UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF INDIANA

HAMMOND DIVISION

DESIGN BASICS, LLC, and )

W.L. MARTIN HOME DESIGNS, LLC, )

Plaintiffs, )

)

v. ) CAUSE NO. 2:16-CV-179-PPS-JEM

)

PRECISION HOMES, INC., )

Defendant. )

OPINION AND ORDER

This matter is before the Court on a Motion for Leave to File First Amended Complaint [DE

38], filed by Plaintiffs on October 13, 2017. Plaintiffs request leave to file an Amended Complaint.

Defendant filed a response on October 27, 2017, and Plaintiffs filed a reply on November 3, 2017.

I. Background

Plaintiffs filed their Complaint for infringement of copyright in architectural works on May

19, 2016. Plaintiffs allege, in relevant part, that Defendant constructed and sold houses derived from

three of Plaintiffs’ copyright-protected home plans. They now seek leave to add claims that

Defendant has infringed additional copyrights held by Plaintiff Design Basics, alleging that materials

produced by Defendant during the course of discovery only recently provided evidence of the

additional infringement. They also wish to amend to voluntarily dismiss the claims of Plaintiff W.L.

Martin Home Designs, LLC.

II. Analysis

In its scheduling order of August 25, 2016, the Court set the deadline for Plaintiffs to amend

their pleadings to October 31, 2016. No party timely moved to extend the deadline, and Plaintiffs’

Motion to Amend was filed almost a year after the deadline had passed. A scheduling order “may

be modified only for good cause and with the judge’s consent.” Fed. R. Civ. P. 16(b)(3). Where, as
in this case, a party fails to seek leave to amend after the applicable deadline, the Court must

approach the motion in two steps, first determining whether there is good cause under Rule 16(b)

for filing the amendment after the deadline, then addressing the appropriateness of the amendment

itself pursuant to Rule 15(a). Alioto v. Town of Lisbon, 651 F.3d 715, 719 (7th Cir. 2011). “In

making a Rule 16(b) good-cause determination, the primary consideration for district courts is the

diligence of the party seeking amendment.” Id. at 720.

 If good cause exists to allow the late amendment, the Court must next analyze whether the

amendment is appropriate under Rule 15(a)(2). Id. at 719. Federal Rule of Civil Procedure 15(a)(2)

provides that courts should “freely give leave” to amend pleadings “when justice so requires.” Thus,

if underlying facts or circumstances relied upon by a plaintiff are potentially a proper subject of

relief, the party should be afforded an opportunity to test the claim on the merits. Foman v. Davis,

371 U.S. 178, 182 (1962). The decision to grant or deny a motion to amend lies within the Court’s

sound discretion, and leave to amend is “inappropriate where there is undue delay, bad faith, dilatory

motive on the part of the movant, repeated failure to cure deficiencies by amendments previously

allowed, undue prejudice to the opposing party by virtue of allowance of the amendment, or futility

of the amendment.” Villa v. City of Chicago, 924 F.2d 629, 632 (7th Cir. 1991); Campbell v.

Ingersoll Milling Mach. Co., 893 F.2d 925, 927 (7th Cir. 1990).

Plaintiffs argue that good cause exists to allow the late amendment because, despite their

diligent efforts to pursue the relevant information in discovery, Plaintiffs learned that Defendant may

have infringed their other designs only after they received Defendant’s late discovery responses.

Defendant counters that Plaintiffs knew about Defendant’s allegedly infringing house plans long

before filing the instant Motion to Amend, and perhaps even before filing their original Complaint,

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and argues that Plaintiffs’ own inadvertence or carelessness in omitting the additional designs from

their Complaint does not constitute “good cause” to allow an amendment to the Complaint at this

late stage. Plaintiffs disagree, arguing that while they did suspect Defendant may have infringed

their copyrights in the additional designs, they were unable to confirm that suspicion and unable to

discern whether those designs may have been infringed until they received belated responses to

discovery requests.

On or about September 8, 2106, Plaintiffs sent Defendant their initial requests for production,

including request 25, which sought a “complete set of all the House Plans created or acquired by

Defendant (including drawings, blueprints, sketches, mockups, genesis, notes, preliminary designs,

and final contraction [sic] documents) whether the house was constructed or not, for years 2000

through the present.” Defendant objected to the request on several grounds and only produced files

related to some plans it had received from Design Basics. Plaintiffs and Defendant conferred about

the objections, and Defendant eventually turned over the responsive house plans in three batches

from June 14, 2017, through September 25, 2017. On October 3, 2017, Plaintiffs notified Defendant

of their intent to amend the Complaint. They filed the instant Motion and proposed Amended

Complaint 10 days later, just 18 days after receiving the last batch of responsive plans.

Defendant insists that Plaintiffs should have included their other potentially infringed designs

in the original Complaint; however, Plaintiffs had no way to be certain as to which of their other

designs might belong in the Amended Complaint until it reviewed the house plans that Defendant

produced in June, August, and September of 2017. As early as February 2017, during the

negotiations over discovery responses, Plaintiffs indicated to Defendant that they might seek

amendment of the Complaint based on the plans received in discovery. While it is true that Plaintiffs

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would have been well-advised to request an extension of the amended pleadings deadlines in

anticipation of their possible need, it is also true that they were diligent in seeking the discovery

responses they required and were forthright with Defendant as to why. In light of that diligence, and

in light Defendant’s delay in producing the house plans responsive to Plaintiffs’ original request,

the Court finds that good cause exists to allow the late request to amend.

Turning to the Rule 15(a) factors, Plaintiffs argue that they are seeking to include their

recently-discovered claims against Defendant in this lawsuit in order to avoid filing a second lawsuit

between the same two parties. Defendant argues that it will be unduly prejudiced because the lawsuit

would now include numerous homes that were not part of the original lawsuit. However, Defendant

was aware that Plaintiffs were considering amending their suit to include additional claims of

infringement, and Plaintiff’s amendment does not appear to be in bad faith. Plaintiffs made a request

for production expected to lead to the discovery of the home plans as far back as September 8, 2016.

Though addressing the underlying copyright claims may result in some expansion of discovery and

cost in this suit, doing so will likely be less time-consuming and less costly than pursuing a second

suit based on the additional allegedly copyright-protected designs. Therefore, the Court will allow

the amendment and allow the parties to test Plaintiffs’ additional claims on the merits.

III. Conclusion

For the foregoing reasons the Court GRANTS the Motion for Leave to File First Amended

Complaint [DE 38] and ORDERS Plaintiffs to file their Amended Complaint, currently attached as

an exhibit to the instant Motion, by February 8, 2018.

The Court TAKES UNDER ADVISEMENT Defendant’s, Precision Homes, Inc.’s, Motion

to Strike Plaintiffs’ Rebuttal Expert Witnesses, and for Reconsideration of the Court’s Order of

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October 27, 2017, to Properly Limit the Nature and Scope of a Modified Discovery Deadline to Deal

Only with Properly and Timely Disclosed Expert Witnesses [DE 43] and Plaintiffs’ Motion for

Leave to File Sur-Reply in Opposition to Defendant’s Motion to Exclude Plaintiffs’ Rebuttal Expert

Reports [DE 49], and SETS this matter for a hearing on March 15, 2018 at 10:45 a.m. (Central

Time) to address these motions as well as any additional discovery needed as a result of the amended

pleadings. Parties may participate telephonically by providing notice by email to Courtroom Deputy

Sue Brown at sue_brown@innd.uscourts.gov within 48 hours in advance of the hearing.

SO ORDERED this 2nd day of February, 2018.

s/ John E. Martin 

MAGISTRATE JUDGE JOHN E. MARTIN

UNITED STATES DISTRICT COURT

cc: All counsel of record

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