Case 1:16-cv-02509-NRB Document 17 Filed 06/09/16 Page 1 of 14

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
THE ESTATE OF STANLEY KAUFFMANN,

Plaintiff,
1:16-cv-02509-NRB
-against-

ROCHESTER INSTITUTE OF TECHNOLOGY,

Defendant.

__________________________________________________________________

MEMORANDUM OF LAW IN SUPPORT OF

DEFENDANTS MOTION TO DISMISS
FOR IMPROPER VENUE UNDER RULE 12(b)(3),
OR IN THE ALTERNATIVE TO
TRANSFER PURSUANT TO 28 U.S.C. 1404(a)

__________________________________________________________________

Charles A. Weiss
Michael D. Hess
HOLLAND & KNIGHT LLP
31 West 52nd Street
New York, NY 10019
(212) 513-3200

Attorneys for Defendant,

Rochester Institute of Technology
 Case 1:16-cv-02509-NRB Document 17 Filed 06/09/16 Page 2 of 14

TABLE OF CONTENTS

Page

STATEMENT OF FACTS ..............................................................................................................2

LEGAL ARGUMENT .....................................................................................................................4
I. Venue does not lie in the in the Southern District because RIT would not be
subject to personal jurisdiction in this district when it is analyzed as a separate
state as required by 28 U.S.C. 1391(d) .........................................................................4
A. RIT is not subject to general jurisdiction in the Southern District ......................4
B. RIT is not subject to specific jurisdiction in the Southern District .....................5
II. In the alternative, the case should be transferred to the Western District of New
York so Dr. Cardullowho is identified in the Complaint as the perpetrator of the
fraud and who is by contract obligated to defend and indemnify RITcan be
joined as a party ...............................................................................................................8
CONCLUSION ..............................................................................................................................10

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 Case 1:16-cv-02509-NRB Document 17 Filed 06/09/16 Page 3 of 14

TABLE OF AUTHORITIES

Page(s)

Cases

Brown v. Lockheed Martin Corp.,

814 F.3d 619 (2d Cir. 2016).......................................................................................................5

Caremark Therapeutic Servs. v. Leavitt,

405 F. Supp. 2d 454 (S.D.N.Y. 2005)........................................................................................4

Contl Grain Co. v. The FBL-585,

364 U.S. 19 (1960) .....................................................................................................................9

Daimler AG v. Bauman,
134 S. Ct. 746 (2014) .................................................................................................................5

Delagi v. Volkswagenwerk A.G. of Wolfsburg, Germany,

278 N.E.2d 895 (N.Y. 1972) ......................................................................................................7

Dimensional Media Assocs. v. Optical Prods. Dev. Corp.,

42 F. Supp. 2d 312 (S.D.N.Y. 1999)..........................................................................................5

Falconwood Fin. Corp. v. Griffin,

838 F. Supp. 836 (S.D.N.Y. 1993).............................................................................................9

Gordon v. Invisible Children, Inc.,

No. 14 Civ. 4122 (PGG), 2015 WL 5671919 (S.D.N.Y. Sept. 24, 2015) .................................8

Halliwell v. Moran Towing & Transp. Co.,

No. 98 CIV. 6500 (JSR), 1999 WL 258260 (S.D.N.Y. Apr. 29, 1999).....................................9

Ikeda v. J. Sisters 57, Inc.,

No. 14cv3570 (ER), 2015 WL 4096255 (S.D.N.Y. Jul. 6, 2015)..........................................7

Karoon v. Credit Suisse Grp. AG,

15-cv-4643 (JPO), 2016 WL 815278 (S.D.N.Y. Feb. 29, 2016) ...............................................8

Kramer v. Vogl,
215 N.E.2d 159 (N.Y. 1966) ......................................................................................................6

M. Shanken Communications, Inc. v. Variant Events, LLC,

No. 10 Civ. 4747 (CM), 2010 WL 4159476 (S.D.N.Y. Oct. 7, 2010) ......................................7

McGowan v. Smith,
419 N.E.2d 321 (N.Y. 1981) ......................................................................................................6

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 Case 1:16-cv-02509-NRB Document 17 Filed 06/09/16 Page 4 of 14

Merkur v. Wyndham Intl, Inc.,

No. 00 CV 5843 (ILG), 2001 WL 477268 (E.D.N.Y. Mar. 30, 2001) ......................................9

Newman-Green, Inc. v. Alfonzo-Larrain,

490 U.S. 826 (1988) ...................................................................................................................8

Omni Capital Intl v. Rudolf Wolff & Co.,

484 U.S. 97 (1987) .....................................................................................................................5

Posven, C.A. v. Liberty Mutual Ins. Co.,

303 F. Supp. 2d 391 (S.D.N.Y. 2004)........................................................................................9

Robinson v. Overseas Military Sales Corp.,

21 F.3d 502 (2d Cir. 1994).........................................................................................................4

RSM Prod. Corp. v. Fridman,

643 F. Supp. 2d 382 (S.D.N.Y. 2009), affd, 387 F. Appx 72 (2d Cir. 2010)..........................7

Savin v. Ranier,
898 F.2d 304 (2d Cir. 1990).......................................................................................................5

Story v. Republic Bank,

13 F. Supp. 3d 483 (W.D. Pa. 2014) ..........................................................................................5

Topps Co. v. Gerrit J. Verburg Co.,

961 F. Supp. 88 (S.D.N.Y. 1997)...............................................................................................7

Walden v. Fiore,
134 S. Ct. 1115 (2014) ...............................................................................................................8

Statutes and Rules

28 U.S.C. 1367(a) .........................................................................................................................8

28 U.S.C. 1391(d) .................................................................................................................1, 4, 5

28 U.S.C. 1404(a) ...............................................................................................................1, 9, 10

CPLR 302..............................................................................................................................5, 6, 7

Fed. R. Civ. P. 4(k)(1)(A) ................................................................................................................5

Fed. R. Civ. P. 12(b)(3)....................................................................................................................1

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Defendant Rochester Institute of Technology (RIT) respectfully submits this brief in

support of its motion to dismiss for improper venue pursuant to Fed. R. Civ. P. 12(b)(3), or in the

alternative to transfer this matter to the Western District of New York under 28 U.S.C. 1404(a).

As set forth herein, venue is lacking in the Southern District of New York under 28

U.S.C. 1391(d), which provides in the case of multi-district states that the propriety of venue is

determined as if each district were a separate state. Here, when the Southern District is analyzed

as a hypothetical separate state, RIT would not be subject to personal jurisdiction. Hence, venue

is improper in this district and the case must be dismissed.

In the alternative, the Court should transfer this case to the Western District of New York

even if concludes that venue is proper in the Southern District. As discussed below, plaintiffs

entitlement to relief turns in part on its assertion that nonparty Robert J. Bert Cardullo forged

documents and lied about his authority to have RIT publish the book at the center of this case.

Although plaintiff inexplicably chose not to name Dr. Cardullo as a defendant, his presence in

this case is of paramount importance to a complete adjudication of the entire controversy in a

single proceeding. And while there is no clear basis to obtain personal jurisdiction over Dr.

Cardullo in the Southern District, he is indisputably subject to personal jurisdiction in the

Western District because his publishing agreement with RIT has a choice-of-forum provision

specifying Monroe County (which embraces Rochester) as the location of any proceedings. If

the case is transferred to the Western District, RIT can and will join him as a third-party

defendant, and plaintiff could amend its complaint to assert a direct claim against him as well.
 Case 1:16-cv-02509-NRB Document 17 Filed 06/09/16 Page 6 of 14

STATEMENT OF FACTS

Plaintiff asserts it owns the copyrights to certain movie reviews written by the late

Stanley Kauffmann. It alleges that a collection of those reviews published by RITs academic

press as The Millennial Critic infringes those copyrights because no permission to reprint them

was granted either by Mr. Kauffmann (who died in 2014) or his estate.1

Beyond these basics, the facts alleged by plaintiff are themselves film-worthy, whether as

a documentary or a legal thriller in the style of a John Grisham novel. At the center of these

allegations is Dr. Cardullo, a scholar of cinema and former associate of Mr. Kauffmann.

Specifically, plaintiff alleges that Dr. Cardullo perpetrated a fraud on RIT by presenting it

with forged documents to show that he had permission from Mr. Kauffmann to publish the

collection of reviews. These include an apparently forged letter from a respected law firm

(successor to the law firm that drafted Mr. Kauffmanns will) stating that Mr. Kauffmanns will

conveyed rights to Dr. Cardullo to publish this anthology (Exhibit L to the Complaint).

In November 2015, a literary agent for Mr. Kauffmanns estate inquired of the RIT press

regarding RITs authority to publish The Millennial Critic, asserting in part that it was unaware

of any rights that had been granted to Dr. Cardullo. RIT then discontinued any sales of the book.

The company engaged by RIT to physically print The Millennial Critic was located in

Michigan. Reflecting its limited commercial appeal, RIT had only 200 copies printed. Of these,

fewer than 10% were sold. Specifically, RIT sold 15 copies to YBP Library Services in New

1
Information about Mr. Kauffmann can be found at William Grimes, Stanley Kauffmann,
Critic, Dies at 97; Spent a Half-Century at the Movies, N.Y. Times, Oct. 10, 2013, at A29.

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Hampshire, one copy to Amazon.com in Indiana, and one copy to an employee of its university

newspaper in Rochester. None were sold by RIT into the Southern District.2

Of the 15 copies that RIT sold to YBP Library Services, that company sold one copy to

the New York Public Library, but the librarys catalog reports it lost in transit and not

available. Heise Declaration 7, Exhibit A.3

The single copy that RIT sold to Amazon.com was repurchased by an RIT employee to

prevent it from being sold to others. Id. 4.

The single copy that RIT sold to the employee of the university newspaper was recalled,

and her money was refunded. Id. 5.

RIT also gave away free copies of The Millennial Critic for promotional purposes. Four

such copies were sent into the Southern District, three to potential reviewers and one to Barnes &

Noble. Id. 8, 9.

In response to RITs letter requesting a pre-motion conference (D.I. 10), plaintiff stated in

its letter that the executor of Mr. Kauffmanns estate, who resides in Manhattan, purchased a

copy of The Millennial Critic from Amazon.com. (D.I. 11). The origin of this copy is unclear,

but given RITs own purchase from Amazon.com of the single copy that it sold to Amazon.com,

it is likely one of the free review copies, because it is common for people who receive many

unsolicited books to resell them through book stores that operate through Amazon.com. Heise

Declaration 11.4

2
Declaration of Laura DiPonzio Heise in Support of Defendants Motion to Dismiss or Transfer
(Heise Declaration) filed herewith at 2-6.
3
RIT has asked YBP Library Services to recall the book and issue refunds. Id. 7.
4
As explained by Amazon.com, Third-party sellers are independent sellers who offer a variety
of new, used, refurbished, and collectible merchandise, and Amazon.com isnt directly
involved in the completion of sales arranged with third-party sellers. (contd . . .)

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LEGAL ARGUMENT

I. Venue does not lie in the in the Southern District because RIT would not be
subject to personal jurisdiction in this district when it is analyzed as a
separate state as required by 28 U.S.C. 1391(d)

The general rule that venue is proper in any district in which a corporate defendant is

subject to personal jurisdiction does not apply in states that have more than one judicial district.

In such states, each district is analyzed as a separate state, and venue is proper only if the

corporation would be subject to personal jurisdiction in that hypothetical state:

For purposes of venue under this chapter, in a State which has more than
one judicial district and in which a defendant that is a corporation is subject to
personal jurisdiction at the time an action is commenced, such corporation shall
be deemed to reside in any district in that State within which its contacts would be
sufficient to subject it to personal jurisdiction if that district were a separate State,
and, if there is no such district, the corporation shall be deemed to reside in the
district within which it has the most significant contacts.

28 U.S.C. 1391(d). As set forth below, because RIT is not subject to personal jurisdiction in

the hypothetical State of the Southern District of New York, venue is improper.

The plaintiff bears the burden of establishing personal jurisdiction and venue. Robinson

v. Overseas Military Sales Corp., 21 F.3d 502, 507 (2d Cir. 1994); Caremark Therapeutic Servs.

v. Leavitt, 405 F. Supp. 2d 454, 457 (S.D.N.Y. 2005). Even in federal question cases, personal

jurisdiction is determined by the rules of the forum state unless the federal statute provides for

nationwide service of process, Omni Capital Intl v. Rudolf Wolff & Co., 484 U.S. 97, 104-05

(1987); Fed. R. Civ. P. 4(k)(1)(A), which is not the case here.

A. RIT is not subject to general jurisdiction in the Southern District

Based on plaintiffs response to RITs request for a pre-motion conference, it does not

appear that plaintiff alleges that venue in the Southern District is proper because RIT would be

http://www.amazon.com/gp/help/customer/display.html?nodeId=537802 (last accessed June 9,

2016).

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subject to general jurisdiction here. To be thorough, however, RIT briefly addresses that

potential argument and shows that it would not be correct.

First, although the Complaint alleges that RIT conducts business throughout the State of

New York, 2, that would be insufficient for general jurisdiction (even if true) because RIT is

not at home in this district. Daimler AG v. Bauman, 134 S. Ct. 746, 754, 760-61 (2014) (a

standard on which general jurisdiction exists even based on a corporations substantial,

continuous, and systematic course of business in the state is unacceptably grasping); Brown

v. Lockheed Martin Corp., 814 F.3d 619, 627 (2d Cir. 2016) (Daimler established that, except

in a truly exceptional case, a corporate defendant may be treated as essentially at home only

where it is incorporated or maintains its principal place of business).

Second, RITs status as a New York corporation does not satisfy the level of contacts

required for venue purposes by Section 1391(d) because New York is a multi-district state.

Story v. Republic Bank, 13 F. Supp. 3d 483, 489 (W.D. Pa. 2014) (rejecting argument that

Pennsylvania corporation with principal place of business in Philadelphia resides in all three

federal districts of Pennsylvania for venue purposes); Gebman v. Preshrock Corp., No. 07-CV-

1226 GLS-DRH, 2008 WL 4238709, at *1-2 (N.D.N.Y. Sept. 8, 2008) (no venue in Northern

District for defendants situated and conducting business solely in Southern district); Dimensional

Media Assocs. v. Optical Prods. Dev. Corp., 42 F. Supp. 2d 312, 314, 317-18 (S.D.N.Y. 1999)

(no venue in Southern District for corporation with its principal place of business,

manufacturing facility, and executive offices located in the Western District).

B. RIT is not subject to specific jurisdiction in the Southern District

The question of specific jurisdiction turns first on the forum states long arm statute, and

then on the constitutional due-process inquiry. Savin v. Ranier, 898 F.2d 304, 306 (2d Cir.

1990). New Yorks long arm statute is CPLR 302. Because plaintiff did not plead any facts

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that would establish venue in the Southern District, this brief addresses the facts alleged in

plaintiffs response to RITs request for a pre-motion conference. Briefly stated, there are two

categories of contacts at issue: the free review copies mailed by RIT to persons in this district,

and at least one sale (via Amazon.com) to a person in this district (the executor of Mr.

Kauffmanns estate). Jurisdiction (and hence venue) fails under both CPLR 302 and the

constitutional due-process standard.

With respect to the free review copies (of which four were sent into this district), plaintiff

would presumably try to rely on CPLR 302(a)(1), which provides in pertinent part that a court

may exercise personal jurisdiction over a non-domiciliary who in person or through an agent

transacts any business within the state or contracts anywhere to supply goods or services in the

state. Id. (emphasis added). The undersigned did not find authority which establishes

specifically whether or not the act of giving away free merchandise qualifies as transacting

business, but authoritative New York precedent holds that simply sending goods into New

York, even in a commercial transaction, is not the transaction of business here. McGowan v.

Smith, 419 N.E.2d 321, 322 (N.Y. 1981) (It is well established however, that the long-arm

authority conferred by this subdivision does not extend to nondomiciliaries who merely ship

goods into the State without ever crossing its borders.); Kramer v. Vogl, 215 N.E.2d 159, 161

(N.Y. 1966).

The two cases cited by plaintiff in its response to RITs letter requesting a pre-motion

conference do not support the exercise of jurisdiction on these facts. In John Wiley & Sons, Inc.

v. Swancoat, the defendant sold and shipped at least seven books into New York. No. 08 Civ.

5672 (JGK), 2009 WL 2486048, at *1 (S.D.N.Y. Aug. 14, 2009). In BBC Enterprises Ltd. v.

Gold Coast Tape Distributing, Inc., the defendants sold or distributed the accused products in

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New York. No. 88 Civ. 7786 (CSH), 1991 U.S. Dist. LEXIS 6360, at *8 (S.D.N.Y. May 7,

1991).

By contrast, the court in M. Shanken Communications, Inc. v. Variant Events, LLC, No.

10 Civ. 4747 (CM), 2010 WL 4159476, at *5-6 (S.D.N.Y. Oct. 7, 2010), granted a motion to

dismiss for lack of personal jurisdiction in a trademark case where the defendant mailed

advertisements and solicitations to persons and companies in New York, and sought to purchase

advertising in a magazine based in New York, but was generally unsuccessful in its efforts.

As to the executors purchase of a book from Amazon.com, there is no basis to impute

that as the transaction of business (or other activity) in this district by RIT. Factually, the copy

he purchased appears to have been a review copy that was sold by its recipient to a bookstore

that resold it through Amazon. Heise Declaration 11. But even if this had been the copy sold

by RIT to Amazon.com in Indiana, its subsequent resale into New York by Amazon.com does

not subject RIT to specific jurisdiction. First, with respect to CPLR 302(a), Amazon.com is

not an agent of RIT. Delagi v. Volkswagenwerk A.G. of Wolfsburg, Germany, 278 N.E.2d

895, 897 (N.Y. 1972) (finding no personal jurisdiction through agency for a manufacturer neither

owning nor controlling distributor and noting [w]here, as here, there exists truly separate

corporate entities, not commonly owned, a valid reference of agency cannot be sustained); RSM

Prod. Corp. v. Fridman, 643 F. Supp. 2d 382, 402 (S.D.N.Y. 2009), affd, 387 F. Appx 72 (2d

Cir. 2010). Second, no cognizable version of the stream of commerce theory applies to facts

like these. See, e.g., Ikeda v. J. Sisters 57, Inc., No. 14cv3570 (ER), 2015 WL 4096255, *7-*8

(S.D.N.Y. Jul. 6, 2015); Topps Co. v. Gerrit J. Verburg Co., 961 F. Supp. 88, 90-91 (S.D.N.Y.

1997).

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In the past, plaintiff might have argued that presence in the district created specific

jurisdiction over RIT because the damage from the accused infringement was felt here.

Regardless of whether this might have sufficed in the past, it is insufficient following Walden v.

Fiore, 134 S. Ct. 1115, 1121-22 (2014), which clarified that specific jurisdiction exists only

when the defendants conduct ties it to a jurisdiction, as opposed to tying it to a plaintiff that in

turn resides there. Karoon v. Credit Suisse Grp. AG, 15-cv-4643 (JPO), 2016 WL 815278, *4-5

(S.D.N.Y. Feb. 29, 2016); Gordon v. Invisible Children, Inc., No. 14 Civ. 4122 (PGG), 2015 WL

5671919, *7-*8 (S.D.N.Y. Sept. 24, 2015).

II. In the alternative, the case should be transferred to the Western District of
New York so Dr. Cardullowho is identified in the Complaint as the
perpetrator of the fraud and who is by contract obligated to defend and
indemnify RITcan be joined as a party

Much of the Complaint is devoted to an attack on Dr. Cardullo as a forger, plagiarist, and

fraud. And while plaintiff did not name him as a defendant, it factually pleads a claim against

him for copyright infringement ( 14-15).

Dr. Cardullo ought to be joined in this case, at least as a third-party defendant on a claim

by RIT for indemnity under its publishing agreement with him (Heise Declaration , Exhibit B,

at p. 3 X). There is no obvious basis to support jurisdiction over Dr. Cardullo in the Southern

District, and if RIT were to pursue a separate suit against him for indemnity it would probably

have to proceed in state court in the absence of diversity jurisdiction.5 But if this case is

transferred to the Western District, subject-matter jurisdiction for the indemnity claim would

exist under 28 U.S.C. 1367(a) even if plaintiff did not add a direct claim against him. And

both jurisdiction and venue would be secure in the Western District because his contract with

5
Dr. Cardullo is believed to be a U.S. citizen residing overseas, which means he is neither an
alien nor a citizen of any state for diversity purposes. Newman-Green, Inc. v. Alfonzo-Larrain,
490 U.S. 826, 828 (1988).

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RIT has a choice-of-forum provision specifying the state or federal courts in Monroe County. Id.

at p. 5, XVIII (Jurisdiction of any litigation with respect to this Agreement shall be in New

York, with venue in a state or federal court of competent jurisdiction in Monroe County.).

If the case is not dismissed for improper venue, transfer to the Western District is

appropriate under 28 U.S.C. 1404(a) so the entire controversy among plaintiff, RIT, and Dr.

Cardullo can be resolved in a single action in one court. It is well established that the ability to

implead a third-party in the proposed transferee forum and thereby resolve related claims in a

single action weighs heavily in favor of transfer. Posven, C.A. v. Liberty Mutual Ins. Co., 303

F. Supp. 2d 391, 406 (S.D.N.Y. 2004) (Transfer under such circumstances substantially

advances the interests of fairness, efficiency and judicial economy by preventing duplicate

proceedings and thereby reducing the overall burden on the parties, non-party witnesses and the

judicial system.); Falconwood Fin. Corp. v. Griffin, 838 F. Supp. 836, 842 (S.D.N.Y. 1993)

(interests of justice directive in 1404(a) encompasses the private and public economy of

avoiding multiple cases on the same issues); Merkur v. Wyndham Intl, Inc., No. 00 CV 5843

(ILG), 2001 WL 477268, at *6 (E.D.N.Y. Mar. 30, 2001) (As a general principle, the ability to

implead a third party defendant in a proposed transferee forum is an important consideration

favoring transfer of venue, since the interests of fairness, efficiency, and judicial economy

support trying cases in forums where related claims can be joined.) (collecting cases) (quotation

omitted); Halliwell v. Moran Towing & Transp. Co., No. 98 CIV. 6500 (JSR), 1999 WL 258260,

at *1 (S.D.N.Y. Apr. 29, 1999); see also Contl Grain Co. v. The FBL-585, 364 U.S. 19, 26

(1960) (To permit a situation in which two cases involving precisely the same issues are

simultaneously pending in different District Courts leads to the wastefulness of time, energy and

money that 1404(a) was designed to prevent.).

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Although plaintiff raised during the pre-motion conference the legal propriety of transfer

because it asserted that it is not subject to personal jurisdiction in the Western District of New

York, such an argument is inconsistent with the terms of the statute, which provide in part that

transfer of a civil action may be made to any other district or division where it might have been

brought. 28 U.S.C. 1404(a). Because RITs principal place of business is in Rochester, there

can be no dispute that both personal jurisdiction and venue would have been proper had plaintiff

filed suit in the Western District, and for that reason there is no jurisdictional impediment to

transfer.

CONCLUSION

For the reasons set forth herein, the Court should grant RITs motion and dismiss this

action for improper venue. In the alternative, it should transfer the case to the Western District

of New York under 28 U.S.C. 1404(a).

Respectfully submitted,

HOLLAND & KNIGHT LLP

Attorneys for Defendant,

Rochester Institute of Technology

By: /s Charles A. Weiss

CHARLES A. WEISS
MICHAEL D. HESS

DATED: June 9, 2016

New York, New York

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