*1 Plaintiff Q Industries, Inc. alleges claims of trademark infringement, false designation of origin and false descriptions, unfair competition under California Business and Professions Code §§ 17200, et seq., and common law trademark infringement and unfair competition against O'Reilly Automotive, Inc., O'Reilly Auto Enterprises LLC, O'Reilly Automotive Stores, Ozark Purchasing, LLC (collectively, the “O'Reilly Defendants”), and Test-Rite Products Corp. (“Test-Rite”). (“Second Amended Complaint” or “SAC,” Dkt. No. 88). Plaintiff is a manufacturer that has designed and manufactured portable 12-volt air compressors under the SuperFlow and MasterFlow brands since 2005, and under the Air Armor® Special Ops brand since 2015. (Id. ¶ 13).

Pending before the Court is Plaintiff's Motion to Compel [Production of] Defendant Test-Rite Products Corp.'s Documents Responsive to Plaintiff's Subpoena for the Production of Documents. (“Motion” or “MTC,” Dkt. No. 115). The parties submitted a Joint Stipulation in connection with the Motion pursuant to Local Rule 37-2, (“Jt. Stip.,” Dkt. No. 114), including the Declaration of Brent H. Blakely in support of the Motion, (“Blakely Decl.,” Dkt. No. 116), and the Declaration of Warren Bleeker in opposition to the Motion. (“Bleeker Decl.,” Dkt. No. 117). Both Plaintiff and Test-Rite submitted a Supplemental Memorandum as permitted by Local Rule 37-2.3, including a Supplemental Declaration of their respective counsel. (See “P Supp. Memo.,” Dkt. No. 122; “Blakely Supp. Decl.,” Dkt. No. 122-1; “D Supp. Memo.,” Dkt. No. 121; “Bleeker Supp. Decl.,” Dkt. No. 121-1). Because Plaintiff's Supplemental Memorandum sought, for the first time, production of emails from an employee of Test-Rite's parent company, Test-Rite requested, (Dkt. No. 125), and the Court granted, (Dkt. No. 128), permission to file a response to Plaintiff's Supplemental Memorandum. Test-Rite then filed a Supplemental Response to Plaintiff's Supplemental Brief, (“D Supp. Response,” Dkt. No. 130), supported by the declaration of Test-Rite's president, Kelly Ho. (“Ho Decl.,” Dkt. No. 130-1).

The Court held a hearing on the Motion on June 13, 2023, at which counsel for Plaintiff and Test-Rite appeared in person, and counsel for the O'Reilly Defendants, with the Court's permission, appeared via Zoom. (See Dkt. No. 136). It became apparent at the hearing that the Joint Stipulation, despite its length, did not accurately or coherently set forth the parties' disputes. Accordingly, on June 14, 2023, the Court ordered further briefing, noting that “[t]he parties continued to argue past each other at the hearing, where they raised new facts -- and in Plaintiff's case, cited new, allegedly ‘dispositive’ case law unmentioned in the briefs -- in support of and in opposition to the Motion, which by then had become almost entirely untethered to the Joint Stipulation.” (“Order,” Dkt. No. 139 at 2). The Order required the parties to file Post-Hearing Supplemental Briefs addressing the specific issues that appeared to be the actual overarching discovery disputes, as best the Court could identify them.

*2 In compliance with the Court's June 14 Order, on June 20, 2023, Plaintiff filed a Supplemental Brief Pursuant to Court Order ECF No. 139. (“P Post-Hrg Brief,” Dkt. No. 150). The brief was supported by the declaration of Brent H. Blakely and accompanying exhibits, some of which, with the Court's permission, were filed under seal, along with an under seal version of the post-hearing brief. (“Blakely Post-Hrg Decl.,” Dkt. No. 153; under seal brief and exhibits, Dkt. No. 167).[1] Test-Rite also filed a Post-Hearing Supplemental Brief Per the Court's June 14, 2023 Order. (“D Post-Hrg Brief,” Dkt. No. 151). Test-Rite's brief was supported by the declaration of G. Warren Bleeker and accompanying exhibits, all of which were filed under seal with the Court's permission. (“Bleeker Post-Hrg Decl.,” Dkt. No. 151-1; under seal exhibits Dkt. No. 177).[2] The Court then took the matter under submission without further briefing or argument.

While this Motion was pending, the District Judge continued the discovery cut-off to August 31, 2023. (Dkt. No. 147 at 2). For the reasons stated below and on the record at the hearing, Plaintiff's Motion to Compel is GRANTED IN PART and DENIED IN PART.

Defendant O'Reilly Automotive, Inc.'s retail stores sold Plaintiff's Air Compressor products. Plaintiff asserts that in April 2020, Q Industries ceased selling its SPECIAL OPS ammo can air compressor to O'Reilly. (Jt. Stip. at 1). In October 2020, O'Reilly contracted with Test-Rite to make a replacement. (Id.). In November 2020, O'Reilly began selling the Power Torque Tools Portable Ammo Can Air Compressor (the “Accused Product”). (Id.). The Accused Product bore a SPECIAL OPS Mark. (Id. at 2).

Test-Rite asserts that it was merely a supplier of a private-label air compressor product to O'Reilly, per O'Reilly's specifications and final approval. (Id. at 5). After O'Reilly chose Test-Rite to supply the new O'Reilly private-label air compressor products, Test-Rite engaged a separate company, Cooper's Artworks, Inc. (“Cooper”), to work directly with O'Reilly on designing the artwork for the packaging and outer label. (Id. at 6). According to Test-Rite, Jeff Alexander, a manager at O'Reilly, asked Cooper to create a military look and feel, including the use of the terms “Military-Grade” and “Special Ops,” on this private label product for O'Reilly. (Id.). Test-Rite claims that it had no involvement in approving the graphics that included the term “Special Ops.” (Id.).

On October 31, 2022 Plaintiff served Test-Rite, which was then a non-party to this action, with a Subpoena for Documents. (Id. at 2). Test-Rite served responses and objections to the Subpoena on December 2, 2022. (Blakely Decl., Exh. C at 18). On February 24, 2023, Plaintiff filed the operative Second Amended Complaint naming for the first time Test-Rite and several additional O'Reilly entities as Defendants. (SAC at 1). Plaintiff and Test-Rite met and conferred throughout this period. According to Plaintiff, the parties “agreed that the initial production would include documents such as sales numbers that would facilitate the mediation that was to occur on March 29, 2023.” (Jt. Stip. at 2). The case did not settle on March 29, 2023, and on March 30, 2023, Plaintiff sent Test-Rite's counsel a Rule 37-1 letter challenging Test-Rite's objections to its production requests and demanding that it produce documents responsive to the Subpoena, now construed as a request for production of documents. (Blakely Decl., Exh. D). The parties conducted a telephonic conference of counsel on April 19, 2023. (Jt. Stip. at 3). As they addressed specific RFPs during their conference, Test-Rite's counsel stated that he was meeting with his client later that day and would respond thereafter. (Id.). Plaintiff told counsel that if no response was forthcoming, Plaintiff would be “forced” to move to compel further production by April 24, 2023. (Id).

*3 On April 25, 2023, Plaintiff served Test-Rite with its portion of the Joint Stipulation. (Bleeker Decl., Exh. 4 at 87). Test-Rite states that on that same day, it agreed to produce information newly-demanded by Plaintiff, and on April 27, it agreed to conduct “the new searches demanded by Plaintiff on the three employees directly involved in the supply of the accused product.” (Id. at 4) (emphasis in original). Also on April 27, Plaintiff's counsel requested an informal discovery conference with the Court. The Court scheduled the telephonic discovery conference for May 4, 2023. (Dkt. No. 109). Plaintiff did not withdraw the Joint Stipulation before the informal telephonic conference, which was held on the scheduled date.[3] The Joint Stipulation was filed on May 12, 2023. (Dkt. No. 114).

Federal Rule of Civil Procedure 26(b)(1), as amended on December 1, 2015, provides:

Fed. R. Civ. P. 26(b)(1).

Evidence is relevant if “it has any tendency to make a fact more or less probable than it would be without the evidence, and the fact is of consequence in determining the action.” Fed. R. Evid. 401. “The relevance standard is commonly recognized as one that is necessarily broad in scope in order ‘to encompass any matter that bears on, or that reasonably could lead to other matter that could bear on, any issue that is or may be in the case.’ ” Doherty v. Comenity Capital Bank & Comenity Bank, 2017 WL 1885677, at *2 (S.D. Cal. May 9, 2017) (quoting Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)); see also Sci. Games Corp. v. AGS LLC, 2017 WL 3013251, at *2 (D. Nev. July 13, 2017) (“Even after the 2015 amendments, courts continue to recognize that discovery relevance remains ‘broad’ in scope.”); Wagafe v. Trump, 2018 WL 348470, at *1 (W.D. Wash. Jan. 10, 2018) (“[T]the scope of discovery is broad.”). “Proportionality focuses on the marginal utility of the discovery sought.” In re Methyl Tertiary Butyl Ether Prod. Liab. Litig., 180 F. Supp. 3d 273, 280 n.43 (S.D. N.Y. 2016) (internal quotation marks and citation omitted).

While the scope of permissible discovery may be broad, because discovery must be both relevant and proportional to the needs of the case, the right to discovery, even plainly relevant discovery, is not limitless. The 2015 amendments to Rule 26 “were designed to protect against over-discovery and to emphasize judicial management of the discovery process, especially for those cases in which the parties do not themselves effectively manage discovery.” Noble Roman's, Inc. v. Hattenhauer Distrib. Co., 314 F.R.D. 304, 308 (S.D. Ind. 2016); see also Davita HealthCare Partners, Inc. v. United States, 125 Fed. Cl. 394, 398 (2016) (the 2015 amendments to the Federal Rules “contribute to the overall goal of regulating the time and expense of litigation”). However, the larger and more complex the case, the more even relatively voluminous discovery may be considered proportional. The party resisting discovery bears the burden of showing why discovery should not be allowed. Doutherd v. Montesdeoca, 2018 WL 3008867, at *2 (E.D. Cal. June 15, 2018) (citing Blankenship v. Hearst Corp., 519 F.2d 418, 429 (9th Cir. 1975)).

*4 Federal Rule of Civil Procedure 34 requires production of responsive documents “in the responding party's possession, custody, or control.” Fed. R. Civ. P. 34(a). “The phrase ‘possession, custody or control’ is in the disjunctive and only one of the numerated requirements need be met.” Soto v. City of Concord, 162 F.R.D. 603, 619 (N.D. Cal. 1995). “Control is defined as the legal right to obtain documents on demand.” United States v. Int'l Union of Petroleum & Indus. Workers, 870 F.2d 1450, 1452 (9th Cir. 1989).

Rule 34(b) requires the requesting party to describe the items to be produced with “reasonable particularity.” Fed. R. Civ. P. 34(b)(1). “The test for reasonable particularity is whether the request places a party upon reasonable notice of what is called for and what is not.” Bruggeman ex rel. Bruggeman v. Blagojevich, 219 F.R.D. 430, 436 (N.D. Ill. 2004) (internal quotation marks omitted); see also Regan-Touhy v. Walgreen Co., 526 F.3d 641, 649-50 (10th Cir. 2008) (“Though what qualifies as ‘reasonabl[y] particular’ surely depends at least in part on the circumstances of each case, a discovery request should be sufficiently definite and limited in scope that it can be said ‘to apprise a person of ordinary intelligence what documents are required and [to enable] the court ... to ascertain whether the requested documents have been produced.’ ”) (quoting Wright & Miller, 8A Federal Practice and Procedure § 2211, at 415).

Following a reasonable investigation to locate responsive materials, a responding party must serve a written response to each request either stating that it will produce copies of the documents requested or identifying the grounds for any objection. Fed. R. Civ. P. 34(b)(2)(B). The December 1, 2015 revisions to the Federal Rules amended Rule 34 to require that objections to requests for production be stated with specificity, and that the responding party affirmatively state whether any documents are being withheld pursuant to an objection. The 2015 Advisory Committee Notes to Rule 34 explain:

Fed. R. Civ. P. 34, Advisory Committee Notes (2015 Amendment).

Unlike Rule 33(b), which requires that responses to interrogatories be verified, “Rule 34(b) does not require a party's response to a document request to be verified by the party. Rather, responses to document requests need only be certified by an attorney or unrepresented party.” State Farm Mut. Auto. Ins. Co. v. New Horizont, Inc., 250 F.R.D. 203, 222 (E.D. Pa. 2008) (emphasis in original); accord 1 Discovery Proceedings in Federal Court § 17:13 (3d ed.) (citing same). As one court explained, the disparity between the verification requirements under Rule 33 governing responses to interrogatories and Rule 34 governing responses to production requests may be explained by the Rules' differing functions:

State Farm Mut. Auto. Ins. Co., 250 F.R.D. at 222 n.19.

However, where a response to a production request is neither a representation that responsive documents will be produced nor a legal objection to the request, but rather an assertion that all responsive documents have already been produced or that no responsive documents exist in the responding party's possession, custody, or control, many courts require that the response be verified. See, e.g., Vazquez-Fernandez v. Cambridge College, Inc., 269 F.R.D. 150, 154 (D. P.R. 2010) (“[W]hen a response to a [request for] production for documents is not a production or an objection, but an answer, the party must answer under oath.”); Napolitano v. Synthes USA, LLC, 297 F.R.D. 194, 200 (D. Conn. 2014) (“[A] response that all documents have been produced does require attestation.”) (emphasis in original); Rayman v. Am. Charter Fed. Savings & Loan Ass'n, 148 F.R.D. 647, 651 (D. Neb. 1993) (noting that pursuant to the 1970 Advisory Committee comment to Rule 34(b), where the response to a production request is an assertion of fact akin to an interrogatory, “the proper procedure for making the response is mandated by Rule 33, which requires responses by the party under oath”); Lever Your Bus., Inc. v. Sacred Hoops & Hardwood, Inc., 2021 WL 243308, at *14 (C.D. Cal. Jan. 25, 2021) (requiring responding party to “provide a verified response to RFP No. 16 clarifying either 1) all responsive, non-privileged documents in its possession have been produced after a diligent search and reasonable inquiry ... or 2) after a diligent search and reasonable inquiry, [responding party] has no documents in its possession, custody, or control responsive to the request”).

At the same time, the court cannot order a party to produce documents that do not exist. A requesting party's mere suspicion that additional documents must exist is an insufficient basis to grant a motion to compel. See, e.g., Bethea v. Comcast, 218 F.R.D. 328, 329 (D. D.C. 2003) (requesting party's suspicion that responding party failed to produce responsive documents does not justify compelled inspection); Alexander v. Federal Bureau of Investigation, 194 F.R.D. 305, 311 (D. D.C. 2000) (a party's mere suspicion that its adversary must have documents that it claims not to have does not warrant granting a motion to compel); Carter v. Dawson, 2010 WL 4483814, at *5 (E.D. Cal. Nov. 1, 2010) (“The Court will not permit a party to challenge the other party's objections based on mere speculation.”). Rather, the moving party must have a colorable basis for its belief that relevant, responsive documents exist and are being improperly withheld. See Ayala v. Tapia, 1991 WL 241873, at *2 (D. D.C. Nov. 1, 1991) (denying motion to compel where moving party could not identify documents that were withheld); Carter, 2010 WL 4483814, at *5 (defendants' assertion that they are unable to locate responsive documents does not provide a ground for granting a motion to compel “unless Plaintiff can identify a specific document that Defendants have withheld”). Proof of improper withholding may be based, for example, on testimony from the producing party's custodian of records or other witnesses with knowledge of the documents in the producing party's possession, custody or control.

A. Deficiencies In Plaintiff's Presentation Of The Motion To The Court And In Defendant's Written Objections To The Production Requests

*6 Plaintiff asks the Court to issue an Order compelling Test-Rite to produce documents and responses to RFP Nos. 3-18 and 21-30. (Jt. Stip. at 3). However, Plaintiff's Motion, as presented in the Joint Stipulation, does not (and could not, in light of the timing of Plaintiff's service of its portion of the Joint Stipulation) acknowledge Test-Rite's production of documents,[4] much less identify what was deficient about the production with regard to any particular production request, or state with specificity what more Plaintiff believes Test-Rite should do. In the Joint Stipulation, Plaintiff simply asserts that each RFP at issue seeks relevant information, challenges Defendant's objections, and asks that the Court order production of documents. As a consequence, Plaintiff's portion of the Joint Stipulation is devoid of any specific detail that would support an order compelling further production, particularly because by the time the Joint Stipulation was filed, Test-Rite had produced thousands of documents, which entirely undermined the basis for Plaintiff's Motion. If Plaintiff wanted Test-Rite to search additional custodians' files, for example, it should have identified the specific custodians by name and title, explained why those custodians could be expected to have relevant, non-repetitive information relating to a particular request, and explained the parameters, including the time period, for the search it desired. Plaintiff's portion of the Joint Stipulation does none of that.

As a result, in Defendant's portion of the Joint Stipulation, Defendant was required to guess what Plaintiff wanted and had to address potential demands that Plaintiff raised nowhere in the Motion. The first time Plaintiff identified with any specificity the purported deficiencies in Test-Rite's production is in its Supplemental Memorandum.[5] (See P Supp. Memo. at 1). Plaintiff's reservation of the substance of its Motion to the Supplemental Memorandum deprived Defendant of an opportunity to respond directly to Plaintiff's contentions. To redress this obvious deficiency in the process, the Court authorized the filing of an additional supplemental response from Test-Rite, which is not contemplated by the Local Rules. (Dkt. No. 128).

While the supplemental briefing required by this otherwise routine motion to compel is a direct consequence of its unorthodox presentation, Test-Rite is itself not entirely free from blame for the disputes. Test-Rite's written objections to the RFPs at issue fail to comply with the requirements of Rule 34 because they did not give Plaintiff any notice of whether Test-Rite would agree to the production of any responsive materials or whether Test-Rite was withholding any documents pursuant to an objection. (See Blakely Decl., Exh. C).

Furthermore, Test-Rite's repetition of boilerplate objections in its written responses to the Subpoena is improper and tantamount to no response at all. Although a responding party may object to a request, boilerplate assertions of any type, including unsupported assertions of attorney-client privilege, the work product doctrine, trade secrets, or unidentified “confidentiality agreements,” are improper in federal court. See, e.g., A. Farber & Partners, Inc. v. Garber, 234 F.R.D. 186, 188 (C.D. Cal. 2006) (“[G]eneral or boilerplate objections such as ‘overly burdensome and harassing’ are improper -- especially when a party fails to submit any evidentiary declarations supporting such objections.... Similarly, boilerplate relevancy objections, without setting forth any explanation or argument why the requested documents are not relevant, are improper.”); Duran v. Cisco Sys., Inc., 258 F.R.D. 375, 379 (C.D. Cal. 2009) (“[U]nexplained and unsupported boilerplate objections are improper.”); Burlington Northern & Santa Fe Ry. Co. v. United States Dist. Court, 408 F.3d 1142, 1147 (9th Cir. 2005) (boilerplate privilege assertions are ineffective, and a failure to properly assert a privilege may “waive or otherwise abandon the privilege”). Similarly, several courts have rejected boilerplate assertions that a discovery request is “disproportionate” and require that “objections based on proportionality” be “explained with specificity.” Polycarpe v. Seterus, Inc., 2017 WL 2257571, at *4 (M.D. Fla. May 23, 2017); see also Fed. R. Civ. P. 26 advisory committee notes (2015 amendments) (restoration of the “proportionality calculation to Rule 26(b)(1)” was not “intended to permit the opposing party to refuse discovery simply by making a boilerplate objection that it is not proportional”).

*7 In light of the deficiencies in Test-Rite's written objections,[6] Test-Rite is ORDERED to serve supplemental written responses to all of the RFPs at issue in this Motion for which a further response is ordered in compliance with the requirements of Rule 34. The responses should indicate whether production will be allowed, and if objections are asserted, they must be asserted with an explanation and indicate whether any otherwise responsive materials are being withheld pursuant to an objection. If Test-Rite contends that no further documents exist that are responsive to a request, it must expressly so state in a verified response.

B. Rulings On The Disputes

The Court will address the parties' general disputes and the specific production requests in contention below. As a preliminary matter, however, the Court notes that in Plaintiff's Post-Hearing Brief, Plaintiff repeatedly contends that it is entitled to documents and emails that are responsive to RFP Nos. 2, 19, 20 and 28. (P Post-Hrg Brief at 5-6, 9-10). However, Plaintiff did not seek further responses to RFP Nos. 2, 19, 20 or 28 in the Joint Stipulation. (See Jt. Stip. at ii-vii). Additionally, with the exception of a single passing reference to RFP No. 19, Plaintiff did not even mention these RFPs in its Supplemental Memorandum. (P Supp. Memo. at 4). Plaintiff simply did not put Test-Rite on adequate notice in this Motion to Compel of its desire for further responses to these four RFPs and it is much too late to do so in a post-hearing brief for which no further response is permitted. Accordingly, RFP Nos. 2, 19, 20 and 28 are not at issue in this Motion and no further written response or production is required with respect to those production requests.

Furthermore, although Plaintiff did purport to put Dkt. Nos. 16 (Policies and Procedures re Avoidance of Infringement), 17-18 (Claims of Infringement Against Test-Rite), and 30 (Document Retention and Destruction Policies) at issue in the Joint Stipulation, Plaintiff does not mention those production requests even in passing in its Supplemental Memorandum or Post-Hearing Brief. Nor does it explain why Test-Rite's contentions in the Joint Stipulation regarding these production requests are unsatisfactory. Plaintiff's arguments in the Joint Stipulation concerning these production requests are generic and unsupported. Accordingly, the MTC is DENIED to the extent that Plaintiff purports to seek additional responses to RFP Nos. 16, 17, 18 and 30. No further written response or production is required with respect to those production requests.

In Plaintiff's Supplemental Memorandum, Plaintiff argued for the first time that:

(P Supp. Memo. at 1). While Plaintiff's Post-Hearing Brief affirms Plaintiff's desire for these materials, it appears to expand on its requests, as addressed below.

1. Documents And Emails From Tony Kania, Wyatt Kania, and Kevin Huang For The Period From January 2021 To The Present

According to Test-Rite, Tony Kania was a Test-Rite Senior Vice President. (Jt. Stip. at 21). Test-Rite also identifies Wyatt Kania and Kevin Huang as “Account Managers, Auto.” (Id.). Test-Rite states that these three document custodians were the primary employees responsible for Test-Rite's supply of the disputed product to O'Reilly. (D Post-Hrg Brief at 2). Test-Rite states that it searched and produced their email records using agreed-upon search terms for the 2020 period, when the Accused Product was ordered by O'Reilly and designed. (Id.).

*8 Plaintiff argues that the scope of permissible discovery for its infringement claims “is not limited to the ‘development and design’ period of the Accused Products in 2020.” (P Post-Hrg Brief at 3). Plaintiff states that Test-Rite impermissibly “unilaterally” limited its production to emails from “only three individuals” for a restricted time frame. (Id.). According to Plaintiff, post-2020 evidence “is relevant to the issues of liability (intent, actual confusion, and degree of care), as well as damages (willfulness).” (Id.). Plaintiff alleges that Test-Rite's “involvement in this matter did not cease the moment the Accused Products first appeared in O'Reilly stores in November 2020,” as O'Reilly reordered, and Test-Rite manufactured and re-shipped, the Accused Products on a continuing basis. (Id. at 4). Plaintiff notes that evidence of consumer care and consumer confusion, and of Defendants' intent in continuing to use the mark, could appear only after November 2020, when the Accused Product went on the market. (Id.). Plaintiff also argues that if a jury determines that Test-Rite's conduct was willful, the Court must award treble damages and attorney's fees, and under California common law, Plaintiff would be entitled to punitive damages. (Id. at 5). Therefore, Plaintiff claims that it is entitled to “a full accounting of [Test-Rite's] profits,” for which Test-Rite's post-design communications are directly relevant. (Id.). Plaintiff also maintains that it is entitled not only to emails, but also to “all documents that are responsive to the requests, whether or not they exist as electronic files.” (Id.).

Test-Rite counters that the materials Plaintiff seeks are not relevant. (D Post-Hrg Brief at 2). Test-Rite states that it has already “produced very detailed cost and sales information” relating to its sales of the accused product to O'Reilly, and notes that Plaintiff has not clarified what sales information is purportedly missing. (Id. at 3). Test-Rite suggests that if Plaintiff is seeking information about the specific timing of the orders placed by O'Reilly, a better approach would be to serve targeted interrogatories on O'Reilly. (Id.). Test-Rite further states that it does not have information related to any “intent to deceive customers” by use of the mark because only O'Reilly and Cooper were involved in the decision to use the words “special ops” on the Accused Product. (Id.). Furthermore, Test-Rite notes that Plaintiff does not, and cannot, claim that it owns or has any right to “a military look and feel, color of the ammo can, use of an ammo can for a portable air compressor,” or any other purported right. (Id. at 4). Because Test-Rite had no role in selecting the words “special ops” for the design of the Accused Product, no further search for emails -- particularly after 2020 -- would be relevant to the intent to deceive issue. (Id. at 5). Test-Rite also contends that the searches demanded by Plaintiff would require the gathering and review of thousands of emails, which would cost tens of thousands of dollars to complete, and as such, would not be proportional to the needs of the case. (Id. at 6).

Plaintiff has not clearly identified which additional custodians, if any, it believes have responsive materials; nor has it identified what additional documents, as opposed to emails, it believes may contain relevant information. Accordingly, the Court construes this dispute to put at issue whether Test-Rite must search and produce emails from Tony Kania, Wyatt Kania, and Kevin Huang, using the previously-agreed upon search terms, for the period following 2020. So construed, the Court GRANTS Plaintiff's Motion to Compel IN PART. Test-Rite's involvement in this matter plainly did not end upon the delivery of the Accused Product in November 2020, and while Test-Rite may believe that there may be more efficient methods for Plaintiff to obtain relevant information for the post-2020 period, it has not persuasively shown that the review and production of the additional emails requested would be so disproportionate to the needs of this case as to violate Rule 26. Furthermore, to the extent that Test-Rite unilaterally decided to limit the scope of its production to the 2020 period, without input or agreement from Plaintiff, it has only itself to blame for any burden of production it may now face. At the same time, Plaintiff has not shown that emails generated following the filing of this action are required for the purposes for which Plaintiff now contends supplementation is necessary. Accordingly, Test-Rite is ORDERED to produce responsive emails from Tony Kania, Wyatt Kania, and Kevin Huang, to the extent that any exist, using the previously-agreed upon search terms for the period from November 1, 2020 to June 2, 2022, i.e., the date Plaintiff filed this action.

2. Documents And Emails From Test-Rite's President, Kelly Ho, From 2020 To The Present

*9 Plaintiff notes that Kelly Ho is not only Test-Rite's president, but also the daughter of the owners of Test-Rite's parent company, Test-Rite International, in Taiwan. (P Post-Hrg Brief at 5). As such, Plaintiff contends that she “is reasonably expected to have high-level communications concerning the Accused Product and this dispute, which may not [be] in the possession of Tony Kania, Wyatt Kania, and Kevin Huang ....” (Id.). Plaintiff asserts that Kelly Ho's communications are especially likely to have information about Test-Rite's decision not to indemnify O'Reilly, despite the indemnification clause in Test-Rite's contract with O'Reilly. (Id. at 5-6).

Test-Rite contends that Ho, as the corporate president, “is not directly involved with the creation or sale of any particular product.” (D Post-Hrg Brief at 7). Furthermore, Test-Rite has already produced 412 emails in which Kelly Ho was copied, a recipient and/or a sender, and as such, any relevant emails involving her have already been produced. (Id.). Test-Rite specifically asserts that Kelly Ho was not involved in the selection of the words “special ops” or the creation of the accused product; nor would her emails provide any additional sales information. (Id.). Although Test-Rite argues that indemnification is not relevant to the issues in this case, to the extent that the Court disagrees, Kelly Ho's confidential communications regarding indemnification could be identified from her files without a word search. (Id.). As such, even in that scenario, Test-Rite maintains that a large-scale search of her emails is not proportionate to the needs of the case. (Id.).

Although Test-Rite contends that the fact that Kelly Ho appeared in 412 emails produced to date from other custodians' files means that “all” of her responsive emails have been produced, the same evidence strongly suggests that Kelly Ho had a more than tangential role in matters relevant to this litigation. Additionally, Test-Rite has not persuasively shown that the review and production of Ms. Ho's emails would be so disproportionate to the needs of this case as to violate Rule 26. To the extent that Test-Rite unilaterally decided to omit Ms. Ho's emails from the scope of its production, without input or agreement from Plaintiff, it has only itself to blame for any burden of production it may now face. Accordingly, Plaintiff's Motion to Compel is GRANTED IN PART with respect to Kelly Ho. Test-Rite is ORDERED to produce responsive, non-duplicative emails from Kelly Ho, to the extent that any exist, using the previously-agreed upon search terms, for the period from April 1, 2020, i.e., the approximate date when Plaintiff ceased selling its Special Ops compressors to O'Reilly, to June 2, 2022, i.e., the date Plaintiff filed this action. Test-Rite is not required to re-produce from Ms. Ho's files emails that it has previously produced from other custodians.

3. Documents And Emails From Test-Rite International Employee Roger Cheng From 2020 To The Present

Roger Cheng is an employee of Test-Rite's parent company in Taiwan, non-party Test-Rite International. (Ho Decl. ¶¶ 3-4). Kelly Ho states that Test-Rite “does not have access to the email files from this separate publicly traded company ....” (Id. ¶ 4).

As noted earlier, Rule 34 requires parties to produce responsive documents within their “possession, custody, or control.” Rule 34(a)(1). A party need not have “actual possession of the requested document” to be required to produce it. Soto, 162 F.R.D. at 619. Rather, “control” -- the legal right or actual ability to obtain documents on demand -- is sufficient. Uniden Am. Corp. v. Ericsson Inc., 181 F.R.D. 302, 305 (M.D. N.C. 1998). Control may extend to documents that are nominally held in another corporation's care. Id. at 306. For example, it is well settled that “a litigating parent corporation has control over documents in the physical possession of its subsidiary corporation where the subsidiary is wholly owned or controlled by the parent.” American Angus Ass'n v. Sysco Corp., 158 F.R.D. 372, 375 (W.D. N.C. 1994). Additionally, courts have also found “that one corporation controls another in the situation where one is the alter ego of the other corporation.” Uniden Am. Corp., 181 F.R.D. at 305. Factors that courts consider to “determine when documents in the possession of one corporation may be deemed under control of another corporation” include, but are not limited to, the following: (i) commonality of ownership; (ii) exchange or intermingling of directors, officers or employees of the two corporations; (iii) exchange of documents between the corporations in the ordinary course of business; and (iv) involvement of the non-party corporation in the litigation. Id. at 306. Accordingly, under Rule 34, courts are to “closely examine the actual relationship between two corporations” when one is a party and the other a non-party with claimed control of responsive documents, in order to “guard against not just fraud and deceit, but also sharp practices, inequitable conduct, or other false and misleading actions whereby corporations try to hide documents or make discovery of them difficult.” Id.

*10 Plaintiff states that while there were numerous Test-Rite International employees identified in the documents that Test-Rite produced, Roger Cheng “appears to be the primary contact between TRP [Test-Rite] and TRI [Test-Rite International] regarding the Accused Product.” (P Post-Hrg Brief at 9). Roger Cheng was also identified by Tony Kania in deposition as the person who knew what intellectual property searches were conducted by Test-Rite with regard to the Accused Product. (Id. at 9 n.2) (citing Blakely Post-Hrg Decl., Exh. E). Plaintiff argues that documents in the possession of Test-Rite International are under Test-Rite's “control” because both entities are “owned and/or dominated” by the Ho family. Tony Ho and Judy Lee, Kelly Ho's parents, are co-chief executive officers and directors of Test-Rite International; Robin Ho, their daughter (and presumably Kelly Ho's sister), is both a director and chief operating officer of Test-Rite International. (P Post-Hrg Brief at 7). Tony Ho and Judy Lee are also directors of Test-Rite. (Id.). Plaintiff asserts that Test-Rite International supplies goods to Test-Rite, and the two companies “worked hand [in] hand in designing, developing, manufacturing, and selling the Accused Product to O'Reilly.” (Id.). Plaintiff further claims that Test-Rite “stonewalled and delayed” providing documents related to the Accused Product that identified Test-Rite International as Test-Rite's supplier. (Id. at 8).

Test-Rite argues that no one from Test-Rite International, including Roger Cheng, was involved in any way in the selection of the words “special ops” for use on the Accused Product. (D Post-Hrg Brief at 7). Additionally, Test-Rite already produced 502 emails in which Roger Cheng was “copied, a recipient, a sender, and/or was otherwise mentioned in the email,” based on searches of the files of Tony Kania, Wyatt Kania and Kevin Huang using the agreed-upon search terms. (Id. at 7-8). As such, Test-Rite maintains that any potentially relevant emails in Roger Cheng's files have already been produced. (Id. at 8). Test-Rite further argues that to obtain international discovery from a company in Taiwan, Plaintiff should have used the proper procedures for international discovery. (Id.). Test-Rite notes that Plaintiff has put the issue of whether this Court has personal jurisdiction over Test-Rite International before the District Judge, who has not yet determined whether Test-Rite International may be added as a party to this action. (Id.). Test-Rite also emphasizes that Kelly Ho testified that Test-Rite “has no legal right to obtain documents” from its parent, Test-Rite International. (Id.) (citing Ho Decl. ¶ 4). Test-Rite further notes that Plaintiff has not shown that Test-Rite and Test-Rite International are alter egos or that Test-Rite International failed to observe corporate formalities; nor has Plaintiff identified any cases in which an American subsidiary was ordered to produce records from the employee of a foreign parent company. (Id. at 8). Additionally, Test-Rite maintains that Test-Rite International's profits are “very small,” and as such, the request for discovery from a Test-Rite International employee is not proportional to the needs of this case. (Id.).

The Court agrees with Plaintiff that Roger Cheng appears to have some involvement with the issues raised by this case. Cheng's name appeared on more than 500 emails produced to date and he was identified as a person with knowledge of relevant matters by Tony Kania during his deposition. However, that is not the standard for ordering production by a party of a non-party's documents. Kelly Ho testified, under oath, that Test-Rite does not have a legal right to demand the production of documents from Test-Rite International. (Ho Decl. ¶ 4). Plaintiff has not provided any evidence to undermine the accuracy of Ms. Ho's representation. Furthermore, the Court expressly instructed Plaintiff to identify in its post-hearing brief any cases in which courts have ordered an American subsidiary to produce documents from a foreign parent and to address whether the circumstances requiring production in those cases are present here. The cases cited by Plaintiff in its post-hearing brief address in general the criteria a court should consider in deciding whether a party has control over a non-party's documents, but are not decisions requiring production by an American subsidiary of its foreign parent's documents. (P Post-Hrg Brief at 6-8) (citing Almont Ambulatory Surgery, LLC v. United Health Group, Inc., 2018 WL 1157752 (C.D. Cal. Mar. 2, 2018), and QC Labs v. Green Leaf Lab LLC, 2019 WL 6797250 (C.D. Cal. July 19, 2019)). Plaintiff has not shown that Test-Rite International failed to observe corporate formalities, or that Test-Rite and Test-Rite International are alter egos. Accordingly, Plaintiff's Motion to Compel is DENIED to the extent that it seeks production of Roger Cheng's emails.

4. Documents And Emails Between The O'Reilly Defendants And Test-Rite Concerning Indemnification

*11 Plaintiff explains that the supplier agreement between Test-Rite and O'Reilly contained an indemnification clause; O'Reilly submitted a demand for indemnification; and Test-Rite denied the request. (P Post-Hrg Brief at 9). Plaintiff maintains that even though there are no express issues in this case relating to indemnification, discovery concerning indemnification is relevant because the communications might contain party admissions, or reveal whether O'Reilly represented that a trademark search was “clear,” or “some other fiction.” (Id. at 10).

Test-Rite contends that confidential communications regarding indemnification are not relevant to Plaintiff's claims. (D Post-Hrg Brief at 5, 8). Furthermore, Test-Rite notes that Plaintiff has the overall purchasing agreement between Test-Rite and O'Reilly that includes the indemnification provision, and has already deposed Test-Rite's 30(b)(6) witness (Kelly Ho) on this topic. (Id. at 5). Ms. Ho explained that Test-Rite's position regarding indemnification had “nothing to do with intent, or trademark infringement.” (Id. at 6). Furthermore, Test-Rite states that because Tony Kania, Wyatt Kania, and Kevin Huang were not involved in any indemnity discussions with O'Reilly, a further search of their files would not reveal the purported communications Plaintiff is seeking. (Id.). Finally, any search for “confidential indemnity emails” from Kelly Ho's files would not require word searches to identify them. (Id.).

Plaintiff has not persuasively shown that indemnification is at issue in this case. Its request for production of materials related to indemnification appears to be based on little more than speculation, which is an improper basis for granting a motion to compel. See Rivera v. Nibco, Inc., 364 F.3d 1057, 1072 (9th Cir. 2004) (noting generally that district courts “need not condone the use of discovery to engage in ‘fishing expedition[s]’ ”). Plaintiff is already in possession of the purchasing agreement between O'Reilly and Test-Rite and has not demonstrated the relevance of indemnification communications. Accordingly, Plaintiff's Motion to Compel is DENIED to the extent that it seeks production of documents related to indemnification.

For the reasons stated above, Plaintiff's Motion to Compel production of documents from Defendant Test-Rite is GRANTED IN PART and DENIED IN PART. Test-Rite is ORDERED to serve supplemental written responses to RFP Nos. 3-15 and 21-29 consistent with the requirements of Federal Rule of Civil Procedure 34 within twenty-one days of the date of this Order. If, after conducting the searches required by this Order, Test-Rite determines that no additional documents exist beyond those already produced in response to a particular RFP, Test-Rite shall affirmatively so state in its written response and shall submit a declaration by a custodian of records affirming that a reasonable search for additional documents was conducted and no documents were found. Test-Rite is further ORDERED to produce additional documents, if any exist, based on the searches required by this Order within twenty-one days from the date of this Order.