By Katelyn Kohler
In a recent copyright infringement case, Canada Hockey LLC, operating as Epic Sports, sought permission from the United States District Court for the Southern District of Texas, Houston Division, to file a second amended complaint against Brad Marquardt, the sole remaining defendant.[1] However, the court denied the motion on April 5, 2023, delivering a chilling setback for the Plaintiffs in their pursuit of claims against additional defendants.[2]
Background
Michael Bynum, the sole shareholder and President of Canada Hockey LLC, is also the co-author, editor and copyright owner of an unpublished book about the lore of the 12th man fandom and its connection to the illustrious history of Texas A&M football.[3] The opening chapter of the book was allegedly copied and distributed on the Texas A&M University Athletic Department’s website and social media accounts without consent and scrubbed of any copyright management information. Upon discovering the infringement in early 2014, Bynum promptly requested its removal, which the Athletic Department complied with. Years later, and just days before the statute of limitations expired, the Plaintiffs filed a copyright infringement lawsuit in 2017 asserting claims against multiple defendants.
Addition of New Defendants
Over the course of the legal proceedings, the court dismissed claims against Texas A&M University Athletic Department, Texas A&M University 12th Man Foundation, Alan Cannon, and Lane Stephenson, leaving Brad Marquardt as the sole defendant in the case.[4] Recently, the Plaintiffs sought to amend their complaint to add four new defendants, namely Jason Cook, Matt Callaway, Matt Simon, and Krista Smith.
Marquardt, who held the position of Associate Director of Media Relations for the Texas A&M Athletic Department, is alleged to have initiated a chain of copyright violations. Allegedly, upon discovering the copyrighted article, Marquardt shared it with his superior Jason Cook, Senior Associate Athletic Director for External Affairs, as well as with Matt Simon, webmaster for Texas A&M, Matt Callaway, and Krista Smith, all of whom worked in the media relations office with plans to promote the 12th Man tradition at Texas A&M.[5] The Plaintiffs argue that these additional parties bear responsibility for the publication of the copyrighted material originally provided by Marquardt.[6]
Notably, the Plaintiffs claim they only became aware of the involvement of Callaway, Simon, Cook, and Smith through the interrogatory answers provided by Marquardt, obtained August 2021. The Court’s Amended Scheduling Order set November 23, 2022, as the deadline for adding new parties. Accordingly, the Plaintiffs’ motion to file a second amended complaint, seeking to add the additional defendants, was timely as it was submitted last-minute on the day of the deadline.[7]
Court’s Ruling
Absent a “substantial reason” such as undue delay, bad faith, repeated failure to cure defects, or undue prejudice to the opposing party, District courts are generally inclined to grant leave to amend pleadings.[8] However, the court rejected this motion based on several reasons.
Undue Delay
The court noted that Plaintiffs waited years before conducting discovery and sought to add new defendants very late in the legal proceedings. Despite having ample time, Plaintiffs only began pursuing necessary discovery four years after filing the case, indicating undue delay.
Bynum learned of the alleged copyright violation almost nine years ago in January of 2014. He was aware of the existence of potential individual defendants during that entire period. After suit was filed, he stalled over four years to serve discovery requests that would have provided him with that necessary information.
Futility of Claims
The court determined that claims against the proposed new defendants would also be futile due to the applicable statute of limitations. A copyright infringement claim must be brought within three years of accrual.[9] The court applied the “discovery rule,” which holds that a claim accrues once the Plaintiff knows or, through due diligence, should have known of the injury forming the basis for the Copyright Act claim. [10] As such, Bynum had until January 2017 to properly submit his claims against all defendants.
Although Plaintiffs argued that Marquardt had no standing to raise this defense on behalf of the new defendants, the court disagreed, stating that it is within their discretion to deny leave against new defendants who are barred by the statute of limitations. While Federal Rule of Civil Procedure 15(a) allows for amending pleadings if it serves the interest of justice, in this particular case, it is clear that the additional defendants will be dismissed well before the trial, rendering the motion futile.[11]
Failure to Meet Rule 15(c) Requirements
Plaintiffs contended that the claims against the new defendants should relate back to the filing of the original complaint under Rule 15(c). However, the court clarified that the rule requires a mistake concerning the identity of a party, and the mere failure to identify individual defendants cannot be characterized as a mistake.[12] Therefore, the statute of limitations would not be extended.
Furthermore, the court determined that the Plaintiffs had knowledge of the facts as early as January 2014, and had they conducted thorough and diligent investigations, they would have discovered the involvement of the individual defendants they now aimed to sue. However, they waited almost four years after the expiration of the limitation period to bring forward their claims against them.
Conclusion
The denial of the motion for leave to file a second amended complaint represents a significant setback for the Plaintiffs in the Canada Hockey LLC v. Marquardt copyright infringement lawsuit. The court’s decision was influenced by various factors, including undue delay, the futility of the claims, and the failure to satisfy the requirements of Rule 15(c). Consequently, the case will proceed with Brad Marquardt as the sole defendant, leaving the additional defendants “put on ice” and their involvement unconsidered. This serves as a reminder of the importance of adhering to civil procedure, timely actions, and the exercise of due diligence in the legal process. It is noteworthy that a case with a cause of action dating back nine years is not exempt from these principles. Actions must be kept “warm” and timely to avoid being left out in the cold.
Katelyn Kohler is a rising second-year law student at Suffolk University in Boston, specializing in Sports & Entertainment, Labor & Employment, and Intellectual Property Law. She holds dual degrees in Business Administration with a focus on Sports Management and Legal Studies, which she earned from Ithaca College in December 2021. With a passion for these fields, Katelyn is dedicated to pursuing a legal career that combines her love for sports and the law.
[1] Motion For Leave to File Second Amended Complaint. Nov. 23, 2022. CANADA HOCKEY LLC V. MARQUARDT, ET. AL. (S.D.T.X., Houston Div.). Civil No. 4:17-cv-00181.
[2] Order on Motion for Leave to File Second Amended Complaint. Apr. 5, 2023. CANADA HOCKEY LLC V. MARQUARDT, ET. AL. (S.D.T.X., Houston Div.). Civil No. 4:17-cv-00181.
[3] Proposed Second Amended Complaint, Exhibit 1 of Motion For Leave to File Second Amended Complaint. Pg. 4. Nov. 23, 2022. CANADA HOCKEY LLC V. MARQUARDT, ET. AL. (S.D.T.X., Houston Div.). Civil No. 4:17-cv-00181.
[4] CAN. HOCKEY LLC V. TEX. A&M UNIV. ATH. DEP’T, (S.D.T.X., Houston Div., 2019) LEXIS 241443, at 20-21, 40-44. As a public university, Texas A&M University is protected by qualified immunity and lacks the capacity to be sued. Similarly, under FED. R. CIV. P. 17(b), a similar analysis applies, and there is no indication that the State of Texas has granted the A&M Athletic Department a separate legal existence. Regarding the employees, Alan Cannon, the Associate Athletic Director of Media Relations for the A&M Athletic Department, and Lane Stephenson, the former Director of News and Information Services, their conduct did not meet the threshold of being objectively unreasonable to overcome qualified immunity. The Plaintiff failed to present facts showing that Cannon and Stephenson had any knowledge that the work they were approving violated any law or copyright.
[5] Defendant’s Objections and Responses to Plaintiffs’ First Interrogatories. Dec. 8, 2021. CANADA HOCKEY LLC V. MARQUARDT, ET. AL. (S.D.T.X., Houston Div.). Civil No. 4:17-cv-00181.
[6] Defendant Brad Marquardt’s Response to Plaintiffs’ Motion for Leave to File Second Amended Complaint. Pg. 3. Dec. 8, 2021. CANADA HOCKEY LLC V. MARQUARDT, ET. AL. (S.D.T.X., Houston Div.). Civil No. 4:17-cv-00181.
[7] Id. at pg. 4. Additionally, the motion was filed seven weeks after the Supreme Court denied the Plaintiffs’ writ of certiorari in the related claims against Texas A&M, causing a delay in the discovery process. It was also submitted more than three months before the discovery cutoff and almost ten months prior to the current trial scheduling.
[8] Order, supra note 2, at pg. 2; Motion, supra note 1, at pg. 4 citing to MAYEAUX V. LA. HEALTH SERV. & INDEM. CO., 376 F.3d 420, 425 (5th Cir. 2004) (“Rule 15(a) ‘evinces a bias in favor of granting leave to amend.’”).
[9] 17 U.S.C. § 507(b); Order, supra note 2, at pg. 3.
[10] Order, supra note 2, at pg. 3; Defendant’s Response to Plaintiffs’ Motion, supra note 10.
[11] Id. at pg. 2 citing to FED. R. CIV. P. 15 (“… leave to amend shall be freely given when justice so required”)
[12] Order, supra note 2,at pg. 4.
