ORDER:

(1) GRANTING DEFENDANTS' MOTIONS TO SEAL; AND

(2) DENYING DEFENDANTS' MOTION TO (1) AMEND THE PLEADING, (2) EXCEED THE 10-DEPOSITION LIMIT, AND (3) AMEND SCHEDULING ORDER

(Doc. Nos. 154, 178, 179)

ANTHONY J. BATTAGLIA, District Judge.

Presently before the Court is Defendants Dan Farr Productions, Daniel Farr, and Bryan Brandenburg's motions to seal and motion to amend the pleading, exceed the ten deposition limit, and amend the scheduling order. (Doc. Nos. 154, 179, 180.) Plaintiff San Diego Comic Convention ("Plaintiff") opposes the motion. (Doc. No. 135.) Upon review of the parties' arguments and moving papers, the Court finds the motions suitable for determination on the papers and without oral argument pursuant to Civil Local Rule 7.1.d.1. Accordingly, the motion hearing date set for August 3, 2017, at 10:00 A.M. is VACATED. As explained in more detail below, the Court GRANTS Defendants' motions to seal and DENIES Defendants' motion to amend.

BACKGROUND

The Court assumes familiarity with the alleged facts and thus will not repeat the factual background of the present matter. However, for purposes of these motions the Court finds it beneficial to review the procedural posture of the instant case.

On August 7, 2014, Plaintiff filed a complaint against Defendants asserting causes of action for (1) federal trademark infringement; and (2) false designation of origin. (Doc. No. 1.) On September 22, 2014, Defendants filed their answer to the complaint with a counterclaim against Plaintiff. (Doc. No. 16.) On November 7, 2014, Defendants filed an amended answer to the complaint. (Doc. No. 27.)

Thereafter, on March 24, 2017, Magistrate Judge Jan M. Adler granted the parties' joint motion to extend certain discovery-related deadlines in the October 26, 2016 amended scheduling order. (Doc. No. 83.) The deadline that is relevant to the instant motion is the discovery cut-off deadline that was extended from May 19, 2017, to June 9, 2017. (Id. at 2.) The final date to amend the pleadings, or to file additional pleadings was October 5, 2015. (Doc. No. 38 at 2; Doc. No. 135 at 7.) On June 23, 2017, the last day for dispositive motions to be filed, Defendants filed the present matter, their motion to amend the pleading, exceed the ten deposition limit, and amend the scheduling order. (Doc. No. 108-1.)1 Additionally, on the same day, both parties filed motions for summary judgment and motions to exclude. (Doc. Nos. 91, 95, 99, 100, 106.)

LEGAL STANDARD

Pursuant to Federal Rule of Civil Procedure 15, leave to amend should be "freely" given when "justice so requires." Fed. R. Civ. P. 15(a)(2). "This policy is to be applied with extreme liberality." Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1051 (9th Cir. 2003) (citation and internal quotation marks omitted). In Foman v. Davis, 371 U.S. 178 (1962), the Supreme Court offered several factors for district courts to consider in deciding whether to grant a motion to amend under Rule 15(a):

Id. at 182. Additionally, "[a]bsent prejudice, or a strong showing of any of the remaining Foman factors, there exists a presumption under Rule 15(a) in favor of granting leave to amend." Eminence Capital, 316 F.3d at 1052.

DISCUSSION

I. Motion to Seal

As a threshold matter, the Court first turns to Defendants' motions to seal the present motion2, its reply brief, and exhibits 2, 3, 18, 19, and 21 to Daniel R. Barber's declaration in support of Defendants' reply. (Doc. Nos. 154, 178.) Defendants contend that their motions are warranted as Plaintiff has given protective designations to certain materials whose contents are revealed by the filings. (Id. at 2.)

Courts have historically recognized a "general right to inspect and copy public records and documents, including judicial records and documents." Nixon v. Warner Commc'ns, Inc., 435 U.S. 589, 597 n.7 (1978). In order to overcome this strong presumption in favor of public access, a party seeking to seal a judicial record must articulate justifications for sealing that outweigh public policy favoring disclosure. Kamakana v. City and Cty. of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006).

Here, wishing to protect the confidential information that is at issue in this case, while also seeking to uphold the sanctity of the parties' joint motion for a protective order, (Doc. No. 46), the Court concludes that Defendants have articulated compelling reasons to justify sealing the foregoing documents. Foltz v. State Farm Mut. Auto Insurance Co., 331 F.3d 1122, 1135 (9th Cir. 2003). Accordingly, the Court GRANTS Defendants' unopposed motions to seal their motion to amend, their reply brief, and exhibits 2, 3, 18, 19, and 21 to Mr. Barber's declaration. See Phillips v. Gen. Motors Corp., 307 F.3d 1206, 1213 (9th Cir. 2002) (holding that when a district court grants a protective order to seal documents during discovery, it has already determined that good cause exists to protect the information from being disclosed to the public by balancing the needs for discovery against the need for confidentiality).

II. Defendants' Motion to Amend

A. "Good Cause" Under Rule 16(b)(4)

The Court first turns to whether Defendants should be granted leave to amend their pleadings under Federal Rule of Civil Procedure 16.3 See Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 607-08 (9th Cir. 1992) (holding that once the district court has filed a pretrial scheduling order, a motion seeking to amend pleadings is governed first by Rule 16(b), and only secondarily by Rule 15(a)). Plaintiff asserts that Defendants cannot establish good cause as their proposed amended pleading relies on allegations that have been matters of public record since the beginning of this case. (Doc. No. 135 at 10.)

Under Rule 16 "[a] schedule may be modified only for good cause and with the judge's consent." Fed. R. Civ. P. 16(b)(4). "A court's evaluation of good cause is not coextensive with an inquiry into the propriety of the amendment under . . . Rule 15." Id. (quoting Forstmann v. Culp, 144 F.R.D. 83, 85 (M.D.N.C. 1987). Moreover, unlike Rule 15(a)'s liberal amendment policy which focuses on several different factors including the bad faith of the party seeking to interpose an amendment and the prejudice to the opposing party, Rule 16(b)'s "good cause" standard primarily considers the diligence of the party seeking the amendment. See Fed. R. Civ. P. 16 advisory committee's note to 1983 amendment (holding that the district court may modify the pretrial schedule "if it cannot reasonably be met despite the diligence of the party seeking the extension"); see also Alvarado Orthopedic Research, L.P. v. Linvatec Corp., Civil No. 11cv0246 IEG (RBB), 2012 WL 6193834, at *2 (S.D. Cal. Dec. 12, 2012) (same) (citation omitted).

Here, Defendants have failed to demonstrate "good cause" for their untimely motion to amend. Defendants argue that it wasn't until Ms. Desmond's4 declaration at the end of May 2017 that it became apparent the full extent of Plaintiff's alleged knowledge of their suspected false declaration to the Patent and Trademark Office ("PTO"). (Doc. No. 179-1 at 3.) However, the Court finds this argument meritless. First, the Court notes that Defendants admit that even before Plaintiff "ramped up its document production," Defendants had in their possession, the declarations and documents they needed to allege their new defense and counterclaim. (Id. at 5.) Thus, if Defendants were aware of their new defense and counterclaim at an earlier date, but continued to litigate the case without requesting an amendment, then such an omission is not compatible with a finding of diligence. See Engleson v. Burlington N. R.R. Co., 972 F.2d 1038, 1043 (9th Cir. 1992) (holding that carelessness is not compatible with a finding of diligence); see also Thomas v. McDowell, Civil Action No. 2:10-cv-0152, 2012 WL 5601198, at *4 (S.D. Ohio Nov. 15, 2012) (holding that a change in litigation strategy does not set forth good cause under Rule 16).

Moreover, Defendants had an obligation to attend to these matters in a manner that comports with "coherent case development planning" that "avoid[s] the delays and the wasteful repetition of discovery events. . . ." Jackson v. Laureate, Inc., 186 F.R.D. 605, 608 (E.D. Cal. 1999) (quoting Veranda Beach Club Ltd. P'ship v. Western Sur. Co., 936 F.2d 1364, 1371 (1st Cir. 1991)). Notably, the Court highlights that it agrees with Plaintiff that the information Defendants seek to use to plead their new defense was information publicly available even at the pre-trial stages of this litigation.5

Furthermore, the focus on Ms. Desmond and her state of mind is beside the point. A cause of action in fraud is properly pled when the pleading states the who, what, when, where, and how of the misconduct charged. Vess v. Ciba-Geigy Corp. USA, 317 F.3d 1097, 1106 (9th Cir. 2003); see also Kearns v. Ford Motor Co., 567 F.3d 1120, 1124 (9th Cir. 2009) ("Rule 9(b) demands that the circumstances constituting the alleged fraud be specific enough to give defendants notice of the particular misconduct . . . so that they can defend against the charge and not just deny that they have done anything wrong.") (citation and internal quotation marks omitted). Thus, case law clearly establishes that state of mind is not an essential element when pleading a claim of fraud. Accordingly, finding that discovery has ended and that Defendants waited almost two years after the final date to amend the pleadings had passed to file their motion, Defendants have failed to show diligence in seeking an extension. Thus, without a showing of good cause, Defendants' motion to amend under Rule 16 is DENIED.

B. Leave to Amend Under Rule 15

Next, the Court turns to Defendants' motion to amend the pleading under Rule 15. (Doc. No. 179-1 at 4.) Defendants seek leave to add an affirmative defense asserting that Plaintiff procured its trademark registrations by fraud and a counterclaim for cancellation of its registration on the same ground. (Id. at 2.) Additionally, Defendants request the ability to exceed the ten deposition limit in order to take the deposition of Peter K. Hahn6 who they allege participated in the fraud. (Id.) Finally, to accommodate the motion, Defendants also seek a modification of the scheduling order. (Id.) Plaintiff retorts in opposition that leave to amend at this juncture would be inappropriate as there is no excuse for Defendants' delay, that amendment would be futile, and that allowing amendment this late would unfairly prejudice Plaintiff. (Doc. No. 135 at 9.)

As stated above, courts consider the following factors in determining whether to grant leave to amend: (1) whether the party seeking the amendment has acted in bad faith; (2) undue delay; (3) whether the opposing party will be unduly prejudiced; and (4) the futility of amendment. Zoe Mktg., Inc. v. Impressons, LLC, Case No. 14cv1881 AJB (WVG), 2015 WL 12216340, at *2 (S.D. Cal. Apr. 9, 2015) (citation omitted). The Court will take each factor in turn.7

a. Bad Faith

Bad faith exists when the moving party wishes to amend so as to "prolong the litigation by adding new but baseless legal theories." Griggs v. Pace Am. Grp., Inc., 170 F.3d 877, 881 (9th Cir. 1999). This includes amendments that were filed frivolously or for an improper purpose. Westlake N. Prop. Owners Ass'n v. City of Thousand Oaks, 915 F.2d 1301, 1305 (9th Cir. 1990). Additionally, bad faith includes claims that were brought simply to harass the opposing party. Juras v. Aman Collection Serv., Inc., 829 F.2d 739, 740 (9th Cir. 1987).

Plaintiff asserts that Defendants' request, which comes nearly three years into the case and after the close of discovery, is brought in bad faith. (Doc. No. 135 at 12.) Defendants make no arguments in rebuttal in their reply brief. (See generally Doc. No. 155.)

The Court notes that Defendants' motion is lacking any citation to exhibits or evidence on the record, the discussion section is at most only two pages long—with the entire motion being only five pages in length, and that Defendants incorrectly employ patent cases to support their motion. (See generally Doc. No. 179-1.) Additionally, despite claiming fraud on the trademark office, Defendants fail to cite to the correct legal standard to assess this type of claim.8 (Id. at 5.) Furthermore, as previously discussed, Defendants assert that they had evidence of their new defense and counterclaim at the time Plaintiff "ramped" up its document production. (Id.) Consequently, the Court assumes that Defendants' inadequate motion that is based on information that was known at an earlier date was filed with "dilatory motive." Compare, with Abels v. JBC Legal Grp. P.C., 229 F.R.D. 152, 156 (N.D. Cal. 2005) (holding that plaintiff did not act in bad faith as it did not appear that plaintiff knew about the additional defendant until March of 2005 and plaintiff quickly filed for leave to amend shortly thereafter). Based on the foregoing, the Court finds that the instant motion is a tactical play that gives an impression of bad faith. Thus, this factor weighs against amendment.

b. Undue Delay

"Undue delay is delay that prejudices the nonmoving party or imposes unwarranted burdens upon the court." Fresno Unified School Dist. v. K.U. ex rel. A.D.U., 980 F.Supp.2d 1160, 1176 (E.D. Cal. 2013). Prejudice results when amendment would unnecessarily increase costs or might diminish the opposing party's ability to respond to the amended pleading. Morongo Band of Mission Indians v. Rose, 893 F.2d 1074, 1079 (9th Cir. 1990).

Plaintiff suggests that if Defendants are allowed to amend that it would need to reopen discovery and postpone trial to locate and depose other witnesses. (Doc. No. 135 at 16.) Additionally, Plaintiff argues that if the fraud claim is allowed to be pled that it would request the opportunity to file a dispositive motion as to this claim. (Id.) Defendants retort that Plaintiff would not need to conduct additional discovery and that the deposition of Mr. Hahn could be taken as quickly as three working days if Defendants' motion is granted. (Doc. No. 155 at 11.)

Despite the arguments presented by Defendants, the Court agrees with Plaintiff. A review of the facts and procedural posture of this case demonstrates that this motion is made on the eve of trial,9 and after the motion to amend cut-off date. Furthermore, the Court reiterates that Defendants admit that they "had the declarations on which its additional defense and counterclaim would be predicated, and [they] already had evidence that [Plaintiff's] agents must have known there had been some third-party use." (Doc. No. 179-1 at 5.) This factor alone would lean against amendment. See Stearns v. Select Comfort Retail Corp., 763 F.Supp.2d 1128, 1159 (N.D. Cal. 2010) ("While delay alone does not justify the denial of leave to amend, `late amendments to assert new theories are not reviewed favorably when the facts and theory have been known to the party seeking amendment since the inception of the cause of action.'") (internal citations omitted).

In sum, as the discovery deadline has passed, the trial date is near, and there are two motions for summary judgment yet to be decided, this factor weighs against granting Defendants' motion for leave to amend. See Lockheed Martin Corp. v. Network Sol., Inc., 194 F.3d 980, 986 (9th Cir. 1999) ("A need to reopen discovery and therefore delay the proceedings supports a district court's finding of prejudice from a delayed motion to amend."); see also Hill v. Opus Corp., 841 F.Supp.2d 1070, 1103-04 (C.D. Cal. 2011) (holding that when a motion to amend seeks to change a party's claims in close proximity to trial, permitting the amendment may delay the progress of the case and prejudice the opponent's ability to prosecute its case).

c. Prejudice

Plaintiff argues that amendment at this point in the litigation would require a significant shift in their trial preparation strategy. (Doc. No. 135 at 16.) Defendants assert that Plaintiff cannot claim prejudice because it withheld seminal documents until the very end of discovery. (Doc. No. 155 at 9-10.)

Prejudice in the context of Rule 15 has been recognized in instances where leave to amend was sought "several days before the discovery cut-off [date] and less than three months before trial was to commence." Zivkovic v. S. Cal. Edison Co., 302 F.3d 1080, 1087 (9th Cir. 2002) (affirming denial of leave to amend because proposed amendment included additional causes of action which would have required further discovery when discovery closed five days after filing motion for leave to amend).

The Court acknowledges Defendants' arguments, however, the Court highlights that Defendants' responses are bare bones arguments without any citation to case law or evidence on the record. (Doc. No. 155 at 9-10.) Thus, these unfounded assertions alleging that Plaintiff withheld documents amounts to nothing more than Defendants' own musings. Moreover, given that the discovery and amendment deadlines have passed, and this case is now three years old, the Court finds that any additional claims or defenses asserted will result in an immense prejudice to Plaintiff. See Morongo Band of Mission Indians, 893 F.2d at 1079 (affirming denial of leave to amend when "new claims set forth in the amended complaint would have greatly altered the nature of the litigation and would have required defendants to have undertaken, at a late hour, an entirely new course of defense"). Moreover, based on the dubious value of the proposed amendment and the timing of the motion, the Court is "particularly critical of proposed amendments that appear to `game' the system." Fresno Unified School Dist., 980 F. Supp. 2d at 1177. Accordingly, this factor weighs against amendment.

d. Futility

A motion for leave to amend may be denied if it appears to be futile or legally insufficient. Gabrielson v. Montgomery Ward & Co., 785 F.2d 762, 766 (9th Cir. 1986). In evaluating futility, courts apply the same standard used in considering a motion to dismiss under Rule 12(b)(6). Stonebrae, L.P., v. Toll Bros., Inc., No. C-08-0221 EMC, 2010 WL 114010, at *1 (N.D. Cal. Jan. 7, 2010). It follows then, that in considering the proposed amendment, the Court must accept Defendants' allegations in the pleading as true. Cahill v. Liberty Mut. Ins. Co., 80 F.3d 336, 337-38 (9th Cir. 1996).

Plaintiff challenges Defendants' motion on the grounds that their proposed amended pleading fails to allege all essential elements to support a claim of fraud on the PTO. (Doc. No. 135 at 12-15.) Defendants' proposed amendment wishes to add a defense of inequitable conduct and add a third cause of action for cancellation due to inequitable conduct. (Doc. No. 179-1 at 34, 39.)

Curiously, the Court notes that a defense of inequitable conduct is raised in patent infringement cases.10 See Mag Instrument, Inc. v. JS Prod., Inc., 595 F.Supp.2d 1102, 1109 (C.D. Cal. 2008) (holding that inequitable conduct consists of several elements including "the failure to disclose known material information during the prosecution of a patent, coupled with the intent to deceive the PTO") (emphasis added); see also Chiron Corp. v. Abbott Lab., 156 F.R.D. 219, 219 (N.D. Cal. 1994) (plaintiff brought the action against defendant for patent infringement and plaintiff moved to strike defendant's fourth affirmative defense of inequitable conduct). Defendants assert that their use of patent cases is meant to provide similar circumstances in which a court can find "good cause" to allow leave to amend. (Doc. No. 179-1 at 5.) However, Defendants provide no basis for this Court to assume that trademark and patent cases utilize the same legal standard when determining whether a fraud has been committed in an application to the PTO. This is especially true in light of the fact that Plaintiff illuminates a specific legal standard that is not referenced in the patent cases cited by Defendants. Consequently, even construing Defendants' proposed amendments as true and drawing all reasonable inferences therefrom in Defendants' favor, Defendants seek to allege a new defense that is wholly at odds with the current matter. Consequently, this factor weighs against amendment.

Based on the analysis above, the Court finds that all four factors weigh against allowing amendment. Accordingly, the Court DENIES Defendants' motion to amend the pleadings, exceed the ten deposition limit, and amend the scheduling order.

CONCLUSION

As explained more fully above, the Court GRANTS Defendants' motions to seal the instant motion, their reply brief, and exhibits 2, 3, 18, 19 and 21 to Mr. Barber's declaration. Additionally, finding no "good cause" and that the Rule 15 factors weigh against amendment, the Court DENIES Defendants' motion to amend the pleading, exceed the ten deposition limit, and amend the scheduling order pursuant to Federal Rule of Civil Procedure 15 and 16.

IT IS SO ORDERED.