Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 1 of 16 PageID #:258
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`WM. WRIGLEY JR. COMPANY,
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`a Delaware Corporation,
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`Plaintiff,
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`Civil Action No. 1:21-CV-02357
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`v.
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`Judge Sara L. Ellis
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`TERPHOGZ, LLC, a California Limited
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`Liability Company, and John Does 1-5,
`Mag. Judge Young B. Kim
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`Defendants.
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`PLAINTIFF WM. WRIGLEY JR. COMPANY’S OPPOSITION TO
`DEFENDANT TERPHOGZ, LLC’S MOTION TO DISMISS OR,
`IN THE ALTERNATIVE, TRANSFER VENUE
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`Plaintiff Wm. Wrigley Jr. Company opposes Defendant Terphogz, LLC’s attempt to
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`dismiss or transfer this action. Terphogz is willfully infringing and diluting Wrigley’s famous
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`SKITTLES marks through its admitted sale, distribution, advertising, marketing, and promotion
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`of ZKITTLEZ-branded cannabis, cannabis- and CBD-related goods, drug paraphernalia, clothing,
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`and merchandise in Illinois and elsewhere. Terphogz’s motions to dismiss or transfer are
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`unsupported by law and evidence, and the Court should deny them.
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`I.
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`ARGUMENT
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`The Court Should Deny Terphogz’s Motion to Dismiss for Lack of Personal
`Jurisdiction.
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`In deciding Terphogz’s motion to dismiss under Rule 12(b)(2), the Court “accept[s] as true
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`all well-pleaded facts alleged in the Complaint,” Felland v. Clifton, 682 F.3d 665, 672 (7th Cir.
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`2012), and must “read the complaint liberally, in its entirety, and with every inference drawn in
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`favor of” Wrigley, Central States, Se. & Sw. Areas Pension Fund v. Phencorp Reinsurance Co.,
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`440 F.3d 879, 878 (7th Cir. 2006). To defeat Terphogz’s motion, Wrigley need only establish a
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`prima facie case of personal jurisdiction. See, e.g., Curry v. Revolution Labs., LLC, 949 F.3d 385,
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 2 of 16 PageID #:259
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`393 (7th Cir. 2020). “In evaluating whether the prima facie standard has been satisfied, the plaintiff
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`is entitled to the resolution in its favor of all disputes concerning relevant facts presented in the
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`record.” Id. (quotation omitted). Wrigley has shown that the Court should exercise specific
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`personal jurisdiction over Terphogz.
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`A.
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`This Court Has Specific Personal Jurisdiction Over Terphogz.
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`For the Court to exercise specific personal jurisdiction, Terphogz’s contacts with Illinois
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`“must show that it purposefully availed [itself] of the privilege of conducting business in the forum
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`state or purposefully directed [its] activities at the state . . . [and Wrigley’s] injury must have arisen
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`out of [Terphogz’s] forum-related activities.” Curry, 949 F.3d at 398 (quotation omitted). Further,
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`“any exercise of personal jurisdiction must comport with traditional notions of fair play and
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`substantial justice.” Id. (quotation omitted). These “essential requirements for the exercise of
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`specific jurisdiction” over Terphogz have been met. Id.
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`Wrigley’s operative complaint alleges claims for direct and contributory trademark
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`infringement and dilution claims federal and Illinois law arising out of Terphogz’s advertising,
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`promotion, distribution, and sale of products under the ZKITTLEZ mark. FAC ¶¶ 45-66; 74-95.
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`Under the Illinois long-arm statute, a court has jurisdiction over a defendant who commits a tort
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`in this state. 735 Ill. Comp. Stat. 5/2-209(a)(2). Terphogz admits that it has sold and shipped
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`products under the ZKITTLEZ mark to customers in Illinois. Orantes Decl. ¶¶ 5-7. Terphogz easily
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`has minimum contacts sufficient to support the Court’s exercise of specific personal jurisdiction.
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`See, e.g., Dental Arts Lab., Inc. v. Studio 360 The Dental Lab, LLC, Case No. 10 C 4535, 2010
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`U.S. Dist. LEXIS 124029, at *1, *7 (N.D. Ill. Nov. 23, 2010) (personal jurisdiction found where
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`defendant sold infringing products on its website to Illinois customers, amounting to 1.2% of its
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`gross revenue).
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`2
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 3 of 16 PageID #:260
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`The Seventh Circuit’s decisions in Curry and Hemi are instructive. In Curry, the defendant
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`sought to dismiss plaintiff’s trademark complaint based on lack of personal jurisdiction. Curry,
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`949 F.3d at 390. The defendant argued that the district court lacked personal jurisdiction because
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`the defendant “did not hold itself out as doing business in Illinois.” Id. at 391. The defendant stated
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`that it did not know the plaintiff was located in Illinois until plaintiff sued and that sales of allegedly
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`infringing products in Illinois were “minimal” and “represent[ed] only 1.8% of [the defendant’s]
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`total gross sales nationwide.” Id. The district court dismissed the case. Id. at 392.
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`The Seventh Circuit reversed, finding that the defendant had minimum contacts with
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`Illinois sufficient for personal jurisdiction. Id. at 399-402. The defendant’s sale of allegedly
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`infringing products “online through its website and third-party” websites sufficed for minimum
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`contacts where the defendant (1) included Illinois in the “ship-to” options on its website, (2) sent
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`emails to customers in Illinois confirming the sales and including their shipping address, and (3)
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`shipped allegedly infringing products to Illinois. Id. at 399. These actions, the Seventh Circuit
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`found, “fairly can be described as purposeful.” Id.
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`The Seventh Circuit’s Curry decision relied on Illinois v. Hemi Group, LLC, 622 F.3d 754
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`(7th Cir. 2010). In Hemi, the New Mexico-based defendant sold cigarettes through its websites.
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`Id. at 755. Hemi did not “single out Illinois residents” through its websites. Id. at 756. Illinois sued
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`Hemi for violating state laws through its online sales of cigarettes to Illinois residents. Id. Hemi
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`moved to dismiss for lack of personal jurisdiction. Id. The district court denied Hemi’s Rule
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`12(b)(2) motion, and the Seventh Circuit affirmed.
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`In finding that Hemi had sufficient minimum contacts, the Seventh Circuit observed that
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`Hemi “knowingly did business with Illinois residents” and purposefully availed itself of the
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`privilege of doing business in the state. Id. at 758. Through its shipments of cigarettes to Illinois
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`3
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 4 of 16 PageID #:261
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`customers, “[i]t is Hemi reaching out to Illinois, and not the residents reaching back, that creates
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`the sufficient minimum contacts with Illinois that justify exercising personal jurisdiction over
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`Hemi in Illinois.” Id. at 758.
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`Under Curry and Hemi, Wrigley has made a prima facie case that Terphogz has minimum
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`contacts with Illinois arising from its alleged trademark infringement and dilution sufficient to
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`support the Court’s exercise of specific personal jurisdiction. On its website at zkittlez.com,
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`Terphogz held itself out as open to sell products bearing the ZKITTLEZ mark to Illinois residents,
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`a fact that Terphogz admits when it states that it sought business from customers nationwide. Def.
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`Br at 2; Orantes Decl. ¶ 6. That Terphogz made its infringing products available to Illinois
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`consumers and sold the products to Illinois consumers shows that Terphogz has purposefully
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`directed its activities to Illinois. See, e.g., Curry, 949 F.3d at 399.
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`As in Curry, Terphogz’s website at zkittlez.com made Illinois a “ship-to” option and
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`Terphogz shipped infringing products into Illinois.1 FAC ¶¶ 12-13; Orantes Decl. ¶ 6; Def. Br. at
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`2-3. Terphogz advertised that it stood ready and willing to do business with residents of this state,
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`Terphogz in fact did business with residents of this state, and Terphogz knowingly shipped
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`products under the ZKITTLEZ marks into this state. See, e.g., Int’l Star Registry of Illinois v.
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`Bowman Haight Ventures, Inc., Case No. 98 C 6823, 1999 U.S. Dist. LEXIS 7009, at *6 (N.D. Ill.
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`May 6, 1999) (citing North Am. Philips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed.
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`Cir. 1994)) (“To sell an infringing article to a buyer in Illinois is to commit a tort in Illinois
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`1 Terphogz’s cases are easily distinguishable. In Ariel Invest LLC v. Ariel Capital Advisors LLC, 881 F.3d
`520 (7th Cir. 2018), be2 LLC v. Ivanov, 642 F.3d 555 (7th Cir. 2011), Sullivan v. Bickler, 360 F. Supp. 3d
`778 (N.D. Ill. 2019), and Am. Bridal & Prom Indus. Ass’n v. Partnerships & Unincorporated Ass’ns, 192
`F. Supp. 3d 924, 933 (N.D. Ill. 2016), the defendants did not ship goods under the infringing mark into
`Illinois. In Advanced Tactical Ordnance Sys., LLC v. Real Action Paintball, Inc., 751 F.3d 796 (7th Cir.
`2014), the defendant did ship goods into Illinois, but those goods did not give rise to the claims in plaintiff’s
`lawsuit. Here, Terphogz shipped ZKITTLEZ products into Illinois and Wrigley’s claims arise out of
`Terphogz’s sale of the goods.
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`4
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 5 of 16 PageID #:262
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`sufficient to confer jurisdiction under the tort provision of the long-arm statute.”); Ty, Inc. v. Baby
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`Me, Inc., Case No. 00 C 6016, 2001 U.S. Dist. LEXIS 5761, at *5-6 (N.D. Ill. Apr. 20, 2001) (sale
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`of allegedly infringing products in Illinois sufficient to confer specific personal jurisdiction).
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`Until zkittlez.com was disabled shortly after the commencement of this action in May
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`2021, Terphogz admits that it sold a dozen different ZKITTLEZ-branded products from its website
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`at zkittlez.com to customers located in Illinois for gross revenues of $634.98, which translates into
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`between 2% and 3% of gross revenues from sales at zkittlez.com. Def. Br. at 6 (“Defendant’s sales
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`into Illinois consisted of less than 3% of the total sales it made through its website” …); Orantes
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`Decl. ¶¶ 5-7. Terphogz insists that such sales are de minimis and do not constitute minimum
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`contacts for purposes of specific personal jurisdiction. Def. Br. at 6.
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`In support, Terphogz grossly mischaracterizes this Court’s decision in Richter v. INSTAR
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`Enters., Inc., 594 F. Supp. 2d 1000 (N.D. Ill. 2009). Terphogz suggests that Richter held that a
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`defendant lacks minimum contacts with Illinois if the defendant’s Illinois sales are a small
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`percentage of defendant’s total sales. Def. Br. at 6 (citing Richter, 594 F. Supp. 2d at 1007). But
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`Terphogz’s citation involves the Richter’s court’s conclusion that it lacked general personal
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`jurisdiction, not specific personal jurisdiction. Richter, 594 F.2d at 1007 (“[A]lthough defendant
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`does not deny that it makes sales in Illinois, the miniscule amount of those sales indicates that the
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`extent to which defendant does business in Illinois is small and general jurisdiction does not exist.”
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`(emphasis added)). Later in the opinion, the Richter court held that it lacked specific personal
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`jurisdiction, because the defendant had not sold the infringing products in Illinois. See id.
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`(“Plaintiff has offered no facts to show that anyone in Illinois used the interactive aspects of
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`defendant’s website to purchase artwork or that defendant shipped the artwork into Illinois.”).
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`Here, Terphogz admits that it sold ZKITTLEZ-branded products from its website at zkittlez.com
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`5
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`and shipped those products to customers in Illinois. FAC ¶¶ 12-13; Orantes Decl. ¶¶ 5-7; Def. Br.
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`at 2-3. Richter thus supports the Court’s exercise of specific personal jurisdiction over Terphogz.
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`That Terphogz’s sales of infringing products in Illinois purportedly comprise a small part
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`of total sales is irrelevant to specific personal jurisdiction. As explained in Igram v. Page,
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`Defendants' conduct subjects them to the reach of the long arm statute primarily
`because Plaintiff claims his intellectual property interests were damaged here. . . .
`[T]orts which involve damage to intellectual property generally 'occur' where
`the damage occurs. . . . The alleged torts, therefore, occurred in Illinois, bringing
`the Defendants' allegedly tortious conduct within the reach of the Illinois Long Arm
`Statute. A single tortious act committed in Illinois, no matter how minimal,
`brings the alleged tortfeasors within the scope of the long arm statute.
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`Case No. 98 C 8337, 1999 U.S. Dist. LEXIS 11871, at *1 (N.D. Ill. July 28, 1999) (citations
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`omitted) (denying Rule 12(b)(2) motion). See, e.g., Ouyenic v. Alucy, Case No. 21 C 3490, 2021
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`U.S. Dist. LEXIS 118876, at *6 (N.D. Ill. June 25, 2021) (specific personal jurisdiction found
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`based on five infringing products sold in Illinois); Store Décor Div. of Jas Int’l, Inc. v. Stylez
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`Worldwide Indus., Ltd., 767 F. Supp. 181, 183-84 (N.D. Ill. 1991) (same—$400 worth of
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`infringing products sold in Illinois). Each time that Terphogz used its ZKITTLEZ mark through
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`the sale of its products to customers in Illinois, a tortious act was committed sufficient for specific
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`personal jurisdiction.2
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`Contrary to Terphogz’s assertion, the fact that the Illinois customers who purchased
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`products under the infringing ZKITTLEZ mark did so via Terphogz’s nationally accessible
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`website at zkittlez.com and that Terphogz did not send officers into Illinois does not mean that
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`2 There is no basis to Terphogz’s false assertion that its sales of ZKITTLEZ-branded products in Illinois
`are “not related” to Wrigley’s claims and that the “activities that [Wrigley] asserts are infringing and dilute
`its marks occur in California, not Illinois.” Def. Br. at 6-7. Wrigley’s operative complaint alleges that
`Terphogz’s advertising, promotion, distribution, and sale of ZKITTLEZ-branded products, including to
`Illinois residents, give rise to the claims alleged therein. FAC ¶¶ 45-66; 74-95. That Terphogz sold
`ZKITTLEZ-branded products in California, as well as in Illinois, does not change the fact that its Illinois
`sales suffice for specific personal jurisdiction over Terphogz here.
`6
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`Terphogz’s contacts are unrelated to Wrigley’s claims. Def. Br. at 7 (“The few customers located
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`in Illinois who purchased sweatshirts and the like from Defendant did so using a website accessible
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`nationwide.”). In the Seventh Circuit’s decisions in Curry and Hemi, and this Court’s decision in
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`Dental Arts, for example, the unlawful products were sold via a nationwide website, including to
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`customers in Illinois, and the defendants did not send corporate representatives into Illinois, but
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`the court in each case held that it had specific personal jurisdiction over the defendants. See, e.g.,
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`Dental Arts, 2010 U.S. Dist. LEXIS 124029, at *1 (finding specific personal jurisdiction based on
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`internet sales and shipments of infringing products to Illinois—the fact that the website was
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`accessible nationwide and defendant did not travel to Illinois did not mean products were unrelated
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`to plaintiff’s claims); Ty, Inc. v. Baby Me, Inc., 2001 U.S. Dist. LEXIS 5761, at *5-6 (same).
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`Terphogz’s assertion (Def. Br. at 7) that trademark infringement typically occurs where the
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`defendant is located, not where the effects of infringement occur, is untrue and has no bearing on
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`whether Terphogz’s admitted sale and shipment of ZKITTLEZ-branded products to Illinois
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`customers are related to the claims in Wrigley’s operative complaint. See, e.g., Dental Arts, 2010
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`U.S. Dist. LEXIS 124029, at *1 (finding specific personal jurisdiction – the fact that defendant
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`had no physical presence in Illinois and that 98.8% of sales of the allegedly infringing products
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`were to residents outside of Illinois did not negate the fact that defendant intentionally sold
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`products under the infringing mark to Illinois residents and thus could reasonably expect to be
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`haled into Illinois court). Wrigley has shown that Terphogz has sufficient contacts with Illinois to
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`support this Court’s exercise of specific personal jurisdiction.
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`B.
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`Specific Jurisdiction Comports With Fair Play and Substantial Justice.
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`The Court’s exercise of specific jurisdiction over Terphogz comports with fair play and
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`substantial justice. See, e.g., uBid, Inc. v. GoDaddy Group, Inc., 623 F.3d 421, 432 (7th Cir. 2010)
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`7
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 8 of 16 PageID #:265
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`(reversing grant of 12(b)(2) motion). The relevant considerations—“the burden on [Terphogz], the
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`forum state's interest in adjudicating the dispute, [Wrigley’s] interest in obtaining convenient and
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`effective relief, the interstate judicial system's interest in efficiently resolving controversies, and
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`the shared interest of the states in furthering fundamental substantive social policies”—support
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`personal jurisdiction. Id. (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476 (1985)).
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`Indeed, “[t]hese factors rarely will justify a determination against personal jurisdiction.” Purdue
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`Research Foundation v. Sanofi-Synthelabo, S.A., 338 F.3d 773, 781 n.10 (7th Cir. 2003).
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`Exercising jurisdiction over Terphogz in Illinois is fair. Terphogz sold and shipped its
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`infringing products to Illinois residents. Orantes Decl. ¶¶ 5-7. Wrigley resides in Illinois, and
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`Illinois has an interest in “providing a forum in which its residents can seek to protect their
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`intellectual property rights.” Ty, Inc. v. Baby Me, Inc., Case No. 00 C 6016, 2001 U.S. Dist. LEXIS
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`5761, at *6 (N.D. Ill. Apr. 25, 2001); see, e.g., Wound Care Education Institute v. Thomas, Case
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`No. 07 C. 6505, 2008 U.S. Dist. LEXIS 46853, at *11-12 (N.D. Ill. June 17, 2008) (specific
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`personal jurisdiction found where one infringing product sold to Illinois customer and plaintiff
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`resided in Illinois). By purposefully doing business with Illinois and benefiting from doing
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`business here, it is hardly unfair to assert jurisdiction over Terphogz in an infringement action
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`concerning those sales and the intellectual property of Wrigley, an Illinois resident.
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`Because the Court has personal jurisdiction over Terphogz, it should deny Terphogz’s Rule
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`12(b)(2) motion and deny Terphogz’s request to transfer under 28 U.S.C. § 1631.
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`II.
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`The Court Should Deny Terphogz’s Motion to Dismiss for Improper Venue.
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`Terphogz also seeks to dismiss Wrigley’s operative complaint based on improper venue
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`under Fed. R. Civ. P. 12(b)(3). Def. Br. at 9-10. To defeat Terphogz’s motion, Wrigley need only
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`8
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 9 of 16 PageID #:266
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`make a prima facie showing that venue is proper, with any factual disputes resolved in Wrigley’s
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`favor. See, e.g., Dental Arts, 2010 U.S. Dist. LEXIS 124029, at *26.
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`Wrigley alleges that venue is proper in this Court under 28 U.S.C. § 1391(b)(1) and (2).
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`FAC ¶ 16. In federal question cases, venue is proper in any judicial district where the defendant
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`resides, 28 U.S.C. § 1391(b)(1), which is deemed to be any district “in which such defendant is
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`subject to the court’s personal jurisdiction,” 28 U.S.C. § 1391(c)(2); see 28 U.S.C. § 1391(d). This
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`Court has personal jurisdiction over Terphogz, and venue is thus proper.
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`Venue is also proper in this Court under 28 U.S.C. § 1391(b)(2) because “a substantial part
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`of the events or omissions” giving rise to Wrigley’s claim occurred here. Wrigley alleged that it is
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`headquartered in Chicago and that the harm caused by Terphogz’s sale of infringing ZKITTLEZ-
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`branded products—both inside and outside of Illinois—is felt by Wrigley in this judicial district.
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`FAC ¶¶ 1, 14. See, e.g., Midas Int’l Corp. v. Chesley, Case No. 11 C 8933, 2012 U.S. Dist. LEXIS
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`54770, at *6 (N.D. Ill. Apr. 19, 2012) (finding venue proper because plaintiff “allege[d] that they
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`suffered injury in this District as a result of Defendant’s alleged trademark infringement”).
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`Terphogz contends that venue is improper under 28 U.S.C. § 1391(b)(2) because a small
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`portion of its sales were made to Illinois residents.3 Def. Br. at 10. The Court rejected this argument
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`in Magnum Feeders v. Bloedorn, No. 95 C 2012, 1995 U.S. Dist. LEXIS 18398 (N.D. Ill. Dec. 11,
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`1995), where “.0074 percent” of defendant’s total sales were in Illinois. Id. at *2; see Davis v.
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`Howse, No. 02 C 5549, 2003 U.S. Dist. LEXIS 9552, at *13-15 (N.D. Ill. June 4, 2003) (denying
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`motion to dismiss for improper venue and rejecting “weight of contacts” approach for determining
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`3 Terphogz’s cited cases are distinguishable. Allstate Life Ins. Co. v. Stanley W. Burns, Inc., 80 F. Supp. 3d
`870 (N.D. Ill. 2015), was not a trademark case. Leroy v. Great Western United Corp., 443 U.S. 173 (1979),
`Noxell Corp. v. Firehouse No. 1 Bar-B-Que Rest., 760 F.2d 312 (D.C. Cir. 1985), Hindu Incense v.
`Meadows, 439 F. Supp. 844 (N.D. Ill. 1977), and Scotch Whisky Ass’n v. Majestic Distilling Co., 681 F.
`Supp. 1297 (N.D. Ill. 1988), applied an outdated version of the venue statute.
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`venue as superseded by current version of 28 U.S.C. § 1391(b)(2)). The Court should again reject
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`it here.
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`Venue is proper in the Northern District of Illinois, and the Court should deny Terphogz’s
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`Rule 12(b)(3) motion and motion to transfer under 28 U.S.C. § 1406.
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`III. The Court Should Deny Terphogz’s Motion to Transfer Under 28 U.S.C. § 1404(a).
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`Finally, Terphogz seeks to transfer this action to the Northern District of California under
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`28 U.S.C. § 1404(a), which provides that “[f]or the convenience of the parties and witnesses, in
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`the interest of justice, . . . to any other district or division where it might have been brought[.]” 28
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`U.S.C. § 1404(a). Terphogz bears “the burden of establishing, by reference to particular
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`circumstances, that the transferee forum is clearly more convenient.” Coffey v. Van Dorn Iron
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`Works, 796 F.2d 217, 219-20 (7th Cir. 1986). Terphogz has failed to meet its burden.
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`A.
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`The Convenience of the Parties and Witnesses Weighs Against Transfer.
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`In assessing the convenience of the parties and witnesses, the Court considers (1) Wrigley’s
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`choice of forum; (2) the location of the material events; (3) the ease of access to sources of proof;
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`(4) the convenience of the witnesses; and (5) the convenience of the parties. See, e.g., Republic
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`Techs. (NA), LLC v. BBK Tobacco & Foods, LLC, 240 F. Supp. 3d 848, 851 (N. D. Ill. 2016).
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`1. Wrigley’s Choice of Forum Weighs Strongly Against Transfer.
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`The law is well settled that “unless the balance [of relevant factors] is strongly in favor of
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`the defendant, the plaintiff’s choice of forum should rarely be disturbed.” Gulf Oil Corp. v. Gilbert,
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`330 U.S. 501, 508 (1947) (emphasis added). This is particularly true where, as here, the plaintiff
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`has filed in its home forum which bears a connection to the case. See, e.g., Aldridge v. Forest
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`River, Inc., 436 F. Supp. 2d 959, 960-61 (N.D. Ill. 2006) (plaintiff’s choice of home forum entitled
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`to substantial weight in transfer analysis). Wrigley’s headquarters have been located in Chicago
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`10
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 11 of 16 PageID #:268
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`for over 80 years and most of its employees and officers live in the area. See, e.g., Sch. Stuff, Inc.
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`v. Sch. Stuff, Inc., Case No. 00 C 5593, 2001 U.S. Dist. LEXIS 23382, at *14-15 (N.D. Ill. May
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`17, 2001) (denying motion to transfer where plaintiff had significant presence in Illinois for over
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`twenty years and “most of its employees and officers live in the Chicago area”). This factor weighs
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`strongly against transfer.
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`2.
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`The Location of Material Events Does Not Favor Transfer.
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`Terphogz contends that the Northern District of California is the location of material events
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`because its principal place of business, and “all decisions regarding the use of the allegedly
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`infringing mark were made there.” Def. Br. at 14. Even so, “the location of the defendant’s
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`activities is not the only relevant consideration.” Q Sales & Leasing, LLC v. Quilt Prot., No. 01 C
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`1993, 2002 U.S. Dist. LEXIS 13702, at *6-7 (N.D. Ill July 25, 2002) (denying transfer). The Court
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`“should decline[] to award an alleged infringer [like Terphogz] a free pass to litigate in its chosen
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`forum” on this basis. Ty, Inc. v Collett, Case No. 99 C 692, 1999 U.S. Dist. LEXIS 7010, at *12
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`(N.D. Ill. May 6, 1999) (denying transfer).
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`“[A] ‘substantial part’ of the events triggering trademark infringement may occur both in
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`the district where the infringer is located and where the trademark owner is located and confusion
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`is likely to occur.” Id. (quoting Nw. Corp. v. Gabriel Mfg. Co., 1996 U.S. Dist. LEXIS 1800, at *5
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`(N.D. Ill. Feb. 16, 1996)). Material events occurred in this judicial district because Wrigley is
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`based here. See, e.g., Virgin Enters. v. Jai Mundi, Inc., Case No. 13 C 8339, 2014 U.S. Dist. LEXIS
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`98437, at *18 (N.D. Ill. July 18, 2014) (denying transfer). This factor is neutral and does not favor
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`transfer. See, e.g., Estwing Mfg. Co. v. Cal-Rainbow Prods., Case No. 01 C 0276, 2001 U.S. Dist.
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`LEXIS 7804, at *4 (N.D. Ill. June 8, 2001) (denying transfer from plaintiff’s home forum where
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`material events occurred).
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 12 of 16 PageID #:269
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`3.
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`The Ease of Access to Sources of Proof Does Not Favor Transfer.
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`As Terphogz concedes, relevant documents are likely available electronically and could
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`easily be made available in this judicial district. See Def. Br. at 14. This factor is neutral and does
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`not favor transfer. See, e.g., Valtech, LLC v. 18th Ave. Toys Ltd., Case No. 14 C 134, 2015 U.S.
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`Dist. LEXIS 17138, at *17-18 (N.D. Ill. Feb. 12, 2015) (denying transfer—“parties can easily
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`access most sources of proof in this case through readily transferable electronic discovery”).
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`4.
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`The Convenience of Witnesses Does Not Favor Transfer.
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`Despite being the “most important of the 1404 factors,” Tech. Licensing Corp. v. Harris.
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`Corp., Case No. 09 C 820, 2012 U.S. Dist. LEXIS 52663, at *8 (N.D. Ill. Apr. 16, 2012), Terphogz
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`has not attempted to show that the convenience of witnesses factor favors transfer. To do so,
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`Terphogz needed to identify the key witnesses it intended to call and “make at least a generalized
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`statement of what their testimony . . . would include.” Heller Fin., Inc. v. Midwhey Powder Co.,
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`Inc., 883 F.2d 1286, 1293 (7th Cir. 1989); see, e.g., Republic, 240 F. Supp. 3d at 853 (denying
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`transfer where defendant identified witnesses but failed to explain anticipated testimony and why
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`it was relevant to case).
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`Terphogz asserts only that “the vast majority of witnesses are in California” and that “if
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`any former employees or corporate officers need to be deposed, they will presumably be in
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`California and outside of the subpoena power of this court.” Def. Br. at 14. Terphogz has literally
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`not identified a single witness, let alone a third-party witness, whose testimony is critical and who
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`resides in California and will be inconvenienced by proceeding in this court. See, e.g., First Nat’l
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`Bank v. El Camino Res., Ltd., 447 F. Supp. 2d 902, 913 (N.D. Ill. 2006) (“More weight is afforded
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`to non-party witnesses than witnesses within the control of the parties, as it is presumed that party
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`witness will appear voluntarily.”). This factor weighs against transfer. See, e.g., Graham v. UPS,
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 13 of 16 PageID #:270
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`519 F. Supp. 2d 801, 810 (N.D. Ill. 2007) (denying transfer where defendant failed to identify
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`third-party witnesses who would be inconvenienced and their anticipated testimony).
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`5.
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`The Convenience of Parties Does Not Favor Transfer.
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`Terphogz asserts that “it is a very small LLC operating only within the California market
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`and with a licensee in Oregon.” Def. Br. at 14. Courts in this district have rejected similar assertions
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`as a basis for transfer. See, e.g., Central States, Southeast & Southwest Areas Pension Fund v.
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`Kurtz Gravel Co., Case No. 98 C 2174, 1998 U.S. Dist. LEXIS 15316, at *8 (N.D. Ill. Sept. 18,
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`1998) (denying transfer—“Though [Defendant] alleges that it is small, it does not disclose its
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`annual sales, revenue or any other specific financial information. Absent evidence to suggest that
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`this suit in Illinois will work a financial hardship on [Defendant], the fact that it is ‘smaller’ than
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`[Plaintiff] has little value.”). Terphogz fails to show that it is inconvenient for it to litigate here.
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`“This factor is not intended to shift the inconvenience from the defendant to the plaintiff,”
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`and courts will not transfer cases “solely because it will be more convenient for the defendant
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`[elsewhere] for this will only shift the inconvenience to plaintiff.” Sch. Stuff, Inc., 2001 U.S. Dist.
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`LEXIS 23382, at *15-16 (denying transfer); see Research Automation, Inc. v. Schrader-Bridgeport
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`Int’l, Inc., 626 F.3d 973, 978 (7th Cir. 2010) (“Where the balance of convenience is a close call,
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`merely shifting inconvenience from one party to another is not a sufficient basis for transfer.”).
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`This factor weighs against transfer. See, e.g., Valtech, 2015 U.S. Dist. LEXIS 17138, at *19
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`(denying transfer “where it would be equally inconvenient for both parties to litigate this case
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`outside of their home states”). Overall, the convenience factors do not warrant transfer.
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`B.
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`The Interest of Justice Does Not Favor Transfer.
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`The interests of justice do not favor transfer. All of the relevant factors—(1) the congestion
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`of the respective court dockets; (2) the speed at which the case will proceed to trial, (3) the court’s
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 14 of 16 PageID #:271
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`familiarity with the applicable law, (4) the respective desirability of resolving controversies in each
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`locale, and (5) the respective relationship of each community to the occurrence at issue—are either
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`neutral or weigh against transfer. See, e.g., Valtech, 2015 U.S. Dist. LEXIS 17138, at *19 (citing
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`Research Automation, 626 F.3d at 978).
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`With respect to docket congestion and the speed at which the case will proceed to trial,
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`Terphogz concedes that these two factors are at best neutral in the Court’s transfer analysis. Def.
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`Br. at 15. Terphogz makes no argument regarding the respective courts’ familiarity with the
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`applicable law. See id. That factor does not favor transfer, particularly where Wrigley has asserted
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`several claims under Illinois law. See, e.g., Valtech, 2015 U.S. Dist. LEXIS 17138 (denying
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`transfer—federal courts are “equally familiar with relevant federal law, and both competent if
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`chosen to preside over this case”); Northwestern, 1996 U.S. Dist. LEXIS 1800, at *18 (same—
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`transferee forum “would not provide a better forum to litigate these Illinois state law claims”).
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`Regarding the remaining factors, this Court has a stronger interest in resolving this dispute
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`than the Northern District of California. This case involves the blatant infringement and dilution
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`of the iconic intellectual property of Wrigley, a famous company headquartered in this judicial
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`district, and not the “California cannabis industry.” Def. Br. at 15. The Northern District of Illinois
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`has a stronger relationship to the dispute and is the more desirable forum in which to adjudicate
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`this case. See, e.g., Valtech, 2015 U.S. Dist. LEXIS 17138, at *20 (denying transfer because “injury
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`to [Plaintiff] occurred in Illinois” which weighed against transfer”); Sch. Stuff, 2001 U.S. Dist.
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`LEXIS 23382, at *17 (denying transfer because “Illinois has a strong interest in adjudicating
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`injuries to the intellectual property rights of business that operate in this state”). The interests of
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`justice do not favor transfer.
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`Case: 1:21-cv-02357 Document #: 32 Filed: 09/07/21 Page 15 of 16 PageID #:272
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`In short, Terphogz has failed to meet its burden of showing that the Northern District of
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`California is “clearly more convenient,” Coffey, 796 F.2d at 220, and the Court should deny
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`Terphogz’s transfer motion.
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`CONCLUSION
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`For the foregoing reasons, Wrigley respectfully submits that the Court should deny
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`Terphogz’s motions and issue an initial scheduling order, so the parties may proceed to discovery.
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`Dated: September 7, 2021
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`By:
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`WM. WRIGLEY JR. COMPANY
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`/s/Joseph T. Kucala, Jr.
`Joseph T. Kucala, Jr. (Reg. No. 6275312)
`KUCALA LAW LLC
`P.O. Box 547
`New Lenox, IL 60451
`Telephone (630) 453-8380
`joe@kuc