Paige Lee, et al. v. Anthony Lawrence Collection, L.L.C., et al.

Under Federal Rules of Civil Procedure 19(a), the joinder of IP owners/licensors as plaintiffs alongside licensees is required to prevent double recovery in infringement actions. But infringement defendants are joint tortfeasors who, under this Court’s Temple v. Synthes1 rule, are only permissively joined. Their joinder as defendants isn’t required. The question presented is whether a nonparty’s status as trademark licensor, without more, makes his joinder as a defendant alongside his licensee required under Rule 19(a). Courts interpreting Federal Rules of Civil Procedure 19(a) hold that a party required for joinder must claim a “non-frivolous interest” in the subject of the action. Republic of Philippines v. Pimentel.2 Under federal trademark law, registering a trademark creates strong presumptions about the registration, the mark, and its owner’s exclusive use rights.3 1 Temple v. Synthes Corp., Ltd., 498 U.S. 5; 111 S.Ct. 315; 112 L.Ed.2d 263 (1990). 2 553 U.S. 851; 128 S.Ct. 2180; 171 L.Ed.2d 131 (2008). 3 “A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” 15 U.S.C.A. § 1057(b).