*1 Before the Court for resolution is Defendant Luxy Limited's (“Defendant”) Second Motion to Compel (the “Motion”) filed in Joint Stipulation format pursuant to Local Rule 37-2 (“Joint Stip.”) on September 9, 2021, along with a Declaration of Kollin J. Zimmermann (“Zimmermann Decl.”) with related exhibits. (Dkt. No. 94.) Plaintiffs submitted a Declaration of Isaac Eddington in Support of Plaintiffs' Portion of Joint Stipulation Regarding Luxy Limited's Second Motion to Compel (“Eddington Decl.”) with related exhibits. (Dkt. No. 94-38.)

On September 29, 2021, pursuant to Local Rule 37-2.3, Defendant filed a Supplemental Memorandum (“Deft.'s Supp. Mem.”) in support of the Motion (Dkt. No. 122) and Plaintiffs Reflex Media. Inc. and Clover8 Investments Pte. Ltd. (together “Plaintiffs”) filed a Supplemental Memorandum in Opposition to the Motion (“Pltfs.' Supp. Mem.”) (Dkt. No. 121.) On October 7, 2021, the Court, finding the matter suitable for decision without oral argument, vacated the hearing on the Motion and took the matter under submission. (Dkt. No. 131.)

Having reviewed the parties briefing and authorities, the Court DENIES the Motion.

The Court has outlined the factual and procedural background of this action in several prior discovery orders and will not reiterate Plaintiffs' allegations and Defendant's counterclaims here. (See, e.g., discovery orders at Dkt. Nos. 74, 81, 109, 151, 157, and 160.) However, as relevant to the discovery disputes at issue here in the Motion, the Court notes that on October 3, 2021, presiding district judge, the Honorable R. Gary Klausner, granted Plaintiffs' Motion to Dismiss seven of Defendant's nine counterclaims under Rule 12(b)(6) and struck Defendant's first, third through eighth, eleventh, and fourteenth affirmative defenses. (Dkt No. 127.) Thus, only Defendant's second and third counterclaims (declaratory judgment of invalidity as to Registration Nos. TXu002120979 and TXu00212989, respectively, as to Clover8[1]) and its second (failure to mitigate) and ninth (copyright fair use) affirmatives defenses remain. (Id. at 8; and see Answer to SAC And Second Amended Counterclaims, Dkt. No. 71.)

On August 19, 2021, the Court held a pre-motion discovery conference with the parties addressing fourteen disputed issues, including the discovery disputes presented in the Motion. (Dkt. No. 81.)[2]

The Motion seeks an order to compel Plaintiffs to provide further responses and produce documents in response to six categories of disputed discovery requests. (Joint Stip. at i.)

*2 Given the volume of material submitted with the Motion, the Court will not recite the full text of each disputed discovery request and response in this Order. However, the disputed issues and related discovery requests are identified below as described in the Joint Stipulation.

A party may obtain discovery concerning any nonprivileged matter that is relevant to any party's claim or defense and is proportional to the needs of the case. FED. R. CIV. P. 26(b)(1). Relevant information need not be admissible to be discoverable. Id.

District courts have broad discretion in controlling discovery. See Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002). When considering a motion to compel, the Court has similarly broad discretion in determining relevancy for discovery purposes. Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 635 (9th Cir. 2005) (citing Hallet, 296 F.3d at 751). In resolving discovery disputes, the court may exercise its discretion in “determining the relevance of discovery requests, assessing oppressiveness, and weighing those facts in deciding whether discovery should be compelled.” Unilin Beheer B.V. v. NSL Trading Corp., No. CV 14-2210-BRO (SSx), 2015 WL 12698382, at *4 (C.D. Cal. Feb. 27, 2015) (citing Favale v. Roman Catholic Diocese of Bridgeport, 235 F.R.D. 553, 558 (D. Conn. 2006) (internal quotation marks omitted)).

Issue No. 4: Whether Reflex must supplement its response to Reflex ROG 6

(Joint Stip. at 7.)

Defendant argues that ROG 6 seeks basic identifying information concerning the marks at issue and needs not only the “why” information provided in Plaintiffs' response, but the “who” and “when” as well. (Joint Stip. at 8-9.) Plaintiffs respond that because “the mark in question was registered over 13 years ago” the specifics of the “how, why, and contexts are now dim.” (Id. at 9-10.) Plaintiffs also represent that “Reflex no longer has documents related to a mark first used over 16 years ago.” (Id. at 10.)

While the Court can appreciate Defendant's frustration at the absence of information concerning the origination of the marks at issue, the Court cannot order a party to produce what its verified discovery response indicates it does not have. If it turns out at a later date that Plaintiffs' verified response is false, then that circumstance may be subject to different remedies. But as to the response provided to date, the Court finds no basis to compel further response.

The Motion is DENIED as to Issue No. 4 re: Luxy ROG 6. No further response is required.

*3 Issue No. 5: Whether Plaintiffs must identify and produce documents “sufficient to show the expenditures, costs, channels, nature/type, geographic scope, and duration of the U.S. marketing or advertising YOU have done or plan to do that uses any of the MARKS AT ISSUE.” (ROG 7, RFP 53)

Plaintiffs also provided a 1st Supplemental Response to Reflex ROG 7 that identified documents responsive to this interrogatory produced in discovery at Reflex 005073-005080, 005319-005434, and 005485-005590. (Joint Stip. at 10.)

(Joint Stip. at 11.) Following meet and confer discussions, Defendant narrowed RFP 53 to seek:

(Id.)

Defendants maintain that the marketing and advertising information sought in ROG 7 and RFP 52 is information “that courts have squarely held to be relevant in trademark cases.” (Id. at 11 (internal citations omitted).) Ordinarily, the Court would concur that the information sought is both relevant and proportionate to the needs of the case. However, following Judge Klausner's Order dismissing all of Defendant's counterclaims and striking all but Defendant's second (failure to mitigate) and ninth (fair use) affirmative defenses, the Court concludes that the discovery sought here is no longer relevant to any claims or defenses still at issue nor proportionate to the needs of the case. Consequently, the adequacy of Plaintiffs' discovery responses on Issue 5 is now moot.

*4 Accordingly, Motion is DENIED as to Issue No. 5 re: ROG 7 and RFP 53. No further responses are required.

Issue No. 6: Whether Clover8 must supplement its responses to ROGS 4 and 5 to specify whether the term “drafting” is referring to drafting (a) the copyrighted works at issue or (b) the registration documents for the copyrighted works at issue.

(Joint Stip. at 15.) In addition, Plaintiffs had provided an initial response and, based on the parties' meet and confer discussions, a 1st supplemental response to ROG 4. (Id.)

(Joint Stip. at 16-17.) With ROG 5 too, Plaintiffs provided an initial response and, based on the parties' meet and confer discussions, a 1st supplemental response. (Id.)

Defendant argues that Plaintiffs' supplemental responses to both ROG 4 and ROG 5, remain inadequate and evasive. (Id. at 17-18.) Plaintiffs, however, assert that they have endeavored to provide clarification in their supplemental responses. (Id. at 19.) In addition, Plaintiffs argue that in a proposed Third Amended Complaint, they intend to withdraw claims for recovery based on their Privacy Policy, therefore “Luxy's discovery requests are not moot insofar as they ask for documents or information about that Policy.” (Id.)

*5 Whether or not Plaintiffs actually withdraw their claims for recovery based on the Privacy Policy, the Court finds that the Motion is moot as to Issue No. 6 now that Defendant's counterclaims have been dismissed, particularly the counterclaims seeking cancellation of Plaintiff's trademark registration numbers, and all but the failure to mitigate (second) and fair use (ninth) affirmative defenses have been stricken.

Accordingly the Motion is DENIED as to Issue No. 6 re: Reflex ROG 4 and ROG 5. No further responses are required.

Issue No. 7: Whether Clover8 must supplement its response to ROG 8 to state “the amount of money or other consideration paid” for the “assignment” of the copyrights at issue, and whether Plaintiffs must produce all DOCUMENTS relating thereto.

(Joint Stip. at 20-21.) Plaintiffs provided an initial response and a 1st Supplemental Response to ROG 8. (Id. at 21.)

(Joint Stip. at 21-22.)

The Court first notes that it already addressed RFPs 79, 81 and 87 in the Order on Defendant's First Motion to Compel and will not revisit these requests in connection with the instant Motion. (Dkt. No. 160.) Further, the Court finds that the Motion is moot as to Issue No. 7 because Defendant's counterclaims have been dismissed, particularly the counterclaims seeking cancellation of Plaintiff's trademark registration numbers, and all but the failure to mitigate (second) and fair use (ninth) affirmative defenses have been stricken.

Accordingly, the Motion is DENIED as to Issue No. 7 re: ROG 8 and RFPs 79, 81, and 87. No further responses are required.

Issue No. 9: Whether Plaintiff must produce their Google Analytics and Google Search Console data concerning their services offered under their marks.

(Joint Stip. at 26.)

Defendant argues that RFP 58 seeks “small, relevant subsets of Google Analytics and Google Search Console data related solely to the trademarks Plaintiffs are asserting against Luxy.” (Id. at 27.) Defendant maintains that the information sought is “relevant to whether Plaintiffs' trademarks have acquired secondary meaning, the strength of those marks, and whether Plaintiffs have suffered harm (including irreparable harm). (Id.) Plaintiffs reject Defendant's contentions about the relevance and proportionality of the Google data sought in RFP 58.

Plaintiffs emphasize that “Luxy has lost the right to address secondary meaning and the strength of the marks,” and Plaintiffs point out that “Reflex has already stated that it is not seeking to recover damages based on its own lost provides or revenues,” thus making data concerning Plaintiffs own financial harm irrelevant. (Id. at 28.) Plaintiffs' arguments, along with the dismissal of Defendant's counterclaims and nearly all of its affirmative defense, are sufficient for the Court to conclude that the dispute as to RFP No. 58 is now moot.

Accordingly the Motion is DENIED as to Issue No. 9 re: RFP 58. No further response is required.

Issue No. 11: Whether Plaintiffs must produce the information requested in RFPs 70 and 71, on at least a monthly basis, broken down by country, and starting from 2014 when Luxy's allegedly infringing conduct occurred.

(Joint Stip. at 29-30.) Plaintiffs initially responded to RFP 71 (before narrowing) with objections that the request is “unreasonably broad and as asking for documents that are not relevant or proportional to the claims or defenses at issue.” (Id. at 30.) Plaintiffs also objected that the request, to the extent it sought “all communications or documents relating to the subjects asked about,” but without waiving the objections, Plaintiffs responded that they would produce documents to the extent they exist “sufficient to show the number of referenced downloads on an annual basis.” (Id.)

Defendant argues that annual data is insufficient and the more granular data they seek is relevant to (1) whether the trademarks Plaintiffs are asserting against Luxy acquired secondary meaning as of the discrete date Luxy's purported infringement began, (2) the commercial strength of the marks, and (3) whether Luxy's purported infringing conduct, which occurred in discrete date ranges, harmed Plaintiffs in any way.” (Id. at 31.)

*7 Plaintiffs maintain their objection that Defendant has not justified why it needs “all customer subscription/customer download data from 2013 onwards.” (Id.) Additionally, Plaintiffs reiterate that they will not seek damages based on their own losses, therefore “Luxy has no reason for seeking Reflex's upturns and downturns in customer usage (even if Luxy's request[s] were narrowed to the relevant upturns and downturns).” (Id. at 32.) The Court agrees.

Because Plaintiffs are not seeking damages based on their own losses, Defendant cannot demonstrate the relevance or proportionality of the expansive customer analytics sought in RFPs 70 and 71. For this reason and because the Court has now dismissed Defendant's counterclaims and stricken all but the failure to mitigate and fair use defenses, the Court concludes that the dispute as to Issue No. 11 is moot.

Accordingly, the Motion is DENIED as to Issue No. 11 re: RFP Nos. 70 and 71. No further responses are required.

Defendant is Not Entitled to An Award of Fees

Defendant requests for an award of $33,000 pursuant to Federal Rule of Civil Procedure 37(a)(5) for its reasonable expenses, including attorney's fees, incurred in bringing the Motion. (Deft.'s Supp. Mem. at 3.) Because the Motion is denied in its entirety, Defendant is not entitled to an award of fees.

For the reasons outlined above, the Motion is DENIED in its entirety. Each party to bear their own cost.

IT IS SO ORDERED.

Judge Klausner noted that Plaintiffs did not move to dismiss Defendant's declaratory judgment claims, therefore the court did not consider them. (Dkt. No. 127 at 3 n.2.)

The Issue Numbers outlined in this Order track the Issue Numbers as presented in the Joint Stipulation and in the pre-motion summary email the parties provided to the Court on August 10, 2021, which is attached as Appendix A to the Court's August 19, 2021 Order re: Discovery Disputes. (Dkt. No. 81.)