Linda's Leather, LLC v. Zambrano

CourtDistrict Court, E.D. Kentucky
DecidedJuly 28, 2025
Docket5:21-cv-00046
StatusUnknown

This text of Linda's Leather, LLC v. Zambrano (Linda's Leather, LLC v. Zambrano) is published on Counsel Stack Legal Research, covering District Court, E.D. Kentucky primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Linda's Leather, LLC v. Zambrano, (E.D. Ky. 2025).

Opinion

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF KENTUCKY CENTRAL DIVISION LEXINGTON

LINDA’S LEATHER, LLC, ) ) ) Plaintiff, ) ) v. ) NO. 5:21-cv-00046-CHB-MAS ) VICTOR ZAMBRANO, ) ) ) Defendant. ) )

MEMORANDUM OPINION & ORDER1

Plaintiff Linda’s Leather, LLC seeks an award of fees and expenses under 28 U.S.C. § 1447(c) and 28 U.S.C. § 1927 incurred because of Defendant Victor

1 The undersigned enters this Memorandum Opinion and Order pursuant to Judge Boom’s Standing Case Management and Referral Order [DE 27], which authorizes the assigned Magistrate Judge to resolve all non-dispositive pretrial motions other than evidentiary motions. Judge Boom cites 28 U.S.C. § 636(b)(1) and Federal Rule of Civil Procedure 72 as the sources of that authority. Under § 636(b)(1), magistrate judges may “hear and determine” non-dispositive pretrial matters, while dispositive motions must be addressed through proposed findings and recommendations, subject to de novo review. Rule 72(a) similarly permits magistrate judges to issue orders on non-dispositive matters, which may be reviewed for clear error or legal error. Rule 72(b), by contrast, governs dispositive motions and requires magistrate judges to submit recommendations for de novo review. In some instances, attorneys fees motions are dispositive and therefore fall under Rule 72(b). See Massey v. City of Ferndale, 7 F.3d 506, 509–10 (6th Cir. 1993) (holding that a magistrate judge lacks authority to determine motions for sanctions, attorneys’ fees, or costs) (citing Homico Constr. & Dev. Co. v. Ti–Bert Sys., Inc., 939 F.2d 392, 394 n.1 (6th Cir. 1991)); Est. of Conners by Meredith v. O’Connor, 6 F.3d 656, 659 (9th Cir. 1993) (holding that a magistrate judge lacked authority to enter a final order on a post-judgment motion for attorneys’ fees); Paris v. U.S. Dep’t of Hous. & Urban Dev., 795 F. Supp. 513 (D.R.I. 1992), rev’d on other grounds, 988 F.2d 236 (1st Cir. 1993) (concluding that a post-judgment fee motion may be referred under § 636(b)(3) for a report and recommendation). However, courts have found that fee motions tied to pretrial sanctions under fee-shifting rules, such as Federal Rule of Civil Procedure 37, are non-dispositive. See Cage v. Harper, No. 17-CV-7621, 2020 WL 1248685, at *20 (N.D. Ill. Mar. 16, 2020) (holding that “a Rule 37 award is within a magistrate judge’s power to issue as orders because it is a pretrial nondispositive matter”). Here, the motion for attorneys fees is a pretrial motion and does not dispose of any claim or counterclaim. This ruling does not affect the adjudication of the claims pending before the Court. Zambrano’s unsuccessful effort to consolidate this matter with a separate, improperly removed case in this District, Zambrano v. Scott, No. 5:24-cv-00336-KKC (E.D. Ky. 2024). Judge Caldwell has already ruled that Zambrano improperly removed

Zambrano v. Scott to this Court and ordered him to pay $3,939.84 for expenses incurred as a result of that improper removal. Zambrano v. Scott, No. 5:24-CV-336- KKC, 2025 WL 1833814 (E.D. Ky. July 2, 2025) (order denying motion to consolidate) (No. 5:24-cv-00336-KKC, E.D. Ky. July 2, 2025), DE 12. Thus, the only question here is whether Linda’s Leather may recover fees incurred opposing Zambrano’s motion to consolidate that case with this action. The Court finds that Linda’s Leather may recover such fees, for the reasons set

forth below. The Court will grant Linda’s Leather’s Motion for Attorney’s Fees [DE 80] and award Linda’s Leather $3,363.28 for expenses incurred because of the improper removal. I. BACKGROUND This case arises from a dispute between Plaintiff Linda’s Leather, LLC (“Linda’s Leather”) and Defendant Victor Zambrano (“Zambrano”) over the inventorship and rights to certain patented horse collars. Linda’s Leather, of which

Linda Scott (“Scott”) is a member, is the assignee of U.S. Patent No. 10,398,129 (“the ’129 Patent”) and U.S. Design Patent No. D869,783 (“the ’783 Patent”). The patented products concern anti-cribbing horse collars sold by Linda’s Leather under the “NO- NO Collar” branding. [DE 1, PageID# 2–4]. According to the Complaint, Zambrano marketed and sold infringing products despite repeated notice of the patents. Linda’s Leather alleges that Zambrano was first placed on notice as early as October 19, 2016, through a letter from a Linda’s Leather representative, notifying him of the issued patents and asserting infringement. [DE 1, PageID# 2, 5–6]. Zambrano, however, alleges he conceived of

the collar design years prior. He claims Scott and Linda’s Leather improperly appropriated his invention without attribution or consent. [DE 7, PageID# 59–60]. Linda’s Leather filed the Complaint on February 15, 2021, asserting patent infringement and seeking injunctive relief and damages. [DE 1, PageID# 1]. On April 16, 2021, Zambrano filed an answer and counterclaims asserting invalidity, noninfringement, and claims under state law. [DE 7, PageID# 59]. Zambrano then brought a Third-Party Complaint against Scott. [DE 10, PageID# 432]. After

multiple rounds of motion practice and two iterations of a Third Party Complaint, the Court dismissed all claims against Scott without prejudice on January 10, 2022. [DE 25, PageID# 1611]. After the dismissal of the third-party claims, Zambrano refiled his state-law claims against Scott (and not Linda’s Leather) in Woodford Circuit Court. That matter proceeded until October 11, 2024, when the state court issued an order

transferring the case to federal court. Zambrano followed with a formal notice of removal on November 14, 2024, resulting in Zambrano v. Scott, No. 5:24-cv-00336- KKC (E.D. Ky. 2024).2

2 Zambrano tendered a copy of the Woodford Circuit Court’s Order as explanation for why he removed the Zambrano matter in the first place. In the state court matter, Zambrano v. Scott, No. 21- CI-00232 (Ky. Cir. Ct. Woodford Cnty.), Judge Mattox initially dismissed Zambrano’s claims against Scott on the merits and also for lack of subject matter jurisdiction. [DE 70-2, PageID# 1769]. Judge Mattox, however, granted Zambrano’s subsequent motion to alter, amend, or vacate under Kentucky Rule of Civil Procedure 59.05, reasoning that the action “should have been transferred to the proper federal court and linked to the pending patent action, so that it may be properly heard rather than On January 6, 2025, and while Scott’s motion to remand was being briefed in Zambrano, Zambrano filed a motion in this action to consolidate the two cases under Federal Rule of Civil Procedure 42(a). [DE 70]. He argued that that the removed

state claims and the existing federal claims stemmed from the same underlying patent dispute and should be litigated together. [DE 70, PageID# 1741]. After filing a response to Zambrano’s motion to consolidate, Linda’s Leather moved to stay the operative scheduling order, citing uncertainty arising from the still-unresolved jurisdictional and procedural issues in Zambrano. [DE 73, PageID# 1751]. The Court granted the motion and stayed this case pending resolution of the remand issue.

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