*1 On November 15, 2021, Warner Bros. Entertainment Inc. (“WB” or “plaintiff”) and defendants, Random Tuesday, Inc. (“RTI”), Brian Biggs, and Dawn Biggs, filed a Joint Stipulation concerning plaintiff's motion to compel responses to certain discovery requests. (ECF No. 77). On November 24, 2021, plaintiff and defendants each filed a supplemental memorandum. (ECF Nos. 78, 79). The Court previously ordered the hearing, scheduled for December 8, 2021, off calendar. (ECF No. 82).

Plaintiff seeks an order compelling defendants to respond to the following discovery: Request for Production of Documents Nos. 3-8, 22-27, 31-45, 48-49, and 58; and Interrogatory No. 11. Plaintiff propounded the subject discovery to defendant RTI in March 2021, and the parties have engaged in numerous meet and confer discussions concerning the adequacy of RTI's responses. (ECF No. 77 at 8, 31, 59).

Plaintiff asserts that, despite defendants' agreement to produce responsive documents and representations that certain discovery responses were complete, defendants still have not made a complete production with respect to the document requests at issue in this Motion and “remain unable or unwilling to confirm a date certain by which such production will be completed.” (ECF No. 77 at 4-5). Plaintiff complains that this delay has impaired its ability to prepare for and conduct depositions and serve any necessary follow-up discovery, and accuses defendants of “seeking to run out the clock [until discovery closes] with vague assurances of forthcoming productions and incomplete, deficient productions.” (Id. at 5). Specifically, plaintiff asserts that certain discovery -- such as Facebook messages and communications from the “Slack” instant messaging platform -- was produced in an unreadable format and therefore is “virtually useless.” (Id. at 5, 36-37; ECF No. 79 at 3-4). Plaintiff also contends that defendants' overall production of emails was deficient, as “hundreds of critical attachments” were not included. (ECF No. 79 at 4). Moreover, while defendants gave plaintiff access to RTI's public Facebook groups to expedite the discovery process, plaintiff learned that defendants failed to identify a private Facebook group called “Slug Club,” which plaintiff contends was used by RTI's Board of Directors to discuss planning and merchandise design. (ECF No. 77 at 33). Defendants refused to provide plaintiff access to this private Facebook group, but agreed to review the group's communications and produce responsive information. (Id. at 34).

In plaintiff's Supplemental Memorandum, plaintiff asserts that, despite defendants' agreement to produce responsive Facebook private messages by November 19, 2021, that deadline has passed, and defendants have informed plaintiff that the production of Facebook messages would not be completed until November 29, 2021. (ECF No. 79 at 2-3). According to plaintiff, defendants also stated that the production of Slack messages was incomplete. (Id. at 2-3). As a remedy for defendants' belated production and “sandbagging tactics,” plaintiff seeks permission to conduct limited discovery for a 45-day period following receipt of defendants' document production for follow-up discovery on any new information disclosed. (Id. at 4; see also ECF No. 77 at 38).

*2 Defendants counter that the Motion to Compel should be denied because they have fulfilled their discovery obligations. Defendants explain that they received extensions on the discovery requests “due to the amount and complexity of the discovery served,” and because defendant Brian Biggs, the CEO of RTI, was on active duty as a colonel in the Air Force Reserve at the time the discovery was propounded. (ECF No. 77 at 39). Defendants also state that when notified by plaintiff about the problems with the Slack discovery production, defendants “began an investigation to identify the issue and possible fixes,” and directed their e-discovery vendor to collect additional data from the Slack platform, after which defendants reviewed the additional data and “made rolling productions that included Slack content.” (ECF No. 77 at 42-43). As for the “Slug Club” private Facebook group, defendants explain that “Slug Club” was used by senior RTI volunteers in connection with the moderation of RTI's Facebook communities, and that defendants had not identified this group during discovery because defendants believed “Slug Club,” as a non-public group, fell outside the scope of plaintiff's discovery requests. Nevertheless, defendants were searching the group for responsive information. (Id. at 45-46). Defendants also explain they experienced technical problems when attempting to download Facebook instant messages. On November 8, 2021, they were notified that their e-discovery vendor had obtained the Facebook messages in an alternate format, and defendants expected to produce responsive messages by November 19, 2021. (Id. at 47).

In their Supplemental Memorandum, defendants provide the following update: as of November 22, 2021, all Facebook messages that defendants agreed to produce either have been produced or are “queued for production” with defendants' e-discovery vendor. (ECF No. 78 at 2). Additionally, during a November 17, 2021, meet and confer session during which plaintiff again raised concerns about the Slack discovery production, defendants asked plaintiff to describe in writing what defendants' e-discovery vendor should do to correct the issues so that the Slack discovery can be produced in a form acceptable to plaintiff. Defendants state that, as of November 24, 2021, when their Supplemental Memorandum was filed, plaintiff had not provided this information. (Id. at 3-4). With respect to the missing email attachments, defendants explain that they “quickly worked to remedy the issue and ... ha[ve] produced ... the non-privileged attachments to documents for which Warner Bros[.] has provided the Bates number, regardless of whether the attachment is itself responsive.” (Id. at 4).

The Subject Document Requests

In the Joint Stipulation, plaintiff did not present specific arguments tailored to particular document requests. Defendants, however, addressed the RFPs at issue in the Motion to demonstrate the adequacy of their responses. The Court summarizes the challenged document requests and defendants' arguments below.

RFP Numbers 3-6

Request Nos. 3 and 4 seek “[a] specimen or photograph” of certain merchandise sold by defendants, while Request Nos. 5 and 6 seek documents sufficient to identify the “date of first use anywhere and date of first use in commerce” for such merchandise. (ECF No. 77 at 8-11). Defendants assert that they have searched for and produced documents responsive to these requests by “conducting a reasonable search of locations where such documents are maintained by [Random Tuesday, Inc.] in the ordinary course of business.” (ECF No. 77 at 48).

RFP Numbers 7-8

Request Nos. 7 and 8 seek documents “relating or referring to the ideation, conception, design, and development of each product and item of merchandise relating or referring to” the “Harry Potter Universe” and the “Gilmore Girls Universe” that defendants “advertised, sold, offered for sale, or intended to sell or offer for sale” through defendants' online store or through third party websites, including items defendants “considered but rejected.” (ECF No. 77 at 12-13).

Defendants state they agreed to produce responsive documents so long as no document is construed as an admission that the document “refers” or “relates” to any trademarks, copyrighted works, or other intellectual property owned by plaintiff. Defendants explain they have conducted a reasonable search and produced the nonprivileged documents responsive to these requests, “with the exception of possible Facebook instant messages.” (ECF No. 77 at 48-49). Defendants further explain that many of the responsive documents “were produced months ago after RTI collected and produced non-privileged documents from files where it maintains documents related to merchandise design and development,” and that defendants also reviewed the contents of the “Slug Club” Facebook group and RTI's Slack account, where merchandise design was sometimes discussed, and have produced or logged responsive documents. (Id. at 49).

RFP Numbers 22-23

*3 Request Nos. 22 and 23 seek “[d]ocuments sufficient to show all variations and versions” of any website or social media webpage (including Facebook, Twitter, and Instagram) “owned, managed, or controlled” by RTI in connection with its running clubs. (ECF No. 77 at 14-15).

Defendants refused to produce responsive documents, explaining that RTI's websites and social media pages have been identified, and that plaintiff's demand that RTI produce all versions and variations of its websites and social media pages is unintelligible. (ECF No. 77 at 14, 15, 49). Defendants further explain that, to the extent past “versions” or “variations” might be viewable on public platforms, those documents are not within RTI's possession and control, and are equally accessible to plaintiff. In any event, defendants argue that plaintiff fails to set forth “how RTI was supposed to produce websites and social media pages (or versions and variations thereof),” “explain why the discovery allowed by RTI with respect to its websites and publicly facing media pages is insufficient,” or “explain how documents responsive to these requests will be turned up through additional ESI searches or on RTI's Slack channels.” (Id. at 49-50).

RFP Numbers 24-27

Request Nos. 24-27 seek documents relating to the promotion or advertisement of RTI's races, events, or running clubs, and all advertising/promotional materials relating to certain merchandise. (ECF No. 77 at 16-19).

Defendants object that these requests are overbroad, unduly burdensome, and not proportional to the needs of the case. Defendants have agreed, however, to “produce exemplars of advertising and promotional materials, as well as articles, photographs, or blog posts maintained in its non-public files in the ordinary course of business from January 1, 2016 through the present date[.]” (ECF No. 77 at 16-19). In the Joint Stipulation, defendants contend that the documents they agreed to produce have now been produced, and “[a]t no point during the parties' meet and confer discussions did Warner Bros. object that the materials RTI agreed to produce were inadequate.” (ECF No. 77 at 50).

RFP Number 31

Request No. 31 seeks “[a]ll Documents relating or referring to any Communications between or among” RTI and RTI's “owners, investors, board members, employees, independent contractors, or any third parties regarding Warner Bros. or J.K. Rowling, from January 1, 2014 through the present date.” (ECF No. 77 at 20).

Defendants object that this request is grossly overbroad, burdensome, and not proportional to the needs of this case. To “placate” plaintiff, however, defendants “agreed to run keyword search terms to identify responsive documents,” and ultimately produced, among other documents, “all communications that referred to J.K. Rowling -- even if the subject was entirely unrelated to the subject matter of this litigation.” (ECF No. 77 at 50-51). Defendants state they have produced documents from the Slack platform that referred to “Warner,” “WB,” “JKR,” “Rowling,” and “Jo” regardless of subject matter, and represent they will produce such documents in their further production of Facebook messages, to the extent such documents exist. (Id. at 51-52).

RFP Numbers 32-33

Request Nos. 32-33 seek documents relating to communications between or among RTI and RTI's owners, investors, board members, employees, independent contractors, or any third parties, regarding any of plaintiff's products or merchandise relating to the “Harry Potter Universe” or “Gilmore Girls Universe.” (ECF No. 77 at 21-22).

*4 Defendants objects that these requests are vague, overbroad, ambiguous, and do not limit the time frame, but to the extent defendants understand the request, represent that no non-privileged documents exist. (ECF No. 77 at 52).

RFP Numbers 34-35

Request Nos. 34-35 seek documents relating to any questions, concerns, confusion, or belief by any individual that RTI, or RTI's events and merchandise, were sponsored, endorsed, approved, or otherwise affiliated with plaintiff or J.K. Rowling. (ECF No. 77 at 22-23).

Defendants state they initially agreed to search for and produce documents relating only to plaintiff, but later agreed to produce documents relating to J.K. Rowling as well. Defendants explain that “documents responsive to these requests would presumably have been flagged during RTI's keyword searches for variations of Warner Bros. and J.K. Rowling,” although they “also ran additional searches related to the issue of approval, affiliation, and licensing.” Accordingly, defendants have made “a reasonable and proportionate search for documents responsive to this request, and produced responsive documents.” (ECF No. 77 at 52-53).

RFP Numbers 36, 37, and 58

Request Nos. 36 and 37 seek documents concerning the rebranding of the Hogwarts Running Club as the Potterhead Running Club, including all communications between or among RTI and RTI's owners, investors, board members, employees, independent contractors, or any third parties. Request No. 58 seeks documents relating to the changes made to the Hogwarts Running Club website and the Chilton Running Club website in July 2018. (ECF No. 77 at 24, 30).

Defendants state they have “searched for and produced documents responsive to these requests” -- “with the exception of possible Facebook instant messages” -- “not by conducting ESI searches of all of the electronic data collected, but by conducting a reasonable and targeted search for responsive documents.” (ECF No. 77 at 53).

RFP Numbers 38-41

Request Nos. 38-40 seek documents regarding: marketing or media plans for defendants' running clubs; and market research or other evaluations for defendants' activities, products, or merchandise relating to the “Harry Potter Universe” and “Gilmore Girls Universe.” (ECF No. 77 at 25-26). Request No. 41 seeks documents regarding any “research, analysis, or searches of the HP or GG Marks.” (Id. at 27).

Defendants assert that, after conducting a reasonable search for responsive documents -- which included identifying what plans, research, and surveys existed and then searching for related documents -- all non-privileged responsive documents were produced. (ECF No. 77 at 53-54).

RFP Number 42

Request No. 42 seeks documents relating to “any research, analysis, or searches of the HP or GG Copyrights” conducted by RTI. (ECF No. 77 at 27).

Defendants did not address Request No. 42 in the Joint Stipulation. In their discovery responses, defendants stated they would produce all non-privileged responsive documents to the extent such documents exist. (ECF No. 77 at 27-28).

RFP Numbers 43-44

Request Nos. 43 and 44 seek documents relating to any trademark or copyright registered by RTI, or any attempt by RTI to register any trademark or copyright. (ECF No. 77 at 28).

*5 Defendants state that responsive non-privileged documents with respect to trademarks have been produced, and that no nonprivileged documents exist with respect to copyrights. (ECF No. 77 at 54).

RFP Number 45

Request No. 45 seeks all communications between or among RTI and any third parties relating or referring to this lawsuit. (ECF No. 77 at 29).

Defendants state that, after conducting a reasonable search, all responsive, non-privileged documents have been produced, “with the possible exception of Facebook instant messages, which will be produced imminently.” (ECF No. 77 at 54).

RFP Numbers 48-49

Request Nos. 48 and 49 seek all documents upon which defendants intend to rely in support of their affirmative defenses and counterclaims. (ECF No. 77 at 29-30).

Defendants assert they have “produced documents responsive to th[ese] request[s], both independently and in response to Warner Bros.' numerous requests,” but “notes that discovery is ongoing and reserves the right to produce additional responsive documents prior to the close of discovery.” (ECF No. 77 at 55).

Analysis

It appears plaintiff is arguing that, because defendants' responses to the various document requests are not complete as certain emails (along with any attachments), Facebook messages, and/or Slack communications are still outstanding, the Court should order defendants to complete their production by a definite date, and also allow plaintiff to conduct limited follow-up discovery after defendants complete their document production.

As stated in the Court's prior discovery order, a party's agreement to comply with discovery requests is not the same as its compliance with that agreement by way of producing responsive documents. (See ECF No. 71). Here, defendants state they have produced all non-privileged, responsive documents with respect to the requests at issue except for responsive Facebook messages that they have agreed to produce after defendants complete their review of the messages. Based on plaintiff's assertions, however, it appears that defendants also may not have completed production of all responsive emails and Slack communications. Given that the challenged document requests were served in March 2021, and that the discovery cut-off of November 29, 2021, has now passed, the Court agrees with plaintiff that, under these circumstances, it is appropriate for the Court to impose a deadline by which defendants must produce the outstanding responsive documents. Although the Court understands that defendants encountered technical challenges when attempting to download Facebook and Slack messages that delayed the discovery production, it appears from defendants' representations that such problems have been resolved. Accordingly, the Court grants in part plaintiff's Motion to Compel. No later than December 22, 2021, defendant RTI is ordered to produce in readable format all non-privileged, responsive Facebook and Slack communications. To the extent necessary, plaintiff shall consult with defendants and/or defendants' e-discovery vendor to resolve any difficulties in production. Also no later than December 22, 2021, defendant RTI is ordered to produce all non-privileged, responsive emails, including email attachments.[1] If defendant RTI determines that it has no additional responsive Facebook messages, Slack communications, and/or emails to produce, or has already provided all such documents, then no later than December 22, 2021, defendants shall confirm such information in a declaration signed under penalty of perjury by a corporate representative.[2] If defendants assert that any of the responsive documents are protected by the attorney-client privilege, attorney work product doctrine, or other privilege, defendants must provide plaintiff with a sufficiently detailed privilege log to enable plaintiff to evaluate the applicability of the privilege or other protection. Fed. R. Civ. P. 26(b)(5); Clarke v. Am. Comm. Nat'l Bank, 974 F.2d 127, 129 (9th Cir. 1992); see The Rutter Group, Cal. Practice Guide, Fed. Civ. Proc. Before Trial, Form 11:A (Privilege Log). Failure to provide sufficient information may constitute a waiver of the privilege. See Eureka Fin. Corp. v. Hartford Acc. & Indem. Co., 136 F.R.D. 179, 182-83 (E.D. Cal. 1991).

*6 The Court next considers plaintiff's request for permission to conduct follow-up discovery after defendants complete the discovery responses ordered herein. Plaintiff states having 45 days for such discovery would be sufficient, as plaintiff “expects a large volume of documents” to be produced by defendants given their representation that “most communications with employees, board members, and customers were conducted over Slack and Facebook Messenger.” (ECF No. 79 at 5-6).

On August 24, 2021, the District Judge issued an Order Re: Joint Stipulation to Extend Case Schedule, granting the parties a limited extension of certain deadlines in this case, including extending the fact discovery cutoff from August 27, 2021, to November 29, 2021. In doing so, the District Judge stated that “[t]he parties should not expect any further continuance of any deadline and should act accordingly.” (ECF No. 67). However, if the parties sought another continuance, they were required to provide the District Judge with a detailed showing of diligence as set forth in the Order. (Id.).

Given that plaintiff expects defendants to produce “a large volume of documents,” and absent any indication in the Joint Stipulation about the content of such documents, or the amount of follow-up discovery that plaintiff believes it would need to pursue, and absent a showing of why the discovery at issue in this Motion was not pursued at an earlier time in this litigation consistent with the scheduling order, it appears that the proposed future discovery based on defendants' production of Facebook and Slack messages may ultimately encompass a broad range of issues. In other words, it is not apparent at this time that the proposed follow-up discovery would in fact be limited in focus or otherwise warranted. Under these circumstances, the Court will not entertain an extension of the discovery deadline set by the District Judge. Accordingly, the Motion to Compel is denied with respect to plaintiff's request for 45 days to conduct follow-up discovery.

Interrogatory No. 11

Interrogatory No. 11 states: “For each Accused Item, please identify and describe all elements, arrangements, or other contributions that You contend are attributable to You and sufficiently original as to render Defendants' use non-actionable.”

Plaintiff contends that the above interrogatory “seeks basic information concerning the core issues and defenses in this action.” (ECF No. 77 at 60). Plaintiff has asserted trademark and copyright infringement claims against defendants, alleging that defendants have copied and misappropriated plaintiff's brands and copyrighted images on their website, online store, and social media platforms. The Amended Complaint alleges infringement with respect to “at least 19 marks and 9 related copyrights.” (Id.). Plaintiff contends that defendants seek to evade culpability for their “overt” infringement by arguing that they developed their own brand names and designs for their running clubs and relied on a variety of preexisting materials and independent contributions. (Id.).

The parties dispute whether Interrogatory No. 11 is compound. Rule 33(a)(1) of the Federal Rules of Civil Procedure provides that a party may serve “no more than 25 written interrogatories, including all discrete subparts.” Plaintiff asserts that the fact the interrogatory asks about more than one product or design element “does not require that it be treated as multiple, separate interrogatories for the purposes of the 25 interrogatory limit imposed by FRCP 33.” (ECF No. 77 at 62).

*7 On the other hand, defendants argue that the interrogatory is “grossly compound” because it includes discrete subparts seeking information as to dozens of different accused items, and thus exceeds the number of interrogatories permitted by Rule 33. The accused items include: the names and logos of defendants' running clubs; the words and images on defendants' websites and social media pages; medallions, medals, and pins; merchandise; and race themes and promotional activities. (Id. at 63-64). In support of their argument, defendants cite Synopsys, Inc. v. ATopTech, Inc, 319 F.R.D. 293 (N.D. Cal. 2016), in which the court stated: “Where a case involves multiple accused products, courts generally have concluded that a single interrogatory seeking information about all accused products contains at least as many discrete subparts as there are accused products at issue, and potentially more depending on what information is sought about each accused product.” 319 F.R.D. at 295. (ECF No. 77 at 63).

The Court notes that in Interrogatory Nos. 9 and 10, plaintiff asked that all persons be identified who participated in the creation or design of each accused item, and for the identification of all preexisting materials from which each accused item was derived. (ECF No. 77-1 at 166-99). In turn, Interrogatory No. 11 seeks information about the original elements of each accused item. Although defendants contend that Interrogatory Nos. 9, 10, and 11 are each compound, defendants nevertheless provided responses to Interrogatory Nos. 9 and 10, despite the purportedly compound nature of those interrogatories. Under these circumstances, and taking into account that discovery closed on November 29, 2021, even if defendants' position were accepted and Interrogatory No. 11 is construed as containing numerous subparts relating to separate accused items, the Court in its discretion may grant leave to allow service of additional interrogatories to the extent consistent with the principles set forth in Rule 26(b)(1) and (b)(2). See Fed.R.Civ.P. Rule 33(a). Consistent with the considerations set forth therein, the Court concludes that the additional interrogatories (under defendants' reasoning), if requested by plaintiff, would be warranted and allowed by the Court in this matter. Plaintiff is alleging that defendants have copied and misappropriated plaintiff's brands and copyrighted images on their website, online store, and social media platforms. To support its claims, plaintiff is entitled to relevant information about each of the accused items. Thus, the Court overrules defendants' “compound” objection to Interrogatory No. 11, and grants the Motion to Compel with respect to this interrogatory.[3] Defendants' complete response to Interrogatory No. 11 is due no later than December 22, 2021.

IT IS SO ORDERED.