*1 Pending before the Court and originally noticed for hearing on January 21, 2014 at 9:30 a.m. are (1) Plaintiff Virco's Motion to Compel Production of Documents (“Plaintiff's Motion”); and (2) Defendants Hertz Furniture Systems, LLC and Academia Furniture LLC's Motion to Compel Production of Documents (“Defendants' Motion”) (collectively “Motions to Compel”). On January 13, 2014, the Court issued tentative rulings on the Motions to Compel and advised the parties that in the event all parties submitted on the tentative rulings and timely so notified the Court, the matters would be submitted, the hearing thereon would be vacated, and on January 21, 2014, the Court would adopt the tentative rulings as its final rulings on the Motions to Compel. On January 17, 2014, the parties filed a “Joint Stipulation Re Discovery Motions; Submission on the Tentative Rulings on Pending Motions to Compel,” advising the Court that all parties submitted on the tentative rulings. On the same date, the Court vacated the hearing on the Motions to Compel and submitted such matters for decision. The Court now adopts its tentative rulings and issues the following orders granting in part and denying part the Motions to Compel.

I. Plaintiff's Motion

Plaintiff's Motion requests that the Court issue an order compelling plaintiff to produce: (1) documents sufficient to show the place of manufacture of the accused products which are responsive to Request for Production No. 10 (“Issue No. 1”); (2) agreements between Hertz and Academia relating to the development, design, testing, manufacturing, sale, or import into the United States of any products which are responsive to Request for Production No. 11 (“Issue No. 2”); (3) financial documents relating to the accused products which are responsive to Request for Production Nos. 42, 43, 47 and 48 (“Issue No. 3”); (4) documents showing the gross and net sales to each customer and distributor of the accused products which are responsive to Request for Production Nos. 45 and 46 (“Issue No. 4”); and (5) documents sufficient to show the number of units of accused products defendants manufactured or produced which are responsive to Request for Production No. 44 (“Issue No. 5”).[1]

A. Issue No. 1—Request No. 10

As to Issue No. 1, the Court grants in part and denies in part Plaintiff's Motion. To the extent the Court grants Plaintiff's Motion it has overruled defendants' objections.

Request for Production No. 10, as framed, calls for the production of “[d]ocuments and things sufficient to show the place of manufacture of the Accused Products.” The term “manufacture” is not defined. According to plaintiff, defendants have taken the position that this request calls for items sufficient to show where the accused products were assembled. While the foregoing may not be what plaintiff intended to ask, defendants' asserted interpretation of the request, as framed, does not appear to the Court to be an unreasonable one. To the extent plaintiff asks the Court to compel defendants to produce documents sufficient to show the place of manufacture of each of the components of the accused products, Plaintiff's Motion is denied because although the Court does not dispute the relevance/potential relevance of such information, this discovery request, as framed does not unambiguously ask for such information.

*2 Nonetheless, the Court does find defendants' responses to this request to be deficient because, among other things, it is not clear that defendants have conducted a reasonably diligent search for the requested items.

As to defendant Hertz, although defendant Hertz represents that it “does not manufacture products itself [and] [t]herefore ... is not in possession of responsive documents that show the manufacture of the accused products” (Joint Stipulation at 5), the latter does not necessarily follow from the former. Moreover, defendants are required to produce that which is within their “possession, custody or control,” not merely their “possession.” Accordingly, Plaintiff's Motion is granted to the extent it seeks to compel defendant Hertz to make a reasonably diligent search for documents and things sufficient to show the place of manufacture of the accused products, to produce non-privileged such documents and things to the extent they are within defendant Hertz's possession, custody or control, and to provide a corresponding supplemental response to Request for Production No. 10.

As to defendant Academia, the Court finds such response to be somewhat non-responsive. Although such defendant indicates that it “manufactures products at its location in Woodbridge, New Jersey,” it does not state where the accused products are manufactured (i.e., while Academia may well manufacture some products in the referenced location, the response does not state that it manufactures all of its products there (so as to encompass the accused products) or otherwise exclude the possibility that the accused products are manufactured in some other location). Accordingly, Plaintiff's Motion is granted to the extent it seeks to compel defendant Academia to make a reasonably diligent search for documents and things sufficient to show the place of manufacture of the accused products, to produce such non-privileged documents and things to the extent they are within such defendant's possession, custody or control, and to provide a corresponding supplemental response to Request for Production No. 10.

B. Issue No. 2—Request No. 11

As to Issue No. 2, the Court grants in part and denies in part Plaintiff's Motion. To the extent the Court grants Plaintiff's Motion it has overruled defendants' objections.

Request for Production No. 11 calls upon defendants to produce “[a]ll documents and things that refer or relate to any agreement between Hertz and Academia to engage in efforts to develop, design, test, manufacture, sell, offer to sell, or import into the United States any products.” While the Court finds this request to be somewhat overbroad and has narrowed it to some degree, the Court again is not satisfied from defendants' responses that defendants have conducted a reasonably diligent search for the requested items as defendants represent only that they are “not aware” of unproduced responsive documents. The Court further agrees with plaintiff's common sense contention that given the existence of the sole agreement produced, defendants likely possess related documentation. Accordingly, the Court grants Plaintiff's Motion to the extent it seeks to compel defendants to (i) make a reasonably diligent search for (a) any agreement between Hertz and Academia to engage in efforts to develop, design, test, manufacture, sell, offer to sell, or import into the United States any furniture or furniture components; and (b) any correspondence between Hertz and Academia regarding the same; (b) produce all non-privileged such documents; and (c) provide a corresponding supplemental response to Request for Production No. 11. The Court otherwise denies Plaintiff's Motion relative to Issue No. 2.

C. Issue No. 3—Request Nos. 42, 43, 47, 48

*3 As to Issue No. 3, the Court grants in part and denies in part Plaintiff's Motion. To the extent the Court grants Plaintiff's Motion it has overruled defendants' objections.

Plaintiff's First Set of Requests for Production which contains the requests in issue—Nos. 42,[2] 43,[3] 47[4] and 48[5]—reflects that “[a]s used [therein], the term “Accused Products” shall include the Hertz Elevate Series ADA Table and the Hertz Illustration Classroom Deck.” Although Plaintiff's Motion notes that the foregoing does not limit the definition of “Accused Products” to only the two referenced items, the requests in issue do not afford defendants fair notice that the requests call for documents regarding anything other than the two referenced items—irrespective of how the term may be defined or used in other documents. Accordingly, Plaintiff's Motion is denied to the extent it seeks a compulsion order predicated upon a definition of “Accused Products” which encompasses anything other than the two accused products specifically identified in the definition section of the requests in issue.

Although defendants have clearly produced some items responsive to the requests in issue (i.e., spreadsheets with defendants' sales and costs figures from the first sale of the two accused products through November 2013 which appear to be sufficiently responsive to Request No. 47), such production falls short of being fully responsive to Request Nos. 42, 43 and 48 relative to the two accused products in issue (e.g., the production does not include documents sufficient to show sale forecasts (responsive to Request No. 42), gross and net revenues/gross and net profits (responsive to Request No. 43), or profit and loss statements/balance sheets (responsive to Request No. 48).

Accordingly, Plaintiff's Motion is granted to the extent it seeks to compel defendants to provide complete responses to Request Nos. 42, 43 and 48 relative to the two identified accused products and to provide corresponding supplemental responses to such requests and is denied as to Request No. 47.

D. Issue No. 4—Request No. 44

*4 As to Issue No. 4, the Court grants in part and denies in part Plaintiff's Motion. To the extent the Court grants Plaintiff's Motion it has overruled defendants' objections.

Request for Production No. 44 calls upon defendants to produce “[d]ocuments and things sufficient to show the number of units [defendants] manufactured or produced for each of the Accused Products.” For the reasons noted above, Plaintiff's Motion is denied to the extent it seeks a compulsion order predicated upon a definition of “Accused Products” which encompasses anything other than the two accused products specifically identified in the definition section of the requests in issue.

Although the above-referenced spreadsheets produced by defendants are to some degree responsive to Request No. 44 as the number of items sold (as reflected therein) constitutes at least a subset of the number of units manufactured or produced, it does not appear that defendants have provided the requested information regarding the number of unsold units manufactured or produced. Accordingly, Plaintiff's Motion is granted to the extent it seeks to compel defendants to provide a complete response to Request No. 44 relative to the two identified accused products and to provide a corresponding supplemental response to such request.

E. Issue No. 5—Request Nos. 45, 46

As to Issue No. 5, the Court grants in part and denies in part Plaintiff's Motion. To the extent the Court grants Plaintiff's Motion it has overruled defendants' objections.

Request for Production No. 45 calls upon defendants to produce “[d]ocuments and things sufficient to show [defendants'] gross and net sales to each of [defendants'] customers and distributors for each of the Accused Products, including documents that refer or relate to the purchaser, date of each sale, number of units sold, unit price, sales price, and any discount provided.”

Request for Production No. 46 calls upon defendants to produce “[d]ocuments and things sufficient to identify each of [defendants'] customers and distributors to whom [defendants] sold, or offered for sale, any of the Accused Products, including documents that refer or relate to the name, address and telephone number of each customer or distributor [defendants'] contact at each customer or distributor.”

For the reasons noted above, Plaintiff's Motion is denied to the extent it seeks a compulsion order predicated upon a definition of “Accused Products” which encompasses anything other than the two accused products specifically identified in the definition section of the requests in issue.

The gravamen of the parties' remaining dispute relative to Issue No. 5 is predicated on their differing views as to whether customer identifying information is relevant. Plaintiff argues that documents showing the gross and net sales of the accused products to each of defendants' customers and distributors are essential in determining plaintiff's damages and/or the disgorgement of profits and that there is no legitimate basis to withhold such information where, as here, there is a protective order. (Joint Stipulation at 32–33). Plaintiff further argues that customer names are relevant to the likelihood of confusion for trade dress infringement. (Plaintiff's Supplemental Brief at 5 (citing Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1056 (9th Cir. 1999) (relatedness—a factor considered in determining likelihood of confusion—evidenced by fact that two companies compete for patronage of overlapping audience); Pebble Beach Co. v. Tour 18 I, Ltd., 942 F. Supp. 1513, 1542 (S.D. Tex. 1996) (court may consider identity of plaintiff's and defendant's actual customers in determining whether there is a likelihood of confusion) (citation omitted)). Although defendants have supplied plaintiff with spreadsheets reflecting sales and costs figures and identifying each sale individually by order number, defendants refuse to produce any identifying information relative to their customers/distributors, asserting that such information is not relevant to either damages or the likelihood of confusion for trade dress infringement. (Joint Stipulation at 33–34 (citing Phase Four Industries, Inc. v. Marathon Coach, Inc., 2006 WL 1465313, *5 (N.D. Cal. May 24, 2006) (specific names of buyers of accused products not relevant to damages)); Defendants' Supplemental Memorandum at 3 (citing Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F. Supp. 2d 1, 62 (D.D.C. 2006) (names of defendant's customers or clients rarely, if ever, revealed in Lanham Act cases); Foxworthy v. Sun Art Designs, Inc., 1997 WL 196624, *1 (S.D. Fla. 1997) (precluding discovery of customer lists where plaintiff claimed he wanted to interview customers to discover evidence of confusion); Volkswagenwerk Aktiengesellschaft v. Westburg, 260 F. Supp. 636, 637 (E.D. Pa. 1966) (granting protective order directing plaintiff in trademark infringement/unfair competition action from contacting defendant's customers)).

*5 While the Court views Issue No. 5 to be a closer call than the other issues in dispute, it nonetheless finds, notwithstanding the authorities cited by defendants in their Supplemental Memorandum at 2–3, that the requested information is, at a minimum, relevant to the likelihood of consumer confusion element of the trade dress infringement claim, grants Plaintiff's Motion relative to the customer identifying information in dispute (as to the two identified accused products) and orders such documents produced with an Attorneys' Eyes Only designation, along with corresponding supplemental responses to the requests in issue.

II. Defendants' Motion

Defendants' Motion requests that the Court issue an order compelling plaintiff to produce: (1) attachments to emails that have previously been produced (“Issue No. 1”); (2) price lists referring or relating to the Plateau and Text series which are responsive to Hertz Request for Production Nos. 41 and 42 (“Issue No. 2”); (3) data in its marketing tracking software reflecting where, when and how plaintiff promoted its alleged trade dress for plaintiff's Plateau and Text products which are responsive to Hertz Request for Production Nos. 5 and 9 (“Issue No. 3”); and (4) market research or surveys referring or relating to plaintiff's Plateau and Text products, any patent-protected products, defendants, or defendants' products which are responsive to Hertz Request for Production Nos. 34–36 and 57–58 and Academia Request for Production Nos. 11 and 12 (“Issue No. 4”).

A. Issue No. 1

As to Issue No. 1, the Court grants Defendants' Motion and orders plaintiff to produce the email attachments in issue. This Court agrees with those courts which have held that emails produced in discovery should be accompanied by their attachments or that the attachments should be produced along with information sufficient to enable a receiving party to identify the email(s) to which the attachment corresponds. See, e.g., PSEG Power N.Y., Inc. v. Alberici Constructions, Inc., 2007 WL 2587670, *12 (N.D.N.Y. Sept. 7, 2007)); CP Solutions PTE, LTD. v. General Electric Co., 2006 WL 1272615, *4 (D. Conn. Feb. 6, 2006); Miller v. International Business Machines, 2006 WL 995160, *7 (N.D. Cal. Apr. 14, 2006), amended in non-pertinent part, 2006 WL 6619991 (N.D. Cal. 2006), reconsideration denied in non-pertinent part, 2006 WL 1180029 (N.D. Cal. May 2, 2006).

Further, by failing to produce email attachments, plaintiff has effectively redacted, based upon relevance, portions of documents it otherwise apparently views to be discoverable/relevant/responsive to defendants' discovery requests.[6] This Court agrees with those courts which have disapproved of such a practice especially where, as here, a multitude of documents are in issue and a protective order is in place to address concerns regarding privacy and potential misuse of information. See, e.g., In re Medeva Securities Litigation, 1995 WL 943468, *3 (C.D. Cal. 1995); Howell v. City of New York, 2007 WL 2815738, *2 (E.D.N.Y. 2007); Evergreen Trading, LLC ex rel. Nussdorf, 80 Fed. Cl. 122, 145 (2007); Levy Indiana Slag Co. v. International Union of Operating Engineers, 2006 WL 2224201 (N.D. Ind. 2006)). As noted in In re Medeva Securities Litigation, 1995 WL 943468, *3 (C.D. Cal. 1995) with which this Court agrees:

*6 While plaintiff argues that the attachments would likely be voluminous and that “[i]t is indisputable that the expense and burden of producing these attachments would be enormous” (Joint Stipulation at 9), plaintiff has offered no evidence that it would suffer any undue burden from producing such electronic data, and the deadline to submit any such evidence has passed. See DIRECTV, Inc. v. Trone, 209 F.R.D. 455, 458 (C.D. Cal. 2002) (party opposing discovery has burden of showing that any challenged discovery should not be allowed and of clarifying, explaining and supporting its objections); A. Farber and Partners, Inc. v. Garber (“Farber”), 234 F.R.D. 186, 188 (C.D. Cal. 2006) (“[G]eneral or boilerplate objections [to discovery] ... are improper—especially when a party fails to submit any evidentiary declarations supporting such objections.”) (citations omitted). Accordingly, any objection that the production of email attachments would be unduly burdensome is overruled.[7]

B. Issue No. 2—Hertz Requests 41, 42

As to Issue No. 2, the Court grants Defendants' Motion to the extent it seeks to compel plaintiff to produce price lists reflecting prices for Plateau and Text series products for the period in issue and to order plaintiff to produce such items. Such documents, at a minimum, appear to be relevant to the calculation of lost profits, which calculation is relevant to damages.[8] Further, although plaintiff represents that its price lists (presumably its current price lists) are publicly available on plaintiff's website and that defendants already know the pricing of certain products in issue because defendants used to sell them, it is not clear to the Court that defendants currently have access to all relevant price lists for the entirety of the period in issue in this action. To the extent plaintiff continues to interpose the objections reflected in its response to Hertz Request Nos. 41 and 42, such objections are overruled. As reflected above, the Court has narrowed and clarified such requests, to the extent necessary, to call for the production of price lists reflecting prices for the products in issue during the pertinent time frame.

C. Issue No. 3—Hertz Requests 5, 9

As to Issue No. 3, the Court denies Defendants' Motion in light of plaintiff's representation that it would produce reports regarding where, when and how plaintiff distributed marketing materials relating to its Plateau and Text products.

D. Issue No. 4—Hertz Requests 34–36, 57–58; Academia Requests 11, 12

As to Issue No. 4, the Court denies Defendants' Motion as moot in light of plaintiff's representation that it has no responsive documents.

III. Other Order

The parties are directed to produce the documents/items/supplemental responses called for by this order within fourteen (14) days.

*7 IT IS SO ORDERED.