*1 This matter is before this Court on Plaintiff's Motion to Compel Complete Responses to Plaintiff's Fourth Set of Discovery (“Motion to Compel”), ECF No. 122. The Honorable Aileen M. Cannon referred this case to the undersigned for all pretrial discovery. ECF No. 110; see also 28 U.S.C. § 636; S.D. Fla. L.R., Mag. R. 1. Upon thorough and careful review of the record, the applicable law, the April 26, 2021 hearing that took place on the Motion, and being otherwise fully advised in the premises, Plaintiff's Motion to Compel, ECF No. 122, is GRANTED in part for the reasons set forth below.

I. Background

This action arises from a trademark infringement dispute where Marksman Security Corporation (“Plaintiff”) accuses P.G. Security Inc. and Cameron Underwood (“Defendants”) of infringing on its trademark by creating an Instagram page account that bore Plaintiff's name, as well as purchasing domain names similar to Plaintiff's that when accessed, sent consumers to Defendants’ website instead of Plaintiff's. ECF No. 1. Plaintiff brought its Motion to Compel because of Defendants’ objections and alleged refusal to respond to Plaintiff's fourth set of discovery requests. ECF No. 122. Defendants filed a response in opposition and Plaintiff filed a reply in support of its Motion. ECF Nos. 123, 124. The Court held a hearing on the Motion on April 26, 2021. ECF No. 126.

II. Discussion

A. Parties’ Arguments

Plaintiff contends that discovery recently produced showed that the President of Defendant P.G. Security sent a text message that boasted that Defendants took six accounts in sixty days from Plaintiff. Plaintiff argues that its fourth set of discovery requests sought to identify these and other similar accounts, as well as requesting other financial information. Plaintiff alleges that Defendants submitted blanket and general objections and refused to produce responsive material. Plaintiff argues that it is entitled to a list of any new customers that Defendants obtained during the infringement period. Plaintiff also requests documents related to gross profits earned by Defendants because Plaintiff must establish Defendants’ gross sales or profits under the Lanham Act. Plaintiff argues that Defendants cannot claim that their client list is a trade secret because Defendants regularly post their new clients on their social media accounts. During the hearing, Plaintiff made it clear that it did not seek Defendants’ pricing structure or their marketing strategies, instead Plaintiff simply seeks Defendants’ gross profits and sales.

Defendants respond that Plaintiff seeks to compel financial information which they allege this Court has already denied in the past. Defendants also contend that their client list is a trade secret and that the client list and corresponding financial information will give Plaintiff a significant insight into Defendants’ practice and allow Plaintiff an unfair competitive edge. Defendants argue that simply welcoming a few new clients through social media does not render the rest of their client list unprotected. Defendants further argue that no accounts have been acquired through the alleged methods of infringement. However, Defendants would agree to provide a list of the clients that were publicly disclosed within the requested period.

B. Analysis

*2 In an action brought under the Lanham Act, “[i]n order to establish the amount of profits to be disgorged, a plaintiff must establish the infringer's gross sales of the product; it is then up to the defendant to refute that amount, and/or to proffer costs that should be deducted from the gross sales.” Tiramisu Int'l LLC v. Clever Imps. LLC, 741 F. Supp. 2d 1279, 1290 (S.D. Fla. 2010) (citing Wesco Mfg., Inc. v. Tropical Attractions of Palm Beach, Inc., 833 F.2d 1484, 1488 (11th Cir. 1987)).

A plaintiff is only required to prove a defendant's sales, while the defendant must prove all elements of cost or deduction claimed. Id. “If a defendant shows that its sales were unrelated to the infringement, then the plaintiff is not entitled to recovery from those profits.” Coach, Inc. v. Hubert Keller, Inc., 911 F. Supp. 2d 1303, 1308 (S.D. Ga. 2012) (citation omitted). However, if a defendant fails its statutory duty to offer evidence of deduction, then the plaintiff is entitled to the gross profits. Tiramisu, 741 F. Supp. 2d at 1291.

Here, the undersigned finds that Plaintiff is entitled to a customer list of Defendants’ new customers during the time of the alleged infringement, as well as Defendants’ gross sales during the same time frame. Under the Lanham Act, Plaintiff is required to establish Defendants’ gross sales, not Defendants’ infringing gross sales. While Defendants may claim that no sales were derived from the infringement methods, Defendants will have an opportunity to show whether that is in fact true. However, first, Plaintiff must establish Defendants’ gross sales. Therefore, the undersigned finds that Plaintiff must have access to financial information that details Defendants’ gross sales from March 1, 2018 through December 31, 2020. However, Defendants need not turn over marketing strategies, pricing structure, or other information that is protected as a trade secret.

The undersigned also finds that Plaintiff is entitled to a list of Defendants’ new customers obtained during the same time frame. The undersigned is aware that “[u]nder Florida law, customer lists are generally considered trade secrets provided: (1) the list was acquired or compiled through the industry of the owner of the list and is not just a compilation of information commonly available to the public; and (2) the owner shows that it has taken reasonable efforts to maintain the secrecy of the information.” Sentry Data Sys. Inc. v. CVS Health, 361 F. Supp. 3d 1279, 1283 (S.D. Fla. 2018). However, here Defendants advertise their new clients on social media accounts and the heart of this case revolves around allegedly stolen clients. Further, Defendants need not produce their entire client list, only new clients acquired during the infringement period. This limitation as well as the stipulated protective order in place should temper Defendants’ concerns.

Additionally, the Court ordered the Parties to agree on language in regard to Plaintiff's requests that sought all communications between Defendants and the new accounts because the undersigned found the initial request to be broad and in need of being narrowed. After conferral, the Parties have agreed to the following language:

*3 Plaintiff proposed, but Defendant did not agree to the following:

As the Parties could not come to an agreement on appropriate language, the burden now falls on the Court to construct an appropriate request. Using the proposed language as guidance, Defendants shall produce:

III. Conclusion

Based on the foregoing, it is hereby ORDERED AND ADJUDGED that Plaintiff's Motion to Compel Compliance, ECF No. 122, is GRANTED in part as follows:

DONE and ORDERED at Fort Lauderdale, Florida this 29th day of April 2021.