In a trademark misappropriation action, the Second Circuit held that the trial court may limit the scope of eDiscovery if it is not in error and does not cause harm to the requesting party. American Express sued a marketing company for a declaration that they had not misappropriated the popular slogan “My Life: My Card” from the marketing company. During discovery, defendant sought a motion to compel the production, in their entirety, of numerous computer hard drives owned by American Express and their agent.
The district court granted the motion but limited it to include only information pertinent to the creation dates of two significant documents. The Second Circuit found that the defendant had not identified any error in the district court's determination that “such wholesale rummaging” through American Express's electronic records was not appropriate here.
v.
Stephen G. GOETZ and Gardner Design Group, LLC, Defendants–Counter–Plaintiffs–Appellants
Counsel
Keith A. Vogt, Chicago, Illinois (Rolf O. Stadheim, Joseph A. Grear, George C. Summerfield, Stadheim & Grear, Ltd., Chicago, IL; Micah R. Jacobs, Jacobs & Ferraro, LLP, San Francisco, CA, of counsel), for Defendants–Appellants.Marc J. Rachman, New York, N.Y. (Howard J. Rubin, Shirin Keen, Davis & Gilbert, LLP, New York, NY, of counsel), for Plaintiff–Appellee.
Opinion
Many might associate the phrase MY LIFE. MY CARD. with advertisements for the American Express credit card featuring celebrity cardholders like Robert De Niro and Tiger Woods. But before American Express Co. (American Express) made the phrase famous, Stephen Goetz, the president of Gardner Design Group, LLC (Goetz), used a virtually identical slogan in a sales pitch to credit card companies. Goetz's idea was to personalize credit cards by reproducing photographs selected by cardholders on the face of their cards. In search of clients, Goetz sent proposals to various credit card companies, including American Express, containing *158 a description of his concept and the catchphrase My Life, My Card.