Fifty-Six Hope Road Music, Ltd. v. Raising Cane’s USA, LLC., C.A. No. 13-13110, 2014 WL 496890 (D. Mass. Feb. 7, 2014) (Stearns, D.J.) [Transfer of Venue].

Plaintiff Fifty-Six Hope Road Music, Ltd. (“Hope Road”) brought an action against Defendant Raising Cane’s USA, LLC. (“Raising Canes”) to cancel its “ONE LOVE” trademark and also to assert claims including trademark infringement, unfair competition, and trademark dilution. The District Court (Stearns, D.J.) granted Raising Canes’ motion to transfer the case to the Middle District of Louisiana.

Raising Canes is a fast-food chain that offers a single menu item—chicken finger combo meals—in various sizes, and it registered the trademark “ONE LOVE” in 2005. Hope Road is run by members of music legend Bob Marley’s family. It attempted to register its own “ONE LOVE” mark in 2009, but application was rejected based on a likelihood of confusion with Raising Canes’ mark. The parties have been embroiled in negotiation and litigation over “ONE LOVE” ever since.

In October 2012, discovery was nearly complete in consolidated actions before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”). Raising Canes tried for over a year to take two final depositions of Hope Road witnesses, and it finally took the first of those depositions on December 3, 2013. Three days later, Hope Road filed this suit in the District of Massachusetts, ostensibly because its witnesses were in New York and Raising Canes had a restaurant in Boston. Raising Canes responded with its own complaint in the Middle District of Louisiana, and then moved to transfer Hope Road’s suit to that venue.

Hope Road argued that its case should stay in Massachusetts because it filed first and no special circumstances supported transfer. Raising Canes noted that Hope Road delayed the last depositions in the TTAB proceeding and then filed in Massachusetts before that body could resolve the dispute. But Hope Road never “deliberately misled” Raising Canes to keep it from filing its own complaint, and the Court noted that such deception is “often the decisive criterion in deciding whether the exception applies.”

Nevertheless, the Court did not rule as to whether special circumstances for transfer were present because it held that the Middle District of Louisiana was “substantially more convenient” than Massachusetts. The Court considered a number of factors, including, among others, the plaintiff’s choice, the parties’ convenience, witnesses’ convenience, and the location of evidence.

Importantly, the Court gave less than usual weight to this plaintiff’s forum choice because Hope Road filed away from its own home. Conversely, Raising Canes filed its complaint in the district where its headquarters are located, along with nearly one-fourth of its restaurants. Further, though Hope Road claimed that three of its key witnesses were in New York, it had never mentioned two of them in the course of the TTAB proceeding. Accordingly, the Court was dubious of their actual import to Hope Road’s case.

Ultimately, the Court allowed Raising Canes’ motion to transfer since Louisiana was home to most of the evidence and witnesses, and because that forum was more closely tied to the case than Massachusetts, “where any connection is tenuous at best.”