Schedule A defendant (SAD) anti-counterfeiting lawsuits tend to be filed in the Northern District of Illinois and the Southern District of Florida. Judge Ranjan, noting an “uptick in such cases” in the W.D. Penn (home to the city of Pittsburgh) issued a “re-examination” of how they are procedurally administered. The court’s six guidelines are very similar to the five procedural concerns highlighted by Judge Kness in the N.D. Illinois.
“Schedule A defendant” refers to the captions of such suits – the complaint lists so many defendants that they must be listed in a schedule attached to the complaint.
Below is a summary of the order drafted by robots at Google Notebook LM, which I only lightly edited (full text of the order in the link at the bottom):
The Standing Order on “Schedule A” Cases is issued by the Court due to a noticeable uptick in such cases in the District, prompting a re-examination of how they are procedurally administered. While acknowledging the serious problem of counterfeit sales and the need for IP holders to obtain meaningful relief against online foreign sellers, the Court notes that Schedule A litigation has led to “gradual and oftentimes bizarre modifications from how normal litigation is conducted,” likely for efficiency.
The Court identifies several issues that have become common in Schedule A cases but are rare in other civil litigation:
• Preemptive requests to be excused from Hague Convention service and translation requirements for foreign service.
• Frequent ex parte motions for Temporary Restraining Orders (TROs) seeking to freeze all defendants’ assets, often before evidence of asset movement and without being narrowly tailored.
• Distortion of rules regarding joinder (Rule 20) and personal jurisdiction, often involving hundreds of defendants and disparate intellectual property, and suing without a sound basis for contacts into the forum. The Court views many of these modifications as “extraordinary exceptions to the normal rules” driven by the economics of the litigation.
To address these issues and ensure that rules and law are followed, the Court provides six procedural guidelines it intends to employ:
• 1. Rule 20 Compliance and Complaint Structure:
◦ Each complaint must name a single defendant or group of defendants acting under the same operator, requiring a separate filing fee for each.
◦ This is crucial because personal jurisdiction will be a defendant-specific inquiry based on sales into the forum state, making broad joinder impractical before personal jurisdiction is established.
◦ The Court is open to consolidating related cases once personal jurisdiction is confirmed and other consolidation factors are met.
•2. Rule 11 Compliance and Personal Jurisdiction Allegations:
◦ Complaints must plausibly plead allegations of personal jurisdiction, including specific contacts with the forum.
◦ Simply being an online seller on Amazon or the plaintiff creating jurisdiction by ordering a product to the forum is insufficient.
◦ Plaintiffs must have developed some evidence of each defendant’s contacts with the forum (e.g., sales information, distribution locations) before filing the complaint.
◦ While plaintiffs may claim this information isn’t readily available, Rule 11 requires evidentiary support for factual contentions, though the Court will consider jurisdictional discovery on a case-by-case basis if Rule 11’s threshold is met.
• 3. Ordinary Service Requirements and Hague Convention:
◦ The Court will not automatically allow plaintiffs to dispense with ordinary service requirements, including foreign service under the Hague Convention.
◦ A particularized, case-specific and defendant-specific showing is required for alternate service.
◦ Motions for alternate service must detail efforts to discover domicile and effectuate service by usual means, and explain whether the requested alternate service is permitted by the Hague Convention.
◦ Conclusory assertions about the cost or time of Hague Convention methods are rejected.
◦ Plaintiffs can use waiver-of-service forms (emailed to defendants) to avoid Hague Convention service and save costs.
•4. Ex Parte TRO Motions:
◦ The Court does not intend, as a matter of course, to grant ex parte TRO motions.
◦ Preliminary injunctive relief is an extraordinary remedy, and the Court will not grant TROs based on conclusory statements or without a sound basis for personal jurisdiction over the defendant.
◦ The Court is unlikely to freeze online accounts without evidence that the defendant has transferred or is transferring assets to avoid judgment, and a specific showing linking the amount of frozen assets to the amount of disgorgement at issue.
◦ Prejudgment asset restraints are not meant simply to secure money for later damage recovery, and the typical justification for ex parte TROs (to generate settlement leverage) is noted.
• 5. Sealing Filings:
◦ Given that ex parte TRO motions are often the justification for sealing, the Court is unlikely to seal any filings.
◦ If a motion to seal is filed, it must meet specific legal grounds.
• 6. Declaration of Prior Cases:
◦ A complaint filing must be accompanied by a declaration from plaintiff’s counsel.
◦ This declaration must identify any prior pending cases brought by the plaintiff(s) against any named defendants, including case number(s), whether the IP was the same, and the status or disposition of those cases.
Ed note: I can’t answer the question as to how much the judges in the Northern District of Illinois and Southern District of Florida are influenced by the opinions of other judges in other circuits in these “Schedule A cases.” They’ve been going on their own with these suits all these years.