Eisen v. Day

Background

Emily Day moved for permission to file an amended cross-complaint against Noam Eisen. The proposed pleading omitted a copyright-infringement counterclaim that Day had asserted in the original cross-complaint. Day had alleged that she was the sole owner of the Cosmo Alleycats logo and that Eisen infringed her copyright by displaying the logo on his website.

Eisen did not oppose the filing of an amended cross-complaint without the copyright counterclaim. He argued, however, that the amendment should be conditioned on dismissal of that counterclaim with prejudice and on an award of his attorneys’ fees and costs under the Copyright Act. Eisen contended that dismissal without prejudice could prevent him from seeking fees as a prevailing party and could allow Day to bring the counterclaim again.

Motion to Amend

Federal Rule of Civil Procedure 15 generally directs courts to freely allow amendments when justice requires. A court may impose reasonable conditions on permission to amend to avoid prejudice to the opposing party.

The court agreed that the amendment should be conditioned on dismissal with prejudice. The court stated that the record suggested the copyright counterclaim lacked merit and noted that Day first told the court she intended to withdraw it after Eisen sought permission to move for summary judgment on that counterclaim. The court concluded that dismissal without prejudice could prejudice Eisen by leaving open the possibility of another action and by impairing his ability to seek attorneys’ fees under the Copyright Act.

The court therefore granted Day’s motion for leave to file the proposed amended cross-complaint, on the condition that the copyright-infringement counterclaim be considered dismissed with prejudice. Day was directed to file the amended cross-complaint by December 29, 2023. If she did not accept the condition, she could withdraw her motion by that date.

Attorneys’ Fees and Costs

Eisen requested attorneys’ fees and costs in his opposition to Day’s motion. The court denied that request without prejudice because Eisen’s counsel had not complied with Civil Local Rule 54-5, which requires counsel to meet and confer before filing a request for attorneys’ fees. The court stated that Eisen could file a renewed motion complying with the local rules. The court specifically explained that its finding of prejudice concerned the loss of the opportunity to seek fees, not the merits of any future fee motion.

Disposition

The court granted Emily Day’s motion for leave to file the amended cross-complaint, conditioned on treating the copyright-infringement counterclaim as dismissed with prejudice. It denied Noam Eisen’s attorneys’ fee and cost request without prejudice. The order did not decide whether Eisen would ultimately receive fees.