LEGO A/S et al. v. OYO Toys, Inc. et al. (D. Ct/D. Mass. 19-01610).

Connecticut Federal Judge Bolden granted OYO Toys’ motion to transfer venue to Massachusetts.  LEGO sued OYO in Connecticut Federal Court, accusing it of copyright and trademark infringement, false designation of origin and violation of the Connecticut Unfair Trade Practices Act in connection with LEGO’s Minifigure characters.  OYO moved to dismiss for lack of personal jurisdiction or in the alternative to transfer.  Connecticut has a statute under which foreign corporations that do business in the state (which OYO does) without first obtaining a certificate of authenticity (which OYO lacks) “shall be subject to suit in this state by a resident of this state…”  The Court found that this did not apply, however, because neither of plaintiffs LEGO A/S or LEGO Juris A/S. private companies located in Denmark, are “residents” of Connecticut who could take advantage of the statute, and the two cannot “bootstrap” themselves into being able to invoke the statute by way of the residency of third plaintiff LEGO Systems, Inc.’s Connecticut place of business.  The Court further determined that OYO is not “conducting business” in Connecticut merely by selling figurines to national distributors who then bring them into Connecticut.  Similarly, OYO’s sales of figurines through its website falls below the “conducting business” standard of the statute because the sales were a very minor part of OYO’s overall sales and were not targeted specifically to Connecticut.  Rather than definitively find that Connecticut lacks personal jurisdiction over OYO, however, the Court instead opted to transfer the case to OYO’s home state of Massachusetts, and both personal jurisdiction and venue were certain to exist.  While the Plaintiffs’ choice of forum is normally granted considerable weight, where the claims are nationwide, and the owners of the copyrights and trademarks at issue are non-residents of the chosen forum, that weight is not controlling.  LEGO identified no Connecticut-based witnesses, while OYO identified both party and non-party witnesses located in Massachusetts, leading to the transfer.

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