889 F. Supp. 2d 453
S.D.N.Y.2012Background
- Perfect moves to amend to add Lanham Act false advertising and trademark notice claims and NY false advertising claim, plus expanded unfair competition theories.
- Original suit alleges use of MAJESTIC/MAJESTIC PEARL by Perfect vs Majestic; consumer confusion and harm to Perfect’s relations.
- Scheduling order set amended-pleading deadline of January 6, 2011; Rule 30(b)(6) deposition of Majestic’s designee delayed until September 20, 2011.
- Perfect learns in Sept. 2011 that Majestic used the ® symbol in advertising after its trademark lapsed in 2008 and that Majestic claimed a registered mark on its site.
- Perfect moves Nov. 29, 2011 to amend; PAC adds four counts, including misuse of trademark notice and false advertising; website false-comparative content later challenged.
- Court grants partly: allows adding Lanham Act false advertising and NY false advertising, and factual allegations re ® symbol; denies misuse of trademark notice and website-related allegations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Perfect shows good cause under Rule 16 for delay | Delay justified by late deposition revealing facts. | Delay not justified; information already in discovery. | Good cause shown for continuing ® symbol; not for website/False Comparative Advertising content. |
| Futility of Count II (misuse of trademark notice) | Lanham Act misuse theory viable as promotional-materials misuse. | Misuse is an affirmative defense, not a free-standing claim. | Count II futile; not allowed. |
| Futility of Count III (false advertising under Lanham Act) | Misuse of ® symbol constitutes false advertising; viable claim. | Claim is essentially misuse, not true false advertising. | Count III viable; false advertising claim allowed. |
| Prejudice and need for additional discovery | Limited additional discovery required; does not unduly prejudice. | Significant discovery would be needed; prejudice possible. | Limited prejudice found; amendment granted for counts III and NY false advertising and ®-based facts. |
Key Cases Cited
- Parker v. Columbia Pictures Indus., 204 F.3d 326 (2d Cir.2000) (Rule 16 good cause and scheduling order considerations)
- Dougherty v. N. Hempstead Bd. of Zoning Appeals, 282 F.3d 83 (2d Cir.2002) (futility standard under amendment analysis)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (pleading standards require plausible claims)
- Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144 (2d Cir.2007) (false advertising can be viable under Lanham Act)
- South Cherry St. LLC v. Hennessee Grp. LLC, 573 F.3d 98 (2d Cir.2009) (pleading standard for amended complaints in Rule 15 context)