Diaz et al v. Glen Plaid LLC

Filing 18

MEMORANDUM OPINION. Signed by US Magistrate Judge T Michael Putnam on 10/10/13. (KAM, )

FILED
2013 Oct-11 PM 01:13
U.S. DISTRICT COURT
N.D. OF ALABAMA

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ALABAMA
WESTERN DIVISION
RICHARD DIAZ and
GAMEDAWG, LLC,
Plaintiffs,
vs.
GLEN PLAID, LLC, d/b/a
Original Houndstooth,
Defendant.

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Case No. 7:13-cv-853-TMP

MEMORANDUM OPINION
This cause is before the court on the defendant’s motion to dismiss 1 the action on the
ground that an indispensable party, the Board of Trustees of the University of Alabama (“the
University”), has not been and cannot be joined as required by Fed. R. Civ. P. 19. Defendant
Glen Plaid argues that it has been licensed by the University to use a trademark, consisting of the
silhouette of an elephant filled with a houndstooth pattern (referred to as the “houndstooth
elephant”), owned by the University, making the University an indispensable party in plaintiffs’
action for infringement of a very similar registered trademark plaintiffs claim to own. Plaintiffs
counter that the defendant lacks standing to assert the University’s trademark-ownership
argument and that the University is not an indispensable party under Rule 19.
1

The plaintiffs and named defendant have consented to the exercise of magistrate judge
jurisdiction pursuant to 28 U.S.C. § 636(c). See Docs. 12 & 16. The “elephant” in the room,
however, is the Board of Trustees of the University of Alabama. Although it is not a party in this
action, it is directly interested in the court’s resolution of the Rule 19 motion filed by the
defendant, because one of the options available to the court is allowing this action to proceed,
even though it would have a possibly prejudicial impact on the interests of the absent University
in the trademark at issue. Because § 636(c)(1) requires expressly only the “consent of the
parties,” the undersigned magistrate judge has complete and proper authority to exercise full
jurisdiction in the case.
1

I. Background Facts
The basic facts pertinent to this motion are essentially undisputed. On December 10,
2010, plaintiffs filed their application with the United States Patent and Trademark Office
(“USPTO”) to register the following trademark:

The USPTO registered the mark to plaintiff Richard Diaz on July 12, 2011, as register number
3,993,520. The mark was registered for uses associated with apparel. Diaz and his company,
GameDawg LLC, have marketed apparel bearing the mark since December 2010, principally to
college-sports fans aligned with the University of Alabama sports teams, both at sporting events
and tradeshows.
A year earlier, in May 2010, the University opposed the granting of trademark
registration to an entity known as The Tuscs LLC for the following mark:

The opposition was based on the University’s registered ownership of several elephant-motif
trademarks as well as its claim that the houndstooth pattern has long been associated with the
University and its former football coach, Paul Bryant. The opposition was sustained by the
USPTO when The Tuscs LLC defaulted by failing to respond to it in August of 2010. There is

2

no indication in the evidence in this case that the University made known any opposition at the
time plaintiff Diaz applied to register his similar trademark in 2011.
On March 1, 2011, defendant Glen Plaid LLC entered into a licensing agreement with the
University of Alabama for use of a “houndstooth elephant” trademark, although no party has
offered an example of such a mark claimed by the University. On July 17, 2011, defendant Glen
Plaid become part of the “University of Alabama – Houndstooth Program,” under which
defendant was given a license to use the houndstooth pattern in return for a royalty to the
University.
On November 2, 2011, plaintiffs’ counsel mailed a letter to Mark Gatewood at The
Original Houndstooth, a clothing store in Tuscaloosa, Alabama, operated by defendant Glen
Plaid, asserting that clothing sold by the store bore a trademark that infringed the mark registered
to the plaintiffs and further demanding that the store stop using the mark within seven days. The
trademark used by the defendant and challenged by the plaintiffs is substantially the following:

It is unclear what, if anything, occurred between the parties in the interim, but plaintiffs
filed the instant complaint on May 7, 2013, alleging trademark infringement under the Lanham
Act, a violation of the Alabama Deceptive Trade Practices Act, and a common law claim for
unfair competition.

The only named defendant in the complaint is Glen Plaid LLC; the

University of Alabama is not named as a defendant. The complaint seeks a permanent injunction

3

against defendant to stop the alleged infringement, an accounting of profits by the defendant,
damages, and other equitable and legal relief.
Two months later, on July 11, 2013, the Board of Trustees of the University of Alabama
and Paul W. Bryant, Jr., jointly filed a challenge in the USPTO to cancel the trademark
registration secured by plaintiff in July 2011. That challenge remains pending.

II. Discussion
Defendant’s motion seeks dismissal of the complaint on the single argument that the
University of Alabama, as the owner of the mark licensed to the defendant, is both a necessary
and an indispensable party under Rule 19 of the Fed. R. Civ. P., which cannot be joined in this
action because of its Eleventh Amendment immunity from suit in federal court. Because the
University cannot be joined as a defendant with respect to plaintiffs’ claims, defendant contends
Rule 19(b) requires dismissal of the complaint against it as well.
Rule 19 is designed to deal with whether all appropriate parties necessary for a complete
resolution of the controversy have been joined in the case. The rule requires a three-step 2
analysis: first, assessment of whether a non-joined entity is required for a complete resolution of
the controversy; second, whether it is feasible to join the entity into the lawsuit; and third, if it is
not feasible, whether equity and good conscience requires dismissal of the lawsuit. Rule 19(a)
requires that a person be joined in the action if ---

2

Some courts describe it as a two-step analysis, collapsing together the first and second steps
described above in text. See, e.g. Hardy v. IGT, Inc., 2011 WL 3583745 (M.D. Ala. Aug. 15,
2011); United States v. Janke, 2009 WL 2525073 (S.D. Fla. Aug. 17, 2009). Although Rule 19’s
structure suggests a two-prong analysis, Rule 19(a) appears to involve two distinct questions:
whether a non-joined entity is required to be joined to assure full and consistent relief, and
whether it is feasible to do so. For this reason, the court prefers the three-step analysis used
above.
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(A) in that person’s absence, the court cannot accord complete relief among
existing parties; or
(B) that person claims an interest relating to the subject of the action and is so
situated that disposing of the action in the person’s absence may:
(i) as a practical matter impair or impede the person’s ability to protect the
interest; or
(ii) leave an existing party subject to a substantial risk of incurring double,
multiple, or otherwise inconsistent obligations because of the interest.

However, such a person must be joined as a party only if he “is subject to service of process and
[his] joinder will not deprive the court of subject-matter jurisdiction.” Fed. R. Civ. P. 19(a).
Rule 19(a), therefore, asks two questions: is the non-joined person one whose absence will cause
one or more of the circumstances described, and can that person be served with process without
his joinder depriving the court of subject-matter jurisdiction. Under the circumstances of any
particular case, Rule 19(b) is not implicated if either the absence of non-joined person does not
involve the concerns expressed in the rule or the person can be feasibly joined in the action.
These determinations are fact-specific to each case.
Rule 19(b) addresses what happens if the non-joined person cannot be feasibly joined in
the action. If the non-joined person cannot be feasibly joined in the action, “the court must
determine whether, in equity and good conscience, the action should proceed among the existing
parties or should be dismissed.” The rule identifies several nonexclusive 3 factors guiding this
decision:

3

The Supreme Court has made clear that the list of factors set out in Rule 19(b) is nonexclusive
in that there may be other, unlisted factors that are pertinent to any particular case. See Republic
of Philippines v. Pimentel, 553 U.S. 851, 862, 128 S. Ct. 2180, 2188, 171 L. Ed. 2d 131 (2008).
The ultimate question in Rule 19(b) is whether “equity and good conscience” dictate dismissal of
the case or allow it to proceed only with the existing parties.
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(1) the extent to which a judgment rendered in the person’s absence might
prejudice that person or the existing parties;
(2) the extent to which any prejudice could be lessened or avoided by:
(A) protective provisions in the judgment;
(B) shaping the relief; or
(C) other measures;
(3) whether a judgment rendered in the person’s absence would be adequate; and
(4) whether the plaintiff would have an adequate remedy if the action were
dismissed for nonjoinder.

Fed. R. Civ. P. 19(b).
It is clear from the facts of this case that the first step of the analysis is met by the
apparent claim of the University to ownership of the mark registered by plaintiffs and on which
plaintiffs have sued defendant for infringement. The University’s filing of a challenge in the
USPTO to cancel the mark now claimed by plaintiff certainly indicates its claim of ownership to
the mark.

Although that challenge remains pending and unresolved, it shows that the

University’s claim of ownership is not frivolous. For purposes of Rule 19(a), the University’s
claim of ownership in the mark makes it a “person” required to be joined in this action. Both
plaintiff and the University claim ownership of the mark in question, so it is clear that complete
relief between the existing parties cannot be achieved without the presence of the University.
Plainly, a determination that plaintiffs are the owners of the mark would “impair or impede” the
University’s ability to protect its interest in the mark. An injunction prohibiting infringement by
the defendant, who claims the right to use the mark only be way of a license from the University,
would be tantamount to a finding that the University has no ownership interest in the mark.
Additionally, such a determination would leave Glen Plaid “subject to a substantial risk of
6

incurring double, multiple, or otherwise inconsistent obligations because of the interest.” An
injunction in this action would prohibit defendant from using the mark while subjecting it to an
inconsistent obligation to pay royalties under the license agreement with the University.
Therefore, the court finds that the University is required by Rule 19(a) to be joined in this action.
The complaint did not attempt to join the University as a defendant, and it is silent as to
why the plaintiffs did not do so. Rule 19(c) imposes a duty on the pleader “asserting a claim for
relief,” to allege “(1) the name, if known, of any person who is required to be joined if feasible
but is not joined; and (2) the reasons for not joining that person.” Although plaintiffs appear to
have been aware of defendant’s claim of a right to use the mark as a licensee of the University,
the University is not identified in the complaint as a party required to be joined, if feasible.
Defendant Glen Plaid asserts that plaintiffs could not join the University because of its Eleventh
Amendment immunity, and the plaintiffs have not disputed this assertion, except to argue that
Glen Plaid lacks standing to assert the University’s immunity for it. 4 This is ironic given

4

There can be little doubt that the Board of Trustees of the University of Alabama is entitled to
Eleventh Amendment immunity as an arm of the State of Alabama. As another judge of this
court has explained:
The Eleventh Circuit has determined that state universities in Alabama, as arms of
the state, are entitled to Eleventh Amendment immunity. Harden v. Adams, 760
F.2d 1158, 1163 (11th Cir. 1985) (holding that the Eleventh Amendment bars suit
under 42 U.S.C. § 1983 against Troy State University); see also Davis v. Alabama
State Univ., 613 F.Supp. 134, 139–40 (M.D. Ala. 1985) (holding that the Eleventh
Amendment protects Alabama State University from former employee’s § 1983
suit). Additionally, in Eubank v. Leslie, 210 Fed. Appx. 837, 844–45 (11th Cir.
2006), a panel of the Eleventh Circuit specifically applied this doctrine to the
University of Alabama Board of Trustees, deeming it a “state agency” and
affirming the district court’s decision that the plaintiff’s civil rights claims against
the Board under 42 U.S.C. §§ 1983 and 1985 were barred by state sovereign
immunity.
Harris v. Bd. of Trustees Univ. of Alabama, 846 F. Supp. 2d 1223, 1233 (N.D. Ala. 2012).
7

plaintiffs’ failure under Rule 19(c) to identify the University as an absent interested person and
to state the reason why it was not joined.
The argument advanced by the defendant, however, is not a question of standing, but the
assertion of its own right under Rule 19 to the dismissal of a lawsuit in which an indispensable
party is not and cannot be joined. Cf. Republic of Philippines v. Pimentel, 553 U.S. 851, 861,
128 S. Ct. 2180, 2187-88, 171 L. Ed. 2d 131 (2008) (holding that Court had jurisdiction on
appeal because parties other than the absent parties moved to dismiss the action under
Rule 19(b)). The very nature of Rule 19 examines whether a party joined in the action is entitled
“in equity and good conscience” to the dismissal of the case precisely because of the absence of
a necessary and indispensable person or entity. Raising a Rule 19 issue does not mean that the
joined party is asserting the right of the absent person to remain absent but, rather, the joined
party is invoking its own right to dismissal of the case due to the absence.
The question at the second step of the Rule 19 analysis is whether joinder of the absent
person is feasible, and the court believes in this case it is not. Importantly, the parties seem to
believe it is not. Plaintiffs did not attempt to name the University as a defendant in their original
complaint, nor have they moved for leave to add the University by amendment. The defendant
concedes that the Eleventh Amendment bars suit directly against the University. Whether an
absent party can be feasibly added to the lawsuit is a practical question.

In making the

assessment whether an absent person can be feasibly joined, “‘pragmatic concerns, especially the
effect on the parties and the litigation,’ control.” Challenge Homes, Inc. v. Greater Naples Care
Ctr., Inc., 669 F.2d 667, 669 (11th Cir. 1982). While it may be argued that, because Eleventh
Amendment immunity does not preclude service of process on the University or destroy the
court’s subject-matter jurisdiction over the rest of the action, it is possible to join the University

8

as a defendant, it would be short-lived. Eleventh Amendment immunity affects the jurisdiction
of the court, and a state sovereign is entitled to it unless one of three narrow circumstances
exists: abrogation by Congress under its Fourteenth Amendment power, explicit waiver by the
state sovereign, or application of the Ex parte Young doctrine for prospective relief against a
state official (but not the State itself). See Seminole Tribe of Florida v. State of Fla., 11 F.3d
1016, 1021 (11th Cir. 1994) aff'd sub nom. Seminole Tribe of Florida v. Florida, 517 U.S. 44,
116 S. Ct. 1114, 134 L. Ed. 2d 252 (1996); Pennhurst State School & Hospital v. Halderman,
465 U.S. 89, 104 S. Ct. 900, 79 L. Ed. 2d 67 (1984). In the absence of something suggesting the
presence of one of these exceptions, a court must assume Eleventh Amendment immunity
because it goes directly to constitutional limitations on the Article III power of the court. Unlike
a mere affirmative defense that must be pleaded (or it is waived), Eleventh Amendment
immunity partakes of jurisdictional limitations, which requires the court assume the immunity
exist, unless and until the party invoking jurisdiction proves that it does not. See Edelman v.
Jordan, 415 U.S. 651, 678, 94 S. Ct. 1347, 39 L. Ed. 2d 662 (1974) (“[T]he Eleventh
Amendment defense sufficiently partakes of the nature of a jurisdictional bar so that it need not
be raised in the trial court.”). That is especially true in a case like this, in which the plaintiffs
have chosen not to join the University as a defendant. Not being in the case as a party, the
University has no opportunity to express whether it relies upon or waives its immunity, and this
places upon the plaintiffs the burden of pleading and proving that the immunity does not exist.5

5

Plaintiffs cite the Federal Circuit case of Vas-Cath, Inc., v. Curators of the University of
Missouri, 473 F.3d 1376 (Fed. Cir. 2007), for the proposition that a voluntary initiation of a
litigation-style proceeding in an administrative agency is a waiver of Eleventh Amendment
immunity by the initiating state entity. While this is true, it does not support the argument here
that the University is subject to suit in this action simply because it filed the USPTO challenge.
Although the University may have waived its immunity as to judicial proceedings flowing from
the administrative proceedings it commenced, that waiver does not bleed over to this case.
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Plaintiffs may not decline to join the University as a defendant and then argue that it has not
asserted its immunity. Without some affirmative allegation from the plaintiffs showing that the
immunity does not exist, the court has no reason to assume other than that the immunity exists
and the University will invoke it.
In this case, neither the complaint nor any other filing suggests that Eleventh Amendment
immunity does not apply to shield the University from this action. It is clear that Congress has
not constitutionally abrogated Eleventh Amendment immunity in the context of trademark
litigation. See College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527
U.S. 666, 675, 119 S. Ct. 2219, 2226, 144 L. Ed. 2d 605 (1999). There is nothing in this case to
suggest that the University has waived its immunity and consented to suit against it. Whether a
state sovereign has waived its constitutional sovereign immunity requires a “stringent test.” Id.
“We will find a waiver either if the State voluntarily invokes our jurisdiction, Gunter v. Atlantic
Coast Line R. Co., 200 U.S. 273, 284, 26 S. Ct. 252, 50 L. Ed. 477 (1906), or else if the State
makes a ‘clear declaration’ that it intends to submit itself to our jurisdiction, Great Northern Life
Ins. Co. v. Read, 322 U.S. 47, 54, 64 S. Ct. 873, 88 L. Ed. 1121 (1944).” Id. at 675-76,
119 S. Ct. at 2226. Neither circumstance exists here. Because Eleventh Amendment immunity
partakes of jurisdictional attributes, it is incumbent on the plaintiffs to plead the circumstances
from which the court might infer waiver, and they have not done so. That the University has
filed a USPTO challenge to cancel plaintiffs’ mark does not mean that it has waived its immunity
in this case. Sovereigns entitled to the immunity may “pick and choose” the cases to which they
are willing to consent.

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For these reasons, the court finds that it is not feasible to join the University as a
defendant in this action. Although it is technically true that process can be served on it and its
presence would not defeat the subject-matter jurisdiction of the court, such an effort would be
futile and short-lived. There is no evidence to suggest other than that the University would
invoke its immunity, requiring the court immediately to dismiss it as a party. Neither party has
suggested otherwise. Viewing the feasibility of joinder pragmatically, it is not practical to order
the joinder of the University because it will come to nothing.
Having determined that the joinder of the University is “required,” but that it cannot be
accomplished feasibly, the court is left with weighing whether “equity and good conscience”
requires dismissing the case or allowing it to proceed only with the existing parties. Fed. R. Civ.
P. 19(b). Factors bearing on this determination include (1) whether the absent person or existing
parties will be prejudiced by a judgment, (2) whether relief can be limited or shaped to avoid or
reduce prejudice, (3) whether a judgment without the absent person will be adequate, and
(4) whether the plaintiff is left with an adequate alternative remedy if the case is dismissed. Fed.
R. Civ. P. 19(b); Republic of Philippines v. Pimentel, 553 U.S. 851, 128 S. Ct. 2180, 171 L. Ed.
2d 131 (2008). Weighing these factors, the court is persuaded that the case must be dismissed.
As to the first factor, there can be little doubt that a judgment in the absence of the
University will prejudice both the University and defendant. As mentioned above, the central
issue in this case is the ownership of the “houndstooth elephant” trademark, claimed by both the
University and the plaintiffs.

Resolution of plaintiffs’ claim of infringement by defendant

directly implicates the University’s ownership claim as Glen Plaid’s claim of right to use the
mark flows from a license granted by the University. A determination that plaintiffs are the
owner of the mark impairs or clouds the University’s claimed ownership interest and it would

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subject the defendant to the conflicting and inconsistent positions as to whether the University
has the right to license the mark and enforce the license agreement against it. The University can
continue to claim that it owns the mark and can license it, while the court’s judgment in its
absence would state that the mark is owned by plaintiffs. Because the ownership of the mark is
the central issue in the case, there is no readily apparent way to shape or limit any judgment to
avoid or reduce the prejudice under the second factor. Even if relief in this case is limited only
to enjoining Glen Plaid from using the mark, the judgment would have the practical effect of
impairing the University’s claim of ownership in the mark by casting doubt on it.
Under the third factor, a judgment in favor of the plaintiffs would not be adequate to
settle their ownership rights in the mark precisely because the University, not being a party to the
judgment, would not be bound by it. The Supreme Court has explained that the purpose of the
“adequacy” factor is not necessarily limited to the adequacy of the judgment to the parties, but
also “to the ‘public stake in settling disputes by wholes, whenever possible.’” Republic of
Philippines v. Pimentel, 553 U.S. 851, 870, 128 S. Ct. 2180, 2193, 171 L. Ed. 2d 131 (2008)
(quoting Provident Tradesmens Bank & Trust Co. v. Patterson, 390 U.S. 102, 111, 88 S. Ct. 733,
19 L. Ed. 2d 936 (1968)). While an injunction could prevent defendant Glen Plaid from using
the mark, it would not preclude the University from continuing to license it to other competitors.
At the end of the litigation, there would still be competing claims of ownership in the mark.
Thus, not only would the judgment put Glen Plaid in a conflicted and inconsistent position, it
would do so without adequately addressing the plaintiffs’ ultimate ownership rights or resolving
the whole of the dispute.
Finally, under the fourth factor, even if the case is dismissed, plaintiffs retain an adequate
forum for addressing the controversy over its ownership rights. Plaintiffs acknowledge that the

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University has elected to file a trademark challenge to the plaintiffs’ mark in the USPTO,
seeking to cancel the mark. Although it is true that the cancellation proceeding does not directly
address the alleged infringement by Glen Plaid, it may ultimately resolve the conflicting claims
of ownership between plaintiffs and the University, Glen Plaid’s licensor. Thus, plaintiffs are
not left entirely without a remedy. If they succeed in defending their ownership of the mark,
they are in a much stronger position to pursue an infringement action thereafter, notwithstanding
the absence of the University from such litigation.
The court has found helpful the Supreme Court’s Rule 19 analysis in the case of Republic
of Philippines v. Pimentel, 553 U.S. 851, 128 S. Ct. 2180, 171 L. Ed. 2d 131 (2008), even though
it was not in the patent and trademark context. In that case, an interpleader was filed for the
determination of ownership of assets alleged to have been stolen by former Philippines president
Ferdinand Marcos. Among the multiple claimants to the assets named as defendants were the
Republic of the Philippines (“the Philippines”) and the Philippine Presidential Commission on
Good Governance (the “Commission”), both of which asserted their immunity from suit as
foreign sovereigns and were dismissed from the action. In doing so, the trial court concluded
under Rule 19(b) that the interpleader could go forward among the remaining claimants despite
the absence of the Philippines and the Commission. Pending at the time of the interpleader was a
case in the Sandiganbayan, a special Philippine court, also dealing with the question of
ownership of the stolen assets. The Ninth Circuit Court of Appeals affirmed. The Supreme
Court reversed, saying “We conclude the Court of Appeals gave insufficient weight to the
foreign sovereign status of the Republic and the Commission, and that the court further erred in
reaching and discounting the merits of their claims.” Id. at 855, 128 S. Ct. at 2184.

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The analytical importance of the case lies in the fact that it dealt with persons who could
not be feasibly joined in the litigation due to their sovereign immunity. While the University of
Alabama is not a foreign sovereign, it is nonetheless clothed with the sovereign immunity 6 of the
State of Alabama, making its status comparable to that of the Philippines and the Commission, at
least for Rule 19(b) purposes. 7 As already discussed, there is nothing in the record of the instant
case to suggest that the University would not assert its Eleventh Amendment immunity, just as
the Philippines and the Commission asserted their sovereign immunity.
The Court’s discussion of the weight sovereign immunity should be given under the
Rule 19(b) standard is instructive. First, the Court noted that Rule 19(b) does not always require
dismissal of the case when a required person cannot be joined feasibly. Whether to dismiss the
case is an equitable decision that “will turn upon factors that are case specific.” Republic of
Philippines v. Pimentel, 553 U.S. 851, 863, 128 S. Ct. 2180, 2188, 171 L. Ed. 2d 131 (2008). A
particularly important factor in that case was the sovereign immunity of the Philippines and the
Commission. The Court observed that the lower courts, in allowing the interpleader to proceed
to judgment in the absence of the Philippines and the Commission, failed to give adequate
consideration to their sovereign immunity, because “[g]iving full effect to sovereign immunity
promotes the comity interests that have contributed to the development of the immunity
6

The Eleventh Amendment was adopted for the purpose of preserving the sovereign immunity
of the States against actions in the federal courts. See Coll. Sav. Bank v. Florida Prepaid
Postsecondary Educ. Expense Bd., 527 U.S. 666, 669, 119 S. Ct. 2219, 2223, 144 L. Ed. 2d 605
(1999) (“[W]e have long recognized that the Eleventh Amendment accomplished much more: It
repudiated the central premise of Chisholm that the jurisdictional heads of Article III superseded
the sovereign immunity that the States possessed before entering the Union.”).
7

Indeed, it can be argued that state sovereign immunity is more robust than foreign sovereign
immunity because “state sovereign immunity, unlike foreign sovereign immunity, is a
constitutional doctrine that is meant to be both immutable by Congress and resistant to trends.”
Coll. Sav. Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666, 686 n.4, 119
S. Ct. 2219, 2231, 144 L. Ed. 2d 605 (1999) (italics in original).
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doctrine.”

Id. at 866, 128 S. Ct. at 2190.

Turning to earlier authority dealing with the

intersection of joinder and sovereign immunity claimed by agencies of the United States, the
Court wrote:
Though this Court has not considered a case posing the precise question presented
here, there are some authorities involving the intersection of joinder and the
governmental immunity of the United States. See, e.g., Mine Safety Appliances
Co. v. Forrestal, 326 U.S. 371, 373–375, 66 S. Ct. 219, 90 L. Ed. 140 (1945)
(dismissing an action where the Under Secretary of the Navy was sued in his
official capacity, because the Government was a required entity that could not be
joined when it withheld consent to be sued); Minnesota v. United States, 305 U.S.
382, 386–388, 59 S. Ct. 292, 83 L. Ed. 235 (1939) (dismissing the action for
nonjoinder of a required entity where the United States was the owner of the land
in question but had not consented to suit). The analysis of the joinder issue in
those cases was somewhat perfunctory, but the holdings were clear: A case may
not proceed when a required-entity sovereign is not amenable to suit. These cases
instruct us that where sovereign immunity is asserted, and the claims of the
sovereign are not frivolous, dismissal of the action must be ordered where there is
a potential for injury to the interests of the absent sovereign.

Id. at 866-67, 128 S. Ct. at 2190-91. The Court stressed that the claims of the Philippines and the
Commission were not frivolous and that proceeding with the interpleader in their absence clearly
risked injury to their interests in the interpleaded assets. Where sovereign immunity is the bar to
joining such required parties, “dismissal of the action must be ordered.”
Once again, although the University of Alabama is not a foreign sovereign, it is entitled
to invoke its sovereign immunity through the Eleventh Amendment. 8 Its assertion of ownership

8

It might be argued that the University should be joined to see whether it would invoke
sovereign immunity or waive it. As already discussed, the parties seem to agree that the
University would do so, and there is no allegation or evidence in the record to suggest otherwise.
While the court could go through the process of ordering the University to be joined by
amendment to the complaint, it seems apparent that such would be futile and short-lived, as the
University would invoke its immunity immediately, requiring its dismissal and leaving the court
and the remaining parties exactly where they are today. In the absence of something to suggest
that the University might consent to being sued in this case, the court is not required to undertake
a useless and futile act. Moreover, it is the plaintiffs who chose not to name the University as a
15

in the mark claimed by plaintiffs is not frivolous, given its decision to pursue a challenge to
plaintiffs’ mark in the USPTO, coupled with its collection of registered elephant-motif
trademarks. Thus, Pimentel seems to suggest that the instant case must be dismissed.
Although the court concludes, under the present circumstances, that “equity and good
conscience” requires dismissal of the plaintiff’s complaint, the balance of equities could change
in the future. The Supreme Court explained:

The balance of equities may change in due course. One relevant change may
occur if it appears that the Sandiganbayan cannot or will not issue its ruling within
a reasonable period of time. Other changes could result when and if there is a
ruling. If the Sandiganbayan rules that the Republic and the Commission have no
right to the assets, their claims in some later interpleader suit would be less
substantial than they are now. If the ruling is that the Republic and the
Commission own the assets, then they may seek to enforce a judgment in our
courts; or consent to become parties in an interpleader suit, where their claims
could be considered; or file in some other forum if they can obtain jurisdiction
over the relevant persons.

Republic of Philippines v. Pimentel, 553 U.S. 851, 873, 128 S. Ct. 2180, 2194, 171 L. Ed. 2d 131
(2008). Similar changes could occur that may impact the balance of equities in this case. If the
USPTO upholds the plaintiffs’ mark in the University’s cancellation challenge, it increases the
strength of the plaintiffs’ position and the risk of injury to any interest claimed by the University
is less substantial. That shift in the balance of equities might well require a different outcome in
a Rule 19(b) analysis. Whether such a shift occurs in the future, the court is required to decide
today whether to dismiss this action. Because the absent University is entitled to claim its
sovereign immunity under the Eleventh Amendment and allowing the case to proceed would
clearly prejudice the interests the University is seeking to protect in the mark, the court believes

defendant in the original complaint. They should not be heard to argue now that the court must
order them to add the University as a defendant in an amended complaint.
16

that “equity and good conscience” requires the dismissal of the case without prejudice to the
right of the plaintiff to seek a remedy under changed circumstances in the future.
A separate order will be entered.
DONE this 10th day of October, 2013.

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T. MICHAEL PUTNAM
U.S. MAGISTRATE JUDGE

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