United States District Court, D. Utah
MEMORANDUM DECISION AND ORDER DENYING MOTION TO
DISMISS AND GRANTING FURTHER DISCOVERY
N. Parrish United States District Court Judge
the court is Carnet, LLC39;s motion for summary judgment
regarding Cornaby39;s LLC39;s lack of standing. [Docket
103]. But courts may not adjudicate claims-summarily or
otherwise-based upon a lack of standing; they may only
dismiss the claims of a party that lacks standing. Common
Cause of Penn. v. Pennsylvania, 3d 249');">558 F.3d 249, 257 (3d
Cir. 2009) (“Absent Article III standing, a federal
court does not have subject matter jurisdiction to address a
plaintiff39;s claims, and they must be dismissed.”
(citation omitted)). The court therefore treats Carnet39;s
motion as a motion to dismiss for lack of subject matter
jurisdiction under Rule 12(b)(1) of the Federal Rules of
Civil Procedure. See Lance v. Coffman, 37');">549 U.S. 437,
439 (2007) (per curiam) (“Article III of the
Constitution limits the jurisdiction of federal courts to
‘Cases39; and ‘Controversies.39; One
component of the case-or-controversy requirement is standing
. . . .”); Colorado Envtl. Coal. v. Wenker,
353 F.3d 1221');">353 F.3d 1221, 1227 (10th Cir. 2004) (treating a dismissal
for lack of standing as a Rule 12(b)(1) dismissal).
court DENIES Carnet39;s motion to dismiss. The court,
however, GRANTS Carnet39;s request to reopen discovery so
that it can depose David Cornaby and Janet Stocks regarding
the standing issue.
hearing for the many assorted motions pending before the
court, Carnet argued for the first time that this court does
not have standing to adjudicate Cornaby39;s causes of
action because it acquired the Ultra Gel trademark only after
it filed this lawsuit. See Gaia Techs. Inc. v. Recycled
Prod. Corp., 3d 365');">175 F.3d 365, 369 (5th Cir. 1999)
(“[I]n order to have standing under the federal
infringement statutes, [a plaintiff] must prove that it owned
the relevant . . . trademark when it filed suit . . .
.”); Niemi v. Lasshofer, 3d 1252');">728 F.3d 1252, 1261
(10th Cir. 2013) (“[S]tanding to pursue a claim must
normally exist by the time a lawsuit is filed.”).
Carnet subsequently filed a motion requesting dismissal of
Cornaby39;s claims for lack of standing. [Docket 103].
responded to the motion by providing an affidavit signed by
Janet and an affidavit signed by David. Attached to both
affidavits, are copies of a purchase agreement and a
trademark assignment agreement that clearly show that Janet
assigned whatever rights she had in the Ultra Gel trademark
to Cornaby39;s well before this suit was initiated. [Docket
reply did not challenge the authenticity of the trademark
transfer documents produced by Cornaby39;s. Instead, Carnet
argued that this court should ignore these documents for two
reasons: (1) the documents were not produced before the
discovery cutoff and (2) David39;s affidavit and attached
documents should be disregarded because the affidavit
contradicts his deposition testimony. In the alternative,
Carnet asked for sanctions and an opportunity to depose David
and Janet at Cornaby39;s expense. [Docket 116].
CARNET39;S MOTION TO DISMISS FOR LACK OF STANDING
is a jurisdictional issue that may be raised at any time.
United States v. $148, 840.00 in U.S. Currency, 521
F.3d 1268, 1273 (10th Cir. 2008) (“Whether a claimant
has constitutional standing is a threshold jurisdictional
question” that may be raised at any time.). A motion to
dismiss for lack of jurisdiction under Rule 12(b)(1) may take
one of two forms. A party may make a facial challenge to the
allegations contained in the plaintiff39;s complaint, or a
party may mount a factual challenge by asserting that the
underlying facts of the case do not support the jurisdiction
of the court. United Tribe of Shawnee Indians v. United
States, 3 F.3d 543');">253 F.3d 543, 547 (10th Cir. 2001).
arguing that Cornaby39;s did not own the Ultra Gel
trademark when it filed this suit, Carnet challenges the
factual basis for Cornaby39;s standing. “In
addressing a factual attack, the court . . . ‘has wide
discretion to allow affidavits, other documents, and a
limited evidentiary hearing to resolve disputed
jurisdictional facts under Rule 12(b)(1).39;”
Id. (citation omitted).
has produced conclusive documentary evidence that it owned
the Ultra Gel trademark before it filed this suit. Carnet
does not directly challenge the authenticity of these
documents, but instead argues that this court should ignore
the documents produced by Cornaby39;s for two reasons: as a
discovery sanction or under the sham affidavit rule. The
court rejects both of these arguments for excluding these
documents from its consideration, but grants Carnet39;s
alternative request to depose David and Janet regarding the
authenticity of the transfer documents.
Carnet argues that the court should disregard the trademark
transfer documents because they were not produced during
discovery. It argues that these documents were responsive to
the stipulated Rule 26 disclosures and that Cornaby's
failed to provide them before the close of fact discovery.
Therefore, Carnet asserts that Rule 37(c)(1) requires the
exclusion of these documents. This rule provides: “If a
party fails to provide information or identify a witness as
required by Rule 26(a) or (e), the party is not allowed to
use that information or witness to ...