Hain BluePrint, Inc. v. BluePrint Coffee, LLC
4:16-cv-01758
| E.D. Mo. | Jan 5, 2018Background
- Hain Blueprint, Inc. sued Blueprint Coffee, LLC for trademark infringement in November 2016.
- Nine months into the case plaintiff sent a demand letter warning that opening a second store during litigation could be treated as willful infringement, exposing defendant to disgorgement of profits, enhanced damages, and fees.
- After deposing plaintiff’s corporate representative, Blueprint sought leave to amend its Answer to add an advice-of-counsel affirmative defense.
- Defendant’s original Answer was served more than 21 days earlier, so Rule 15(a)(2) leave of court was required.
- Plaintiff opposed, arguing undue delay and futility (claiming defendant had represented no privileged documents exist); plaintiff also sought an extension of expert-discovery deadlines if amendment were allowed.
- The Court granted leave to amend, rejecting plaintiff’s delay and futility arguments and leaving any expert-deadline adjustments to later request if necessary.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Timeliness of amendment / undue delay | Eleven-month delay after complaint and warning letters; no explanation, so deny leave | Delay alone insufficient; no showing of prejudice to plaintiff | Granted leave; delay without prejudice is insufficient to deny amendment |
| Futility of advice-of-counsel defense | Defendant previously represented no privileged documents exist, undermining the defense | Defendant asserts privileged communications with trademark counsel do exist | Denied futility challenge; defense not futile and amendment allowed |
| Need to extend expert-discovery deadline | If amendment allowed, plaintiff needs more time to disclose a damages expert | Advice-of-counsel defense won’t raise expert issues; discovery will be document production and deposition of counsel; plaintiff can later request extension if needed | Court declined to modify schedule now; plaintiff may move later if an expert is required |
Key Cases Cited
- Sherman v. Winco Fireworks, 532 F.3d 709 (8th Cir. 2008) (amendment of pleadings is within district court’s discretion)
- Popoalii v. Correctional Med. Servs., 512 F.3d 488 (8th Cir. 2008) (standard for granting leave to amend)
- Bell v. Allstate Life Ins. Co., 160 F.3d 452 (8th Cir. 1998) (factors permitting denial of leave to amend: undue delay, bad faith, prejudice, futility)
- Moses.com Secs., Inc. v. Comprehensive Software Sys., Inc., 406 F.3d 1052 (8th Cir. 2005) (delay alone insufficient; nonmovant must show prejudice)