Cameo, LLC v. Akzo Nobel Coatings, Inc.

Filing 80

MEMORANDUM OPINION AND ORDER: Plaintiff's 73 Motion for Leave to File Fifth Amended Complaint is GRANTED IN PART and DENIED IN PART. Cameo may amend its complaint to assert additional claims for unjust enrichment and tortious interference ag ainst AN Paints and clarify nature of its existing breach of contract claim. However, Cameo is not permitted to add AN Coatings as a defendant in this action while retaining its claims against AN Paints. Cameo shall file a Fifth Amended Complaint that is consistent with the terms of this Memorandum Opinion and Order within 10 days. Signed by Judge Joseph M. Hood on 2/21/2017. (STC)cc: COR

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF KENTUCKY
CENTRAL DIVISION at LEXINGTON
CAMEO, LLC,

)
)
)
)
)
)
)
)
)
)

Plaintiff,
v.
TECHNI-COAT INTERNATIONAL,
N.V./S.A.,
Defendant.

Civil No. 5:14-cv-256-JMH

MEMORANDUM OPINION
AND ORDER

****
I. INTRODUCTION
This matter is before the Court upon Plaintiff Cameo, LLC’s
Motion for Leave to File a Fifth Amended Complaint.

[DE 73].

Akzo

Nobel Paints Belgium, N.V./S.A. (“AN Paints”), as successor by
merger to named Defendant Techni-Coat International, N.V./S.A.
(“Techni-Coat”), has filed a Response in Opposition thereto, and
Cameo has submitted a Reply, rendering this matter ripe for the
Court’s review.

[DE 77, 79].

For the reasons stated herein,

Cameo’s Motion is hereby GRANTED IN PART AND DENIED IN PART.
II.
On

April

14,

FACTUAL AND PROCEDURAL BACKGROUND
2008,

Cameo

entered

into

a

Product

Supply

Agreement with Expert Management, doing business as ICI Imagedata

1

(“Imagedata”). 1 [DE 73-2]. Specifically, Cameo agreed to purchase
certain types of printing products from Imagedata, which were
identified in Schedule B of the Agreement. 2

[Id. at 15, 23].

The

products in question were part of a three-dimensional printing
process called Pictaflex, which was owned by Imagedata’s parent
company, Intervening Defendant Imperial Chemical Industries, PLC
(“ICI”). 3

[Id. at 14].

In exchange, Imagedata permitted Cameo to

re-sell the products in question to Strikeforce Bowling.
14-15, 22].

[Id. at

Thus, the Agreement essentially designated Cameo as

a non-exclusive distributor of select Pictaflex products.

[Id.].

ICI and Strikeforce executed a supplemental License Agreement that
same day, thereby allowing Strikeforce to utilize the Pictaflex
technology.

[Id. at 14-15].

The term of the Agreement began on April 1, 2008.
22].

[Id. at

The parties agreed that the Agreement would “continue in

force for a period of three years and thereafter unless or until
terminated by either party giving the other party at any time not
less than three months written notice to expire on or at any time

1

The Product Supply Agreement, coupled with the ICI-Strikeforce License
Agreement, discussed infra, supplanted the Pictaflex Distributor Agreement of
December 14, 2006. [DE 73-2 at 3].
2
The parties amended the Product Supply Agreement on April 22, 2008. [DE 73-2
at 12-26].
The amendments did not impact the provisions discussed in this
opinion. [Id.]. For the sake of clarity and consistency, the Court will cite
to the amended version of the Agreement. [Id.].
3
In the Proposed Fifth Amended Complaint, Cameo briefly refers to Imagedata as
a defendant.
[DE 73-1 at p. 2].
However, the substantive counts make no
mention of Imagedata, leading the Court to conclude that this is a mere typo.
[Id. at 7-9].

2

after the end of that period.”

[Id. at 18].

Imagedata further

promised that:
neither it nor any of its affiliates will, during the
term of this Agreement or for a year after the
termination of this Agreement, except in the event of
termination by [Imagedata] for cause, sell (or solicit
the sale of) Products to Strikeforce Bowling LLC (or its
affiliates) directly or through any person or entity
other than [Cameo]. [Cameo] agrees that neither it nor
any of its affiliates will during the term of this
Agreement, directly or indirectly, sell (or solicit the
sale) any products to Strikeforce Bowling LLC (or its
affiliate) competitive with the Products.
[Id. at 20].
In January 2008, just three months before Cameo and Imagedata
executed

the

Agreement,

Dutch

multinational

Nobel, N.V. acquired ICI and its subsidiaries.

corporation

Akzo

[DE 72].

Later

that year, after the Agreement took effect, Akzo Nobel transferred
the

Pictaflex

subsidiaries.

technology
[Id.].

to

Techni-Coat,

another

of

its

As a result, Techni-Coat became responsible

for the supply of Pictaflex products to Cameo under the terms of
the Agreement.

[Id.].

On July 6, 2010, Cameo’s sole member, Nicholas Herbert-Jones,
e-mailed

Techni-Coat’s

Managing

Director,

Marc

Lafaille,

to

express concerns about Lafaille’s recent meeting with Strikeforce
personnel.

[DE 61-1 at 13-14].

Herbert-Jones

a

letter,

On July 19, 2010, Lafaille sent

declaring

Techni-Coat’s

intent

to

terminate its business relationship with Cameo, effective March
3

30, 2011.

[Id. at 12].

Herbert-Jones then sent Lafaille another

email on August 3, 2010, confirming receipt of the letter and
asking

him

whether

Techni-Coat

products to Strikeforce. 4
response from Lafaille.

had

directly

[Id. at 13].

sold

Pictaflex

The record contains no

[Id.].

On June 26, 2014, Cameo filed this civil action against an
Akzo

Nobel

subsidiary

named

Akzo

Nobel

Coatings,

Inc.

(“AN

Coatings”), asserting claims for breach of contract and breach of
the duty of good faith and fair dealing.

[DE 1].

Cameo later

sought, and received, leave to amend its complaint so that it could
name Akzo Nobel, Inc., rather than AN Coatings, as Defendant in
this action. 5

[DE 1, 27, 46].

The Court subsequently granted

Cameo further leave to amend its complaint, thereby allowing Cameo
to substitute Techni-Coat for Akzo Nobel, Inc.

[DE 58, 61].

In Spring 2016, the parties conducted a Rule 26(f) Conference.
[DE 70].

Defense counsel reported that Techni-Coat no longer

exists as a separate legal entity, having merged with AN Paints in
2014.

[Id. at 2].

Moreover, he suggested that Techni-Coat was

not the proper defendant to this action.

4

In an effort to identify

Herbert-Jones also sent Lafaille an email on July 27, 2010, asking whether
Lafaille had received his email of July 6, 2010. [DE 61-1 at 13-14]. Although
Herbert-Jones sent this email after Lafaille sent the termination letter,
Herbert-Jones apparently had not received it yet. [Id.].
5
Cameo actually substituted Akzo Nobel, Inc. for AN Coatings in its Third
Amended Complaint.
[DE 46].
Cameo’s prior attempts to amend its complaint
were prompted by changes in counsel, as well as a need to protect confidential
information. [DE 1, 27].

4

the

entity

disclosing

involved

in

the

Techni-Coat’s

breach

of

confidential

the

Agreement

business

without

information,

counsel for both parties decided to send a third-party subpoena
duces tecum to Strikeforce.

[DE 70 at 2-3].

After reviewing the

documents obtained from Strikeforce, defense counsel reportedly
suggested that Cameo substitute Soliant, LLC, another Akzo Nobel
subsidiary, as Defendant in this action.

[DE 73].

Strikeforce

documents indicate that Soliant acquired the Pictaflex technology
from Techni-Coat in 2011, then merged with AN Coatings.

[DE 72 at

3].
Cameo now seeks leave to amend its complaint a fifth time.
Specifically, it wishes to assert additional claims for unjust
enrichment and tortious interference with a contract and business
relations against AN Paints, add AN Coatings as a defendant, and
clarify the nature of its existing breach of contract claim.

The

Court will address each of these requests in turn.
III. ANALYSIS
A. Addition of Claims
i. Applicability of the Relation-Back Doctrine
“An amendment to a pleading relates back to the date of the
original pleading when … the amendment asserts a claim or defense
that arose out of the conduct, transaction, or occurrence set out—

5

or attempted to be set out—in the original pleading.”
Civ. P. 15(c)(1)(B).

Fed. R.

“In determining whether the new claims arise

from the same ‘conduct, transaction, or occurrence,’ [the court’s]
analysis is guided by ‘whether the party asserting the statute of
limitations defense had been placed on notice that he could be
called to answer for the allegations in the amended pleading.’”
Durand v. Hanover Ins. Grp., Inc., 806 F.3d 367, 375 (6th Cir.
2015) (quoting U.S. ex rel. Bledsoe v. Cmty. Health Sys., Inc.,
501 F.3d 493, 516 (6th Cir. 2007)).

“This standard is usually met

if there is an identity between the amendment and the original
complaint with regard to the general wrong suffered and with regard
to

the

general

conduct

causing

such

wrong.”

Id.

(internal

quotations omitted).
Throughout this litigation, Cameo alleged that an Akzo Nobelrelated

entity

termination.

breached

[DE 1].

the

Agreement

before

and

after

its

Specifically, Cameo asserted that the Akzo

Nobel entity met with Strikeforce and negotiated the direct sale
of Schedule B Pictaflex products just before terminating the
Agreement.

[Id. at p. 3-4, ¶ 10-11].

Cameo also complained that

the Akzo Nobel entity disregarded its promise to refrain from
selling Schedule B Pictaflex products to Strikeforce for one year
following termination of the Agreement.

6

[Id.].

In its Proposed Fifth Amended Complaint, Cameo alleges that
Techni-Coat met with Strikeforce in May 2010 and “entered into an
agreement

with

Strikeforce

to

supply

Pictaflex

products

[not

included in Schedule B] that otherwise would have been supplied by
Cameo, whether through an expansion of the Product Supply Agreement
or

the

procurement

channels.”

of

the

Pictaflex

product

[DE 73-1, p. 7-8, ¶ 43-44].

through

other

As a result, Cameo

complains that Techni-Coat was “unjustly enriched and retained a
benefit conferred at Cameo’s expense.”

[Id.].

Amended

Techni-Coat

Complaint

also

alleges

that

The Proposed Fifth
used

Cameo’s

relationship with Strikeforce “to negotiate the direct supply of
a product that was not [] specifically enumerated in the schedule
to the Product Supply Agreement was undertaken with the purpose of
circumventing its Product Supply Agreement with Cameo.”

[Id. at

p. 8, ¶ 46-47].
Although Cameo’s additional claims focus on the sale of nonSchedule B Pictaflex products, they nevertheless arise out of the
same

occurrence

contract claim.

or

transaction

that

underlies

its

breach

of

After all, both claims rely on the general

assertion that Techni-Coat relied on Cameo’s goodwill to schedule
a meeting with Strikeforce in May 2010, then negotiated its own
agreement with Strikeforce, and thereby excluding Cameo from the
Pictaflex business.

7

Because this occurrence was set out, or at least attempted to
be set out, in the original pleading, Techni-Coat was certainly
“placed on notice that [it] could be called to answer for the
allegations in the amended pleading.”

Bledsoe, 501 F.3d at 516

(citing Santamarina v. Sears, Roebuck & Co., 466 F.3d 570, 573
(7th Cir. 2006) (“The criterion of relation back is whether the
original complaint gave the defendant enough notice of the nature
and scope of the plaintiff’s claim that he shouldn’t have been
surprised by the amplification of the allegations of the original
complaint in the amended one.”).

Thus, Cameo’s additional claims

for unjust enrichment and tortious interference relate back to the
filing of its initial complaint on June 26, 2014.
Nevertheless, AN Paints insists that leave to amend should be
denied as futile, arguing that the relation-back doctrine does not
save Cameo’s additional claims from being time-barred by the
applicable statute of limitations.

See Wells v. Bottling Grp.,

LLC, 833 F. Supp. 2d 665, 670 (E.D. Ky. 2011) (concluding that “an
amendment would be futile because the statute of limitations bars
[the plaintiff’s] ‘amended’ claim”).
ii.
Under

Statute of Limitations

Kentucky

law,

both

unjust

enrichment

claims

and

tortious interference claims are subject to the five-year statute
of limitations period set forth in KRS § 413.120.

8

Ellis v.

Arrowood Indem. Co., Civ. A. No. 12-140-ART, 2014 WL 2818458, at
*7 (E.D. Ky. June 23, 2014) (“Multiple courts have identified §
413.120(1), for actions ‘upon a contract not in writing, express
or implied,’ as the appropriate statute of limitations for unjust
enrichment claims.”); Williams v. Owensboro Bd. of Educ., Civ. A.
No. 4:07-CV-149-R, 2009 WL 248426, at *3 (W.D. Ky. Feb. 3, 2009)
(applying KRS § 413.120(7)’s “catch-all” provision to tortious
interference claims).
The statute of limitations “begins to run on the date of the
discovery of the injury, or from the date it should, in the
exercise of ordinary care and diligence, have been discovered.” 6
Hackworth v. Hart, 474 S.W.2d 377, 379 (Ky. 1971).

“The knowledge

necessary to trigger the statute is two-pronged.” Wilson v. Paine,
288 S.W.3d 284, 286-87 (Ky. 2009).

“One must know: (1) he has

been wronged; and (2) by whom the wrong has been committed.”

Id.

According to AN Paints, Cameo learned that Strikeforce might
receive non-Schedule B products from another source long before
the May 2010 meeting.

[DE 77 at 1-2].

In support of this

proposition, AN Paints points to an email that Cameo received from
Imagedata on August 26, 2008, explaining that Strikeforce was
having technical difficulties with the Pictaflex technology and

6

Kentucky courts have cautioned against using the discovery rule in certain
types of cases, none of which are involved here. See, e.g., Fluke Corp. v.
LeMaster, 306 S.W.3d 55, 56 (Ky. 2010) (observing that the discovery rule has
not been extended to cases involving latent injuries, latent illnesses, or
professional malpractice).

9

that Imagedata hoped to resolve these issues by directly supplying
non-Schedule B products to Strikeforce.
reasons

that

the

statute

of

[DE 77-1].

limitations

on

AN Paints

Cameo’s

unjust

enrichment and tortious interference claims began running that
same day, thereby requiring Cameo to file suit on or before August
26, 2013.

Because Cameo’s additional claims only relate back to

the filing of the initial complaint on June 26, 2014, AN Paints
concludes that the claims are time-barred.
This email merely demonstrates that Imagedata expressed an
interest

in

directly

supplying

non-Schedule

B

products

to

Strikeforce and that Herbert-Jones communicated concerns about
such an arrangement.

It is unclear whether Imagedata ultimately

proceeded with its proposal or found a solution more satisfactory
to Herbert-Jones.

Thus, the email did not necessarily put Cameo

on notice that it had been injured.

However, even if the email

was sufficient in that regard, it would only have established that
Imagedata wronged Cameo.

There is no indication that Techni-Coat

played

exchange,

a

role

in

this

as

Akzo

Nobel

had

not

yet

transferred the Pictaflex technology from ICI to Techni-Coat.
Whatever wrongs Techni-Coat allegedly committed against Cameo must
have occurred after the transfer of the Pictaflex technology, and
thus, Cameo must have received notice after August 26, 2008.
In fact, Cameo alleges, upon information and belief, that it
became aware of the alleged wrongs shortly after the May 2010
10

meeting between Techni-Coat and Strikeforce. 7

Assuming then that

the statute of limitations began running in May 2010, Cameo would
have had until May 2015 to assert its claims for unjust enrichment
and

tortious

interference.

Because

Cameo

filed

its

initial

complaint on June 26, 2014, and because the additional claims for
unjust enrichment and tortious interference relate back to the
filing of the initial complaint, they are not time-barred.

Thus,

the Court cannot deny leave to amend on grounds of futility.
Cameo’s Motion for Leave to File a Fifth Amended Complaint is
granted, to the extent that Cameo seeks to assert additional claims
for unjust enrichment and tortious interference.
B. Additional Parties
Under Federal Rule of Civil Procedure 15(c)(1)(C), “[a]n
amendment to a pleading relates back to the date of the original
pleading when … the amendment changes the party or the naming of
the party against whom a claim is asserted, if Rule 15(c)(1)(B) is
satisfied.

Additionally, Rule 15(c)(1)(C) requires that, within

the period provided by Rule 4(m) for serving the summons and
complaint, “the party to be brought in by amendment (i) received

7

Although the Proposed Fifth Amended Complaint focuses on the 2010 meeting,
Cameo’s accompanying Motion briefly refers to other transactions between an
Akzo Nobel entity and Strikeforce that “significantly predate[]” the allegations
discussed herein. [DE 73 at 4]. Because Cameo discovered evidence of such
transactions in the recently-disclosed Strikeforce documents, and because there
is no indication that Cameo should have discovered these transactions earlier
through due diligence, it cannot be charged with earlier notice of such
transactions for statute of limitations purposes.

11

such notice of the action that it will not be prejudiced in
defending on the merits; and (ii) knew or should have known that
the action would have been brought against it, but for a mistake
concerning the proper party’s identity.”
The United States Court of Appeals for the Sixth Circuit has
held that the relation-back provision of Rule 15(c)(1)(C) simply
allows for the substitution of parties or correction of misnomers.
Asher v. Unarco Mat. Handling, 596 F.3d 313, 319 (6th Cir. 2010);
see also In re Kent Holland Die Casting & Plating, Inc., 928 F.2d
1448, 1449 (6th Cir. 1991) (“An amendment which adds a new party
creates a new cause of action and there is no relation back to the
original filing for purposes of limitations.”).
According to Cameo, Strikeforce documents revealed that Akzo
Nobel transferred the Pictaflex technology from Techni-Coat to
Soliant shortly after the termination of the Agreement.
79].
the

[DE 73,

Thus, Cameo believes that Soliant may be liable for some of
post-termination

Pictaflex

sales

to

Strikeforce.

[Id.].

Because Soliant has since merged with AN Coatings, Cameo seeks to
add AN Coatings as a defendant in this action.

However, Cameo

clearly indicates that it is not requesting a substitution of
parties or correction of misnomers.

Rather, it seeks to make this

amendment while simultaneously retaining its claims against AN
Paints.

[Id.].

Because Cameo’s request essentially creates new

12

causes of action that do not relate back to the filing of the
initial complaint, it cannot avail itself of Rule 15(c)(1)(C).
See Asher, 596 F.3d at 319.

Cameo’s Motion for Leave to File a

Fifth Amended Complaint is therefore denied, to the extent that it
seeks to add AN Coatings as a defendant while retaining its claims
against AN Paints. 8
C. Clarification of Breach of Contract Claim
As a general matter, Federal Rule of Civil Procedure 15(a)(2)
provide that courts “should freely give leave [to amend a pleading]
when justice so requires.”

Fed. R. Civ. P. 15(a)(2); see Krupski,

560 U.S. at 552-53 (highlighting the distinction between the
“mandatory nature of the inquiry for relation back under Rule
15(c)” and Rule 15(a)’s discretionary standard).

“Factors that

may affect that determination include undue delay in filing, lack
of notice to the opposing party, bad faith by the moving party,
repeated failure to cure deficiencies by previous amendment, undue
prejudice to the opposing party, and futility of the amendment.”
Seals v. Gen. Motors Corp., 546 F.3d 766, 770 (6th Cir. 2008).
Cameo seeks to clarify that its breach of contract claim
pertains to conduct occurring both before and after the termination

8

The Court must clarify that this ruling does not preclude Cameo from actually
substituting AN Coatings for AN Paints in this action, although such a maneuver
would likely be fatal to Cameo’s unjust enrichment and tortious interference
claims.
After all, those additional claims are predicated on conduct that
occurred before the termination of the Agreement, and thus, before Soliant had
control of the Pictaflex technology.

13

of the Agreement. Although the Court believes that Cameo expressed
such an intent in previous versions of the complaint, it sees no
reason why Cameo cannot further describe the basis for its breach
of contract claim. AN Paints makes no objection to this particular
request.

Because there is no indication that Cameo seeks such an

amendment in order to delay the case or create prejudice for AN
Paints, 9 the Court will grant Cameo’s Motion for Leave to File a
Fifth Amended Complaint, to the extent that it seeks to simply
clarify the nature of its existing breach of contract claim.
Seals, 546 F.3d at 770.
IV. CONCLUSION
Accordingly, for the reasons stated herein,
IT IS ORDERED that Plaintiff Cameo, LLC’s Motion for Leave to
File a Fifth Amended Complaint [DE 73] be, and is, hereby GRANTED
IN PART and DENIED IN PART.
assert

additional

claims

for

Cameo may amend its complaint to
unjust

enrichment

and

tortious

interference against AN Paints and clarify the nature of its
existing breach of contract claim. However, Cameo is not permitted
to add AN Coatings as a defendant in this action while retaining
its claims against AN Paints.

9

Discovery has not yet commenced in this case. Thus, the proposed amendment
may clarify the nature and extent of discovery needed on the breach of contract
claim, thereby streamlining the discovery process.

14

IT IS FURTHER ORDERED that Cameo shall file a Fifth Amended
Complaint that is consistent with the terms of this Memorandum
Opinion and Order within ten (10) days of the date of entry of
this Order.
This the 21st day of February, 2017.

15