United States District Court, S.D. New York
RIVER LIGHT V, L.P. and TORY BURCH LLC, Plaintiffs,
LIN & J INTERNATIONAL, INC., YOUNGRAN KIM, LJ BRAND, INC., and N.J. LIN & J INTERNATIONAL, INC., Defendants.
Natalie L. Arbaugh, Fish & Richardson PC, Dallas, TX, Irene E. Hudson, Fish & Richardson PC, New York, NY, for plaintiffs.
Howard Z. Myerowitz, Song Law Firm LLC, Fort Lee, NJ, for defendants.
OPINION & ORDER
DENISE COTE, District Judge.
Defendants move for leave to file an amended answer and amended counterclaims that add a counterclaim seeking a declaration of invalidity as to one of plaintiffs' copyrights. For the reasons given below, leave to add the counterclaim is denied.
Plaintiffs River Light V, L.P. and Tory Burch LLC ("Tory Burch") bring this action for trademark counterfeiting, trademark and copyright infringement, trademark dilution, and unfair competition, alleging that defendants sell jewelry bearing certain designs trademarked by Tory Burch. Plaintiffs filed their initial complaint on May 31, 2013. Defendants Lin & J International, Inc. ("Lin & J") and Youngran Kim ("Kim") answered on July 18 and interposed counterclaims for trademark infringement, tortious interference with business relations, and defamation. Defendants allege that they have used their design (the "Isis Cross Design") since 2009 and a predecessor mark since 2003, and that plaintiffs have wrongfully threatened and initiated litigation against defendants' customers. Defendants amended their answer and counterclaims on August 29, adding a counterclaim for abuse of process.
On consent, and with leave of Court, plaintiffs filed a first amended complaint on February 11, 2014 that added a claim for infringement of a second copyright, U.S. Reg. No. VA X-XXX-XXX (the "Second Copyright"), which was issued after the filing of the initial complaint. Defendants answered the first amended complaint on February 27 and restated their counterclaims, but did not add a counterclaim asserting the invalidity of the Second Copyright.
On March 4, with defendants' consent and leave of Court, plaintiffs filed a second amended complaint (the "Second Amended Complaint") that added as defendants two Lin & J affiliates, LJ Brand, Inc. and N.J. Lin & J International, Inc. (the "New LJ Defendants"). The Second Amended Complaint also added certain supplemental allegations that are not at issue here.
On March 10, defendants sought plaintiffs' consent to file an "amended" answer and counterclaims. On March 26, plaintiffs informed defendants they would not consent to the inclusion of a counterclaim addressed to the validity of the Second Copyright. On March 31, defendants moved for leave to file a "Second Amended Answer With Counterclaim" ("Proposed Answer" and "Proposed Counterclaim, " respectively) in order to make certain minor corrections to their answer and to add a counterclaim seeking a declaration of invalidity of plaintiffs' Second Copyright. No defendant has yet answered the Second Amended Complaint. Although the notice of motion states that all defendants bring this motion, the proposed amended pleading states it is only on behalf of defendants Lin & J and Kim, not the New LJ Defendants. The New LJ Defendants had until May 12 to answer or otherwise respond to the Second Amended Complaint, pursuant to a waiver of service executed with plaintiffs. No such filing has been made.
The Proposed Counterclaim alleges that "[t]he dates of creation and first use in commerce of the Isis Cross Design both significantly predate the dates of creation and first use in commerce" of the design claimed by plaintiffs' Second Copyright (the "TT Split Design"). It further alleges that the TT Split Design is "confusingly similar and/or substantially indistinguishable from the Isis Cross Design" and that plaintiffs have employed it "so as to create a likelihood of confusion between Lin & J's Isis Cross products and Tory Burch's products."
Plaintiffs oppose defendants' motion with respect to the Proposed Counterclaim, arguing that it would be futile. Plaintiffs do not oppose defendants' request to file the Proposed Answer. Defendants' motion was fully submitted on May 6.
Fact discovery in this action closed on April 25. Expert discovery ends on July 25, and any motion for summary judgment is due September 6.
Pursuant to Federal Rule of Civil Procedure 15, a response to an amended pleading is due within the time remaining to respond to the original pleading or within fourteen days after service of the amended pleading, whichever is later. Fed.R.Civ.P. 15(a)(3). A defendant that has timely waived service may answer or otherwise respond to a complaint within sixty days after the request for waiver was sent. Fed.R.Civ.P. 12(a)(1)(A)(ii). Compulsory counterclaims must ...