Sream, Inc. v. Superior Discount, LLC, No. 2:2017cv08177 - Document 95 (E.D. La. 2019)
Court Description: ORDER AND REASONS denying 81 Motion to Dismiss Party; 82 Motion to Dismiss Party. Signed by Judge Susie Morgan on 5/10/19. (Reference: All Cases)(sbs)
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Sream, Inc. v. Superior Discount, LLC Doc. 95 U N ITED S TATES D ISTRICT COU RT EASTERN D ISTRICT OF LOU ISIAN A SREAM, IN C., Plain tiff CIVIL ACTION VERSU S N O. 17-8 177 c/ w 17-8 179 , 17-8 18 0 , 17-8 18 4 , 17-8 18 6 , 17-8 19 1, 17-8 19 3 , 17-8 2 0 5 , 17-8 2 16 , 17-8 2 18 , 17-8 2 3 8 , 17-8 2 3 9 , 17-8 2 4 2 , 17-8 2 4 3 , 17-8 2 4 4 , 17-8 2 4 6 , 17-8 2 52 SU PERIOR D ISCOU N T, LLC, D e fe n d an t Ap p lie s t o : All Ca s e s SECTION : “E” ( 1) ORD ER AN D REAS ON S 1 Before the Court is a Motion to Dism iss filed by Defendant E-Z Pick Inc. on behalf of the consolidated Defendants (“Defendants”). 2 The m otion is opposed. 3 The Court ordered any reply be filed by no later than May 8, 20 19. 4 Defendants did not file a reply. For the reasons that follow, the m otion is D EN IED . BACKGROU N D On August 24, 20 17, Sream filed the captioned actions, asserting the following causes of action against the Defendant(s) in each case: (1) a claim for tradem ark counterfeiting and infringem ent under 15 U.S.C. § 1114 and (2) a claim for false designation of origin and unfair com petition under 15 U.S.C. § 1125(a). 5 Sream alleges it 1 Unless otherwise noted, the Court cites to the record of the lowest-num bered consolidated action, action no. 17-8177. 2 R. Doc. 81. India Im ports, LLC also filed a separate Motion to Dism iss, R. Doc. 8 2. 3 R. Doc. 91. 4 R. Doc. 94. 5 R. Doc. 1 at ¶¶ 41-63. 1 Dockets.Justia.com is the exclusive United States licensee authorized to use the tradem ark “RooR” and alleges it has the authority by license from the tradem ark’s owner to police and enforce the RooR m arks within the United States. 6 In the original Com plaints, Sream alleges the RooR tradem ark is owned by Martin Birzle. 7 On J anuary 8 , 20 18, after Sream filed suit against Defendants, Mr. Birzle assigned his rights in the m ark to Roor International BV. 8 Sream alleges the Defendants sold counterfeit m erchandise bearing the RooR m ark at tim es between August 24, 20 16 and August 28, 20 16. 9 Several of the Defendants filed Motions to Dism iss, 10 arguing Sream lacks standing to assert claim s under either 15 U.S.C. § 1114 or 15 U.S.C. § 1125(a). While the Motions to Dism iss were pendin g before the Court, Sream m oved for leave to file am ended com plaints to add Roor International BV as a Plaintiff. 11 On March 1, 20 19, the Court ruled on the pending m otions to dism iss and m otions for leave. 12 The Court held Sream lacks standing to bring a claim for tradem ark infringem ent under 15 U.S.C. § 1114 because the license agreem ent between Birzle and Sream , ratified by Roor International BV, does not confer upon Sream the status of an 6 R. Doc. 8 at ¶ 10 ; see also R. Doc. 77-3 (Licensing Agreem ent). R. Doc. 1 at ¶ 10 , 11. 8 R. Doc 77 at ¶ 10 , 11; see also R. Doc. 77-4 (Ratification Agreem ent). 9 R. Doc. 1 at ¶ 21. 10 Case No. 17-8177, R. Doc. 60 (filed by Superior Discount, LLC), R. Doc. 64 (filed by Guide-On e National Insurance Com pany), R. Doc. 65 (filed by India Im ports LLC); Case No. 17-8179, R. Doc. 41 (filed by J oseph Truong, Inc.), R. Doc. 42 (Motion to Dism iss and for Rule 11 Sanctions filed by J oseph Truon g, Inc.); Case No. 17-818 4, R. Doc. 55 (filed by MKM Group, LLC), R. Doc. 57 (filed by India Im ports, LLC); Case No. 178191, R. Doc. 34 (filed by Dock Quick Stop, LLC); Case No. 17-8 20 5, R. Doc. 51 (filed by M&S Fuel, LLC), R. Doc. 53 (filed by India Im ports LLC); Case No. 17-8216, R. Doc. 31 (Motion to Dism iss and for Rule 11 Sanctions filed by E-Z Pick, Inc.); Case No. 17-8 238 , R. Doc. 52 (filed by Discount-N-Out, LLC), R. Doc. 56 (filed by India Im ports, Inc.); Case No. 17-8 243, R. Doc. 67 (filed by Quickys Discount). 11 Case No. 17-8177, R. Doc. 67; Case No. 17-8179, R. Doc. 43; Case No. 17-818 0 , R. Doc. 32; Case No. 178184, R. Doc. 59; Case No. 17-8186, R. Doc. 34; Case No. 17-8191, R. Doc. 37; Case No. 17-8193, R. Doc. 33; Case No. 17-8 20 5, R. Doc. 56; Case No. 17-8 216, R. Doc. 35; Case No. 17-8 218, R. Doc. 23; Case No. 178238, R. Doc. 60 ; Case No. 17-8242, R. Doc. 30 ; Case No. 17-8243, R. Doc. 73; Case No. 17-8244, R. Doc. 40 ; Case No. 17-8 246, R. Doc. 39; Case No. 17-8 252, R. Doc. 28. 12 R. Doc. 76. 7 2 assignee of the tradem ark. 13 The Court also granted Sream leave to file am ended com plaints adding Roor International BV as a Plaintiff. The am ended com plaints allege Roor International BV is the current owner of the RooR m arks and, as the owner of the m arks, Roor International BV has “federal statutory and com m on law rights to the RooR tradem ark.”14 Accordingly, the plaintiffs contend Roor International BV has standing to assert a claim for tradem ark counterfeiting an d infringem ent under 15 U.S.C. § 1114, as well as a claim for false designation of origin under 15 U.S.C. § 1125. Defendants m ove to dism iss the claim s of Roor International BV, arguing its claim s have prescribed. 15 The parties agree the applicable statute of lim itations for both claim s is one year. Roor International BV becam e a plaintiff when the am ended com plaints were filed on March 1, 20 19. 16 Roor International BV alleges Defendants violated 15 U.S.C. § 1114 and 15 U.S.C. § 1125 at tim es between August 24, 20 16 and August 28, 20 16. 17 Accordingly, the claim s of Roor International BV have prescribed unless they relate back to the date Sream filed the original com plaints. LAW AN D AN ALYSIS I. Th e Am e n d e d Co m p lain ts Re la te Back to th e D ate o f th e Origin al Co m p lain ts Federal Rule of Civil Procedure 15 provides: An am endm ent to a pleading relates back to the date of the original pleading when: (A) the law that provides the applicable statute of lim itations allows relation back; 13 Id. See also R. Doc. 8-2 (Licensing Agreem ent between Martin Birzle and Sream ); R. Doc. 77-4 (Ratification agreem ent). 14 . Doc. 77 at ¶ 11. 15 R. Doc. 81; R. Doc. 8 2. 16 R. Doc. 77. 17 Id. at ¶ 21. 3 (B) the am endm ent asserts a claim or defense that arose out of the conduct, transaction, or occurrence set out--or attem pted to be set out--in the original pleading; or (C) the am endm ent changes the party or the nam ing of the party against whom a claim is asserted, if Rule 15(c)(1)(B) is satisfied and if, within the period provided by Rule 4(m ) for serving the sum m ons and com plaint, the party to be brought in by am endm ent: (i) received such notice of the action that it will not be prejudiced in defending on the m erits; and (ii) knew or should have known that the action would have been brought against it, but for a m istake concerning the proper party's identity. 18 Although Rule 15(c) does not expressly apply to a new pleading adding or substituting Plaintiffs, the Advisory Com m ittee Note to the 1966 am endm ent indicates that Rule 15(c) also applies to the relation back of am endm ents changing plain tiffs. The Advisory Com m ittee notes, “the attitude taken in revised Rule 15(c) toward change of defendants extends by an alogy to am endm ents changing plaintiffs.”19 The Fifth Circuit has explained, “[r]ule 15(c) is ‘based on the idea that a party who is notified of litigation concerning a given transaction or occurrence is entitled to no m ore protection from statutes of lim itations than one who is inform ed of the precise legal description of the rights sought to be enforced’ . . . Clearly notice is the critical elem ent involved in Rule 15(c) determ inations.”20 “As long as a defendant is fully apprised of a claim arising from specified conduct and has prepared to defend the action, defendant’s ability to protect itself will not be prejudicially affected if a new plaintiff is added, and defendant should not be perm itted to invoke a lim itations defense.”21 18 F ED. R. CIV. P. 15 (em phasis added). F ED. R. CIV. P. 15, Advisory Com m ittee Note to 1966 Am endm ent. 20 W illiam s v. United States, 40 5 F.2s 234, 236 (5th Cir. 1968) (citin g 3 M OORE , F EDERAL P RACTICE P 15.15(2) at 10 21). 21 6A CHARLES ALAN W RIGHT, ARTHUR R. M ILLER ET AL., F EDERAL P RACTICE AND P ROCEDURE § 150 1 (3d ed). 19 4 In this case, the claim s of Roor International BV arise out of the sam e con duct, transaction, and occurrence as the claim s asserted by Sream in the original com plaint. 22 Both the factual allegations and causes of action now asserted by Roor International BV are largely identical to those originally asserted by Sream . 23 Defendants have had notice of the claim s again st them for tradem ark infringem ent under 15 U.S.C. § 1114 and false design ation of origin under 15 U.S.C. § 1125 since the date of filing of the original com plaint and have been preparing to defen d the action since that tim e. The origin al com plaints put the Defendants on notice of the existence of the tradem ark’s owner, an d Defendants will not be prejudiced by the addition of identical claim s asserted by the owner. The original com plaints allege Mr. Birzle “owns valid and subsisting federal statutory and com m on law rights to the RooR tradem ark” 24 and describe that, pursuant to a licensing agreem ent, Mr. Birzle granted Sream “all rights to sue to obtain dam ages and injunctive relief for past and future infringem ent of the RooR m arks in the United States.”25 Although the Court concluded Sream lacks standing to assert claim s under 15 U.S.C. § 1114, in part because its status as licensee does not equate it to the registrant or owner of the m ark, Defendants were aware of the existence an d identity of the tradem ark’s owner since the inception of the suit. 26 The addition of the owner of the tradem arks as a plaintiff should not com e as a surprise to Defendants. 22 Com pare R. Doc. 1 w ith R. Doc. 77. Com pare R. Doc. 1 w ith R. Doc. 77. 24 R. Doc. 1 at ¶ 9. 25 Id. at ¶ 13. 26 Martin Birzle’s assignm ent of his own ership interest in the m ark to Roor International BV does not affect this analysis. 23 5 Further, the Court has already concluded the addition of Roor International BV as a plaintiff will not prejudice Defendants. In the Order an d Reason s granting Sream leave to file am ended com plaints adding Roor International BV as an additional plaintiff, the Court explained, “[p]erm itting the am ended com plaint does not cause undue prejudice to Defendants. The am ended com plaint does not add new substantive allegations but rather asserts the sam e two causes of action. The factual allegations in the am ended com plaint are largely identical to those in the original Com plaint.”27 Accordingly, the claim s of Roor International BV relate back to the date of filing the original com plaints. As a result, the claim s of Roor International BV have not prescribed, and the m otion to dism iss is den ied on this basis. II. Pla in tiffs N e e d N o t Mo ve to Am e n d th e Ju d gm e n t Defendants also argue that, because the Court dism issed Sream ’s claim under 15 U.S.C. § 1114, RooR m ay not bring a claim pursuant to 15 U.S.C. § 1114 without filing a m otion to am end the judgm ent pursuant to Federal Rule of Civil Procedure 59(e). The cases cited by Plaintiffs to support this argum ent are in apposite. 28 After the court grants a m otion to dism iss and dism isses all claim s with prejudice, a party m ay only am end the com plaint by filing a m otion under Rule 15(a) in conjunction with a m otion to am end the judgm ent under Rule 59(e). 29 In this case, Plaintiffs requested leave to am end the com plaints prior to the Court’s ruling on the m otion to dism iss. The Court granted Sream leave to file am ended com plaints at the sam e tim e it dism issed one of Sream ’s two claim s with prejudice. Plaintiffs need not file a m otion to am end the judgm ent under these circum stances. 27 R. Doc. 76 at 15-16. Confederate M em 'l Ass'n, Inc. v. Hines, 995 F.2d 295, 299 (D.C. Cir. 1993). 29 Glenn v. First N at. Bank in Grand Junction, 868 F.2d 368, 370 (10 th Cir. 198 9). 28 6 CON CLU SION IT IS ORD ERED that the Motion to Dism iss 30 filed by Defendants is D EN IED . N e w Orle a n s , Lo u is ian a, th is 10 th d ay o f May, 2 0 19 . ______________________ _________ SU SIE MORGAN U N ITED S TATES D ISTRICT J U D GE 30 R. Doc. 81. The Motion to Dism iss filed by India Im ports, R. Doc. 8 2, also is D EN IED . 7
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