United States District Court, W.D. Washington, Tacoma
ORDER GRANTING PLAINTIFF'S MOTION FOR LEAVE TO
AMEND OR SUPPLEMENT COMPLAINT
BENJAMIN H. SETTLE, UNITED STATES DISTRICT JUDGE.
matter comes before the Court on Plaintiff Clean Crawl,
Inc.'s (“CCI”) motion for leave to amend or
supplement complaint. Dkt. 159. The Court has considered the
pleadings filed in support of and in opposition to the motion
and the remainder of the file and hereby grants the motion
for the reasons stated herein.
PROCEDURAL HISTORY AND FACTUAL BACKGROUND
suit arises from copyright and trademark disputes between CCI
and Defendant Crawl Space Cleaning Pros (“CSCP”),
two businesses which clean attic and crawl spaces and provide
pest exclusion services for homes in the Western Washington
began doing business in its current iteration in 2001 when
its president, Charles Henrichsen (“Henrichsen”),
transferred his Bio Bug Pest Management, Inc. business to
CCI, Dkt. 48 at 6, and began using the trade name Clean
Crawls, Dkt. 49, Declaration of Charles Henrichsen
(“Henrichsen Decl.”) at 3. CSCP began operations
on January 9, 2013, under founder and owner Richard Herron
(“Herron”). Dkt. 39 (citing Dkt. 40, Declaration
of Richard Herron (“Herron Decl.”), at 1).
Henrichsen and Herron had met each other in 2008, and
Henrichsen declares that he mentored Herron in starting a
business, Sustainable Building and Insulation
(“SBI”). Henrichsen Decl. at 3-4. Henrichsen
declares that he made SBI a CCI subcontractor and referred
“many jobs” to SBI. Id. at 4. Henrichsen
declares that these referrals allowed Herron to be
“heavily exposed” to CCI's “family of
trademarks and copyrights” between 2010 and 2013.
registered CRAWL PROS as a trade name with the Washington
State Department of Revenue on June 6, 2017. Dkt. 160, ¶
6; Dkt. 160-1 at 65. Andrew Gjerness as CCI's corporate
representative testified that in June or July 2017, CCI
became aware through checking social media to compare
competitor's advertisements that CSCP was changing their
name to Crawl Pros. Dkt. 121, Ex. 3 at 12. Herron testified
as CSCP's corporate representative that CSCP changed its
name because it was entering the Portland, Oregon market in
August of 2017 and because it owned the CrawlPros.com domain
name. Dkt. 121, Ex. 2, at 211. In support of CSCP's
opposition to the motion to amend, Herron declares that he
made this decision in May 2017. Dkt. 163, ¶ 10. Herron
also testified as CSCP President that CSCP's goal was to
entirely switch the name under which CSCP does business from
Crawl Space Cleaning Pros to Crawl Pros by the end of 2019.
Dkt. 123, Ex. 4 at 31. Herron declares that in June 2017 CSCP
began marketing under a new CRAWL PROS logo, updated its
website, and advertised as CRAWL PROS on the radio. Dkt. 163,
¶¶ 10-12, 14.
August 14, 2017, CSCP filed a complaint against CCI in the
Pierce County Superior Court for the State of Washington for
violation of Washington's Trademark Registration Act, RCW
Chapter 19.77 et seq., common law trademark
infringement, and violation of Washington's Consumer
Protection Act (“CPA”), RCW Chapter
19.86. Dkt. 39 at 5. On September 6, 2017, CCI filed
this lawsuit against CSCP, alleging copyright infringement,
trademark infringement, false designation of origin and
unfair competition in violation of the CPA, and seeking a
permanent injunction against infringement of the copyrighted
materials and the trademarked materials, destruction of all
infringing materials, damages, and other relief. Dkt. 1.
March 19, 2018, CSCP filed an amended answer in the instant
case, asserting counterclaims and affirmative defenses
including laches. Dkt. 32. Herron declares that on April 5,
2018, CSCP produced documents in response to CCI's first
request for production of documents featuring the CRAWL PROS
logo. Dkt. 163, ¶ 16. CCI argues that it “promptly
identified” the CRAWL PROS trade name as infringing in
its May 11, 2018 response to first set of interrogatories.
Dkt. 159 at 5 (citing Dkt. 160-1 at 74, 76- 77).
September 6, 2018, CSCP filed a motion for summary judgment.
Dkt. 39. On January 29, 2019, the Court granted the motion as
to CCI's copyright claims for two of the five copyrighted
documents at issue. Dkt. 75 at 40. On March 1, 2019, in
response to CSCP's request for a continuance, Dkt. 86,
and CCI's notice of non-opposition, Dkt. 101, the Court
granted the motion for a continuance and struck the
scheduling order based on the then-existing trial date. Dkt.
105. On May 31, 2019, the Court ruled on the remaining
questions from CSCP's motion for summary judgment and
granted summary judgment only as to the second page of one
document and denied summary judgment as to the remainder of
the motion. Dkt. 112.
11, 2019, CSCP filed its second motion for partial summary
judgment. Dkt. 120. On August 6, 2019, CCI filed a motion for
leave to file Dkt. 128, Second Henrichsen Declaration. Dkt.
129. On September 25, 2019, in response to the parties'
joint status reports, the Court set a new trial date of
January 14, 2020 and new pretrial deadlines. Dkt. 136. On
November 5, 2019, the Court denied CSCP's second motion
for partial summary judgment and granted CCI's motion for
leave to file the Second Henrichsen Declaration. Dkt. 157.
The Court declined to analyze CCI's claims regarding
CSCP's use of the trade name CRAWL PROS, finding it was
now apparent that those claims were outside the pleadings and
not properly before the Court. Dkt. 157 at 15. The Court
noted CCI had requested to supplement the pleadings pursuant
to Federal Rule of Civil Procedure 15(d) should the Court
find it necessary but agreed with CSCP that supplementing a
complaint in opposition to summary judgment was
November 13, 2019, CCI filed a motion for leave to amend or
supplement complaint. Dkt. 159. On November 25, 2019, CSCP
responded. Dkt. 161. On November 29, 2019, CCI replied. Dkt.
a party seeks to amend a pleading after the pretrial
scheduling order's deadline for amending the pleadings
has expired, the moving party must satisfy the ‘good
cause' standard of Federal Rule of Civil Procedure
16(b)(4), which provides that ‘[a] schedule may be
modified only for good cause and with the judge's
consent,' rather than the liberal standard of Federal
Rule of Civil Procedure 15(a).” In re W. States
Wholesale Nat. Gas Antitrust Litig., 715 F.3d 716, 737
(9th Cir. 2013). This good cause standard “primarily
considers the diligence of the party seeking the
amendment.” Johnson v. Mammoth Recreations,
Inc., 975 F.2d 604, 609 (9th Cir. 1992). ...