Scholz Design Tex. v. Lampert Yards - US LBM
Scholz Design Tex. v. Lampert Yards - US LBM
2019 WL 13216582 (N.D. Iowa 2019)
September 4, 2019
Roberts, Mark A., United States Magistrate Judge
Summary
The court granted the plaintiffs' motion to compel the defendants to produce documents and items consistent with the order. The court noted that the defendants had to produce documents and items related to ESI, proportional to the needs of the case. The court did not address any specific type of ESI, but did note that the defendants had to produce documents and items consistent with the order.
SCHOLZ DESIGN TEXAS, LLC, PLAN PROS, INC. and BROWN WEGHER CONSTRUCTION, INC., Plaintiffs,
v.
LAMPERT YARDS - US LBM, LLC. d/b/a Lampert Lumber, US LBM HOLDINGS, LLC, TROY GRIESE CONSTRUCTION, INC., TROY GRIESE PROPERTIES, LLC, TROY B. GRIESE, TAMARA K. GRIESE, ROBERT K. EGAN, DANIEL LAMPERT FESLER, LAMPERT YARDS INC., FESSLER HOLDINGS INC., and LAMPERT YARDS – US LBM, LLC, Defendants
v.
LAMPERT YARDS - US LBM, LLC. d/b/a Lampert Lumber, US LBM HOLDINGS, LLC, TROY GRIESE CONSTRUCTION, INC., TROY GRIESE PROPERTIES, LLC, TROY B. GRIESE, TAMARA K. GRIESE, ROBERT K. EGAN, DANIEL LAMPERT FESLER, LAMPERT YARDS INC., FESSLER HOLDINGS INC., and LAMPERT YARDS – US LBM, LLC, Defendants
No. 18-CV-4074-CJW
United States District Court, N.D. Iowa, Western Division
Filed September 04, 2019
Roberts, Mark A., United States Magistrate Judge
ORDER
*1 The matter before the Court is the Motion to Strike Defendants' Objections and to Compel Discovery from Defendants filed by Plaintiffs Scholz Design Texas, LLC, (“Scholz”), Plan Pros, Inc. (“PPI”), and Brown Wegher Construction, Inc. (“BWC”), (collectively “Plaintiffs”). (Doc. 46.) The motion was resisted by Defendants Lampert Yards – US LBM, LLC d/b/a Lampert Lumber and US LBM Holdings, LLC (collectively “Lampert”). (Doc. 49[1].) Defendants Troy B. Griese, Troy Griese Construction, Inc., and Troy Griese Properties, LLC (collectively “Griese”) also resisted the motion. (Doc. 50.) Plaintiffs timely filed replies to the resistances. (Docs. 51, 52.) A hearing in this matter is not necessary.
Plaintiffs allege infringement of their copyrighted home designs. Plaintiffs Scholz and PPI create and market architectural plans and designs. (Doc. 16 ¶ 16.) Scholz claims to be the sole original author and owner of a large number of architectural works including “55975 The OTB-1206A.” (Id. ¶ 17.) PPI claims to be the sole original owner and original author of a large number of architectural works, including “29316 Elway.” Id. ¶ 18. Each of the Plaintiffs asserts copyright protection for its work. (Id. at ¶¶ 23-27.)
BWC constructs houses. (Id. ¶ 5.) BWC claims sole ownership of the architectural work entitled “Grant.” (Id. ¶ 19.) In general terms, Plaintiffs allege they have located two houses built by Griese, one which infringes upon PPI's copyright to the 29316 Elway design and the other which infringes upon BWC's copyright to the Grant design. (Id. 16 ¶ 28.) Plaintiffs allege Lampert redrew BWC's Grant design and distributed it to Griese under the name “Lampert Lumber.” Id. ¶ 29.
Scholz claims it sent a private investigator to Lampert's LeMars, Iowa location where Lampert's employees readily copied and thereby infringed upon Scholz's 55975 The OTB-1206A design. (Id. ¶ 31.) Plaintiffs also allege, “Upon information and belief, Defendants have infringed Plaintiffs' copyrights in others of their architectural works, the scope and breadth of which infringing activities will be ascertained during the course of discovery.” (Id. 16 ¶ 40.)
*2 Plaintiffs claim they are entitled to conduct discovery with respect to instances of copyright infringement beyond those specifically identified in their First Amended Complaint. Plaintiffs assert, based on prior experience with Lampert, they have a good faith belief there may be other instances of infringement. In addition, communications between a draftsman employed by Lampert in its LeMars, Iowa office and Defendant Tamara Griese tend to suggest copying the work of others may be more than an isolated event.
Lampert alleges Plaintiffs have failed to make a requisite “threshold showing of relevance” to permit them to discover information about other instances of infringement not specifically identified. (Doc. 49 at 4.) Lampert notes there are thirty-three Lampert Lumber locations in five states and that some of the requests do not specify a beginning date for the production of responses. (Id.) However, Lampert did not object that the requests are overly broad or impose an undue burden upon them. Nor did Lampert assert the requests are not proportional to the needs of the case. Rather, Lampert's objection is that Federal Rule of Civil Procedure 26(b)(1) limits the scope of discovery to that which is “relevant to any party's claim or defense.” (Doc. 46-3.) Lampert argues the requests exceed this scope.
Griese adopts Lampert's position on the substance of the objections. In addition, Griese argues that Plaintiffs have not satisfied their obligation to meet and confer with them under Federal Rule of Civil Procedure 37(a) and Local Rule 37. (Doc. 50.)
Rule 26(b)(1) of the Federal Rules of Civil Procedure provides:
Unless otherwise limited by court order, the scope of discovery is as follows: Parties 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. Information within this scope of discovery need not be admissible in evidence to be discoverable.
Rule 34(a) provides for discovery by production requests within the scope of Rule 26(b). A party may obtain, as of right, discovery “relevant to any party's claim or defense.” 8 Wright & Miller, Federal Practice & Procedure § 2008, at 129–30 (3d ed. 2010). Discovery that relates to the “subject matter” of the case but is not relevant to any claim or defense may only be obtained on court order. Id. “Since decisions as to relevance ... are made for discovery purposes well in advance of trial, a flexible treatment of relevance is required and the making of discovery, whether voluntary or under court order, is not a concession or determination of relevance for purposes of trial.” Fed. R. Civ. P. 26(b)(1) Advisory Committee's note to 1970 amendment. Ultimately, relevancy decisions are “intrinsically ad hoc.” Wright & Miller, supra 10, § 2008, at 146.
Rule 26(b) is “liberal in scope and interpretation, extending to those matters which are relevant and reasonably calculated to lead to the discovery of admissible evidence.” Hofer v. Mack Trucks, Inc., 981 F.2d 377, 380 (8th Cir. 1992) (citation omitted). The reach of the rule is not bound by the rules of admissibility, as discovery “is a[n] investigatory tool intended to help litigants gain an understanding of the key persons, relationships, and evidence in a case.” Liguria Foods, Inc. v. Griffith Labs., Inc., No. 320 F.R.D. 168, 182–83 (N.D. Iowa 2017) (alteration in original) (quoting Sentis Grp., Inc. v. Shell Oil Co., 763 F.3d 919, 925 (8th Cir. 2014)).
*3 This Court has previously held,
Nevertheless, “this often intoned legal tenet should not be misapplied so as to allow fishing expeditions in discovery,” and “[s]ome threshold showing of relevance must be made before parties are required to open wide the doors of discovery and to produce a variety of information which does not reasonably bear upon the issues in the case.” Accordingly, a district court “must limit the frequency or extent of discovery otherwise allowed ... if it determines that ... the burden or expense of the proposed discovery outweighs its likely benefit” in light of the factors enumerated by Rule 26(b)(1).
CMI Roadbuilding, Inc. v. Iowa Parts, Inc., 322 F.R.D. 350, 355 (N.D. Iowa 2017) (citations omitted.) “[A] party resisting production bears the burden of establishing lack of relevancy or undue burden.” St. Paul Reinsurance Co. v. Commercial Fin. Corp., 198 F.R.D. 508, 511 (N.D. Iowa 2000).
The principal issue is whether Plaintiffs have embarked on an impermissible “fishing expedition” to discover other instances where their designs have been infringed. Lampert repeatedly objects that Plaintiffs' requests “exceed[ ] the scope of discovery allowable under Federal Rule of Civil Procedure 26(b)(1), as incorporated in Federal Rule of Civil Procedure 34(a).” (See e.g., Doc. 46-3 at 8.)[2] The Court concludes Plaintiffs are not on an improper fishing expedition and have made a threshold showing of relevance. Plaintiffs have alleged three specific instances of infringement; i.e., the alleged infringement of the 55975 The OTB-1206A work, the 29316 Elway work, and the Grant work. The communications between Griese and Lampert (Doc. 46-6), as well as the allegations about Lampert readily copying the 55975 The OTB-1260A (Doc. 16 ¶ 31) plausibly show that these three instances of alleged infringement may not be isolated. Moreover, Plaintiffs allege a history of litigation with Lampert in the District of South Dakota regarding infringement of Plaintiff PPI's designs. (Doc. 16 ¶ 30.) Plaintiffs' allegation that “Defendants have infringed Plaintiffs' copyrights in others of their architectural works, the scope and breadth of which infringing activities will be ascertained during the course of discovery” is founded upon plausible reasons to suspect other instances of infringement.
The case most on point cited by either party is Design Basics LLC v. Best Built Inc., No. 14-CV-597, 2016 WL 1060253, at *3 (E.D. Wis. Mar. 15, 2016) which held:
In its response to the motion to compel Best Built argues that it has produced all the information in its possession that relates to the six designs specifically noted in the complaint. Because the complaint does not contain allegations of infringement of any other specific plans, Best Built argues any other documents responsive to Plaintiff's broad request are not relevant to this case. This is not true.
As noted above, the complaint alleges infringement of six specific designs as well as of other original works of Plaintiff's to be ascertained during discovery. Am. Compl. ¶ 26. Best Built argues that this “catchall allegation” fails the plausibility pleading requirement of Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and thus Plaintiff is not entitled to discovery related to this allegation.
*4 The court disagrees. Although the allegation would clearly be deficient all by itself, it is accompanied by specific allegations of infringement of six specific copyrights. In the words of Twombly, the complaint includes enough specific allegations of infringement “to raise a reasonable expectation that discovery will reveal evidence of” infringement of “other” designs as well. 550 U.S. at 556.
As in Design Basics, the complaint in the case at bar includes enough specific allegations of infringement by Lampert and Griese to raise a reasonable expectation that discovery will reveal evidence of other instances of infringement. The disputed requests are reasonably calculated to lead to the discovery of admissible evidence regarding other instances of infringement. Although the infringement disclosed to date is tied to Griese's interaction with Lampert at its LeMars location, it does not follow that the possibility of infringement is limited in time and location as Lampert suggests. Therefore, the Court concludes the discovery is permitted by Rule 26(b).
Lampert's only objection to requests 1-6 is that they exceed the scope of discovery allowable under Rule 26(b)(1). For the reasons set forth above, Lampert's objections to requests 1-6 are overruled. Griese has adopted the arguments raised by Lampert. (Doc. 50 at 1.) Griese asserted the request is “overbroad and seeks irrelevant information.” (Doc. 46-4 at 1.) Since Griese adopted Lampert's brief and did not attempt to distinguish its position, the Court concludes this is an objection to the scope of discovery and is overruled for the reasons set forth above.
Griese also asserted that requests 1 and 2 seek confidential or proprietary information. (Id.) Griese's resistance, however, does not address these additional objections. I conclude that Griese has abandoned these additional objections. Local Rule 7(e) requires a brief containing the grounds for “resisting the motion and citations to authorities upon which the resisting party relies.” Those grounds and citations are absent from Griese's brief on this issue. Thus, Griese's objections to requests 1-3 are overruled.
Requests 8 and 9 seek communications that would show Lampert or its customers using others' plans as “go-bys” or templates. (Doc. 46-3 at 6-7.) Lampert again objects that the request seeks materials beyond the scope permitted by Rule 26(b)(1). (Id.) Lampert further explains, “Specifically with regard to Defendants, the infringement was alleged to have taken place at the Lampert Lumber location in LeMars, Iowa, between 2015-2016 via the plans and drawings identified in the Complaint.” Id. For the reasons discussed above, the scope of discovery is not as restrictive as Lampert claims. Plaintiffs have made sufficient showing to permit inquiry into other possible instances of infringement. Lampert's objections to requests for production 8 and 9 are overruled.
Griese objects to request 4 as “overly broad and unduly vague.” (Doc. 46-4 at 3.) To the extent the assertion that the request is “overly broad” attacks it as exceeding the scope of Rule 26(b)(1), it is overruled for the same reasons as Lampert's objections. To the extent the objection means something else, that objection has been abandoned because it was not raised in Griese's resistance.
*5 Lampert has asserted at least seventeen affirmative defenses. (Doc. 42 at 11-14.) Plaintiffs' request 15 seeks, “All documents relating to, concerning and/or supporting each and every affirmative defense raised by you in your answer and any amended answers to Plaintiffs' First Amended Complaint.” (Doc. 46-3 at 10.) Lampert objected that the request is “an overly broad, unduly burdensome and highly disfavored ‘contention’ discovery request.” (Id). Lampert's resistance, however, focuses solely on the request being a contention request.[3]
This Court discussed contention interrogatories in Zubrod v. Hoch,
In a contention interrogatory, one party asks “ ‘another party to indicate what it contends, to state all the facts on which it bases its contentions, to state all evidence on which it bases its contentions, or to explain how the law applies to the facts.’ ” Sprint Communications Company L.P. v. Crow Creek Sioux Tribal Court, 2016 WL 782247 at *14 (D.S.D. 2016) (quoting Dziadek v. Charter Oak Fire Insurance Co., 2014 WL 820049 at *16 (D.S.D. 2014), in turn quoting Black Hills Molding, Inc. v. Brandom Holdings, LLC, 295 F.R.D. 403 (D.S.D. 2013)). Contention interrogatories may be “helpful in that they may narrow and define issues for trial and enable the propounding party to determine the proof required to rebut the responding party's claim or defense.” Moses v. Halstead, 236 F.R.D. 667, 674 (D. Kan. 2006). On the other hand, contention interrogatories can be “overly broad and unduly burdensome on their face if they seek ‘all facts’ supporting a claim or defense, such that the answering party is required to provide a narrative account of its case.” Id. Thus, due to the nature of contention interrogatories, the district court in Helmert v. Butterball, LLC, 2010 WL 4537096 (E.D. Ark. 2010) explained:
a number of district courts, including several in this circuit, have determined that contention interrogatories need not be answered until discovery is complete or nearing completion. See, e.g., Vishay Dale Elecs., Inc. v. Cyntec Co., No. 8:07CV191, 2008 WL 4868772, at *5 (D. Neb. Nov. 6, 2008) (denying the motion to compel answers to contention interrogatories until the end of discovery); Lucero v. Valdez, 240 F.R.D. 591, 594 (D.N.M. 2007) (“There is considerable support for deferring answers to contention interrogatories until after a substantial amount of discovery has been completed.”); In re Convergent Techs. Sec. Litig., 108 F.R.D. 328, 348 (N.D. Cal. 1985) (denying motion to compel and ordering plaintiffs to answer contention interrogatories 60 days after completion of defendants' document production).
No. C15-2065, 2016 WL 1752770, at *6–7 (N.D. Iowa May 2, 2016). This Court has also noted:
[I]t is perfectly appropriate to use interrogatories to obtain disclosure of the material or principal facts supporting an allegation or defense. Id. at 405; accord Lawrence v. First Kansas Bank & Trust Co., 169 F.R.D. 657, 664 (D. Kan. 1996). This is especially appropriate with regard to affirmative defenses. When drafting answers, attorneys routinely list every conceivable (and sometimes inconceivable) affirmative defense in order to prevent the inadvertent waiver of a defense that may become later viable through discovery. Asserting every affirmative defense known to the law presents virtually no risk, while leaving one out could someday cause remorse.
*6 Cmty. Voice Line, LLC v. Great Lakes Commc'n Corp., No. C12-4048-MWB, 2013 WL 4048495, at *8 (N.D. Iowa Aug. 1, 2013). Here, the contention request is less onerous than a contention interrogatory might be. Plaintiffs are not seeking a narrative of every fact supporting the affirmative defenses, but reasonably request Defendants disclose the documents that support those defenses.
As in Zubrod, the timing of responses to these contention requests can become an issue. Discovery closes on October 4, 2019; i.e., approximately a month after entry of this order. Here, because discovery will soon close, it is appropriate to require Lampert to fully respond to this request. Lampert's objections to this request are overruled.
Griese objected to request 7 “to the extent it seeks to discover privileged information, including production of material that is subject to attorney-client privilege and protected attorney work product.” (Doc. 46-4 at 5.) Griese did not object that request 7 is an improper “contention” request. Griese answered subject to these objections. Again, however, Griese's resistance does not assert any privilege. If Griese intends to maintain its attorney-client privilege or work product objections, it shall prepare and produce a privilege log with respect to any document it contends is so privileged.
Lampert has agreed to provide responses to these interrogatories. Plaintiffs' motion on this issue is denied as moot.
Federal Rule of Civil Procedure 37(a)(1) requires that a motion to compel include “a certification that the movant has in good faith conferred or attempted to confer with the person or party failing to make disclosure or discovery in an effort to obtain it without court action.” Local Rule 37 also imposes an obligation upon counsel to confer in good faith in an attempt to resolve or narrow the discovery dispute. The importance of the meet-and-confer requirement is not to be diminished. See Williams v. Cent. Transp. Int'l., Inc., No. 4:13-CV-2009 (CEJ), 2014 WL 6463306, at *2 (E.D. Mo. Nov. 17, 2014) (“The meet-and-confer requirement is ‘not an empty formality.’ ”). Griese challenges the adequacy of Plaintiffs' effort to resolve the dispute before filing the instant motion.
Here, Plaintiffs submitted a declaration of one of their attorneys, Scott M. Francis. Mr. Francis declares, “On the very same day that Defendants served their discovery responses, I sent an email to counsel for Defendants laying out these basis [sic] issues, and suggesting that all counsel discuss the matter via telephone conference.” (Doc. 46-2 at 2.) Griese complains that this “Precatory Meet and Confer” email only addressed issues regarding Lampert. Griese also complains that during the telephone conference that followed:
[N]ot one single question or comment was directed to counsel for the Griese Defendants. Other than verbally acknowledging his own presence on the line at the beginning and close of the call, counsel for Griese Defendants did not utter one word for the remainder of the call. All the substance was directed to counsel for Lampert.
(Doc. 50 at 3) (emphasis in original.) Griese asserts that Plaintiffs cannot satisfy their obligation to engage in good-faith, two-way communication as required by Rasch v. Tyson Fresh Meats, Inc. without having “engage[d] counsel” on this call. 16-CV-3006-LTS, 2017 WL 3091458 at *3 (N.D. Iowa Feb. 27, 2017.)
*7 Plaintiffs' reply to Griese's resistance paints a different picture of the conversation. (Doc. 52 at 3.) Plaintiffs contend “Counsel for Plaintiffs addressed both Lampert Defendants and the Griese Defendants during this telephone conference, asking if either set of defendants would be willing to supplement their discovery responses. Both sets of defendants refused, forcing Plaintiffs to file the instant motion.” There is no record of this discussion and perhaps that is for the best. Recording might chill open discussion. In this case there is disagreement and perhaps some confusion about whether Plaintiffs' counsel directed his inquiry at counsel for Griese and about whether Griese's counsel sat mute throughout the conference.
Under a different set of facts, Griese's point might be well-taken. Here, however, the issues presented by the motion to compel apply almost equally to both Lampert and Griese. Indeed, the issues overlapped so much that Griese simply adopted Lampert's brief on every issue but this one. Moreover, even if Griese's attorney sat silently throughout the meet-and-confer call, he was present and could have participated. Griese does not assert that, if Plaintiffs' lawyer had only been more solicitous, Griese would have offered a viable resolution to any of the disputes now before the Court. Perhaps Plaintiffs' counsel should have confirmed that Griese did not intend to produce the disputed discovery. Nevertheless, Griese's silence turned out to be an accurate indicator of its willingness to do so. Under these circumstances, Plaintiffs could have inferred the parties had reached an impasse. The Court concludes that Plaintiffs met their obligation to meet and confer with Defendants.
Defendants' objections are overruled. Plaintiffs' Motion to Compel (Doc. 46) is GRANTED except as to Interrogatories 5 and 8 directed to the Lampert Defendants which is DENIED as moot. Within 14 days, the Defendants shall produce the documents and items consistent with this order.
IT IS SO ORDERED this 4th day of September, 2019.
Footnotes
Lampert filed a Substituted Resistance to Plaintiffs' Motion to Strike Defendants' Objections and to Compel Discovery from Defendants. (Doc. 53.) Presumably, the Substituted Resistance is intended to replace Lampert's resistance timely filed on July 26, 2019. (Doc. 49.) Lampert's Substituted Resistance was filed without any explanation of the need for any substitution. The Substituted Resistance was filed well after Lampert's resistance to the motion was due and well after Plaintiffs' reply was filed. (Doc. 51.) Nowhere does the Substituted Resistance indicate whether the other parties consent to the substitution or even if Lampert conferred with them. Lampert should have filed a motion for leave to make such a substitution explaining the basis for the substitution and complying with Local Rule 7(k). On inspection, it appears the Substituted Resistance merely attaches a deposition transcription that was referred to but omitted from the prior filing.
The other objections that Lampert and Griese raise will be addressed below.
The Court concludes Lampert has abandoned its objection that the request imposes an undue burden. It does not attempt to show any undue burden either in its response or its resistance to the motion. “The objecting party must show specifically how each discovery request is burdensome or oppressive by submitting affidavits or offering evidence revealing the nature of the burden.” St. Paul Reinsurance Co. v. Commercial Fin. Corp., 198 F.R.D. 508, 512 (N.D. Iowa 2000) citing Cipollone v. Liggett Group, Inc., 785 F.2d 1108, 1121 (3d Cir. 1986).