United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
Honorable Thomas M. Durkin United States District Judge.
alleges that Defendants sell counterfeit versions of
Plaintiff's products in violation of the federal Lanham
Act and Illinois law. Plaintiff filed motions for a temporary
restraining order enjoining Defendants' production of the
counterfeit products , and for permission to serve
process electronically . At a motion hearing early today,
the Court denied those motions without prejudice. The Court
also stated that the case would be dismissed without
prejudice under Federal Rules of Civil Procedure 10 and 20,
pending Plaintiff's submission of a brief addressing
those issues. This written Order supplements the reasons the
Court gave orally during the hearing.
provides that “the complaint must name all the
parties.” Plaintiff filed the complaint stating that
the defendants would be named in an attached “Schedule
A.” The attachment, however, did not name any party but
stated that “Schedule A” would be
“delivered to the Court in a sealed envelope.” R.
1-3. Six days later, “Schedule A” was
electronically filed. R. 10. Notably, this filing of November
18, 2019, occurred after the case was assigned to the
undersigned judge on November 12, 2019.
Court understands that this delay in filing the schedule
listing the defendants has become somewhat of a custom in
Lanham Act cases filed in this district. Indeed, this Court
has granted motions for injunctions and entered default
judgments in cases filed in this manner. But the Court now
understands that this practice raises the specter of forum
shopping because it allows a plaintiff to learn the identity
of the assigned judge before identifying the defendants.
Since these cases often make claims against tens or hundreds
of defendants, and enforcement of joinder rules is in the
court's “considerable discretion, ” see
UWM Student Ass'n v. Lovell, 888 F.3d 854, 863 (7th
Cir. 2018), the judge assigned can have a great impact on a
plaintiff's determination as to the number of defendants
to include in the case. A particular judge's practice of
permitting or refusing to permit joinder of tens or hundreds
of defendants in the same case, and the extent of the showing
the judge requires on that issue, might effect whether it is
worthwhile for a plaintiff to pursue a case with multiple
defendants before a particular judge. And to the extent more
judges in this district more strictly enforce the
requirements of Rule 20, it may become cost prohibitive for
plaintiffs to bring individual cases against defendants where
there is only a small potential liability or recovery.
Court makes no judgment on whether that was actually
Plaintiff's calculus and intent. As noted, this is a
circumstance that only recently became apparent to the Court.
But the fact that the practice of waiting to file Schedule A
creates the opportunity to forum shop means it is a practice
that must stop.
need to file Schedule A under seal is not an excuse. The
Local Rules provide for filing an entire case under seal.
See L.R. 5.7. And in any event, there was nothing
preventing Plaintiff from filing the Schedule under seal
immediately after filing the complaint, and before learning
the assigned judge.
Schedule A names 17 defendants and the Court finds it
unlikely that all of these defendants are properly joined
under Rule 20. Rule 20(a)(2) permits joinder when “any
right to relief is asserted . . . with respect to or arising
out of the same transaction, occurrence, or series of
transactions or occurrences.” The Court has
“considerable discretion” and
“flexibility” in applying Rule 20. See UWM
Student Ass'n, 888 F.3d at 863. And
“[u]nrelated claims against different defendants belong
in different suits.” Id.
makes the following allegations relevant to the
“transaction and occurrence” requirement:
[Defendants] share unique identifiers, such as design
elements and similarities of the counterfeit products offered
for sale, establishing a logical relationship between them
and suggesting that Defendants' counterfeiting operation
arises out of the same transaction, occurrence, or series of
transactions or occurrences.
[Defendants' internet sites] bear similar irregularities
and indicia of being counterfeit to one another, suggesting
that the Counterfeit Bose Products were manufactured by and
come from a common source and that Defendants are
interrelated. The [websites] also include other notable
common features, including use of the same accepted payment
methods, check-out methods, meta data, lack of contact
information, identically or similarly priced items and ...