The opinion of the court was delivered by: Hon. Thomas J. Whelan United States District Judge
ORDER GRANTING MANAGEMENT CONFERENCE ORDER TO ALLOW PLAINTIFF TO AMEND ITS COMPLAINT TO THE THIRD CAUSE OF DESERT ACTION AND FOR THE JOINDER OF JOHN LaBARBERA AS A PARTY [Doc. No. 56.] PLAINTIFF'S MOTION TO AMEND THE RULE 16 CASE
On November 18, 2005 Plaintiff Mytee Products, Inc. ("Plaintiff") filed suit in San Diego Superior Court against H.D. Products, Inc. and M.C. Viking Equipment, Co., Inc. (collectively, "Defendant") alleging Lanham Act, breach of contract and unfair business practice violations. On December 14, 2005 Defendant properly removed the action to federal court. (Doc. No. 1.) On March 28, 2006 Magistrate Judge Bencivengo established May 26, 2006 as the motion cut-off date to add additional parties or amend the pleadings. (Doc. No. 14.) Pending before the Court is Plaintiff's motion to modify the Case Management Conference Order for the purposes of amending the Complaint by adding John LaBarbera ("LaBarbera") as a party plaintiff and dropping the third cause of action for breach of contract. (Doc. No. 56.) For the following reasons, the Court GRANTS Plaintiff's Motion.
Plaintiff Mytee is a company that manufactures various industrial cleaning machines. (Pl.'s Mot. 3.) LaBarbera is Mytee's president and majority shareholder, and in 1996 originally registered the "Mytee" trademark at issue in this case.*fn1 (Summ. J. Order 5.) While in 1996 LarBarbera operated under a fictitious business name, in 1998 he formally incorporated as Mytee Products, Inc. (Pl.'s Mot. 6.) Defendant is a purchaser of Plaintiff's products, as well as other equipment. The crux of the parties' dispute concerns Defendant's use of the "Mytee" trademark, and whether and when such use was authorized. For the purposes of this motion, the relevant information is listed below.
On November 18, 2005 Plaintiff sued Defendant in state court for trademark infringement that allegedly took place in 2004 and 2005. On December 14, 2005 Defendant properly removed to the Southern District of California. The case was originally assigned to Judge John S. Rhoades, Sr. On March 28, 2006, following a Case Management Conference ("CMC"), Magistrate Judge Cathy A. Bencivengo issued the first CMC Order ("scheduling order"). (Doc. No. 14.) The order stated that May 26, 2006 was the cut-off date for joining other parties or amending the pleadings.
On June 6, 2006, despite the cut-off, the parties stipulated to Plaintiff's filing a second amended complaint. (Doc. No. 19.) On September 21, 2006 the parties extended most discovery and motion cut-off dates, with the exception of motions to amend the pleadings or add new parties. (Doc. No. 23.) The motion cut-off for these remained May 26, 2006.
On December 22, 2006 Plaintiff moved for partial summary judgment, with a hearing date set for March 12, 2007. (Doc. No. 26.) On February 6, 2007 the parties stipulated to and the Court ordered further modification of the scheduling order, pushing pre-trial disclosures and conferences back again. On February 28, 2007 the Court reset the partial summary judgment hearing to April 23, 2007. (Doc. No. 40.) On April 17, 2007 the Court again reset the summary judgment hearing to April 30, 2007. On June 22, 2007, after ordering additional briefing, Judge Rhoades issued an order granting in part and denying in part Plaintiff's summary judgment motion. (Doc. No. 54.) Further delays in pre-trial conferencing followed. (Doc. Nos. 55; 56.)
Judge Rhoades's June 22, 2007 summary judgment order raised a technical issue of trademark ownership for the first time. (Summ. J. Order 5.) Although the suit was brought by the corporation, Mytee Products, Inc., the 1996 registrant of the Mytee trademark was John LaBarbera, 'DBA Mytee Products.' (Id.) On August 22, 2007 Plaintiff's counsel clarified ownership by recording an assignment of the Mytee mark from LaBarbera to Mytee, nunc pro tunc April 27, 2005. (Seecof Reply Decl. ¶9.)
On July 24, 2007 Plaintiff moved to amend the scheduling order to allow Plaintiff to amend its Complaint by joining LaBarbera as an additional Plaintiff and dropping the third cause of action for breach of contract. (Doc. No. 56.) The hearing date was set for October 29, 2007. On September 11, 2007, following the passing of Judge Rhoades, the case and pending motion were reassigned to Judge Thomas J. Whelan. On October 15, 2007 Defendant opposed, and on October 21, 2007 Plaintiff replied.
II. GOOD CAUSE EXISTS TO MODIFY THE SCHEDULING ORDER
After the motion cut-off date, allowing Plaintiff to amend their complaint is a two step process: (1) good cause must exist to modify the scheduling order, and (2) the standards for amending the complaint must be met.
Under Rule 16(b)(1), the purpose of a scheduling order limiting the period for amending the pleadings is to assure that at some point both the parties and the pleadings become fixed. FED. R. CIV. P 16(b) 1983 Advisory Committee Notes. Once issued, a scheduling order cannot be modified except upon a showing of good cause. FED. R. CIV. P 16(b).
The "good cause" standard primarily considers the diligence of the party seeking the amendment. Johnson v. Mammoth Recreations, 975 F.2d 604, 609 (9th Cir. 1992). The focus of the inquiry is upon the moving party's reasons for seeking modification. Johnson v. Mammoth Recreations, 975 F.2d 604, 609 (9th Cir. 1992). For instance, good cause can be found where the non-moving party is already on notice of the moving party's reasons for modifying the scheduling order. Sousa v. Unilab Corp. Class II (Non-Exempt) Members Group Benefit Plan, 252 F. Supp. 2d 1046, 1059 (E.D. Cal. 2002) (finding good cause and modifying scheduling order to include Defendant's statute of limitations defense where Plaintiff had been aware of defense's existence). Moreover, changes in the court's calendar sometimes will oblige the judge to modify the scheduling order. FED. R. CIV. P 16(b) 1983 Advisory Committee Notes.
Nearing the end of this protracted litigation, the parties and their theories have long been crystalized. Adding LaBarbera and, especially, dropping the contract claim will not work to unravel the progress and ...