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Sream, Inc. v. Superior Discount, LLC

United States District Court, E.D. Louisiana

May 10, 2019

SREAM, INC., Plaintiff
v.
SUPERIOR DISCOUNT, LLC, Defendant

         SECTION: “E” (1)

          ORDER AND REASONS [1]

          SUSIE MORGAN UNITED STATES DISTRICT JUDGE.

         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 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 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;
(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 ...

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