Free Memorandum in Support of Motion - District Court of Connecticut - Connecticut

Case 3:03-cv-00597-IVIRK Document 117-2 Filed 12/27/2004 Page 1 oli°%€€ 2 9f5
Westlaw
Not Reported in F.Supp.2d Page 1
2001 WL 58000 (S.D.N.Y.)
(Cite as: 2001 WL 58000 (S.D.N.Y.))
H description or representation. [FN1] Pursuant to the
Motions, Pleadings and Filings Courts Pretrial Scheduling Order of October 23,
2000, entered in response to plaintiffs request for
Only the Westlaw citation is currently available. an expedited resolution of this case, all fact
discovery is to be completed by February 23, 2001.
The Joint Pretrial Order must be filed by March 23,
United States District Court, S.D.New York. 2001, and the case has been placed on the April
2001 trial ready calendar.
MOMENTUM LUGGAGE & LEISURE BAGS, a
partnership between Robert Rudko and William FN1. On November 16, 2000, plaintiff
M. Greystone, Plaintiff, voluntarily dismissed its claims against a
v. third defendant, Business Journals, Inc.,
JANSPORT, INC., Luggage & Leather Goods pursuant to Rule 41(a)(1)(i), Fed.R.Civ.P.
Manufacturers of America, Inc., and
Business Journals, Inc., Defendants. Jansport served, and attempted to file, an answer
on December 7, 2000. [FN2] As of December 20,
N0. 00 Civ. 7909(DLC). 2000, the date on which the amended complaint was
filed, Luggage & Leather had neither served nor
Jan. 23, 2001. filed an answer. Pursuant to the Courts December
28, 2000 Order, however, Luggage & Leather had
John P. Bostany, New York, NY, for Plaintiff. until January 15, 2001 to answer, move, or
otherwise respond to the complaint. As of the
Thomas A. Canova, Gianni P. Servcdidio, Pennie writing of this Opinion, Luggage & Leather has not
& Edmonds LLP, New York, NY, for Defendant responded to the complaint. Plaintiff filed an
Jansport, Inc. amended complaint without the Court's leave on
December 20, 2000, adding seven additional
OPINION AND ORDER defendants. Jansport opposes the amendment.
Plaintiff asserts that it is free to amend as of right,
COTE, J. but in the alternative, seeks leave nunc pro tune to
amend the complaint.
*1 This dispute arises out of defendants' alleged
infringement of plaintiffs trademark. Plaintiff seeks FN2. On December 7, 2000, Jansport filed
leave to amend the complaint to add seven and served its answer to the complaint. On
additional defendants. For the reasons stated below, December 11, 2000, Jansport tiled and
plaintiffs request to amend the complaint is denied. served its Rule 1.9 Statement. On
December 12, however, without knowing
Procedural History that Jansport had tiled and served the Rule
. 1.9 Statement the day before, the Court
This action was tiled on October 17, 2000. Plaintiff directed the C1erk's Office to return the
alleged that defendants Jansport, Inc. ("Jansport"), answer to Jansport pending the tiling of the
and Luggage & Leather Goods Manufacturers of Rule 1.9 Statement. The answer has since
America, Inc. ("Luggage & Leather"), violated the been filed nuncpro tune.
Lanham Act and New York's General Business Law
by infringing plaintiffs trade dress, diluting DISCUSSION
plaintiffs trademark, and engaging in acts of unfair
competition, false designation of origin, and false Plaintiff claims that, pursuant to Rule l5(a),
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EXHIBIT /-\
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Case 3:03-cv-00597-IVIRK Document 1 17-2 Filed 12/27/2004 Page 2 ol°@I8€ 3 9fS
Not Reported in F.Supp.2d Page 2
2001 WL 58000 (S.D.N.Y.)
(Cite as: 2001 WL 58000 (S.D.N.Y.))
Fed.R..Civ.P., it was entitled to amend its complaint specific provisions of Rule 21 govem over the
to add new defendants. Under Rule 15(a), general provisions of Rule 15, and that an
Fed.R.Civ.P., "[a] party may amend the party's amendment changing parties requires leave 0fCOL11`lZ
pleading once as a matter of course at any time even though made at a time when under Rule 15
before a responsive pleading is served." As stated amendment may be made as of course."); see also
above, Jansport served its answer before plaintiff United States v. Hansel, 999 F.Supp. 694, 697
filed the amended complaint. [FN3] Once a (N.D.N.Y.l998); Sheldon v. PHH Corp., No. 96
responsive pleading has been "served", a party may Civ. l666(LAK), 1997 WL 91280, at *3 (S.D.N.Y.
amend its pleadings "only by leave of court or by Mar. 4, 1997) ("[A] broad reading of Rule 15 would
written consent of the adverse party; and leave shall permit amendments for any purpose, including
be freely given when justice so requires." changes of parties .... Nevertheless, the preferred
Fed.R.Civ.P. l5(a). method is to consider such motions under
Fed.R.Civ.P. 2l, which specifically allows for the
FN3. Under Rule l5(a), plaintiff would addition and elimination of parties."), afd on other
need leave to amend its complaint against grounds, 135 F.3d 848 (2d Cir.l998); Holtzman v.
Jansport. See, eg., Bruno v. Shoreline Oil Richardson, 361 F.Supp. 544, 552 (E.D.N.Y.l973),
C0., No. 87 Civ. 9l75(PKL), 1988 WL rev'd on other grounds, 484 F.2d 1307 (2d Cir.);
142476, at *2 (S.D.N.Y. Dec. 27, 1988) Gordon v. Lipojf 320 F.Supp. 905, 923
("[defendant]'s answer is a 'responsive (D.Mo.1970) ("Neither Rule 15(a) nor the Notes of
pleading' under Rule 15(a) precluding the Advisory Committee intimate that an exception
amendment as of right as to [defendant]"); to Rule 21 was intended by the provision of Rule
Rose v. Associated Universities, No. 00 15(a) which permits a party to amend without leave
Civ. 0460(DAB), 2000 WL 1457115,*3 of court before a responsive pleading is filed"). But
(S.D.N.Y. Sept. 28, 2000) (" 'where some cf Washington v. New York City Board of Estimate,
but not all defendants have answered, 709 F.2d 792, 795 (2d Cir.1983) (analyzing motion
plaintiff may amend as of course claims to add new parties under Rule 15(a) when defendant
asserted solely against the non-answering had not answered, and not addressing Rule 21).
defendants" ‘) (quoting Barksdale v. King,
699 F.2d 744, 747 (5th Cir.l983)). See also *2 There are sound reasons why Rule 21 should
3 James Wm. Moore et al., Moores govern the addition and elimination of parties.
Federal Practice § 15.11, at 15-13 (3d ed. Whether parties should be dropped from or added
1997) ("If some, but not all, of the to an action presents problems of judicial
defendants have answered, the plaintiff has administration over which the court, rather than the
the right to amend only the claims asserted parties and their counsel, should maintain control at
against the non—answering parties and must every stage of the action. See Gordon v. Lzpopf 320
obtain leave to amend the complaint as to F.Supp. at 923. In adding or eliminating parties,
answering parties."); William W. courts must consider judicial economy and their
Schwarzer et al., Federal Civil Procedure ability to manage each particular case, as well as
Before Trial § 8:379, at 8-83 (1997) how the amendment would affect the use of judicial
("Common sense suggests that resources, the impact the amendment would have on
amendments may be made as a matter of the judicial system, and the impact the amendment
course as to defendants who have not yet would have on each of the parties already named in
answered; but leave of court must be the action.
obtained insofar as the amendment affects
defendants who have already answered."). These policy reasons are particularly applicable in
this case because of the substantial effect this
Rule 15(a) generally govems the amendment of amendment of the complaint would have on the
complaints, but in the case of proposed amendments party who has already answered, as well as on the
where new defendants are to be added, Rule 21 conduct of the litigation as a whole. Plaintiff
govems. See Kamins/cy v. Abrams, 41 F.R..D. 168, requested expedited litigation, and the Court agreed
170 (S.D.N.Y.l966) ("It has been held that the to the request. Jansport has answered the complaint
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Case 3:03-cv-00597-IVIRK Document 1 17-2 Filed 12/27/2004 Page 3 oi°48€ 4 0fS
Not Reported in F.Supp.2d Page 3
2001 WL 58000 (S.D.N.Y.)
(Cite as: 2001 WL 58000 (S.D.N.Y.))
and both Jansport and the plaintiff--as well as the spirit of the Federal Rules." ' Rachman Bag Co. v.
Court——have spent substantial resources in Liberty Mui. Ins. Co., 46 F.3d 230, 234 (2d
accommodating the expedited schedule. [FN4] Cir.1995) (quoting Fornan, 371 U.S. at 182). The
decision to grant leave to amend falls within the
FN4. In any event, even if leave were not sormd discretion of the trial court. See Zenith Radio
necessary, Jansport has made a motion to Corp. v. Hazeltine Research, Inc., 401 U.S. 321,
strike and, in the alternative, to stay. The 330 (1971); Austin v. Ford Models, Inc., 149 F.3d
Court would grant these motions for the 148, 155 (2d Cir.1998).
reasons stated infra. See generally Curtis
v. Citibank, 226 F.3d 133, 138 (2d *3 Jansport will be prejudiced by the delay in this
Cir.2000) ("As part of its general power to litigation which joinder of additional defendants
administer its docket, a district court may will cause. This case was put on an expedited
stay or dismiss a suit that is duplicative of schedule at plaintiffs request. The addition of seven
another federal court suit."). new defendants will delay both discovery and trial
as well as the final resolution of this case. [FN5]
Rule 21 states that a party may be added to an Plaintiffs claim that the joinder will not cause a
action "at any stage of the action and on such terms delay is unpersuasive.
as are just." Fed.R.Civ.P. 21. In deciding whether to
allow joinder, the Court is guided by "the same FN5. Plaintiffs claim that the addition of
standard of liberality afforded to motions to amend new defendants will not delay discovery or
pleadings tmder Rule 15." Soler v. G & LL Inc., 86 trial, because it will quickly serve them
F.R.D. 524, 527-28 (S.D.N.Y.1980) (internal with the complaint and provide them with
quotation omitted); see Clarke v. Fonix Corp., 98 copies of all discovery, is unpersuasive.
Civ. 6l16(RPP), 1999 WL 105031, at *6 (S.D.N.Y. The briefs regarding the amendment of the
March 1, 1999) ("Although Rule 21, and not Rule complaint were not fully submitted until
15(a) normally governs the addition of new parties January 10, 2001, and depositions are
to an action, the same standard of liberality applies scheduled to start on January 24, 2001. If
under either Rule.") (intemal quotation omitted), new defendants were added, the Court
afd, 199 F.3d 1321 (2d Cir.1999); Sheldon, 1997 would grant them the full time to answer or
WL 91280, at *3 ("While plaintiffs' motion [to add move. New parties would also have a right
a new defendant] properly is considered under Rule to be heard as to the appropriate schedule
21 rather than Rule 15, nothing material turns on for this litigation. All of this would
this distinction. Under either rule, leave of the Court necessarily increase the length and expense
is required .... To the extent the limited case law of discovery and delay the trial date.
under Rule 21 permits a conclusion, the standard
under that rule is the same as under Rule 15."); FTD Because of the contentious nature of this case, it
Corp. v. Bankers Trust Co., 954 F.Supp. 106, 109 has consumed an unusual amount of time and
(S.D.N.Y.1997) ("Although Rule 21, and not Rule resources of the parties and the Court in what
l5(a) normally governs the addition of new parties should have been a relatively straightforward
to an action, 'the same standard of liberality’ applies trademark infringement case. Over the past few
under either Rule.") (quoting Fair Haus. Dev. Fund months, the parties and the Court have spent
Corp. v. Burke, 55 F.R.D. 414, 419 (E.D.N.Y.l972) considerable time resolving disputes regarding,
); Karninsky, 41 F.R.D. at 170. among other things, Jansporfs two motions to
compel discovery from plaintiff Jansport's
In the context of amendment to pleadings under objections to plaintiffs document requests and
Rule 15, the Supreme Court has emphasized that a interrogatories, the location, timing, and payment of
reiiisal to grant leave to amend must be justified by travel expenses and fees for depositions of Jansport
grounds such as undue delay, bad faith, futility, or witnesses, plaintiffs three requests to send letters to
prejudice to the opposing party. Foman v. Davis, Jansporfs customers, plaintiffs request for
371 U.S. 178, 182 (1962). Refusal to grant leave to sanctions, Jansport's Motion to Dismiss the
amend "without justification is 'inconsistent with the statutory damages claim, and disputes over briefmg
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Case 3:03-cv-00597-IVIRK Document 1 17-2 Filed 12/27/2004 Page 4 ofpaagc 5 CICS
Not Reported in F.Supp.2d Page 4
2001 WL 58000 (S.D.N.Y.)
(Cite as: 2001 WL 58000 (S.D.N.Y.))
schedules. It is in the interest of all to bring this nuncpro tum: to amend the complaint is denied.
litigation to the speedy resolution for which plaintiff SO ORDERED:
has successfully argued in order to put some limit
on the burden and cost of this litigation. 2001 WL 58000 (S.D.N.Y.)
Finally, plaintiff has provided no answer to several Motions, Pleadings and Filings (Back to top)
of the arguments presented by Jansport. First, · l:00CV07909 (Docket)
Jansport points out that the amended complaint was (Oct. 17, 2000)
not even served on it. Second, Jansport contends
that plaintiffs proposed amendment is evidence of END OF DOCUMENT
plaintiffs bad faith. [FN6] Jansport argues that
plaintiff seeks to add Jansports customers as party
defendants after agreeing in writing before
Magistrate Judge Katz to a notification letter that
Jansport already sent its customers. Jansport also
states that the Court has twice denied plaintiffs
requests to send threatening letters to Jansport's
entire customer base. Jansport asserts that it has
demonstrated its willingness and ability to contact
specific customers and others to stop any use of the
disputed name. Jansport also points out that six of
the proposed new defendants have discontinued any
use of the Momentum name, and the seventh
proposed new defendant has never used the
disputed name. Third, Jansport argues that plaintiff
can obtain complete relief in the form of damages
and/or an injunction without the additional
defendants. Finally, Jansport points out that adding
additional parties will dramatically increase the
scope of this action. Plaintiffs failure to respond to
these arguments leaves them as additional reasons
to deny the amendment.
FN6. Nor has plaintiff explained why it
did not inform the Court of the amended
complaint during a teleconference on
December 21, 2000, the day after plaintiff
filed and purported to serve its amended
complaint on Jansport. During the
December 21, 2000 teleconference,
plaintiff sought leave to send threatening
letters to Jansport's customers. Because
these customers included the same entities
that plaintiff had filed an amended
complaint against on December 20, 2000,
plaintiff should have mentioned the
amendment during the teleconference.
CONCLUSION
For the reasons stated, plaintiffs request for leave
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