Memorandum Opinion–Page 1

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

MIKE BIGGS, §

§

Plaintiff, §

§

vs. § CIVIL ACTION NO. 3:04-CV-1920-R

§

BASS PRO OUTDOOR WORLD, LLC, §

INCREDIBLE TECHNOLOGIES, INC., §

and PLAY MECHANIX, INC., §

§

Defendants. §

MEMORANDUM OPINION AND ORDER

Before this Court are Bass Pro Outdoor World, LLC’s Motion to Transfer Venue (filed

March 25, 2005) and Incredible Technologies, Inc. and Play Mechanix, Inc.’s Joint Motion to

Transfer Venue (filed May 17, 2005) (collectively, the “Motions to Transfer Venue”). For the

reasons discussed below, Defendants’ Motions to Transfer Venue are DENIED.

I. BACKGROUND

Plaintiff Mike Biggs (“Biggs”), a wildlife photographer who operates his business from his

home in Fort Worth, Texas, filed this copyright infringement action against Defendants Bass Pro

Outdoor World, LLC (“Bass Pro”), Incredible Technologies, Inc. (“Incredible”), and Play Mechanix,

Inc. (“Play”). Plaintiff claims the Defendants infringed upon his copyrights by copying, distributing,

and displaying certain images of deer and turkey, images which Biggs allegedly authored and

owned, for use in the video games “Big Buck Hunter,” “Big Buck Hunter: Shooter’s Challenge,”

and “Big Buck Hunter II: Sportsman’s Paradise” (collectively, the “BBH Games”).

Each Defendant’s connection to the BBH Games is distinct. Defendant Bass Pro is a

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF TEXAS 

DALLAS DIVISION

FILED

July 20, 2005

CLERK, U.S. DISTRICT COURT

 

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28 U.S.C. § 1406(a) reads, “The district court of a district in which is filed a case laying

venue in the wrong division or district shall dismiss, or if it be in the interest of justice, transfer

such case to any district or division in which it could have been brought.”

Memorandum Opinion–Page 2

Missouri limited liability company registered to do business in many states, including Texas. Bass

Pro operates retail sporting good stores throughout the United States, including one in Grapevine,

TX, in which Plaintiff alleges Bass Pro operates two coin operated BBH Games displaying the

allegedly infringing images. Defendant Play is the software developer responsible for designing the

BBH Games’ software. Defendant Incredible is the company responsible for manufacturing, selling,

and marketing the BBH Games around the United States, including in Texas. Both Play and

Incredible are Illinois corporations and made motions to dismiss claiming that this Court lacked

personal jurisdiction over them. This Court denied those motions finding it has specific jurisdiction

under the stream of commerce theory. This Court has personal jurisdiction over all three of the

Defendants.

The Defendants now move to have this case transferred to the Northern District of Illinois

pursuant to 28 U.S.C. Section 1406(a) claiming venue is proper only in Illinois or, alternatively,

pursuant to Section 1404(a) according to convenience analysis. 

II. ANALYSIS

The Defendants move to have this case transferred to the Northern District of Illinois

pursuant to 28 U.S.C. Section 1406(a) claiming venue is proper only in Illinois or, alternatively,

pursuant to Section 1404(a) according to convenience analysis. 

A. Motion to Transfer Venue Pursuant to 28 U.S.C. § 1406(a)

Defendants argue venue is proper only in Illinois and that, therefore, this case must be

transferred pursuant to §1406(a).1

 Defendants rest this argument on the language of 28 U.S.C. §

 

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1391(b)(1) (2005). 

In pertinent part, § 1391(b) reads, “A civil action wherein jurisdiction is not founded solely

on diversity of citizenship may...be brought only in (1) a judicial district where any defendant

resides, if all defendants reside in the same State...” 28 U.S.C. § 1391(b) (2005). In order to

properly interpret this provision, § 1391(b) must be read in context with § 1391©. Under §1391©,

for purposes of venue, “a defendant that is a corporation shall be deemed to reside in any judicial

district in which it is subject to personal jurisdiction at the time the action is commenced.” 28

U.S.C. § 1391© (2005). Accordingly, then, because a corporation “resides” wherever it is subject

to personal jurisdiction, venue is proper in any district where all defendants in the given case are

subject to personal jurisdiction. See Bell Helicopter Textron, Inc. v. C&C Helicopter Sales, Inc.,

2001 U.S. Dist. LEXIS 3724 at *13, No. 3:00-cv-1516-X, 2001 WL 290569 (N.D. Tex. March 21,

2001) (holding no defendant “resided” in the district under § 1391(b)(1) because neither was subject

to the court’s personal jurisdiction); People Solutions, Inc. v. People Solutions, Inc., 2000 U.S. Dist.

LEXIS 10444 at *3-4, No. 3:99-cv-2339-L, 2000 WL 1030619 (N.D. Tex. July 25, 2000) (finding

that to determine whether venue is proper under § 1391(b)(1) the court must examine whether it has

personal jurisdiction over the defendant); See also Robert C. Casad, Personal Jurisdiction in

Federal Question Cases, 70 Tex. L. Rev. 1589, 1612-13 (1992) (criticizing § 1391 for allowing

venue against a corporate defendant to be proper where defendant is subject to personal jurisdiction

and calling for more restrictive venue rules).

Because all three defendants are subject to this Court’s personal jurisdiction, they are deemed

 

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This Court recently addressed Motions to Dismiss filed by Defendants Incredible and

Play. In that opinion (filed June 27, 2005), this Court determined that it had personal jurisdiction

over both of these defendants under the stream of commerce theory of specific jurisdiction. As

for Defendant Bass Pro, this Court’s personal jurisdiction is clear–and undisputed by the parties. 

Bass Pro is registered to do business and in fact is doing business in Texas–including, but not

limited to, the operation of its Grapevine store. This Court, having personal jurisdiction over all

three defendants, finds this district is a proper venue under § 1391.

Memorandum Opinion–Page 4

to reside in Texas for purposes of § 1391(b).2 Accordingly, this district is a proper venue in which

this case may have been brought. Therefore, Defendants argument that this case be transferred

pursuant to § 1406(a) fails. This Court now considers Defendants alternative argument, that the case

be transferred pursuant to § 1404(a).

B. Motion to Transfer Venue Pursuant to 28 U.S.C. § 1404(a)

In the alternative, Defendants seek transfer of the case to the Northern District of Illinois

under § 1404. “For the convenience of parties and witnesses, 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) (2005). The party moving for change of venue bears the burden of

proving that change of venue is warranted. Peteet v. Dow Chemical Co., 868 F.2d 1428, 1436 (5th

Cir. 1989). The proposed transferee forum must be a more convenient forum, not a forum likely to

prove equally convenient or inconvenient as the transferor forum. Van Dusen v. Barrack, 376 U.S.

612, 646, 84 S. Ct. 805, 11 L. Ed. 2d 945 (1964). A court “should not transfer venue where the

result will be merely to shift the expense and inconvenience from one party to the other.” Enserch

Int’l Exploration, Inc. v. Attock Oil Co., 656 F. Supp. 1162, 1167 (N.D. Tex. 1987). The decision

to transfer a case is ultimately left to the discretion of the transferor court. See Jarvis Christian Coll.

v. Exxon Corp., 845 F.2d 523, 528 (5th Cir. 1988).

In deciding whether to transfer, the Court is to consider the following factors: (1) the

 

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The Court will address the above listed Factors 1-4 together.

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convenience of the parties; (2) the convenience of material witnesses; (3) the availability of process

to compel the presence of unwilling witnesses; (4) the cost of obtaining the presence of witnesses;

(5) the relative ease of access to sources of proof; (6) calendar congestion; (7) where the events in

issue took place; and, (8) the interests of justice in general. Minka Lighting, 2003 WL 21251684

at *2; Gundle Lining Construction Corp. v. Fireman’s Fund Ins. Co, 844 Supp. 1163, 1165

(S.D.Tex. 1994). Only if the balance of these factors weighs strongly in favor of the defendant

should the plaintiff’s choice of forum be disturbed. See Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 506

(1947). Each of the factors is discussed in turn.

1. The Convenience and Availability of the Parties and Witnesses3

The first factor, the availability and convenience of witnesses and parties, is perhaps the most

important factor in determining whether or not to transfer a case under § 1404(a). Dupre v. Spanier

Marine Corp., 810 F. Supp. 823, 825 (S.D. Tex. 1993). As for the parties, a transfer in venue would

clearly shift the inconvenience and expense from Incredible and Play to Biggs, and thus is not

sufficient to support a transfer. The impact upon the convenience and availability of the witnesses,

however, may favor a transfer of venue.

Defendants specifically name and outline the anticipated testimony of eight key witnesses,

all whom reside in Illinois. Of these eight witnesses, seven are employees of the Defendants. The

eighth named witness, Dina Tabora, is a former Play employee who allegedly was responsible for

the incorporation of any and all graphics, artwork and imaging into the video games that are the

subject of the suit. Tabora was terminated from her employment with Play, and Defendants expect

 

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Moreover, because of an indemnity portion of her employment contract, Defendants

expect that Tabora will become a Third Party Defendant in the case. 

Memorandum Opinion–Page 6

that she will be a hostile witness.4 Convenience analysis favors a forum in which the parties will

be able to compel identified key witnesses to testify. Houston Trial Reports, Inc. v. LRP

Publications, Inc., 85 F.Supp. 2d 663, 669 (S.D. Tex. 1999). Because compulsory service over

Tabora would be available in Illinois but not in Texas, Ms. Tabora’s role as a key witness seems to

favor transfer. However, Defendants represent that Ms. Tabora will likely be made a Third Party

Defendant to the action. It appears Defendants’ interest in calling her to testify is most, if not solely,

relevant to the matter of indemnity. 

As for the Plaintiff, he lists himself as a witness as well as “persons with knowledge of the

operation of, and revenue from, the video games Bass Pro operates in Grapevine.” Response to

Incredible and Play’ Motion to Transfer Venue at 6 (filed May 17, 2005 at Tab B). Plaintiff does

not specifically name such witnesses, but this Court assumes such witnesses would be employees

or agents of Bass Pro and accordingly be considered party witnesses.

In considering the convenience and availability of the witnesses, while a transfer would

greatly shift expense from one party to the other, this factor nonetheless seems to slightly favor a

transfer of venue. The testimony of Tabora and the parties’ ability to subpoena her to testify is of

concern. She is the only mentioned non party witness, and the convenience of nonparty witnesses

is accorded the greatest weight. Minka, 2003 U.S. Dist. LEXIS 8862 at *7; Travelers Indem. Co.

of Am. v. Nat’l Union Fire Ins. Co., 2002 U.S. Dist. LEXIS 12877 at *7 (N.D. Tex. July 16, 2002);

Gundle Lining Constr. Corp. v. Fireman’s Fund Ins. Co., 844 F. Supp. 1163, 1166 (S.D. Tex. 1994).

However, Defendants represent she is likely to become a Third Party Defendant. 

 

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Moreover, while the convenience of non party witnesses is accorded the greatest weight, this

it not to say the convenience of other witnesses is irrelevant. Plaintiff has named himself as well

as other witnesses located in the Dallas area who would be inconvenienced by a transfer. At the

same time, Defendants have specifically named eight witnesses, all who would be inconvenienced

if the case is to remain in this district. In sum, because of the situation surrounding potential witness

Tabora, this factor weighs slightly in favor of transfer. 

2. Access to Sources of Proof

Many sources of proof, including computer databases, files, records, and documentsrelated

to the creation, design, manufacture and marketing and sale of the video games that are the subject

of this lawsuit are located on Incredible and Play premises in Chicago. However, certain other

critical sources of proof are located in Texas, such as Biggs’ books and records. There has been no

showing from either side as to why any of the evidence in one district cannot be easily transmitted

to the other district. Accordingly, this Court finds this factor does not weigh in favor of transfer.

3. Where the Events in Issue Took Place

The next factor, the place ofthe alleged wrong, may support a change of venue. The creation

and manufacture of the BBH Games occurred exclusively in Illinois. Defendant Bass Pro’s

connection to this copyright infringement lawsuit is that it operates two of the allegedly infringing

video gamesin its Grapevine, TX outlet. As the allegedly infringing BBH Games exist all over this

country, the crux of the wrongs committed in this case regard the design and manufacture of the

games, which occurred only in Illinois. 

Defendants cite case law suggesting that the preferred forumisthe place where the infringing

activity was centered. Minka Ligting, 2003 WL 21251684 at *1 (citing S.C. Johnson & Son, Inc.

 

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Many courts have described calendar congestion as an interest of justice factor. E.g., 

Accordingly, this Court will address the above listed factor of calendar congestion within the

context of the interest of justice factor.

Memorandum Opinion–Page 8

v. Gillette Company, 571 F.Supp. 1185, 1187-88 (N.D. Ill. 1983)); see also, Houston Trial Reports,

85 F.Supp. 2d at 668 (S.D. Tex. 1999) (citing Habitat Wallpaper and Blinds, Inc. v. K.T. Scott Ltd.

Partnership, 807 F.Supp 470 (N.D. Ill. 1992)); Proshot Golf, Inc. v. Leading Edge Technologies,

Inc., Civil No. 3:96-cv-1906-D, 1996 WL 673265 at *2 (N.D. Tex. Oct. 31, 1996). All of the

referenced case law focuses on venue of patent infringement cases, as opposed to copyright

infringement cases. Nonetheless, Defendants’ argument is not without merit. Just as in those cases,

here, the allegedly infringing products are marketed and sold nationwide such that the “center of

gravity” of activity relating to the infringement suit is logically the place where the infringing party

designed and manufactured the product. Accordingly, this factor weighs in favor of transfer.

4. Interests of Justice5

Biggs’ choice of forum, normally entitled to substantial weight, is particularly significant

because he is a resident of the chosen forum. See Gulf Oil, 330 U.S. at 508; Piper Aircraft Co. v.

Reyno, 454 U.S. 235, 255-56, 102 S. Ct. 252, 70 L. Ed. 2d 419 (1981). Biggs is a solo photographer

where as the Defendants are corporate entities. Biggs suggests that he may not be able to incur the

expenses of traveling to Illinois to protect his copyrights and that a transfer may be fatal to his ability

to obtain justice. Biggs contends that the added expenses may very well prevent him from being

able to proceed with his case in the event it is transferred. 

A few other interest of justice matters may be addressed. First, any docket congestion in

Texas, juxtaposed against Biggs’ choice of forum, loses significance. Second, Texas’s interest in

having controversies involving and affecting its citizens resolved in Texas, especially when its

 

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citizens may not otherwise be able to pursue their claims, is at least as important as Illinois’ interest

in having a controversy involving resident businesses resolved in Illinois.

Biggs’ ability to bring his case is important to the interest of justice. After considering the

“interest of justice” factors, this Court is not persuaded that the balance of the factors weighs

strongly in favor of the Defendants. See Gulf Oil, 330 U.S. at 506. Accordingly, this Court finds

Biggs’ choice of forum should not be disturbed. 

III. CONCLUSION

For the reasons discussed above, Defendants’ Motions to Transfer Venue to the Northern

District of Illinois are DENIED. 

It is so ORDERED.

Signed: July 20, 2005.

_________________________________

JERRY BUCHMEYER

SENIOR U.S. DISTRICT JUDGE

NORTHERN DISTRICT OF TEXAS

 

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