18-CV-2043 (GBD) (KNF)
U.S. District Court, S.D. New York
July 08, 2019
Emily Borich, Lauren Danielle Toaltoan, Davis Wright Tremaine LLP, New York, NY, for Plaintiff/Counterclaim Defendant.
Memorandum and Order
*1 Before the Court is the defendant’s motion for an order compelling the plaintiff to comply with subpoenas and document demands. The plaintiff opposes the motion. The Court has reviewed the parties' submissions in connection with the defendant’s motion to compel, including letters, Docket Entry Nos. 110 and 111.
Unless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.
Fed. R. Civ. P. 26(b)(1).
“A party seeking discovery may move for an order compelling an answer, designation, production or inspection.” Fed. R. Civ. P. 37(a)(3)(B). Motions to compel “are entrusted to the sound discretion of the district court.” United States v. Sanders, 211 F.3d 711, 720 (2d Cir. 2000).
APPLICATION OF LEGAL STANDARD
The defendant’s subpoenas served on Allison Josey (“Josey”) and Candy Tobar (“Tobar”) are unopposed. Accordingly, Josey shall produce, on or before July 22, 2019, documents requested by the defendant’s subpoena and she shall testify at her deposition, on or before August 12, 2019. Tobar shall testify at her deposition, on or before August 12, 2019.
The defendant seeks an order compelling the plaintiff “to disclose all documents and information regarding the BShipper product page, including but not limited to those related to the ‘As Seen on You’ feature in response to Request Nos. 83-89.” The plaintiff contends that it “has made a search of [its vendor] Olapic’s documents and found nothing relevant” and “[e]ven if [the plaintiff] had something to produce relating to this feature—and it does not—it would be duplicative of what Defendant has already obtained from Olapic or can obtain, as it did through its own research, on Instagram where the original content resides.”
The defendant’s Document Request Nos. 83-89 seek documents concerning the plaintiff’s various processes respecting customer images, postings and links to be displayed on the “As Seen On You” feature on the plaintiff’s website. In light of the testimony given by the plaintiff’s president of Global E-Commerce, Jeffrey Silverman (“Silverman”), that, during this litigation, the plaintiff changed its website platform vendor “from Olapic to Yotpo” and “there was some sort of dump of these, what’s called [user-generated content],” the plaintiff’s contentions that: (i) it has “made a search of Olapic’s documents and found nothing relevant”; and (ii) anything relevant would be duplicative, are rejected as unsupported by evidence and meritless. The plaintiff failed to show that the defendant’s Document Request Nos. 83-89 are overly broad, unduly burdensome, irrelevant and not limited in scope; thus, the plaintiff’s objections to the defendant’s Document Request Nos. 83-89, are overruled.
*2 On or before July 22, 2019, the plaintiff shall produce documents responsive to the defendant’s Document Request Nos. 83-89, which shall encompass content from all versions of the plaintiff’s website, regardless of the vendor.
The defendant contends that the plaintiff did not collect documents from seven custodians: (a) “members of the Accessories Buying Team,” Tobar and Myliah Varona, who had “responsibilities related to the identification, purchase, and re-sale of the BShipper Bag,” as identified by the plaintiff’s accessories buyer, Kelly Berrevoets [“Berrevoets”], at her deposition; and (b) Chris Aiken,
Lisa Safdieh, Dan Tinucci (“Tinucci”), Alyse Nathan and Richard Zech, as identified by Silverman at his deposition. The plaintiff asserts that documents concerning Tobar and Varona would be duplicative of those already produced, since they were both Berrevoets' subordinates and the plaintiff “is unaware of any relevant documents in their files that either have not been produced to Defendant or would be subject to withholding on the basis of the attorney-client privilege.”
The plaintiff’s contentions are unsupported by evidence and meritless. The Federal Rules of Civil Procedure do not contemplate the awareness of a party responding to document requests, and the plaintiff failed to explain what relevance, if any, its awareness of the existence of the requested documents has to its responsibility to comply with discovery obligations as required by the Federal Rules of Civil Procedure.
On or before July 22, 2019, the plaintiff shall supplement its production with relevant documents from the seven custodians identified above.
The defendant contends that the plaintiff: (a) searched only four custodians' email boxes for six terms, “Bshipper,” “Ark,” “Cult Gaia,” “Jasmin Larian,” “bamboo” and “wooden w/3 (*clutch* OR *bag*),” although it is not clear whether it applied possessives or alternative formats; (b) failed to search terms forming the basis of its summary judgment motion: traditional Japanese and half moon handbags; (c) limited the search of its local H-Drive to two terms only; and (d) limited the search of its email repositories to four terms only. The defendant seeks an order compelling the plaintiff to perform a search across all document repositories, except AS/400, and all relevant custodians, including seven identified in the motion, using the terms: (1) Ark/Arc; (2) Gaia /Gaia’s; (3) the BShipper SKUs; (4) “terms actual consumers used to refer to the BShipper, including ‘cage purse’ and ‘basket bag’ ”; and (5) “terms relating to [the plaintiff’s] ‘traditional Japanese’ ‘half moon’ theory.” The plaintiff asserts that: (a) it “did not use the same search terms across these various systems because of the different types of information contained in the different systems,” making citation to its Exhibit A to a declaration of Roxanne Elings (“Elings”); (b) “the BShipper Bag was not described” as a “cage purse,” “Basket bag” or “half moon” in the plaintiff’s “internal systems; rather it was described as a bamboo or wooden clutch”; and (c) “the AS/400 system is a database that maintains product information across platforms, as explained” by Silverman, making the search for “BShipper and its SKU” sufficient to capture information responsive to the claims and defenses in this action.
*3 The plaintiff’s contentions are unsupported by evidence and Exhibit A to the Elings declaration contains a single page from Silverman’s deposition, in which he states, in connection with “AS 400”: “I don't know what is exactly stored there and what is not exactly stored.” The defendant failed to show the relevancy of any “terms actual consumers used to refer to the BShipper.” The defendant’s request that the plaintiff be compelled to search “terms relating to SML’s ‘traditional Japanese’ ‘half moon’ theory” is rejected as vague and ambiguous. The defendant failed to show that searching for the term “Arc,” based on consumer use of that term in connection with “BShipper,” is relevant or proportional to the needs of the case. Thus, the defendant’s proposed search terms are rejected. However, absent evidence that the plaintiff’s various systems contain “different types of information,” the Court finds that the plaintiff’s search was not consistent across its systems. Accordingly, the defendant’s request that the plaintiff apply each of its six search terms, consistently across its various systems, is granted.
On or before July 22, 2019, the plaintiff shall supplement its production after it performs a search by applying each of its six search terms in each of its system.
The defendant contends that the plaintiff failed to collect completely Berrevoets' documents because Berrevoets testified that she keeps everything and “confirmed that additional documents may exist in her hard copy file, desktop hard drive, other electronic devices, and her other document repositories,” yet the plaintiff “failed to produce a number of responsive documents Ms. Berrevoets confirmed exist.” The plaintiff asserts its search is complete and it has produced all responsive documents.
The pages from the transcript of Berrevoets' deposition cited by the defendant do not support the defendant’s contentions. The defendant’s request for an order compelling the plaintiff to collect completely Berrevoets' documents is rejected as unsupported by evidence and meritless.
The defendant contends that “responsive records concerning the BShipper product page on the [plaintiff’s] website have not been produced” because the defendant “identified at least one instance where SML’s website contained an image of Cult Gaia’s Ark Bag on the webpage for the BShipper Bag and one instance where a consumer commented on SML’s Instagram post featuring the BShipper bag that it was a copy of the Ark Bag.” Moreover, the defendant did not produce “sales information regarding the BShipper bag at issue,” despite the defendant’s “pending document demands and conferral efforts.” The plaintiff contends that its search and response are complete, except for “the nearly 250,000 pages of SML’s ‘Weekly Best Seller Reports,’ which contain a significant volume of proprietary and confidential information regarding products not at issue in this case,” and the defendant “cannot justify the extreme burden it would impose on [the plaintiff] to review and redact this massive document volume.”
The defendant’s contention that the plaintiff “failed to complete a comprehensive collection of [its] digital properties, email blasts, and sales information” is unsupported by evidence, and the defendant failed to identify any document request number with respect to which it alleges the production was incomplete. Accordingly, the defendant’s request for an order compelling the plaintiff “to complete a comprehensive collection of [its] digital properties, email blasts, and sales information” is denied.
The defendant asserts that the plaintiff produced completely and heavily redacted documents, Bates numbers SM000438-SM000778, but failed to produce “a log that details the basis for these redactions and has failed to offer any valid justification for them.” The plaintiff asserts that the redacted documents constitute a sample “Weekly Best Seller Report” and “[t]he extensive redactions show how little of the document is actually relevant to this case, and is evidence of the massive burden to [the plaintiff] of producing these reports.” Moreover, the sales information contained in the reports is duplicative of information the plaintiff already produced, such as invoices, purchase orders and BShipper-specific sales reports from its AS/400 system.
*4 The defendant failed to show that the redacted portions of the spreadsheet contained in its Exhibit II to the declaration of Andrea Calvaruso are redacted improperly. The defendant failed to make citation to any authority prohibiting the plaintiff from redacting irrelevant information within a document containing relevant information. The defendant’s contention that the plaintiff failed to produce complete information regarding the BShipper bag at issue is unsupported, and the pages from Silverman’s deposition transcript referenced by the defendant do not support its contention. Thus, the defendant’s request for unredacted copies of the documents, bearing Bates numbers SM000438-SM000778, is denied.
The defendant asserts that the plaintiff’s privilege log is incomplete because the plaintiff objected, based on the attorney-client privilege or work-product doctrine, to more document requests than there are documents listed on the privilege log. The plaintiff asserts that the number of document requests is irrelevant to the number of items listed on the privilege log, as some document requests call for overlapping production.
The defendant failed to explain the relevance, if any, of the number of the plaintiff’s objections based on privilege to the number of items listed on the privilege log. The defendant’s contention that the plaintiff’s privilege log is incomplete is meritless.
The defendant submitted a post-motion letter to inform the Court about newly discovered information bearing on its motion. According to the defendant, at the court-ordered depositions of the plaintiff’s employees Tinucci and Chris Arena, it was revealed that additional: (a) responsive documents exist that were not produced, for example documents relating to the marketing and sale of the BShipper bag; (b) document repositories exist that were not searched; and (c) persons with unique knowledge exist, Lauren Rosenfeld, Matthew Ellenberger and the plaintiff’s: “creative director of retail from 2016-2018.” The plaintiff asserts that the defendant’s new requests for documents and depositions “misconstrues the record, is not supported by law, and is nothing more than an improper fishing expedition.” The plaintiff concedes that “12 pages were not previously produced,” but they are “tangential at best to the issues in this matter.”
The Court is not convinced by the plaintiff’s arguments. The newly discovered information as well as the plaintiff’s concession that certain documents were not produced previously convince the Court that apportioning reasonable attorney’s fees for the motion is warranted pursuant to Fed. R. Civ. P. 37(a)(5)(C). On or before July 15, 2019, the defendant shall submit its application for reasonable attorney’s fees. On or before July 22, 2019, the plaintiff may challenge the reasonableness of the attorney’s fees. Any reply may be filed on or before July 25, 2019.
For the foregoing reasons, the defendant’s motion, Docket Entry No. 53, is granted, in part, and denied, in part.
Silverman testified at his deposition that he thinks the last name of this person is Aiken, but he was not certain.
End of Document.