LUXOTTICA GROUP v. THREDUP INC (2026)

ORDER

This civil action is now before the Court on Plaintiff's motion for leave to modify the scheduling order and to amend the complaint (Doc. 28) and the parties responsive memoranda. The motions will be addressed in turn.

I. Background and Facts

This is an action for direct trademark infringement. Pursuant to the Court's Scheduling Order the deadline to amend pleadings was March 27, 2026. (Doc. 21). On March 27, 2026, Plaintiffs’ investigator purchased counterfeit Ray-Ban trademarked items from ThredUp's website, and those items were not received until April 3, 2026. Plaintiff contends these post-filing alleged infringing acts are highly probative of willfulness and are relevant to statutory damages under 15 U.S.C. § 1117(c). As such, Plaintiff asks the Court for an Order modifying the Court's Scheduling Order and granting leave to file an Amended Complaint to conform to recently obtained evidence.

II. Applicable Law

Under Federal Rule of Civil Procedure 16(b)(4), a scheduling order “may be modified only for good cause and with the judge's consent.” The primary measure of Rule 16(b)’s “good cause” standard is the moving party's diligence in attempting to meet the scheduling order's requirements, although the Court may also consider possible prejudice to the nonmoving party. See, e.g., Leary v. Daeschner, 349 F.3d 888, 906–09 (6th Cir. 2003); Ward v. Am. Pizza Co., 279 F.R.D. 451, 455–56 (S.D. Ohio 2012). Only if the movant satisfies Rule 16(b) does the Court proceed to the more liberal amendment standard of Rule 15(a).

Rule 15(a)(2) provides that a party may amend its pleading “only with the opposing party's written consent or the court's leave,” and that “[t]he court should freely give leave when justice so requires.” In deciding whether to grant leave to amend, courts consider factors such as undue delay, bad faith, repeated failure to cure deficiencies, undue prejudice to the opposing party, and futility of amendment. See Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962); Leary, 349 F.3d at 905.

III. Analysis

As detailed above, the Court's Scheduling Order set March 27, 2026, as the deadline for amending the pleadings. Plaintiff seeks to add allegations concerning a March 27, 2026 purchase of allegedly counterfeit Ray-Ban sunglasses from ThredUp's website. ThredUp argues that Plaintiff cannot show diligence because (1) they chose to make the purchase on the last day of the amendment period, and (2) they did not seek leave to amend until after the deadline.

On the present record, the undersigned finds that Plaintiffs have shown sufficient diligence to establish “good cause” under Rule 16(b). The undisputed timeline reflects that: (1) the item at issue was listed for sale on or about March 20, 2026; (2) Plaintiffs’ investigator purchased the item on March 27; (3) the goods were received and physically inspected on April 3; (4) Plaintiffs raised the issue with defense counsel on April 7 and again on April 9; and (5) Plaintiffs filed their motion on April 10, within one week of confirming, through inspection, that the product was allegedly counterfeit.

In the Court's view, the critical date for Rule 16(b) is not when Plaintiff first suspected that the item might be counterfeit, but when a reasonably responsible litigant could confirm a factual basis sufficient to justify amendment. Plaintiff's represent that physical inspection of the sunglasses was necessary to determine whether they were, in fact, counterfeit, and that such inspection did not occur until April 3. The Court credits that representation for purposes of this motion. Once that inspection occurred, Plaintiff acted promptly in conferring with ThredUp and filing their motion.

In opposing Plaintiff's request, ThredUp relies on case law wherein the parties sought to add claims based on facts they indisputably possessed well before the scheduling-order deadline and then “sat” on them. See Leary v. Daeschner, 349 F.3d 888, 907–08 (6th Cir. 2003) (affirming denial of amendment where plaintiffs were aware of facts underlying the claim well before the deadline but failed to move); Shane v. Bunzl Distrib. USA, Inc., 275 F. App'x 535, 536–37 (6th Cir. 2008) (same). Such is not the case here. Notably, the additional alleged infringement arose shortly before the amendment deadline, and the record does not show that Plaintiff had a confirmable factual basis for the proposed amendment sufficiently in advance of March 27 to enable pre-deadline filing. On these facts, the Court concludes that Plaintiff has demonstrated adequate diligence under Rule 16(b).

Additionally, discovery remains open until August 7, 2026, and the amendment does not add new causes of action or parties. ThredUp has already undertaken a preliminary investigation into the March 27 order. While some additional discovery may be required, the Court is not persuaded that the amendment will cause significant delay, require duplication of effort, or otherwise unduly prejudice ThredUp. Any incremental burden is manageable within the existing schedule and can be mitigated, as discussed below, through reasonable limitations on the scope of discovery.

Plaintiff's motion for leave to amend is also well-taken. As detailed above, Plaintiffs moved to amend within roughly one week after receiving confirmation about the alleged counterfeit sale. As such, there is no indication of bad faith or dilatory motive. With respect to prejudice, the proposed amendment alleges a single additional sale of Ray-Ban-branded sunglasses during the pendency of this lawsuit. It does not add new legal theories or new trademarks; but merely supplements the factual allegations concerning ThredUp's handling and sale of Ray-Ban products. As such, ThredUp will be permitted to conduct discovery on the new allegations within the existing discovery period.

Last, the proposed amendment is not futile. ThredUp correctly notes that statutory damages under 15 U.S.C. § 1117(c) are awarded on a per-mark, not per-sale, basis. However, the statute provides a range of potential awards. As such, Courts routinely consider the scope, duration, and persistence of infringing conduct in determining where within that range a particular award should fall. Courts routinely consider the scope, duration, and persistence of infringing conduct, including conduct occurring after a defendant is on notice of a plaintiff's claims, in determining where within that range a particular award should fall. See La Bamba Licensing, LLC v. La Bamba Authentic Mexican Cuisine, Inc., 75 F.4th 607, 612–13 (6th Cir. 2023) (upholding willfulness finding where defendant continued use after notice); Coach, Inc. v. Cellular Planet, No. 2:09-cv-241, 2010 WL 2572113, at *3–4 (S.D. Ohio June 22, 2010) (considering scope and duration of infringement when setting statutory damages under § 1117(c)). Thus, evidence that allegedly counterfeit Ray-Ban sunglasses passed through ThredUp's own authentication process and were offered for sale during the pendency of this litigation is relevant to the willfulness and damages inquiry. Accordingly, Plaintiff's motion to amend is well-taken and herein granted.

IV. Conclusion

Based on the foregoing, Plaintiffs’ Motion for Leave to Modify the Scheduling Order and Amend the Complaint (Doc. 28) is GRANTED. The Scheduling Order is modified to permit filing of the proposed Amended Complaint as set forth herein. Plaintiffs shall file the amended complaint electronically with the Court within 7 days of the filing date of this Order.

IT IS SO ORDERED.

Stephanie K. Bowman, United States Chief Magistrate Judge