# Lee v. Learfield Communications, LLC

> District Court, E.D. Louisiana · September 15, 2020

URL: https://www.frixlaw.com/law-library/cases/10185892

## Case

- **Court:** District Court, E.D. Louisiana
- **Decided:** September 15, 2020
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10185892

## How later opinions describe it (automated extraction)

- observing that “[t]hese changes were intended to be stylistic only”
- finding that “JSU is an agency of the state because it is a state-created political body, Miss. Code Ann. § 37–125–1 (Cum. Supp. 1979), and receives state funding.”
- finding that “the district court abused its discretion in giving overwhelming weight to UT's sovereign status to the exclusion of all other facts”

## Opinion text

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA

PAIGE LEE, ET AL. CIVIL ACTION

VERSUS No. 20-839

LEARFIELD COMMUNICATIONS, SECTION I
LLC, ET AL.

ORDER & REASONS
Before the Court are two motions to dismiss—the first1 filed by defendant
Collegiate Licensing Company, LLC (“Collegiate”), and the second motion2 filed by
defendant Thaddeus Reed (“Reed”) (collectively, “defendants”). Both motions move
for dismissal of plaintiffs’ Paige Lee, Business Moves Consulting, Inc. (“Business
Moves”), Brandmixer, Inc. (“Brandmixer”), and Curtis Bordenave (“Bordenave” and
collectively, “plaintiffs”) claims, pursuant to Rules 12(b)(1) and 12(b)(7) of the Federal
Rules of Civil Procedure. Plaintiffs oppose3 the motion. For the following reasons,
the motions are granted.
I.
Plaintiffs allege that defendants are infringing on plaintiffs’ rights to the name
and registered trademark, “THEEILOVE,”4 which was approved by the USPTO on

1 R. Doc. No. 14. Collegiate was incorrectly identified in the complaint as Learfield
Communications, LLC. See R. Doc. No. 1.
2 R. Doc. No. 16.
3 R. Doc. No. 31.
4 R. Doc. No. 1. Plaintiffs state that on November 2, 2017, Business Moves filed an
application bearing serial number 876702210 for the word mark “THEEILOVE” with
the United States Patent and Trademark Office (“USPTO”), bearing registration
June 19, 2018.5 Plaintiffs state that, in violation of this trademark, defendants
“advertised, marketed, sold and/or distributed merchandise, and/or participated in
the advertising, marketing, sale and/or distribution of merchandise,” that, according

to plaintiffs, not only “improperly” bore the name and mark, “THEEILOVE,” but also
“improperly and deceptively” bore the ® designation.6 Consequently, plaintiffs
asserted seven claims against defendants: (1) federal trademark infringement
pursuant to 15 U.S.C. § 1114(1);7 (2) federal unfair competition pursuant to 15 U.S.C.
§ 1125(a);8 (3) unfair competition pursuant to unspecified state laws of Louisiana,
Texas, Mississippi, Tennessee, and Georgia;9 (4) violation of unspecified deceptive
and unfair trade practices acts and false advertising laws of those same states;10 (5)

commercial defamation;11 (6) conspiracy, pursuant to unspecified state and federal
laws;12 and (7) a claim for judgment of non-infringement.13

number 5496751. Plaintiffs claim that as a result, they possess a complete, perfected
and approved federal registration in the word mark. R. Doc. No. 1, at 6 ¶ 23. Plaintiffs
also state that on November 26, 2019, Business Moves and Brandmixer filed an
application, which is currently pending and has a serial number of 88707020, for the
“THEEILOVE” word mark for various other goods and services. R. Doc. No. 1, at 7.
5 R. Doc. No. 1, at 1 ¶ 2; see also R. Doc. No. 5.
6 R. Doc. No. 1, at 7 ¶ 4, ¶ 25.
7 Id. at 9 ¶¶ 33–38.
8 Id. at 10 ¶¶ 39–46.
9 Id. at 12 ¶¶ 47–52.
10 Id.at 12 ¶¶ 53–59.
11 Id. at 13 ¶¶ 60–64.
12 Id. at ¶¶ 65–66.
13 Id. at 14 ¶¶ 66–68.
Defendants cast this lawsuit as being “about who owns the trademark rights
to ‘Thee I Love.’” 14 Defendants assert that the phrase has been the alma mater for
Jackson State University (“JSU”), which is not a party to the case.15 Defendants

state that through JSU’s use of “THEE I LOVE” since the 1940s,16 the university has
obtained common law trademark rights, pursuant to the Lanham Act, 15 USC § 1125,
and Mississippi law,17 as well as registered trademark rights, pursuant to Mississippi
state law.18 In connection with the federal trademark that plaintiffs seek to defend
through this lawsuit, defendants state that “JSU is in the process of petitioning to
cancel plaintiffs’ U.S. Registration for THEEILOVE! (& design)” and that “[i]n due
course, JSU plans to oppose the registration of the pending application for THEE I

LOVE, U.S. Ser. No. 88/707,020 if and when a notice of allowance is issued and defend
its various pending applications for THEE I LOVE[.]”19

14 R. Doc. No. 14-1, at 7. Reed’s motion adopts Collegiate’s memorandum and
supporting documents. See R. Doc. No. 16-1, at 2.
15 See R. Doc. No. 1 (naming defendants and not naming JSU).
16 R. Doc. No. 14-1, at 7. The phrase, according to defendants, is also incorporated
into JSU’s fight song. Id. See also R. Doc. No. 14-3, at 2–3 ¶¶ 7–12 (declaration of
Kamesha Hill).
17 See id. at 8 n.5 (citing Miss. Code Ann. § 75-25-31, which states: “Nothing herein
shall adversely affect the rights or the enforcement of rights in marks acquired in
good faith at any time at common law.”).
18 Id. at 8. See also R. Doc. No. 37, at 3 n.3 (“[JSU] has filed a number of trademark
applications for one or more formative versions of THEE I LOVE, including THEE I
LOVE, Mississippi Trademark Registration No. 15767, registered 9/22/2015; Thee I
Love, Mississippi Registration No. 15580, registered 11/14/2019; HAIL HAIL TO
THEE, U.S. Reg. No. 6,050,006; THEE I LOVE! (and design), U.S. Ser. No. 88/730,067
(application pending), and THEE I LOVE, U.S. Ser. No. 88/728,596 (application
pending).”).
19 R. Doc. No. 14-1, at 15.
Plaintiffs acknowledge that “JSU does own two Mississippi trademarks[]”—
one for use “on license plates and in its alma mater[,]” and the other for use on t-
shirts.20 However, plaintiffs maintain that, in the instant matter, “there’s no assault

on any marks JSU claims to own.”21
Defendants further assert that their connection to the phrase “THEE I LOVE”
is through JSU.22 Specifically, Collegiate states that it has a contract with JSU to
act as an agent for the university in granting licenses for various designs,
trademarks, and service marks, including the trademark “Thee I Love.”23 Collegiate
argues that, because it “does not even select JSU’s licensees and does not itself own
the mark,” it “has less than all substantial rights” in the relevant designs,

trademarks, and service marks.24 Reed, similarly is, according to the complaint, a
“licensed vendor of Jackson State University,”25 and it assumes Collegiate’s
arguments on this point.

20 R. Doc. No. 31, at 8 (citations omitted).
21 Id. at 2.
22 R. Doc. No. 14-1, at 2.
23 R. Doc. No. 37, at 4. Specifically, Collegiate avers that it “is neither a licensor with
complete rights (akin to an assignment of the owner’s rights) to the mark nor is it a
licensee (with rights of use) of the mark. JSU granted [Collegiate] the exclusive right
to act as an agent for JSU in the granting of licenses to licensees to use JSU’s
Indicia on merchandise. In other words, [Collegiate] merely assists JSU in its decision
of who may license the trademark. [Collegiate] does not even select JSU’s licensees
and does not itself own the mark – i.e., it has less than all substantial rights in
the Indicia.” Id. (emphasis in original).
24 Id.
25 R. Doc. No. 1, at 4 ¶ 14.
Accordingly, defendants argue that JSU’s absence from this lawsuit and
inability to be joined requires that the case be dismissed.26 Specifically, defendants
argue that plaintiffs failed to name JSU as a defendant; that “as owner of the

trademark [plaintiffs] claim to own, [JSU] is an indispensable party to the
litigation[;]”27 and that, because JSU—“an arm of the State of Mississippi”—“enjoys
sovereign immunity under the Eleventh Amendment” and so cannot be joined
without stripping the Court of subject matter jurisdiction, the claims against
Collegiate and Reed “fail as a matter of law” and must be dismissed.28
Additionally, defendants claim that plaintiffs Bordenave and Business Moves
are “trademark pirates,”29 stating that this “assault upon JSU’s trademark is but the

latest example of a long-running pattern of abusive conduct, whereby Mr. Bordenave

26 R. Doc. No. 14, at 1–2.
27 Id. at 1. The Court notes that Rule 19 “no longer uses the terms ‘indispensable’” or
“necessary party[;]” “the “more modern term is ‘required party.’” Gensetix, Inc. v. Bd.
of Regents of Univ. of Texas Sys., 966 F.3d 1316, 1320 (Fed. Cir. 2020) (observing that
“[t]hese changes were intended to be stylistic only”); see also Fed. R. Civ. P. 19
advisory committee's note to 2007 amendment; Republic of the Phil. v. Pimentel, 553
U.S. 851, 855–56, 863 (2008) (“though the text has changed, the new Rule 19 has the
same design”). The Court will use this “modern” terminology.
28 Id. at 1–2; R. Doc. No. 16-1, at 1–2.
29 See R. Doc. No. 14-1, at 15–18. Specifically, defendants allege that these plaintiffs
“have long standing reputations of being trademark pirates whose main business is
appropriating and exploiting well-known brands and applying for trademark
registrations that they have no connection to whatsoever, as is the case with
“THEEILOVE.” Id. at 15. Defendants cite as an example Jazzland, Inc. v.
Bordenave, No. 98-1356 1999 WL 243820 (E.D. La. Apr. 22, 1999) (Africk, Magistrate
J.). R. Doc. No. 14-1, at 9–10. Plaintiffs counter that Collegiate possesses a
reputation as a “bully.” R. Doc. No. 31, at 10. The Court notes, but will not consider,
these allegations in resolving the instant motions; “reputations” do not necessarily
reflect truth, nor do these other matters have direct bearing on the instant motions
before the Court.
seeks to register trademarks to which he has no prior connection in the hope of
converting or holding for ransom goodwill created through the efforts, traditions, and
creativity of others.”30

The Court will first address whether JSU must be joined to this litigation
pursuant to Rule 12(b)(7). If JSU must be joined, pursuant to Rule 19(a), the Court
will then determine whether sovereign immunity interferes with joinder. If sovereign
immunity does interfere with joinder, the Court will decide whether the case can
nevertheless proceed absent JSU, pursuant to Rule 19(b), or whether, because that
required party must be joined, pursuant to Rule 12(b)(7), the Court lacks subject
matter jurisdiction, pursuant to Rule 12(b)(1).

II.
A. Rule 12(b)(1)
Federal Rule of Civil Procedure 12(b)(1) requires dismissal of an action if a
court lacks jurisdiction over the subject matter of the plaintiff’s claim. F. R. Civ. P.
12(b)(1). A case is properly dismissed pursuant to Rule 12(b)(1) “for lack of subject-
matter jurisdiction when the court lacks the statutory or constitutional power to

adjudicate the case.” Krim v. pcOrder.com, Inc., 402 F.3d 489, 494 (5th Cir. 2005)
(citing Home Builders Ass’n of Miss., Inc. v. City of Madison, 143 F.3d 1006, 1010 (5th
Cir.1998).
Rule 12(b)(1) allows a party to challenge a court's subject matter jurisdiction
based upon the allegations on the face of the complaint. See Barrera-Montenegro v.

30 R. Doc. No. 14-1, at 9.
United States, 74 F.3d 657, 659 (5th Cir. 1996); see also Lopez v. City of Dallas, No.
03-2223, 2006 WL 1450420, at *2 (N.D. Tex. May 24, 2006). “The burden of proof for
a Rule 12(b)(1) motion to dismiss is on the party asserting jurisdiction.” Ramming v.

United States, 281 F.3d 158, 161 (5th Cir. 2001).
When applying Rule 12(b)(1), a court may dismiss an action for lack of subject
matter jurisdiction “on any one of three separate bases: (1) the complaint alone; (2)
the complaint supplemented by undisputed facts evidenced in the record; or (3) the
complaint supplemented by undisputed facts plus the court’s resolution of disputed
facts.” Spotts v. United States, 613 F.3d 559, 565–66 (5th Cir. 2010); see also Den
Norske Stats Oljeselskap As v. HeereMac Vof, 241 F.3d 420, 424 (5th Cir. 2001);

Barrera-Montenegro, 74 F.3d at 659. When examining a factual challenge to subject
matter jurisdiction that does not implicate the merits of plaintiff's cause of action, a
district court has substantial authority “to weigh the evidence and satisfy itself as to
the existence of its power to hear the case.” Arena v. Graybar Elec. Co., 669 F.3d 214,
223 (5th Cir. 2012); see also Berry v. NLRB, No. 15-6490, 2016 WL 1571994, at *2
(E.D. La. Apr. 19, 2016) (Morgan, J.) (“The standard of Rule 12(b)(1), ‘while similar

to the standard of Rule 12(b)(6), permits the court to consider a broader range of
materials in resolving the motion.’”) (citation omitted).
The party asserting jurisdiction carries the burden of proof when facing a Rule
12(b)(1) motion to dismiss. Randall D. Wolcott, M.D., P.A. v. Sebelius, 635 F.3d 757,
762 (5th Cir. 2011) (citing Ramming, 281 F.3d at 161); see also Hozenthal v. Balboa
Ins. Co., No. 07-4644, 2008 WL 11357735, at *2 (E.D. La. July 15, 2008) (Africk, J.)
(quoting Patterson v. Weinberger, 644 F.2d 521, 523 (5th Cir. 1981)).
Matter outside the complaint forms the basis of the instant motions to dismiss

for lack of subject matter jurisdiction. Accordingly, the Court will look outside the
four-corners of the complaint to assure itself of its power to hear the case.
B. Rule 12(b)(7)

Rule 12(b)(7) of the Federal Rules of Civil Procedure provides for the dismissal
of claims when a plaintiff fails to join a required party to the lawsuit pursuant to Rule
19 of the Federal Rules of Civil Procedure. To determine whether to dismiss an action
for failure to join a required party, a court must first determine, pursuant to Rule
19(a), whether a party must be joined. Rule 19(a) provides that a party must be joined
where:
(A) in that person’s absence, the court cannot accord complete relief
among existing parties; or
(B) that person claims an interest relating to the subject of the action
and is so situated that disposing of the action in the person's absence
may:
(i) as a practical matter impair or impede the person’s ability to
protect the interest; or
(ii) leave an existing party subject to a substantial risk of
incurring double, multiple, or otherwise inconsistent obligations
because of the interest.

F. R. Civ. P. 19(a).
The initial burden of proof for the party advocating joinder only requires a
showing of “the possibility that an unjoined party is arguably indispensable,” Boles
v. Greeneville Hous. Auth., 468 F.2d 476, 478 (6th Cir. 1972), and when “an initial
appraisal of the facts indicates that a possibly necessary party is absent, the burden
of disputing this initial appraisal falls on the party who opposes joinder.” See
Pulitzer-Polster v. Pulitzer, 784 F.2d 1305, 1309 (5th Cir. 1986) (citing Boles, 468 F.2d
at 478).

If Rule 19(a) calls for joinder, then a court must next determine whether “in
equity and good conscience,” F. R. Civ. P. 19(b), the lawsuit can proceed without the
party, or whether the party is required. See Pulitzer, 784 F.2d at 1309 (“if joinder is
called for, then Rule 19(b) guides the court in deciding whether the suit should be
dismissed if that person cannot be joined.”). Rule 19(b) directs that a court should
“consider” in its analysis:
(1) the extent to which a judgment rendered in the person's absence
might prejudice that person or the existing parties;
(2) the extent to which any prejudice could be lessened or avoided by:
(A) protective provisions in the judgment;
(B) shaping the relief; or
(C) other measures;
(3) whether a judgment rendered in the person's absence would be
adequate; and
(4) whether the plaintiff would have an adequate remedy if the action
were dismissed for nonjoinder.

F. R. Civ. P. 19(b). No single factor is dispositive. See Gensetix, 966 F.3d at 1326
(finding that “the district court abused its discretion in giving overwhelming weight
to UT's sovereign status to the exclusion of all other facts”). Resolving whether a
party is required is a practical inquiry, with an emphasis on pragmatism, whereby
the various harms that the parties and the absentees might suffer are considered.
Id.; see also Shell W. E & P Inc. v. Dupont, No. 92-1067, 1993 WL 491708, at *85
(M.D. La. 1993) (citing Bethel v. Peace, 441 F.2d 295, 296 (5th Cir. 1971)).
Where Rule 19(b) requires dismissal, a court must dismiss the case pursuant
to Rule 12(b)(7).
III.

Defendants state that “JSU, as an owner of the trademark which [plaintiffs]
claim to own, is an indispensable party to this litigation.”31 Defendants argue that
JSU is an “indispensable party” to the case because it holds common law and
Mississippi state trademarks for the phrase at issue,32 and because “[i]t is fairly
obvious that where the owner is left without the opportunity to defend its ownership,
it could experience a loss of rights[.]”33 See St. James v. NewPrague Area Cmty. Ctr.,
No. 06-1472, 2006 WL 2069197, at *2 (D. Minn. July 26, 2006) (noting that it is “well

established, in suits for . . . trademark infringement, that the owner of the . . .
trademark is subject to compulsory joinder”) (citations omitted).
Plaintiffs counter that JSU need not be a party because “potential defendant-
licensors aren’t Rule 19(a) ‘required parties’ and . . . trademark infringement
plaintiffs can sue or not sue infringers (joint tortfeasors, legally) as they see fit.” 34
Plaintiffs conclude that “forcing infringement plaintiffs to sue every possible infringer

cannot be the purpose of Rule 19(a).”35 For support, plaintiffs cite a legal treatise

31 R. Doc. No. 16-1, at 1–2.
32 R. Doc. No. 14-1, at 8.
33 R. Doc. No. 37, at 7.
34 R. Doc. No. 31, at 23.
35 Id. at 13–14.
stating that “there is very little authority regarding who must be joined in trademark-
infringement suits.”36
In response, defendants note that the “tort law maxim” that defendants who

are jointly and severally liable may be joined “at plaintiff’s discretion” would indicate
that plaintiffs need not join “all infringers” to a tort lawsuit. However, according to
defendants, that general rule fails to consider “particular distinctions among
‘infringers,’ such as a trademark owner and trademark licensee,” a relevant
distinction between defendants and JSU.37 It would be inappropriate to treat all
alleged “infringers” alike, according to defendants, when not all alleged infringers
have the same interests. “[T]he owner, if not joined, is likely to experience significant

impairment to its interests.”38 Defendants argue that, while plaintiffs may select
their choice of parties, Rule 19 “requires a balancing of the plaintiffs’ prerogative in
choosing who to sue and the necessity of joining a party the plaintiff failed to sue in
a particular case.”39
The Court agrees with defendants that, pursuant to Rule 19(a), JSU must be
joined. Defendants are correct that JSU’s possession of “an interest relating to the

36 Id. at 9 (quoting Mary Kay Kane, 7 Fed. Prac. & Prov. Civ. § 1614 (3d ed. April
2020 update). Plaintiffs also assert that the cases defendants cite for the proposition
that JSU must be joined are “inapposite” because they concern trademarks lawsuits
in different postures. R. Doc. No. 31, at 1.
37 R. Doc. No. 37, at 4–6 (emphasis in original).
38 Id. at 5. See also id. (noting that defendants’ “position would not ultimately force
Plaintiffs to sue every infringer, but only to include a single party – the trademark
owner – and for good reason.”).
39 Id. (citing Lisseveld v. Marcus, No. 96-336, 1997 WL 366053, 693 (M.D. Fla. 1997),
aff’d sub nom. Enviro Response v. Marcus, 268 F.3d 1066 (11th Cir. 2001)).
subject of the action may as a practical matter impair or impede the person’s ability
to protect the interest.” F. R. Civ. P. 19(a)(1)(B)(i). JSU claims a trademark owner’s
interest in the phrase “Thee I Love,” and engaging the merits of plaintiffs’ complaint

absent JSU’s participation in the case would, as a practical matter, hinder JSU’s
ability to protect its interest. This is particularly true in light of the ongoing petition
process between JSU and plaintiffs over the trademark.40
Therefore, the Court will evaluate whether sovereign immunity bars joinder,
and, if so, whether the case can proceed in JSU’s absence pursuant to Rule 19(b) or,
whether instead, the case must be dismissed, pursuant to Rule 12(b)(7) and/or Rule
12(b)(1).

III.

“The Eleventh Amendment bars citizens of a state from suing their own state
or another state in federal court unless the state has waived its sovereign immunity
or Congress has expressly abrogated it.” Raj v. Louisiana State Univ., 714 F.3d 322,
328 (5th Cir. 2013) (internal citations omitted). “[E]leventh amendment immunity is
a jurisdictional issue that cannot be ignored, for a meritorious claim to that immunity
deprives the court of subject matter jurisdiction of the action.” Jefferson v. Louisiana
State Supreme Court, 46 F.App’x 732, 732 (5th Cir. 2002).41 See also Arce v.
Louisiana, No. 16-14003, 2017 WL 5619376, at *4 (E.D. La. Nov. 21, 2017) (Africk,

40 R. Doc. No. 14-1, at 14–15.
41 The exceptions to sovereign immunity are inapposite, as immunity has not been
waived, nor has the immunity been undermined by abrogation or consent. See
Hughes v. Johnson, No. 15-7165, 2016 WL 6124211, at *4 (E.D. La. Oct. 20, 2016)
(Vance, J.).
J.) (“Sovereign immunity operates as ‘a constitutional limitation on the federal
judicial power.’”) (quoting Pennhurst State School & Hosp. v. Halderman, 465 U.S.
89, 98 (1984)).

Rule 19(a) demands that JSU be joined; but sovereign immunity precludes
joinder.42 JSU, as an arm of the State of Mississippi, enjoys the benefits of
Mississippi’s Eleventh Amendment protection. See Whiting v. Jackson State
University, 616 F.2d 116, 127 n.8 (5th Cir. 1980) (finding that “JSU is an agency of
the state because it is a state-created political body, Miss. Code Ann. § 37–125–1
(Cum. Supp. 1979), and receives state funding.”). JSU cannot be joined without
depriving of the Court of subject matter jurisdiction. Therefore, the Court must

determine whether this lawsuit may nevertheless proceed, absent JSU.
IV.
The question becomes whether, pursuant to Rule 19(b), the Court may proceed
without joining JSU or whether “equity and good conscience” mandate dismissal. F.
R. Civ. P. 19(b).
Plaintiffs claim that JSU need not be a party to this lawsuit because its absence

based on sovereign immunity “won’t prevent Collegiate] from representing its
interests[.]”43 In support of this argument, plaintiffs rely on Gensetix, which plaintiffs

42 Plaintiffs argue that the motions to dismiss “can’t be analyzed under Rule 12(b)(1)
because federal subject matter jurisdiction isn’t affected by the Eleventh
Amendment,” R. Doc. No. 31, at 7, claiming that “the discretion courts exercise when
the Eleventh Amendment intersects with Rule 19 means the Constitutional
limitations at play are prudential; they’re not jurisdictional.” Id. at 8. Plaintiff’s
contention is incorrect. See Jefferson, 46 F.App’x. at 732.
43 R. Doc. No. 31, at 2.
state counsels that the named defendants in this case could “adequately represent”
JSU’s interest.44 Plaintiffs also argue that “sovereign immunity alone isn’t a
compelling enough Rule 19(b) reason to dismiss a case where a licensee can

adequately defend the licensor’s interests.”45 Moreover, plaintiffs argue that “a
judgment rendered in [JSU’s] absence would be adequate” because “JSU faces no
invalidation of the questionable “trademarks” it “licensed” to [Collegiate]”; the claim
is based on “plaintiffs registered and pending federal marks,” not any that may belong
to JSU; and “there’s no evidence that JSU can or would defend where [Collegiate]
cannot.”46 Plaintiffs explain that Collegiate “is being sued because it infringed on the
plaintiffs’ marks – whether JSU continues to use its marks is not the point of the

suit.”47
Defendants counter that Gensetix is distinguishable and that defendants
cannot adequately represent JSU’s interest because “the interests are not
coextensive.” As such, defendants argue that JSU’s interests would not be adequately
represented by defendants.48 Defendants reason that Collegiate “does not have
‘substantially all interests’ of the owner” and, therefore, “the licensee does not

adequately represent the absent owner’s interests.”49 Additionally, defendants argue
that, for practical reasons, “[t]he absence of JSU . . . impairs” the defendants’ ability

44 Id. at 1–2.
45 Id. at 23.
46 Id. at 22 (emphasis in original).
47 Id. at 12.
48 Id.
49 R. Doc. No. 37, at 6.
to defend themselves, as such a defense would require “proof of use in commerce
among other particular facts and information belonging to JSU,” and that defendants
have “no way of even trying to present on behalf of JSU without JSU’s presence to

defend itself.”50
In the Fifth Circuit, “[d]etermining whether [a lawsuit should be dismissed in
the absence of a required party] is a highly-practical, fact-based endeavor.” Gensetix,
966 F.3d at 1324 (citing Hood v. City of Memphis, 570 F.3d 625, 628 (5th Cir. 2009)).
In Gensetix, the Federal Circuit permitted a patent challenge to proceed under Rule
19(b) without sovereign patent owner University of Texas, reasoning that the patent
licensees’ interests were sufficiently aligned with the patent owners’ to be able to

adequately represent its interest. Id.
The Court concludes that all four Rule 19(b) factors favor finding JSU to be a
required party. As to the first factor, “the extent to which a judgment rendered in
the person's absence might prejudice that person or the existing parties,” F. R. Civ.
P. 19(b)(1), the Court finds that both JSU and Collegiate would be prejudiced by JSU’s
absence. Though plaintiffs insist that the case is about their federal trademark, not

about JSU’s state or alleged common law trademark to Thee I Love, those marks are
not so clearly distinguished. For example, in their complaint, plaintiffs explicitly
complain about the “sale, distribution and dissemination of license plates, attached
to vehicles which move throughout the country, including Louisiana . . .” that bear

50 Id.
the phrase “Thee I Love.”51 But JSU owns a Mississippi trademark for use of the
phrase “Thee I Love” on license plates, as plaintiffs ultimately conceded in their
opposition to the motions to dismiss.52 As evidenced by this assertion in the complaint

itself, JSU’s interests as owner are implicated by this lawsuit, and JSU would be
prejudiced if absent from it.
The second factor, “the extent to which any prejudice could be lessened or
avoided by” either “protective provisions in the judgment; shaping the relief; or other
measures,” also tilts toward finding JSU to be a required party. JSU’s interest in the
lawsuit is implicated not only by potential judgment or the form of relief, but by the
necessary inquiry into ownership of the trademark itself.

The third factor, “whether a judgment rendered in the person's absence would
be adequate,” favors including JSU. The Court is persuaded by the distinctions that
defendants identify between Gensetix and the instant case. Unlike in Gensetix, the
interests between JSU and its licensees are not “identical[,]” see 966 F.3d at 1326; the
Court cannot presume the licensees fully stand in JSU’s shoes.53 See A123 Sys., Inc.
v. Hydro-Quebec, 626 F.3d 1213, 1216 (Fed. Cir. 2010) (affirming the district court’s

finding that, in a patent infringement case, where the patent owner had “grant[ed]
only a field-of-use license,” the patent owner “had transferred less than all
substantial rights in the patents in suit to [licensee], thereby making [the patent
owner] a necessary party” to the lawsuit).

51 R. Doc. No. 1, at 5.
52 R. Doc. No. 31, at 8 (citing R. Doc. 14-3, at 59–60).
53 See R. Doc. No 37, at 6.
Finally, the fourth factor, “whether the plaintiff would have an adequate
remedy if the action were dismissed for nonjoinder,” also favors including JSU.
Unlike in Gensetix, where plaintiff was “without recourse to assert its patent rights

because UT cannot be feasibly joined[,]” 966 F.3d at 1326, plaintiffs in the instant
case would not be fully without recourse if the instant case were dismissed. Rather,
as defendants suggest, plaintiffs could challenge “JSU’s applications for THEE I
LOVE at the United States Patent and Trademark Office.”54
The Court concludes that after reviewing each of the Rule 19(b) factors, in
“equity and good conscience,” the case cannot proceed absent JSU. Therefore, the
Court finds JSU to be a required party to this lawsuit.

Because JSU is a required party who must be joined, but whose joinder would
divest this Court of subject matter jurisdiction, plaintiffs’ claims against defendants
must be dismissed pursuant to Rule 12(b)(7).
The Court declines to reach the Rule 12(b)(1) analysis, as the inquiry pursuant
to Rule 12(b)(7) fully resolves the motions before the Court. See Sinochem Int'l Co. v.
Malaysia Int'l Shipping Corp., 549 U.S. 422, 431 (2007) (noting “that a federal court

has leeway to choose among threshold grounds for denying audience to a case on the
merits” and holding that a district court may dispose of a case on any proper
nonmerits ground—including nonjurisdictional grounds—before establishing its
subject matter jurisdiction) (citations omitted); cf. Fla. Wildlife Fed'n Inc. v. United
States Army Corps of Engineers, 859 F.3d 1306, 1321 (11th Cir. 2017) (Tjoflat, J.,

54 R. Doc. No. 14-1, at 27.
concurring) (asserting that the district court exceeded its discretion by “declining to
rule on a nonjurisdictional ground (the [ ] Rule 19(b) failure-to-join ground) in favor
of a jurisdictional basis (the [ ] Rule 12(b)(1) sovereign-immunity ground)”).

V.
Accordingly,
IT IS ORDERED that, pursuant to Rule 12(b)(7) of the Federal Rules of Civil
Procedure, Collegiate’s and Reed’s motions to dismiss are GRANTED and that the
claims against Collegiate and Reed in the above-captioned case are DISMISSED
WITHOUT PREJUDICE.
New Orleans, Louisiana, September 15, 2020.

LANCE M. AFRICK
UNITED STATES DISTRICT JUDGE

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10185892. Public record. Not legal advice.