HIDDEN CITY PHILADELPHIA v. ABC, INC.

Filing 29

ORDER THAT DEFT ABC, INC.'S MOTION TO DISMISS PLFF'S COMPLAINT (DOC. 21) IS GRANTED FOR THE REASONS STATED IN THE ACCOMPANYING MEMORANDUM. IT IS FURTHER ORDERED HIDDEN CITY PHILADELPHIA'S MOTION FOR LEAVE TO FILE AN AMENDED COMPLAINT (DOC. 26) IS DENIED. THE CLERK OF COURT IS DIRECTED TO MARK THE ABOVE-CAPTIONED CASE CLOSED. SIGNED BY CHIEF JUDGE JUAN R. SANCHEZ ON 3/1/19. 3/1/19 ENTERED AND COPIES E-MAILED.(kw, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
HIDDEN CITY PHILADELPHIA
v.
ABC, INC.

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CIVIL ACTION
No. 18-65

ORDER
AND NOW, this 1st day of March, 2019, upon consideration of Defendant ABC, Inc.’s
Motion to Dismiss Plaintiff’s Complaint, Plaintiff Hidden City Philadelphia’s opposition thereto,
and ABC, Inc.’s reply, and following the parties’ presentation during oral argument held on July
24, 2018, it is ORDERED the Motion (Document 21) is GRANTED for the reasons stated in the
accompanying Memorandum.
It is further ORDERED Hidden City Philadelphia’s Motion for Leave to File an
Amended Complaint (Document 26) is DENIED.1

1

Hidden City moves for leave to amend its Complaint so that it may add a common law
trademark infringement claim, formally remove its commercial disparagement claim, and reduce
its damages so that the case may be remanded back to state court. A district court has discretion
to deny a request to amend “if it is apparent from the record that (1) the moving party has
demonstrated undue delay, bad faith or dilatory motives, (2) the amendment would be futile, or
(3) the amendment would prejudice the other party.” Hill v. City of Scranton, 411 F.3d 118, 134
(3d Cir. 2005).
Here, the Court finds that the proposed amendments would be futile. The proposed claim
for common law trademark infringement under Pennsylvania law has the same essential elements
as Hidden City’s trademark infringement claim under the Pennsylvania Trademark Act. See
Fetzer Co. v. Gehring, 288 F.Supp. 2d 696, 703 n.7 (E.D. Pa. 2003) (noting that the federal and
Pennsylvania statutes governing trademark infringement are “identical except that the
Pennsylvania law narrows the focus to acts within the Commonwealth”); Mateson Chemical
Corp. v. Vernon No. 96-7914, No.CIV.A. 96-7914, 2000 WL 796737 *5 n.7 (E.D. Pa. May 9,
2000) (“Under Pennsylvania law[,] a common law trademark infringement action is governed by
the same standards as an action brought under the [the federal statute governing trademark
infringement].”). The principal difference between a Pennsylvania statutory trademark
infringement claim and common law claim is that the statutory claims require a registered
trademark, see 54 Pa. Cons. Stat. §§ 1123, 1125, which Hidden City does not have. While the
lack of a registered trademark would not preclude Hidden City’s common law infringement

The Clerk of Court is DIRECTED to mark the above-captioned case CLOSED.

BY THE COURT:

/s/ Juan R. Sánchez
Juan R. Sánchez, C.J.

claim, this claim would still be subject to the same First Amendment defense raised by ABC
against Hidden City’s statutory infringement claim. Cf. Medina v. Dash Films, Inc., No.
15cv2551, 2016 WL 3906714, at *5 (S.D.N.Y. July 14, 2016) (explaining that the same First
Amendment considerations that limit a cause of action under the federal trademark statute limit
common law claims of trademark infringement under New York state law). Because Hidden
City’s statutory trademark infringement claim is being dismissed on these First Amendment
grounds, see Mem. Op. 5-9, Mar. 1, 2019, this proposed amendment would be futile.
As to Hidden City’s request to formally remove its commercial disparagement claim, it
has already withdrawn this claim during oral argument. And because “a plaintiff following
removal cannot destroy federal jurisdiction simply by amending a complaint that initially
satisfied the monetary floor,” see Angus v. Shiley Inc., 989 F.2d 142, 145 (3d Cir. 1993), Hidden
City’s desire to reduce its damages to divest the Court of jurisdiction would also be futile.
Hidden City’s motion for leave to amend its Complaint is therefore denied. See In re Burlington
Coat Factory Sec. Litig., 114 F.3d 1410, 1434 (3d Cir. 1997) (explaining that while “[t]he court
should freely give leave [to amend its pleading] when justice so requires,” leave need not be
granted when the proposed amendment would be futile).
2