TERESA J. JAMES, Magistrate Judge.
This matter is before the Court on the parties' cross objections (ECF Nos. 136 and 137) to the Nunc Pro Tunc Pretrial Order of December 14, 2016 (ECF No. 134) (the "Pretrial Order").
Plaintiff objects to the exclusion of its claims that Defendants' Ketchup car, Pickle car, and Mustard car (the "Condiment Car Series") infringe Plaintiff's copyrights in its "Future Car" assembly instructions and die lines. Plaintiff specifically objects to footnotes 6-7, 11-12, and 16-17 of the Pretrial Order, in which Judge Gale sustained Defendants' objections to Plaintiff's assertion of direct infringement claims concerning the Condiment Car Series and "at a minimum" qualifiers, finding these claims were beyond what Plaintiff asserted in the First Amended Complaint.
Defendants object to the inclusion of Plaintiff's claims identifying paperboard cars that Defendants argue were not identified in Plaintiff's First Amended Complaint, i.e., any paperboard car series other than the Land Spy Cruiser, the Sea Spy Sub Car, and the Space Spy Rocket Car (the "Spy Car Series"). Specifically, they object to the inclusion of the following paperboard cars as infringing products: the Mustard car, the Pickle car, the Birthday Cake Shake car, the Chocolate Fudge Brownie Shake car, the Chocolate Covered Strawberry car, the Sizzle 4x4, the Shaker 4x4, the Goldie 4x4, the Indy car, and "other consumer-facing materials" featuring the copyrighted Sizzle, Shaker, or Goldie cartoon characters.
Federal Rule of Civil Procedure 72(a) provides that timely objections to a magistrate judge's order on a non-dispositive pretrial matter are reviewed under a "clearly erroneous or contrary to law" standard.
In contrast, timely objections to a magistrate judge's disposition of a "pretrial matter dispositive of a claim or defense" are reviewed under the less deferential de novo standard.
Judge Gale's decision—that both allowed and excluded certain alleged copyright infringement claims from the Pretrial Order—implicates both review standards; it is non-dispositive as to the former, and dispositive as to the latter. Case law from this District suggests that objections to a magistrate judge's rulings with respect to what the parties can include in the pretrial order are reviewed under the more deferential standard.
The Court here need not make a determination regarding which standard of review is applicable. Regardless of the review standard applied, there was no error in Judge Gale's decision to include some and exclude other claims regarding paperboard cars from the Pretrial Order.
Judge Gale described the parties' objections and his decision with respect to those objections in the preliminary matters section of the Pretrial Order:
These rulings were implemented in the Legal Claims section of the Pretrial Order where the Condiment Car Series were deleted from Plaintiff's direct and contributory copyright infringement claims pertaining to the assembly instructions and die lines. All the other paperboard car references inserted by Plaintiff were allowed to remain in the Pretrial Order.
Plaintiff objects to the deletion of the Condiment Car Series from its claims for infringement related to the assembly instructions and die lines.
Plaintiff further alleged in the First Amended Complaint that in disregard of its copyrights, Defendant Creative Consumer Concepts, Inc. copied the 9015 designs to produce paperboard cars known as the "Land Spy Cruiser," the "Sea Spy Sub Car" and the "Space Spy Rocket Car" for Defendant Steak N Shake Operations, Inc., which began offering these cars at each of its restaurant locations.
Judge Gale determined that Plaintiff's assembly instructions and die lines do not include or feature any of Plaintiff's copyrighted Sizzle, Shaker, and/or Goldie cartoon characters. Therefore, Plaintiff would not be permitted to assert infringement claims for the assembly instructions and die lines pertaining to cars other than those specifically alleged in the First Amended Complaint. Plaintiff's infringement claims related to the assembly instructions and die lines were therefore limited to the Spy Car Series.
Plaintiff argues that the assembly instructions for the Condiment Car Series are identical "in relevant aspects" to the Spy Car Series, and Defendants should not have been surprised when Plaintiff sought to add the Condiment Car Series to the Pretrial Order. However, Plaintiff never moved to amend its First Amended Complaint to add the Condiment Car Series as infringing products. The Condiment Car Series were not mentioned in the First Amended Complaint, and the assembly instructions and die lines do not feature cartoon characters similar to Plaintiff's Sizzle, Shaker, and/or Goldie cartoon characters. Defendants contend they were not put on notice of Plaintiff's Condiment Car Series claims and that they were not given the opportunity to conduct discovery concerning them. Discovery has closed and it does not appear discovery was conducted relative to the Condiment Car Series. By waiting until the Pretrial Order to claim that the Condiment Car Series infringe its copyrights, Plaintiff acted too late to burden the Court and Defendants with these new claims for relief.
Defendants have also objected to the Pretrial Order. They object to Judge Gale's ruling allowing Plaintiff's references to paperboard cars other than the Spy Car Series to remain in the Pretrial Order. Defendants argue that Plaintiff is required to provide notice about what cars it is alleging infringe upon Plaintiff's copyrights, and Plaintiff's First Amended Complaint only identifies Defendants' Spy Car Series. Defendants argue that Plaintiff never moved to amend its complaint or otherwise give notice to Defendants that it was also alleging the other paperboard car series infringed upon Plaintiff's copyrights. They also argue Plaintiff's attempt to add claims that Defendants' other paperboard cars infringe Plaintiff's copyrights by including them for the first time in their proposed Pretrial Order prejudices Defendants' ability to defend in this case.
Judge Gale allowed Plaintiff to include paperboard cars other than the Spy Car Series in its direct and contributory infringement based upon his finding that the allegations of Plaintiff's First Amended Complaint were sufficient to encompass Defendants' paperboard cars with cartoon characters derived from Plaintiff's copyrighted Shaker, Sizzle, and/or Goldie characters. Plaintiff points out that it alleged in the First Amended Complaint that Defendants copied, prepared, sold, offered for sale and/or distributed copies of "derivativve works based on the 9015 designs and illustrations."
IT IS SO ORDERED.