*1 Before the Court is Plaintiffs Corinna Warm (“Ms. Warm”) and Studio Warm LLC's (collectively, “Plaintiffs”) Motion to Compel Production of Financial Figures for the Accused Products (“Motion” or “MTC”). Electronic Filing Case Number (“ECF No.”) 165, MTC.

After reviewing the parties' arguments and for the reasons set forth in this Order, the Court GRANTS Plaintiffs' MTC.

A. Relevant Background

On May 26, 2021, Plaintiffs filed a complaint (“Complaint”) against Defendants Innermost Limited (“Innermost”), LightForm Canada Inc. (“LightForm”), IM Design Concepts LLC (“IMDC”),[1] and Does 1-10, seeking injunctive relief and damages for Defendants' alleged copyright and trademark violations and misappropriation and unauthorized use of Ms. Warm's name and likeness. ECF No. 1, Compl. at ¶ 1. On March 26, 2022, Plaintiffs filed the operative First Amended Complaint (“FAC”), which added Archetype Lighting Sales, LLC (“Archetype”) and Light Build Design, Inc. (“LBD”) and reduced the number of Doe defendants to Does 1-8. ECF No. 82, FAC at ¶ 1.

As relevant to this Order, the FAC alleges Innermost “is a company registered in the United Kingdom and Wales[,]” its “parent company is Innermost Holdings PTY Ltd., a company registered in Hong Kong[,]” “operates in the United States[,]” and “sells its products throughout the United States and in California and offers the infringing designs for sale in California.” Id. at ¶ 8. Plaintiffs allege “Ms. Warm previously had a licensing relationship with Defendant Innermost. That relationship has ended and Innermost has no right to produce, advertise, sell, market, promote, or otherwise distribute any of Ms. Warm's designs or to associate itself in any way with Ms. Warm or Studio Warm.” Id. at ¶ 19. Plaintiffs further allege “[s]ince terminating the contractual relationship with Innermost in 2017, [Ms.] Warm has undertaken to manufacture and sell the Circus and Glaze lines of lighting products on its own and invested significantly in this endeavor.” Id. at ¶ 24. Plaintiffs allege “Innermost promotes and sells the infringing pieces mentioned above online via its U.S. website, www.intermost.us, through IMDC, and LightForm; and through other retail shops and partners working in the United States and California.” Id. at ¶ 41. Further, “IMDC sells its products throughout the United States and in California and offers the infringing designs for sale in California.” Id. at ¶ 9.

On April 8, 2022, Innermost and IMDC filed an answer (“Answer”) to the FAC, raising counterclaims against Plaintiffs. ECF No. 91, Answer at ¶¶ 210-238. Additionally, the Answer alleges “Innermost denies that it sells any products online and denies that it directly sells any products into the United States other than products sold to its authorized distributor IMDC. Innermost further denies that any of the products that it promotes or sells in the United States or anywhere else in the world infringe [upon] any rights of Plaintiffs.” Id. at ¶ 41. On April 25, 2022, Plaintiffs filed an answer (“Counterclaim Answer”) to Innermost and IMDC's counterclaims. ECF No. 97, Counterclaim Answer.

*2 On April 19, 2024, the Court reopened discovery to June 14, 2024 as to “(1) the deposition of Defendant Innermost's ... Rule 30(b)(6) witness(es); and (2) to the extent not already produced, specific sales information from Defendants for specific years, to be discussed in a meet-and-confer between counsel.” ECF No. 158, Order Re: Pl.'s Ex Parte Appl. to Modify the Scheduling Order to Reopen Disc. at 2. On May 15 and 20, 2024, the Court held discovery hearings regarding whether the discovery sought by Plaintiffs' Requests for Production Numbers (“RFP Nos.”) 50, 51, 58, and 60 should only be limited to financial figures of those accused products that are sold in the United States or include worldwide sales figures. See ECF Nos. 162, 163. On May 28, 2024, Plaintiffs filed their MTC, ECF No. 165, MTC; Defendant Innermost filed its response to the MTC (“Opposition” or “Opp'n”) on May 31, 2024, ECF No. 172, Opp'n; and, on June 4, 2024, Plaintiffs filed their reply in support of the MTC (“Reply”), ECF No. 173, Reply.

Currently pending before the District Court Judge is the parties' Second Stipulation to Extend Discovery Cut-Off Date to July 12, 2024 (“Joint Stipulation”). ECF No. 175, Joint Stipulation. Additionally, on June 10, 2024, counsel for Innermost filed a Request for Approval of Substitution or Withdrawal of Counsel. ECF No. 174.

B. The Parties' Arguments

The RFPs at issue ask Defendants Innermost and IMDC to produce “[d]ocuments sufficient to show the total amount of (1) sales, (2) revenue, and (3) profit for each year” from 2020 to present for Piccadilly products, 2012 to present for Glaze products, and 2012 to present for Circus products. ECF No. 165, MTC at 1-2. Additionally, RFP No. 58 asks Innermost to produce “[d]ocuments sufficient to show all Innermost Hong Kong (1) sales, (2) revenue, and ([3]) profit for each of the Accused Products for each year from 2012 to Present broken down by year and SKU[,]” and RFP No. 60 asks for “[d]ocuments sufficient to show the total inventory of each of the Accused Products in any Innermost Hong Kong warehouse, whether in China and/or Hong Kong from each year from 2012 to Present.” Id. at 2.

First, Plaintiffs argue that “Innermost's total units sold, and total revenues and profits from all sales, of the Accused Products are relevant because a copyright/trademark owner is entitled to recover the infringer's profits earned in connection with infringement.” Id. at 2. Plaintiffs add “[t]hat information is also relevant to willfulness—such as if a defendant infringed with knowledge of, or in reckless disregard or willful blindness for, a copyright/trademark owner's rights.” Id.

Second, Plaintiffs argue that “infringing conduct need not occur entirely within the U.S. for it to violate U.S. copyright and trademark law[,]” and such a question may be “highly pertinent” at summary judgment or trial, but this is not a reason to resist discovery. Id. at 3 (emphasis in the original) (internal quotation marks and citations omitted). In other words, “[d]ebate about whether or how a legal doctrine will ultimately apply does not narrow the scope of discovery—or even what can be alleged in a pleading or agued at trial.” Id. To point to the “plausibility of Innermost's worldwide sales of the Accused Products touching the U.S. in some way[,]” Plaintiffs cite documents that allegedly show Innermost distributed products to IMDC who then redistributed those products abroad, and sold units through its Hong Kong showroom “that were coded as exports priced in U.S. dollars.” Id. at 4. Plaintiffs summarize “[c]ompelling production of this information does not imply[ ] that the plaintiff[s] will be permitted to recover extraterritorial damages ... that is an evidence-based question for summary judgment or trial.” Id. (internal quotation marks and citations omitted) (alternation in the original).

First, Defendants argue U.S. “copyright laws have no application to extraterritorial infringement.” ECF No. 172, Opp'n at 3. Instead, Defendants assert, “[r]ecovery of damages arising from overseas infringing uses [i]s allowed [when] the predicate act of infringement occurring within the United States enabled further reproduction abroad.” Id. (quoting Los Angeles News Servs. v. Reuters Television Int'l (USA) Ltd., 149 F.3d 987, 992 (9th Cir. 1998)) (emphasis in the original).

*3 Second, Defendants assert the RFPs at issue are not relevant because: (1) “the form of Plaintiff's requests for ‘Accused Products’ does not call for records pertaining to sales outside the U.S.[,]” id.; and (2) “[P]laintiffs' amended pleading shows they are not alleging foreign infringements of their copyrights from predicate acts originating in the U.S.[,]” and “[Federal Rule of Civil Procedure (“Rule”)] 26(b)(1) advisory committee's note to the 2000 amendment states that parties ‘have no entitlement to discovery to develop new claims or defenses that are not already identified in the pleadings[,]” id. at 4.

Third, Defendants contend:

Id.

In the Reply, Plaintiffs argue “Innermost did not object on extraterritoriality grounds in its responses to Plaintiff's requests, and any objection is thus waived ... But even if this objection were not waived, adjudicating the application of the extraterritoriality doctrine ... is a summary judgment or trial issue, not an issue for discovery.” ECF No. 173, Reply at 1. Plaintiffs next assert that “how the extraterritoriality doctrine ... is adjudicated necessarily depends on what is produced during discovery” and Defendants' “cited authorities only support this position as they each addressed the applicability of extraterritorial infringement as the summary judgment or trial state [sic].” Id.

Further, Plaintiffs argue Defendants' argument that it “never sold any alleged accused products for distribution or sale in the U.S. and then resale outside of the U.S. do[es] not define the scope of relevance” because “Defendants very well could have engaged in such conduct, or any number of other scenarios that would entitle Plaintiffs to damages from sales outside the U.S., the existence of which Innermost acknowledges and which the discovery process is meant to flesh out and confirm.” Id. Plaintiffs add that “Innermost's arguments concerning Plaintiffs' allegations in the [C]omplaint, its definition of Accused Products, and the alleged separateness of Innermost and Innermost HK can be disregarded” because “Plaintiffs will not and cannot know where all acts of infringement in fact took place until sales records showing all sales (and revenues/profits therefrom) are produced, and certainly would have no way to know at the outset of the case.” Id. at 2. Moreover, “[t]he RFPs seek total sales information” meaning “all, complete, comprising the whole amount ... Innermost's suggestion that ‘total’ somehow means less than all because the RFPs don't specifically state ‘sales outside the US’ is absurd.” Id.

A. General Legal Standard for Discovery

Rule 26 governs the scope of permissible discovery and provides:

*4 Fed. R. Civ. P. 26(b)(2).

Relevancy, for purposes of discovery, “has been construed broadly to encompass any matter that bears on, or that reasonably could lead to other matters that could bear on, any issue that is or may be in the case.” Nguyen v. Lotus by Johnny Dung Inc., No. 8:17-cv-01317-JVS-JDE, 2019 WL 3064479, at *1 (C.D. Cal. June 5, 2019) (internal citations and quotation marks omitted).

“The party seeking to compel discovery has the burden of establishing that its request satisfies the relevancy requirements of Rule 26(b)(1). [T]he party opposing discovery [then] has the burden of showing that the discovery should be prohibited, and the burden of clarifying, explaining or supporting its objections.” Bryant v. Ochoa, No. 07cv200 JM (PCL), 2009 WL 1390794, at *1 (S.D. Cal. May 14, 2009).

B. Analysis

After careful review of the parties' briefing and relevant law, the Court finds that the total global sales, revenue, and profits of the products at issue are relevant for discovery purposes and should be produced. This is no way means that the revenues shown in the materials that are ordered to be produced are recoverable by Plaintiffs.

Defendants' extraterritorial sales figures are relevant both to potential damages and to their potential willfulness or knowledge of any infringing activities. See Goes Int'l, AB v. Dodur LTD, 14-cv-05666-LB, 2016 WL 427369, at *4 (N.D. Cal. Feb. 4, 2016) (finding global revenue figures were “relevant to [plaintiff's] claim under the Copyright Act, and more specifically, to its request for extraterritorial damages”); Midnight Rider, Inc. v. Forever 21 Inc., 16-09298-SJO (JEMx), 2017 WL 11634980, at *2 (C.D. Cal. Nov. 6, 2017) (complaint sought “to recover ‘all profits’ realized by Forever 21's wrongful acts” which “would include profits from international sales, satisfying Rule 26(b)(1)'s relevancy standard”); Alticor, Inc. v. UMG Recordings, Inc., 6:14-cv-542-Orl-37DAB, 2015 WL 13792333, at *3 (M.D. Fl. Apr. 24, 2015) (“Even if ... the foreign conduct is not actionable [in a copyright case], it is still relevant information that may well lead to discovery of admissible evidence, as to issues such as knowledge, willfulness, and Amway's enforcement of its procedures with respect to copyrights.”).

Defendants' arguments to the contrary fail. First, the RFPs seek the “total” sales, revenue, and profit amounts for the Piccadilly, Glaze, and Circus products, ECF No. 165, MTC at 1-2, and the FAC seeks “all damages, including future damages, that Plaintiffs have sustained, or will sustain,” ECF No. 82, FAC at Prayer ¶ 1 (emphasis added). “Total” and “all” does not mean limited to within the U.S. and Plaintiffs' definition of “Accused Products” is likewise not so limited. See ECF No. 173, Reply at 2. The RFPs are thus “broad enough” to encompass both U.S. and international sales figures, and “it is the function of the meet and confer process to provide a forum for the parties to ... refine the scope of documents sought by the parties.” Prolo v. Blackmon, 21-5118 JFW (PVCx), 2022 WL 2189643, at *7-8 (C.D. Cal. Mar. 25, 2022) (rejecting an argument that a request for “ ‘total revenues’ generated ‘in connection with’ the Subject Photographs” did not include information regarding “indirect profits”).

*5 Second, Plaintiffs are not precluded from discovering international sales figures because of the pleadings. This is not a case where Plaintiffs seek to “develop new claims or defenses” through discovery. See ECF No. 172, Opp'n at 4 (quoting Fed. R. Civ. P. 26(b)(1) 2000 amendment advisory committee note). The FAC alleges that “Innermost [and] IMDC ... have worked together to market, sell, promote, and distribute [the Accused Products] to third parties and to consumers around the world and in the United States.” ECF No. 82, FAC at ¶ 36 (emphasis added); see also id. at ¶¶ 53 (“All Defendants are liable for the infringement .... [and] all the Defendants worked together to ... sell ... Plaintiff's Circus Pendant, which were marketed and offered for sale by all Defendants in the United States ... and by Innermost and LightForm in the rest of the world.” (emphasis added)), 80 (same for Glaze Pendant).

While the pleadings focus primarily on Defendants' conduct within the United States, see supra Section I.A., Plaintiffs may be able to recover for a “predicate act of infringement occurring within the United States [that] enabled further reproduction abroad[,]” as Defendants acknowledge in the Opposition. See ECF No. 172, Opp'n at 2 (quoting Los Angeles News Service, 149 F.3d at 992) (emphasis removed). Potential reproduction abroad is at issue in this case. See ECF No. 165, MTC at 4 (identifying documents that allegedly show “Innermost distributed ‘Circus’ products to IMDC in the U.S., who then redistributed those products to a customer in Ecuador, and both Defendants generated revenue from the same.”). Likewise, the parties dispute the significance of sales documents purportedly reflecting shipments of the products from Innermost's Hong Kong facility “as exports priced in U.S. dollars” and “identifying the U.S. in their descriptions.” See id.

Third, the potential applicability of the extraterritoriality doctrine supports, rather than forecloses discovery into the same. Although Defendants argue that “the Copyright Act does not apply extraterritorially under the facts of this case[,]” ECF No. 172, Opp'n at 1, it is a complex factual and legal issue to be resolved at summary judgment or trial, not on a motion to compel. In Midnight Rider, the “[d]efendant withheld international sales figures from its production, arguing that [p]laintiff ha[d] not demonstrated that the Lanham Act applies extraterritorially to [p]laintiff's claims.” 2017 WL 11634980, at *1. The court noted “[t]his is not a motion to dismiss [or for summary judgment], but a discovery dispute.” Id. The court went on to explain that if the plaintiff proved the extraterritorially of its claims, then “it w[ould] be entitled to recover ‘all profits' realized by [the defendants'] wrongful acts” and the “sales data may provide information that will enable [the p]lainitiff to satisfy [the relevant legal] standards.” Id. Likewise, here, Plaintiff is entitled to investigate whether Defendants made any international sales that violate U.S. copyright or trademark laws, and global sales data may help prove their claims. See Alticor, 2015 WL 13792333, at *2 (whether “conduct that occurred outside the United States ... is a violation of the Copyright Act” “await[ed] appropriate presentation and resolution by the District Judge [and] the [c]ourt f[ou]nd[ ] the pendency of the issue d[id] not foreclose discovery relating to foreign conduct”); see also Goes Int'l, 2016 WL 427369, at *2 (“[T]he court holds that the plaintiff may discover documents that reveal ... the revenue that the defendant realized from worldwide distribution of the challenged video games.... A substantive ruling on whether the plaintiff can prove such damages must await further factual development with legal argument attuned to those fuller facts.”).

*6 On the other hand, Defendants provide no information to suggest that providing this information would be unduly burdensome, such that the Court may consider this factor in denying the discovery sought. See Fed. R. Civ. P. 26(b)(2)(requiring a court to weigh whether the discovery sought would result in the producing party incurring “burden or [that] outweighs [the discovery's] ... likely benefit”).

As such, Defendants' (and Innermost HK's) global sales, revenue, and profit data of the Piccadilly, Glaze, and Circus products is relevant and an appropriate subject of discovery, regardless of the ultimate merits of Plaintiff's extraterritoriality arguments. Therefore, the Court GRANTS Plaintiff's Motion to Compel.

Plaintiffs' Motion to Compel is GRANTED and Innermost and IMDC will be required to produce documents responsive to the RFPs at issue within 14 days from the date of this Order.

IT IS SO ORDERED.