United States District Court, D. Nebraska
IAN V. JACOBS, Plaintiff,
FAREPORTAL, INC., Defendant.
MEMORANDUM AND ORDER
R. ZWART UNITED STATES MAGISTRATE JUDGE
matter is before the court on Defendant's Motion for
Leave to file Amended Counterclaims. (Filing No. 80). For the
reasons explained below, the motion will be granted.
argues Defendant's Motion is untimely because it was
filed after the deadline for filing motions to amend.
Plaintiff, therefore, contends that Rule 16's good-cause
standard should apply, as opposed to the more liberal
standard of Rule 15(a)(2). Plaintiff is mistaken.
good cause requirement applies to modifying the deadlines in
a case scheduling order. Fed.R.Civ.P. 16(b)(4). The court
never entered a scheduling order in this case. Furthermore,
in their Rule 26(f) Report, the parties stipulated to a
proposed deadline that landed on a day the court is closed.
Thus, even had a scheduling order been entered, the
court-modified deadline for moving to amend would have been
the next business day following the parties' stipulated
proposed deadline--which is precisely the day Defendant
did file the instant motion.
motion is properly evaluated under the less demanding Rule 15
standard. Pursuant to Federal Rule of Civil Procedure
15(a)(2), the court grants leave to amend “freely . . .
when justice so requires.” “Amendments to
pleadings should be allowed with liberality in the absence of
circumstances such as undue delay, bad faith or dilatory
motive on the part of the movant, . . . undue prejudice to
the opposing party by virtue of allowance of the amendment,
[or] futility of amendment. Klipsch, Inc. v. WWR
Technology, Inc., 127 F.3d 729, 732-33 (8th Cir. 1997)
(citation and internal quotation omitted).
contends that even if this court does apply the Rule 15
standard, Fareportal's proposed amendment should still be
denied as unduly prejudicial because it will require
additional discovery, including new expert testimony.
(Filing No. 94, at CM/ECF p. 5.) When deciding
whether allowing an amendment will prejudice the opposing
party, the court must consider whether asserting new
counterclaims will require expending significant additional
resources on discovery and trial preparation, or
significantly delay resolving the dispute. See,
Long v. Wilson, 393 F.3d 390, 400 (3rd Cir. 2004).
argues Defendant's proposed additional counterclaims will
require discovery into the parties' respective uses of
their trademarks at all times since their respective
beginnings, and thereby greatly increase the cost of
discovery. (Filing No. 94, at CM/ECF p. 6.)
Plaintiff contends that because Defendant had, at the time of
the filing of its response brief, yet to produce any
documents at all, adding additional months of discovery to
the relevant time period would render the case unmanageable.
(Filing No. 94, at CM/ECF p. 6.). And “making
the confusion of actual or hypothetical customers of
Defendant in 1998-2006 an issue would likely require the
retention of additional expert witnesses, ” thus
increasing the cost and time needed to prepare for trial.
(Filing No. 94, at CM/ECF p. 6.) Although Jacobs
concedes “that a substantial continuance would allow
the parties to obtain expert testimony on which party
established its mark first, and whether the marks conflict,
” Jacobs simultaneously argues that “Plaintiff
would be prejudiced even if a continuance was granted because
Defendant continues to infringe on Jacobs' Cheapo Mark in
keyword advertising. (Filing No. 94, at CM/ECF p.
arguments are unconvincing. Even assuming the amendment will
necessitate increased pretrial time and cost obligations,
Jacobs has not explained how these concerns will
“render the case unmanageable.” Moreover, both
parties have already demanded the opposing party's
documents dating back to the adoption of the respective
trademarks. So the timeframe of requested discovery cannot,
alone, be a source of substantial additional discovery
arising solely from permitting the proposed additional
counterclaims. And the discovery for Fareportal's
proposed new counterclaims overlaps the discovery needed for
Jacobs' claims, contradicting Fareportal's argument
that permitting the amended counterclaims will impose
significant additional discovery burdens.
court is not convinced that the additional counterclaims will
significantly delay the resolution of the parties'
dispute. And to the extent delay is a factor, the need for a
full decision on the merits, where both parties may fully
explore their existing claims, outweighs the risk of any
resulting prejudice Plaintiff has argued.
further argues that Fareportal's proposed amendment is
unduly delayed because Defendant is not asserting anything it
could not have already alleged in its ...