My Pillow, Inc. v. LMP Worldwide, Inc.

Filing 61

ORDER granting in part and denying in part 43 Motion to Alter/Amend/Supplement Pleadings (Written Opinion) Signed by Magistrate Judge Steven E. Rau on 12/13/2018. (GFK)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA

My Pillow, Inc., a Minnesota corporation,

Case No. 18-cv-196 (WMW/SER)

Plaintiff,
v.

ORDER

LMP Worldwide, Inc., a Michigan
corporation,
Defendant.

Lora M. Friedemann and Laura L. Myers, Fredrikson & Byron, P.A., 200 South Sixth
Street, Suite 4000, Minneapolis MN 55402 (for Plaintiff); and
Matthew L. Woods and Peter N. Surdo, Robins Kaplan LLP, 800 LaSalle Avenue, Suite
2800, Minneapolis MN 55402, and A. Michael Palizzi and Michael C. Simoni, Miller,
Canfield, Paddock and Stone, PLC, 150 West Jefferson Avenue, Suite 2500, Detroit MI
48226 (for Defendant).

This matter is before the Court on Plaintiff’s Motion for Leave to Amend its
Complaint. (ECF No. 43). For the reasons below, the motion is granted in part and denied
in part.
I.

PROCEDURAL BACKGROUND
Plaintiff My Pillow, Inc., and Defendant LMP Worldwide, Inc., are competitors in

the pillow business. My Pillow, a Minnesota corporation, uses the word mark
“MYPILLOW” in selling its pillows (hereinafter “MyPillow mark”), while LMP, a
Michigan corporation, uses the design mark “

” in its sales (hereinafter

“LMP mark”). (Compl. ¶¶ 6–9, 11, 13, ECF No. 1; Am. Compl. ¶¶ 6–10, 12, 14, ECF

No. 46, Ex. A). My Pillow has used its registered trademark since 2009 and LMP has
used its registered trademark since 2007. (Compl. ¶¶ 6–9, 11, 13; Am. Compl. ¶¶ 6–10,
12, 14).
In January 2012, My Pillow sued LMP in the United States District Court for the
Eastern District of Michigan, alleging trademark infringement and unfair competition.
(Compl. ¶ 16; Am. Compl. ¶ 15). The parties settled that lawsuit by entering into a
settlement agreement establishing terms under which each party uses their respective
marks. (Compl. ¶ 16; Am. Compl. ¶¶ 16–21). 1 The agreement contains the following
provision: “The Parties agree that the [LMP mark], as used in the manner and form
reflected in [the agreement], is not confusingly similar to and not likely to cause
confusion with the My Pillow Mark.” (Agreement § 1, Am. Compl. Ex. 4). The parties
also agreed to the inverse: that the My Pillow mark is not confusingly similar to the LMP
mark. (Agreement § 1). The agreement prohibits LMP from using the My Pillow mark in
connection with pillows and from making any ad word purchase for the works “my” and
“pillow,” whether together or separate, unless accompanied by additional words.
(Agreement § 2.1(c)). My Pillow likewise agreed not to purchase certain ad words related
to the LMP mark. (Agreement § 4.1(c)).
My Pillow asserts that LMP violated the agreement and infringed the My Pillow
mark. (Compl. ¶¶ 17–27; Am. Compl. ¶¶ 22–35). First, My Pillow alleges LMP
purchased prohibited ad words without the accompaniment of additional words. (Compl.
1

The lawsuit settled before discovery was completed and without any motion practice from the parties.
(See Case No. 2:12-cv-10299 (E.D. Mich.)). Thus, no determinations were made on My Pillow’s
infringement claims or LMP’s counterclaim contesting the validity of My Pillow’s trademark.
2

¶¶ 18–22; Am. Compl. ¶¶ 23–29). My Pillow notified LMP of this asserted breach in
December 2016. (Compl. ¶¶ 18–22; Am. Compl. ¶¶ 23–29). LMP claimed it ceased
purchasing the prohibited words, but My Pillow asserts LMP continued prohibited ad
word purchasing. (Compl. ¶¶ 18–22; Am. Compl. ¶¶ 23–29). Second, My Pillow alleges
that LMP used the My Pillow mark in connection with My Pillow goods and made false
representations about My Pillow in an email to a wholesale customer. (Compl. ¶¶ 23–24;
Am. Compl. ¶¶ 30–32). Third, My Pillow claims that LMP produced radio
advertisements in Minnesota that were designed to cause confusion between My Pillow
and LMP. (Compl. ¶¶ 25–27; Am. Compl. ¶¶ 33–35). My Pillow informed LMP of these
alleged breaches on December 20, 2017, then terminated the agreement on January 23,
2018. (Compl. ¶ 28; Am. Compl. ¶¶ 36–38). The next day, My Pillow brought suit,
alleging six counts: breach of contract, trademark infringement in violation of the
Lanham Act, unfair competition and false representation in violation of the Lanham Act,
common-law trademark infringement and unfair competition, unfair competition and
false representation in violation of the Minnesota Deceptive Trade Practices Act
(“MDTPA”), and trademark cancellation. (Compl. ¶¶ 29–71).
LMP moved, inter alia, to dismiss My Pillow’s original complaint. (ECF No. 11).
My Pillow’s breach of contract, common law unfair competition, Lanham Act unfair
competition, and MDTPA unfair competition claims survived. (Sept. 6, 2018 Order, ECF

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No. 39). 2 As will be discussed in greater detail, My Pillow’s claims of trademark
infringement under the Lanham Act and common law, false advertising/representation
under the under the Lanham Act and MDTPA, and trademark cancellation were
dismissed without prejudice. Id.
My Pillow now moves to amend its complaint. (ECF No. 43). My Pillow asserts
its amendments would “correct the pleading issues identified in the [Sept. 6, 2018
Order]” and “add another federal trademark registration owned by My Pillow as a basis
for trademark infringement.” (ECF No. 45, at 1). LMP opposes, arguing the proposed
amendments are futile, particularly in light of the Sept. 6, 2018 Order.
II.

ANALYSIS
A. Legal Standard
A court should “freely give leave” to amend a pleading before trial when “justice

so requires.” Fed. R. Civ. P. 15(a). Parties “do not have an absolute right to amend their
pleadings, even under this liberal standard.” Sherman v. Winco Fireworks, Inc., 532 F.3d
709, 715 (8th Cir. 2008). Leave to amend should not be given when there is “undue
delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure
deficiencies by amendments previously allowed, undue prejudice to the opposing party
by virtue of allowance of the amendment, [or] futility of amendment[.]” Foman v. Davis,
371 U.S. 178, 182 (1962).

2

Also found at My Pillow, Inc. v. LMP Worldwide, Inc., 331 F. Supp. 3d 920 (D. Minn. 2018). This
published decision has no pagination, preventing precise citation. Therefore, this Court references the
docket pagination of the Sept. 6, 2018 Order.
4

Relevant here, “[f]utility is a valid basis for denying leave to amend.” United
States ex rel. Lee v. Fairview Health Sys., 413 F.2d 748, 749 (8th Cir. 2005). “Denial of a
motion for leave to amend on the basis of futility means the district court has reached the
legal conclusion that the amended complaint could not withstand a motion to dismiss
under Rule 12(b)(6) of the Federal Rules of Civil Procedure.” Zutz v. Nelson, 601 F.3d
842, 850 (8th Cir. 2010) (internal quotation marks omitted).
To survive a motion to dismiss, a complaint must contain sufficient factual
matter, accepted as true, to state a claim to relief that is plausible on its
face. A claim has facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (internal quotation marks and citations
omitted).
B. Futility Analysis
1. Amended Trademark Infringement Claim – Pillows
As the Court noted in the Sept. 6, 2018 Order, to prevail on its trademark
infringement claims, My Pillow must prove it owns a registered trademark that LMP used
or imitated in commerce in connection with the sale of goods, that LMP’s use or
imitation of the My Pillow mark was unauthorized, and that LMP’s use or imitation is
“likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a);
ZW USA, Inc. v. PWD Sys., LLC, 889 F.3d 441, 446 (8th Cir. 2018). 3

3

Courts analyze trademark infringement claims brought under the Lanham Act and common law under
the same framework. See DaimlerChrysler AG v. Bloom, 315 F.3d 932, 935 n.3 (8th Cir. 2003).
5

The Sept. 6, 2018 Order noted that, under the agreement, “LMP has rights to use
the [LMP] Mark.” (Sept. 6, 2018 Order, at 13) (alterations in original). While My Pillow
claimed that LMP “continued to use the [LMP mark] contrary to the terms of the
[agreement],” the complaint alleged no specific facts addressing this use. (Sept. 6, 2018
Order, at 13). The Order continued: “The complaint’s only allegation pertaining to the
LMP mark is a screen shot of LMP’s website featuring the LMP mark and photographs
of LMP pillows,” but the Court noted that the “use of the LMP mark in the screen shot
appears to be consistent with the agreement’s example of permissible use of the LMP
mark.” (Sept. 6, 2018 Order, at 13–14). The Court found My Pillow failed to “explain
how the use of the LMP mark in the screen shot is not authorized by the agreement.”
(Sept. 6, 2018 Order, at 14). The Court concluded that the “complaint fail[ed] to allege
facts supporting a determination that LMP’s use of the LMP mark was unauthorized.”
(Sept. 6, 2018 Order, at 14). The Court also noted that My Pillow argued that it is free to
assert its trademark claims given that it terminated the agreement, but the Court found
that argument had “no bearing on whether the Court applies the terms of the agreement to
the parties’ conduct during the agreement’s duration” as “none of the conduct on which
My Pillow relies occurred after the alleged termination of the agreement.” (Sept. 6, 2018
Order, at 14 n.7). Thus, the Court dismissed My Pillow’s Lanham Act and common law
trademark infringement claims. 4

4

The Sept. 6, 2018 Order “decline[d] to address whether My Pillow has sufficiently alleged a likelihood
of confusion” given that My Pillow had failed to allege facts supporting a determination that LMP’s use
was unauthorized. (Sept. 6, 2018 Order, at 14 n.8).
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My Pillow attempts to remedy its trademark infringement claims by alleging that
its termination of the agreement rescinded any authorization LMP had in using the LMP
mark or the words “my” and “pillow” in connection with pillows. (Am. Compl. ¶¶ 52–
55). It follows, My Pillow asserts, that LMP’s continued use of the LMP mark following
the agreement’s termination infringed upon the My Pillow mark. (Am. Compl. ¶¶ 52–55).
Moreover, My Pillow attempts to further buttress its claims by arguing that any conduct
breaching the agreement constituted infringement. (Am. Compl. ¶ 52). While My Pillow
avoids saying it outright, this claim essentially revives the Michigan federal litigation that
the parties settled, returning the parties to their pre-settlement positions, albeit in a
different federal court.
The question now before this Court is whether My Pillow has sufficiently
addressed the concerns raised in the Sept. 6, 2018 Order regarding trademark
infringement. This Court concludes it has. My Pillow now alleges that LMP has infringed
on the My Pillow mark beyond the agreement’s termination. This amended allegation is
not through any real change of facts, however, but instead the mere passage of time. My
Pillow terminated the agreement on January 23, 2018. Beginning then, My Pillow
alleges, the agreement no longer controlled the parties’ conduct, including the agreedupon use of the LMP and My Pillow marks. Such an argument was essentially impossible
in the original complaint because My Pillow rushed to file suit the day after it terminated
the agreement.
Turning to the elements of trademark infringement, My Pillow has alleged it owns
a registered trademark (the My Pillow mark), that LMP uses the LMP mark in selling its
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pillows, that use of the LMP mark was no longer authorized because the agreement was
terminated, and that use of the LMP mark is likely to cause confusion, cause mistake, or
deceive. Neither party disputes that My Pillow registered the My Pillow mark or that
LMP registered the LMP mark. As discussed in the preceding paragraph, My Pillow
alleged that use was no longer authorized following the termination of the agreement. 5
This allegation is supported by a screen shot from LMP’s website on September 11, 2018
showing sales of pillows and pillow cases with the LMP mark. (Am. Compl. ¶¶ 40–42,
Ex. 5). Finally, My Pillow alleges likelihood of confusion between the My Pillow and
LMP marks. This final allegation is supported by reference to a December 14, 2017 email
from an LMP employee to a wholesale customer that includes the following language:
“I’ve been with this company for 3 years and I can’t tell you how many calls I get from
customers wanting to return their My Pillow thinking we are the same.” (Am. Compl.
¶ 31). This is sufficient factual content to push My Pillow’s assertion of likelihood of
confusion into plausibility and allows this Court to draw such an inference.
My Pillow’s claim might not withstand further scrutiny as this case develops. As
LMP argues, My Pillow has not alleged any facts as to how LMP is using the LMP mark
in a manner inconsistent with each party’s admission in the agreement that the parties’
respective marks are not confusingly similar and not likely to cause confusion. Indeed,
nothing is substantively different from My Pillow’s screen shot considered by the Court

5

My Pillow also asserts that given its termination of the agreement, any use by LMP of the LMP mark
constituted infringement, even that occurring during the agreement’s existence. This Court is not
convinced, but it need not address this argument because the claim survives for the other reasons
discussed herein.
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in the Sept. 6, 2018 Order wherein it concluded the “use of the LMP mark in the screen
shot appears to be consistent with the agreement’s example of permissible use of the
LMP mark” other than the fact that the use occurred after the termination of the
agreement. Contrary to My Pillow’s arguments, its admission regarding likelihood of
confusion from the agreement may survive the cancellation of the agreement or at least
weaken My Pillow’s claims, either through estoppel or some other means. See, e.g., In re
E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1363 (C.C.P.A. 1973) (“Thus when
those most familiar with use in the marketplace and most interested in precluding
confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted.
It is at least difficult to maintain a subjective view that confusion will occur when those
directly concerned say it won’t.”). But this Court’s duty is to examine futility of the
amendment based on the amendments themselves, not some underlying factual or
evidentiary hurdle My Pillow may face, particularly where that inquiry involves a “caseby-case fact intensive analysis.” Amalgamated Bank of New York v. Amalgamated Trust
& Sav. Bank, 842 F.2d 1270, 1274 (Fed. Cir. 1988). 6 Such futility is not apparent from
the face of the Amended Complaint and, with the record presently before the Court as
well as the law of the case, this Court concludes My Pillow’s amended trademark
infringement claim would withstand a motion to dismiss. Accordingly, the amended
trademark infringement claim is not futile and amendment should be granted.

6

My Pillow is not precluded from bringing suit altogether. See, e.g., Brennan’s Inc. v. Dickie Brennan &
Co. Inc., 376 F.3d 356, 363–71 (5th Cir. 2004) (discussing the effect of the parties’ consent-to-use
agreement concerning trademark use on later trademark infringement claims).
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2. Added Trademark Infringement Claim – Pillow Cases/Covers
Through the Amended Complaint, My Pillow seeks to add a new trademark
infringement claim. (Am. Compl. ¶¶ 59–66). This claim is functionally identical to the
previous trademark claim save for one change: it asserts infringement related to pillow
cases rather than pillows.
My Pillow asserts that pillow cases were never covered by the agreement, thus
rendering any use of the LMP mark on pillow cases for any period of time, including
during the existence of the agreement, as trademark infringement. The Court need not
decide this issue because as long as the pillow-based infringement claim survives, so
follows the pillow case claim given that identical marks are at issue. See 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 19:56 (5th ed.)
(classification of a product is irrelevant to infringement issues) (citing Jean Patou, Inc. v.
Theon, Inc., 9 F.3d 971975 (Fed. Cir. 1993)).
LMP makes an argument that the pillow cases at issue are actually pillow covers.
These pillow covers, LMP argues, are sold as replacement parts for the core component
of the underlying pillows, and this claim is subsumed by the other trademark
infringement claim. My Pillows responds, noting that LMP’s website originally identified
the product as a pillow case and the customer reviews refer to the product as a pillow
case. This dispute is not one resolved at the motion to amend stage. Rather, this is a
factual dispute that must be resolved via the parties’ discovery. Nonetheless, the true crux
of the issue is the confusion between the My Pillow mark and the LMP mark. It matters
not, for the futility analysis, whether the marks are used in connection with a pillow, a
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pillow case, a pillow cover, or a tea kettle because the marks are at issue, not necessarily
the items to which they are affixed.
Thus, as this Court concludes above, My Pillow’s new trademark infringement
claim would withstand a motion to dismiss. Accordingly, the new trademark
infringement claim is not futile and amendment should be granted.
3. False Advertising Claim
In analyzing the original false advertising and false representation claims, the
Court noted that to state a false advertising claim under 15 U.S.C. § 1125(a)(1)(B) 7, My
Pillow
must allege that (1) in a commercial advertisement, LMP made a false
statement of fact about a product; (2) the statement actually deceived or has
the tendency to deceive a substantial segment of the statement’s audience;
(3) the deception is material, meaning it is likely to influence purchasing
decisions; (4) LMP caused the false statements to enter interstate
commerce; and (5) My Pillow was injured as a result of the false statement.
(Sept. 6, 2018 Order, at 17) (citing Buetow v. A.L.S. Enters., Inc., 650 F.3d 1178, 1182
(8th Cir. 2011)). My Pillow rested its claim “solely on a statement made by an employee
to a wholesale customer in a private email.” (Sept. 6, 2018 Order, at 18). The Court found
this statement “was neither ‘advertising’ nor ‘promotion’” constituting a commercial
advertisement because the complaint did not allege the “statement was sufficiently
disseminated or directed to the purchasing public.” (Sept. 6, 2018 Order, at 18).

7

The same analysis applies to unfair-competition and false-advertising claims arising under the Lanham
Act and Minnesota law. Grp. Health Plan, Inc. v. Philip Morris, Inc., 68 F. Supp. 2d 1064, 1069 (D.
Minn. 1999).
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My Pillow attempts to salvage its false advertising/representation claims by adding
the following: “On information and belief, LMP has made false and misleading
statements comparing LMP and My Pillow and quoting unsubstantiated statistics
regarding the sales, products, and customers of My Pillow and LMP to a substantial
portion of the relevant purchasers in an effort to take sales away from My Pillow.” (Am.
Compl. ¶ 72). 8 My Pillow argues these additions explain
its belief that the email it managed to get its hands on is part of a larger
marketing campaign through which LMP employees communicate with the
parties’ customers and potential customers and quote unsubstantiated
statistics regarding the sales, products, and customers of My Pillow and
LMP in an effort to take sales away from My Pillow.
(ECF No. 45, at 13). Thus, the question before this Court is whether these additions are
sufficient to overcome the original complaint’s deficiencies. This Court concludes they
are not.
The apparent additions in My Pillow’s Amended Complaint were already
presented to the Court when deciding the motion to dismiss. As My Pillow told the Court
in arguing its motion:
My Pillow’s allegations aren’t limited to a single e-mail. My Pillow alleges
that LMP, through its employees and agents, has instructed its employees to
falsely represent unsubstantiated statistics regarding the customers of My

8

This allegation is accompanied by a nearly-identical factual allegation that reads:
On information and belief, the aforementioned email is part of a larger marketing
campaign through which LMP employees communicate, orally and in writing, with
customers and potential customers of both My Pillow and LMP and falsely compare
LMP to My Pillow and quote unsubstantiated statistics regarding the sales, products, and
customers of My Pillow and LMP in an effort to take sales away from My Pillow.

(Am. Compl. ¶ 32).
12

Pillow and LMP. It’s alleged a broader pattern of behavior and it has cited
this e-mail that was forwarded to My Pillow as an example of that behavior.
(June 5, 2018 Motions Hearing Tr. 51:1–8, ECF No. 54) (emphasis added). Despite this
argument, the Court concluded that My Pillow still failed to state a claim. There is no
substantive difference now between My Pillow’s amended allegations to its previous
argument. Despite My Pillow’s arguments that this single email is enough to state a claim
because it acts as an example for its allegation of a broader practice, the Court has
already concluded otherwise.
My Pillow tries to distinguish its present claim of a broader pattern of behavior
from its previous claim of a broader pattern by reason of the addition of “on information
and belief” that the email is part of the larger marketing campaign. My Pillow relies on
two cases to save its claim.
In Eclat Pharm., LLC v. West-Ward Pharm. Corp., the court considered whether
plaintiff pleaded a Lanham Act false advertising claim. 2014 WL 12597594, at *1 (C.D.
Cal. Feb. 12, 2014). The complaint alleged defendants “made improper, affirmative
statements as to having, or not being required to have, FDA approval of their products” in
“connection with sales to purchasers of generic drugs, sales to GPOs and information
available through Price Lists.” Id. at *6. The plaintiff provided allegations as to each
“category of activities.” Id. The court, also analyzing the claims under Rule 9’s fraud
pleading requirements, found that the “[s]pecific details with respect to the content of the
alleged misrepresentations, when they were made and by and to whom they were made
are within the knowledge of each of the Defendants.” Id. at *7. Thus, where a “claim is

13

that the communications were by Defendants to certain non-parties” it is “reasonable to
conclude that Plaintiff does not have the same ready access to the details of the alleged
communications, and that Defendants are not disadvantaged by less detailed allegations.”
Id.
In Mimedx Grp., Inc. v. Osiris Therapeutics, Inc., the court also considered
whether plaintiff pleaded a Lanham Act false advertising claim. 2017 WL 3129799, at *1
(S.D.N.Y. July 21, 2017). The defendant published a press release on its website touting
the results of a comparative study relating to the parties’ respective tissue wound care
products. Id. at *1–*2. The plaintiff alleged the press release made two
misrepresentations in that the statements made were unsupported by the underlying study.
Id. at *2. In addition to the press release, defendant distributed a brochure to prospective
customers, both in the U.S. and overseas, in which plaintiff alleged there were three false
or misleading statements. Id. at *3. In moving to dismiss, defendant argued that plaintiff
failed to allege facts demonstrating that the challenged statements were sufficiently
disseminated to the purchasing public. Id. at *8. While the court noted the complaint
“would have benefited from additional factual material on this point,” it found “enough
facts” were alleged to plausibly plead that the press release and brochure were
sufficiently disseminated. Id. The court stated the complaint “need not allege all of the
particular details identified by Defendant; indeed, many of those details would be
difficult to ascertain absent discovery.” Id. Instead, the question was “one of plausible
pleading,” finding that the complaint “contains sufficient facts to render plausible that the
Press Release and the Brochure ‘are part of an organized campaign to penetrate’ the
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wound biologics market.” Id. Thus, the court found that the plaintiff adequately pled that
the press release and brochure were sufficiently disseminated. Id.
These two cases do not save My Pillow’s false advertising claim. In Eclat,
plaintiff alleged that the defendants “enter into agreements with wholesale generic drug
purchasers . . . for the purchase and distribution of their generic products . . .” and “[o]n
information and belief . . . [Defendants] misrepresent that their unapproved . . . products
comply with all relevant state and federal laws . . . .” 2014 WL 12597594, at *6. As
already discussed, this “on information and belief” allegation was an example for just one
of three categories of recipients of defendants’ alleged misrepresentations. My Pillow has
alleged no such categorization of widespread recipients, with examples supporting each.
Rather, My Pillow has a single email related to a single group. The “on information and
belief” allegations in Mimedx were that “since at least as early as October 2015,
Defendant has been distributing, and is continuing to distribute the Brochure to
prospective customers in the U.S. and abroad.” 2017 WL 3129799, at *8 (quotation and
alterations omitted). Despite publishing a press release on its website and distributing a
brochure to potential customers both in the U.S. and overseas, the court opined that the
complaint could have had even more factual material supporting the dissemination of the
misrepresentations. My Pillow’s allegations are scant compared to those in Mimedx.
Again, My Pillow rests its entire claim on a single email to a single customer. This Court
cannot conclude that the addition of “on information and belief” alters My Pillow’s
allegations to anything other than those already presented to and rejected by the Court in

15

the Sept. 6, 2018 Order. As such, My Pillow’s false advertising claim is futile and the
amendment shall not be permitted at this time.
To be sure, My Pillow is not barred from reasserting this claim in the future.
Should information be found in discovery that shows the LMP email was in fact part of a
larger campaign, My Pillow may seek to amend its complaint to revive this claim. Until
then, the false advertising claim is not plausible on its face.
C. Other Considerations
LMP does not make any arguments concerning undue delay, bad faith, dilatory
motive, or unfair prejudice, nor does the Court independently find any. This case is in its
infancy in that no answer has been entered and no pretrial scheduling order has issued.
While this case was filed nearly one year ago, the parties have not progressed beyond the
pleading stage by reason of their motion practice. Thus, while this Court is not enamored
with the parties’ lack of progress, it does not find any other considerations warranting
denial of My Plillow’s motion for leave to amend other than those discussed herein.
III.

CONCLUSION
It is not lost on this Court the futility of its own futility analysis. My Pillow

believes its claims all have merit. If it did not, its lawyers would be violating their
professional obligations. See Fed. R. Civ. P. 11. LMP has yet to even interpose an answer
or response to My Pillow’s amended complaint, but, given its resistance here, it will
likely first move to dismiss the claims in similar fashion to the arguments considered

16

herein. 9 While this Court has expressed its skepticism, that skepticism is founded in a
belief in factual futility rather than legal futility. While the parties posture against each
other, legal fees will swell in an effort to overcome or reinforce this factual deficit. See
generally Select Comfort Corp. v. Baxter, Case No. 12-cv-2899 (DWF/SER) (D. Minn.)
(lawsuit initiated in 2012; 17-day jury trial held in 2017 with plaintiffs requesting over
$17 million in damages, (see ECF No. 659, at 16), and the jury awarding approximately
$155,000 to plaintiffs, (ECF No. 575); post-trial motions filed, with defendants seeking
nearly $9 million in attorney’s fees from plaintiffs, (ECF No. 632), and plaintiffs seeking
over $5 millions in fees and costs from defendants, (ECF No. 640); and the court
awarding neither fees nor costs to either party, (ECF No. 702)). These fees will be drawn
from the warring companies’ coffers, diverted from more practical business ventures such
as actually competing in the open marketplace. Instead of competing on the quality of
their products and the value offered to consumers, the parties instead capture the Court’s
resources while turning the courtroom into their competitive arena. The parties reached a
compromise previously. There is no reason the parties cannot do so again. See ABA
Model R. of P. Conduct 2.1 (“In representing a client, a lawyer shall exercise independent
professional judgment and render candid advice. In rendering advice, a lawyer may refer
not only to law but to other considerations such as moral, economic, social and political

9

This is not by fault of LMP, though, but rather a side effect of the bifurcation of duties found in the
federal court system. This leads to interesting outcomes, wherein a magistrate judge decides the same
arguments normally presented through a motion to dismiss so long as they happen to appear in opposition
to a motion for leave to amend via futility challenges.
17

factors, that may be relevant to the client’s situation.”). Until then, the parties will retread
over old paths, with a captured court acting as their arbiter.
Accordingly, based on all the files, record, and proceedings herein, and for the
reasons stated above, Plaintiff’s Motion for Leave to Amend its Complaint, (ECF
No. 43), is GRANTED IN PART and DENIED IN PART as follows:
1.

Plaintiff My Pillow is granted leave to amend to assert its proposed

amended trademark infringement claim and added trademark infringement claim.
2.

Plaintiff My Pillow is denied leave to amend to assert its proposed amended

false advertising/representation claims.
3.

Plaintiff My Pillow shall prepare and file an amended complaint, in

sufficiently the same form as that attached to its motion, that complies with this
Order.
Date: December 13, 2018

s/ Steven E. Rau
Steven E. Rau
United States Magistrate Judge
District of Minnesota
My Pillow v. LMP Worldwide
Case No. 18-cv-196 (WMW/SER)

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