River Light V, L.P. et al v. Lin & J International, Inc et al

Filing 83

OPINION & ORDER: Defendants' March 17, 2014 motion to withdraw and amend deemed admissions is granted. (Signed by Judge Denise L. Cote on 4/4/2014) (gr)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------- X
:
RIVER LIGHT V, L.P. and TORY BURCH
:
LLC,
:
:
Plaintiffs,
:
:
-v:
:
LIN & J INTERNATIONAL, INC., YOUNGRAN :
KIM, LJ BRAND, INC., and NJ LIN & J
:
INTERNATIONAL, INC.,
:
:
Defendants.
:
:
-------------------------------------- X

13 Civ. 3669 (DLC)
OPINION & ORDER

APPEARANCES:
For plaintiffs:
Natalie L. Arbaugh
Fish & Richardson PC
1717 Main St., Ste. 5000
Dallas, TX 75201
Irene E. Hudson
Fish & Richardson PC
601 Lexington Ave., 52nd Fl.
New York, NY 10022
For defendants:
Howard Z. Myerowitz
Song Law Firm LLC
400 Kelby St., 7th Fl.
Fort Lee, NJ 07024
DENISE COTE, District Judge:
Defendants move, pursuant to Rule 36(b), Fed. R. Civ. P.,
to withdraw and amend their deemed admissions to plaintiffs’

requests for admissions (“RFAs”).

For the reasons set out

below, defendants’ motion is granted.

BACKGROUND
Plaintiffs bring this action for trademark counterfeiting,
trademark and copyright infringement, trademark dilution, and
unfair competition, alleging that defendants sell jewelry (the
“Accused Products”) bearing certain designs (the “TT Designs”)
trademarked by Tory Burch.

Defendants Lin & J International,

Inc. and Youngran Kim (“Counterclaimants”) bring a counterclaim
for trademark infringement, tortious interference, defamation,
and abuse of process.

Counterclaimants allege that they have

used their design (the “Isis Cross Design”) since 2009 and a
predecessor mark since 2003.
On November 27, 2013, plaintiffs served on defendants fifty
RFAs.

Pursuant to Rule 36(a)(3), Fed. R. Civ. P., defendants’

responses to the RFAs were due within 30 days, and any RFA not
answered or objected to by that date were deemed admitted.
Defendants did not respond to the RFAs until January 31, 2014
(the “January 31 Responses”), more than one month late.
Defendants admit that this was due to “inadvertence” and have
made no excuse.
Through their RFAs, plaintiffs asked defendants to admit,
among other things, that (1) they were aware of the TT Designs
2

before they began selling the Accused Products; (2) that the
Accused Products “bear the TT Designs” or “at least one mark or
design that is confusingly similar to a TT Design,” “contain
marks or designs that are substantially indistinguishable from
the TT Designs,” are “counterfeit,” and “infringe the TT
Designs”; (3) that defendants knew this when selling the Accused
Products; and (4) that any rights defendants had to a
predecessor to the Isis Cross Design were abandoned.

In the

January 31 Responses, defendants deny each of these things.
On March 3, defendants wrote the Court to request a
conference regarding the parties’ dispute over whether
defendants should be permitted to withdraw the deemed admissions
and substitute the January 31 Responses.

Plaintiffs opposed

defendants’ request by letter of March 7, and by memorandum
endorsement of March 10, the Court denied defendants’ request
for a conference and to withdraw the deemed admissions.

On

March 17, defendants filed a motion to withdraw and amend the
deemed admissions with the January 31 Responses.
fully submitted on March 24.

The motion was

For the reasons set forth below,

defendants’ motion is granted.

DISCUSSION
Rule 36 of the Federal Rules of Civil Procedure permits a
party to request certain admissions from other parties.
3

Rule 36

promotes “truth-seeking in litigation and efficiency in
dispensing justice” by “facilitat[ing] proof with respect to
issues that cannot be eliminated from the case and . . .
narrow[ing] the issues by eliminating those that can be.”
Conlon v. United States, 474 F.3d 616, 622 (9th Cir. 2007).
RFAs are “not to be used in an effort to ‘harass the other side’
or in the hope that a party’s adversary will simply concede
essential elements.”

Id. (quoting Perez v. Miama-Dade Cnty.,

297 F.3d 1255, 1268 (11th Cir. 2002)).
Rule 36(a)(3) provides that a party’s responses or
objections to an RFA are due within 30 days and that an RFA not
answered or objected to by that date is deemed admitted.

Rule

36(b) grants courts discretion to permit an admission to be
withdrawn or amended “if it would promote the presentation of
the merits of the action and if the court is not persuaded that
it would prejudice the requesting party in maintaining or
defending the action on the merits.”

Accord Donovan v. Carls

Drug Co., Inc., 703 F.2d 650, 652 (2d Cir. 1983), rejected on
unrelated grounds by McLaughlin v. Richland Shoe Co., 486 U.S.
128 (1988).

“Rule 36(b) emphasizes the importance of having the

action resolved on the merits, while at the same time assuring
each party that justified reliance on an admission in
preparation for trial will not operate to his prejudice.”

Smith

v. First Nat’l Bank of Atlanta, 837 F.2d 1575, 1577-78 (11th
4

Cir. 1988) (citation omitted).
Rule 36(b) does not require that a withdrawal not prejudice
the requesting party, for withdrawal of a deemed admission will
almost always be to the requesting party’s detriment.

Rather,

it requires no prejudice to the requesting party’s ability to
“maintain[] or defend[] the action on the merits.”
P. 36(b) (emphasis added).

Fed. R. Civ.

“The prejudice contemplated by Rule

36(b) . . . is not simply that the party who obtained the
admission now has to convince the [trier of fact] of its truth.
Something more is required.”

Gwynn v. City of Philadelphia, 719

F.3d 295, 299 (3d Cir. 2013) (quoting Bergemann v. United
States, 820 F.2d 1117, 1121 (10th Cir. 1987)).

This prejudice

to the requesting party’s ability to present its case or its
defenses “relates to special difficulties a party may face
caused by a sudden need to obtain evidence upon withdrawal or
amendment of an admission.”

Kerry Steel, Inc. v. Paragon

Indus., Inc., 106 F.3d 147, 154 (6th Cir. 1997) (citation
omitted).
Courts may consider “whether the moving party can show good
cause for the delay, but they are not required to do so,” Gwynn,
719 F.3d at 298, as Rule 36(b) does not include an “excusable
neglect” requirement.

See FDIC v. Prussia, 18 F.3d 637, 640

(8th Cir. 1994); Charles Alan Wright & Arthur R. Miller, et al.,
8B Fed. Prac. & Proc. Civ. § 2257 (3d ed. 2013) (“Though some of
5

the cases seem to turn on whether the failure to provide a
timely answer was excusable neglect, . . . it would seem that
the test now stated in Rule 36(b) for withdrawal of admissions
is tailored more precisely to the purposes of Rule 36
generally.”); see also In re Durability Inc., 212 F.3d 551, 556
(10th Cir. 2000) (noting, as analogy, that “FRCP 36(b) does not
require the moving party to prove excusable neglect”) (citation
omitted); Hadley v. United States, 45 F.3d 1345, 1348-50 (9th
Cir. 1995) (reversing district court’s denial of defendant’s
motion to withdraw deemed admissions without discussion of the
cause of defendant’s tardiness). 1

Even where the moving party’s

neglect is unjustified, a refusal to permit withdrawal of deemed
admissions may be an overly harsh sanction when a deemed
admission would be dispositive of the litigation and no unfair
prejudice would result from withdrawal.
Here, there is no question that permitting withdrawal and
amendment of the deemed admissions would “promote the
presentation of the merits of the action,” Fed. R. Civ. P.
As this Court has previously noted, some courts have questioned
whether Rule 6(b)’s “excusable neglect” requirement should be
imported into Rule 36(b), or similarly whether Rule 6(b), and
not Rule 36(b), should apply to requests to withdraw deemed
admissions. See Baker v. David A. Dorfman, PLLC, 99 Civ. 9385
(DLC), 2000 WL 420551, at *6 (S.D.N.Y. Apr. 17, 2000) (citing
Sea-Land Serv., Inc. v. Citihope Int’l, Inc., 176 F.R.D. 118,
122 n.10 (S.D.N.Y. 1997)). The majority position, that
excusable neglect need not be shown, is more persuasive, as Rule
36(b) “is tailored more precisely to the purposes of Rule 36
1

6

36(b), as the deemed admissions go to the “ultimate issues” in
this litigation and may well be dispositive of the action.
Hadley, 45 F.3d at 1347.

See

In particular, defendants are deemed

to have admitted that the Accused Products are “counterfeit” and
infringe plaintiffs’ trademarks and copyright, that defendants
knew of this when selling them, and that any of defendants’
rights with respect to its Isis Cross Design were abandoned.

No

meaningful “presentation of the merits” of this action
concerning infringement of intellectual property rights would be
possible unless these admissions are withdrawn and amended by
the January 31 Responses.
And plaintiffs have not established any countervailing
prejudice to their ability to maintain their case “on the
merits” that would result from withdrawal and amendment.
Plaintiffs’ RFAs, for the most part, were not attempts to narrow
the issues for trial to the parties’ core disputes, but rather
asked defendants to concede much or all of the litigation by
admitting to intentional infringement of plaintiffs’ rights,
despite the fact that defendants had flatly denied such
infringement in their answers.

Plaintiffs have not suggested

that they were unfairly prejudiced by relying on these
admissions, nor could they reasonably claim surprise at
defendants’ continued (although belated) denials.
generally.”

Plaintiffs

Wright & Miller, 8B Fed. Prac. & Proc. Civ. § 2257.
7

have had the January 31 Responses for months, and have known
since defendants filed their answer to plaintiffs’ initial
complaint on July 17, 2013 that defendants deny that they are
selling “Counterfeit Jewelry”; that they are intentionally
infringing upon Tory Burch’s intellectual property rights; that
they have been falsely representing that they have an agreement
with Tory Burch to sell jewelry bearing the TT Designs; and that
they know the Accused Products “will be mistaken for genuine,
high-quality Tory Burch Jewelry.”

Fact discovery remains open

until April 25, and plaintiffs should have been attempting to
gather evidence of intentional infringement throughout the
discovery period.
Plaintiffs simply argue that “the withdrawal of deemed
admissions, some of which are case dispositive, [would]
prejudice Plaintiffs, because the withdrawal would drastically
affect Plaintiffs’ position on the merits, as well as the
information Plaintiffs must endeavor to obtain in discovery to
prove the previously deemed admissions.”

The mere fact that

plaintiffs will bear the burden of proving their claims -- that
is, the bare fact that plaintiffs must win on the merits -- does
not establish prejudice to their ability to “maintain . . . the
action on the merits.”

Fed. R. Civ. P. 36(b).

That plaintiffs

requested so many admissions of ultimate liability in this case,
despite knowing defendants had denied these requested admissions
8

in their answers, underscores that plaintiffs’ RFAs were largely
made “in the hope that [defendants] w[ould] simply concede
essential elements” or would miss the 30-day deadline to
respond.

Conlon, 474 F.3d at 622.

The Court will not exercise

its discretion to protect such deemed admissions.
Plaintiffs also argue that defendants’ motion should be
denied because defendants’ failure to timely respond to the RFAs
is part of a pattern of missing discovery deadlines.

While this

may be so, it does not outweigh the fact that denying withdrawal
will likely bar any presentation of the merits of this action,
and that withdrawal will not impose any unfair prejudice on
plaintiffs.

Plaintiffs have previously moved for sanctions

based on defendants’ tardiness, which the Court denied without
prejudice to renewal later in this litigation. 2

If appropriate,

plaintiffs may renew that motion at a later date.

CONCLUSION
Defendants’ March 17, 2014 motion to withdraw and amend
Plaintiffs also briefly argue that defendants’ motion is really
a motion to reconsider the Court’s denial of plaintiffs’ March 3
request for a conference on this topic and permission to
withdraw, and that defendants have failed to meet the high bar
for reconsideration. Yet, Rule 36(b) requires that a request
for withdrawal and amendment be done by “motion,” not by a twopage letter requesting “an informal conference with the Court to
resolve [a] pretrial dispute” concerning withdrawal.
Accordingly, the standard for reconsideration does not apply
here.
2

9

deemed admissions is granted.

SO ORDERED:
Dated:

New York, New York
April 4, 2014
____________________________
DENISE COTE
United States District Judge

10