*1 Before the Court is Plaintiffs Motion to Compel. [Dkt. No. 141.] Plaintiff seeks an order compelling Defendants to: (1) search all computing devices used by individuals named Celia, individuals who have used the pseudonym “Celia,” and individuals who have used the “Celia” messaging accounts; (2) use the term “Celia” when searching all computing devices that were not used by an individual named Celia; (3) search all computing devices of Meera Jin, or provide verified information about when this individual stopped working for Defendants and what happened to her computing devices; (4) produce all responsive documents concerning other lawsuits in which Defendants were sued; and (5) use the terms “Oakley,” “Ray-Ban,” “Harley,” Swarovski,” “Chromehearts,” and “Chrome Hearts” in the search for responsive documents. [Dkt. No. 141 at 2.]

For the reasons set forth below, the motion to compel is granted in part and denied in part.

I. Background

The Complaint states four claims: (1) Federal Trademark Infringement and Counterfeiting, 15 U.S.C. § 1114; (2) Federal Unfair Competition, 15 U.S.C. § 1125; (3) California False Advertising, Cal. Bus. & Prof. Code § 17500; and (4) California Unfair Competition, Cal. Bus. & Prof. Code § 17200. [Dkt. No. 1.] It alleges that Andy Chou, Yiwu Cute Jewelry Co., Ltd., Yiwu Xite Jewelry Co., Ltd., CJ Fulfillment Corp., CJ Trade Corp., and Yiwu Promotional Trade Co., Ltd. (collectively, “Defendants”) willfully infringed on Juul Labs, Inc.'s (“Plaintiff”) “JUUL” trademarks by operating a website which advertised, marketed, and sold counterfeit products bearing the marks. [Dkt. No. 1 at 1-3.] On April 27, 2021, Plaintiff filed certificates of service of the summons and complaint upon Defendants. [Dkt. Nos. 36-38.]

Prior to the start of this litigation, Plaintiff's investigator purchased some of the infringing products bearing JUUL marks from Defendants' website on October 7, 2019, March 16, 2020, and April 8, 2020. [Dkt. No. 103 at 4-6.] As part of the investigation into the products' listings, the investigator communicated with four individuals: Meera Jin, Leon Li, Celia Yang, and an individual named “Gringer.” [Id. at 6.] Yang was assigned to the investigator to serve as his personal agent. Defendants do not dispute that Jin, Li and Gringer were employees of Defendants. [Id. at 6.] However, Defendants state that Yang was employed by a third party, Hu Qian, and thus was not acting as Defendants' agent when communicating with the investigator. [Id. at 6-7.]

On July 19, 2021, Plaintiff filed a motion for summary judgement on liability for all claims and damages. [Dkt. No. 77.] On August 30, 2021, the Court granted summary judgment on the issue of liability, which Defendants had not disputed. Regarding damages, the Court found that outstanding issues of material fact, including whether the sale of the infringing products was willful, precluded summary judgment. [Dkt. No. 103.] In particular, the dispute over Yang's employer prevented a determination of whether willfulness by Yang could be imputed to Defendants. [Id. at 19.] Accordingly, the only remaining issue is damages, which Plaintiff has elected to seek pursuant to 15 U.S.C. § 1117(c). [Id. at 18.]

*2 Section 1117(c) provides that in cases “involving the use of a counterfeit mark ... in connection with the sale, offering for sale, or distribution of goods or services,” the plaintiff may elect to recover statutory damages in the amount of “not less than $1,000 or more than $200,000 per counterfeit mark per type of goods” or, if the use is found to be willful, “not more than $2,000,000 per counterfeit mark per type of goods.” Id. § 1117(c).

II. Procedural History of the Instant Discovery Disputes

On December 29, 2021, the parties' sent a joint email to the Court outlining 5 discovery disputes. On January 3, 2022, the Court held an informal discovery conference and heard argument from the parties regarding their positions. That same day, it issued an order with its conclusions and ordering the parties to further meet and confer in good faith to resolve any remaining disputes. The parties were informed that they were to notify the Court if they could not reach an agreement. [Dkt. No. 129.]

The parties notified the Court that the issues of the instant Motion remained outstanding and a briefing schedule was set. [Dkt. No. 137.] The Court takes this matter under submission without oral argument. See Fed. R. Civ. P. 78; L.R. 7-15. In addition to presiding over the informal discovery conference, the Court has reviewed all briefing provided by both parties regarding the contested discovery requests. [Dkt. Nos. 141, 143, 146.]

III. Discussion

Rule 26 governs the scope of discovery. Each party generally has the right to “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 following factors:

Fed. R. Civ. P. 26(b)(1). Relevant information “need not be admissible in evidence to be discoverable.” Id. The 2015 Amendments to the Federal Rules of Civil Procedure added the proportionality requirement and eliminated the “reasonably calculated to lead to the discovery of admissible evidence” standard for the scope of permissible discovery. See In re Bard IVC Filters Prod. Liab. Litig., 317 F.R.D. 562, 563 (D. Az. 2016) (2015 amendments “eliminated the ‘reasonably calculated’ phrase as a definition of the scope of permissible discovery.”)

“District courts have broad discretion to manage discovery.” Hunt v. Cnty. of Orange, 672 F.3d 606, 616 (9th Cir. 2012) (quotations and citation omitted). A court “must limit the frequency or extent of discovery otherwise allowed ... if it determines that: (i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive; (ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or (iii) the proposed discovery is outside the scope permitted by Rule 26(b)(1).” Fed. R. Civ. P. 26(b)(2)(C).

“A party seeking discovery may move for an order compelling ... production.” Fed. R. Civ. P. 37(a)(3)(B)(iv). “[A]n evasive or incomplete disclosure, answer, or response must be treated as a failure to disclose, answer or respond.” Fed. R. Civ. P. 37(a)(4). “Upon a motion to compel discovery, the movant has the initial burden of demonstrating relevance. In turn, the party opposing discovery has the burden of showing that discovery should not be allowed, and also has the burden of clarifying, explaining and supporting its objections with competent evidence.” U.S. v. McGraw-Hill Cos., Inc., 2014 WL 1657385, at *8 (C.D. Cal. 2014) (citations and quotation marks omitted).

*3 The Court is mindful of the imperative that the Federal Rules of Civil Procedure be “construed, administered, and employed by the court and the parties to secure the just, speedy, and inexpensive determination of every action and proceeding.” Fed. R. Civ. P. 1.

During the informal discovery conference, Defendants admitted that in addition to Celia Yang, two employees named Celia[1] identified themselves as “Celia” when communicating with customers or potential customers on Defendants' sales platform. [See also Dkt. No. 141-13 at 5.] Plaintiff asserts that these two employees shared the same Skype account with Celia Yang, who was provided the account by Defendants in 2019. [See Dkt. No. 141-1 ¶ 8.]

The Court ordered Defendants to search all devices in Defendants' possession, custody, or control that were used by “Celia Yang” and the two individuals identified by Defendants as employees or agents who also used the name “Celia.” The Court further ordered that if Defendants do not have in their possession, custody, or control any digital devices that were used by Celia Yang, or the two individuals who also used the name “Celia,” Defendants shall certify in response to Plaintiff's discovery requests. [Dkt. No. 129 at 1-2.] The Court deferred ruling on whether to add “Celia” as a search term. [Id. at 3-4.] The Court ordered the parties to meet and confer by January 18 and notify the Court of any remaining disputes. [Id. at 5.]

Plaintiff requests the Court to compel Defendants to search all computing devices used by individuals “actually named ‘Celia,’ who have used the pseudonym ‘Celia,’ and/or who have used the ‘Celia’ messaging accounts.” [Dkt. No. 141 at 14.]

Defendants contend that they complied with the Court's Order and identified “Celia” and “Celia Xie” as the only other “sales agents who have ever identified themselves as ‘Celia’ when communicating with a customer or potential customer on Defendants' sales platform.” [See Dkt. No. 141-10 at 5.] Defendants further contend that their certified responses to Request for Production Nos. 52 and 53 explain this fact as well as the reasons why they do not have possession, custody, or physical control of any computing device utilized by “Celia Yang.” They also assert that their response explains why they have been unable to identify any computing device used by “Celia Xie” or “Celia.” [See Dkt. No. 141-11 at 5-7.] In other words, Defendants cannot be compelled to complete a search of these devices because they do not have any such devices in their possession, custody, or control. See, e.g., Travelers Indemnity Co. v. Goldman, 2020 WL 5372108, at *5 (C.D. Cal. 2020) (“Absent convincing evidence that responsive documents are being withheld or an interrogatory has not been fully answered, the Court cannot compel Defendants to produce documents it claims not to possess or control or answer interrogatories further that have been facially answered.”); Arcadian Capital, LLC v. Cura Partners, Inc., 2021 WL 1153356, at *3 (C.D. Cal. 2021) (following the well-settled rule that a “court cannot compel a party to produce documents based on the moving party's suspicion that they exist.”).

*4 Plaintiff argues that Defendants have not provided any information on what they did to try to locate the devices.

The Court certainly cannot order Defendants to search devices that are not in their possession, custody, or control. However, Plaintiff has proffered evidence, specifically sworn testimony from Leon Li, showing that numerous sales agents of Defendants use the name “Celia” and/or the “Celia” messaging accounts and that these “Celia” sales agents are (or were until very recently) employees of Defendants.[2] [Dkt. No. 141 at 8-11, 14-17.] Plaintiff has also presented evidence showing that Defendants' claim that the “Celia” who corresponded with Plaintiff's investigator was just one person named “Celia Yang” employed by a third-party named Hu Qian, not Defendants, is not credible.

Plaintiff asserts that Defendants' January 2022 production of instant messages involving a “Celia” undercuts their claim that “Celia Yang” was one person working for Hu Qian, and not Defendants. [Dkt. No. 141 at 10-11, 16-17.] Defendants produced nearly a hundred thousand instant messages from their internal chat system involving “Celia,” including conversations with thousands of customers, along with a list of all products purportedly offered on their website by Hu Qian. [Id. at 16, 141-1 ¶ 14.] According to Plaintiff, a preliminary comparison of these documents reveals that whoever “Celia” was, she or they corresponded with customers about hundreds, if not thousands, of different products sold by Defendants and not by Hu Qian. [Id.]

Defendants have failed to proffer any evidence to refute that “Celia Yang” is one or more employees of Defendants and have failed to provide any evidence to refute that numerous sales' agents use the name “Celia” or the “Celia” messaging accounts.

Plaintiff argues that searching the devices of all individuals who have identified as “Celia” is relevant and necessary to determine whether Defendants' conduct was willful. [Id. at 6.] It asserts that discovering the true identity(ies) and role(s) of those who communicated with Plaintiff's investigator under the name “Celia” is a crucial issue in this case because if any individual was employed by Defendants, that conduct could be imputed to Defendants. Moreover, one of Defendants' primary defenses to a finding that their counterfeiting was willful has consistently been that the individual was only Celia Yang, who they claim was employed by third-party Hu Qian.

*5 The Court agrees with Plaintiff and finds that, particularly in light of the order denying summary judgment for damages due to the contested issue of “Celia's” employment, the sought after discovery is relevant and proportional to the issues of the case, and that an additional search should be conducted to determine if responsive material exists.

Plaintiff also requests the Court to compel Defendants to add “Celia” to their list of search terms, particularly for custodians not actually named “Celia.” [Dkt. No. 141 at 18.] Defendants maintain that whoever identified as “Celia” when communicating with Plaintiff's investigator is not and was not an employee or agent of Defendants. [Id.] Plaintiff argues that including “Celia” in the search terms is imperative so that the search can capture and help Plaintiff identify all individuals who have actually used that name, in order to refute Defendants' claims. [Id.] Defendants disagree and argue that Plaintiff's demand that Defendants search its systems and certain custodians' devices for the term “Celia” is overbroad, would encompass substantial irrelevant information, and is not proportional to the needs of this case. [Dkt. No. 143 at 13-14.]

Plaintiff has proffered evidence, demonstrating that responsive communications and documents between “Celia” and Plaintiff's investigator exist, but are missing from Defendants' production. [Dkt. No. 141 at 7, 17, 19.] The Court finds that Plaintiff has a colorable basis for its belief that relevant, responsive documents exist and are being improperly withheld. Defendants' objections to add “Celia” to the search list are overruled.

On September 24, 2021, Plaintiff served Defendants with Request for Production, Set One, which sought inspection of all computer devices assigned to or used by Meera Jin for work purposes (“RFP No. 30”). [Dkt. Nos. 141-1 ¶ 2, 141-3 at 21.] Defendants' November 8, 2021 responses objected to this request but stated they were willing to meet and confer regarding the scope of RFP No. 30. [Dkt. No. 141-3 at 21.] On December 9, 2021, during a meet and confer, Defendants explained that they would not search Jin's devices, claiming that she was no longer employed by Defendants. [Dkt. No. 141-1 ¶ 8.] After hearing argument at the informal discovery conference on January 3, 2022, the Court ordered Defendants to search for and produce responsive content on Jin's devices, or certify that they did not have possession, custody, or control of responsive content or the devices assigned to or used by Jin. [Dkt. No. 129 at 2.]

On January 6, 2022, Defendants served a supplemental response to RFP No. 30 stating that Jin was not employed by Defendants at the time they were served with this suit (April 2021) and that they “have no record of any company computer or device that might have been used by her. Defendants do not track such computing devices in such manner in the normal course of business.” [Dkt. No. 141-12 at 24.]

Plaintiff disputes the claim of Jin's employment status, noting that Defendants did not dispute that Jin was presently employed by them as of their August 2021 opposition to Plaintiff's motion for summary judgment. [Dkt. No. 141 at 20.] Plaintiff also asserts that Defendants have not produced any responsive communications involving Jin despite the undisputed fact that Jin did communicate with Plaintiff's investigator during his investigation. [Id. at 21.]

*6 Plaintiff now seeks an order compelling Defendants to search Jin's devices again or provide verified information about when Jin's employment ended and what happened to the devices assigned to or used by this individual. Defendants' current position is that they erred in August 2021 by failing to dispute Plaintiff's use of the present tense when Plaintiff stated Jin “is” an employee of Defendants. [Dkt. No. 143 at 11.] Defendants contend that the error was minimal because Jin's employment status as of August 2021 was “not material” for the purposes of Plaintiff's claims and that Defendants cannot produce what they do not have. [Id. at 12.] Finally, Defendants argue that Plaintiff's request for a statement of Jin's employment end date and the status of the devices is procedurally improper because it was not before the Court during the initial informal discovery conference. [Id. at 13.] For the reasons set forth below, the Court agrees with Plaintiff that Defendants must conduct another search for the devices and if none are found, Defendants must provide verified information as to when Jin's employment ended and what happened to her work computing devices.

“Mere suspicion” that a party has not adequately produced responsive documents is not sufficient to compel further discovery, though a court may order the producing party to certify by way of a sworn statement that, after a reasonable search, responsive documents do not exist within its possession, custody, or control or have already been produced to the moving party. UA Corp. v. UA Studios, LLC, No. 2:19-cv-00828-MWF-MAAx, 2019 U.S. Dist. LEXIS 231673, at *13-14 (C.D. Cal 2019). Further, the party must provide an adequate explanation as to the disposition of the documents. Id. For example, when an entity purges documents in the ordinary course of business, its declaration stating as such should describe the process followed, including dates of destruction. See Meeks v. Parsons, 2009 WL 3003718, at *5 (E.D. Cal. 2009).

As an initial matter, Defendants' characterization of Jin's employment status as of August 2021 as immaterial to the summary judgment motion is not relevant to the instant dispute.[3] Plaintiff has sufficient grounds to claim that Defendants should be in possession of responsive discovery regarding Jin and that Defendants' failure to account for Jin's employment status and more to the point, company devices, is concerning. Plaintiff's investigator communicated with Jin and others throughout the investigation. This is not disputed. Yet, Defendants have not produced any documentation of communications related to Jin. [Dkt. No. 141 at 21.] That the summary judgment order singled out Yang's employment as a key material fact that would tend to show willingness by Defendants if her actions could be imputed to them does not render irrelevant the communications between Plaintiff's investigator and other individuals who appeared to be acting on Defendants' behalf. Those communications are relevant, even if just to compare the interactions with Jin versus those with Yang.

Regardless of whether Jin was employed by Defendants at the time the lawsuit was filed or in August 2021, the Court has already found a search of digital devices in Defendants' possession, custody, or control that were used by Jin to be relevant, as evidenced by its order to Defendants to complete it in the first place. Defendants were to carry out that search, and if after a reasonable inquiry was completed, they found that they did not have possession, custody, or control of responsive material or of the devices, they were to certify to that fact with a sufficient explanation. See Meeks, 2009 WL 3003718, at *5 (“certification should include sufficient detail to demonstrate that they have conducted a search for information reasonably available to them”) (quotation omitted).

*7 Finally, Defendants assert that Plaintiff's request for verified information is procedurally improper because it was first raised in the motion to compel. In other words, there is no dispute because Defendants have not been served with a discovery request for verified information and thus, have not refused to respond. From counsel's declaration, it does not appear that Defendants have any objection other than ripeness on this issue. [See Dkt. No. 143-1 at 2-3.]

The Court has broad discretion in managing discovery including in fashioning a resolution that results in a speedy resolution. Here, Plaintiff has provided a reason to believe there is responsive material to its requests and that material has not been produced, nor has the source device been located. On this basis, the Court concludes that a further search for the devices and responsive material in Defendants' possession, custody, or control is necessary. Should Defendants be unable to locate any devices that were assigned to or used by Jin, they must certify to that and provide sufficient detail in their certification to show that a reasonable search was conducted, including when Jin stopped working for the company and what became of her devices after her departure.

Accordingly, the Court grants the motion to compel an additional search for devices used by Jin in Defendants' possession, custody, or control. If Defendants do not locate any devices, they must provide a certification containing the information regarding Jin's employment and the search.

On November 24, 2021, Plaintiff served Defendants with Requests for Production, Set Two, which included Requests for Production Nos. 35-40 (“RFP Nos. 35-40”) that sought production of documents related to other trademark infringement lawsuits filed against Defendants. [Dkt. No. 141-1 ¶ 4.]

RFP Nos. 35-40 are substantially similar:

[Dkt. No. 141-4 at 9-10.]

The six suits are: (1) Luxottica Group S.p.A. et al v. Yiwu Cute Jewelry Co., et al., Case No. 1:21-cv-05078 (N.D. Ill. 2021); (2) H-D U.S.A., LLC v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, Case No. 1:17-cv-00339 (N.D. Ill. 2021); (3) Swarovski Aktiengesellschaft et al. v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, Case No. 1:19-cv-06568 (N.D. Ill. 2019); (4) H-D U.S.A., LLC v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, Case No. 1:19-cv03546 (N.D. Ill. May 28, 2019); (5) Chrome Hearts LLC v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, Case No. 1:17-cv-04536 (N.D. Ill. 2017); (6) Chrome Hearts LLC v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, Case No. 1:17-cv-01109 (N.D. Ill. 2017). [Id.]

During the January 3, 2022 informal discovery conference, Defendants informed the Court that they would produce all default judgments, settlement agreements, and responsive pleadings that were not sealed in the above litigations. The Court deferred its ruling as to other documents but ordered the parties to further meet and confer after Defendants' production of these documents. Plaintiff was ordered to review the production to determine whether there were any specific communications that it believed were relevant and proportional. [Dkt. No. 129 at 4.]

*8 On January 10, 2022, Defendants produced settlement agreements and judgements from these lawsuits, as well as other court documents. [Dkt. No. 141-1 ¶ 14.] Plaintiff now moves for an order compelling production of additional documents, including settlement communications and e-mails from when Defendants were first alerted to their infringement. It asserts that these materials are evidence of past counterfeiting that would be relevant to damages and willfulness, and would disprove Defendants' argument that the sale of counterfeit products at issue in this case was an isolated mistake. [Dkt. No. 141 at 22-24.]

Defendants maintain that the requests are overbroad and irrelevant.

Federal Rule of Civil Procedure 34 governs requests for production of documents. The requesting party “is entitled to individualized, complete responses to each of the [Requests for Production] ..., accompanied by production of each of the documents responsive to the request, regardless of whether the documents have already been produced.” Louen v. Twedt, 236 F.R.D. 502, 505 (E.D. Cal. 2006).

When considering a motion to compel, the Court has broad discretion in determining relevancy. Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 635 (9th Cir. 2005) (citation omitted). Documents relating to other litigation against a defendant for similar acts of infringement may be relevant to willfulness. See Koninklijke Philips Elecs. N.V. v. KXD Tech., Inc., Nos. 2:05-cv-01532-RLH-GWF, 2:06-cv-00101-RLH-GWF, 2007 U.S. Dist. LEXIS 13956, at *24 (D. Nev. 2007).

Plaintiff argues that communications from these litigations, including those that occurred prior to and after the litigation, would assist in showing willfulness because a pattern of previous counterfeiting is relevant. It asserts that such evidence would support a higher damages award. That may be, but Defendants already agreed to produce certain documents from the six cases. Any finding of willful infringement would be reflected in the materials that Defendants have agreed to produce. Plaintiff must show the relevance of any additional documents it seeks. Plaintiff cites a footnote from a 2002 district court opinion as an example of a communication during settlement which evinced that Defendants' copyright infringement was a regular practice. [See Dkt. No. 141 at 23] (citing Stevens v. Aeonian Press, Inc., No. 00 CIV. 6330 (JSM), 2002 WL 31387224, at *3 n.1 (S.D.N.Y. 2002)). This example appears to be unique to the circumstances of that case, which involved reprinting books without the permission of the copyright holder. The evidence was a letter from one of the defendants to counsel for plaintiff in a different litigation expressing the defendant's experience that copyrights were often not renewed after publishing houses went out of business and that the onus was on the holder to assert its rights. Id. The other cases Plaintiff cites only stand for the proposition that evidence of previous infringement suits is relevant, not that certain communications are particularly relevant.

Plaintiff's second argument is that evidence of past counterfeiting would disprove Defendants' defense that the infringement in this case was an isolated mistake. Again, Plaintiff does not specify what it is looking for in this request that is not contained in the materials already produced. Plaintiff's citation to Burberry Ltd. v. Salim, 2013 WL 12146120, at *4 (C.D. Cal. 2013), is unhelpful. There, the court relied upon a lawsuit initiated by Versace and a cease and desist letter sent by Coach, Louis Vuitton, and Chanel to find that the defendant's infringement on Burberry's products was willful. It is unclear if Plaintiff expects to find such a letter if their discovery request is granted but even if it does, it is even less clear how that letter would be more relevant than the fact of the suits themselves. In Burberry, the letter was a stand alone piece of evidence; it was unrelated to any specific suit but on its own tended to show that the defendant had previously infringed on established brands' products. Here, the suits themselves are evidence of that.

*9 Nor does the Court understand the relevance of any e-mails from the six cases which would show the timing of when Defendants became aware of their infringement in those matters. Plaintiff has not articulated any basis for relevance beyond that the e-mail would assist in proving that Plaintiff previously infringed on another brand willfully. That would already be shown from the documents produced by Defendants and Plaintiff has not argued to the contrary.

Without a more specific explanation of relevance, the Court finds that the request is overbroad and it will not authorize a fishing expedition into separate lawsuits, especially with respect to communications that occurred during settlement. It also recognizes the potential for endless discovery if it should further open the door into these other litigations and agrees with Defendants that re-litigating allegations of willfulness in other cases would be improper.

However, Defendants' argument that responding to these requests would be unduly burdensome is rejected because Defendants have failed to submit anything in support beyond conclusory assertions.

Finally, Plaintiff takes issue with a portion of the production which it says appears to have been downloaded from PACER. None of this should be a surprise, however. During the January 3 conference, counsel for Defendants discussed the likelihood that the pleadings to be produced would likely be accessible to Plaintiff via PACER and that Defendants' production of these materials would consist of downloading them from the online docket. Finally, Plaintiff has made no specific argument as to the inadequacy of any of the individual pleadings that were produced for the purposes of willfulness or disproving Defendants' defense.

Accordingly, the motion is denied as to compelling additional production of documents from the other six enumerated lawsuits.

In addition to an order compelling the production of documents related to the six enumerated litigations, Plaintiff also seeks an order to Defendants to use search terms capturing the brands from the unrelated litigations. Specifically, Plaintiff wants Defendants to search using the terms “Oakley,” “Ray-Ban,” “Harley,” “Swarovski,” “Chromehearts,” and “Chrome Hearts.” The Court previously deferred its ruling on these terms so that the parties could meet and confer once more in an attempt to reach agreement. [Dkt. No. 129 at 3.] The parties were specifically ordered to address relevance of the terms, and Defendants were to provide evidence supporting its argument of burden should they be required to use the terms. [Id. at 4.]

The terms Oakley, Ray-Ban, Harley, Swarovski and Chromehearts are the brand names of the infringed products in the other lawsuits. Chrome Hearts appears to be a variation and was not included in the original dispute, but the Court will address it along with the other terms.

Defendants argue that the lawsuits, rather than the brands, are what are relevant and assert that use of the terms would result in an undue burden. As to relevance, the Court agrees. The lawsuits themselves are what is relevant to show willfulness and prove up Plaintiff's case for damages. Defendants have produced certain categories of documents that the Court previously found would serve that purpose. Any relevance of the individual terms becomes minimal once the potential categories of discovery are narrowed because Defendants now know what they are to produce. The use of the brand names as terms would only widen the search to a degree that it would include other non-counterfeit products, other brands that describe themselves by comparison to the target brands, and any discussions by any employee, seller, or customer of the target brand. These categories would reach to documents that are far beyond the scope of the original request. As a result, there is minimal relevance and the requests are overbroad.

*10 Additionally, as the Court has already stated, Defendants produced documents from these lawsuits which would satisfy Plaintiff's request. Rule 26(b) contains enumerated factors to consider when analyzing the proportionality of a discovery request, one of which is “the importance of the discovery in resolving the issues.” Fed. R. Civ. P. 26(b)(1). Without more than a showing of hypothetical relevance, the Court finds that the use of these terms to capture any additional materials would do little to accomplish that goal and therefore, the request is disproportionate to the needs of the case. See Blackberry Ltd. v. Facebook, Inc., 2019 WL 4544425, at *7 (C.D. Cal. 2019) (“[P]roportionality must be assessed by considering the specific context of the custodian and/or repository against which the search terms will be applied.”).

However, Defendants' burden argument is not compelling given the Court's specific order to address any objection on this ground with evidence. See Walker v. Life Ins. Co., 2018 WL 5905121, at *2 (C.D. Cal. 2018). While the Court can envision the potential burden of an online retailer having to search its systems using terms of well-known brands such as Oakley, Defendants fail to make any evidentiary showing to support their argument.

Accordingly, Plaintiff's motion to compel use of the search terms Oakley, Ray-Ban, Harley, Swarovski, Chromehearts, and Chrome Hearts is denied.

IV. Order

Based on the information provided to the Court, Plaintiff's motion to compel is granted in part and denied in part. For the reasons set forth above, the Court orders as follows:

A. By March 9, 2022, Defendants will provide a Supplemental Response to Plaintiff's Interrogatory No. 19 that accurately identifies all individuals employed or who have otherwise worked for Defendants: (1) who are actually named “Celia”; (2) who have used the pseudonym “Celia”; and/or (3) who used the “Celia” messaging accounts, from January 1, 2019, to the present;

B. Defendants will search all company systems and computing devices used for work purposes by all individuals identified in Defendants' Supplemental Response to Interrogatory No. 19 for documents responsive to Plaintiff's Requests for Production Nos. 52 and 53, including using the approved search terms, and by March 16, 2022, will produce to Plaintiff all non-privileged responsive documents. Defendants will use “Celia” as a search term on all company systems and computing devices used by anyone not actually named “Celia”;

C. If Defendants no longer have possession, custody, or control over any of the computing devices used by any of the individuals identified in Defendants' Supplemental Responses to Interrogatory No. 19, then by March 9, 2022, Defendants will provide Plaintiff a sworn declaration by Defendants Andy Chou based on all information known or available to Defendants that explains: (1) exactly when each individual's employment by Defendants started and ended; (2) for each individual, what device(s) they used for work for Defendants; and (3) specifically what happened to each such work computing device;

D. Defendants will conduct another search for devices and material responsive to Plaintiff's Request for Production No. 30, and by March 16, 2022, will produce to Plaintiff all non-privileged responsive documents;

E. If Defendants no longer have possession, custody, or control over any of the computing devices assigned to or used by Meera Jin, then by March 9, 2022, Defendants will provide Plaintiff a sworn declaration by Defendant Andy Chou based on all information known or available to Defendants that explains: (1) exactly when Jin's employment by Defendants ended; (2) what device(s) she used for work during her employment; (3) specifically what happened to such work computing device(s); and (4) their efforts to locate any such device(s).

*11 IT IS SO ORDERED.