*1 THIS MATTER comes before the Court on The Trial Lawyers College's (hereinafter, “Plaintiff”) Motion to Compel [ECF Doc. 202] which was filed on June 22nd, 2021. Defendants Gerry Spence Trial Institute, Gerald L. Spence, John Zelbest, Rex Parris, Joseph H. Low, and Kent Spence (hereinafter collectively, “Spence Defendants”) filed a Response [ECF Doc. 205] on July 6th, 2021. Plaintiff filed a Reply [ECF Doc. 209] on July 13th, 2021. The Court having reviewed the briefing and being otherwise fully apprised, finds:

In this action, Plaintiff accuses the named defendants of violating the Lanham Act through infringement of Plaintiff's trademarks, unfair competition, false designation of origin, passing off, and false advertising. Plaintiff also accuses the named defendants of violations of the Computer Fraud and Abuse Act, Defend Trade Secrets Act, and Wyoming Statute § 40-24-101 through their unauthorized access and misuse of Plaintiff's confidential computer files. As a basis for some of their allegations, Plaintiff has accused the named defendants of wrongfully obtaining contact information from and using a listserv owned by Plaintiff.

When Spence Defendants were ousted from Plaintiff in 2020, they decided to create a competing entity. Defendant Gerry Spence, through separate counsel, created the Gerry Spences Trial Lawyers College at the Thunderhead Ranch (GSTLC). After initiation of this lawsuit, and the preliminary injunction hearing in this matter, GSTLC was renamed Gerry Spence's Trial Lawyers Institute (GSTLI). Although a named defendant, it has been represented to the Court that GSTLC/GSTLI is effectively a shell that has not taken a single action.

After GSTLC was created, Plaintiff's participants, faculty, and alumni were contacted via email through a listserv related to GSTLC. In his order on the preliminary injunction, Honorable Judge Carson stated that, “Defendants accessed Plaintiff's listservs and used that information to create a new listserv to send mass emails to recipients whose information they obtained from Plaintiff's listservs.” ECF Doc. 46 at pg 2. Further, it was found that Defendants sent the new listserv recipients an email from “Gerry Spence's Trial Lawyer College” stating that the old listserv was experiencing difficulties and that Defendant Gerry Spence authorized a new listserv. Id. At the preliminary injunction hearing, Defendant Rex Parris asserted that GSTLC was nothing but a shell and a back-up plan that, at that time, had not taken any action. But Judge Carson disagreed. He said, “the evidence shows that is not the case. Defendants’ faction of the former Board brought the state court lawsuit to dissolve the Board, created a competing entity, and allowed the new entity to use Plaintiff's registered Marks. Someone is sending emails on behalf of the new entity that use Plaintiff's Marks.” Id. at pg 4 fn 1.

Plaintiff is determined to hunt down that “someone” who sent emails to its participants, faculty, and alumni from listservs that it does not own or manage. In its effort to do so, Plaintiff propounded discovery requests on each individual Spence Defendant seeking information on listservs used by them that relate to GSTLC. Plaintiff defined GSTLC, for purposes of discovery, as just about any name it has ever been called and to include its members, managers, officers, directors, agents, employees, predecessors, successors, assigns, and subsidiaries.

*2 The Spence Defendants’ argument is simply enough. They believe the issue here is the plain language of Plaintiff's discovery requests. Spence Defendants claim that a GSTLC listserv, as defined by Plaintiff, has never existed. To that extent, Spence Defendants argue nothing “GSTLC related” has ever existed because GSTLC is a shell entity that has never functioned. Plaintiff urges the Court to disregard such an argument. Plaintiff believes the argument is hyper-technical and that its definition of GSTLC, for discovery purposes, is broad enough to discover documents and information related to any listserv that the Spence Defendants or other named defendants have used. Defendants further assert that this was a subject of an informal discovery conference held on June 8th, 2021. This argument is unclear, but clearly misunderstands the purpose of the informal discovery conferences. They do not replace, but rather attempt to avoid discovery motions and are condition precedent to the filing of such motions. See Local Rule 7.1 and January 24, 2014 General Order Regarding Discovery Motions. The Court granted permission to Plaintiff to file this motion. In addition, this Court did not excuse Defendants’ conduct in failing to respond to the subject discovery and Defendants’ recollection of the conference is faulty as set forth in the briefing [ECF Doc 205 pg 4].

Under Rule 26 of the Federal Rules of Civil Procedure parties to a lawsuit “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.” Fed. R. Civ. P. 26(b)(1). The purpose of the rule is to allow broad discovery of relevant information, even if that information is not admissible at trial. Id.

Relevance is broadly construed to contemplate “discovery into any matter that bears on or that reasonably could lead to other matters that could bear on any issue that is or may be raised in a case.” Sinclair Wyo. Refining Co. v. A&B Builders, Ltd., No. 15-CV-91-ABJ, 2017 WL 10309306, at *4 (D. Wyo. Oct. 31, 2017) (quoting Anaya v. CBS Broad, Inc., 251 F.R.D. 645, 649–50 (D.N.M. 2007)). The party seeking discovery bears the burden of proving relevance. Id. at *5. However, when the discovery request is facially relevant, the burden is on the party resisting discovery to establish: (1) that the request is not relevant or (2) that the relevance is so marginal that the potential harm outweighs the presumption favoring discovery. See Gordon v. T.G.R. Logistics, Inc., 321 F.R.D. 401, 403 (D. Wyo. 2017).

When analyzing proportionality, the Court looks at “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.” Fed. R. Civ. P. 26(b)(1). The burden to prove disproportionality is on the party resisting discovery. Sinclair Wyo. Refining Co., 2017 WL 10309306, at *5.

Rule 37 provides enforcement mechanisms for Rule 34 and other discovery rules. According to Rule 37, if a party does not respond to an interrogatory or to a request for production, the party requesting the discovery may move the court to compel the opposing party to respond. Fed. R. Civ. P. 37(a)(2)(B). “[A]n evasive or incomplete disclosure, answer, or response is to be treated as a failure to disclose, answer, or respond.” Fed. R. Civ. P. 37(a)(4). Rule 37 prescribes sanctions for parties who fail to comply with discovery until after a motion to compel is filed against them. With some exceptions, when a party is compelled to provide discovery, or provides the discovery only after a motion to compel has been filed against it, Rule 37(a)(5) requires the court to order the responding party to pay the movant's reasonable expenses incurred in filing the motion. However, where parties have taken legitimate positions, courts generally conclude that justice requires that each party be responsible for their own fees and costs. Benavidez v. Sandia Nat'l Lab'ys, 319 F.R.D. 696, 720 (D.N.M. 2017).

*3 The Court understands Spence Defendants’ argument in that GSTLC has never acted and is therefore a shell. Admittedly, there is no evidence before the Court that GSTLC has appointed directors, retained agents, or entered contracts. Hence Spence Defendants argument, how can an entity that is effectively a shell own and operate a listserv? Likewise, the Court understands Plaintiff's argument in that there are a host of listservs being used by all the Defendants, Spence group or not, that relate to competing entities and are allegedly using contact information usurped from Plaintiff.

This issue involves a meeting of semantics and corporate law. There are a few truths that must first be discussed before a meaningful analysis can take place. First, all the named Defendants have known about and used a number of listservs while organizing and preparing their competing entity. This is supported by documentation which refutes some of the Spence Defendants’ sworn testimony. Second, Defendants have known about and used a listserv literally named “Gerry Spence's Trial Lawyers College”, renamed later “Gerry Spence's Trial Lawyers Institute”.[1] Third, Defendant Gerry Spence created GSTLC, and apparently authorized certain emails from himself to be shared with the GSTLC listserv. ECF Doc. 203-2. Finally, Honorable Judge Carson has already found that “[s]omeone is sending emails on behalf of [GSTLC] that use Plaintiff's Marks.” ECF Doc. 46 at pg 4 fn 1.

It seems everyone involved in this matter knows Defendant John Joyce was responsible for setting up the “renegade” listserv. ECF Doc. 203-17. It is also apparent everyone involved in this matter is aware Defendant John Joyce has/had control, to some extent, over seemingly every listserv at issue. Spence Defendants distance themselves and make it clear Defendant John Joyce is not included in their “group” when denying the allegation that they have been operating a number of listservs. ECF Doc. 205 pg 6 fn 2. Plaintiff has served and received some discovery responses from Mr. Joyce, but it asserts that Mr. Joyce has not been overly forthcoming and has delayed the taking of his deposition. Plaintiff asserts that it has run into a concerted effort to avoid discovery regarding the “renegade” listservs and how they came to exist and from what source they derived their membership lists. This avoidance of discovery has included both the Spence Defendants and the individual Defendants.

The Court finds that the listserv operating, or at least was operating, under gerry.spence.college@gaggle.email is a “GSTLC Listserv”, as defined by Plaintiff, for purposes of discovery. In fact, Defendant Gerry Spence authorized emails he wrote to be sent “...via Gerry Spence's Trial Lawyer Institute” listserv. Id. Exhibit 2. The person he authorized to send the email via the GSTLC listserv was the same individual who is credited with creating the GSTLC listserv. Surely the listserv can be adequately described as belonging to GSTLC seeing as it bears the name of GSTLC, its email address contains the name of Gerry Spence, it is/was being used by the named Defendants, it was created by a named Defendant, it had a name change simultaneously with GSTLC, it was referenced by Spence Defendants’ counsel in hearings, and it has effectively already been deemed in use on behalf of GSTLC by Judge Carson.

To that extent, the Court reaches a similar conclusion with the listserv operating under gerry.spence.trial.insitute@gaggle.email. It must be noted the Spence Defendants assert they have “... produced all information and documents that exist related to the ‘Gaggle’ email addresses.” ECF Doc. 205 pg 8. The Court cannot compel the production of documents that have already been produced or that do not exist. However, any discovery responses that are inconsistent with the Court's findings must be supplemented. The Court believes by settling the dispute as to which listservs constitute “GSTLC listservs” the parties will be able to solve the disputes on the topic.[2]

*4 The Court rejects Defendants attempt to describe these legal entities as shells which undertook no action. While the Court understands that these entities did not proceed to the election of a board, they did in fact take action through agents who projected apparent authority to act. It is interesting that these same Defendants strongly assert that The Spence Method was acting and performing functions entitling the actors to the protection of the attorney-client privilege, when The Spence Method was in exactly the same state as GSTLC and GSTLI. That is, legally formed entities which had not proceeded to elect directors to take the other necessary actions to become a fully functioning entity. Just as the ongoing actions of Defendants are performed on behalf and as agents for The Spence Method, the actions of all the Defendants were performed on behalf and as agents of GSTLC and GSTLI.

Plaintiff's discovery request seeks all documents or information held by the Spence Defendants regarding the GSTLC and GSTLI listservs. They shall be answered fully in all aspects.

Plaintiff has asserted that its definition of “GSTLC listserv” encompasses any listserv(s) utilized by the Spence Defendants to communicate about their competing business entity. While the Court does not have any difficulty reading Plaintiff's discovery requests to seek all listservs operated under the title or identity of GSTLC or GSTLI, the scope of this discovery request has the potential to become overly burdensome and nonproportional if extended to “its members, managers, officers, directors, agents, employees, predecessors, successors, assigns, and subsidiaries...”. It is improper for a litigant to clump a corporation and its communication tools with that of every communication tool used by someone associated with the corporation. Even more important, the Court cannot allow a litigant to clump a corporation and its communication tools with a separate corporation. If Plaintiff seeks information as to how the Spence Method listserv utilized names obtained from the TLC listserv it may submit targeted discovery in that regard. Such information may be relevant as to any claim of ongoing use or infringement of trade secrets or trademarks.

Spence Defendants also argue Plaintiff has only asserted general allegations, and has failed to point to a single specific answer or production that was deficient. This is in part a result of Plaintiff's repeated attempt to focus the discovery to meet the objections of Defendants. The discovery documents and the response were presented to the Court as exhibits and Plaintiff's arguments were sufficiently identified. Now that the Court has determined what listservs are “GSTLC listservs”, Spence Defendants will be able to supplement to whatever extent is necessary. Who created all these listservs, where their contact information came from, and to what extent each named defendant participated in or knew about the creation of all the listservs, is critically important to this case and will be discovered.

Lastly, both parties requested they be awarded fees. The Court denies the requests. This case involves a large number of on-going discovery disputes and an award of fees and costs is premature at this time. If necessary, the Court will address this issue globally at a later date.

IT IS SO ORDERED.

DATED this 10th day of August 2021

Although it temporarily kept the same email address: gerry.spence.college@gaggle.email

There is evidence that Spence Defendants have the authority to add people to listservs by emailing Defendant John Joyce. For purposes of future supplementation, the Court finds this authority falls within “operating” a listserv. It is fair to say one operates a listserv if they decide who is on it.