the Southern District of New York. Judge Conner, after hearing four weeks of evidence and reviewing thousands of pages of documents, determined under what circumstances Extra-Strength Tylenol's claims of superior efficacy violated the Lanham Act. In his opinion and permanent injunction, Judge Conner suggested that defendants' using the word "effective" rather than "potent" and limiting advertising claims of effectiveness to "mild to moderate pain" and "headache" might not violate the Lanham Act or might not be in violation of the permanent injunction. Even a cursory review of the five advertisements involved in this case shows that all five use the words "effective" and "headache" and compare the effectiveness of Extra-Strength Tylenol with ibuprofen. Judge Conner, not this court, should interpret his prior orders and determine whether the conduct in suit is violative of the court's injunctive order.
This case involves the same parties and issues regarding whether certain advertisements are false or misleading as do the cases pending in the Southern District of New York. "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." Continental Grain Co. v. The Barge FBL-585, 364 U.S. 19, 26, 80 S. Ct. 1470, 4 L. Ed. 2d 1540 (1960).
There might be no less wastefulness of judicial resources if, when this court transfers the case to the Southern District of New York, it is assigned to a judge other than Judge Conner. But assignment is a matter for that court. This judge takes judicial notice of Rule 15 of the Rules for the Division of Business Among District Judges of the Southern District of New York,
which would permit if not require this case to be assigned to Judge Conner as related. But in any event it is not in the interests of the administration of justice for this court to decide if the five advertisements involved in this case violate the permanent injunction issued by Judge Conner or to decide if the advertisements state false or misleading claims of superior efficacy where Judge Conner has so recently reviewed the parties' scientific evidence, heard weeks of testimony, and issued a permanent injunction, the wording of which effects the issues in this case. The evidence in this case may also effect damage issues remaining to be tried in the Southern District of New York. Judicial comity and conservation of judicial resources support a decision to transfer.
This case could have been brought in the Southern District of New York because that court would have jurisdiction over the subject matter under 15 U.S.C. § 1121, 28 U.S.C. § 1331 and 28 U.S.C. § 1338, jurisdiction over the parties, and proper venue under 28 U.S.C. § 1391.
Because this case could have been brought in the Southern District of New York and it is in the interest of justice and the convenience of the parties and witnesses, the court grants defendants' motion to transfer under 28 U.S.C. § 1404 (a).
An appropriate Order follows.
AND NOW, this 31st day of August, 1987, upon consideration of defendant's motion to dismiss or, in the alternative, transfer under 28 U.S.C. § 1404 (a), plaintiff's response, and defendants' reply thereto, it is ORDERED that:
1. Defendants' motion to transfer to the Southern District of New York where this case could have been brought is GRANTED.
2. The Clerk of this court shall send a certified copy of this Order, together with the record in this case, to the Clerk of Court of the United States District Court for the Southern District of New York.