*1 Plaintiff Canon USA (“Plaintiff” or “Canon”) commenced this against Defendants alleging violation of its trademark rights in the Canon name. Second Amended Complaint (“SAC”), Docket Entry (“DE”) 36, at ¶ 2. Briefly stated, Canon alleges that Defendants’ marketing of “gray market” goods constitutes infringement, unfair competition, the use of false designations of origin and false descriptions and representations in violation of both Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), and common law.[1]

Presently before the Court is Canon's motion for reconsideration of a discovery order set forth in a Civil Conference Minute Order dated January 12, 2017 (the “Order”). DE 68. Counsel were granted leave to submit briefs on the motion, and it is now ripe for adjudication. For the reasons set forth below, the motion for reconsideration is granted to the extent that the scope of discovery going forward shall include all Canon branded cameras and camera equipment marketed and sold by Defendants that were intended for use or resale in either Asia or Europe, purchased abroad, then re-sold in the United States. That scope includes cameras identified as exhibits to the Amended Complaint, those subsequently identified by Canon and all other products within this definition that were sold in the five year period prior to commencement of this lawsuit.

I. The Complaint

As noted, Plaintiff alleges that Defendants’ unlawful conduct stems from their marketing of alleged gray market goods. Such goods are generally defined as those that “are manufactured [under authorization from the trademark owner], are legally purchased [outside of the United States] ... and are then imported by persons other than the trademark holder and without the markholder's permission.” Zino Davidoff SA v. CVS Corp., 571 F.3d 238, 241 (2d Cir. 2009) (quoting, Olympus Corp. v. United States, 792 F.2d 315, 317 (2d Cir. 1986)). The marketing of such goods can constitute unfair competition in violation of the Lanham Act where, inter alia, the goods “differ materially from the product authorized by the trademark holder.....” Id. at 243.

Plaintiff here is the exclusive licensee of the “Canon” mark for use in the United States. It alleges that certain of its products, referred to as “Genuine Canon Products,” are manufactured for use in the United States. Such products are sold in this country through a nationwide network of Canon-authorized retail dealers. Defendants are not Canon-authorized dealers. Canon alleges that they have purchased Canon-branded cameras and photographic equipment that were intended for sale only in Asia or Europe. They are further alleged to have then re-sold those products in the United States. Canon alleges that the sale of such gray market goods is unlawful because the products are materially different from Genuine Canon Products that are sold by authorized Canon retail dealers for sale in the United States. Specifically, Canon alleges that the gray market goods differ from Genuine Canon Products in several respects, including, the facts that the gray market goods:

See generally SAC DE 36 at ¶¶ 61-82.

The Second Amended Complaint includes exhibits of alleged gray market goods. Each such exhibit is referred to as setting forth examples of Defendants’ unfair marketing and sales. E.g., SAC DE 36 at ¶66 (referring to Exhibit 3 “by way of example only” as a Gray Market Camera purchases in November of 2014); ¶70 (referring to Exhibit 4 “[b]y way of further example” a warranty accompanying a Gray Market Camera purchased in November of 2014); ¶73 (referring to Exhibit 5 “[b]y way of example only” as a Gray Market Camera body purchased in June of 2014 that was sold in packaging intended for a full camera kit); ¶76 (referring to Exhibit 6 “[b]y way of example only as depicting a gray market camera purchased in February 2015, that includes a photocopied manual, and “not the genuine manual”); ¶79 (referring to Exhibit 8 “[a]s an illustration” of a gray market camera purchased in June 2014 “accompanied by a battery charger power cord that is manufactured by a third party ....”); ¶81 (referring to Exhibit 9 “[a]s a further illustration” of a gray market camera purchased in May 2016 “accompanied by a battery charger that lacks” a certain certification). Each of the aforementioned examples and illustrations are set forth in support of Canon's claims that Defendants have marketed gray market cameras and camera equipment that are materially different from Canon products that are properly marketed in the United States by authorized Canon retailers.

By way of relief, Canon seeks a permanent injunction enjoining Defendants from the further marketing and sale of the gray market goods. Plaintiff also seeks an accounting of Defendants’ profits arising from the sale of such goods, as well as an award of actual damages, attorneys’ fees costs and disbursements.

II. Prior Proceedings

A. The Initial Conference and Extensions of Discovery

This Court held an initial conference on February 25, 2016. Plaintiff made clear the allegations of the SAC, as set forth above. Defendants denied those allegations and, in particular, the allegation that it was engaged in the marketing of goods that are materially different from those marketed by Canon authorized retailers in the United States. See generally Transcript of Initial Conference, DE 32 at 1-8. Defendants also stated that they would be raising defenses sounding in waiver and estoppel based upon the allegation that Canon has known about the marketing of gray market goods for years. DE 32 at 14.

On the day of the conference, this Court entered an order directing Plaintiff to provide a list of all products alleged to have been improperly marketed by Defendants, as well as the grounds for Plaintiff's belief that such products are either “counterfeit,” or materially different from those sold by authorized Canon retailers. DE 29. The parties agreed upon a discovery schedule. That schedule has been extended, with the agreement of this Court, to meet the needs of this case. See DE 53 (extending discovery through January 17, 2017); DE 64 (extending fact discovery to March 1, 2017 and all discovery to May 26, 2017); DE 74 (extending fact discovery to May 15, 2017 and all discovery to August 9, 2017).

B. The Present Dispute

*3 The dispute forming the basis of the present motion was raised by way of a telephone discovery conference held on January 2, 2017. DE 68. The Order memorializes the Court's rulings. Among other things, this Court directed that discovery be limited, at this time, “to the camera models that Plaintiff has identified in this matter.” DE 68. The Court noted Plaintiff's objection to this ruling and gave Plaintiff leave to brief the issue. Id. Thereafter, Canon submitted a letter seeking to broaden the scope of discovery beyond the products referred to in the Order. DE 69. Defendants submitted a letter in support of continuing to limit discovery. DE 71.

I. Legal Principles: Scope of Discovery and the Court's Discretion

The scope of discovery is set forth in Rule 26 of the Federal Rules of Civil Procedure. While the scope of discovery is recognized as broad, a party seeking discovery “must make a prima facie showing that the discovery sought is more than merely a fishing expedition.” Sky Medical Supply, Inc. v. SCS Support Claim Servs., Inc., 2016 WL 4703656 * 2 (E.D.N.Y. September 7, 2016) (citations omitted).

Rule 26 has been amended, on several occasions, to reflect evolving judgments as to the proper scope of discovery. Over time, these amendments have been aimed at striking the proper balance between the need for evidence, and the avoidance of undue burden or expense. Sibley v. Choice Hotels Internat'l., 2015 WL 9413101 *2-3 (E.D.N.Y. December 22, 2015). The December 2015 amendment to Rule 26 now defines the scope of discovery to consist of information that is relevant to the parties’ “claims and defenses.” Thus, the discretionary authority to allow discovery of “any matter relevant to the subject matter involved in the action” has been eliminated. Additionally, the current version of Rule 26 defines permissible discovery to consist of information that is, in addition to being relevant “to any party's claim or defense,” also “proportional to the needs of the case.” Id. “Proportionality focuses on the marginal utility of the discovery sought.” Vaigasi v. Solow Mgmt., Corp., 2016 WL 616386 *14 (S.D.N.Y. February 16, 2016) (citations omitted). The greater the relevance of the information sought, the less likely the discovery thereof will be deemed disproportionate. Id.

When applying these principles the trial court is granted discretion and “broad latitude to determine the scope of discovery and to manage the discovery process.” Sky Medical Supply, 2016 WL 4703656 * 2 (E.D.N.Y. September 7, 2016) (citing EM Ltd. v. Republic of Argentina, 695 F.3d 201, 207 (2d Cir. 2012)) (citing In re Agent Orange Prod. Liab. Litig., 517 F.3d 76, 103 (2d Cir. 2008)); Coggins v. Cnty. of Nassau, 2014 WL 495646, at *2 (E.D.N.Y. Feb. 6, 2014); see also Mirra v. Jordan, 2016 WL 889683, at *2 (S.D.N.Y. Feb. 23, 2016) (“[m]otions to compel are left to the court's sound discretion.”); Liberty Mut. Ins. Co. v. Kohler Co., 2010 WL 1930270, at *2 (E.D.N.Y. May 11, 2010) (“[A] motion to compel is entrusted to the sound discretion of the district court.”). This Court has exercised that discretion to allow discovery to proceed in phases. Such an approach is aimed, inter alia, at targeting discovery and limiting costs, with an eye toward an earlier and less costly disposition of litigation.

II. Disposition of the Motion to Reconsider

As noted, Plaintiff's claims allege that Defendants have imported cameras bearing the Canon name from Asia and Europe and then re-sold those products in the United States. The SAC includes, as exhibits, examples of purchases made that are alleged to support its claims. Upon review of the SAC, as set forth above, it is clear that the cameras, products and literature annexed as exhibits were attached to demonstrate examples of Defendants’ alleged unlawful conduct. Following the initial conference this Court directed Canon to produce further examples, within its knowledge, of Defendants’ alleged marketing of gray market goods.

*4 The examples provided by Plaintiff support, but do not limit, Canon's claims. Instead, Plaintiff's claims, as set forth in the SAC, are broadly alleged to cover all Canon branded cameras and camera equipment, sold for sale in Asia and Europe, but imported and resold in the United States by Defendants. Thus, Plaintiff's claims are broader that those specific examples within its knowledge. The scope of relevant material is thus as broad as Plaintiff's claims, and not so narrow as to encompass only those products referred to as examples within Plaintiff's knowledge.

While it may have been appropriate to limit the scope of discovery early in this matter, the date for completion of fact discovery has, as noted above been extended three times. This case is now seventeen months old, it is over one year since the initial conference was held, and it is nearly one year since the filing of the SAC. The purpose of limiting discovery in the hope of limiting costs and fostering early resolution is no longer a strong factor in this Court's management of discovery. The overall scope of Plaintiff's claims justifies broader discovery than that set forth at the initial conference and in the Order. Thus, upon its further review of the scope of Canon's claims, and in recognition of the fact that the parties are already well into the discovery process, the grants Canon's motion to reconsider the prior limit of discovery. The Court therefore now holds that discovery in this case should not, at this juncture be limited to those products identified early in this litigation by Canon. Instead, discovery may now be expanded to include all camera and camera-related products bearing the Canon name that were manufactured for sale in Asia and Europe but sold by Defendants in the United States.

For the foregoing reasons, the motion to reconsider this Court's Civil Minute Order dated January 12, 2017 is granted and the scope of discovery is expanded as set forth above.