*1 This matter came before the Court on Plaintiff Vivint, Inc.’s (“Vivint”) Short Form Discovery Motion to Compel Deposition Testimony. (ECF No. 144.) On January 17, 2018, Vivint deposed Defendant NorthStar Alarm Services, LLC's (“NorthStar”) corporate representative. Vivint now seeks an order from the Court compelling NorthStar to reappear for a second deposition to respond to certain topics. At the February 20, 2018 hearing on this Motion, the Court asked the parties to submit further briefing on certain issues related to Vivint's Motion. Having considered the briefing submitted by the parties and arguments of counsel at the hearing, the Court GRANTS IN PART and DENIES IN PART Vivint's Motion.

Issue 1 – NorthStar's Annual Sales/Revenues

Vivint seeks an order compelling NorthStar to reappear at its deposition to answer questions regarding its total annual revenues from 2013 to 2017. (ECF No. 144 at 1–2.) Topic 19 of Vivint's Fourth Amended Notice of 30(b)(6) Deposition of NorthStar identifies the following as a topic for the deposition: “The total revenues NorthStar has received for years 2013 through 2017.” (ECF No 144-1 at 4, ¶ 19.) Prior to NorthStar's deposition, NorthStar objected to this topic on relevancy and proportionality grounds and informed Vivint it would not designate a witness to answer questions regarding annual revenues. Vivint argues that NorthStar's annual revenues are relevant to both its Lanham Act disgorgement claim and punitive damages claim. NorthStar counters that Vivint did not include the topic in its 30(b)(6) deposition notice before fact discovery closed and did not include it in a deposition notice until January 4, 2018, months after the October 20, 2018 fact discovery deadline passed. NorthStar claims it only agreed to reschedule the 30(b)(6) depositions until after the close of fact discovery but never agreed that the scope of those notices could be expanded. NorthStar asks this Court to deny Vivint's request to re-depose its 30(b)(6) witness on this topic on untimeliness grounds. NorthStar also argues that the topic is overbroad, unduly burdensome, irrelevant, and not proportional.

Parties often agree to reschedule specific depositions after the close of fact discovery. Further, NorthStar's Notices of 30(b)(6) Deposition served prior to the close of fact discovery contain a topic seeking testimony on NorthStar financial records from January 15, 2015 to the present date. (See ECF No. 146-1 (Topic 33); ECF No. 146-2 (Topic 31); ECF No. 146-3 (Topic 31); ECF No. 146-4 (Topic 31).) The Fourth Amended Notice includes that topic at Topic 34. (ECF No. 144-1, ¶ 34.) NorthStar did not object to that topic. (See ECF No. 146-6.) That topic seeks testimony on financial records, including profit and loss statements, statements of revenue, balance sheets, and statements of cash flow from 2015 to the present, while Topic 19 seeks testimony solely concerning total revenues from 2013 to 2017. The questions asked at the deposition that NorthStar's witness could not answer concerned the total revenues for 2016 and 2017.

*2 The Court finds that NorthStar's total revenues for 2013 through 2017 are not proportional to the needs of its Lanham Act claim. See Fed. R. Civ. P. 26(b)(1) (stating that parties may conduct discovery on “any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case ...”). While a plaintiff may seek disgorgement of profits as a remedy under the Lanham Act, that remedy must “constitute compensation and not a penalty.” 15 U.S.C. § 1117(a). Further, the plaintiff bears “the burden of establishing the defendant's gross profits [(total sales)] from the infringing activity with reasonable certainty.” Klein-Becker USA, LLC v. Englert, 711 F.3d 1153, 1163 (10th Cir. 2013) (emphasis added) (alteration in original) (quoting Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1408 (9th Cir. 1993), abrogated on other grounds by SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179 (9th Cir. 2016)). Only then does the burden shift to the defendant to establish the amount of gross profits that are not attributable to the infringing activity. See Lindy Pen, 982 F.2d at 1408 (stating that after “establishing the defendant's gross profits from the infringing activity with reasonable certainty ... [t]he defendant thereafter bears the burden of showing which, if any, of its total sales are not attributable to the infringing activity, and, additionally, any permissible deductions for overhead.”).

As NorthStar points out, the alleged false advertising in this case relates to door-to-door sales made to 216 Vivint customers, and Vivint has already questioned NorthStar's 30(b)(6) witness on revenues relating to those customers. Indeed, at the hearing, Vivint directed the Court to its Amended Complaint showing that the claims in this case are limited to allegedly false representations made to certain Vivint customers. (See ECF No. 11, Am. Compl., ¶ 33 (“With full knowledge of Vivint's alarm services agreements with its customers (‘Customer Contracts’), Northstar and its representatives have engaged in a campaign to target and improperly solicit Vivint's customers by making misrepresentations to Vivint customers.”), ¶ 34 (“Specifically, Northstar has made at least the following false statements and misrepresentations to Vivint's customers ...”). The allegations do not make claims about sales to all potential customers or any customers other than Vivint's. Under these circumstances—which differ significantly from Lanham Act false advertising cases involving dissemination of allegedly false information through mass advertising to tens of thousands of consumers—NorthStar's total revenues from 2013 through 2017 are not proportional to the needs of this case. Vivint could not recover NorthStar's total revenues under the Lanham Act's disgorgement remedy because a plaintiff can only obtain gross profits resulting from the infringing activity. Accordingly, Vivint's Lanham Act claim does not provide a basis to compel testimony from NorthStar's 30(b)(6) witness on the company's total revenues for 2013 to 2017.

Vivint also argues that NorthStar's total revenues for 2013 to 2017 relate to its punitive damages requests under its state law causes of action and therefore supports its request to obtain testimony from NorthStar's 30(b)(6) witness on this topic. NorthStar counters that Vivint's punitive damages claims do not warrant further testimony because under Utah law, a party is not entitled to obtain discovery regarding an opposing party's wealth or financial condition until “after the party seeking punitive damages has established a prima facie case on the record that an award of punitive damages is reasonably likely against the party about whom discovery is sought and, if disputed, the court is satisfied that the discovery is not sought for the purpose of harassment.” Utah Code Ann. § 78B-8-201(2)(a). As Vivint correctly points out, this district has concluded that state discovery rules such as this do not apply in federal court. See, e.g., Free Conference Call Holdings, Inc. v. Powerhouse Commc'ns, LLC, No. 2:07-CV-893-CW, 2009 WL 2916749, at *2 (D. Utah Sept. 8, 2009) (unpublished) (finding the requirement that a plaintiff establish a prima facie case that an award of punitive damages is reasonably likely applies to the admissibility of evidence, not its discoverability and that “discovery is a procedural matter that is governed in federal court by the Federal Rules of Civil Procedure” making “state discovery practices [ ] usually irrelevant.’ ”) (quoting Mid Continent Cabinetry, Inc. v. George Koch Sons, Inc., 130 F.R.D. 149, 151 (D. Kan. 1990)).

*3 However, only current financial information is relevant to punitive damages claims. See, e.g., Utah Code Ann. § 78B-8-201(2) (stating that evidence of a “party's wealth or financial condition” is relevant to punitive damages); Roberts v. C.R. England, Inc., No. 2:12-CV-0302, 2018 WL 1305058, at *2 (D. Utah Mar. 12, 2018) (unpublished) (finding that discovery concerning a defendant's “current net worth or financial condition” is relevant to a punitive damages claim); Heartland Surgical Specialty Hosp., LLC v. Midwest Div., Inc., No. 05-2164-MLB-DWB, 2007 WL 950282, at *12 (D. Kan. Mar. 26, 2007) (unpublished) (limiting production of financial information to support a punitive damage claim to “most recent annual reports and current financial statements”); E.E.O.C. v. BCI Coca-Cola Bottling Co., No. CIV-02-1644 JB/RJS, 2008 WL 2229553, at *10 n.2 (D.N.M. Feb. 14, 2008) (unpublished) (“Relevant financial information, as it pertains to punitive damages, is current financial information ...”).

Vivint's Motion seeks to compel testimony concerning current and historical financial information, namely NorthStar's total revenues for 2013 through 2017. The previously noticed topic seeking testimony on NorthStar financial records from January 15, 2015 to the present appears to be the 30(b)(6) topic relevant to the punitive damage claim. NorthStar did not object to this topic of inquiry in the objections it sent Vivint prior to the deposition. Furthermore, Vivint only inquired about the 2016 and 2017 revenues during the deposition.

Therefore, under these circumstances, the Court will order NorthStar to a second 30(b)(6) deposition on this basis.

Accordingly, the Court GRANTS Vivint's request to compel further 30(b)(6) deposition testimony from NorthStar's representative on NorthStar's total revenues from 2016 and 2017.

Issue 2 – Testimony Regarding Disciplinary Actions

Vivint also seeks to compel testimony concerning two spreadsheets (NS_VIV_05410-11) that NorthStar produced during discovery which document deceptive sales complaints against NorthStar sales representatives and the corresponding disciplinary action NorthStar imposed. (ECF No. 144 at 3.) Vivint states that NorthStar's representative did not recognize the spreadsheets at the deposition and claims that the witness should have been prepared to testify as to the spreadsheets given Topics 5 through 7 of the 30(b)(6) Notice of Deposition. Topics 5 through 7 seek testimony on the following topics:

(ECF No. 144-1 at 2–3, ¶¶ 5-7.)

The Court reviewed the 30(b)(6) deposition transcript, which NorthStar's counsel submitted to chambers for an in camera review. NorthStar's 30(b)(6) representative testified concerning the NorthStar employees involved in decisions regarding discipline, the disciplinary process at NorthStar, and the process for handling complaints regarding NorthStar representatives. Those topics fell within the scope of the 30(b)(6) notice, and the witness provided testimony on those topics. As Vivint points out, the witness did not recognize the spreadsheets at issue in Vivint's Motion. However, the noticed topics do not identify the spreadsheets specifically. Had Vivint wanted specific testimony on these documents in particular, it should have provided the document numbers of the documents as it did on other topics. Based on its review of the deposition transcript, the Court finds that NorthStar adequately prepared its 30(b)(6) witness on the noticed topics and declines to compel NorthStar to reappear for deposition concerning the spreadsheets.

*4 Accordingly, the Court DENIES Vivint's request to compel further 30(b)(6) deposition testimony from NorthStar's representative on the spreadsheets (NS_VIV_05410-11) at issue in Vivint's Motion.