United States District Court, N.D. Oklahoma
OPINION AND ORDER
V. EAGAN, UNITED STATES DISTRICT JUDGE.
the Court is plaintiff Stanley Filter Co., LLC's, motion
for leave to file a first amended complaint (Dkt. # 40).
Plaintiff seeks leave to amend its complaint in order to
“add [defendant's] principal, Richard Schlabach, on
theory of personal liability for all counts.”
Id. at 1.
is a limited liability company organized and existing under
the laws of Oklahoma. Dkt. # 2, at 1. Defendant is a limited
liability company organized and existing under the laws of
New Mexico. Dkt. # 40, at 3. Plaintiff sells “downhole
sand filters and oilfield services” and owns several
trademarks it utilizes in its business. Dkt. # 2, at 3-5. For
the last twenty or twenty-five years, pursuant to a
distributor sales agency agreement (the agreement), defendant
distributed plaintiff's filtration products exclusively
in the New Mexico and north Texas markets. Dkt. # 24-2, at
2.During this time, defendant routinely
purchased plaintiff's products. Dkt. # 26-1, at 1.
Plaintiff took defendant's orders in its home office and
shipped them from its warehouse, both of which were (and
still are) in Tulsa, Oklahoma. Id. at 1-2. In
addition, defendant's representatives met with
plaintiff's representatives in Tulsa at least “two
or three times, ” including when one of defendant's
representatives attended a two-day seminar that plaintiff
hosted. Dkt. # 24-1, at 2.
to plaintiff, defendant “terminated the
agreement” in 2016. Dkt. # 26-1, at 2. In an earlier
filing, defendant acknowledged that the parties'
“business relationship” has been
“terminated.” Dkt. # 28, at 5. In responding to
the Court's order to produce a copy of the agreement,
however, affiant Richard Schlabach-sole member of
defendant-states that the “agreement . . . was never
terminated.” Dkt. # 36-1, at 2. In addition, he states,
I remember an oral agreement with Jerry Dobbs,
[plaintiff's] original sales manager, going back to 1990
in which I covered the four producing counties of the far
Southeast corner of New Mexico and a region in West Texas
North of the Midland-Odessa area.
On two occasions after Jerry Dobbs left [plaintiff] I was
approached by Howard Kennedy, the sales manager who replaced
him, and we agreed that my sales area would be expanded to
cover all of New Mexico and Texas.
Id. at 1-2. According to John Morton, president of
plaintiff, “[defendant] through its principal, Rick
Schlabach, was an authorized sales distributor for
[plaintiff] when I started working at [plaintiff] ¶
1995.” Dkt. # 34-1, at 1.
April 6, 2017, plaintiff filed this lawsuit, alleging that
defendant is promoting, advertising, distributing, selling,
or offering for sale, counterfeit goods that infringe on
plaintiff's trademarks. Dkt. # 2, at 6. In its complaint,
plaintiff brings claims for trademark counterfeiting and
infringement pursuant to the Lanham Act, 15 U.S.C. §
1051 et seq., false designation of origin and unfair
competition pursuant to the Lanham Act, common law unfair
competition, common law trademark infringement, breach of
contract, breach of the implied covenant of good faith and
fair dealing, and unjust enrichment. Id. at 8-15.
Defendant was served on April 24, 2017 via personal service.
Dkt. # 7; Dkt. # 8. On June 16, 2017, plaintiff filed a
motion for entry of default, which the Court Clerk granted.
Dkt. # 10; Dkt. # 12. On August 24, 2017, defendant moved to
set aside the Court Clerk's entry of default, and the
Court granted defendant's motion. Dkt. # 19; Dkt. # 22.
On September 7, 2017, defendant filed a motion to dismiss
plaintiff's complaint (Dkt. # 24), which the Court
denied. Dkt. # 37. Pursuant to the Court's scheduling
order, the discovery deadline is February 20, 2018, and
dispositive motions are due by March 26, 2018. Dkt. # 30.
now moves for leave to file a first amended complaint to
“add [defendant's] principal, Richard Schlabach, on
theory of personal liability for all counts.” Dkt. #
40, at 1. Defendant has filed a response opposing this
motion. Dkt. # 44.
Standard of Review
Fed.R.Civ.P. 15(a)(2), after the opposing party has served a
responsive pleading, “a party may amend its pleadings
only with the opposing party's written consent or the
court's leave.” Minter v. Prime Equipment
Co., 451 F.3d 1196, 1204 (10th Cir. 2006). The decision
to grant leave to amend is within the discretion of the
district court but, when leave is sought, it should be
“freely given when justice so requires.”
Bradley v. Val-Majias, 379 F.3d 892, 900-91 (10th
Cir. 2004). Leave to amend may be denied if the proposed
amendment would be futile and would not survive a motion to
dismiss under Fed.R.Civ.P. 12(b)(6). Jefferson County
Sch. Dist. No. R-1 v. Moody's Investor's Services,
Inc., 175 F.3d 848, 859 (10th Cir. 1999). Denial of a
motion to amend may also be appropriate if the moving party
unduly delayed in seeking leave to amend and has no adequate
explanation for the delay. Minter, 451 F.3d at 1206.
“In the Tenth Circuit, untimeliness alone is an
adequate reason to refuse leave to amend.” Duncan
v. Manager, Dept' of Safety, City and County of
Denver, 397 F.3d 1300, 1315 (10th Cir. 2005).
Plaintiff's Motion to Amend
seeks leave to amend to “add [defendant's]
principal, Richard Schlabach, on theory of personal liability
for all counts.” Dkt. # 40, at 1. Plaintiff argues that
the Court should grant it leave to file its proposed amended
complaint because (1) defendant will suffer no prejudice, as
it has “yet to file its answer, [and] discovery has not
yet commenced;” (2) “the proposed amendment is
not futile because [plaintiff] in its proposed Amended
Complaint, pleads facts sufficient to state a claim against
Schlabach individually for vicarious liability for trademark
infringement;” (3) “courts routinely exercise of
[sic] personal jurisdiction over corporate ...