In a March 12, 2014 ruling, Judge Alison J. Nathan transferred an action alleging copyright and trademark infringement to the Western District of Kentucky under 28 U.S.C. § 1404(a). The plaintiffs, The McGraw-Hill Companies Inc. and other publishing companies, alleged that the defendants operated a “chop shop” in which they altered textbooks intended for use and sale outside the United States so that they could be sold and used in the U.S. This conduct allegedly occurred in Kentucky, but many of the infringing books were sold in New York. The defendants moved to transfer under § 1404, and Judge Nathan undertook the well-established multi-factor test for considering such motions. The Court noted that a “primary factor” is the “locus of operative facts” for the action. Judge Nathan wrote that “in cases of copyright infringement, the operative facts typically relate to the design, development, and production of an infringing product, suggesting the locus of operative facts in the Western District of Kentucky,” but that “in trademark infringement cases courts often hold that the locus of operative facts is the initially chosen forum if acts of infringement, dilution, or unfair competition have occurred in that forum.” Ultimately, the Court concluded that the locus of operative facts is the Western District of Kentucky. Judge Nathan considered that the “scheme was executed in Kentucky,” whereas “the only alleged event that gives rise to the claims in this litigation that connect it to the Southern District of New York is the sale of some unspecified number of the infringing textbooks here.” The Court furthered discounted the sale of textbooks in New York because there were also sales nationwide.
Judge Nathan considered the remaining factors for considering a transfer, and giving due emphasis to the locus of operative facts, transferred the action to the Western District of Kentucky.
