Apple Inc. v. Corellium, LLC
Filing
943
ORDER DENYING CORELLIUM'S MOTION FOR LEAVE TO AMEND ITS AFFIRMATIVE DEFENSES [DEs 902, 904]. Signed by Magistrate Judge William Matthewman on 6/8/2021. See attached document for full details. (kza)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Civil No. 19-81160-cv-Smith/Matthewman
APPLE INC.,
KJZ
Plaintiff,
vs.
Jun 8, 2021
CORELLIUM, LLC,
West Palm Beach
Defendant.
______________________________________________/
ORDER DENYING CORELLIUM’S MOTION FOR LEAVE TO AMEND ITS
AFFIRMATIVE DEFENSES [DEs 902, 904]
THIS CAUSE is before the Court upon Defendant Corellium, LLC’s (“Corellium”) Motion
for Leave to Amend its Affirmative Defenses (“Motion”) [DEs 902, 904]. The Motion was referred
to the undersigned by the Honorable Rodney Smith, United States District Judge. See DE 30.
Plaintiff Apple Inc. (“Apple”) has filed a response to the Motion [DEs 911, 917], and Corellium
has filed a reply [DEs 921, 923]. The Court held a hearing on the Motion via Zoom video
teleconference (VTC) on May 28, 2021. This matter is now ripe for review.
Corellium moves (1) to add Digital Millennium Copyright Act (DMCA) exemption 17
U.S.C. §1201(e) (“Law Enforcement”) as an affirmative defense to Apple’s claims under the
DMCA and (2) to clarify that Affirmative Defense No. 8 applies to Plaintiff’s DMCA claim, and
not only to its infringement claim. Apple argues that the Motion is untimely, the proposed
amendment would be prejudicial to Apple, and amendment would be futile.
When a motion to amend a pleading is filed after the deadline set forth in the Scheduling
Order, the party seeking to amend must demonstrate good cause under Federal Rule of Civil
1
Procedure 16(b). Sream, Inc. v. Munjal Corp., No. 18-cv-80743, 2019 WL 9048996, at *1 (S.D.
Fla. Mar. 26, 2019) (quoting S. Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1241 (11th Cir.
2009)). A motion to amend can be denied when it is the result of undue delay, would cause undue
prejudice, or would be futile. See, e.g., Donnelly v. Wal-Mart Stores E., LP, No. 20-11070, 2021
WL 371464, at *5 (11th Cir. Feb. 3, 2021); Collins v. Marriot Int’l Inc., No. 09-cv-22423, 2012
WL 12950013, at *1 (S.D. Fla. Mar. 14, 2012).
The Court finds that Corellium’s Motion is due to be denied on several bases. First, the
Motion is clearly untimely. Pursuant to Docket Entry 45, Apple was required to amend its
complaint by December 22, 2019. Apple filed its First Amended Complaint, and Corellium filed
its Answer, Affirmative Defenses, and Counterclaims on January 10, 2020. 1 [DE 64]. Corellium
asserts that it was not aware of the facts underlying the new Law Enforcement affirmative defense
over a year ago when it filed its affirmative defenses. However, at the very least, Corellium could
have moved to add the new Law Enforcement affirmative defense and to clarify Affirmative
Defense No. 8 several months ago, rather than only two months before trial. 2 This is because the
law enforcement entity at issue signed a contract with and became a customer of Defendant
approximately eight months ago, and the clarification of Affirmative Defense No. 8 could have
been requested much earlier. Not only is the Motion untimely, but Corellium has also failed to
establish good cause for the delay. The Court rejects Corellium’s argument that it was not at all
dilatory. 3
Apple did later file a Second Amended Complaint, but it simply attached an additional exhibit and did not create an
opportunity for Corellium to assert new affirmative defenses. Corellium filed its Answer to the Second Amended
Complaint, Affirmative Defenses, and Counterclaims on July 17, 2020. [DE 599].
2
Trial is currently set for July 6, 2021. [DE 898].
3
Additionally, if the Court permitted Corellium to assert the Law Enforcement affirmative defense at this late date, it
could set a precedent that might lead to unintended consequences in other DMCA cases. For example, a defendant in
1
2
Second, granting the relief sought would prejudice Apple because the scheduled trial date
is July 6, 2021, and Apple would not be able to conduct discovery on the newly disclosed
affirmative defense. Moreover, the Court finds that it would be improper to reopen discovery when
it has been closed for over a year. Corellium’s argument that Apple should have surmised
Corellium’s potential assertion of the Law Enforcement affirmative defense in light of the
discovery produced to Apple is disingenuous. On one hand, Corellium is inconsistently arguing
that Apple knew about the possible applicability of the Law Enforcement exception and should
have conducted discovery on that issue. On the other hand, however, Corellium argues that it could
not file this Motion until just recently. There is an issue of basic fairness here. The parties must be
able to rely on the dates in the Scheduling Order, and it is simply unfair for a party to wait until
the eve of trial to raise a new affirmative defense. Moreover, the parties have been extremely
litigious throughout this case, especially during the discovery process, and reopening discovery on
a new affirmative defense would inevitably lead to more disputes, motion practice over the scope
and nature of discovery, and a delay of the trial date.
Third, with respect to the new Law Enforcement affirmative defense, Corellium’s counsel
represented at the hearing that the issue of whether the Law Enforcement exception to a DMCA
claim must be raised as an affirmative defense is an issue of first impression. Corellium’s counsel
also stated that Corellium is seeking to add the affirmative defense in an abundance of caution. To
the extent that Corellium is arguing that the Law Enforcement exception might not actually need
to be pled as an affirmative defense and might merely constitute a denial of Apple’s DMCA claim,
a DMCA case could belatedly offer a “sweetheart deal” to a government agency in order to enable the defendant to
raise the Law Enforcement affirmative defense on the eve of trial. While the Court is in no way alleging that Corellium
has engaged in any such misconduct, the Court does have misgivings about allowing the untimely addition of such an
affirmative defense and setting such a precedent in a DMCA case.
3
Corellium can attempt to make this argument at trial. It would then be up to the District Judge
within the crucible of trial to determine the validity of Corellium’s argument.
Finally, to the extent that Corellium seeks to “clarify” Affirmative Defense No. 8, the
express language of the affirmative defense is ambiguous as to whether or not it applies to the
DMCA claim, and it seems that the parties are in disagreement as to whether an affirmative defense
of authorized use, license, consent, and/or acquiescence can ever be asserted as a defense to a
DMCA claim. This is a legal issue that the parties can address during trial. However, Corellium
has not established good cause to “clarify” its Affirmative Defense No. 8 and has not adequately
explained why it could not have included the necessary clarity over a year ago when it filed its
affirmative defenses. Allowing the “clarification” that Corellium seeks would clearly lead to
additional motion practice and disputes between the parties. Parties have an obligation to clearly
state their affirmative defenses in a timely manner under the Court’s Scheduling Order. Corellium
can still attempt to make an argument at trial and in future written papers that Affirmative Defense
No. 8 also applies to the DMCA claim, and that matter can be decided by the presiding Judge at
trial.
Based on the foregoing, it is hereby ORDERED and ADJUDGED that Corellium’s
Motion for Leave to Amend Its Affirmative Defenses [DEs 902, 904] is DENIED.
DONE and ORDERED in Chambers at West Palm Beach, Palm Beach County, Florida,
this 8th day of June, 2021.
WILLIAM MATTHEWMAN
United States Magistrate Judge
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