Case 1:13-cv-03669-DLC Document 79 Filed 03/31/14 Page 1 of 10
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`PRELIMINARY STATEMENT
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`Pursuant to Federal Rule of Civil Procedure 15(a)(2), Defendants, Lin & J International,
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`Inc., Youngran Kim, LJ Brand, Inc. and NJ Lin & J International, Inc. (hereinafter “Lin & J” or
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`“Defendants”), by their attorney, Howard Z. Myerowitz of Song Law Firm, respectfully submit
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`this Memorandum of Law in support of the present motion for leave to file a Second Amended
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`Answer with Counterclaim, which adds a count seeking a declaration of invalidity of one of Tory
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`Burch’s alleged copyrights and which corrects or supplements allegations from the previously
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`filed First Amended Answer.
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`Plaintiffs, River Light V, L.P and Tory Burch LLC (hereinafter “Tory Burch” or
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`“Plaintiffs”), allege that Lin & J is selling counterfeit Tory Burch jewelry and have sued Lin & J
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`for trademark infringement and various related causes of action. See Pls.’ Compl (Dkt. No. 1),
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`Pls.’ First Am. Original Compl. (Dkt. No. 43), and Pls.’ Second Am. Compl. (Dkt. No. 59). Lin
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`& J has denied those allegations and countersued for Tory Burch’s infringement of its
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`intellectual property, tortious interference with its business relations, defamation and abuse of
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`process. See First Am. Answer with Countercl. (Dkt. No. 23). The present motion is made
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`concerning a copyright that has been registered since the Original Complaint was fined,
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`regarding allegations that are new to Plaintiffs’ First and Second Amended Complaints, and to
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`update Lin & J’s allegations of the previous Answer, which was filed very early on in this
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`litigation. Lin & J attaches its proposed Second Amended Answer hereto as Exhibit A.
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`STATEMENT OF FACTS
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`As part of a first wave of lawsuits filed against Lin & J and its customers, Tory Burch
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`filed its Original Complaint on May 31, 2013. See Pls.’ Compl. Defendants responded with their
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`Answer and Counterclaim on July 18, 2013. See Defs.’ Answer, Affirmative Defenses and
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`Countercl. (Dkt. No. 10). Just over a month later, Defendants amended their Counterclaim to
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`Case 1:13-cv-03669-DLC Document 79 Filed 03/31/14 Page 2 of 10
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`hold Plaintiffs to account for their egregious abuse of the litigation process, which includes filing
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`lawsuits based on Lin & J’s Isis Cross Products against at least eight of Lin & J’s customers in
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`Federal Courts across the country (hereinafter “Other Isis Cross Lawsuits”). See Defs.’ First Am.
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`Answer, Affirmative Defenses and Countercl., Adding Count for Abuse of Process (Dkt. No.
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`23).
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`At the time of Defendants’ filing of the First Amended Answer with Counterclaim, Tory
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`Burch had yet to file an additional wave of lawsuits, one reflection of which is that the Amended
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`Answer states that Tory Burch “filed at least three lawsuits against Lin & J’s customers.” Defs.’
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`Counter., ¶ 33 (emphasis added); see also Abuse of Process Appendix, annexed hereto as
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`Exhibit B. While some have made business decisions to settle with Tory Burch, Defendants in at
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`least two of the Other Isis Cross Lawsuits have filed motions to stay their cases. Though a judge
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`has yet to decide these motions, Tory Burch did agree to a temporary stay of the case filed
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`against customer Wona Trading, Inc. pending the resolution of Lin & J’s Order to Show Cause
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`for Preliminary Injunction and Temporary Restraining Order. See Dkt. No. 38, River Light V,
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`L.P. and Tory Burch LLC v. Wona Trading, Inc and Ja Sook Yang, C.A. No. 1:13-cv-03667-RA,
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`Southern District of New York.
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`In addition, Plaintiffs received copyright registration for their new logo, “
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`(hereinafter “New T over T with Split Design”), on June 11, 2013, shortly after they instituted
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`the instant suit. That logo was registered under U.S. Reg. No. VA 1-880-129 and is the subject of
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`the proposed additional counterclaim. Neither the existence of this copyright nor the fact that
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`Plaintiffs had applied for this copyright appeared in Plaintiffs’ Original Complaint or Initial
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`Disclosures.
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`With Defendants’ consent, Plaintiffs amended their Complaint on February 11, 2014, as
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`depositions were ongoing. See Pls.’ First Am. Original Compl. In consultations between
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`respective Counsel subsequent to depositions, Plaintiffs sought Defendants’ consent to dismiss
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`the claims against Lani Kim (incorrectly named in the Original Complaint) and to add the other
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`Lin & J Defendants. Defendants graciously consented. Plaintiffs, then, did not file their Second
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`Amended Complaint until March 4, and such was not served on Defendants until March 12.
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`After hearing that the Second Amended Complaint had been filed but prior to being
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`served, on March 10, Defendants, in good faith, sought Plaintiffs’ consent to file a Second
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`Amended Answer, adding a count for declaration of invalidity and updating other allegations. In
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`subsequent conversations and emails, Plaintiffs’ counsel expressed vague concerns that
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`consenting to Defendants’ request might prejudice Plaintiffs’ rights to move to dismiss the
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`claims. Plaintiffs’ counsel did, however, indicate that she would discuss the matter with her
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`client and consider the request, and Defendants waited accordingly. On a call on Wednesday,
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`March 26, Plaintiffs relayed their final answer that they would oppose the instant motion,
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`without providing a detailed legal basis for that refusal. Fact Discovery does not close until April
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`25, and Expert Discovery does not close until July 25.
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`Defendants move here for leave to file their Second Amended Answer with
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`Counterclaim, Adding Count for Declaration of Invalidity. Defendants seek to update their
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`allegations of last July and to add a count to invalidate the copyright that has been registered
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`during the pendency of this suit and that was alleged in the recently filed First and Second
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`Amended Complaints.
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`ARGUMENT
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`Rule 15 of the Federal Rules of Civil Procedure states that a “party may amend its
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`pleading only with the opposing party’s consent or the court’s leave,” which is to be “freely
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`give[n] when justice so requires.” Fed. R. Civ. P. 15(a)(2). Though whether to allow a party to
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`amend its pleading is within the discretion of the District Court, the Supreme Court of the United
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`States has interpreted Rule 15 to permit such amendments unless (1) the party seeking to amend
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`has unduly delayed; (2) the party seeking to amend is acting on bad faith or with a dilatory
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`motive; (3) the proposed amendment would cause undue prejudice to the opposing party; or (4)
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`the proposed amendment would be futile. Foman v. Davis, 371 U.S. 178, 182 (1962). Fed. R.
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`Civ. P. 36(b).
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`“The rule in this Circuit has been to interpret this provision [of Rule 15] liberally, ‘to
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`allow a party to amend its pleadings in the absence of a showing by the nonmovant of prejudice
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`or bad faith.’” Garvin v. Sony Music Entm't, 2011 U.S. Dist. LEXIS 114661, 7 (S.D.N.Y. Oct. 3,
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`2011) (quoting Block v. First Blood Assocs., 988 F.2d 344, 350 (2d Cir. 1993)). “Mere delay,
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`however, absent a showing of bad faith or undue prejudice, does not provide a basis for a district
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`court to deny the right to amend.” Block, 800 F.2d at 350 (quoting State Teachers Retirement Bd.
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`v. Fluor Corp., 654 F.2d 843, 856 (2d Cir. 1981). “The non-movant bears the burden of showing
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`prejudice, bad faith and futility of the amendment.” Grant v. Citibank (S.D.), N.A., 2010 U.S.
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`Dist. LEXIS 128824, 19-20 (S.D.N.Y. Dec. 6, 2010) (citing Block, 988 F.2d at 350; 6 CHARLES
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`ALAN WRIGHT & ARTHUR MILLER, FEDERAL PRACTICE AND PROCEDURE §1473 (3d ed. 2010).
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`Defendants respectfully submit that leave should be given for the filing of the Second Amended
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`Answer because Defendants have timely moved for such leave and because no prejudice to
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`Plaintiffs would result from the filing of this valid claim brought in good faith.
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`POINT I
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`LEAVE TO AMEND SHOULD BE GRANTED
`BECAUSE IT WAS TIMELY SOUGHT
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`Motions to amend pleadings, even those that go so far as to add additional parties, can
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`often be granted even at late stages of the litigation. See, e.g., Mendez v. Pizza on Stone, LLC,
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`2012 U.S. Dist. LEXIS 108591 (S.D.N.Y. Aug. 1, 2012) (Cote, J.) (granting leave to amend to
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`add additional party at the summary judgment stage, after fact discovery was closed). Of course,
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`the instant case is not at a late stage. Fact discovery does not close for several weeks. Expert
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`discovery will not close for several months. Motions for summary judgment will not be due for
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`months hence. There can be no suggestion here that this motion is untimely.
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`As explained above, this motion is made chiefly concerning the copyright that was newly
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`asserted in Plaintiffs’ First and Second Amended Complaints, both of which were filed within
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`the last two months. Defendants have only waited this long to move to amend their counterclaim
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`out of respect for Plaintiffs and this Court and out of a desire to avoid further, costly motion
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`practice, but Plaintiffs have forced Defendants to bring this motion. This counterclaim is merely
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`the logical extension of Defendants previous counterclaims, wherein Defendants alleged that
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`Tory Burch, a corporation who has had a T over T logo with a horizontal split for around ten
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`years, is now attempting to rid the market of competitors with products featuring designs based
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`on crosses.
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`POINT II
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`LEAVE TO AMEND SHOULD BE GRANTED
`BECAUSE NO PREJUDICE WILL RESULT
`FROM THIS VALID CLAIM THAT WAS
`BROUGHT IN GOOD FAITH
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`Granting Leave to Amend Will Not Result in Undue Prejudice
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`1.
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` “An amendment causes undue prejudice where it would (i) require the opponent to
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`expend significant additional resources to conduct discovery and prepare for trial; (ii)
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`significantly delay the resolution of the dispute; or (iii) prevent the plaintiff from bringing a
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`timely action in another jurisdiction.” Mendez v. Pizza on Stone, LLC, 2012 U.S. Dist. LEXIS
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`108591, 6 (S.D.N.Y. Aug. 1, 2012) (quotations omitted). “A proposed amendment is considered
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`unduly prejudicial to an opponent when the amendment ‘substantially changes the theory on
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`which the case has been proceeding and is proposed late enough so that the opponent would be
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`required to engage in significant new preparation.’” Román y Gordillo, S.C. v. Bank of N.Y.
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`Mellon Corp., 2014 U.S. Dist. LEXIS 38741, 32-33 (S.D.N.Y. Mar. 20, 2014) (quoting Ruotolo
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`v. City of New York, 514 F.3d 184, 192 (2d Cir. 2008); 6 CHARLES ALLEN WRIGHT, ARTHUR R.
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`MILLER & MARY KAY KANE, FEDERAL PRACTICE AND PROCEDURE: CIVIL 2D, § 1487, at 623
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`(1990 & 2007 Supp.)).
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`“In determining whether an opponent will be unduly prejudiced, courts may also consider
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`‘whether the opponent was otherwise on notice of the new claim, and whether the claim derives
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`from the same facts set forth in the original pleading.’” Roman y Gardillo, supra (quoting Lacher
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`v. C.I.R., 32 F. App'x 600, 603 (2d Cir. 2002)). In any case, “the adverse party’s burden of
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`undertaking discovery, standing alone, does not suffice to warrant denial of a motion to amend a
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`pleading.” United States on behalf of Maritime Admin. v. Continental Ill. Nat’l Bank & Trust
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`Co., 889 F.2d 1248, 1255 (2d Cir. 1989) (citing S.S. Silberblatt, Inc. v. East Harlem Pilot Block-
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`Building 1 Housing Dev. Fund Co., 608 F.2d 28, 43 (2d Cir. N.Y. 1979)).
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`Here, the proposed amendment does not change the focus of Plaintiffs’ Discovery efforts
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`one iota. Plaintiffs have already disclosed information related to the copyright that is the focus of
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`the proposed counterclaim, including the registration. Similarly, Plaintiffs will not need to seek
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`additional Discovery production to defend against the counterclaim because they have already
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`sought (and received) documents related to Defendants’ use in commerce of the Isis Cross
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`Design, which is senior to the T over T with Split Design. Even were Plaintiffs to claim that the
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`addition of this counterclaim requires some additional Discovery, this would not be an argument
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`sufficient to withstand the strong and well-established policy of Rule 15 in favor of liberal
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`amendment. See Continental, supra. Plaintiffs have been on notice for several weeks that
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`Defendants are seeking to amend their Counterclaim and cannot claim that the new counterclaim
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`derives from different facts than the previously filed Counterclaim or that they will be prejudiced
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`by the grant of leave to amend.
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`Likewise, there is no concern here that the addition of this counterclaim and updated
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`information will significantly delay the resolution of this dispute. The updated information
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`includes items that Defendants were already going to prove at trial, and the proposed
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`counterclaim is one which relates to allegations recently pled by Plaintiffs. Plaintiffs have put
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`their just-registered copyright at issue and should not be allowed to now claim that that copyright
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`cannot be contested. The filing of the Second Amended Answer would not prejudice Plaintiffs
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`from continuing their campaign of intimidation and litigation by filing suit elsewhere. Thus,
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`Plaintiffs cannot argue that permitting the filing of the Second Amended Answer will result in
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`undue prejudice.
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`2.
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`This Valid Claim Is Brought in Good Faith
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`Leave to amend may be denied on grounds of futility if the proposed amendment fails to
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`state a legally cognizable claim or fails to raise triable issues of fact. AEP Energy Servs. Gas
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`Holding Co. v. Bank of Am., N.A., 626 F.3d 699, 726 (2d Cir. 2010) (citing Milanese v. Rust-
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`Oleum Corp., 244 F.3d 104, 110-111 (2d Cir. 2001)). At this point in the litigation, with multiple
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`depositions yet to be taken and discovery still well underway, the standard for futility would be
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`that the proposed additional counterclaim does not “contain sufficient factual matter, accepted as
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`true, to ‘state a claim to relief that is plausible on its face’….A claim has facial plausibility when
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`the plaintiff pleads factual content that allows the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662 (2009) (quoting
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`Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).
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`In the proposed additional counterclaim, Lin & J alleges (1) that the Isis Cross Design has
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`been in continuous use in commerce since at least as early as January 20, 2009 on jewelry; (2)
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`that the Copyright Office registered a copyright in Tory Burch’s name in June of 2013; (3) that
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`the dates of creation and first use in commerce of the Isis Cross Design both significantly predate
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`the dates of creation and first use in commerce of the T over T with Split Design; (4) that an
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`actual, present and justiciable controversy exists between Lin & J and Tory Burch regarding the
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`validity of the copyright granted to Tory Burch over the T over T with Split Design; (5) that Tory
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`Burch’s T over T with Split Design is confusingly similar and substantially indistinguishable
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`from the Isis Cross Design; (6) that Tory Burch is using or is planning to use the T over T with
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`Split Design on jewelry and accessories so as to create a likelihood that consumers will be
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`confused between Lin & J’s Isis Cross Products and Tory Burch’s products; and (7) that this
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`Court has jurisdiction and the power to grant Defendants the relief they seek pursuant to 28
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`U.S.C. § 2201. Defendants await Plaintiffs’ opposition to the instant motion but, at the outset,
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`firmly believe that the allegations of the proposed counterclaim make out a prima facie case for
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`seeking a declaration of invalidity of the T over T with Split Design copyright.
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`Moreover, this motion is made in good faith. Defendants continue to seek to hold
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`Plaintiffs to account for their deplorable actions vis-à-vis Defendants and the rest of the
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`marketplace, and the next logical step is to move to invalidate Plaintiffs wrongfully obtained
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`copyright and to update the Counterclaim’s other allegations.
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`CONCLUSION
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`Accordingly, Defendants respectfully submit that this Court should grant Defendants
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`leave to amend their Answer with the filing of the Second Amended Answer, Adding Count for
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`Declaration of Invalidity.
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`Dated: Fort Lee, New Jersey
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`March 31, 2014
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`SONG LAW FIRM, LLC
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`By: /s/ Howard Z. Myerowitz_________
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`Howard Z. Myerowitz, Esq. (HM0972)
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`SONG LAW FIRM LLC
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`Attorneys for Defendants
`400 Kelby Street, 7th Floor
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`Fort Lee, NJ 07024
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`(201) 461-0031
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`hmyerowitz@songlawfirm.com
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`Case 1:13-cv-03669-DLC Document 79 Filed 03/31/14 Page 10 of 10
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`CERTIFICATION OF SERVICE
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`I hereby certify that on March 31, 2014, the forgoing document was served via e-mail
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`upon the following parties:
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`Natalie L. Arbaugh, Esq.
`Fish & Richardson, P.C.
`601 Lexington Ave., 52th Floor
`New York, NY 10022-2611
`Tel: (212) 765-5070
`Fax: (212) 258-2291
`E-mail: arbaugh@fr.com
`Attorneys for Plaintiffs
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`By: /s/ Howard Z. Myerowitz_ _
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`Howard Z. Myerowitz, Esq. (HM0972)
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`SONG LAW FIRM LLC
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`Attorneys for Defendants
`400 Kelby Street, 7th Floor
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`Fort Lee, NJ 07024
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`(201) 461-0031
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`hmyerowitz@songlawfirm.com
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