Sleep Science Partners Inc v. Lieberman et al
Filing
165
ORDER by Judge Claudia Wilken GRANTING in part 146 Plaintiff's Motion for Leave to Amend (cwlc2, COURT STAFF) (Filed on 7/7/2011)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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No. C 09-04200 CW
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SLEEP SCIENCE PARTNERS, INC., a
California corporation,
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Plaintiff,
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United States District Court
For the Northern District of California
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ORDER GRANTING IN
PART PLAINTIFF'S
MOTION FOR LEAVE
TO AMEND (Docket
No. 146)
v.
AVERY LIEBERMAN, an individual;
KATRINA WEBSTER, an individual;
DANIEL WEBSTER, an individual; and
SLEEPING WELL, LLC, a Vermont limited
liability corporation,
Defendants.
/
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Plaintiff Sleep Science Partners, Inc., moves for leave to
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file a Third Amended Complaint.
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Webster and Sleeping Well, LLC, oppose the motion.
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considered all of the papers filed by the parties, the Court GRANTS
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the motion in part.
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Defendants Katrina Webster, Daniel
Having
BACKGROUND
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Plaintiff filed the initial complaint in this action on
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September 10, 2010, alleging, among others, causes of action for
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trade dress infringement (first cause of action) and copyright
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infringement (second cause of action) for Defendants’ alleged
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copying of Plaintiff's website.
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Defendants' motion to dismiss both claims.
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Plaintiff filed the First Amended Complaint, re-alleging trade
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dress infringement and on June 14, 2010, with the Court's leave,
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filed the operative Second Amended Complaint (SAC) re-alleging the
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On May 10, 2010, the Court granted
On May 24, 2010,
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copyright infringement claim in addition to the trade dress claim.
Plaintiff now moves for leave to file a Third Amended
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Complaint (TAC) so that it may dismiss the second cause of action
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without prejudice, pursuant to Federal Rule of Civil Procedure
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15(a)(2).
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should exercise its discretion under Federal Rule of Civil
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Procedure 41(a) to require that dismissal be with prejudice.
Defendants oppose the motion, contending that the Court
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LEGAL STANDARD
A plaintiff wishing to eliminate a particular claim from the
United States District Court
For the Northern District of California
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action should amend the complaint under Rule 15(a) rather than move
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to dismiss it under Rule 41(a).
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Restaurant, 861 F.2d 1389, 1392 (9th Cir. 1988).
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Ninth Circuit has suggested that the differences between Rule 15(a)
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and Rule 41(a) are immaterial.
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U.S. Forest Serv., 403 F.3d 683, 689 (9th Cir. 2005) ("We agree
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with the Federal Circuit, however, that . . . . '[t]he fact that a
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voluntary dismissal of a claim under Rule 41(a) is properly labeled
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an amendment under Rule 15 is a technical, not a substantive,
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distinction.'" (quoting Nilssen v. Motorola, Inc., 203 F.3d 782,
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784 (Fed. Cir. 2000)).
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effects of amendment under Rule 15(a) are the same as a voluntary
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dismissal under Rule 41(a).
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invoked as of right before the service of an answer, (2) are
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addressed to the discretion of the court where leave is required,
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(3) require that leave be granted freely unless the defendant is
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prejudiced, and (4) permit the court to deny leave or impose
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conditions if leave is granted.
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See Ethridge v. Harbor House
Nonetheless, the
See Hells Canyon Pres. Council v.
Thus, in many instances, procedures for and
For example, both rules (1) may be
See 8 Moore's Federal Practice
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§ 41.21[2] (Matthew Bender 3d ed.).
After a responsive pleading has been filed, a party may amend
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the pleading only with leave of court or written consent of the
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adverse party.
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granted freely when justice requires, absent a substantial reason
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to deny it.
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1149, 1160 (9th Cir. 1989).
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factors relevant to whether a motion for leave to amend should be
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denied: undue delay, bad faith or dilatory motive, futility of
Fed. R. Civ. P. 15(a).
Leave to amend should be
See Ascon Properties, Inc. v. Mobile Oil Co., 866 F.2d
The Supreme Court has identified four
United States District Court
For the Northern District of California
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amendment, and prejudice to the opposing party.
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371 U.S. 178, 182 (1962).
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factors are not of equal weight; specifically, delay is "not alone
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enough to support denial."
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Rose, 893 F.2d 1074, 1079 (9th Cir. 1990).
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factors, the final one, prejudice to the party opposing an
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amendment, "carries the greatest weight."
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Aspeon, Inc., 316 F.3d 1048, 1052 (9th Cir. 2003).
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is defined as “prejudice to some legal interest, some legal claim,
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some legal argument.”
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F.3d 94, 97 (9th Cir. 1996).
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Foman v. Davis,
The Ninth Circuit holds that these
Morongo Band of Mission Indians v.
Of the four Foman
Eminence Capital, LLC v.
Legal prejudice
Westlands Water Dist. v. United States, 100
Similarly, Rule 41 grants courts "broad discretion" in
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determining whether to grant a motion to dismiss.
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Standard Ins. Co., 120 F.3d 988, 989 (9th Cir. 1997).
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may grant the motion "on terms that the court considers proper."
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Fed. R. Civ. P. 41(a)(2).
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that any dismissal be with prejudice "where it would be inequitable
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or prejudicial to defendant to allow plaintiff to refile the
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See Russ v.
The court
The court also has discretion to require
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action."
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1993), aff'd sub nom. Burnette v. Lockheed Missiles & Space Co., 72
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F.3d 766 (9th Cir. 1995).
Burnette v. Godshall, 828 F. Supp. 1439, 1443 (N.D. Cal.
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DISCUSSION
I.
Dismissal
Defendants do not oppose dismissal of Plaintiff's second cause
of action, but they oppose dismissal without prejudice.
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argue that allowing dismissal without prejudice would be
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prejudicial and unfair because they would lose the opportunity to
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United States District Court
For the Northern District of California
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be awarded "prevailing party" status on Plaintiff's Copyright Act
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claim and recover attorneys' fees under 17 U.S.C. § 505.
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Defendants also argue that avoiding this result is Plaintiff's true
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motivation for seeking dismissal without prejudice, because any
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reassertion of Plaintiff’s Copyright Act claim would be barred by
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the doctrine of res judicata.
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Defendants
Plaintiff does not address these contentions directly, but
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contends that it is seeking dismissal to narrow the issues for
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trial, and that Defendants have not met their burden of showing
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prejudice.
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A.
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Defendants argue that dismissal with prejudice is appropriate
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because Plaintiff’s copyright claim will be barred in any event by
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res judicata.
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the merits of an action precludes the parties or their privies from
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relitigating issues that were or could have been raised in that
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action.’”
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960, 967 (9th Cir. 2010) (quoting Allen v. McCurry, 449 U.S. 90, 94
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Res Judicata
“Res judicata bars a suit when ‘a final judgment on
ProShipLine Inc. v. Aspen Infrastructures Ltd., 609 F.3d
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(1980)).
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claims; (2) a final judgment on the merits; and (3) identity or
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privity between parties.’” ProShipLine, 609 F.3d at 967 (quoting
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Stewart v. U.S. Bancorp, 297 F.3d 953, 956 (9th Cir. 2002)).
Res judicata applies “when there is ‘(1) an identity of
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To determine whether an identity of claims exists, a court
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considers four factors: “(1) whether the two suits arise out of the
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same transactional nucleus of facts; (2) whether rights or
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interests established in the prior judgment would be destroyed or
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impaired by prosecution of the second action; (3) whether the two
United States District Court
For the Northern District of California
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suits involve infringement of the same right; and (4) whether
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substantially the same evidence is presented in the two actions.”
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ProShipLine, 609 F.3d at 967 (emphasis in original) (quoting Mpoyo
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v. Litton Electro-Optical Sys., 430 F.3d 985, 987 (9th Cir. 2005)).
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“Whether two suits arise out of the ‘same transactional nucleus’
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depends upon ‘whether they are related to the same set of facts and
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whether they could conveniently be tried together.’”
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609 F.3d at 967 (emphasis in original) (quoting W. Sys., Inc. v.
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Ulloa, 958 F.2d 864, 871 (9th Cir. 1992)).
ProShipLine,
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Defendants point out that Plaintiff will be barred from
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reasserting its copyright claim in any subsequent litigation
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because the claim is based on the same allegation as Plaintiff’s
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trade dress claim: that Defendants copied Plaintiff’s website.
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Plaintiff does not argue otherwise.
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intention to reassert the copyright claim in future litigation.
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Plaintiff’s only explanation of its motion is that it seeks to
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narrow the scope of the trial, expedite disposition of the case,
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and discourage wasteful pre-trial activities.
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Nor does Plaintiff indicate an
All of these goals
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would be served by a dismissal without prejudice as well as a
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dismissal with prejudice.
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B.
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As noted above, Defendants argue that Plaintiff seeks
Prejudice
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dismissal without prejudice to deny Defendants the opportunity to
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seek attorneys’ fees under the Copyright Act.
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that they will lose this opportunity if dismissal is granted
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without prejudice, and that the loss of this opportunity is
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sufficiently prejudicial to require that dismissal be with
United States District Court
For the Northern District of California
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Defendants argue
prejudice.
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Defendants contend that they have a legal interest in being
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granted prevailing party status because they have been forced to
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litigate Plaintiff’s copyright claim for nearly two years.
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Plaintiff cites Serpa v. SBC Telecommuncations, Inc., for the
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proposition that “[t]he party opposing leave to amend bears the
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burden of showing prejudice.”
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2004).
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regarding prejudice, and contends that Defendants have only
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identified a single Foman factor, undue delay, that weighs against
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granting its motion.
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318 F. Supp. 2d. 865, 870 (N.D. Cal.
However, Plaintiff ignores entirely Defendants’ argument
Plaintiff is correct that delay is "not alone enough to
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support denial."
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mistaken that Defendants’ opposition relies solely on undue delay.
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Morongo, 893 F.2d at 1079.
Plaintiff has failed to rebut Defendants’ argument that they
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will be prejudiced.
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Second Cause of Action must be with prejudice.
Accordingly, any dismissal of Plaintiff’s
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However, Plaintiff is
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II.
The Merits of Plaintiff’s Copyright Claim
Both parties devote considerable space in their briefs to
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arguing the merits of Plaintiff’s copyright claim.
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suggest that dismissal with prejudice is appropriate because
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Plaintiff’s claim is meritless and never should have been brought
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in the first place.
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against Defendants’ legal and factual assertions regarding the
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claim.
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Defendants
In its Reply, Plaintiff argues vigorously
Notably, Defendants point out that Plaintiff has not employed
United States District Court
For the Northern District of California
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an expert to assist in proving its copyright claim.
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argues that no expert would be required to challenge the assertions
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of Defendants’ expert, and that it is “prepared to challenge those
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assertions” in opposing Defendants’ motion for summary judgment and
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“before trial.”
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Plaintiff
It is not clear why Plaintiff would seek to dismiss a claim it
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apparently believes is meritorious.
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file its TAC if it prefers to proceed on the merits of the claim.
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III. Third Amended Complaint
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Plaintiff may elect not to
Defendants also point out that Plaintiff's proposed TAC
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contains allegations of misappropriation of copyrighted works,
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justifies this Court's jurisdiction based in part on the Copyright
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Act, reasserts claims against Defendant Avery Lieberman, who has
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been dismissed from the case, and fails to attach any of the
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exhibits to which the TAC refers.
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for these apparent oversights.
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TAC, before doing so, Plaintiff shall strike all references to
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parties and claims that have been dismissed, and attach all
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Plaintiff offers no explanation
If Plaintiff chooses to file the
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exhibits to which the complaint refers.
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CONCLUSION
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For the foregoing reasons, Plaintiff's motion is GRANTED in
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part.
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that (1) dismissal of Plaintiff’s copyright claim will be with
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prejudice, and (2) Plaintiff will strike all references to
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dismissed parties and claims and include all exhibits to which the
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complaint refers.
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may file the Third Amended Complaint within three days of the date
(Docket No. 146.)
The motion is granted on the conditions
If Plaintiff accepts these conditions, Plaintiff
United States District Court
For the Northern District of California
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of this order.
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file a motion to dismiss.
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Third Amended Complaint, the Second Amended Complaint will remain
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the operative pleading.
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Defendants need not file a new answer and may not
If Plaintiff elects not to file the
IT IS SO ORDERED.
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Dated:
July 7, 2011
CLAUDIA WILKEN
United States District Judge
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