In a recent trade dress infringement case involving manufacturers of sporting helmets, Judge Saylor set forth a unique approach in deciding a motion to strike newly added counterclaims.  The case started out, as they often do, with patent claims.  In its original complaint, plaintiff Bern Unlimited alleged that defendant Burton Corp. infringed a design patent directed to Bern’s “Baker” line of helmets.  However, for reasons not made entirely clear, Bern dropped its charge of patent infringement—amending its complaint three times—and ultimately brought a claim against Burton for trade dress infringement.  According to Bern, its “Baker” line includes a distinctive rounded profile and visor, which Burton unlawfully appropriated into its helmets.


Side-by-side comparison of Bern “Baker” helmet (left) with accused Burton “Mutiny” helmet (right).  Bern Unlimited, Inc. v. Burton Corp., Civ. No. 11-12278-FDS, Doc. No. 158 (D. Mass. Mar. 7, 2014).

Burton asserted no counterclaims in response to Bern’s original, first-, or second-amended complaints.  Instead, Burton’s counterclaims—directed largely to Bern’s alleged false advertising—were raised in response to Bern’s third amended complaint, which only added certain defendants to the action.  Bern then filed a motion to strike Burton’s counterclaims, arguing, in pertinent part, that Burton’s counterclaims were untimely and prejudicial, and that Burton was required to seek leave of court to file them (which it did not do).

In deciding the motion to strike, Judge Saylor discussed—and rejected—two approaches that were historically used to determine the propriety of adding new or amended counterclaims: (1) the “moderate” approach, whereby amended counterclaims were permitted only if a new complaint changed the scope of the case; and (2) the “permissive” approach, under which new counterclaims were allowed as a matter of course when an amended complaint was filed.

Relying on 2009 advisory committee notes to the Federal Rules of Civil Procedure, Judge Saylor provided a new, and “better approach,” to this issue:  simply applying Fed. R. Civ. P. 15 (regarding amendments to pleadings) equally to amended complaints and amended counterclaims.  In particular, Judge Saylor said that a counterclaim filed in response to an amended complaint falls under Rule 15(a)(2)—applicable, generally speaking, to amended pleadings 21 days after service—which requires the court’s leave or opposing counsel’s consent, and that the court “should freely give leave [to amend] when justice so requires,” absent “undue delay, bad faith or dilatory motive, . . . repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party . . . [and] futility of amendment.”

According to the Court, this standard is better than the “permissive approach,” because both amended complaints and counterclaims require leave of court, avoiding a potentially “inequitable situation” where the “plaintiff would be required to obtain leave to make amendments to its pleadings, but the defendant counterclaimant would not.”  Further, the Court said that standard requires fewer “difficult question[s]” than the “moderate approach,” because there is no inquiry into whether a counterclaim “‘responds’ to an amended complaint . . . .”

Without discussing exactly how this standard affected the outcome of the motion, Judge Saylor largely denied the motion to strike the counterclaims, issuing a narrow ruling that merely struck as moot a declaratory judgment counterclaim as to the validity of Bern’s patent (the claims of which had already been dropped from the case), and struck as futile certain counterclaims directed to advertising “puffery.”