Opinion
Civil Action No. 05-cv-00267-EWN-PAC.
December 12, 2005
ORDER
In this trademark infringement case, pretrial case management was referred to the undersigned in a February 11, 2005 General Case Management Order. Now before the Court is defendant InfoSpace's Motion for Leave to File Supplemental Counterclaim and Request for Trial by Jury, Doc. #44. 9 Squared does not oppose the addition of a new counterclaim, but does oppose the jury request. A response, an "errata," and a reply to the motion have been filed. I heard oral argument on December 9, 2005.
I.
A. Counterclaim
Rule 15 applies to a motion to amend a complaint or an answer. Fed.R.Civ.P. 15(a) provides for liberal amendment of pleadings. Under well-established law, leave to amend is a discretionary matter which is left to the trial court to determine. Foman v. Davis, 371 U.S. 178, 182 (1962); Viernow v. Euripides Devel. Corp., 157 F.3d 785, 799 (10th Cir. 1998). Amendment under the rule has been freely granted. Castleglenn, Inc. Resolution Trust Company, 984 F.2d 1571 (10th Cir. 1993) (internal citations omitted). Refusing leave to amend is justified upon a showing of undue delay, undue prejudice to the opposing party, bad faith or dilatory motive. Las Vegas Ice Cold Storage Co. v. Far West Bank, 893 F.2d 1182, 1185 (10th Cir. 1990).
Notwithstanding Rule 15's liberal application, this court has required good cause under Fed.R.Civ.P. Rule 16(b), to amend a complaint after the Scheduling Order's deadline has passed. See Colorado Visionary Academy v. Medtronic, Inc., 194 F.R.D 684, 688 (D. Colo. 2000) (M.J. Boland) (denying motion to amend complaint for the failure to show good cause) ("`good cause' means that scheduling deadlines cannot be met despite a party's diligent efforts.") In other words, this court may "modify the schedule on a showing of good cause if [the deadline] cannot be met despite the diligence of the party seeking the extension." Pumpco, Inc. v. Schenker Intern., Inc., 204 F.R.D. 667, 668 (D. Colo. 2001) (M.J. Boland) (internal citations omitted).
B. Jury Demand
The Seventh Amendment provides that "(i)n suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved." The amendment has been construed to embrace all suits which are not in equity and not under admiralty jurisdiction. Parsons v. Bedford, 3 Pet. 433, 446-447, 7 L.Ed. 732 (1830).
Rule 38, Fed.R.Civ.P. governs the procedure to be used for jury demands. Rule 38 (b) provides:
Demand. Any party may demand a trial by jury of any issue triable of right by a jury by (1) serving upon the other parties a demand therefor in writing at any time after the commencement of the action and not later than 10 days after the service of the last pleading directed to such issue, and (2) filing the demand as required by Rule 5(d). Such demand may be indorsed upon a pleading of the party.
Rule 38(b), Fed.R.Civ.P.
The right to a jury trial can be waived. United States v. Moore, 340 U.S. 616, 621 (1951). Rule 38 also addresses waiver of the right to a jury as follows: "(d) Waiver. The failure of a party to serve and file a demand as required by this rule constitutes a waiver by the party of trial by jury." Rule 38(d), Fed.R.Civ.P.
Once a jury demand has been made, it "may not be withdrawn without the consent of the parties" id., and then only through an oral or written stipulation of all parties in accordance with Fed.R.Civ.P. 39(a) which states:
[w]hen trial by jury has been demanded as provided in Rule 38, the action shall be designated upon the docket as a jury action. The trial of all issues so demanded shall be by jury, unless (1) the parties or their attorneys of record, by written stipulation filed with the court or by an oral stipulation made in open court and entered in the record, consent to trial by the court sitting without a jury . . .Rule 39(a), Fed.R.Civ.P.
II.
A. Supplemental Counterclaim
InfoSpace contends that because two trademark registrations occurred after the filing of InfoSpace's answer and counterclaims in response to the second amended complaint, it could not have added the subject counterclaim in its original answer, and now moves to do so. I have not been provided any information to the contrary, and plaintiff has no objection to the additional infringement counterclaim. Accordingly, although the scheduling order deadline for amendment of pleadings was June 16, 2005, see May 2, 05 Scheduling Order at 7, InfoSpace has "good cause" under Rule 16(b), Fed.R.Civ.P. to amend its answer and counterclaims to add the supplemental trademark infringement counterclaim because the claim was not available until recently and InfoSpace thus could not have met the scheduling order's deadline despite its diligent efforts. See Pumpco, 204 F.R.D. at 668. Accordingly, the supplemental counterclaim will be allowed.
B. Jury Demand
InfoSpace further moves to amend its answer to include a jury demand. Under Rule 38, a jury demand must be made at any time between the commencement of the action and within ten days of the service of the last pleading directed to the issue. See Rule 38(b), Fed.R.Civ.P.
Plaintiff filed its complaint on February 10, 2005, in which it asked for declaratory and injunctive relief, attorney fees and costs, and a jury. See Doc. # 1 at 11-13. That complaint was not served on defendants. See Doc # 5, ¶ 2. Plaintiff then was ordered to file an Amended Complaint, to effect service on defendants, and to appear for a scheduling conference. See Doc. # 7 at 1. The Amended Complaint was filed March 2, 2005, in which plaintiff again asked for declaratory and injunctive relief, but eliminated the jury demand. See Doc. # 8 at 12-13. The first amended complaint also was not served on InfoSpace. See Doc. #9, ¶ 7. Plaintiff then moved to file a Second Amended Complaint, see Doc. #9, which was permitted, and the Second Amended Complaint was filed on March 22, 2005. In the Second Amended Complaint, plaintiff again requested declaratory and injunctive relief and attorney fees and costs, but did not demand a jury. See Doc. #12 at 12-14. The Second Amended Complaint was the only complaint served on InfoSpace in this action. See Doc. # 13.
On or about April 20, 2005, defendants answered only the Second Amended Complaint, asserted several counterclaims and affirmative defenses, and asked for injunctive relief, an accounting of profits, and money damages. See Doc. #14. InfoSpace did not demand a jury. See id. at 10-11. In its Reply to InfoSpace's counterclaims, which was served on InfoSpace, 9 Squared included a demand for a jury "on all issues triable thereto." See errata, Doc. # 49 and Reply, Doc. # 17, at 5.
I find that, for InfoSpace to have complied with Rule 38(b) before 9 Squared filed its Reply to InfoSpace's counterclaims on May 13, 2005, InfoSpace's jury demand had to be made within ten days of April 20, 2005, the date the last pleading directed to the issue was filed, or by April 30, 2005. InfoSpace did not demand a jury within that time frame.
The Scheduling Order states that trial will be to the Court. See Doc. #16 at 12. The Preliminary Pretrial Order, Doc. # 36 at 10 and the Amended Preliminary Pretrial Order, Doc. # 41 at 9, both state that the trial will be to a jury. The indication of a trial by jury in both preliminary pretrial orders appears to be based on the parties' attorneys' mutual misunderstanding. Compare InfoSpace's Motion, Al-Salam Declaration, Doc. #44-2 at ¶¶ 5-7 with Pl. Response, Prince Declaration ¶¶ 3-7.
The failure to file a timely demand is a waiver of the right to a jury. Rule 38(d), Fed.R.Civ.P. InfoSpace argues that it did not waive its right to a jury. InfoSpace claims that it "relied upon" plaintiff's first complaint containing the jury demand.
Once the jury demand is made, InfoSpace further argues, it cannot be withdrawn without the consent of all parties. InfoSpace cites Auwood v. Harry Brandt Booking Office, Inc., 100 F.R.D. 804 (D. Conn. 1984) in support. The Auwood court held that "[w]here plaintiffs' original complaint is accompanied by a general jury demand, timely under Fed.R.Civ.P. 38(b), plaintiffs' failure to reassert or restate the jury demand in subsequent amended complaints which add new defendants without affecting the basic character of the litigation does not constitute a waiver of the right of trial by jury as to the subsequently added defendants under Fed.R.Civ.P. 38(d)." 100 F.R.D. 805.
Auwood is distinguishable. In Auwood, there was an original complaint with a jury demand followed by five amended complaints. Auwood does not indicate whether the original complaint was served on defendants as required by Rule 38(b) ("[a]ny party may demand a trial by jury of any issue triable of right by a jury by (1) serving upon the other parties a demand therefor in writing. . .) (emphasis supplied). Assuming, because there is no discussion to the contrary, that the original complaint with a jury demand was served on the Auwood defendant, then the jury demand was properly made and the Auwood defendant had the right to rely on the demand even though it was not reasserted in four subsequent amended complaints, but was again requested in the fifth and final amended complaint. I find that here, InfoSpace cannot rely upon 9 Squared's jury demand in plaintiff's original complaint.
In order to trigger the waiver or consent provisions of Rule 38, or the procedural consent withdrawal provision of Rule 39, the jury demand must be made "as provided in Rule 38 ("[w]hen trial by jury has been demanded as provided in Rule 38 . . .) See Rule 39, Fed.R.Civ.P. Compliance with Rule 38(b) means that the pleading demanding a jury must be served as the Rule expressly states. See, e.g., Sunenblick v. Harrell, 145 F.R.D. 314, 317 (S.D.N.Y. 1993) (a "party who fails to serve a jury demand in the manner specified by Rule 38 is deemed to have waived its right to a trial by jury on the issues framed by the pleadings at that juncture.")
In this case, the original complaint was not served upon InfoSpace and therefore the original complaint's jury demand was not made as provided in Rule 38. As a result, InfoSpace was not entitled to rely upon the jury demand made in the original complaint. Since InfoSpace was not entitled to rely upon the original jury demand in the original complaint, Rule 39, requiring the consent of all parties to waive the jury, could not have applied to any pleadings prior to plaintiff's May 13, 2005 jury demand in its Reply to InfoSpace's counterclaims.
InfoSpace argues also that it has a right to demand a jury upon the filing of its supplemental counterclaim, because it is the last pleading directed to the issue under Rule 38, and the last pleading directed to the issue must be decided on a "claim by claim basis," relying upon Huff v. Dobbins, et al, 243 F.3d 1086 (7th Cir. 2001). I find InfoSpace's reliance is misplaced. In Huff, the plaintiff made a jury demand 16 months after she filed her second amended complaint, claiming that it was timely because defendants filed motions for summary judgment and did not answer the second amended complaint. Huff held that the issue to be tried had been before the court "for a very long time," and that no new factual issues had been raised in the second amended complaint, so that plaintiff's untimely demand resulted in a waiver of a jury.
InfoSpace argues that it would have been impossible to demand a jury trial until now because there was no claim for infringement of registered trademarks until the trademarks were registered by the U.S. Patent and Trademark Office, which registration occurred after InfoSpace's answer was filed. While that contention may arguably be correct with respect to a right to a jury on the supplemental counterclaim, the supplemental counterclaim does not revive the waived right to a jury on the claims plaintiff alleged in the Second Amended Complaint. See In Re Kaiser Steel Corp., 911 F. 2d 380, 388 (10th Cir. 1990) (amended pleadings will not revive a previously waived right to a jury) (internal citation omitted); and see Communications Maintenance, Inc. v. Motorola, Inc., 761 F.2d 1202, 1208 (7th Cir. 1985) (supplemental pleadings do not extend the jury demand time, except as to any new issues which are raised for the first time by the supplemental pleadings) (internal citation omitted). InfoSpace intends to allege that plaintiff infringed the newly registered trademarks, which averment allegedly addresses new facts in the litigation. InfoSpace also requests injunctive relief and an accounting. That combination of new facts and the possibility of a legal remedy in addition to equitable relief results in at least the right to request a jury for the supplemental counterclaim.
InfoSpace can, in any event, clearly rely upon the jury demand 9 Squared made in its Reply to InfoSpace's counterclaims, with respect to those counterclaims. See Doc. # 17, Reply at 5. Accordingly, InfoSpace's request for a jury trial will be granted as to its counterclaims and its supplemental counterclaim, assuming without deciding, that there is a right to a jury trial on all of those counterclaims.
Because I decide the jury demand issue on this ground, I need not address InfoSpace's arguments concerning prematurity and which claims are triable by a jury, if any.
III.
For the reasons stated, it is herebyORDERED that InfoSpace's Motion for Leave to File Supplemental Counterclaim [filed October 26, 2005], Doc. #44 is granted. InfoSpace shall file a signed Supplemental Counterclaim incorporating the counterclaim as set forth in Exhibits A and B to its motion, Doc. # 44, on or before December 20, 2005. 9 Squared's reply or other response to the Supplemental Counterclaim is to be filed on or before January 6, 2006. It is further
ORDERED that InfoSpace's Request for Trial by Jury [filed October 26, 2005], Doc. # 44 is granted in part and denied in part. InfoSpace may request a jury on its supplemental counterclaim and may rely upon plaintiff's jury demand for a jury demand on InfoSpace's other counterclaims.