*1 At the parties' request, the Court conducted an informal telephonic discovery conference on June 29, 2023, to address the parties' disputes regarding Adidas AG's responses and objections to Oscar Tubio's interrogatories and requests for production of documents. (Dkt. No. 43). The Court encouraged the parties to continue their discussions regarding the discovery disputes and attempt to reach a resolution. (Id.).

On October 30, 2023, after the parties failed to resolve their discovery disputes, Oscar Tubio filed a Motion to Compel Defendant's Further Discovery Responses (“Motion,” Dkt. No. 87). Tubio's Motion seeks to compel Adidas AG to provide further responses to Interrogatories (ROGs) Nos. 4–6, 12, 14, 17, and 21–23, and Requests for Production of Documents (RFPs) Nos. 6–17, 20–21, 27, and 30–36). (Id. at 2). The parties submitted a joint stipulation pursuant to Local Rule 37-2, setting forth each side's position on the disputes. (“Joint Stip.,” Dkt. No. 88). On November 7, 2023, Adidas AG filed a supplemental memorandum in support of its positions. (“Def. Supp.,” Dkt. No. 89).

On November 21, 2023, the Court held an in-person hearing. For the reasons stated below and on the record at the hearing, Tubio's Motion is DENIED IN PART.

On September 8, 2022, Tubio filed this action against Defendants for copyright infringement and vicarious or contributory copyright infringement. (“Compl.,” Dkt. No. 2). Tubio asserts that he composed and created the jersey for the 1981 version of the Argentinian football team Boca Juniors, incorporating four eight-pointed stars with the initials “CABJ” (“the Boca Stars”)—referring to “Club Atlético Boca Juniors.” (Compl. ¶ 12). At the time, soccer legend Diego Maradona played for Boca Juniors, which garnered a great deal of success that season, earning the team (and its jersey) a great deal of attention and status. (Id. ¶ 11). Maradona died on November 25, 2020, sparking renewed interest in Boca Juniors jersey from 1981. (Id. ¶ 14). Capitalizing on this interest, Defendants produced and sold replicas of the jersey, along with a variety of other sporting apparel incorporating the Boca Stars. (Id. ¶¶ 14, 17). Tubio owns the common law copyright to the jersey and the Boca Stars incorporated into the jersey and also received copyright registration for the Boca Stars in Argentina on December 17, 2021. (Id. ¶¶ 12–13). There is no allegation of any copyright registration in the United States.

In April 2023, Tubio propounded interrogatories and requests for production of documents to Adidas AG. (Joint Stip. at 1). Adidas served responses in May 2023. (Id.). On May 31, Tubio's counsel raised perceived deficiencies in Adidas's responses. (Id. at 5). After engaging in the meet and confer process provided under the Local Rules, the parties held an initial conference with the Magistrate Judge on June 29, 2023, regarding Tubio's perceived discovery needs. (Id.).

Fact discovery must be completed by December 8, 2023.[1] (Dkt. No 79). “By ‘completed,’ the Court means that said discovery requests must be served sufficiently early such that a motion to compel (if necessary) can be filed, heard and complied with before the cut-off date.” (Dkt. No. 31 at ¶ 3).

*2 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.” Raya v. Barka, 2022 WL 686460, at *4 (S.D. Cal. Mar. 8, 2022) (citation omitted); see 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.”). “The proportionality inquiry [in Rule 26(b)(1)] focuses, at bottom, on analyzing the marginal utility of the discovery being sought.” V5 Techs. v. Switch, Ltd., 334 F.R.D. 306, 314 (D. Nev. 2019) (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 Davita HealthCare Partners, Inc. v. United States, 125 Fed. Cl. 394, 398 n.3 (2016) (the 2015 amendments to the Federal Rules “contribute to the overall goal of regulating the time and expense of litigation”). “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.” United States v. McGraw-Hill Cos., 2014 WL 1647385, at *8 (C.D. Cal. Apr. 15, 2014) (citations omitted); see DIRECTV, Inc. v. Trone, 209 F.R.D. 455, 458 (C.D. Cal. 2002) (“The party who resists discovery has the burden to show that discovery should not be allowed, and has the burden of clarifying, explaining, and supporting its objections.”).

In responding to a request to produce documents, the responding party must affirmatively state whether any responsive materials are being withheld based on that objection. Fed. R. Civ. P. 34(b)(2)(C) (“An objection must state whether any responsive materials are being withheld on the basis of that objection.”). “A proper written response should also provide sufficient information for the requesting party, and the court, to be satisfied that the responding party conducted an adequate investigation for responsive materials.” In re Rivera, No. CV 16-4676, 2017 WL 5163695, at *3 (C.D. Cal. Apr. 14, 2017); see Atcherley v. Clark, No. 12 CV 0225, 2014 WL 4660842, at *1 (E.D. Cal. Sept. 17, 2014) (“In responding to discovery requests, a reasonable inquiry must be made, and if no responsive documents or tangible things exist, the responding party should so state with sufficient specificity to allow the Court to determine whether the party made a reasonable inquiry and exercised due diligence.”) (citations omitted). Indeed, parties could avoid unnecessary expenses and disputes by strictly complying with Rule 34(b)(2)(C).

A. Boilerplate Discovery Objections Are Overruled.

*3 “[B]oilerplate objections do not suffice and there is no ground upon which to reasonably argue otherwise.” Marti v. Baires, No. 08-CV-00653, 2012 WL 2029720, at *5 (E.D. Cal. June 5, 2012); see Fed. R. Civ. P. 34(b)(2)(B) (“For each item or category, the response must either state that inspection ... will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons.”) (emphasis added); Davis v. Fendler, 650 F.2d 1154, 1160 (9th Cir. 1981) (“objections should be plain enough and specific enough so that the court can understand in what way the [discovery requests] are alleged to be objectionable”) (emphasis added). Indeed, boilerplate assertions of any type 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”).

Adidas's boilerplate incorporating of its General Objections and the Objection to Definitions into each specific response (e.g., Joint Stip. at 10) “is entirely improper in federal court.” Clark v. City of Los Angeles, No. CV 20-10768, 2021 WL 4731353, at *12 (C.D. Cal. Aug. 23, 2021). While Adidas asserts it “is not withholding any documents or limiting any searches on the basis of its General Objections” (e.g., Joint Stip. at 11), Adidas AG's incorporation of its General Objections and Objection to Definitions in its discovery responses are OVERRULED.

Adidas AG Defendant contends that many of the discovery requests are “overly broad” and “unduly burdensome.” (E.g., Joint Stip. at 10). But Adidas has not met its burden “to demonstrate that production of nonprivileged, responsive documents ... would be disproportionately burdensome.” City of Seattle v. ZyLAB N. Am., LLC, No. C17-0790, 2017 WL 4418636, at *3 (W.D. Wash. Oct. 5, 2017); see N. Am. Co. for Life & Health Ins. v. Philpot, No. 08 CV 270, 2009 WL 10672468, at *4 & n.2 (S.D. Cal. June 1, 2009) (overruling party's discovery objections because it did not quantify its asserted burden to producing the requested information). “It is well-established that the burden is on the objecting party to show grounds for failing to provide the requested discovery.” Baykeeper v. Kramer Metals, Inc., No. CV 07-3849, 2009 WL 10671577, at *7 (C.D. Cal. Feb. 27, 2009); see Bible v. Rio Properties, Inc., 246 F.R.D. 614, 618 (C.D. Cal. 2007); Sullivan v. Prudential Ins. Co., 233 F.R.D. 573, 575 (C.D. Cal. 2005). Adidas cannot simply invoke generalized objections without describing, in specific detail, how each request is overbroad and unduly burdensome by submitting affidavits or other evidence describing the nature of the burden. See Roesberg v. Johns-Manville Corp., 85 F.R.D. 292, 296–97 (E.D. Pa. 1980) (The responding party ”must show specifically how, despite the broad and liberal construction afforded the federal discovery rules, each interrogatory is not relevant or how each question is overly broad, burdensome or oppressive by submitting affidavits or offering evidence revealing the nature of the burden.”). Merely objecting to Tubio seeking “all” responsive documents in response to a discovery request (e.g., Joint Stip. at 26, 59, 70) does not satisfy Adidas's burden to specifically describe the nature of the burden. When queried at the hearing, Adidas's counsel could not quantify or thoroughly describe the nature of the burden. Adidas AG's unduly broad and burdensome objections are OVERRULED.

B. It Is Not Clear Whether Adidas AG Is Withholding Responsive Information.

*4 In responding to the RFPs, Adidas does not affirmatively state whether any responsive materials are being withheld on the basis of an objection or privilege. See Fed. R. Civ. P. 34(b)(2)(C) (“An objection must state whether any responsive materials are being withheld on the basis of that objection.”). Instead, Adidas ambiguously states that its responses are “subject to these objections.” (Joint Stip. at 26, 28, 30, 32). Similarly, it is not clear whether Adidas is withholding responsive documents on account of some unspecified privilege. (See Joint Stip. at 11) (asserting that Adidas AG “will not produce documents that are covered by privilege or other protections”) (emphasis added). To the extent that Adidas AG is withholding responsive information not covered by attorney-client privilege or the work product doctrine, such ”other protections” are OVERRULED. And regarding documents that are properly protected from disclosure by the attorney-client privilege or work product doctrine, Jackson must affirmatively state whether any are being withheld and if so, promptly provide a privilege log. Fed. R. Civ. P. 26(b)(2)(C).

C. Relevance

Adidas AG objects to ROG Nos. 6, 21, and 23, and RFP Nos. 6–7, 10–17, and 34 to the extent that they seek foreign sales and revenue information. (Joint Stip. at 5–6). Tubio agrees that as a general rule, the United States Copyright Act has no extraterritorial reach. (Joint Stip. at 6). See Subafilms, Ltd. v. MGM-Pathe Commc'ns Co., 24 F.3d 1088, 1095 (9th Cir. 1994) (en banc) (“The ‘undisputed axiom” [is] that the United States’ copyright laws have no application to extraterritorial infringement ....”) (citation omitted); accord Los Angeles News Serv. v. Reuters Television Int'l, Ltd., 149 F.3d 987, 990 (9th Cir. 1998), as amended on denial of reh'g and reh'g en banc (Aug. 25, 1998) (“It is settled that the Copyright Act does not apply extraterritorially.”). Nevertheless, the Reuters court created a narrow exception to the Subafilms broad ruling. “There, it held that where the initial act of infringement, i.e., the manufacture of the copy, occurred in the United States, recovery based on subsequent reproduction and distribution abroad was permissible because ‘the infringing use would have been actionable even if the subsequent foreign distribution that stemmed from that use never took place.’ ” Aurora World, Inc. v. Ty Inc., No. CV 09-08463, 2011 WL 13176413, at *21 (C.D. Cal. Mar. 14, 2011) (quoting Reuters, 149 F.3d at 991–92). Thus, “[r]ecovery of damages arising from overseas infringing uses was allowed because the predicate act of infringement occurring within the United States enabled further reproduction abroad.” Reuters, 149 F.3d at 992.

Adidas contends that Tubio fails to demonstrate that any predicate act occurred within the United States. (Joint Stip. at 4–6). Adidas asserts that the “[m]erchandise development was done in Argentina and Germany, and the items in question were manufactured in China and Colombia.” (Id. at 8). Tubio does not appear to disagree, instead arguing that he needs to discovery to “confirm or deny the existence of predicate acts that would entitle [him] to extraterritorial damages.” (Id. at 3).

At the hearing, Tubio's counsel asserted he had recently learned that Adidas AG may have consulted with Adidas personnel in Oregon before manufacturing the replicas of the in Boca Juniors jersey. But even if this is accurate, the Court finds that it is insufficient to constitute a “predicate act of infringement occurring within the United States [that] enabled further reproduction abroad.” Reuters, 149 F.3d at 992. Adidas has substantially produced all responsive information regarding activity that took place within the United States. Without evidence of a material predicate act that occurred within the United States, the Court declines to use the narrow exception to the Subafilms broad ruling and order extraterritorial discovery.

At the hearing, Tubio's counsel also argued—for the first time—that his expert needs foreign sales and revenue information to determine Tubio's damages. But given the lack of a predicate act that occurred in the United States, the Court finds that any damage estimates should be based on United States sales.

*5 Accordingly, to the extent that ROG Nos. 6, 21, and 23, and RFP Nos. 6–7, 10–17, and 34 seek Adidas AG's foreign sales and revenue information, Tubio's motion to compel is DENIED.

Adidas AG objects to ROG No. 14 and RFP Nos. 30–33, and 35 to the extent that they seek its licensing relationships with other professional sports teams. (Joint Stip. at 5–6). Adidas argues that these discovery requests “are not even remotely relevant to any issue in this case.” (Id. at 6). Tubio contends that this information is necessary to determine his damages, which includes “profits by resellers of products sold by Adidas outside the United States but subsequently sold by resellers into the United States.” (Id. at 2). Tubio also argues that one measure of his damages is the value of a “hypothetical license,” which “would be worldwide, and therefore ... must be determined on a worldwide basis.” (Id. at 2–3). Adidas asserts, however, that these requests are overbroad and not proportional, arguing that “nothing in these comprehensive team agreements will shed light on what a graphic designer gets paid for use of a single design, the relevant inquiry here.” (Def. Supp. at 2); see Qualcomm Inc. v. Broadcom Corp., No. 05CV1392, 2006 WL 8455382, at *6 (S.D. Cal. Aug. 14, 2006) (denying discovery for “wireless communication technology” license agreements as overbroad and irrelevant because “the majority of such licensing documents would be unrelated to the specific technology identified in the [lawsuit]”).

At the hearing, Tubio's counsel reiterated that his expert needs Adidas AG's licensing relationships with other professional sports teams in order to calculate Tubio's damages, including the value of a hypothetical license. The Court finds, however, that Tubio's requests are vastly overbroad. It would not be helpful to a factfinder to compare licensing agreements with professional sports teams to the use of single design worn and sold briefly by a single team. Furthermore, this request is not proportional to the needs of the case; the limited relevance of these requests is overshadowed by the extreme sensitivity and confidentiality of this information.

Accordingly, to the extent that ROG No. 14 and RFP Nos. 30–33, and 35 seek Adidas AG's licensing relationships with other professional sports teams, Tubio's motion to compel is DENIED.

As more fully discussed above, Tubio's Motion to Compel Defendant's Further Discovery Responses (Dkt. No. 87) is DENIED IN PART. Adidas AG's (1) incorporation of its General Objections and Objection to Definitions in its discovery responses; (2) unspecified privilege and other protections objections; and (3) unduly broad and burdensome objections are OVERRULED. Adidas AG's objections to producing foreign sales and revenue information and its licensing agreements with other professional sports teams are GRANTED. No later than December 8, 2023, Adidas AG SHALL (1) amend its discovery responses, removing all overruled objections and clearly describing whether it is withholding any responsive information pursuant to Rule 34(b)(2)(C); (2) if applicable, provide a privilege log that substantially meets the requirements of Rule 26(b)(5); and (3) produce all non-privileged responsive information.