Sream, Inc. v. A Plus Invest Inc.

Filing 95

ORDER AND REASONS denying 81 Motion to Dismiss Party; 82 Motion to Dismiss Party. Signed by Judge Susie Morgan on 5/10/19. (Reference: All Cases)(sbs)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
SREAM, INC.,
Plaintiff

CIVIL ACTION

VERSUS

NO. 17-8177 c/w
17-8179, 17-8180,
17-8184, 17-8186,
17-8191, 17-8193,
17-8205, 17-8216,
17-8218, 17-8238,
17-8239, 17-8242,
17-8243, 17-8244,
17-8246, 17-8252

SUPERIOR DISCOUNT, LLC,
Defendant

Applies to: All Cases

SECTION: “E” (1)

ORDER AND REASONS 1
Before the Court is a Motion to Dismiss filed by Defendant E-Z Pick Inc. on behalf
of the consolidated Defendants (“Defendants”). 2 The motion is opposed. 3 The Court
ordered any reply be filed by no later than May 8, 2019. 4 Defendants did not file a reply.
For the reasons that follow, the motion is DENIED.
BACKGROUND
On August 24, 2017, Sream filed the captioned actions, asserting the following
causes of action against the Defendant(s) in each case: (1) a claim for trademark
counterfeiting and infringement under 15 U.S.C. § 1114 and (2) a claim for false
designation of origin and unfair competition under 15 U.S.C. § 1125(a). 5 Sream alleges it

Unless otherwise noted, the Court cites to the record of the lowest-numbered consolidated action, action
no. 17-8177.
2 R. Doc. 81. India Imports, LLC also filed a separate Motion to Dismiss, R. Doc. 82.
3 R. Doc. 91.
4 R. Doc. 94.
5 R. Doc. 1 at ¶¶ 41-63.
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is the exclusive United States licensee authorized to use the trademark “RooR” and alleges
it has the authority by license from the trademark’s owner to police and enforce the RooR
marks within the United States. 6 In the original Complaints, Sream alleges the RooR
trademark is owned by Martin Birzle. 7 On January 8, 2018, after Sream filed suit against
Defendants, Mr. Birzle assigned his rights in the mark to Roor International BV. 8 Sream
alleges the Defendants sold counterfeit merchandise bearing the RooR mark at times
between August 24, 2016 and August 28, 2016. 9
Several of the Defendants filed Motions to Dismiss, 10 arguing Sream lacks standing
to assert claims under either 15 U.S.C. § 1114 or 15 U.S.C. § 1125(a). While the Motions to
Dismiss were pending before the Court, Sream moved for leave to file amended
complaints to add Roor International BV as a Plaintiff. 11
On March 1, 2019, the Court ruled on the pending motions to dismiss and motions
for leave. 12 The Court held Sream lacks standing to bring a claim for trademark
infringement under 15 U.S.C. § 1114 because the license agreement between Birzle and
Sream, ratified by Roor International BV, does not confer upon Sream the status of an

R. Doc. 8 at ¶ 10; see also R. Doc. 77-3 (Licensing Agreement).
R. Doc. 1 at ¶ 10, 11.
8 R. Doc 77 at ¶ 10, 11; see also R. Doc. 77-4 (Ratification Agreement).
9 R. Doc. 1 at ¶ 21.
10 Case No. 17-8177, R. Doc. 60 (filed by Superior Discount, LLC), R. Doc. 64 (filed by Guide-One National
Insurance Company), R. Doc. 65 (filed by India Imports LLC); Case No. 17-8179, R. Doc. 41 (filed by Joseph
Truong, Inc.), R. Doc. 42 (Motion to Dismiss and for Rule 11 Sanctions filed by Joseph Truong, Inc.); Case
No. 17-8184, R. Doc. 55 (filed by MKM Group, LLC), R. Doc. 57 (filed by India Imports, LLC); Case No. 178191, R. Doc. 34 (filed by Dock Quick Stop, LLC); Case No. 17-8205, R. Doc. 51 (filed by M&S Fuel, LLC),
R. Doc. 53 (filed by India Imports LLC); Case No. 17-8216, R. Doc. 31 (Motion to Dismiss and for Rule 11
Sanctions filed by E-Z Pick, Inc.); Case No. 17-8238, R. Doc. 52 (filed by Discount-N-Out, LLC), R. Doc. 56
(filed by India Imports, Inc.); Case No. 17-8243, R. Doc. 67 (filed by Quickys Discount).
11 Case No. 17-8177, R. Doc. 67; Case No. 17-8179, R. Doc. 43; Case No. 17-8180, R. Doc. 32; Case No. 178184, R. Doc. 59; Case No. 17-8186, R. Doc. 34; Case No. 17-8191, R. Doc. 37; Case No. 17-8193, R. Doc. 33;
Case No. 17-8205, R. Doc. 56; Case No. 17-8216, R. Doc. 35; Case No. 17-8218, R. Doc. 23; Case No. 178238, R. Doc. 60; Case No. 17-8242, R. Doc. 30; Case No. 17-8243, R. Doc. 73; Case No. 17-8244, R. Doc.
40; Case No. 17-8246, R. Doc. 39; Case No. 17-8252, R. Doc. 28.
12 R. Doc. 76.
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assignee of the trademark. 13 The Court also granted Sream leave to file amended
complaints adding Roor International BV as a Plaintiff.
The amended complaints allege Roor International BV is the current owner of the
RooR marks and, as the owner of the marks, Roor International BV has “federal statutory
and common law rights to the RooR trademark.” 14 Accordingly, the plaintiffs contend
Roor International BV has standing to assert a claim for trademark counterfeiting and
infringement under 15 U.S.C. § 1114, as well as a claim for false designation of origin under
15 U.S.C. § 1125.
Defendants move to dismiss the claims of Roor International BV, arguing its claims
have prescribed. 15 The parties agree the applicable statute of limitations for both claims
is one year. Roor International BV became a plaintiff when the amended complaints were
filed on March 1, 2019. 16 Roor International BV alleges Defendants violated 15 U.S.C. §
1114 and 15 U.S.C. § 1125 at times between August 24, 2016 and August 28, 2016. 17
Accordingly, the claims of Roor International BV have prescribed unless they relate back
to the date Sream filed the original complaints.
LAW AND ANALYSIS
I.

The Amended Complaints Relate Back to the Date of the Original
Complaints
Federal Rule of Civil Procedure 15 provides:
An amendment to a pleading relates back to the date of the original pleading
when:
(A) the law that provides the applicable statute of limitations allows relation
back;

Id. See also R. Doc. 8-2 (Licensing Agreement between Martin Birzle and Sream); R. Doc. 77-4
(Ratification agreement).
14. Doc. 77 at ¶ 11.
15 R. Doc. 81; R. Doc. 82.
16 R. Doc. 77.
17 Id. at ¶ 21.
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(B) the amendment asserts a claim or defense that arose out of the conduct,
transaction, or occurrence set out--or attempted to be set out--in the
original pleading; or
(C) 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 and if, within the
period provided by Rule 4(m) for serving the summons and complaint, the
party to be brought in by amendment:
(i) received 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. 18
Although Rule 15(c) does not expressly apply to a new pleading adding or substituting
Plaintiffs, the Advisory Committee Note to the 1966 amendment indicates that Rule 15(c)
also applies to the relation back of amendments changing plaintiffs. The Advisory
Committee notes, “the attitude taken in revised Rule 15(c) toward change of defendants
extends by analogy to amendments changing plaintiffs.” 19
The Fifth Circuit has explained, “[r]ule 15(c) is ‘based on the idea that a party who
is notified of litigation concerning a given transaction or occurrence is entitled to no more
protection from statutes of limitations than one who is informed of the precise legal
description of the rights sought to be enforced’ . . . Clearly notice is the critical element
involved in Rule 15(c) determinations.” 20 “As long as a defendant is fully apprised of a
claim arising from specified conduct and has prepared to defend the action, defendant’s
ability to protect itself will not be prejudicially affected if a new plaintiff is added, and
defendant should not be permitted to invoke a limitations defense.” 21

FED. R. CIV. P. 15 (emphasis added).
FED. R. CIV. P. 15, Advisory Committee Note to 1966 Amendment.
20 Williams v. United States, 405 F.2s 234, 236 (5th Cir. 1968) (citing 3 MOORE, FEDERAL PRACTICE P
15.15(2) at 1021).
21 6A CHARLES ALAN WRIGHT, ARTHUR R. MILLER ET AL., FEDERAL PRACTICE AND PROCEDURE § 1501 (3d ed).
18
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In this case, the claims of Roor International BV arise out of the same conduct,
transaction, and occurrence as the claims asserted by Sream in the original complaint. 22
Both the factual allegations and causes of action now asserted by Roor International BV
are largely identical to those originally asserted by Sream. 23 Defendants have had notice
of the claims against them for trademark infringement under 15 U.S.C. § 1114 and false
designation of origin under 15 U.S.C. § 1125 since the date of filing of the original
complaint and have been preparing to defend the action since that time.
The original complaints put the Defendants on notice of the existence of the
trademark’s owner, and Defendants will not be prejudiced by the addition of identical
claims asserted by the owner. The original complaints allege Mr. Birzle “owns valid and
subsisting federal statutory and common law rights to the RooR trademark” 24 and
describe that, pursuant to a licensing agreement, Mr. Birzle granted Sream “all rights to
sue to obtain damages and injunctive relief for past and future infringement of the RooR
marks in the United States.” 25 Although the Court concluded Sream lacks standing to
assert claims under 15 U.S.C. § 1114, in part because its status as licensee does not equate
it to the registrant or owner of the mark, Defendants were aware of the existence and
identity of the trademark’s owner since the inception of the suit.26 The addition of the
owner of the trademarks as a plaintiff should not come as a surprise to Defendants.

Compare R. Doc. 1 with R. Doc. 77.
Compare R. Doc. 1 with R. Doc. 77.
24 R. Doc. 1 at ¶ 9.
25 Id. at ¶ 13.
26 Martin Birzle’s assignment of his ownership interest in the mark to Roor International BV does not affect
this analysis.
22
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Further, the Court has already concluded the addition of Roor International BV as
a plaintiff will not prejudice Defendants. In the Order and Reasons granting Sream leave
to file amended complaints adding Roor International BV as an additional plaintiff, the
Court explained, “[p]ermitting the amended complaint does not cause undue prejudice to
Defendants. The amended complaint does not add new substantive allegations but rather
asserts the same two causes of action. The factual allegations in the amended complaint
are largely identical to those in the original Complaint.” 27 Accordingly, the claims of Roor
International BV relate back to the date of filing the original complaints. As a result, the
claims of Roor International BV have not prescribed, and the motion to dismiss is denied
on this basis.
II.

Plaintiffs Need Not Move to Amend the Judgment
Defendants also argue that, because the Court dismissed Sream’s claim under 15

U.S.C. § 1114, RooR may not bring a claim pursuant to 15 U.S.C. § 1114 without filing a
motion to amend the judgment pursuant to Federal Rule of Civil Procedure 59(e). The
cases cited by Plaintiffs to support this argument are inapposite. 28 After the court grants
a motion to dismiss and dismisses all claims with prejudice, a party may only amend the
complaint by filing a motion under Rule 15(a) in conjunction with a motion to amend the
judgment under Rule 59(e). 29 In this case, Plaintiffs requested leave to amend the
complaints prior to the Court’s ruling on the motion to dismiss. The Court granted Sream
leave to file amended complaints at the same time it dismissed one of Sream’s two claims
with prejudice. Plaintiffs need not file a motion to amend the judgment under these
circumstances.
R. Doc. 76 at 15-16.
Confederate Mem'l Ass'n, Inc. v. Hines, 995 F.2d 295, 299 (D.C. Cir. 1993).
29 Glenn v. First Nat. Bank in Grand Junction, 868 F.2d 368, 370 (10th Cir. 1989).
27

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CONCLUSION
IT IS ORDERED that the Motion to Dismiss 30 filed by Defendants is DENIED.
New Orleans, Louisiana, this 10th day of May, 2019.
______________________ _________
SUSIE MORGAN
UNITED STATES DISTRICT JUDGE

30

R. Doc. 81. The Motion to Dismiss filed by India Imports, R. Doc. 82, also is DENIED.

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