven factors typically applied within this district

as: (1) Plaintiff's Choice of Forum, (2) Convenience of the Parties, (3) Witness Convenience and

Access, and (4) Interest of Justice. Notably, a court’s decision to transfer depends on the particular

facts of the case because § 1404(a) “provides no guidance as to the weight” that courts should

afford each factor. Samsung Elecs. Co., LTD. v. Rambus, Inc., 386 F. Supp. 2d 708, 716 (E.D.

Va. 2005) (citing 15 Wright, Miller & Cooper, Federal Practice and Procedure: Jurisdiction 2d §

3847 at 370).

1. Plaintiff’s Initial Choice of Forum

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“Plaintiff chose North Carolina as its choice of forum, and courts have given great weight

to this factor of the analysis.” Scenic Mktg. Grp., 2012 WL 113664, at *1; see also Collins v.

Straight, Inc., 748 F.2d 916, 921 (4th Cir. 1984). When the plaintiff selects a foreign forum and

the cause of action bears little relation to that forum, however, such decision is not entitled to the

same deference. See JTH Tax, Inc. v. Lee, 482 F. Supp. 2d 731, 736 (E.D. Va. 2007); see also

DiFederico v. Marriott Int'l, Inc., 714 F.3d 796, 803 (4th Cir. 2013). Even then, in trademark

cases, the plaintiff's choice of forum may still be entitled to deference when the plaintiff is

conducting business in that forum. See Kiss My Face Corp. v. Bunting, No. 02CIV2645, 2003

WL 22244587, at *4 (S.D.N.Y. Sept. 30, 2003) (“Where there is ongoing business activity in the

chosen forum, however, plaintiff's choice of forum is given more deference than it would if the

connection to this forum were truly de minimis.”) (quotation omitted); cf. PlayVision Labs, Inc.

v. Nintendo of Am., Inc., No. 3:14-CV-312-GCM, 2014 WL 6472848, at *2 (W.D.N.C. Nov. 18,

2014) (ordering transfer of a case when “nothing to do with the development or manufacture” of

the controversy occurred in North Carolina) (emphasis added).

Here, Plaintiff chose this forum “because, even though it is a Tennessee company, many

of the relevant witnesses to this action actually live and work in North Carolina. Barr’s sister

company, Microban International, Ltd., [is] located in this State and District, in Huntersville, NC,

such that several Barr employees also reside and work here, and its Board meets annually here.”

(Doc. No. 26, p. 18). The Court finds it wholly irrelevant that a “sister company” is located in this

District, and—as explained below—the fact that approximately six witnesses reside and work here

is but one factor to consider as part of the Court’s analysis.

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Plaintiff does not identify any business reason why it chose this forum. Nothing in the

record suggests Plaintiff developed the trademarked product or packaging in North Carolina, and

only limited information appears before the Court as to the parties’ relevant sales of the product

here. Notably, Defendant maintains the sales of the allegedly infringing product sold here

represent only 3% of its sales nationwide. Defendant does not have any North Carolina distributors

or retailers of the allegedly infringing product, and it does not conduct business directly to North

Carolina consumers.

Plaintiff's choice of forum is certainly entitled to some weight, as it may be slightly less

convenient for Plaintiff to prosecute its claims in Pennsylvania than in North Carolina. However,

the weight given to Plaintiff's choice is diminished because its chosen forum is foreign to both

parties, and the causes of action asserted here bear at least the same relation to this forum as they

do to almost any other forum in the nation. This Court is unpersuaded that the cause of action

bears more than little relation to North Carolina and this District. Therefore, the Court agrees that

Plaintiff's choice of forum in this case should be accorded diminished weight. Accordingly, the

Court assigns some weight to the Plaintiff's chosen forum but finds that because this is a foreign

forum for both parties and only minimal—if any—business is conducted here by the parties, this

factor is neutral at best. See SAS Inst., Inc. v. World Programming Ltd., 468 F. App’x 264, 265–

66 (4th Cir. 2012) (“a citizen’s forum choice is not dispositive”) (citing Piper Aircraft, 454 U.S. at

255 n. 23, 102 S.Ct. 252).

2. Convenience of the Parties, including Residence of the Parties and Relative Ease

of Access of Proof

Neither party is incorporated in North Carolina, nor do they have their principal places of

business in North Carolina. As explained above, this Court lacks personal jurisdiction over

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Defendant, and all of its business operations relevant to Plaintiff’s claims in this case appear to

take place or have taken place in Pennsylvania. In considering the convenience of the parties, this

factor strongly favors transfer to the Eastern District of Pennsylvania. As for ease of access of

proof, given the nature of this case, discovery is likely to be electronic.

3. Witness Convenience, including Availability of Compulsory Process for

Attendance of Witnesses and the Cost of Obtaining Attendance of Willing

Witnesses and Possibility of a View

Neither party resides in this District. Thus, each party would have to transport its own

witnesses to the Western District of North Carolina if trial were held here, although Plaintiff

indicates approximately six of its witnesses reside in the area. As noted above, Defendant does

not have any North Carolina distributors or retailers for the allegedly infringing product.

Defendant also indicates that its employees involved with the development, marketing,

advertising, and sale—as well as the business records associated therewith—of the allegedly

infringing product and packaging are located in Pennsylvania and California. Given the nature of

the claims against Defendant, the Court finds that Plaintiff’s handful of witnesses residing in North

Carolina do not tip the balance to weigh against transfer. Thus, this factor is neutral.

The other factor related to convivence of the parties is also neutral. A jury will likely need

to view both parties’ products to resolve the claims at issue here. Based on the record before the

Court, the products appear to be easily transportable. Accordingly, the products may be viewed

in any district in the country.

4. Interests of Justice, including the Relative Advantages and Obstacles to a Fair Trial;

Other Practical Problems that Make a Trial Easy, Expeditious, and Inexpensive;

Administrative Difficulties of Court Congestion; Interest in Having Localized

Controversies Settled at Home; and Avoidance of Unnecessary Problems with

Conflict of Laws

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Here, the Court summarily concludes the majority of these factors are neutral, with the

exception of the interest in having localized controversies settled at home. This factor heavily

favors transfer. Indeed, the gravamen of Plaintiff’s complaint is that Defendant knowingly and

intentionally infringed on its trade dress and trademark. Defendant explains that all activity

surrounding the development of the allegedly infringing product and packaging took place in

Dowingtown, Pennsylvania. Other than asserting that Defendant has made sales of the allegedly

infringing product in North Carolina, Plaintiff has not alleged any facts indicating this is a localized

controversy. And, other than a general allegation that a “substantial part of the events” giving rise

to Plaintiff’s claims occurred in this District,1 nothing in the Complaint or other pleadings2

indicates North Carolina customers have been impacted by the parties’ controversy. And nothing

in Plaintiff’s pleadings appear to suggest that Plaintiff developed its product in North Carolina.

Without allegations of North Carolina-specific conduct, the causes of action here could

conceivably be “localized” in any district in the country, but more localized where Defendant

developed the product and its packaging and managed the sale of that product. Accordingly,

settling this matter where the controversy is local favors transfer to the Eastern District of

Pennsylvania. The Court agrees with Defendant’s representations regarding relative court

congestion and enforceability of a judgment also slightly favor transfer.

1 The Court notes that Plaintiff’s Complaint alleges that “a substantial part of the events giving rise to American

Frame’s claims occurred in the Western District of North Carolina.” (Doc. No. 1, p. 3). The Court assumes this

typographical error was meant to reference the named Plaintiff W.M. Barr Company, Inc., and that Plaintiff intended

to assert that a “substantial part of the events” giving rise to Plaintiff’s claims occurred in this District.

2 Plaintiff correctly argues that this Court has a strong interest in adjusting claims involving the confusion of customers

and unfair business practices in North Carolina; however, Plaintiff has directed the Court to nothing in the current

record to indicate that type of misconduct is occurring in this State. For example, Plaintiff’s Motion for Preliminary

Injunction references “Actual Confusion” evidenced by two “Amazon reviews,” but nothing indicates these reviews

were from North Carolina customers. (Doc. No. 8, p. 21).

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In sum, while several factors are neutral at best, the Court finds that Plaintiff’s choice of

forum is outweighed by the reasons favoring transfer. Defendant has carried its heavy burden here

to demonstrate this case should be transferred to the Eastern District of Pennsylvania for the

convenience of parties and witnesses and in the interest of justice.

IV. Conclusion

IT IS THEREFORE ORDERED that Defendant’s Motion to Dismiss or Alternatively to

Transfer, (Doc. No. 14), is DENIED IN PART AND GRANTED IN PART. This case shall be

transferred to the Eastern District of Pennsylvania pursuant to 28 U.S.C. § 1404 for such further

proceedings as that court may deem appropriate. In so ruling, the Court declines to rule on the

pending Motion for Preliminary Injunction and directs the Clerk of Court to terminate the hearing

scheduled for Monday, December 12, 2022.

IT IS SO ORDERED.

Signed: December 9, 2022

Frank D. Whitney □□

United States District Judge ae

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