Morling v. The Michaels Companies, Inc.

Background

Katharine Morling, described in the opinion as an award-winning artist, sued The Michaels Companies, Inc., Michaels Stores, Inc., Michaels Stores Procurement Company, Inc., and Does 1-10. She alleges that the defendants infringed her copyrights in several sculptures by copying, reproducing, and distributing them online and in retail stores through the sale of designs that were not made by her or associated with her brand.

Michaels moved under 28 U.S.C. § 1404(a) to transfer the case to the United States District Court for the Northern District of Texas. The court noted that Morling could have brought the case in Texas because Michaels was subject to personal jurisdiction there. The court therefore proceeded to weigh the factors governing whether transfer would serve the convenience of the parties and witnesses and the interests of justice.

Transfer Analysis

The court applied the rule that the party seeking transfer must make a clear and convincing showing that the balance of convenience favors the proposed new forum. It considered nine factors:

- Convenience of witnesses: This factor weighed slightly against transfer. The most important nonparty witness was likely the person in Hong Kong from whom Michaels purchased the allegedly infringing sculptures. Morling also intended to call purchasers in England and unnamed representatives of companies located in or near New York. Although Texas would slightly reduce travel for some Michaels employees, the court gave limited weight to Morling’s proposed corporate witnesses because she had not identified them specifically. - Convenience of the parties: This factor was neutral. Michaels’s three corporate defendants had their principal places of business in Irving, Texas, but moving the case would shift travel burdens to Morling rather than eliminate inconvenience overall. - Locus of operative facts: This factor favored transfer. The sculptures were manufactured in Hong Kong, but Michaels employees selected and purchased them in Texas. The court also recognized that New York could be one of several locations where infringement occurred because Michaels sold products there, but found New York’s connection more attenuated than Texas’s connection to the design-selection and purchasing activity. - Power to compel unwilling witnesses: This factor was neutral because neither side identified a witness who was unwilling or unavailable to testify. - Location of relevant documents: This factor was neutral. Although three-dimensional sculptures could be more difficult to transport, the court found that moving them to New York, if necessary, was feasible. - Relative means of the parties: This factor weighed only slightly against transfer because Morling would face some inconvenience and expense whether trial occurred in New York or Texas. - Familiarity with governing law: The court gave this factor no weight because both courts are familiar with federal copyright law. - Morling’s choice of forum: This factor weighed heavily against transfer. The court credited her reasons for choosing the Southern District of New York, including travel considerations and the location of her preferred counsel. It also noted Michaels’s ongoing business activity in that district. - Trial efficiency and the interest of justice: This factor weighed against transfer. Morling had filed a separate copyright case against UCP International Co., Ltd. in the Southern District of New York, and the court had accepted that case as related. The court concluded that hearing both cases before the same judge would promote efficiency and avoid duplicative litigation.

Disposition

After weighing all the factors, the court concluded that Michaels had not shown by clear and convincing evidence that transfer to the Northern District of Texas was warranted. The court denied Michaels’s motion to transfer under 28 U.S.C. § 1404(a) and directed the Clerk of Court to terminate the motion at Doc. 36. The opinion did not decide the underlying copyright-infringement claims.