K&M International, Inc. v. NDY Toy, LLC et al
Opinion and Order. The Court Adopts the Magistrate Judge's Report and Recommendation (Related doc # 131 ). Plaintiff's Motion for Leave to File Second Amended Complaint (Related doc # 59 ) is granted. Judge Christopher A. Boyko on 9/29/2015. (H,CM)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
K&M INTERNATIONAL, INC.,
NDY TOY, LLC, et al.,
CASE NO. 1:13CV771
JUDGE CHRISTOPHER A. BOYKO
OPINION AND ORDER
CHRISTOPHER A. BOYKO, J.:
This matter comes before the Court upon Defendants’ Objections (ECF DKT #138) to
the Report and Recommendation of the Magistrate Judge (ECF DKT #131). For the
following reasons, and after de novo review and consideration of Defendants’ Objections, the
Court ACCEPTS the recommendation of the Magistrate Judge and GRANTS the Motion
(ECF DKT # 59) of Plaintiff, K&M International, for Leave to File Second Amended
On April 8, 2013, K&M filed its Complaint against Defendants, NDY Toy, LLC
(“NDY”), WuJiang Duoyi Craft Co., Ltd. (“Duoyi”), Debra Yager and Helen He, alleging
that Defendants have engaged in a series of unfair and illegal business practices to compete
with K&M in the plush toy market. In its initial Complaint, K&M asserted thirteen causes of
action against Defendants, including a copyright infringement cause of action alleging that
Defendants had infringed upon plush toy designs created and owned by K&M. K&M initially
premised its copyright cause of action upon images of plush toys that had been
publicly displayed on NDY's web site and upon K&M's U.S. Copyright Registration No. VA
1-849173, which covers plush toy designs alleged to be infringed upon by the toys displayed
on NDY's web site.
On July 22, 2014, K&M was granted leave to file a First Amended Complaint.
Therein, K&M alleges “a conspiracy of Shakespearean proportions” in which former
employees Ms. Yager and Ms. He joined forces with manufacturer Duoyi to misappropriate
K&M’s trade secrets and confidential business proprietary information regarding its Wild
Republic collection of plush toys.
Specifically, the First Amended Complaint alleges the following: K&M designs
plush, polyvinyl chloride and other toy products depicting “a wide variety of wild animals,
dinosaurs, and other fanciful creatures.” K&M is the record owner of the copyright
registration related to many of its toy products. It has a “Wild Republic Division” that
distributes its products to toy stores and gift shops throughout the country and worldwide,
with a particular emphasis on zoos, museums and aquariums. Defendants Yager and He are
former employees of K& M and were required to sign confidentiality, non-competition and
non-disclosure agreements. Yager resigned from K&M on October 30, 2010 and He resigned
on July 15, 2011. Duoyi has manufactured and supplied plush toys to K& M since October of
2007. In a September 2011 Business Commitment, Duoyi agreed not to (1) disclose K& M’s
confidential information to third parties, including ex-employees of K&M; or (2) manufacture
products or do any business with K&M’s ex-employees.
On July 16, 2012, Yager, He and Duoyi entered into a business relationship to
form the limited liability company, NDY Toy, LLC, for the alleged purpose of directly
competing with K&M in the plush toy industry. Yager and He are principal owners of
NDY. K&M alleges that Yager, He and Duoyi have used K&M’s copyrighted
plush toy designs to manufacture plush toys which are “virtually identical to K&M’s plush
toys, and have marketed and sold them on NDY’s website, located at www.ndytoy.com.”
These Defendants have also allegedly used K&M’s trade secrets and confidential information
to solicit business from K&M’s existing and potential customers in the zoo, museum and
The pleading amendment deadline was set for November12, 2013 and the non-expert
discovery deadline was set for September 11, 2014.
On October 24, 2013, K& M served a request upon NDY and on June 10, 2014, a
request upon all Defendants, to produce for inspection all plush toy samples that NDY
designed, manufactured, advertised, offered for sale, sold and/or intends to offer for sale.
On June 13, 2014, Defendants produced approximately twenty plush toys for
inspection by K&M’s counsel.
During Defendant Yager’s June 17, 2014 deposition, she testified that Duoyi had
manufactured “about 100" toy samples for NDY, which were “unapproved” by NDY and
which were now in Defendant He’s possession.
On September 19, 2014, K&M filed a Motion to Compel Inspection (ECF DKT #50).
K&M insisted that the “unapproved” toy samples were infringing. Defendants argued that the
only plush toys “at issue” were those depicted in Exhibit B to the Amended Complaint; and
therefore, the “unapproved” toy samples in He’s garage were not relevant. Pursuant to Court
Order, K&M appeared at the Courthouse with thirty-two plush toys from its Wild Republic
collection, while Defendants’ counsel brought multiple large boxes filled with stuffed
On October 30, 2014, K&M filed its Motion for Leave to File Second Amended
Complaint “for the limited purpose of supplementing its copyright infringement claim . . .
with additional copyright registrations owned by K&M for toy designs infringed upon, and
which infringement was revealed for the first time at the October 14, 2014 inspection.”
Upon referral pursuant to Local Rule 72.1, and following further briefing, the
Magistrate Judge recommended granting K&M’s Motion for Leave to File Second Amended
Complaint on February 6, 2015. On February 19, 2015, Defendants filed their Objections to
the Report and Recommendations of the Magistrate Judge.
II. LAW AND ANALYSIS
Standard of Review
Pursuant to Fed.R.Civ.P. 72(b) and 28 U.S.C. § 636(b)(1)(C), the District Court shall
review de novo any finding or recommendation of the Magistrate’s Report and
Recommendation to which specific objection is made. A party who fails to file an objection
waives the right to appeal. U.S. v. Walters, 638 F.2d 947, 950 (6th Cir.1981). In Thomas v.
Arn, 474 U.S. 140, 150 (1985), the Supreme Court held: “[i]t does not appear that Congress
intended to require district court review of a magistrate judge’s factual or legal conclusions,
under a de novo or any other standard, when neither party objects to those findings.”
Local Rule 72.3(b) recites in pertinent part:
The District Judge to whom the case was assigned shall make a de novo
determination of those portions of the report or specified proposed findings or
recommendations to which objection is made and may accept, reject, or
modify, in whole or in part, the findings or recommendations made by the
Put another way, 28 U.S.C. § 636(b) and Local Rule 72.3 authorize the District Court
Judge to address objections by conducting a de novo review of relevant evidence in the record
before the Magistrate Judge. Parties are not permitted, at the district court stage, to raise new
arguments or issues that were not presented to the magistrate. Murr v. United States, 200
F.3d 895, 902 fn1 (6th Cir.2000), citing United States v. Waters, 158 F.3d 933 (6th Cir.1998).
Fed.R.Civ.P. 15(a)(2) reads in part, “The court should freely give leave [to amend]
when justice so requires.” However, this liberal amendment policy is not without limits. The
Sixth Circuit has observed, “[a] motion to amend a complaint should be denied if the
amendment is brought in bad faith, for dilatory purposes, results in undue delay or prejudice
to the opposing party, or would be futile.” Colvin v. Caruso, 605 F.3d 282, 294 (6th
Cir.2010) (citing Crawford v. Roane, 53 F.3d 750, 753 (6th Cir.1995)). “In determining what
constitutes prejudice, the court considers whether the assertion of the new claim or defense
would: require the opponent to expend significant additional resources to conduct discovery
and prepare for trial; significantly delay the resolution of the dispute; or prevent the plaintiff
from bringing a timely action in another jurisdiction.” Phelps v. McClellan, 30 F.3d 658, 663
(6th Cir.1994). “[T]he federal courts have a strong preference for trials on the merits.” Clark
v. Johnston, 413 F.App’x 804, 819 (6th Cir.2011).
Delay, by itself, “does not justify denial of leave to amend.” Morse v. McWhorter,
290 F.3d 800 (6th Cir. 2002). The Sixth Circuit counsels against denying an amendment
“particularly where ... the newly asserted claim would be supported by facts set forth in the
original claim.” Moore v. City of Paducah, 790 F.2d 557, 561 (6th Cir.1986). Writing in
support of a proposed amendment in Morse, 290 F.3d at 801, the Sixth Circuit also noted that
even “another round of motion practice ... does not rise to the level of prejudice that would
warrant denial of leave to amend.”
“A proposed amendment is futile if the amendment could not withstand a Rule
12(b)(6) motion to dismiss.” Rose v. Hartford Underwriters Ins. Co., 203 F.3d 417, 420 (6th
Cir. 2000) (citing Thiokol Corp. v. Dep’t of Treasury, State of Michigan, Revenue Div., 987
F.2d 376, 382-83 (6th Cir.1993)).
Defendants NDY, Yager, He and Duoyi maintain that Plaintiff unduly delayed its
request for leave to file a Second Amended Complaint. Defendants dispute that, at the time of
its Complaint, Plaintiff K&M was only aware of the thirty-two plush animals identified in
Exhibit B. Defendants insist that the proposed amendment is not appropriate because
Plaintiff knew, as early as December of 2012, of the wide array of plush toy animals
displayed on NDY’s website, but elected to pursue copyright infringement claims against
only a few.
Defendants further argue that Yager’s June 2014 deposition testimony revealed the
existence of “unapproved” samples. Her testimony could not reasonably support amendment
of a copyright infringement claim because NDY would not have offered for sale a sample it
rejected, and thus, would not have exercised any right exclusive to the alleged copyright
Moreover, K&M did not require an inspection of sample toys (which ultimately took
place in the Courthouse in October 2014) to decide whether or not to ask the Court for leave
to amend. On July 14, 2014, Defendants provided Plaintiff a CD in native format showing
the plush toys that NDY had been developing for its product line. Three days later, K&M
was provided with clarified illustrations from the CD and a zip file with exceptionally
detailed photographs of the toys. K&M used these illustrations for the deposition of
Defendant He in August 2014.
Defendants object to the finding that K&M was justified in waiting until October 30,
2014 to seek leave to amend.
Defendants contend that their discovery responses were necessarily limited by the
scope of the copyright as alleged in K&M’s Complaint. That is: “K&M has been and is still
the owner and proprietor of all right title and interest in and to the works depicted in the
copyright registration [Copyright Registration VA1-849-173], which is attached hereto as
Exhibit B.” (¶ 60 of the Complaint). NDY, therefore, identified “[s]amples of every plush
toy product that NDY has designed, manufactured, advertised, offered for sale, sold, and/or
intends to offer for sale” that corresponded to Exhibit B. Anything more, according to
Defendants, would be irrelevant to the plush toys at issue, and would not lead to the discovery
of admissible evidence.
Defendants also take the position that Plaintiff’s proposed amendment is futile. As
early as December of 2013, K&M was aware from discovery responses that NDY did not,
itself, create any plush toys. Duoyi designed and made artistic renderings of a number of wild
animals in China, which were critiqued for approval by Defendant He. NDY also purchased
toys on the open market in China. Defendants assert that under copyright law, reproduction
of a copyrighted work may constitute infringement, but only if such reproduction was in the
United States. Every toy NDY ever contemplated offering for sale, but did not design,
publicly display, import, offer for sale or sell, is not relevant to an alleged infringement of
K&M’s Copyright Registration VA 1-849-173.
The Court finds, in the exercise of its own independent review, that Defendants have
demonstrated that K&M did have facts and evidence available to it which could have
triggered the need to amend prior to the expiration of the pleading amendment and discovery
deadlines. However, even if there were delay in this case, the Court does not find that
Defendants are unduly prejudiced. The anticipated amendments will not be wholly new
claims; rather, they will be more expansive copyright infringement allegations. Additional
discovery and renewed dispositive motion practice may be contemplated by both sides in this
litigation. Yet, as the Sixth Circuit has pronounced, more discovery or motion practice,
though burdensome, does not warrant denial of leave to amend.
Furthermore, Defendants suggest that substantive copyright law may bar some of K&
M’s claims. For instance, Defendants argue that the infringement by reproduction must occur
in the United States, and that “unapproved,” rejected samples cannot constitute infringing
products because they are never intended to be offered for sale. These substantive law issues
require the Court to consider matters outside the pleadings, and draw the Court beyond the
bounds of inquiry necessary to rule upon a motion to amend. The development of facts and
evidence, alone, will determine whether any of K&M’s claims against Defendants fail. The
Court cannot, and will not say, at this juncture, that any of the proposed claims are futile.
For these reasons, and after de novo review and consideration of Defendants’
Objections, the Court ACCEPTS the recommendation of the Magistrate Judge and GRANTS
the Motion (ECF DKT # 59) of Plaintiff, K&M International, for Leave to File Second
IT IS SO ORDERED.
s/ Christopher A. Boyko
CHRISTOPHER A. BOYKO
United States District Judge
Dated: September 29, 2015
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