*1 Attached is the Report and Recommendation of the United States Magistrate Judge made in accordance with 28 U.S.C. § 636(b)(1), FED. R. CIV. P. 72(b), and N.D. Ga. R. 72.1(D)(2). Let the same be filed and a copy, with a copy of this order, be served upon counsel for the parties or, if a party is not represented, upon that party directly.

Pursuant to 28 U.S.C. § 636(b)(1), each party may file written objections, if any, to the Report and Recommendation within ten (10) days of receipt of this Order. Should objections be filed, they shall specify with particularity the alleged error(s) made (including reference by page number to any transcripts if applicable) and shall be served upon the opposing party. The party filing objections will be responsible for obtaining and filing the transcript of any evidentiary hearing for review by the District Court. If no objections are filed, the Report and Recommendation may be adopted as the opinion and order of the District Court and any appellate review of factual findings will be limited to a plain error review. United States v. Slay, 714 F.2d 1093 (11th Cir. 1983).

The Clerk is directed to submit the Report and Recommendation with objections, if any, to the District Court after expiration of the above time period.

IT IS SO ORDERED and DIRECTED, this 30th day of November, 2008.

UNITED STATES MAGISTRATE JUDGE'S NON-FINAL ORDER AND REPORT AND RECOMMENDATION

On August 13, 2008, the District Court referred the above case to the undersigned to resolve the following motions: (1) Plaintiff's Motion for Leave to Amend Complaint, [Doc. 21]; (2) Plaintiff's Motion to Compel Defendant's Responses to Discovery, [Doc. 22]; and (3) Defendant's combined Rule 56(f) Motion for Extension of Time and Motion for Sanctions, [Doc. 33]. The District Court also directed the undersigned to make a recommendation as to whether further discovery is warranted in this case. [See Doc. 35]. In a prior order, the undersigned denied Plaintiff's motion to compel without prejudice, [see Doc. 45], and the parties subsequently resolved the discovery dispute that led to the motion to compel, [see Doc. 46]. As a result, the instant Order and Report and Recommendation does not address Plaintiff's motion to compel.

For the reasons set forth herein, the undersigned: (1) GRANTS Plaintiff's motion for leave to amend, [Doc. 21]; (2) DENIES Defendant's Rule 56(f) motion be AS MOOT, [Doc. 33]; (3) RECOMMENDS that Defendant's motion for sanctions be GRANTED IN PART AND DENIED IN PART, [Doc. 33]; and (4) RECOMMENDS that the District Court REOPEN the discovery period.[1]

I. INTRODUCTION

*2 On October 25, 2007, Plaintiff Insect Science Resource, LLC, filed a four-count civil action against Defendant Timberline Fisheries Corporation alleging violations of the Federal Trademark and Service Mark Infringement Act, 15 U.S.C. § 1114, (Count 1); (2) the Federal Unfair Competition Act, 15 U.S.C. § 1125(a), (Count 2); (3) the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), (Count 3); and (4) common law infringement and unfair competition, (Count 4). Defendant answered on December 5, 2007, [Doc. 7], and discovery was originally scheduled to end on May 5, 2008, [see Doc. 15]. Following the parties' joint motion, [Doc. 17], the District Court extended discovery until July 7, 2008, [Doc. 19].

Plaintiff filed a motion to amend its complaint on May 19, 2008, to add a false advertising claim under 15 U.S.C. § 1125(a), [Doc. 21], which Defendant opposed, [Doc. 23]. Plaintiff filed a reply brief on June 13. [Doc. 24]. Defendant filed on August 8, 2008, a combined Rule 56(f) motion for extension of time to complete discovery and a motion for sanctions, [Doc. 33], to which Plaintiff filed a response on August 25, [Doc. 36]. Defendant filed a reply on September 12. [Doc. 42]. The District Court assigned these motions to the undersigned and sought a recommendation as to whether the discovery period should be extended. [See Doc. 35].

The briefing period for the parties' motions has expired, so the undersigned addresses each motion below as well as the District Court's request for a recommendation on extending discovery.

II. BACKGROUND FACTS AND PLAINTIFF'S FACTUAL ALLEGATIONS

Plaintiff is the owner of the trademark, Phoenix Worm. [Doc. 1 ¶¶ 2, 10-11]. Plaintiff has used this trademark since December 2004 as the product name for its live pet food, the Hermetia illucens larvae. [Id. ¶ 7]. In 2005, Plaintiff contacted Defendant, one of the largest producers and distributers of feeder insects to inquire if it would serve as a distributor for the Phoenix Worm pet food. [Id. ¶ 12]. Defendant expressed interest in having Plaintiff supply it with a generic product that it could re-brand, but Plaintiff declined. [Id. ¶ 14].

In January 2006, Plaintiff started using www.phoenixworm.com to sell its pet food and provide information about its product. [Id. ¶ 15]. In June 2006, Defendant registered the domain name, www.pheonixworms.com. [Id. ¶ 16]. Defendant began to market its own Hermetia illucens pet food product under the name Calciworms. [Id. ¶ 18]. Plaintiff alleges that Defendant redirected traffic from the www.pheonixworms.com website to its www.calciworms.com website. [Id. ¶ 19]. Plaintiff complained about Defendant's use of the www.pheonixworms.com website in November 2006, and Defendant temporarily “parked” the website. [Id. ¶ 20]. In 2007, the www.pheonixworms.com website again was redirecting webtraffic to the www.calciworms.com site. [Id. ¶ 21].

III. DISCUSSION

In October 2007, Plaintiff became aware of an advertisement that Defendant was running in a magazine for an upcoming trade show. [Doc. 21 at 2]. The advertisement had a heading that stated, “innovative in an often imitated market.” The advertisement then stated:

(Exh. H in Proposed Amend. Compl. in Doc. 21) (emphasis in original). Defendant is aware that Plaintiff innovated and created the Hermetia illucens product as pet food. (Proposed Amend. Compl. ¶ 31). Defendant's advertisement injured Plaintiff's reputation as the true innovator of the Hermetia illucens product. (Id. ¶ 58). Plaintiff complained to Defendant and demanded that Defendant pull the advertisement from future publications. [Doc. 21 at 2].

*3 Defendant published, however, the same advertisement in the 2008 “Reptiles USA” magazine, which was originally published in August 2007 and which was available continuously from that date. (Goodman Aff. ¶¶ 3-5 at Exh. A in Doc. 23). Defendant also placed the same advertisement in a publication promoting a February 2008 reptile food trade show in Dallas, Texas. (Id. ¶ 9).

Plaintiff learned on April 4, 2008, that Defendant had placed the same advertisement in another magazine for a forthcoming trade show. [Doc. 21 at 2]. Plaintiff then notified Defendant that it planned to amend its complaint to add a false advertising claim unless Defendant agreed to pull the advertisement. Defendant did not respond, so Plaintiff sent another letter to Defendant on May 7, seeking a response. [Id.]. Defendant responded on May 9 that it would not pull the advertisement. [Id. at 3]. Plaintiff filed the motion for leave to amend on May 19. [See Dkt. Entry dated 5/19/2008].

Plaintiff argues that the Court should grant leave for it to amend its complaint to raise a claim for false advertising under 15 U.S.C. § 1125(a)because: (1) once it became aware that Defendant was re-running an advertisement in April 2008, it immediately filed the motion; (2) Defendant will not be prejudiced since the new claim will not expand discovery; and (3) the amendment will not delay the case. [Doc. 21 at 4-5].

Defendant responds that Plaintiff's motion for leave to amend should be denied for the following five reasons. First, Defendant asserts that Plaintiff has not shown good cause under FED. R. CIV. P. 16(b)(4) to amend the scheduling order in order to allow it to file the motion for leave to amend out of time. [Doc. 23 at 3 n.1]. Second, Defendant argues that Plaintiff's attempt to amend is unduly delayed because Plaintiff knew about the allegedly offensive advertisement prior to filing suit. [Id. at 3-4]. Third, Defendant contends that Plaintiff did not exercise due diligence in determining that Defendant had continued to publish the advertisement because Defendant used the advertisement in issues of trade magazines. [Id. at 4-5]. Fourth, Defendant asserts that Plaintiff's proposed amended complaint would be futile because it does not state a claim under the false advertising provision of the Lanham Act, 15 U.S.C. § 1125(a). [Id. at 6-8]. Specifically, Defendant asserts that the allegedly false advertisement is truthful and that Plaintiff's proposed complaint misquotes Defendant's advertisement. [Id. at 6-7]. Defendant also claims that Plaintiff did not plead the third element necessary to make a false advertising claim, namely that the deception materially effected purchasing decisions. [Id. at 8]. Fifth, Defendant argues that it would suffer undue prejudice if Plaintiff were permitted to amend its complaint because the false advertising claim is unrelated to the other claims, thereby requiring it to engage in additional discovery. [Id. at 8-10]. Defendant finally argues that if Plaintiff is permitted to amend its complaint, Defendant should be given additional time to conduct discovery on this new claim. [Id. at 10].

Plaintiff first replies that Defendant's June 3 response should not be considered because it is untimely in that it was due May 29, ten days after the May 19 motion. [Doc. 24 at 2]. Plaintiff next argues that even if Defendant's response brief is considered, Defendant has not presented persuasive arguments to deny the motion to amend for the following three reasons. [Id. at 3-5]. First, Plaintiff contends that Defendant cannot accuse it of being dilatory because Plaintiff would have learned earlier about the advertisement if Defendant had not delayed production of its discovery responses. [Id. at 3]. Second, Plaintiff argues that its amendment is not futile because it did not have to plead each element of a false advertising claim and Defendant's advertisement is false in that it is not the innovator or creator of the Hermetia illucens product. [Id. at 3-4]. Third, Plaintiff argues that Defendant is not unduly prejudiced by the amendment because the false advertising claim is related to the other claims in that the Hermetia illucens product is the product underlying Plaintiff's other claims. [Id. at 4-5]. Plaintiff also contends that there is no prejudice and there is no need for additional discovery because Defendant has already been provided with relevant information regarding Plaintiff's claims that it is the creator of the Hermetia illucens food. [Id. at 5].

*4 Before discussing whether Plaintiff may amend its complaint, the undersigned first addresses Plaintiff's argument that the Court should not consider Defendant's response brief because it is untimely. Under this Court's Local Rules, “[a]ny party opposing a motion shall serve the party's response ... not later than ten (10) days after service of the motion.” N.D. Ga. R. 7.1B. The Local Rules further provide:

N.D. Ga. R. 6.1A. Rule 6(a) of the Federal Rules of Civil Procedure explains that time periods of less than 11 days is calculated by: (1) excluding the day of the act or event that begins the period; (2) excluding intermediate weekends and legal holidays; and (3) including the last day of the period unless it is a weekend or legal holiday. FED. R. CIV. P. 6(a)(1)-(3).

The undersigned concludes that Defendant's response brief is timely. Plaintiff filed the motion for leave to amend on Monday, May 19, 2008. Defendant had ten days to respond under Local Rule 7.1B. Given this ten-day response period, the Court does not include the following days in calculating the response time: (1) May 19, see FED. R. CIV. P. 6(a)(1); (2) Saturday, May 24, Sunday May 25, Saturday May 31, and Sunday June 1, see FED. R. CIV. P. 6(a)(2); and (3) Memorial Day, Monday, May 26, see id. With these days excluded, the Court considers the following 10 days to calculate the deadline for Defendant to file its response: May 20, May 21, May 22, May 23, May 27, May 28, May 29, May 30, June 2, and June 3. Thus, Defendant's brief was due on Tuesday, June 3, the day that Defendant filed the brief. See FED. R. CIV. P. 6(a)(3). As a result, Defendant's brief is timely, so the Court considers the arguments therein.

Defendant appears to argue that Plaintiff has not met the standard for modifying the scheduling order under Rule 16(b)(4). [Doc. 23 at 3 n.1].

“A schedul[ing order] may be modified only for good cause and with the judge's consent.” FED. R. CIV. P. 16(b)(4). “This good cause standard precludes modification unless the schedule cannot ‘be met despite the diligence of the party seeking the extension.’ ” Sosa v. Airprint Sys., Inc., 133 F.3d 1417, 1418 (11th Cir. 1998) (quoting FED. R. CIV. P. 16 advisory comm. note); Wallace v. UAW Local 1639, Civ. Action No. 06-0395, 2007 WL 1793587, *1 (S.D. Ala. June 18, 2007) (“[T]he touchstone of the Rule 16(b) inquiry is whether [the party] exercised diligence in attempting to comply with the Scheduling Order deadlines....”). When a motion to amend is filed outside of the time prescribed by the scheduling order, a party must first demonstrate good cause under Rule 16(b)(4). Id. at 1419; see also Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1231 (11th Cir. 2008). Once the party demonstrates good cause, a court will consider whether an amendment is proper under FED. R. CIV. P. 15(a). Sosa, 133 F.3d at 1419.

The undersigned concludes that Plaintiff does not need to meet the good cause standard because the scheduling order does not explicitly set the deadline for filing amendments. Judge Carnes's scheduling order sets explicit deadlines for discovery, filing motions for summary judgment, and filing the proposed consolidated pretrial order. [See Doc. 15]. The scheduling order, however, does not explicitly set deadlines for filing other motions or amending the pleadings. [See id.]. The undersigned recognizes that the parties' joint preliminary report and discovery plan indicates that all other motions must be filed within 30 days after the start of discovery. [Doc. 11 at 7]. Judge Carnes's Order does not adopt, however, this deadline explicitly. [See Doc. 15]. In the absence of a specific deadline for amending pleadings in the scheduling order, the undersigned concludes that Plaintiff need not satisfy the Rule 16(b)(4) good cause standard.[2] Instead, the Court turns to whether Plaintiff has met the standard under Rule 15(a). See Datastrip Int'l Ltd. v. Intacta Techs., Inc., 253 F. Supp. 2d 1308, 1317 (N.D. Ga. 2003) (Story, J.) (“Because the Scheduling Order does not contain limitations for amending pleadings, the Rule 16 good cause requirement is not applicable.”); Walters v. Altec Indus., Inc., No. 3:01-cv-371, 2003 WL 22012046, *1 (M.D. Fla. Mar. 3, 2003) (noting that courts in the Middle District of Florida have held that Rule 15(a) governs when the scheduling order does not fix a deadline for amending pleadings).

*5 Under FED. R. CIV. P. 15(a)(2), “a party may amend its pleadings with the opposing party's written consent or the court's leave. The court should freely give leave when justice so requires.” A court may refuse, however, to allow a party to amend the complaint on numerous grounds, including “undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party by virtue of allowance of the amendment, futility of amendment, etc.” Garfield v. NDC Health Corp., 466 F.3d 1255, 1270 (11th Cir. 2006) (quoting Foman v. Davis, 371 U.S. 178, 182 (1962)). Defendant asserts that leave should not be granted to amend the complaint because: (1) Plaintiff unduly delayed seeking the amendment; (2) Plaintiff's proposed amendment is futile; and (3) Defendant will suffer undue prejudice. [See Doc. 23 at 3-9]. The Court addresses each contention separately.

“In determining whether the delay was undue, the Court considers both the length of the delay and the reason for its occurrence.” Collins v. Wal-Mart, Inc., 245 F.R.D. 503, 512 (D. Kan. 2007). A court may also find undue delay when the proposed amendment relies on facts of which the movant has been aware for some time prior to the motion. Id. Furthermore, a party's lack of diligence in bringing a claim constitutes undue delay. Figgie Int'l v. Miller, 966 F.2d 1178, 1181 (7th Cir. 1992). Thus, a court considers the following factors in determining whether undue delay exists: (1) the amount of time movant knew of the claim prior to seeking leave to amend; (2) the amount of time movant delayed in seeking to amend the complaint upon learning of the claim; (3) the reason offered for the delay; and (4) the stage of the litigation proceedings. See Fla. Evergreen Foliage v. E.I. DuPont De Nemours and Co., 470 F.3d 1036, 1041-42 (11th Cir. 2006).

The undersigned finds that Plaintiff did not unduly delay seeking to amend its complaint. First, Plaintiff only knew about the possible false advertising claim for six weeks before it attempted to amend the complaint. The undersigned recognizes that Plaintiff first complained about Defendant's use of the allegedly false advertisement in October 2007 before it filed the initial complaint. However, Plaintiff believed that Defendant had stopped publishing the allegedly controversial advertisement after complaining in October 2007. Plaintiff did not learn that Defendant had continued using its advertisement until April 2008. Thus, Plaintiff only knew about the claim in April 2008. See Loggerhead Turtle v. County Council of Volusia County, Fla., 148 F.3d 1231, 1256 (11th Cir. 1998) (finding no undue delay in part because the case was not one where the facts supporting the proposed amendment were known at the time of the original pleading).

Second, this six week delay between acquiring knowledge of Defendant's continued use of the advertisement and filing the motion for leave to amend is not unreasonable under the circumstances of this case. Much of this delay is attributed to Defendant's failure to respond to Plaintiff's inquiry concerning Defendant's intentions to withdraw the advertisement. Plaintiff's delay demonstrates that it sought to resolve the claim without court intervention.

Third, the attempt to amend the complaint was still within the discovery period. The proposed amendment was therefore not made at a time that was so late in the litigation process. Cf. Campbell v. Emory Clinic, 166 F.3d 1157, 1162 (11th Cir. 1999) (“[U]ndue delay [is] inherent in an amendment asserted after the close of discovery....”). Therefore, the parties could have conducted discovery on the false advertising claim. Under these circumstances, the undersigned concludes that Plaintiff did not unduly delay filing its motion for leave to amend the complaint.

*6 As for Defendant's argument that Plaintiff was not diligent in pursuing the claim, the undersigned disagrees. Defendant points to the continued publication of the advertisement in the 2008 issue of “Reptiles USA” magazine and to the February 2008 publication of the advertisement in a publication for a Dallas trade show as evidence that Plaintiff did not diligently determine whether it had a claim. Without more evidence, the Court is not convinced that these publications show that Plaintiff was not diligent. As for the February 2008 advertisement, the Court has no way of determining whether Plaintiff should have known about the advertisement. The Court has no knowledge of reptile trade shows or the importance of the Dallas trade show in the reptile feeding industry. As such, the undersigned cannot conclude that Plaintiff's ignorance of this advertisement shows a lack of diligence. As for the advertisement in the “Reptiles USA” magazine, Defendant admits that the 2008 issue was originally published in August 2007. The undersigned does not know if it was possible for Defendant to pull the advertisement for this issue given that the issue was originally published in 2007. As a result, the Court does not find any lack of diligence by Plaintiff, so the Court turns to Defendant's argument that the amendment will unduly prejudice it.

A party may demonstrate that a proposed amended complaint causes undue prejudice if: (1) the party is unable to conduct further discovery concerning the claim in the proposed amended complaint because the discovery period has run, Reese v. Herbert, 527 F.3d 1253, 1263 (11th Cir. 2008); (2) the party will incur a great amount of additional expense, Loggerhead Turtle, 148 F.3d at 1257; (3) the amendment will significantly delay resolution of the dispute, see id.; see also Marsh v. Sheriff of Cayuga County, 36 Fed. Appx. 10, 11 (2d Cir. 2002); (4) the opposing party will be required to engage in significant new preparation at a late stage of the proceedings; and (5) the issues raised by the amendment are remote from the other issues in the case, Dannebrog Rederi AS v. M/Y True Dream, 146 F. Supp. 2d 1307, 1315 (S.D. Fla. 2001) (citing 6 Wright & Miller, Fed. Pract. and Proc. § 1487 (Civil 2d 1990)).

The Court finds that the amendment will not cause undue prejudice. First, the discovery period had not ended when Plaintiff sought to amend the complaint. Second, Defendant has not argued that addition of the new claim will significantly add expenses to the litigation. Third, the undersigned concludes that the addition of the false advertising claim will require additional discovery and therefore cause some delay in the proceedings. However, this delay can be minimized by reopening the discovery period for a limited time. Fourth, Defendant's complaint that the addition of the false advertising claim would force it to engage in new discovery is also unpersuasive. “The burden of conducting additional discovery does not automatically constitute undue prejudice.” State Farm Mut. Auto. Ins. Co. v. CPT Med. Servs., P.C., 246 F.R.D. 143, 149 (E.D.N.Y. 2007).

Finally, although the undersigned agrees with Defendant that the false advertising claim is distinct from the unfair competition, cybersquatting and trademark claims in that these claims involve imitation of the Phoenix Worm mark, this distinction does not mandate a finding of prejudice. The essential dispute in this case is whether Defendant is improperly imitating Plaintiff's Phoenix Worm trademark or causing consumer confusion. Plaintiff's false advertising claim relates to whether the advertisement causes confusion. (Prop. Amend. Compl. ¶ 58). Also, the Phoenix Worm trademark came about because Plaintiff developed an animal feeding product involving the Hermetia illucens species. The dispute over Defendant's advertisement also implicates the species in that Plaintiff claims that Defendant is making false representations about the larvae in the advertisement. The Court and any jury therefore will need to become familiar with the species and the animal feed industry for Plaintiff's original claims and the false advertising claim.

It therefore is not onerous to litigate the unfair advertising claim along side Plaintiff's original claims. As a result, the Court turns to Defendant's final argument—the proposed addition of the false advertising claim is futile.

*7 The Eleventh Circuit has determined that “denial of leave to amend is justified by futility when the complaint as amended is still subject to dismissal.” Hall v. United Ins. Co. of Am., 367 F.3d 1255, 1263 (11th Cir. 2004) (quoting Burger King Corp. v. Weaver, 169 F.3d 1310, 1320 (11th Cir. 1999)). A proposed amendment is subject to dismissal “when it consist[s] of only the barest of conclusory allegations without notice of the factual grounds on which they purport to be based.” See Jackson v. BellSouth Telecomms., 372 F.3d 1250, 1271 (11th Cir. 2004). The complaint need not provide detailed factual allegations, but it must give sufficient factual allegations to “to raise a right to relief above the speculative level,” that is the complaint must give “only enough facts to state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955, 1965, 1974 (2007). In other words, the complaint must “give the defendant fair notice of what the ... claim is and the grounds upon which it rests.” Erikson v. Pardus, 127 S. Ct. 2197, 2200 (2007) (quoting Twombly, 127 S. Ct. at 1964). Thus, “[w]ithout some factual allegation in the complaint, it is hard to see how a claimant could satisfy the requirement of providing not only ‘fair notice’ of the nature of the claim, but also ‘grounds’ on which the claim rests.” Twombly, 127 S. Ct. at 1965 n.3. “Specific facts are not necessary.” Erikson, id. To determine if the proposed amendment is subject to dismissal, a court accepts the facts pleaded in the proposed amended complaint as true and construes them in the light most favorable to the plaintiff. See Spanish Broadcasting Sys. of Fla., Inc. v. Clear Channel Commcn's, Inc., 376 F.3d 1065, 1077 (11th Cir. 2004). However, if a document appended to the complaint, “reveals facts which foreclose recovery as a matter of law, dismissal is appropriate.” Assoc. Builders, Inc. v. Ala. Power Co., 505 F.2d 97, 100 (5th Cir. 1974); see also Griffin Indus., Inc. v. Irvin, 496 F.3d 1189, 1206 (11th Cir. 2007).

A false advertising claim has the following elements:

Air Turbine Technology, Inc. v. Atlas Copco AB, 295 F. Supp. 2d 1334, 1343 (S.D. Fla. 2003) (quoting Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242, 1247 (11th Cir. 2002)); see also Thoroughbred Legends, LLC v. The Walt Disney Co., No. 1:07-cv-1275, 2008 WL 616253, *12 n.14 (N.D. Ga. Feb. 12, 2008) (Martin, J.) (quoting Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1260 (11th Cir. 2004)); Energy Four, Inc. v. Dornier Med. Sys., Inc., 765 F. Supp. 724, 730 (N.D. Ga. 1991) (Forrester, J.). To state a claim for false advertising, Plaintiff is not required to “allege a ‘specific fact’ to cover every element or allege ‘with precision’ each element of [the] claim, [but] it is still necessary that [the] complaint ‘contain either direct or inferential allegations respecting all the material elements necessary to sustain a recover under” the false advertising claim. See Fin. Sec. Assur., Inc. v. Stephens, Inc., 500 F.3d 1276, 1282-83 (11th Cir. 2007) (quoting Roe v. Aware Woman Ctr. for Choice, Inc., 253 F.3d 678, 683 (11th Cir. 2001)).

The undersigned concludes that the proposed amendment is not futile. First, the undersigned is not persuaded by Defendant's argument that the claim is futile due to Plaintiff's failure to specifically allege each element of the false advertising claim. As stated above, a plaintiff need not allege each element of a cause of action to state a claim. See Fin. Assur. Sec., Inc., supra. The Court agrees that Plaintiff's complaint did not specifically allege the third element—deception had a material effect on purchasing decisions. This omission is not fatal to stating a claim because it could be inferred from the other allegations in the proposed complaint.

In this proposed complaint, Plaintiff alleged that Defendant's advertisement was misleading in that it suggested Defendant had created the Hermetia illucens food product. (Prop. Amend. Compl. ¶ 55 in Doc. 21). Plaintiff then alleged that the advertisement deceived the public, (id.¶ 58), and caused substantial injury to Plaintiff, (id. ¶ 60). A reasonable inference from these allegations is that the alleged deception had a material effect on the purchasing decisions given that the public was deceived and Plaintiff suffered an injury. With the allegations of deception and substantial injury, it is reasonable to infer that the deception had a material effect on the public's purchasing decisions.

*8 Second, the undersigned finds that at this phase of the litigation, the advertisement is misleading under the first element of a false advertising claim. The first element of a false advertising claim—the advertisement was false or misleading—is met if the statements “were either (1) commercial claims that are literally false as a factual matter or (2) claims that may be literally true or ambiguous but which implicitly convey a false impression, are misleading in context, or likely to deceive consumers.” See Hickson Corp. v. N. Crossarm Co., Inc., 357 F.3d 1256, 1261 (11th Cir. 2004) (quoting United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1180 (8th Cir. 1998)).

Before explaining why the undersigned finds that the advertisement is false or misleading, the undersigned first concludes that Defendant's statement, “innovative in an often imitated market,” is not literally false or misleading. This is a statement of puffery. “Puffery is ‘exaggerated advertising, blustering, and boasting upon which no reasonable buyer would rely and is not actionable under [§ 1125(a)(1)(B) ].’ ” BellSouth Advertising & Publ'g Corp. v. Lambert Publ'g, 45 F. Supp. 2d 1316, 1320 (S.D. Ala. 1999). Thus, “[v]ague or highly subjective claims of product superiority generally will fall within the category of non-actionable puffery” while “false descriptions of absolute characteristics of a product and specific, measurable claims of product superiority based on product testing are not puffery.” Id. The general statement about being innovative in an imitated market is nothing but puffery in that it does not make a specific false claim about Defendant's products or those of Plaintiff's. See Soilworks, LLC v. Midwest Indus. Supply, Inc., 575 F. Supp. 2d 1118, 1133 (D. Ariz. 2008) (“Courts have found that the word ‘innovative’ is ‘not specific, not concrete, not measurable, and therefore puffery.’ ”) (quoting Rosenthal Collins Group, LLC v. Trading Techs. Int'l, Inc., No. 05 C 4088, 2005 WL 3557947, *10 (N.D. Ill. Dec. 26, 2005)).

Although Defendant's statement about being “innovative” is not false or misleading, the undersigned finds that at the pleadings stage, Defendant's use of “creating” makes the advertisement misleading. In reaching this conclusion, the undersigned draws from both the factual allegations of the complaint and its review of the advertisement. First, Plaintiff alleges that the Hermetia illucens larvae had never before existed as a pet food until Plaintiff invested considerable sums of money and devoted five years to develop the product. [Prop. Amend. Compl. ¶ 8]. Thus, Plaintiff's proposed amended complaint indicates that it created the Hermetia illucens larvae as a pet food. Second, Defendant followed Plaintiff and began marketing its own Hermetia illucens product under the name Calciworms. [See id. ¶ 18]. Thus, Defendant was not the first to create the Hermetia illucens product but instead followed Plaintiff's creation with its own Calciworm product. Third, Defendant is aware that Plaintiff created the Hermetia illucens product as pet food. [Id. ¶ 30]. Therefore, the factual allegations of the proposed amended complaint indicate that Plaintiff, not Defendant, was the first to create the Hermetia illucens larvae as pet food, a fact known to Defendant.

Defendant's advertisement leads the consumer to a different conclusion, however, because the advertisement gives the false impression that with the Calciworm product, Defendant created the Hermetia illucens larvae as pet food. The advertisement states in relevant part: “Whether it's ... the need for nutritious, high calcium feeder insects such as Timberlines [sic] Calciworms™, we hear you. For more than 25 years now Timberline has always prided itself on creating the products that fulfill reptile hobbyist needs.” (See Exh. H to Prop. Amend. Compl. in Doc. 21) (emphasis in original). Defendant's advertisement therefore implies that with the Calciworm product, it created the idea to use these high calcium feeder insects as pet food. Plaintiff's factual allegations demonstrate that Plaintiff, not Defendant, created the Hermetia illucens larvae as pet food. As a result, the undersigned finds that when viewed in a light most favorable to Plaintiff, the advertisement is misleading.

*9 Accordingly, Plaintiff's motion for leave to amend, [Doc. 21], is GRANTED.

After the close of discovery, Plaintiff first informed Defendant on July 14, 2008, that its vice president, Sheila Sheppard, had tape recorded anonymous phone calls that she had placed to Timberline during the summer of 2007. (See Hooker Decl. ¶ 15 in Doc. 36; see also Doc. 33 at 1). Plaintiff then filed a partial motion for summary judgment on July 28, 2008, relying on three taped conversations from May 25, June 19, and July 11, 2007, as evidence. [See Doc. 31 at 11; Sheila Sheppard Aff. at Exh. 7 in Doc. 31]. The partial motion also relied on statements from four witnesses—Gary Roberts, Allen Repashy, Gordon Vadis, and Brian Birchall. [See Doc. 31 at Roberts, Repashy, Vadis, and Birchall Deps.]. Defendant claims that it was unaware that these four individuals would be witnesses in the case until the filing of the partial motion for summary judgment. [See Doc. 33 at 11]. The District Court denied Plaintiff's partial motion for summary judgment without prejudice. [Doc. 35].

In January 2008, Plaintiff filed its initial disclosures, identifying Sheila Sheppard and Craig Sheppard as individuals likely to have discoverable information. [Doc. 14 at 1-2]. In listing the general categories of tangible things that Plaintiff might use to support its claims or defenses, Plaintiff listed eight items, none of which referred to tape recordings. [Id. at 2-3].

In responding to Defendant's interrogatories, Plaintiff provided the following relevant responses. First, Plaintiff listed Sheila Sheppard as the only person most knowledgeable about the Phoenix Worm mark. (Interrog. Resp. No. 1 in Doc. 33 at Exh. C). Second, Plaintiff identified six instances of oral or written communication between Defendant and Plaintiff, none of which mentioned phone calls by Sheila Sheppard to Defendant or tape recordings of the phone calls. (Interrog. Resp. No. 7). Third, in response to Defendant's questions regarding instances of confusion or mistake concerning Phoenix Worm and communications by Defendant referring to the Phoenix Worm, Plaintiff indicated that Sheila Sheppard had called Defendant's service department 13 times between 2006 and 2007, but did not reveal that Sheppard had recorded these conversations. (Interrog. Resps. Nos. 16, 20). In response to Defendant's interrogatories, Plaintiff produced, however, verbatim quotations from the tape recorded conversations between Sheppard and Timberline's sales representatives on June 11, 2008. (Hooker Decl. ¶ 5 in Doc. 36).

Plaintiff provided the following responses to the following relevant requests for production of documents by Defendant. Defendant sought all documents that supported the allegations in paragraphs 28 and 37 of the complaint, which stated that Defendant had a practice of telling customers that its product is the Phoenix Worm product. (Doc. Reqs. Nos. 20-21 at Exh. E in Doc. 33). Plaintiff indicated that it would “produce non-privileged reasonably responsive documents in its possession, custody, or control.” (Id.). Plaintiff provided the same response when asked for (1) all documents relating to communications Plaintiff had regarding Defendant or any good offered by Defendant and (2) all documents relating to instances regarding any connection between Plaintiff or Defendant. (Doc. Reqs. Nos. 28 & 30). Plaintiff again provided the same response when Defendant sought all documents relating to communications between Plaintiff and Defendant and all documents relating to Plaintiff's contention concerning confusion about the source or origin of the goods sold by Plaintiff. (Doc. Reqs. Nos. 33-34). Plaintiff never provided the tapes of the recorded conversations during the discovery period. (See Hooker Decl. ¶ 15 in Doc. 36).

*10 Defendant argues that Plaintiff should be sanctioned under FED. R. CIV. P. 37 for failing to disclose during discovery: (1) the tapes of Sheila Sheppard's conversations with Defendant customer service employees; and (2) the names of witnesses who appeared by affidavit to support Plaintiff's partial motion for summary judgment. As for the tape recordings, Defendant contends that because Plaintiff waited until July 14 to disclose the recordings despite having numerous opportunities to disclose their existence, Plaintiff should not be permitted to use the tapes in the litigation. [Doc. 33 at 6]. Specifically, Defendant contends that Plaintiff should have disclosed the recordings at various times in the discovery process, including: (1) the initial disclosures, pursuant to FED. R. CIV. P. 26(a)(ii); (2) Plaintiff's response to interrogatories Numbers 7 and 20; (3) Plaintiff's response to Defendant's request for production Numbers 33 and 43; and (4) Sheila Sheppard's July 10, 2008, deposition. [Id. at 7-9]. Defendant contends that Plaintiff cannot demonstrate that the untimely revelation is harmless or substantially justified because: (1) Defendant could have added its proposed counterclaim at the outset of the litigation; and (2) Defendant could have directed discovery toward the recordings. [Id. at 9-10].

Defendant also argues that the affidavit testimony of Garry Roberts, Allen Repashy, Gordon Vadis, and Brian Birchall should be barred under Rule 37(c) because Plaintiff did not disclose them as having discoverable information. [Doc. 33 at 11]. Defendant acknowledges that both Roberts and Repashy were both identified in documents responsive to interrogatories, but asserts that they should be barred as witnesses because they were not disclosed in the initial disclosures. [Id. at 11 n.1]. As for Vadis and Birchall, Defendant notes that they are completely new witnesses. [Id.].

Defendant further argues that it needs to conduct additional discovery pursuant to Rule 56(f) so that it can properly oppose Plaintiff's partial summary judgment motion given the undisclosed witnesses and tape recordings. [Id. at 12-14]. Finally, Defendant seeks, without explanation, reasonable expenses associated with filing the sanctions motion and a monetary sanction as a deterrent. [See id. at 5, 14].

Plaintiff first responds that Roberts, Repashy, Vadis, and Birchall should not be excluded because they were not sprung on Defendant. [Doc. 36 at 10]. As for Roberts and Repashy, Plaintiff claims that these two individuals were discussed extensively in both parties' depositions. [Id.]. As for Birchall and Vadis, Plaintiff acknowledges that they were not previously identified. [Id.]. Plaintiff argues, however, that their nondisclosure is harmless because: (1) these two witness had knowledge that was identical to witnesses identified in response to Defendant's interrogatories; and (2) Defendant did not take discovery from witnesses with similar knowledge whom Plaintiff previously identified. [Id. at 10-11].

Plaintiff next argues that the tape recordings should not be excluded under Rule 37. [Id. at 12-22]. First, Plaintiff argues that the tape recordings are not illicit under controlling Georgia law and are admissible even if they are illicit under Illinois law. [Id. at 13-14]. Second, Plaintiff contends that it disclosed the content of the conversations in its interrogatory responses when it produced Sheppard's handwritten notes on July 2, 2008. [Id. at 14]. Third, Plaintiff asserts that Sheppard did not intentionally conceal the existence of the recordings during her deposition but instead answered vague and unclear questions appropriately. [Id. at 15-18]. Fourth, Plaintiff argues that its failure to disclose the tape recordings is harmless or substantially justified because: (1) Plaintiff originally intended to use the recordings for impeachment purposes until Todd Goodman's Rule 30(b)(6) testimony; (2) the surprise is minimal given that Plaintiff produced handwritten notes of the conversations; and (3) any prejudice is curable with an extension of discovery. [Id. at 19-20]. Fifth, Plaintiff claims that the tape recordings were not subject to discovery because they constituted privileged work product. [Id. at 20]. Plaintiff explains that the recordings were prepared in anticipation of litigation and Defendant has never made a showing of substantial need. [Id. at 20-21]. Finally, Plaintiff argues that Defendant cannot complain about discovery violations because Defendant has unclean hands concerning discovery by not timely complying with its discovery obligations. [Id. at 22].

*11 Defendant replies that Plaintiff has not justified its concealment of the tape recordings. First, Defendant argues that because Plaintiff knew about the recordings from the outset of the litigation, it had a duty to disclose them from the beginning. [Id. at 4-5]. Second, Defendant contends that Plaintiff had a further duty to disclose the recordings in responses to interrogatory and document requests. [Id. at 5-6]. Third, Defendant argues that Sheppard clearly understood the context of Defendant's questions and should have revealed the recordings' existence during her deposition. [Id. at 6-7]. Finally, Defendant asserts that Plaintiff was not substantially justified in withholding disclosure of the recordings because: (1) the recordings have been used for substantive purposes, not solely for impeachment purposes, [id. at 8-9]; (2) the recordings of witnesses are not work product as a matter of law and Plaintiff never provided a privilege log, [id. at 9-10]; and (3) Defendant suffered substantial harm in that the non-disclosure impaired its ability to conduct discovery and engage in the truth-finding process, [id. at 9-11].

Defendant also argues that Plaintiff has not justified its failure to disclose the identities of Roberts, Repashy, Vadis, and Birchall. First, Defendant contends that Plaintiff should have initially revealed these individuals since they were known at the outset of the litigation. [Id. at 12-13]. Second, Defendant complains that Plaintiff's argument about identifying identical witnesses does not absolve Plaintiff of identifying the two witnesses used in the partial motion for summary judgment. [Id. at 13].

Under Rule 56,

FED. R. CIV. P. 56(f). By its express terms, Rule 56(f) only applies when a party is opposing a motion for summary judgment. See id. Since the District Court denied Plaintiff's partial motion for summary judgment without prejudice, [see Doc. 35], there is no pending motion for summary judgment. The undersigned therefore concludes that Defendant's Rule 56(f) motion for an extension of time is moot.

Accordingly, Defendant's Rule 56(f) motion, [Doc. 33], is DENIED AS MOOT.

Under FED. R. CIV. P. 26,

FED. R. CIV. P. 26(a)(1)(A). The parties must make the initial disclosures based on the information reasonably available to them. FED. R. CIV. P. 26(a)(1)(E). The initial disclosures, interrogatory responses, and responses to document requests must be supplemented or corrected:

FED. R. CIV. P. 26(e)(1).

If a party fails to comply with the disclosure and supplementation requirements of Rule 26(a) and Rule 26(e), “the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless.” FED. R. CIV. P. 37(c)(1). In addition or instead of the sanction of exclusion, a court may: (1) order payment of reasonable expenses caused by the failure to disclose; (2) inform the jury of the party's failure to disclose; and/or (3) impose other appropriate sanctions. FED. R. CIV. P. 37(c)(1)(A)-(C).

*12 District Courts in the Eleventh Circuit apply the following standard for determining whether a party's non-disclosure is substantially justified:

Chapple v. State of Ala., 174 F.R.D. 698, 701 (M.D. Ala. 1997) (quoting Nguyen v. IBP, Inc., 162 F.R.D. 675, 680 (D. Kan. 1995)); see alsoPoole v. Gee, No. 8:07-cv-912, 2008 WL 2397603, *2 (M.D. Fla. June 10, 2008) (citing Chapple, supra); Allstate Ins. Co. v. Jackson, Civ. Action No. 06-554, 2007 WL 3287369, *4 (S.D. Ala. Nov. 5, 2007).

Also, courts examine the following factors to determine whether non-disclosure is harmless: (1) the prejudice or surprise of the opposing party; (2) the ability to cure the prejudice; (3) the importance of the testimony; and (4) the reason for the failure to disclose (bad faith or willfulness). Thornton v. J Jargon Co., No. 8:06-cv-1640, 2008 WL 2700058, *19 (M.D. Fla. July 8, 2008); Trujillo v. Bd. of Edu. of Albuquerque Pub. Schs., 230 F.R.D. 657, 660 (D.N.M. 2005); In re Mercedes-Benz Anti-Trust Litigation, 225 F.R.D. 498, 506 (D.N.J. 2005). The advisory committee notes indicate that a party meets the harmless or substantial justification standards when: (1) the omission is inadvertent; (2) the witness is known to all parties; or (3) the witness was listed by another party. FED. R. CIV. P. 37 advisory comm. notes (1993).

The undersigned concludes that Plaintiff may rely on evidence from Roberts and Repashy. The parties agree that Plaintiff omitted Roberts and Repashy as witnesses with discoverable information in the initial disclosures and in any supplemental disclosures. [See Doc. 36 at 10]. This omission is excused, however, because both Roberts and Repashy were identified in Sheila Sheppard's deposition. (See Sheppard Dep. excerpts at 41, 96, 191 (Repashy) and at 132, 134-35, 145, 149, 202-04 (Roberts) in Hooker Aff. at Exh. 2).[5] Also, Defendant admits that Plaintiff identified Roberts in a response to an interrogatory and that Repashy's name arose in documents produced by Plaintiff. [Doc. 33 at 11 n.1]. Given the disclosure of these witnesses' identities during the course of discovery, the Court concludes that the evidence from Repashy and Roberts is not subject to exclusion. See FED. R. CIV. P. 26 advisory comm. notes (1993); Buffone v. Rosebud Restaurants, Inc., No. Civ. A. 05-C-5551, 2006 WL 2425327, *3 (N.D. Ill. Aug. 21, 2006) (noting“that parties need not supplement Rule 26(a)(1)disclosure of a witness, if the witness is identified during deposition”).

*13 The Court is not persuaded by Defendant's argument that Roberts and Repashy should be excluded as witnesses given that Plaintiff knew that they had discoverable information at the time that the initial disclosures were due. The Court agrees with Defendant's statement that the initial disclosures should identify the name of witnesses with discoverable information who are known at the time of the initial disclosures. See FED. R. CIV. P. 26(a)(1)(A), (E). Thus, the omission of these witnesses could cause them to be excluded. However, exclusion is not automatic since a party can avoid exclusion on the grounds of substantial justification or harmlessness. FED. R. CIV. P.37(c)(1). Here, Defendant has not argued how it has been prejudiced by the omission of Roberts's and Repashy's names from the initial disclosures, and the undersigned is unaware of any prejudice given that these two individuals's identities were subsequently revealed in discovery. [See Doc. 33 at 11; Doc. 42 at 12-13]. See Hicks v. Boston Scientific Corp., 28 Fed. Appx. 583, 585 (7th Cir. 2002) (noting that a party's inability to articulate the basis of its prejudice supports a court's decision to deny Rule 37 sanctions); see also FED. R. CIV. P. 37advisory comm. notes (2000) (“A party should be allowed to use the material that was not disclosed if the lack of earlier notice was harmless.”).

Accordingly, the undersigned RECOMMENDS that Defendant's motion for sanctions concerning the witnesses Roberts and Repashy be DENIED.

The undersigned concludes that Plaintiff violated Rule 26 by not disclosing Birchall and Vadis as witnesses because they were not identified at any point in discovery. Plaintiff relied on affidavits of Birchall and Vadis in its partial motion for summary judgment. [See Doc. 31 at 19 n.34 & Birchall and Vadis Affs. in Doc. 31]. Given the use of Birchall and Vadis's affidavits in the partial motion for summary judgment, it is clear that both Birchall and Vadis were witnesses who had discoverable information and should therefore have been disclosed during discovery. See FED. R. CIV. P. 26(a), (e). Plaintiff concedes that Birchall and Vadis were never disclosed. [See Doc. 36 at 10]. As a result, the undersigned concludes that Plaintiff violated Rule 26 and is subject to sanctions under Rule 37(c)(1) unless Plaintiff can demonstrate harmlessness or substantial justification.

Plaintiff appears to argue that sanctions under Rule 37(c)(1) are inappropriate because it was substantially justified in not disclosing Birchall and Vadis as witnesses and the nondisclosure is harmless. The undersigned addresses both arguments below.

Plaintiff advances the following unique argument that its nondisclosure was substantially justified: it had no duty to disclose these two witnesses because it identified other witnesses with similar information. This argument is not supported, however, by the express terms of Rules 26 or 37, the advisory committee notes, or the case law. Instead, Rule 26 provides a duty to disclose or supplement while Rule 37(c)clearly states that when a witness is not identified as required by Rule 26(a) or Rule 26(e), the party is subject to sanctions unless the failure is harmless or substantially justified. Thus, the Federal Rules require disclosure of witnesses. Plaintiff never identified Birchall and Vadis, and its argument that disclosure of similar witnesses simply is not supported by the rules or the case law. There is simply no reasonable basis to find that this position is supported in law and fact. As a result, the undersigned concludes that Plaintiff has not demonstrated that it was substantially justified in not disclosing these witnesses.

Plaintiff appears to argue that the non-disclosure of these two witnesses was harmless because: (1) it identified other witnesses with similar information; and (2) Defendant opted not to depose these other witnesses. The Court is unpersuaded by these arguments. That Defendant may have decided not to obtain discoverable information about certain named witnesses does not necessarily mean that Defendant would not have sought discovery on the surprise witnesses. This is not a situation of inadvertence or universal knowledge of the witness. Had Defendant been aware of these two witnesses, Defendant may have chosen to depose or otherwise obtain discoverable information. As a result, the Court concludes that Plaintiff's arguments do not demonstrate that the nondisclosure was harmless.

*14 Under these circumstances, the District Court has three options. First, it may exclude Birchall and Vadis as witnesses since they were never disclosed under Rule 26(a) or Rule 26(e), but instead were identified as surprise witnesses for the first time on summary judgment. See Cooley v. Great Southern Wood Preserving, 138 Fed. Appx. 149, 161 (11th Cir. 2005) (finding no abuse of discretion in striking affidavits where affiants were not disclosed under Rule 26); Hosea v. Langley, No. Civ. A. 04-605, 2006 WL 314454, *6 (S.D. Ala. Feb. 8, 2006) (striking declaration of witness identified for first time in opposition to summary judgment). Second, the District Court may award sanctions in addition to or in lieu of exclusion such as expenses. See FED. R. CIV. P. 37(c)(1).

Third, the Court may render the non-disclosure harmless by reopening discovery to allow Defendant to conduct discovery on the non-disclosed evidence. See Walls v. Paulson, 250 F.R.D. 48, 54 (D.D.C. 2008) (finding disclosure delay not prejudicial where no trial date set or dispositive motion schedule in place); Metal Processing Co., Inc. v. Amoco Oil Co., 173 F.R.D. 244, 248 (E.D. Wis. 1997) (finding discovery extension would “reduce, if not eradicate,” prejudice); cf. McClain v. Metabolife Int'l, Inc., 193 F. Supp. 2d 1252, 1259 (N.D. Ala. 2002)(noting that “merely having to depose a party on information that should have been disclosed in a Rule 26 Report is a form of prejudice” but that courts are reluctant to preclude testimony without a finding of bad faith or gamesmanship).

The undersigned concludes that Plaintiff's non-disclosure of these witnesses should be rendered harmless by reopening discovery. First, Plaintiff's partial motion for summary judgment is no longer pending. Therefore, there is no pending deadline for Defendant to respond the motion. The parties may engage in discovery without being constrained by a pending motion.

Second, the undersigned has concluded that Plaintiff be granted leave to amend its complaint. As a result, the parties will need to conduct discovery on the false advertising claims. Since discovery will need to be reopened for this additional claim, the undersigned finds that extended discovery also will allow Defendant to conduct discovery concerning the previously undisclosed witnesses.

Third, even if the District Court reverses the undersigned's decision on amending the complaint, the District Court can relieve any prejudice suffered by Defendant due to Plaintiff's Rule 26 violations by reopening discovery. By providing an opportunity to conduct further discovery, the District Court will minimize if not eliminate the prejudice suffered by Defendant. Plaintiff's Rule 26 nondisclosure violations therefore will be rendered harmless. See Walls, 250 F.R.D. at 54 (citing Int'l Truck & Engine Corp. v. Caterpillar, Inc., No. 1:03-CV-265, 2004 WL 3217760, *2 (N.D. Ind. May 26, 2004) (denying a Rule 37(c)(1) motion because “trial is ten months away and any prejudice can be easily remedied by a motion to reopen fact discovery and/or extend expert discovery”)); Metal Processing Co., Inc., 173 F.R.D. at 248; cf. McClain, 193 F. Supp. 2d at 1259. Accordingly, the undersigned RECOMMENDS that Defendant's motion for sanctions concerning Birchall and Vadis be DENIED.

The undersigned concludes that Plaintiff should have disclosed the existence of the tape recordings in the initial or supplemental disclosures as required by Rule 26(a), (e). First, Plaintiff should have disclosed these recordings in the initial disclosures, which required Plaintiff to provide a copy or a description by category and location all documents and tangible things in its possession that it “may use” to support its claims. See FED. R. CIV. P. 26(a)(1)(ii). Plaintiff clearly did not disclose the recordings in the initial disclosures. [See Doc. 14]. Second, even if this omission were an oversight, Plaintiff had a duty to timely supplement the incomplete disclosures during the discovery process unless the recordings were otherwise known to Defendant. See FED. R. CIV. P. 26(e). The Court is unaware of any evidence that Plaintiff supplemented its disclosures by revealing the existence of these recordings during the discovery period. Also, Plaintiff did not otherwise make these recordings known to Defendant in discovery. As outlined in the factual summary above, Defendant sought documents relating to allegations in Plaintiff's complaint concerning Defendant's claims that the Phoenix Worm product was its own. (See discussion in section III.B.1 supra). Plaintiff did not provide these recordings. Instead, Plaintiff first disclosed the recordings to Defendant on July 14, which was after the discovery period had expired. This disclosure was therefore neither timely nor proper under Rule 26(e). Also, since Plaintiff did not disclose the existence of the recordings in the discovery responses, Defendant did not otherwise become aware of the recordings during discovery. As a result, Plaintiff is subject to sanctions under Rule 37(c)(1) unless it can show substantial justification or harmlessness.

*15 Plaintiff contends that this non-disclosure does not merit exclusion because the nondisclosure was harmless in that the contents of the recordings were otherwise disclosed and any prejudice may be cured with a discovery extension. Also, Plaintiff contends that the non-disclosure does not merit exclusion because it was substantially justified in that: (1) the recordings were supposed to be used for impeachment; (2) the recordings were protected by the work product doctrine; and (3) the disclosure is justified given Defendant's conduct during discovery. [See Doc. 36]. The Court addresses these arguments below.

First, Plaintiff's use of the recordings in the partial motion for summary judgment demonstrates that the recordings were used for more than impeachment purposes. Impeachment evidence is offered to discredit a witness, while substantive evidence is offered to establish the truth of a matter to be determined by a trier of fact. See Chiasson v. Zapata Gulf Marine Corp., 988 F.2d 513, 517 (5th Cir. 1993).

Plaintiff's partial motion for summary judgment uses the recordings to show that Defendant's customer service representatives indicated that Defendant's worm product was the Phoenix worm. [Doc. 31 at 11 n.16]. This evidence is then used to prove the trademark infringement and unfair competition claims because Plaintiff argues that Defendant's intentional association of Plaintiff's Phoenix Worm product with Defendant's competing product demonstrates bad faith, a likelihood of confusion, and actual confusion. [Id. at 28-29, 31]. To prove both unfair competition and trademark infringement, a plaintiff must show that: “(1) its mark was used in commerce by the defendant without the registrant's consent and (2) the unauthorized use was likely to cause confusion, or to cause mistake or to deceive.” Optimum Technologies, Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1241 (11th Cir. 2007) (quoting Burger King Corp. v. Mason, 710 F.2d 1480, 1491 (11th Cir. 1983)); Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 258 (5th Cir. 1980) (noting that common law unfair competition claim applies same test as trademark infringement claim).[6] Plaintiff uses the taped evidence to try prove this confusion element. [See Doc. 31 at 26]. As a result, Plaintiff cannot rely on its impeachment rationale given that this is substantive evidence, so the tapes are subject to exclusion. See Aerotech Res., Inc. v. Dodson Aviation, Inc., 91 Fed. Appx. 37, 45 (10th Cir. 2004) (holding no abuse of discretion in excluding audiotape based on finding that it was offered for reasons other than impeachment); see also Chiasson, 988 F.2d at 517-18(holding that because videotape had both substantive and impeachment value, it should have been disclosed prior to trial); Jerolimo v. Physicians for Women, P.C., 238 F.R.D. 354, 357 (D. Conn. 2006) (requiring disclosure of recording because plaintiff indicated that it would be used to support her claims); Pro Billiards Tour Ass'n, Inc. v. R.J. Reynolds Tobacco Co., 187 F.R.D. 229, 232 (M.D.N.C. 1999) (requiring production of audiotape where it constituted substantive evidence).

Plaintiff contends, however, that it decided to use the information as substantive evidence in support of its claims only after Goodman's deposition in which he denied that customer service representatives made certain statements. [See Doc. 36 at 19 & n.16]. The motion for partial summary judgment does not support this contention. As discussed above, a plaintiff establishes claims for trademark infringement and unfair competition in part by showing a likelihood of confusion. Plaintiff's motion for summary judgment specifically used the recordings to show that Defendant caused confusion by claiming that the Phoenix Worm was the same as its own high calcium larvae product. This use of the recordings belies Plaintiff's position and demonstrates that the recordings were meant for a substantive purpose. Given the evidentiary value of the recordings, the undersigned simply does not believe that the recordings were meant solely for impeachment purposes, especially since Plaintiff relied on them in its summary judgment motion.

*16 Second, the Court concludes that even if the tape recordings were work product,[7] Plaintiff was not substantially justified in failing to disclose the recordings under the work product doctrine. Under FED. R. CIV. P. 26(b)(3),

FED. R. CIV. P. 26(b)(3)(A). The purpose of this privilege is as follows: “ ‘it is essential that a lawyer work with a certain degree of privacy, free from unnecessary intrusion by opposing parties and their counsel.’ ” Cox v. Admin. U.S. Steel & Carnegie, 17 F.3d 1386, 1421 (11th Cir. 1994) (quoting Hickman v. Taylor, 329 U.S. 495, 510-11 (1947)). As such, “[t]he work-product doctrine extends only to work product made for the purpose of facilitating the rendition of legal services to the client.” In re Grand Jury Investigation, 769 F.2d 1485, 1487 (11th Cir. 1985).

The Eleventh Circuit has held that an attorney's clandestine recording of conversations with witnesses are not subject to the work product doctrine. Parrott v. Wilson, 707 F.2d 1262, 1272 (11th Cir. 1983). The Court explained that although such conduct did not violate federal or Georgia law, it did violate the code of ethics, and thereby harmed the integrity of the adversary process. Id. at 1271. Relying on Parrott, a magistrate judge in the Northern District of Georgia has held that secret recordings made by pro se plaintiffs or recordings made by plaintiffs prior to being represented are also not protected by the work product doctrine. Otto v. Box U.S.A. Group, Inc., 177 F.R.D. 698, 701 (N.D. Ga. 1997) (Harper, M.J.) (“Secretly taped interviews with witnesses are considered unethical and do damage to the adversarial system, regardless of whether the attorney or the client operates the tape recorder. As the work-product doctrine protects documents and recordings in an effort to preserve a balanced and fair adversarial process, logic and simple fairness cannot permit the work-product privilege to be used to shield such damage.”).

Courts outside of the Eleventh Circuit have also found that secret recordings by a plaintiff with the encouragement of an attorney are not subject to protection under the work product doctrine. Ward v. Maritz Inc., 156 F.R.D. 592, 598 (D.N.J. 1994). One court recently summarized the consensus among district courts concerning the relationship between the work product doctrine and secretly recorded conversations as follows: “[v]irtually all cases ... have held that clandestine recordings of conversations with potential fact witnesses, whether made by a party or by counsel, before or after counsel is consulted, are not shielded under the work product doctrine.” Williams v. Gunderson Rail Servs., LLC, Civ. Action No. 07-0887, 2008 WL 145251 at * 2 (W.D. La. Jan. 14, 2008) (citing cases and finding that clandestine recording of tapes were discoverable).

*17 This case law indicates that Sheppard's secret recordings of her conversations with Defendant's customer service representatives are not protected by the work product doctrine. Plaintiff has not provided the Court with any reason to depart from this authority. Instead, Plaintiff has cited one factually distinguishable case, Allstate Insurance Co. v. Ever Island Electric Co., to support its work product argument. This case is not relevant to the work product claim in the instant action because the Allstate case concerns entries made in an insurance adjuster's diary, not secret recordings of the defendant's employees. Allstate Ins. Co., No. 1:03-cv-3817, 2007 WL 2728979, *6 (N.D. Ga. Sept. 17, 2007) (Carnes, J.). Also, the Court is unaware of any independent reason to ignore the weight of authority among district courts. As a result, the undersigned concludes that Plaintiff did not have substantial justification in withholding disclosure of the recordings because there is no arguable merit that they are protected by the work product doctrine.[8]

Finally, Plaintiff's contention that Defendant's unclean hands in the discovery process renders its noncompliance substantially justified is not persuasive. Although Defendant may have engaged in misconduct during discovery, this misconduct did not excuse Plaintiff from complying with the Federal Rules of Civil Procedure. Plaintiff's remedy was not to ignore its own discovery obligations, but to use one of the remedies provided in the Federal Rules of Civil Procedure to combat Defendant's alleged misconduct.

Based on the above discussion, the undersigned concludes that Plaintiff's nondisclosure of the tape recordings was not substantially justified.

Defendant argues that it was harmed by the non-disclosure of the tape recordings and that reopening discovery will not cure the prejudice. It contends that the recordings were disclosed after discovery ended, which prevented Defendant from questioning Sheila Sheppard, the individual who made the recordings, and Todd Goodman, the Rule 30(b) witness, about the recordings. It argues that if it seeks to question these witnesses about the recordings, it must now reconvene depositions with these witnesses, adding both cost and time to the litigation. See McClain, 193 F. Supp. 2d at 1259 (noting that “merely having to depose a party on information that should have been disclosed in a Rule 26 Report is a form of prejudice”). The Court agrees that Plaintiff's secreting of the recordings was harmful.

At the same time, the Court concludes that the District Court can ameliorate the prejudice to Defendant. First, it can reopen discovery to allow Defendant to take additional depositions. While Defendant argues that this causes extra cost and expense, this same problem would have existed if Plaintiff disclosed the contents of Sheppard's conversations with Defendant. Although Defendant may have known about the contents of Sheppard's conversations, Defendant did not know about the recordings and therefore did not conduct discovery on these recordings.

Second, as discussed below, given the lack of substantial justification and prejudice to Defendant, merely reopening discovery does not adequately mitigate the prejudice.

Accordingly, the Court RECOMMENDS that Defendant's motion for sanctions be DENIED to the extent that it seeks to exclude the tape recordings from evidence, and GRANTED as to reopening discovery as to these recordings.

*18 Defendant also seeks expenses and deterrent monetary sanctions because of Plaintiff's failure to disclose the identity of witnesses and failure to disclose the existence of the recordings. [See Doc. 32 at 5, 14]. Rule 37(c)(1) provides that in addition to or instead of the sanction of exclusion, a court may: (1) “order payment of the reasonable expenses, including attorney's fees, caused by the failure”; or (2) “impose other appropriate sanctions” such as declaring specific acts established and preventing contradictory evidence. FED. R. CIV. P. 37(c)(1)(A), (C), advisory comm. notes (1993). However, an award of these other sanctions is only appropriate if the nondisclosure was prejudicial or not substantially justified. See FED. R. CIV. P. 37(c)(1).

The undersigned concludes that sanctions of expenses or deterrent monetary sanctions are inappropriate as to the failure to disclose witnesses. As discussed above, Plaintiff's nondisclosure of evidence will be rendered harmless if the District Court reopens discovery. Since the nondisclosure becomes harmless, the District Court has no basis to issue sanctions under Rule 37(c)(1) given that the Rule only allows sanctions where the nondisclosure was not harmless or not substantially justified. See FED. R. CIV. P. 37(c)(1). As a result, monetary sanctions are not appropriate in this case for the non-disclosure of witnesses.[9]

The Court views the failure to disclose the recordings in a different light. Plaintiff's explanation for not disclosing these recordings is without merit, and its most colorable argument—that the recordings were privileged or otherwise not subject to disclosure—should have been raised by a properly submitted privilege log, which would have eliminated the need for Defendant's motion in its present form. Additional discovery reduces the harm done by the non-disclosure, but with the added cost of attorney's fees and expenses. Therefore, the District Court should direct Defendant to carefully and specifically keep track of its additional legal fees and expenses incurred as a result of any supplemental discovery as a result of the tape recordings, and award these expenses and costs as a separate sanction.

Accordingly, the undersigned RECOMMENDS that Defendant's motion for monetary sanctions be GRANTED IN PART and DENIED IN PART.

As discussed above, the undersigned concludes that Plaintiff should be permitted to amend its complaint to add a false advertising claim under the Lanham Act. Neither party has taken discovery on the issues related to this claim, and both parties agree that discovery needs to be reopened to conduct discovery on this claim if it is allowed to proceed. [See Doc. 46].

*19 Also, the undersigned concludes that discovery needs to be reopened to provide Defendant an opportunity to conduct discovery due to Plaintiff's failure to disclose the identities of Birchall and Vadis and to disclose the existence of tape recordings until after the close of discovery. By reopening discovery (and awarding fees and costs related to additional discovery on the undisclosed recordings), Defendant will no longer be prejudiced by Plaintiff's nondisclosure.

Accordingly, the undersigned RECOMMENDS that discovery be REOPENED for the purpose of conducting discovery on Plaintiff's false advertising claim and for the purpose of allowing Defendant to conduct discovery on the evidence that Plaintiff failed to disclose.

IV. CONCLUSION

For the reasons discussed above, the undersigned (1) GRANTS Plaintiff's motion for leave to amend, [Doc. 21]; (2) DENIES Defendant's Rule 56(f) motion, [Doc. 33], AS MOOT; (3) RECOMMENDS that Defendant's motion for sanctions, [Doc. 33], be GRANTED IN PART and DENIED IN PART; and (4) RECOMMENDS that the District Court REOPEN the discovery period.

IT IS SO ORDERED AND RECOMMENDED, this the 30th day of November, 2008.