Louis Vuitton Malletier v. Dooney & Bourke, Inc.
Louis Vuitton Malletier v. Dooney & Bourke, Inc.
2006 WL 3851151 (S.D.N.Y. 2006)
December 22, 2006
Dolinger, Michael H., United States Magistrate Judge
Summary
The court denied the plaintiff's motion for preclusive sanctions against the defendant for discovery misconduct, as there was no evidence of destruction of pertinent documents or failure to produce requested hard-copy documents. The court did order the defendant to confirm in writing whether searches were made of the customer service account and the sales representatives' accounts, and if not, to conduct such a search by the end of the month. The court also found that the defendant had installed software in February 2006 that saved customer relations communications for two weeks.
Louis Vuitton MALLETIER, Plaintiff,
v.
DOONEY & BOURKE, INC., Defendant
v.
DOONEY & BOURKE, INC., Defendant
No. 04 Civ.5316 RMB MHD
United States District Court, S.D. New York
December 22, 2006
Dolinger, Michael H., United States Magistrate Judge
MEMORANDUM & ORDER
*1 Plaintiff Louis Vuitton Malletier has moved for an order imposing an array of preclusive sanctions on defendant Dooney & Bourke, Inc. for discovery misconduct. In substance, plaintiff seeks an order precluding defendant from offering any evidence (1) to contest plaintiff's allegations of likelihood of confusion and likelihood of dilution, (2) to demonstrate an absence of actual confusion, and (3) concerning the quality of defendant's products. They also ask leave to take additional discovery and a directive for defendant to search for additional documents.
In support of the motion, plaintiff suggests that defendant did not make complete or timely searches for certain categories of documents and e-mails. It also contends that defendant did not give adequate instructions to its employees to preserve documents and that it improperly deleted e-mails from a customer relations chat room that might have been a source of pertinent information. We conclude that there is no evidence suggesting that defendants destroye pertinent documents or failed to produce requested hard-copy documents. Plaintiff also fails to offer evidence of the sort of harm that would justify preclusive sanctions. Whether defendant made a complete search for e-mails is less clear, and we accordingly offer limited relief on that score.
The initial problem with plaintiff's application is that some, and possibly all, of the complaints that plaintiff is now voicing have apparently never been a subject of discussion with its adversary. Thus, the record indicates that plaintiff is relying in several respects on factual assumptions that are simply incorrect. Moreover, in several other respects the asserted deficiencies in defendant's performance could have been remedied long ago had plaintiff raised the issue in a timely fashion.
Plaintiff complains that defendant misrepresented the scope of its document searches many months ago when its counsel stated that defendant had placed no temporal limitations on its searches for pertinent documents. It turns out that defendant had apparently not searched for documents post-dating 2004, on the assumption that none would be relevant since it had assertedly stopped selling the allegedly infringing bags in mid 2004.
Given the fact that there was some question in the case about later events, such a cut-off may have been unduly constrained but counsel's representation about temporal limits, at least in context, was not inaccurate. The representation was made in response to a claim by plaintiff's attorney that defendant had produced documents only for 2004, and had not searched for documents going back to 1999, when the allegedly infringing bags were first marketed. Indeed, until now plaintiff never made an issue about the fact—plainly known to it—that documents from the last two years had not been produced.
Furthermore, defendant subsequently did search for documents from 2005 and 2006 and produced a quantity of them (including e-mails) on November 13, 2006. Plaintiff fails to demonstrate that this later production was materially incomplete, other than to refer in passing to the absence of attachments referred to in some e-mails—an omission that plainly should have been dealt with between counsel before any motion practice.[1] Plaintiff also fails even to attempt to demonstrate that it incurred any prejudice from this belated production. To the contrary, plaintiff goes on to complain about the fact that defendant delayed plaintiff's depositions of two Dooney & Bourke employees who were scheduled to testify shortly after the November 13 production. Both depositions were rescheduled for some weeks later, and hence plaintiff had ample opportunity to review the new documents in preparation for those and other depositions that were scheduled to follow.
*2 Finally, plaintiff apparently was aware for many months that defendant had produced documents only for the 1999 to 2004 period, and it never objected to that limitation. The delay in raising this issue until shortly before the end of fact discovery speaks volumes about the plaintiff's inability to demonstrate meaningful prejudice.
Plaintiff complains that defendant did not search various of its e-mail accounts, including accounts of several named employees, the general customer service accounts, and the accounts of its sales representatives. The record does not support this contention.
Defendant represents without contradiction that the accounts of all individuals mentioned by plaintiff were in fact searched at least twice, once for the period from 1999 to 2004 and then again for 2005 and 2006. (Declaration of Brian D. O'Reilly, Esq., executed Dec. 11, 2006, at ¶¶ 2–5). In asserting the contrary, plaintiff is relying on deposition testimony of several individuals who reported that they did not search their own e-mail accounts. The problem with this assumption is that the accounts in question can be searched by others, and defendant so represents. This is of course a matter that could have been resolved had plaintiff's counsel raised the matter with defendant's attorneys.
Defendant does not make clear, however, whether that search encompassed the general customer service account or the accounts of unnamed sales representatives. In view of that ambiguity, defendant is to confirm in writing to plaintiff whether searches were made of the customer service account and the sales representatives' accounts and, if not, it is to conduct such a search by no later than the end of this month. If it represents that such searches have been made, plaintiff may conduct a one-hour deposition of a knowledgeable representative of defendant to confirm the facts within seven days after receipt of that notification by defendant.
Plaintiff launches a claim of spoliation, contending that defendant maintained a customer relations chat room and that it never acted to preserve any of the colloquies that appeared on its web site through that means. It speculates that some of these conversations were likely to have been relevant and helpful to its case.
The main problem with plaintiff's argument is that the chat room was not opened until August 2004, after the reported cessation of sales of the allegedly infringing bags. Moreover, until 2006 the technology that it utilized apparently did not provide a ready means for retaining such communications. Only in February 2006 did defendant install software that saved these communications for as long as two weeks, and by that time it is highly unlikely that any comments by members of the public that would be pertinent to this lawsuit would have been received. (Declaration of Martin Ronk, executed Dec. 11, 2006, at ¶¶ 2–3).[2]
This set of circumstances is a far cry from the sort of failure to retain and search for e-mails that has recently been the subject of much judicial scrutiny and the issuance of a new provision in the federal rules of civil procedure governing e-discovery. Indeed, it is more akin to a demand that a party to a litigation install a system to monitor and record phone calls coming in to its office on the hypothesis that some of them may contain relevant information. There is no such requirement, and in this case no indication that defendant acted improperly in this regard.[3]
*3 Plaintiff further contends that defendant did not instruct certain employees to preserve documents after the lawsuit was either imminent or already pending. While that may be the case,[4] plaintiff offers not a shred of evidence suggesting that any documents (pertinent or otherwise) were destroyed.[5] Accordingly, there is no occasion to impose sanctions for this omission.
For the reasons noted, we deny plaintiff's motion for sanctions except as noted with respect to the question of the scope of e-mail searches.
Footnotes
This obligation is part of the governing rules and outweighs any attorney's inclination to rush to the court without seeking to resolve the matter with its adversary.
Defendant has produced its customer-relations e-mails for the same period, and there is no indication in the record that they reflect pertinent comments by members of the public.
Plaintiff complains that defendant's affiant, Mr. Martin Ronk, does not offer details as to what would have been necessary for defendant to arrange for a system to screen chat room comments. Ordinarily we would simply authorize plaintiff to depose the affiant on this question, but we note that plaintiff already deposed Mr. Ronk on this and other topics, and it offers no indication that it sought details about these screening procedures even though the witness alluded to them at the time. In any case, in view of the fact that the system was not even in place during the so-called critical time for this lawsuit, we have no reason to view defendant's failure to take special measures to screen chat room comments on a continuing basis thereafter as a ground for any relief. Finally, we note in any event that plaintiff will be free at trial or at the summary judgment stage to place these facts on the record and invite such inferences as it deems appropriate for the court to consider at that time.
Defendant represents in its memorandum of law that its Chief Financial Officer did in fact give such instructions to those individuals who needed to know. We need not resolve that factual dispute for present purposes since plaintiff offers no evidence of prejudice.
Ironically, defendant is able to cite deposition testimony from several Louis Vuitton witnesses admitting a similar failure by plaintiff to provide document-retention instructions to its personnel.