IP with Training Wheels – Kellytoy Worldwide, Inc. and Kellytoy (USA), Inc. v. Ty, Inc. et al, 2020 WL 6059869 – Permissive Joinder (USDC-ND-ED) 14 October 2020.

Ty Warner and Ty, Inc. have a reputation as litigious and this case supports that view. Ty, Inc. was sued for trademark infringement for use of the trademarks PUFFY and SQUISHMALLOW. The operative complaint alleges that Kellytoy (USA) owned the federal registration for PUFFY trademark and Kellytoy Worldwide owned the federal registration for SQUISHMALLOW. This ruling arises as a result of Plaintiff’s motion under Rule 20(a)(1) to join Kelly Toys Holdings, LLC which had acquired right, title and interest in the intellectual property before the filing of the complaint. Ty resisted the motion. The court granted the motion.

Rule 20(a)(1) states: “Persons may join in one action as plaintiffs if: (A) they assert any right to relief jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and (B) any question of law or fact common to all plaintiffs will arise in the action.” Fed. R. Civ. P. 20(a)(1).

The court makes short work of Ty’s position recognizing that when Ty argues that Kellytoy lacks standing that Ty is wrong because Kellytoy could bring suit for past infringement. Moreover, if Kellytoy wants and injunction that joinder is the natural step forward as the court would have the current rights holding in the case. Regardless, if both the past rights holder and the current rights holder are in the case, then regardless of the relief sought then the right plaintiff is in the case and the court can proceed. The court reminds us that standing focuses on the “state of affairs at the suit’s commencement.” The court contrasts standing with mootness. Mootness, the court reminds us, is the condition of the case where standing is lost during the pendency of the matter. A good point for us law geeks to remember. Good Weekend! Jim Faier. Call with your issues! 312-382-9400. Or write me at jmfaier@faier.com.