No. 04 Civ. 5316 RMBMHD
United States District Court, S.D. New York
July 20, 2006
MEMORANDUM & ORDER
*1 The parties are locked in a series of disputes about the propriety of their discovery requests and the adequacy of their discovery responses. The focus of these disagreements is on document production, although defendant Dooney & Burke (“DB”) also complains about the failure of plaintiff Louis Vuitton (“LV”) to respond to some of defendant's interrogatories.
We address these issues more or less in the order in which they have been presented.
The first application by LV is directed to the scope of documents being produced by DB. At first LV suggested that DB was not producing documents predating 2004, when the bags that triggered this litigation were apparently first discovered by LV. In response DB has represented, without clear contradiction, that it has not temporally limited the scope of its searches and production. Instead the dispute has evolved into an argument as to whether DB may limit its production concerning its products to the 23 items that were originally identified in the early part of the litigation as the focus of LV's attack. We conclude that one additional product—the so-called train case—is a permissible target of discovery by LV.
There is no question that at the outset of the case the parties were in fact focused on 23 DB products that, according to LV, utilized a lock that so closely mimicked LV's so-called S lock as to amount to trademark infringement. That focus was principally attributable to the fact that LV's original complaint specifically targeted a line of handbags introduced by DB in mid–2004. (Compl. at 29–30). As a result, early case management resulted in an effort to give priority to discovery that focused on issues that, if resolved, might promote an early settlement. That did not occur, and LV subsequently amended its complaint, which now alleges in broader terms that LV learned in 2004 that DB has been using a copy of LV's S lock on a variety of its own handbags, in violation of three of LV's registered trademarks, and that this infringement had commenced before the introduction in June 2004 of the most recent line of allegedly infringing bags. (Am. Compl. at 28–29).
In resisting any discovery concerning the so-called train case—which is the only DB bag identified by LV that predates 2004—DB argues that it uses a different lock and also that the complaint does not mention it. Neither argument is persuasive.
Proffered photographs indicate at least a colorable resemblance between the lock used on the train case and the allegedly protected S lock, and it is thus not immune from discovery on the asserted basis that it is plainly irrelevant. Furthermore, the fact that neither version of the complaint specifically mentions this product does not preclude discovery as to its origin, appearance, design and sales, for two reasons. First, the language of paragraphs 28 and 29 of the amended complaint is broad enough to encompass bags that were distributed by DB before June 2004, and there is no pleading requirement that plaintiff in the complaint list each model that it contends infringes its trademarks. Second, even if the current pleading were insufficient on this score, the alleged use by DB of an arguably infringing lock prior to June 2004 would certainly be relevant—at least for discovery purposes—to LV's claims concerning the post-June 2004 products.
*2 LV next seeks an order requiring DB to search for documents in places other than its corporate offices and warehouses. Specifically, it asks that defendant be required to search its retail stores, outlets and factories and possibly also the offices of its attorneys and former attorneys. Ordinarily we leave to the judgment of counsel for a party the details of the client's document search, with the caveat that reasonable efforts must be made to search those locations in which responsive documents are likely to be found. We see no basis at present in this case for imposing on defendant a prescribed list of locations to search for documents. In the course of ruling on other document disputes, it may become apparent that additional documents must be produced that are located in places other than those previously searched, and in that case DB will be required to search those locations.
In addition, LV may conduct one or more depositions concerning the location of documents and the scope of the searches that DB undertook for such documents.
LV next seeks documents pertaining to the design of the locks used on DB's allegedly infringing products and documents reflecting consideration by DB of other lock or bag suppliers than the one used .
According to DB, it has no documents pertaining to lock designs. In response LV speculates that DB's almost wholly owed subsidiary DB Italia has such documents, and it seeks an order requiring DB to obtain those documents from its subsidiary.
DB has not suggested that it does not have the practical ability to obtain documents from DB Italia or that this entity lacks documents concerning dealings with the bag supplier in question. Accordingly, we direct that DB contact DB Italia and seek documents concerning contacts with the bag supplier. LV will also be permitted to take a deposition on the scope of any searches made by or for DB.
As for DB contacts with other designers, it is unclear whether DB (or DB Italia) has such documents. If it does, they are to be produced, and if it does not, DB is to so certify to LV.
LV has demanded documents reflecting contacts with three suppliers of the allegedly infringing bags or locks. As already noted, however, defendant represents that it obtained the bags (with the locks already installed) from only one supplier, and that it has no responsive documents. As noted above, defendant is required to seek documents on this topic from DB Italia.
LV seeks production, in effect, of all documents reflecting the sales of bags that it considers to be infringing, including cash register tapes. DB has apparently provided a spreadsheet reflecting the number of sales for the 23 products that it views as relevant, and it notes that, in calculating estimated revenues, it has ignored any discounts that its retail stores or outlets or other sellers might have offered customers, thus giving LV—which seeks DB's profits—the benefit of any doubt on the amount of the resultant profits. Beyond this, DB argues that the sort of search contemplated by LV would be unduly burdensome.
*3 DB has not demonstrated, or even sought to demonstrate, undue burden. In any event, to permit LV to test the accuracy of the spreadsheet DB is to produce the documentary backup on the basis of which the spreadsheet was prepared.
LV is seeking all advertising, catalogues, press releases and other promotional materials used by DB in connection with the 24 allegedly infringing products. DB represents that it has produced all such materials as it retained. No relief is warranted on this item, although LV is free to inquire about the retention of such documents at depositions.
LV next pursues production of DB documents that refer to its competitors and that reflect evidence of customer confusion. DB says that it has no such documents. However implausible LV may find this representation, plaintiff's recourse is through depositions.
LV's last request in its original submission was for fuller production of e-mail communications from the servers of a wide variety of DB personnel. In response DB advises that it searched all pertinent e-mail files, and has no other responsive e-mails. Under these circumstances, the only avenue open to LV on this matter is to pursue the question of the scope of e-mail use and retention through depositions.
In subsequent briefing the parties have addressed a number of other issues concerning LV's discovery requests. We address these briefly.
Plaintiff asks that DB produce so-called showroom lists, even if they do not reflect any allegedly infringing products, so that LV can satisfy itself that none are listed. That request is denied. If the lists do not reflect those products, they are not relevant (or at least LV has made no such showing). A plaintiff's curiosity is not tantamount to a showing of relevance.
Plaintiff also seeks documents referring to or constituting communications between DB or its representatives and Burlington Coat Factory. If such documents exist and reflect discussions of LV or the distribution of the 24 DB products at issue in current discovery, they are to be produced. If they do not reflect such references or discussion, they need not be produced.
LV has asked for documents reflecting trademark registration searches or other due diligence by DB concerning the LV trademarks at issue here. DB represents that no such searches were made before receipt of a cease-and-desist letter from LV. That representation may be explored in depositions.
The remaining issue raised by LV concerns its Rule 30(b)(6) deposition notice addressed to DB. The notice encompasses forty topics and defendant has objected to a number of them. In effect we are called upon to determine the scope of the preparation that any 30(b)(6) witnesses must undertake.
Topics 3 and 4 concern which DB products are to be explored in depth in the depositions, and we have already addressed that question in the context of document production. The same scope applies in the depositions.
*4 Topic 5 seeks discovery of press coverage of all DB products. That request will be limited to coverage of the DB products at issue here and of DB more generally. The 30(b)(6) witnesses will not be expected to testify in depth as to the development, marketing and sales of other DB products.
Topic 20 asks for a witness prepared to testify about all DB customers. We see no need for DB to identify all customers, as distinguished from customers to whom the allegedly infringing products have been sold or marketed. We further assume that the identification of customers is better handled through document production and possibly interrogatories.
Items 30 and 31 refer to the identification of all sellers of all DB products and the location of all such products. We limit this topic to the DB products that are at issue in this case. We further reiterate that the substance of the information sought is more properly obtained through document discovery and interrogatories.
DB has applied for relief with respect to a host of its document requests and a number of its interrogatories. In the course of two letter submissions, it contends that LV has responded only partially, or not at all, to most of its document requests and interrogatories. LV has responded that its answers and production were far fuller than DB suggests, that a number of DB's demands are improper and that because the issues in the case are extremely narrow—requiring only the determination of whether the locks on DB's accused products are confusingly similar to LV's locks—much of defendant's discovery program is unnecessary and unduly burdensome.
We address defendant's requests in the general order in which they are presented, particularly in their April 21, 2006 application .
In doing so, we note in general terms that LV's argument about the narrowness of the issues misses two points. First, LV ignores the fact that it has pled a large variety of claims in its current complaint (ten in all) as well as numerous affirmative defenses, and that they—as well as DB's affirmative defenses and counterclaims—implicate other issues than simply whether the DB lock is confusingly similar to the LV lock. Second, LV ignores the fact that in its amended complaint it offers a long litany of factual allegations, and that these too extend well beyond the question of confusing similarity. In short, having chosen to inject a broad array of claims, defenses and allegations into its lawsuit, plaintiff cannot deny its adversary reasonable discovery of the very facts that are implicated by its own pleading, much less the facts implicated by defendant's responsive pleading.
DB sought the identification of all S lock products marketed by LV, including model, color, size and date of marketing. LV has provided a list of all of its products, with those that utilize the S lock identified. The list apparently includes the SKU number and color, and some include a date of release. Although the list does not include size, it is not at all clear why that information is relevant, and we decline at this stage to require its disclosure. As for the date of first marketing (whether by release or advertising), LV is to provide that information if it has it; if it does not, it is to so certify to DB.
*5 DB also seeks either a sample or a photograph of each such item, a request that appears not to have been honored, at least not for all products. To the extent that LV has either a sample or a photograph, that is to be provided.
DB's demand for documents concerning decisions by LV to utilize the S lock on its products may be pertinent to the question of whether it serves purposes other than as a source identifier. We see no compelling basis for precluding DB from such discovery.
The presence or absence of the letters “LV” on the S lock is a central issue in connection with DB's challenge to the validity of the trademarks at issue in this case, and is relevant to other issues as well. LV must produce documents that address the decision to include or exclude the “LV” lettering and the reasons for it.
LV insists that the source of its S locks is irrelevant (though it reluctantly represents that the supplier is not the same as DB's). Its pleading goes into some detail, however, in representing the uniqueness of its lock, and that opens up the question of whether it is in fact supplied by a source that supplies similar or identical locks to others in the industry. Similarly, its references in the complaint to the quality control that it allegedly exerts opens this area for at least limited examination. In short, the inquiry seeks relevant information, and hence LV's request for a protective order is denied.
DB seeks documents regarding the use by LV of a notice of registration on its products. LV appears to represent that it has provided the requested documents. LV is to make a clear written representation to DB that it has provided all such documents, if that is the case. If it is not, LV is to produce the balance of such documents.
DB seeks detailed sales information on the S lock products. Despite LV's possible willingness to forego a demand for lost profits, it has not conclusively committed to such a course, and in any event the data in question is relevant to a number of its allegations about distinctiveness and fame. It is unclear at this stage whether LV has produced more than what is represented to have been a few pages of sales data for a period commencing in 2000. If it has not yet completed its production of annual sales data for the requested period, it is now to do so. We see no need, however, for a monthly breakdown, as DB demands, nor for broken-down sales information on products that do not incorporate the S lock. On the last point, LV may simply supply aggregated annual sales figures.
DB has sought advertising and marketing information for S lock products, and LV represents it has produced the requested data. DB may pursue the matter of the completeness of such production by deposition if it wishes to do so. As for advertising for other products, we see no justifiable basis for that demand.
*6 DB seeks documents relating to quality control on S lock products. This request responds to claims by LV as to the dilution and blurring of its trademarks, as well as to various of the fact allegations in its amended complaint. The request seeks relevant information and must be honored.
LV represents that it has no communications from customers about its S lock products. If DB questions this representation, it is free to pursue the matter by deposition.
LV reports that it has produced its prosecution files for the trademarks at issue. If it has not produced the documents pertinent to its design of the trademarks, it is to do so, since that information may shed light on some of the issues raised by its multifarious claims.
DB seeks documents reflecting incidents of actual consumer confusion. It is not clear to us whether LV is reporting that it has none. If so, it is to make that clear in writing. If it has any and they have not been produced, LV is to do so promptly.
DB has asked for, and LV is to provide, documents reflecting any injury caused to LV (including damage to the value of the trademarks at issue) as a result of DB's alleged infringement of LV's trademarks. If LV has provided all such documents, it is to make a clear written representation to DB to that effect.
DB seeks documents reflecting the willfulness or maliciousness alleged by LV in its complaint. If LV has such documents, it is to produce them. If it does not, it is to so represent in writing.
DB seeks documents reflecting the extent of LV's anti-counterfeiting efforts in North America. If LV has not produced documents reflecting, at least in general terms, the extent of its efforts to protect these trademarks from competitive counterfeiting (including not only cease-and-desist letters but budgeting and general areas of activity), it is to do so.
It is not clear whether LV has produced all documents responsive to this request. If not, it is to do so.
DB seeks documents relating to LV's handling of this litigation. On its face this request would seem to implicate work-product immunity and the attorney-client privilege, and does so without any meaningful indication of relevance or need. Under the circumstances we decline to enforce this demand.
To the extent not explicitly covered in prior rulings, LV is to produce documents sufficient to demonstrate what efforts it made to solicit media coverage for its S lock products.
In response to this request LV has provided some cease-and-desist letters. LV is to represent clearly in writing to DB that it has no further documents responsive to this request, if that is the case. Otherwise it is to produce the balance of the documents.
*7 DB seeks all documents relied upon by LV in preparing its interrogatory answers. LV is to honor this request if it has not already done so.
We have reviewed the balance of DB's complaints about document production and conclude that none warrants relief. As indicated, DB is free to use deposition inquiry to assess the completeness of LV's production of documents coming within any category to which no objection has been made and upheld (including e-mails).
LV seeks to bar any discovery by DB on a variety of topics, some of which we have already touched upon. We briefly summarize our rulings on this set of applications. We grant LV's request with respect to its decision to pursue this litigation and its design or marketing of products other than S lock products. Other than as indicated above, we decline to issue an across-the-board protective order with respect to other topics referred to by LV.
In the course of letter-briefing DB noted that LV had yet to provide a privilege log, and LV represented in general terms that it would provide one. If it has not yet done so, it is to do so now.
LV also represented that it was preparing, and would supply, an amended set of discovery responses. Again, if not yet provided, LV is to do so now.
LV is to provide complete textual answers to interrogatories 14 and 15. The balance of DB's requests for relief with respect to its interrogatories are denied.
The additional discovery responses required by virtue of this decision are to be provided within two weeks. The court will conduct a status conference with counsel for the parties on August 3, 2006 at 10 a.m. in Courtroom 17D.
Both sides have suggested a desire for oral argument. Although we normally accommodate such requests, we view the plethora of written submissions by both sides (totaling now ten extensive letter briefs and one shorter one) as more than ample to state each side's respective views. Under the circumstances, and based on prior experience in this case, oral argument will only serve as a stage for more ad hominem attacks by counsel on each other and their respective clients.
For the record, the submissions we refer to include letters from Douglas Broadwater, Esq. dated April 4, April 10, April 21 (2 letters), May 2, and May 4, 2006, and letters from Steven Kimelman, Esq. dated April 5, April 14, April 24, April 28 and May 8, 2006.
The items referred to are numbered in accordance with the April 5, 2006 letter to the court from Steven Kimelman, Esq.
We note, for example, that LV is apparently seeking the records of individual sales in DB's retail stores, including cash register tapes. If that were discoverable, it might be the case that DB would have to search the handful of stores that it operates.
DB has represented without contradiction that the bags in question were supplied with a lock, and that they all came from one supplier.
This is not tantamount to a ruling on the relevance of questions posed at such depositions. Such a ruling-in-advance approach would be inefficient and invite disputes that might otherwise be avoided by counsel.
In defendant's initial application, it identified document requests 1–11, 13–21, 25–27 and 30–31 as having elicited no production from LV and requests 12, 22–24 and 28–29 as having drawn only partial responses. As for defendant's interrogatories, DB reported that plaintiff had not responded to those numbered 3–5, 8–10 and 13–16, and that it had only partially responded to 6 and 11–12.
LV complains that making a sample available will allow DB to copy LV's product. That is not a basis for withholding relevant discovery and in any event we assume that any time LV puts a product in the market it leaves itself open to the possibility that competitors will buy and copy it.
In the likely event that LV views this information as commercially sensitive, it can be provided under the pertinent terms of the governing protective order.
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