Opinion
Case No. 0:22-cv-60026-KMM
2023-01-14
OMEGA, SA, et al., Plaintiffs, v. The INDIVIDUALS, BUSINESS ENTITIES, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE "A", Defendants.
T. Raquel Wiborg-Rodriguez, Virgilio Gigante, Stephen Michael Gaffigan, Stpehen M. Gaffigan, P.A., Fort Lauderdale, FL, for Plaintiffs.
T. Raquel Wiborg-Rodriguez, Virgilio Gigante, Stephen Michael Gaffigan, Stpehen M. Gaffigan, P.A., Fort Lauderdale, FL, for Plaintiffs. ORDER K. MICHAEL MOORE, UNITED STATES DISTRICT JUDGE
THIS CAUSE came before the Court upon Plaintiffs Omega SA, Blancpain SA, Compagnie des Montres Longines, Francillon S.A., Glashütter Uhrenbetrieb GmbH, Hamilton AG, Rado Uhren AG, Tissot SA, Certina AG, and Mido AG's (collectively, "Plaintiffs") response ("Resp.") (ECF No. 67) to the Court's Order to Show Cause (ECF No. 65) as to whether permissive joinder of 108 Defendants in this trademark infringement action is proper under Federal Rule of Civil Procedure 20. Upon a review of the response, the Amended Complaint ("Am. Compl.") (ECF No. 25), and the record evidence offered in support of the request for a preliminary injunction (ECF Nos. 8, 17), the Court concludes that joinder is improper.
I. BACKGROUND
Plaintiffs are several subsidiaries of the Swatch Group Ltd. who bring this trademark dispute against 108 foreign-based "individuals, business entities of unknown makeup, or unincorporated associations" ("Defendants") for alleged infringement of one or more of Plaintiffs' registered trademarks. See generally Am. Compl. Plaintiffs sought and obtained a temporary restraining order and preliminary injunction against the 108 Defendants named in "Schedule A." See (ECF Nos. 12, 41). The Court subsequently ordered Plaintiffs to show cause as to whether joinder of these Plaintiffs and these Defendants under Federal Rule of Civil Procedure 20 is proper. (ECF No. 65).
II. APPLICABLE LAW
"On motion or on its own, the court may at any time, on just terms, add or drop a party. The court may also sever any claim against a party." Fed. R. Civ. P. 21. Federal Rule of Civil Procedure 20(a)(2) provides, in relevant part: "Persons—as well as a vessel, cargo, or other property subject to admiralty process in rem—may be joined in one action as defendants if: (A) any right to relief is asserted against them jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and (B) any question of law or fact common to all defendants will arise in the action." Fed. R. Civ. P. 20(a)(2) (emphasis added). Thus, permissible joinder under Rule 20 requires, in part, a right to relief to be asserted against each defendant, jointly, severally, or in the alternative with respect to, or arising out of, the same transaction, occurrence, or series of transactions or occurrences. Id. "The district court has broad discretion to join parties or not and that decision will not be overturned as long as it falls within the district court's range of choices." Swan v. Ray, 293 F.3d 1252, 1253 (11th Cir. 2002).
The Eleventh Circuit has explained that, "[i]n determining what constitutes a transaction or occurrence for the purposes of Rule 20(a), courts have looked for meaning to [Federal Rule of Civil Procedure] 13(a) governing compulsory counterclaims." Alexander v. Fulton County, 207 F.3d 1303, 1323 (11th Cir. 2000), overruled on other grounds by Manders v. Lee, 338 F.3d 1304 (11th Cir. 2003). To that end, "all logically related events entitling a person to institute a legal action against another generally are regarded as comprising a transaction or occurrence." Id. "The 'logical relationship' standard is a 'loose' one that 'permits a broad realistic interpretation in the interest of avoiding a multiplicity of suits.' " Rhodes v. Target Corp., 313 F.R.D. 656, 659 (M.D. Fla. 2016) (quoting Edwards-Bennett v. H. Lee Moffitt Cancer & Rsch. Inst., Inc., No. 8:13-CV-00853-T-27, 2013 WL 3197041, at *1 (M.D. Fla. June 21, 2013)). However, "[n]otably, similar issues of liability alone are not sufficient to warrant joinder; the claims must also share operative facts." Id. While the Federal Rules of Civil Procedure are construed generously towards "entertaining the broadest possible scope of action consistent with fairness to the parties" and joinder of parties is "strongly encouraged," a district court maintains broad discretion in whether to allow joinder. Vanover v. NCO Fin. Servs., Inc., 857 F.3d 833, 839 (11th Cir. 2017) (quoting United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 724, 86 S.Ct. 1130, 16 L.Ed.2d 218 (1966)); Swan, 293 F.3d at 1253. "Plainly, the central purpose of Rule 20 is to promote trial convenience and expedite the resolution of disputes, thereby eliminating unnecessary lawsuits." Alexander, 207 F.3d at 1323.
III. DISCUSSION
In their response to the Order to Show Cause, Plaintiffs urge the Court to exercise its discretion to allow the action to proceed against 108 Defendants pursuant to Rule 20. See generally Resp. Plaintiffs contend that Defendants are properly joined under the first prong of Rule 20(a)(2) because "Defendants are 'concurrently employing and benefitting from substantially similar advertising and marketing strategies based, in large measure, upon an illegal use of counterfeits and infringements of one or more of Plaintiffs' Marks.' " Id. at 8-9 (quoting Am. Compl. ¶ 87).
This Court joins many others in holding that a plaintiff cannot satisfy Rule 20's requirements by merely alleging that multiple defendants have infringed the same patent or trademark. See Ilustrata Servicos Design, Ltda. v. P'Ships & Unincorporated Ass'ns, No. 21-CV-05993, 2021 WL 5396690, at *2 (N.D. Ill. Nov. 18, 2021); Estee Lauder Cosms. Ltd. v. P'Ships & Unincorporated Ass'ns, 334 F.R.D. 182, 187 (N.D. Ill. 2020); Slep-Tone Ent. Corp. v. Roberto, No. 12-CV-5750, 2013 WL 5748896, at *3 (N.D. Ill. Oct. 22, 2013); ThermaPure, Inc. v. Temp-Air, Inc., No. 10-CV-4724, 2010 WL 5419090, at *4 (N.D. Ill. Dec. 22, 2010); SB Designs v. Reebok Int'l, Ltd., 305 F. Supp. 2d 888, 892 (N.D. Ill. 2004). One defendant's alleged trademark infringement does not necessarily arise out of the same transaction, occurrence, or series of transactions or occurrences as another's unrelated infringement of the same mark. NFL Props. LLC v. P'Ships & Unincorporated Ass'ns, No. 21-CV-05522, 2021 WL 4963600, at *2 (N.D. Ill. Oct. 26, 2021). When the defendants are not affiliated with one another, "there is no evidentiary overlap in proving liability for the alleged infringement." Id. And one defendant's defenses do not depend on that of an unrelated codefendant. Id.
Here, upon examination of the pleaded facts, the Court is not persuaded that Defendants' conduct is sufficiently logically connected such that the Court can determine that each Defendant's conduct arises out of the same transaction or occurrence or series of transactions or occurrences. Instead, Plaintiffs essentially ask the Court to permit suit against over one hundred apparently independent Defendants alleged—upon information and belief—to infringe upon various trademarks registered by Plaintiffs. Plaintiffs offer a list of over forty different trademarks and claim that "Defendants are each promoting, advertising, distributing, selling, and/or offering for sale goods in interstate commerce using counterfeits and confusingly similar imitations of one or more of the [trademarks]" through various websites and e-commerce stores. See Am. Compl. ¶ 28 (emphasis added). Put another way, Plaintiffs allege that "one or more" trademarks are allegedly being infringed by various Defendants without any clear statement as to which Defendant infringes on which mark(s). As such, the Court finds that Plaintiffs have not provided a sufficient basis for the Court to determine that the claims against each Defendant arise out of the same transaction, occurrence, or series of transactions or occurrences as needed to properly join these Defendants in one action. See NFL Props. LLC, 2021 WL 4963600, at *3 (finding joinder improper because inter alia plaintiff failed to allege that every defendant used and sold the same trademarked image).
Plaintiffs' broad, conclusory allegations of connectivity do not establish a sufficient connection between Defendants to permit joinder. See Ilustrata Servicos Design, Ltda., 2021 WL 5396690, at *2 (finding allegations insufficient to permit joinder in trademark infringement action despite allegations of common features among seller defendants including "user name registration patterns, unique shopping cart platforms, accepted payment methods, check-out methods, meta data, illegitimate SEO tactics, HTML user-defined variables, lack of contact information, identically or similarly priced items and volume sales discounts, similar hosting services, similar name servers, and the use of the same text and images"). The Amended Complaint in this matter alleges that there are 108 distinct, foreign-based e-commerce website operators infringing Plaintiffs' protected marks under different seller IDs across multiple e-commerce platforms. See generally Am. Compl. However, "[s]imply committing the same type of violation in the same way does not link defendants together for the purposes of joinder." AF Holdings, LLC v. Does 1-1058, 752 F.3d 990, 998 (D.C. Cir. 2014).
Additionally, even if the technical requirements of Rule 20 were met, the Court finds that joinder would be improper in this matter. As recognized by other courts, joinder of numerous defendants in one action undermines judicial economy where the court must still evaluate the evidence submitted against each Defendant in support of liability and damages. See Estee Lauder Cosms. Ltd., 334 F.R.D. at 189 (noting that this "is especially true in the ex parte setting of a temporary restraining order, as well as for default-judgment motions). The Court also finds Plaintiffs' proposed joinder prejudicial to Defendants as it unduly complicates the action against them, requiring each to monitor filings and wade through evidence pertaining to dozens of potentially unrelated codefendants. Moreover, the joinder proposed by Plaintiffs yields an enormous financial benefit to Plaintiffs, while Defendants must now defend against a significantly more complicated action than they might otherwise face. In view of the foregoing, the Court declines to exercise its discretion to join these Defendants pursuant to Rule 20.
Plaintiffs' proposed joinder avoids payment of approximately $40,000 in filing fees. 28 U.S.C. § 1914; Court Fees, U.S. Dist. Ct. for the S. Dist. of Fla., https://www.flsd.uscourts.gov/court-fees.
IV. CONCLUSION
UPON CONSIDERATION of the Motion, the pertinent portions of the record, and being otherwise fully advised in the premises, it is hereby ORDERED AND ADJUDGED that:
1. The preliminary injunction (ECF No. 41) is VACATED as to all Defendants listed in Schedule A other than Defendant Number 2;
2. All Defendants, with the exception of Defendant Number 2, are SEVERED from this action;
3. All claims against the severed Defendants are DISMISSED without prejudice for refiling in separate actions consistent with this Order;
4. The Clerk of Court SHALL RELEASE the bond posted by Plaintiffs;
5. The Clerk of Court is instructed to CLOSE this case. All pending motions, if any, are DENIED AS MOOT. The trial and all pretrial hearings are CANCELLED.
DONE AND ORDERED in Chambers at Miami, Florida, this 14th day of January, 2023.