United States District Court, C.D. California
ORDER GRANTING DEFENDANT'S MOTION TO TRANSFER
D. WRIGHT, II UNITED STATES DISTRICT JUDGE.
before the Court is Defendant Joseph D'Arezzo, Inc.'s
Motion to Dismiss, Stay, or Transfer Venue to the Southern
District of New York (“Motion”). (ECF No. 13.)
For the following reasons, the Court GRANTS Defendant's
Motion to Transfer Venue to the United States District Court
for the Southern District of New York (ECF No.
Accordingly, Defendant's request to dismiss and/or stay
this action is DENIED as MOOT.
FACTUAL AND PROCEDURAL BACKGROUND
December 17, 2018, Plaintiff Jasmin Larian, LLC, doing
business as Cult Gaia (“Plaintiff”) filed its
Complaint against Defendant Joseph D'Arezzo, Inc.
alleging four causes of action: (1) trade dress infringement
pursuant to 15 U.S.C. § 1125; (2) common law trade dress
infringement; (3) violation of California Business and
Professions Code section 17200, et. seq; and (4) unjust
enrichment. (See generally Compl., ECF No. 1.)
Plaintiff's claims are based on the allegation that
Defendant manufactured, promoted, and sold a bag called the
“BShipper, ” which is a “near exact cop[y]
of [Plaintiff's] signature Ark bag.” (Compl.
¶¶ 1, 36.)
to this action, in February 2018, Steve Madden, Ltd.
(“Steve Madden”), filed a lawsuit against
Plaintiff relating to the same handbag, the BShipper. See
Steve Madden, Ltd. v. Jasmin Larian, LLC (the “New York
Action”), No. 18-cv-2043-RWS (S.D.N.Y. filed Mar. 6,
2018.) Defendant supplies the BShipper bag to Steve Madden.
(Mot. 4; Opp'n to Mot. (“Opp'n”) 2, ECF
No. 21.) Steve Madden is seeking declaratory judgment that
Plaintiff's Ark bag is not entitled to Lanham Act
protections and that the BShipper bag does not constitute
trade dress infringement. (Mot. 2-3.) In response, Plaintiff
filed counterclaims against Steve Madden that the BShipper
bag violated 15 U.S.C. § 1125 and various other New York
state law claims. (Mot. 3.)
February 6, 2019, Defendant moved to dismiss, stay, or
transfer this action based on the first-to-file rule and 28
U.S.C. § 1404(a). (See generally Mot.)
the convenience of parties and witnesses and in the interest
of justice, a district court may transfer any civil action to
any other district or division where it might have been
brought.” 28 U.S.C. § 1404(a).
are also transferred based on the “first-to-file”
rule. The first-to-file rule is a doctrine of federal comity;
a district court may decline to exercise jurisdiction over an
action when a complaint involving the same parties and issues
has been filed in another district. Pacesetter Sys., Inc. v.
Medtronic Inc., 678 F.2d 93, 94-95 (9th Cir. 1982). The
first-to-file rule seeks to conserve limited judicial
resources and avoid duplicate or inconsistent judgments on
similar issues. Id. at 95.
considering whether to apply this doctrine, a court must
consider: (1) the chronology of the two actions; (2) the
similarity of the parties; and (3) the similarity of the
issues. See Kohn Law Grp., Inc. v. Auto Parts Mfg. Miss.,
Inc., 787 F.3d 1237, 1240 (9th Cir. 2015). If a later-filed
action meets the first-to-file requirements, the second court
may transfer, stay, or dismiss the case. Alltrade, Inc. v.
Uniweld Prods., Inc., 946 F.2d 622, 623 (9th Cir. 1991).
Court finds that all three factors weigh in favor of
transferring this action to the Southern District of New