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`Case 2:21-cv-00525-RSM Document 41 Filed 05/11/22 Page 1 of 7
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`T-MOBILE US, INC.,
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`v.
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`Plaintiff,
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`SIMPLY WIRELESS, INC.,
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`Defendant.
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`CASE NO. C21-525RSM
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`ORDER GRANTING MOTION TO
`DISMISS WITH LEAVE TO AMEND
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` INTRODUCTION
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`I.
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`This matter comes before the Court on Defendant Simply Wireless, Inc.’s Motion to
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`Dismiss under Rule 12(b)(6). Dkt. #13. Plaintiff T-Mobile US, Inc. opposes. Dkt. #22. The
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`Court has determined oral argument is unnecessary. For the reasons stated below, the Court
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`GRANTS Simply Wireless’s Motion with leave to amend.
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`II.
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`BACKGROUND
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`For purposes of this Motion to Dismiss, the Court will accept all facts stated in the
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`Complaint, Dkt. #1, as true. The Court has not considered exhibits 1, 2, and 3 attached to
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`Defendant Simply Wireless’s Motion. Defendant has failed to set forth an adequate basis for
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`taking judicial notice of these exhibits, which are purportedly archival copies of the Simply
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`ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND - 1
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`Case 2:21-cv-00525-RSM Document 41 Filed 05/11/22 Page 2 of 7
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`Wireless website. The Court has considered Exhibit 4, which is a copy of a filing submitted by
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`T-Mobile to the Patent and Trademark Office, but only for notice that such was filed, not for the
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`truth of the materials contained therein. See Dkt. #14 at 10–17. There may be an opportunity
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`later in this litigation for the parties to discuss disputed facts outside the pleadings.
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`Unless stated otherwise, all facts below are from the Complaint. See Dkt. #1.
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`Plaintiff T-Mobile is a national provider of wireless voice, messaging, and data services,
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`and the United States mobile telecommunications subsidiary of Deutsche Telekom AG
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`(“DTAG”). DTAG owns the standard character mark T-MOBILE and a stylized T-Mobile
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`Mark (collectively, the “T-Mobile Marks”). DTAG has granted T-Mobile an exclusive license
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`to use the T-Mobile Marks in the United States and has authorized T-Mobile to enforce its
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`rights in this matter.
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`Simply Wireless sells mobile phones and accessories for all major telecommunication
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`carriers. T-Mobile and Simply Wireless had business relationships from 2003 to 2009 and July
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`2012 to June 2015. From 2003 to 2009 Simply Wireless was an authorized dealer of T-Mobile
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`devices and services. This relationship was memorialized in a series of agreements hereinafter
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`referred to as the “Dealer Agreements” and include: 2008 Premier Retailer Agreement; 2008
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`Semi-Exclusive Retailer Agreement; and 2005 Premier Dealer Agreement.
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`During the course of that business relationship, Simply Wireless engaged in cooperative
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`advertising with T-Mobile at its retail stores and kiosks and through various advertising media.
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`From July 12, 2012, to June 30, 2015, Simply Wireless and T-Mobile were parties to a
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`Limited Purpose Co-Marketing and Distribution Agreement for Prepay Equipment Sold through
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`HSN and QVC (“HSN Agreement”).
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`Simply Wireless owns and maintains the website www.simplywireless.com. At the time
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`the Complaint was filed, a page on that site included a section with the header “Simply
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`ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND - 2
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`Case 2:21-cv-00525-RSM Document 41 Filed 05/11/22 Page 3 of 7
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`Partners” and a list of other companies’ logos, e.g. Amazon.com, Apple and Samsung, and
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`specifically the T-Mobile Mark.
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`As part of their prior business dealings, T-Mobile granted Simply Wireless a limited
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`license to use the T-Mobile Marks, but now pleads that any such license has expired and Simply
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`Wireless has no right or authority to use its Marks. T-Mobile does not consider itself a
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`“partner” of Simply Wireless.
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`The Complaint alleges violations of the Lanham Act through false designation of origin,
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`false advertising, and infringement, as well as violation of the Washington Consumer Protection
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`Act (“CPA”). T-Mobile alleges that, based on the above, customers will be confused and
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`“likely associate T-Mobile with complaints they have about Simply Wireless’s products and
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`services.”
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`A. Legal Standard under Rule 12(b)(6)
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`III. DISCUSSION
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`In making a 12(b)(6) assessment, the court accepts all facts alleged in the complaint as
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`true, and makes all inferences in the light most favorable to the non-moving party. Baker v.
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`Riverside County Office of Educ., 584 F.3d 821, 824 (9th Cir. 2009) (internal citations omitted).
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`However, the court is not required to accept as true a “legal conclusion couched as a factual
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`allegation.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly,
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`550 U.S. 544, 555 (2007)). The complaint “must contain sufficient factual matter, accepted as
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`true, to state a claim to relief that is plausible on its face.” Id. at 678. This requirement is met
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`when the plaintiff “pleads factual content that allows the court to draw the reasonable inference
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`that the defendant is liable for the misconduct alleged.” Id. The complaint need not include
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`detailed allegations, but it must have “more than labels and conclusions, and a formulaic
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`ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND - 3
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`Case 2:21-cv-00525-RSM Document 41 Filed 05/11/22 Page 4 of 7
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`recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at 555. Absent
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`facial plausibility, a plaintiff’s claims must be dismissed. Id. at 570.
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`Where a complaint is dismissed for failure to state a claim, “leave to amend should be
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`granted unless the court determines that the allegation of other facts consistent with the
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`challenged pleading could not possibly cure the deficiency.” Schreiber Distrib. Co. v. Serv-
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`Well Furniture Co., 806 F.2d 1393, 1401 (9th Cir. 1986).
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`B. Analysis
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`1. Lanham Act Claims
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`T-Mobile asserts claims under 15 U.S.C. § 1125(a)(1)(A) and (B) and 15 U.S.C. § 1114.
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`§ 1114 prohibits trademark infringement. More specifically, it prohibits using a trademark in a
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`way that is likely to confuse consumers about goods or services, such as by confusing
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`consumers into believing that goods or services were made by the trademark’s owner when they
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`were not. Similarly, § 1125(a)(1)(A) and (B) prohibit persons from misleading consumers
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`about the origin or nature of products sold by those persons.
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`“Trademark law generally does not reach the sale of genuine goods bearing a true mark
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`even though such sale is without the mark owner’s consent.” NEC Elecs. v. CAL Cir. Abco, 810
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`F.2d 1506, 1509 (9th Cir. 1987). Once a trademark owner sells his product, the buyer ordinarily
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`may resell the product under the original mark without incurring any trademark law liability.
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`Id. (citing Prestonettes, Inc. v. Coty, 264 U.S. 359, 368-69, 68 L. Ed. 731, 44 S. Ct. 350 (1924)).
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`The reason is that trademark law is designed to prevent sellers from confusing or deceiving
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`consumers about the origin or make of a product, which confusion ordinarily does not exist
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`when a genuine article bearing a true mark is sold. Id.
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`T-Mobile pleads that Simply Wireless sold its goods and services for years, see Dkt. #1
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`at ¶¶ 17–20, and as Simply Wireless puts it, “does not allege that Simply Wireless no longer
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`ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND - 4
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`Case 2:21-cv-00525-RSM Document 41 Filed 05/11/22 Page 5 of 7
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`sells T-Mobile goods and services.” Dkt. #13 at 12 n.5. Simply Wireless argues it “is entitled
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`to advertise that it sells products and services of T-Mobile,” that “using T-Mobile’s logo to
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`convey to consumers that Simply Wireless sells such products is not a violation of the Lanham
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`Act,” and that “it would be misleading if Simply Wireless sold T-Mobile products without using
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`the T-Mobile logo to designate their source of origin.” Id. at 10 (emphasis in original).
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`In sum, Simply Wireless argues its conduct as alleged hardly demonstrates a violation of
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`the Lanham Act because it is or was a reseller of T-Mobile phones and services. The Court
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`agrees. The sole conduct at issue is the portion of Simply Wireless’s website in paragraph 26 of
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`the Complaint. The image reproduced there has the words “Simply Partners” at the top,
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`followed by the corporate logos of 26 companies. Given Simply Wireless’s business model, the
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`obvious reason why these companies are identified in this way is that Simply Wireless works
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`with these entities in one capacity or another, such as by selling their goods and services.
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`T-Mobile has not identified any goods or services sold by Simply Wireless that could
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`support a claim under either statute. T-Mobile’s Complaint only refers generally to “Simply
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`Wireless’s . . . goods and/or services” and does not identify any good or service it believes to be
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`misleading or otherwise fall afoul of the statutes. See Dkt. #1 at ¶ 30. Nothing in the Complaint
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`supports T-Mobile’s position that any consumer is confused about who makes or provides the
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`goods and services being purchased at a Simply Wireless stores. Conclusory statements of
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`consumer confusion do not past the Twombly/Iqbal test. T-Mobile has failed to plead facts
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`supporting a plausible claim for liability under these statutes.
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`2. CPA Claim
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`To prevail on its CPA claims, Plaintiff must prove: (1) an unfair or deceptive act or
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`practice, (2) occurring in trade or commerce, (3) affecting the public interest, (4) injury to a
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`person’s business or property, and (5) causation. Ambach v. French, 216 P.3d 405, 407 (Wash.
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`ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND - 5
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`Case 2:21-cv-00525-RSM Document 41 Filed 05/11/22 Page 6 of 7
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`2009); Panag v. Farmers Ins. Co. of Wash., 204 P.3d 885, 889 (Wash. 2009). Whether an act
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`is unfair or deceptive is a question of law for the court. See Panag, 204 P.3d at 894.
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`“[A]n act or practice is deceptive if ‘first, there is a representation, omission, or practice
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`that, second, is likely to mislead consumers acting reasonably under the circumstances, and
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`third, the representation, omission, or practice is material.’ . . . [T]he test . . . is whether the net
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`impression created by a solicitation, viewed as a whole rather than as individual parts, is
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`deceptive.” Keithly v. Intelius Inc., 764 F. Supp. 2d 1257, 1266 (W.D. Wash. 2011) (internal
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`citations omitted).
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`There is no plausible allegation of deception in the Complaint. For the reasons stated
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`above, the Court finds that T-Mobile has failed to allege an unfair or deceptive act and therefore
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`has failed to state a claim under the CPA.
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`3. Statute of Limitations
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`Simply Wireless also argues T-Mobile knew or should have known of the above logo
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`placement since 2015 when the contractual relationship ended, and that this bars T-Mobile’s
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`claims under the applicable statute of limitations or laches. While that certainly may be the
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`case, and seems to follow logically from the record, the Court cannot conclude such as a matter
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`of law without examining evidence outside the pleadings.
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`C. Leave to Amend
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`A “court should freely give leave [to amend] when justice so requires,” Fed. R. Civ. P.
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`15(a)(2). Courts apply this policy with “extreme liberality.” Eminence Capital, LLC v. Aspeon,
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`Inc., 316 F.3d 1048, 1051 (9th Cir. 2003). Five factors are commonly used to assess the
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`propriety of granting leave to amend: (1) bad faith, (2) undue delay, (3) prejudice to the
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`opposing party, (4) futility of amendment, and (5) whether plaintiff has previously amended the
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`complaint. Allen v. City of Beverly Hills, 911 F.2d 367, 373 (9th Cir. 1990); Foman v. Davis,
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`ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND - 6
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`Case 2:21-cv-00525-RSM Document 41 Filed 05/11/22 Page 7 of 7
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`371 U.S. 178, 182 (1962). In conducting this five-factor analysis, the court must grant all
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`inferences in favor of allowing amendment. Griggs v. Pace Am. Group, Inc., 170 F.3d 877, 880
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`(9th Cir. 1999). In addition, the court must be mindful of the fact that, for each of these factors,
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`the party opposing amendment has the burden of showing that amendment is not warranted.
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`DCD Programs, Ltd. v. Leighton, 833 F.2d 183, 187 (9th Cir. 1987); see also Richardson v.
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`United States, 841 F.2d 993, 999 (9th Cir. 1988).
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`The Court finds that the above deficiencies with the Complaint can possibly be cured by
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`amendment. There has been no previous amendment or evidence of undue delay. Simply
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`Wireless alleges that this case has been filed in bad faith. Prejudice to Simply Wireless if
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`amendment is permitted will be minimal given the procedural posture of this case. Weighing all
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`of the above factors, leave to amend will be granted. However, the Court cautions the parties to
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`carefully consider the costs of proceeding with this case given the mild nature of the accusations
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`and the apparent lack of damages.
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`IV. CONCLUSION
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`Having reviewed the relevant pleadings and the remainder of the record, the Court
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`hereby finds and ORDERS that Defendant’s Motion to Dismiss Plaintiff’s Complaint under
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`Rule 12(b)(6), Dkt. #13, is GRANTED. Plaintiff’s claims are DISMISSED with leave to
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`amend. Plaintiff shall have thirty (30) days to file an amended complaint. If Plaintiff fails to do
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`so, this case will be closed.
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`DATED this 11th day of May, 2022.
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`A
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`RICARDO S. MARTINEZ
`CHIEF UNITED STATES DISTRICT JUDGE
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`ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND - 7
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