I. Summary

*1 Pending before the Court and scheduled for hearing on March 14, 2023 at 2:00 p.m. is Defendant F19 Holdings, LLC's Motion to Compel Discovery (“Motion to Compel”).[1] The Motion to Compel essentially seeks an order compelling Plaintiff to produce all documents in its possession, custody or control responsive to Document Request (alternatively, “RFP”) Nos. 6, 7, and 9-13 (including attachments to responsive emails) and imposing monetary sanctions on Plaintiff pursuant to Fed. R. Civ. P. 37(a).

Pursuant to Rule 78 of the Federal Rules of Civil Procedure and Local Rule 7-15, the Court finds the Motion to Compel appropriate for decision without oral argument, vacates and takes off calendar the hearing on the Motion to Compel, and submits the matter for decision.

Based upon the Court's consideration of the submissions made in connection with the Motion to Compel, the record, and the pertinent facts and law, and as explained below, the Court grants in part and denies in part the Motion to Compel and orders Plaintiff to produce to Defendant F19 Holdings, LLC the responses/documents called for by this Order by not later than March 28, 2023 (i.e., two weeks after the scheduled hearing date on the Motion to Compel), or on such later date to which the parties may agree in writing that is consistent with the fact discovery cut-off.

II. Background

On or about March 29, 2022, Plaintiff Endo Fitness LL, LLC filed the operative Complaint for Declaratory Relief in Los Angeles County Superior Court, seeking a judicial declaration that Plaintiff may establish a fitness gym in Loma Linda, California using the names Fitness 19 and/or F19 and similar marks, or alternatively other names, without permission from Defendants F19 Holdings, LLC (“F19 Holdings”) and F19 Franchising, LLC (“F19 Franchising”), and without creating liability of Plaintiff's members and affiliates to such Defendants for breach of any agreement. (Docket No. 1-1). On May 9, 2022, Defendants removed the matter to the United States District Court for the Central District of California and initiated the instant federal action. (Docket No. 1). In the Notice of Removal, Defendants characterize Plaintiff's request for declaratory relief as one seeking a declaration that Plaintiff has a valid defense of naked licensing, abandonment and or/estoppel to a claim of trademark infringement by either Defendant regarding the Fitness 19 and F19 trademarks. (Docket No. 1 at 3).[2] On May 23, 2022, Defendants filed their Answer. (Docket No. 9).

*2 On July 13, 2022, the parties filed their corrected Joint Rule 26(f) Report. (Docket No. 19).

Plaintiff asserts the following in the Joint Rule 26(f) Report: Defendants are the franchisor of Fitness 19 fitness gyms (F19 Franchising) and the holder of a federal trademark registration for the Fitness 19 trademarks (F19 Holdings). Defendants claim to own Fitness 19 trademarks for fitness gym services. Plaintiff has sought to have discussions with Defendants on establishing a fitness gym in Loma Linda, California, to be known as Fitness 19. Plaintiff obtained a lease for a location for the gym and anticipated that it would be ready to open around December 2022. Plaintiff sought to enter into a Franchise Agreement with Defendants for Plaintiff to establish the gym but in such discussions, Defendants sought to impose unreasonable, unconscionable terms, and exorbitant fees and charges, even though Defendants do not provide a system or service associated with the proposed fitness gym. Plaintiff came to recognize that what Defendants do is engage in naked trademark licensing which means they do not exercise meaningful quality control, they do not provide or manage standards, they do not police the trademark, and they issue naked licenses to exact large fees. Under the law (and oversimplifying) naked licensing is a form of abandonment which estops Defendants from claiming to hold rights in the trademarks. This action seeks to prove that naked licensing has occurred and asks the Court to declare the same and to declare that Plaintiff has a valid defense of naked licensing, abandonment and/or estoppel to a claim of infringement, so that Plaintiff may use the phrase at its fitness gym to be opened. (Docket No. 19 at 2-3).

Defendants assert the following in the Joint Rule 26(f) Report: Defendant F-19 Holdings holds a federal trademark registration for the Fitness 19 trademarks, as well as other marks in issue (“Marks”). F19 Holdings licensed F19 Franchising to use the Marks. F19 Franchising licenses fitness gyms to utilize the Marks, including the Fitness 19 trademarks. Plaintiff Endo Fitness LL, LLC (which Defendant refers to as Endo LL) is a California limited liability company formed in September 2021 whose member is Robert Rodger. Rodger, Paul Rice, Paul Infald and Adam Osborn are members of Endo Fitness, LLC (which Defendant refers to “Endo”). Endo owns fitness gyms that are franchisees of F19 Franchising and operate as Fitness 19 Fitness Centers. Endo is also the member of other entities that are franchisees of F19 Franchising and operate Fitness 19 Fitness Centers. Rice and Infald, in their own names and through entities in which they own or are members, own fitness gyms that are franchisees of F19 Franchising and operate Fitness 19 Fitness Centers. Rice, through his company Innovative Fitness Club Consulting, Inc. (“Innovative”), and Infald each have separate Exclusive Territory Agreements (“ETA(s)”) with F19 Holdings. The ETAs give Innovative and Infald the exclusive right to develop and operate Fitness 19 Fitness Centers within their territories. The ETA requires each Fitness 19 Fitness Club that opens in the exclusive territory to execute a franchise agreement with F19 Franchising. The franchise agreement is to be “in the form” that Innovative or Infald “previously executed” for other Fitness 19 Fitness Centers. Rice and Infald wished to allow Endo and its associated companies to open Fitness 19 Fitness Centers in the same exclusive territories. To accomplish this, Innovative and Infald signed with F19 Holdings an amendment to their ETAs. The amendment authorized Endo to develop and operate Fitness 19 Fitness Centers within the Rice and Innovative exclusive territories. The amendment further stated that F19 Franchising would not violate the ETAs by executing franchise agreements with Endo to develop and operate Fitness 19 Fitness Centers in the exclusive territories. Finally, the amendment gave Innovative and Infald the right to terminate Endo's authorization “at any time.” Endo was interested in opening a Fitness 19 Fitness Center in Loma Linda, California. Loma Linda is in Innovative's exclusive territory and Innovative authorized Endo to open a Fitness 19 Fitness Center in that city. Endo formed Endo LL for the purpose of developing and operating Fitness 19 Fitness Center in Loma Linda. Endo LL entered into a lease for a location for the gym. Endo LL understood it was required to execute a franchise agreement with F19 Franchising before opening the Fitness 19 Fitness Center or using the Marks. F19 Franchising provided Endo LL with a franchise agreement “in the form” that Innovative “previously executed” for other Fitness 19 Fitness Centers in the exclusive territory. Endo LL objected to particular terms in the franchising agreement and demanded changes. F19 Franchising refused to make those changes and told Endo LL that it had to execute the standard franchise agreement if it wanted to open a Fitness 19 Fitness Center or use the Marks. Endo LL filed this lawsuit as an attempt to avoid having to execute F19 Franchising's standard franchise agreement. F19 Franchising's standard franchising agreement does not contain unreasonable or unconscionable terms or exorbitant fees and charges. F19 Franchising negotiated the terms of the franchise agreement with Rice, Innovative, and Infald. Rice, Innovative, Infald, and the Endo entities have executed approximately forty franchise agreements for Fitness 19 Fitness Clubs. The evidence at trial will show that Defendants do not engage in naked trademark licensing. Defendants exercise meaningful quality control over the Marks, provide or manage standards for the Fitness 19 Fitness Clubs, and police their trademarks. Defendants have not abandoned their Marks and trademarks.

*3 On or about August 26, 2022, Defendant F19 Holdings served its Request for Production of Documents (“Document Requests”) on Plaintiff, which include the Document Requests in issue – RFP Nos. 6, 7, and 9-13 . (JS at 1). On October 6, 2022, Plaintiff served responses to the Document Requests. (Gurnick Decl. ¶ 3). On October 28, 2022, Plaintiff served supplemental responses to the Document Requests, a privilege log, and native files initially numbered FRANCHISING002154 to 002159, later revised to LH0000175 to LH0000180. (Gurnick Decl. ¶ 4).

Before filing the instant Motion to Compel, the parties, at least to some degree, met and conferred regarding Plaintiff's foregoing responses/production. (Gurnick Decl. ¶¶ 5-7, 9-10; Rava Decl. ¶¶ 2, 3). Defendant F19 Holdings filed the Motion to Compel on January 6, 2023 (Docket No. 41), but because it was noticed for hearing on a date after the then-existing fact discovery cut-off such that the Magistrate Judge was without authority to grant any relief relative thereto, and because the parties indicated that they were working on a stipulation to modify the Scheduling Order dates for the District Judge's consideration, this Court deferred ruling on the Motion to Compel and vacated the hearing thereon. (Docket No. 48). After the District Judge modified the schedule and reset the fact discovery cut-off for May 31, 2023, this Court ordered the parties further to meet and confer, set a further briefing schedule, and reset the hearing on the Motion to Compel. (Docket Nos. 57, 62).

The parties thereafter further met and conferred, and although Plaintiff produced one new email, has agreed to undertake/has undertaken further searches for responsive documents and is working with its e-discovery vendor to complete the same, as of the filing of the parties' Supplemental Memoranda on February 28, 2023 such process had not been completed and thus the parties had not resolved all of their differences relative to the Motion to Compel. (Rava Decl. ¶¶ 4-6; Rosen Decl. ¶¶ 2-8, 10).

III. Pertinent Law

Pursuant to Rule 26(b)(1) of the Federal Rules of Civil Procedure, “[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(1). Information within the foregoing scope of discovery need not be admissible in evidence to be discoverable. Fed. R. Civ. P. 26(b)(1).

Pursuant to Rule 34, any party may serve on any other party a request for the production or inspection of documents within the scope of Rule 26(b) which are in the responding party's possession, custody or control. Fed. R. Civ. P. 34(a). Documents are deemed to be within a party's possession, custody or control if the party has actual possession, custody or control thereof or the legal right to obtain the property on demand. In re Bankers Trust Co., 61 F.3d 465, 469 (6th Cir. 1995), cert. dismissed, 517 U.S. 1205 (1996). Accordingly, a party has an obligation to conduct a reasonable inquiry into the factual basis of its responses to discovery, and based on that inquiry, a party responding to a Rule 34 production request is under an affirmative duty to seek that information reasonably available to it from its employees, agents, or others subject to its control. A. Farber & Partners, Inc. v. Garber, 234 F.R.D. 186, 189 (C.D. Cal. 2006) (citations and internal quotation marks omitted).

*4 If a party fails timely to object to discovery requests, such a failure generally constitutes a waiver of any objections which a party might have to the requests.[3] See Richmark Corp. v. Timber Falling Consultants, 959 F.2d 1468, 1473 (9th Cir. 1991) (“It is well established that a failure to object to discovery requests within the time required constitutes a waiver of any objection.”) (citation omitted), cert. dismissed, 506 U.S. 948 (1992).[4]

Pursuant to Rule 37(a)(5), if a party's discovery motion is granted, the court must, after giving an opportunity to be heard,[5] order a party whose conduct necessitated the motion to pay the moving party's reasonable expenses incurred in making the motion, including attorney's fees unless the moving party filed the motion before attempting in good faith to obtain the discovery without court action, the opposing party's conduct was substantially justified, or other circumstances make an award of expenses unjust. Fed. R. Civ. P. 37(a)(5)(A).

IV. Discussion and Orders

*5 First, in light of the District Judge's amendment to the schedule and the current record regarding the parties' meet and confer efforts, Plaintiff's procedural objections to the Motion to Compel are largely, if not entirely moot and, in any event, the Court declines to deny the Motion to Compel further responses/the production of documents based on any such remaining purported procedural deficiencies. The Court does, however, consider such matters in assessing whether the imposition of sanctions is appropriate– a matter further addressed below.

Second, and notwithstanding Plaintiff's apparent ongoing efforts to work with its e-discovery vendor and to supplement its responses/production, the Court declines to further delay ruling on the matters at issue in light of the length of time the Document Requests in issue and the parties' disputes thereon have been pending and the fact that the schedule has already been amended once based at least in part on ongoing discovery disputes. If, as Plaintiff has suggested, the Motion to Compel would be/has been mooted by the further production it represents would be made by “no later than” this week if not the end of last week (see P. Supp. Memo at 3; Rosen Decl. ¶¶ 10, 11), then Plaintiff will suffer no prejudice from the Court ruling on the Motion to Compel to the extent it seeks an order requiring Plaintiff to do that which Plaintiff represents it has been doing/has already done.

Third, although it is not clear that Plaintiff is withholding any documents based upon its asserted objections, the Court addresses such objections for clarity. To the extent the Court herein orders Plaintiff to produce responses/documents which Plaintiff has withheld based on asserted objections, the Court overrules such objections, finds that the discovery sought is relevant, proportional to the needs of the case considering the factors set out in Fed. R. Civ. P. 26(b)(1), and not overbroad, that Plaintiff has not met its burden to demonstrate that production of such discovery would be unduly burdensome, that Plaintiff's privacy rights are outweighed by F19 Holdings' need for the information sought,[6] that such information can be adequately protected by the Protective Order that has been entered in this action, and that Plaintiff's other objections, except to the extent otherwise indicated below, are not well-taken.[7] However, to the extent the Court herein narrows/modifies the discovery requests in issue/definitions therein – and/or declines to order Plaintiff to produce everything sought by Defendant F19 Holdings, the Court sustains at least Plaintiff's overbreadth objections.

*6 Fourth, the Motion to Compel is granted to the extent it requests that Plaintiff be ordered to produce – to the extent Plaintiff has not already done so – all attachments to all emails produced to date in response to RFP No. 6, 7, and 9-13 (framed as “Issue 2” in the Motion to Compel). To the extent Plaintiff has not already done so, Plaintiff is ordered to conduct a reasonably diligent search for, and to produce, to the extent it has not already produced, all attachments to all emails produced to date in response to RFP No. 6, 7, and 9-13. See Symettrica Entertainment, Ltd. v. UMG Recordings, Inc., 2020 WL 13311682, at *5 (C.D. Cal. July 17, 2020) (“Courts in this Circuit have long recognized that an email and its attachment comprise ‘one document or message unit’ and consistently require a producing party to ‘re-link the emails with the attachments or re-produce the emails with their attachments.’ ”) (collecting cases); Pom Wonderful LLC v. Coca-Cola Co., 2009 WL 10655335, at *3 (C.D. Cal. Nov. 30, 2009) (granting motion to compel production of missing email attachments); Virco Mfg. Corp. v. Hertz Furniture Sys., 2014 WL 12591482, at *5 (C.D. Cal. Jan. 21, 21014) (“This Court agrees with those courts which have held that emails produced in discovery should be accompanied by their attachments or that the attachments should be produced along with information sufficient to enable a receiving party to identify the emails to which the attachment corresponds.”) (citations omitted).

Fifth, as detailed below in its discussion of the individual discovery requests, the Court grants in part and denies in part the Motion to Compel to the extent it calls for Plaintiff to produce further responses/documents responsive to RFP Nos. 6, 7, and 9-13.

As to RFP No. 6 – which calls for Plaintiff to produce “all Documents that relate or refer to the Property, including but not limited to, lease agreement, guarantees, other agreements or memorandums [sic], correspondence, and other Communications” (JS at 5) – the Court views the request to be overbroad and insufficiently particularized/specific and notes that Defendant offers no explanation as to why such an expansive array of documents are relevant/proportional to the needs of the case. Accordingly, the Court grants in part and denies in part the Motion to Compel as to RFP No. 6 and narrows this request to call for the production of the following documents related to the Property: lease agreement(s), guarantee(s) and correspondence/communications relating to such lease agreement(s)/ guarantee(s). To the extent Plaintiff has not already done so, Plaintiff is ordered to conduct a reasonably diligent search for, and to produce all documents in its possession, custody or control responsive to RFP No. 6 as modified, and a corresponding supplemental response.

As to RFP No. 7 – which calls for Plaintiff to produce “all documents that relate or refer to the operations of a fitness club to be located in Loma Linda, California since January 2018” (JS at 6) – the Court views the request to be overbroad and insufficiently particularized/specific and notes that Defendant offers no explanation as to why such an expansive array of documents are relevant/ proportional to the needs of the case. Accordingly, the Court grants in part and denies in part the Motion to Compel as to RFP No. 7 and narrows this request to call for the production of the following documents: agreement(s) and memoranda of understanding related to the operation(s) of a fitness club to be located in Loma Linda, California since January 2018 and correspondence/communications relating to the same. To the extent Plaintiff has not already done so, Plaintiff is ordered to conduct a reasonably diligent search for, and to produce all documents in its possession, custody or control responsive to RFP No. 7 as modified, and a corresponding supplemental response.

As to RFP No. 9 – which calls for Plaintiff to produce “all Communications between Robert Rodger, Paul Infald, Paul Rice, and/or Adam Osborn with any and all representatives of Defendants, including but not limited to, Casey Pirog, Robert Lineberger, and Thomas Graves, that refer or relate to the development, opening, or establishment of a fitness club in Loma Linda, California” (JS at 6-7) – the Court grants the Motion to Compel. To the extent Plaintiff has not already done so, Plaintiff is ordered to conduct a reasonably diligent search for, and to produce all documents in its possession, custody or control responsive to RFP No. 9, and a corresponding supplemental response.

*7 As to RFP No. 10 – which calls for Plaintiff to produce “all Communications among and between Robert Rodger, Paul Infald, Paul Rice, and/or Adam Osborn, that refer or relate to any guarantee of the lease of the Property” (JS at 7) – the Court grants the Motion to Compel. To the extent Plaintiff has not already done so, Plaintiff is ordered to conduct a reasonably diligent search for, and to produce all documents in its possession, custody or control responsive to RFP No. 10, and a corresponding supplemental response.

As to RFP No. 11 – which calls for Plaintiff to produce “all Communications between Robert Rodger, Paul Infald, Paul Rice, and/or Adam Osborn with any and all representatives of Defendants, including but not limited to, Casey Pirog, Robert Lineberger, and Thomas Graves, that refer or relate to any guarantee of the lease to the Property” (JS at 8) – the Court grants the Motion to Compel. To the extent Plaintiff has not already done so, Plaintiff is ordered to conduct a reasonably diligent search for, and to produce all documents in its possession, custody or control responsive to RFP No. 11, and a corresponding supplemental response.

As to RFP No. 12 – which calls for Plaintiff to produce “all communications between Robert Rodger, Paul Infald, Paul Rice, and/or Adam Osborn with any and all representatives of Defendants, including but not limited to, Casey Pirog, Robert Lineberger, and Thomas Graves, that refer or relate to any guarantee of the lease of the Property (JS at 8) – the Court denies the Motion to Compel as this request – at least as framed in the Joint Stipulation which is all the Court has to go on – is identical to/duplicative of RFP No. 11.

As to RFP No. 13 – which calls for Plaintiff to produce “all Communications between Robert Rodger, Paul Infald, Paul Rice, and/or Adam Osborn with the lessors, leasing agents, and property managers for the Property that refer or relate to any guarantees of the lease of the Property” (JS at 9) – the Court grants the Motion to Compel. To the extent Plaintiff has not already done so, Plaintiff is ordered to conduct a reasonably diligent search for, and to produce all documents in its possession, custody or control responsive to RFP No. 13, and a corresponding supplemental response.

Sixth, the Court denies the Motion to Compel without prejudice to the extent it requests that the Court impose sanctions at this juncture. In light of the original procedural deficiencies in the Motion to Compel (e.g., the initial untimely filing thereof), the somewhat mixed rulings on the substantive merits of the Motion to Compel, the demise of Plaintiff's former lead counsel, and what appear to the Court to be significant efforts by current counsel (detailed in the Rosen Declaration) to remedy matters, the Court views the circumstances present here to make an award of expenses unjust at this juncture.

IT IS SO ORDERED.