*1 This matter is before the court on “Double Diamond Distribution, Ltd., U.S.A. Dawgs, Inc., and Mojave Desert Holdings, LLC's [collectively “Dawgs”] Motion to Compel Discovery” [Doc. No. 917] (“Mot.), filed December 30, 2020. Plaintiff Crocs, Inc., together with the counterclaim defendants generally referred to as “the individual defendants,” filed their “Opposition” on January 11, 2021 [Doc. No. 921], and Dawgs filed its Reply [Doc. No. 923] on January 19, 2021.

As Issue One of the motion, Dawgs seeks from Crocs all “outward-facing, Croslite-related promotional material in its possession, custody, or control” including “eight categories of documents to prove its Lanham Act claim, including ‘Croslite’ promotional material.” (Mot. at 5; Reply at 2.) As phrased, because there is no time limitation incorporated into the document requests, Crocs would be required to produce all Croslite-related promotional material for the last 18 years.

Crocs avers that the parties had long ago come to agreement on the discovery parameters of promotional document production associated with Croslite, the material of which Crocs molded clog shoes are made. Crocs argues that Croslite promotional documents were agreed to be produced whenever the word Croslite appeared in connection with the words “patented,” “proprietary,” or “exclusive,” consistent with Dawgs’ Request No. 12. (“Crocs, Inc.’s Revised Responses to Double Diamond Distribution, Ltd. and U.S.A. Dawgs, Inc.’s Modified Second Set of Requests for Documents and Things”, [Doc. No. 917-5].)[1]

Dawgs now asserts that it is entitled to all of Crocs’ Croslite-related promotional material, regardless of whether the documents also mention one of more of the three agreed terms. (Mot. at 3, Dawgs “seeks production of all Croslite-related promotional material, in whatever form or medium it may exist.”) Dawgs bases its insistence that it be allowed this more expansive discovery on the basis of two other very broadly-worded requests, numbers 13 and 14. (Id.) However, neither Request No. 13 nor Request No. 14, mentions “Croslite.”

In its second issue Dawgs seeks to name two additional (as yet unidentified) email custodians and require that Crocs search these two email accounts under the same parameters as the original six custodians previously searched. While Crocs admits that Dawgs was allowed up to eight email custodians for a keyword parameters search (ESI Order [Doc. No. 235]), Crocs argues it was not contemplated by the parties or the court that Dawgs would be allowed to hold in abeyance one or more of the eight custodians for an email search years later. Crocs argues that this agreement and subsequent court order contemplated immediate one-time relief and that the time has long passed to allow Dawgs to name two new email custodians for account search.

ANALYSIS

*2 Dawgs seeks discovery on its one remaining counterclaim, violation of Section 43(a) of the Lanham Act. In that claim Dawgs alleges

(Second Am. Answer and Counterclaim, [Doc. No. 487/488].) Further the claim states

(Id.)

Issue 1

Dawg's Request for Production No. 12[3] concerns the Croslite product and is properly limited to attain “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). Plaintiff's responses to RFP 12, as well as the others, was rendered November 17, 2016. (Mot., Decl. of Berkowitz, Ex. D [Doc. No. 917-5].) The parties have worked together to create email search terms and other parameters for the discovery.

*3 Once again, the court reminds the parties that the history of discovery in this case was detailed this court's Recommendation of Magistrate Judge entered on October 27, 2020 (Doc. No. 897). At that time, and again now, the court finds that although fact discovery is still open, “after fourteen years, the parties are finally poised to bring an end to this long running dispute” and that “[o]n September 8, 2020, in parallel with the parties’ discussions, Crocs made what was supposed to be its near-final production, including 16,000 documents ...supposedly covering a 16-year period.” (Id. at 10-11.)

Dawgs has admitted, as it must, that the parties have already negotiated the production of such materials pursuant to RFP 12 and that production has been made. (Id. at 4-5.) Instead of inquiry or comment on RFP 12, however, Dawgs now “seeks production of all Croslite-related promotional material, in whatever form or medium it may exist” to “include any outward-facing material relating to Croslite, such as traditional advertisements, product descriptions, Q&As, and media mentions” over the lifetime of Crocs existence pursuant to RFPs 13 and 14. (Mot. at 2.)

Whether to extend discovery “is committed to the sound discretion” of the court. Smith v. United States, 834 F.2d 166, 169 (10th Cir.1987). When exercising its discretion, the court considers the following factors:

Silverstein v. Fed. Bureau of Prisons, No. 07-CV-02471-PAB-KMT, 2011 WL 588717, at *1 (D. Colo. Feb. 10, 2011).

Again, the court reiterates that just because new counsel have entered the case representing Dawgs, with perhaps a new litigation strategy, there is simply no legal basis presented to re-negotiate discovery agreements made over the past 16 years to allow a late tsunami of document production with the potential to again expand discovery disputes between these highly litigious parties. See In re Mellor, 226 B.R. 451, 457 (D. Colo. 1998) (noting that “reopening discovery would have likely required the resolution of more discovery disputes”).

Further, this court disagrees that Dawgs can rely upon either RFP No. 13 or 14 to support its new demand – a demand which would entirely gut the agreements made in the past to reasonably limit Croslite advertising materials to ones mentioning the terms “exclusive,” “proprietary,” and/or “patented.” RFP No. 13 is clearly targeted at Crocs’ wholesale arrangements with Dealers and is not directed at Croslite as a compositional material. RFP No. 14 is overbroad on its face, however appears to target Crocs’ assessment of the marketing strategies of itself and other companies with respect to Crocs’ clog style molded shoes, including strategic plans, long range plans and business plans. This RFP does not mention or discuss the compositional material known as Croslite.

While trial is not scheduled, after fifteen years of litigation, these cases must soon get to trial. Additionally, Crocs objects to re-negotiating the terms of discovery. The court finds it would be very prejudicial to allow such expansive discovery at this late stage. Further the court finds that Dawgs has not shown any real need for discovery of “all of Crocs’ Croslite ads, which will reflect the nature and extent of the promotion, including distribution channels, timeframe, and particular shoe models in which Croslite was marketed.” (See Reply at 1.) In addition to never clearly asking for the material previously except as limited by RFP No. 12, Dawgs already has the information to which it is legitimately entitled about false representations allegedly made about the exclusive or proprietary or patented composition of Croslite. Dawgs is able to make its argument that “after years of false advertising, Croslite, as a brand, became synonymous in consumers’ minds with superiority and differentiated characteristics, even after the “patented” claims may have slowed or stopped” (Mot. at 3) without the need to overturn the reasonable agreements made by previous counsel concerning Croslite advertising and with little to nothing of evidentiary value to be gained.

Issue 2

*4 The court finds that Issue No. 2 is not ripe at this juncture for resolution. As Crocs notes, “Dawgs does not even disclose which custodians it seeks to add, either by title or by name. This makes it impossible for Crocs or the Court to fully evaluate the request. Dawgs instead says it will wait to ask for more custodians and propose search terms after taking the deposition of one of Crocs's marketing executives. Mot. at 5.” (Resp. at 10.)

The court agrees that the request is thus premature. Dawgs has requested that it be allowed until after the deposition of Edward Wunsch, which was scheduled to take place on February 9, 2021, to designate any additional custodians for email search. It is now February 26, 2021.

Several factors would better inform the court whether to allow the additional two requested email searches once Dawgs makes an election about additional custodians, including the possibility that Crocs might withdraw its objection to providing emails once it knows which custodians are at issue, if any. In this era of electronic document creation and storage, the court is unimpressed with any argument that deferring ruling on the email search requests until custodians are identified will further delay discovery. On the contrary, meaningful consideration cannot be undertaken without knowing who the custodians are, what role they played, whether they appeared on Crocs’ original designation of important email custodian witnesses, why the custodian was not designated for search initially, the justification for waiting until discovery was nearly completed before asking for such discovery and the potential need and non-cumulative relevance for the materials which might be uncovered through such an email search.

Therefore, it is ORDERED

If it has not done so already, on or before March 3, 2021, Dawgs may designate by name up to two additional persons for email search by using previously established search parameters. Crocs will notify Dawgs on or before March 10, 2021, whether it objects to conducting the email search of any designated custodian(s). If Crocs submits such an objection, Crocs shall file a Motion for Protective Order concerning the email searches requested fully addressing its position on or before March 15, 2021. Dawgs shall file its response on or before March 22, 2021. No reply will be accepted.

It is further ORDERED

Double Diamond Distribution, Ltd., U.S.A. Dawgs, Inc., and Mojave Desert Holdings, LLC's Motion to Compel Discovery” [Doc. No. 917] is DENIED in all aspects, but without prejudice as to Issue No. 2 subject to further proceedings as outlined herein.