UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
June 21, 2011
APPLE INC., A CALIFORNIA CORPORATION,
SAMSUNG ELECTRONICS CO., LTD., A KOREAN BUSINESS ENTITY; SAMSUNG ELECTRONICS AMERICA, INC., A NEW YORK CORPORATION; SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC, A DELAWARE LIMITED LIABILITY COMPANY,
The opinion of the court was delivered by: Lucy H. Koh United States District Judge
ORDER DENYING MOTION TO COMPEL EXPEDITED DISCOVERY
Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively "Samsung") move to compel expedited discovery from Plaintiff Apple, Inc. ("Apple"). Specifically, Samsung seeks an order compelling Apple to produce product samples, packaging, and packaging inserts for the next generation iPhone and iPad. The Court heard oral argument on June 17, 2011. Having considered the submissions 24 and arguments of the parties, the Court DENIES Samsung's motion to compel.
On April 15, 2011, Plaintiff Apple, Inc. ("Apple") filed suit against Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications 28 America, LLC (collectively "Samsung"). In its Complaint, Apple alleges that Samsung's Galaxy cell phones and computer tablets infringe Apple's trade dress, trademarks, and utility and design 2 patents. On April 19, 2011, Apple filed a motion seeking expedited discovery related to five 3 products that Samsung was allegedly preparing to introduce into the U.S. market: (1) the Galaxy 4 S2 cell phone, (2) the Galaxy Tab 8.9 tablet computer, (3) the Galaxy Tab 10.1 tablet computer, (4) 5 the Infuse 4G cell phone, and (5) the 4G LTE (or "Droid Charge") cell phone. Based on images 6 and models provided to the public, Apple alleged that these new products would mimic Apple's 7 protected designs in the iPhone and iPad and infringe Apple's intellectual property. In particular, 8 Apple claimed that Samsung delayed introduction of its new tablet computers "to give [Samsung] 9 additional time to mimic more closely" the recently released iPad 2, and that Samsung's 10 forthcoming cell phone products were designed to mimic the iPhone 4. See Pl.'s Mot. to Expedite Discovery at 3-5, ECF No. 10. Apple indicated that it was considering seeking a preliminary
injunction to prevent Samsung from introducing its new products into the U.S. market, and it 13 therefore sought expedited discovery in order to evaluate whether a preliminary injunction motion 14 was warranted. 15 The Court held a hearing on Apple's motion for expedited discovery on May 12, 2011, and 16 issued an order granting limited expedited discovery on May 18, 2011. The Court denied Apple's 17 request for expedited written discovery and a 30(b)(6) deposition, but ordered Samsung to produce 18 the latest iteration of product samples, packaging, and package inserts for its new products. See 19 Order Granting Limited Expedited Discovery, ECF No. 52. In so ordering, the Court found that 20 these product and packaging samples would be directly relevant to any preliminary injunction 21 motion. Id. at 4. Although the Court recognized that production of unreleased products could be 22 prejudicial, the Court found that Samsung's claim of prejudice was "undermined to some extent by 23 evidence that Samsung has already released images and samples of its forthcoming products to the 24 media and members of the public." Id. at 5. Accordingly, the Court granted limited expedited 25 discovery of product, packaging, and packaging insert samples under a stringent protective order, 26 to be produced with the designation "Outside Counsel Eyes Only." Id. at 6. 27
At the hearing on Apple's motion for expedited discovery, counsel for Samsung argued that 28 if Apple were granted expedited discovery, Samsung should be entitled to some form of reciprocal discovery. See Tr. of May 12, 2011 Proceedings before Judge Koh, Decl. of Todd M. Briggs ISO 2 Samsung's Mot. to Compel ("Briggs Decl."), Ex. 28 at 24:2-7, ECF No. 57. Specifically, Samsung 3 stated:
[T]here are things that we fairly should be entitled to get, through discovery, to oppose a preliminary injunction, such as any evidence they have of any confusion, or lack of confusion, between [Samsung's] products and Apple products; any documents concerning good will; loss of good will; market share; reputation to Apple . . . .
If they've done research surveys or studies relating to the likelihood of confusion, we would be entitled to those if we were to fairly oppose a preliminary injunction motion.
Id. at 34:10-22. Apple indicated that it would agree to some reciprocal expedited discovery, 10 provided the requested discovery was reasonable and necessary to oppose a preliminary injunction. might be appropriate, but found that the issue was not ripe for decision at that time. Id. at 49:4-7, Shortly after the hearing on Apple's motion for expedited discovery, Samsung contacted
Apple to request reciprocal expedited discovery. Briggs Decl. ¶ 30.
Rather than seeking the 16 evidence of consumer confusion and loss of
good will discussed at the motion hearing, Samsung 17 asked Apple to
produce samples of the most current version of the next generation
iPhone and 18 iPad, along with the retail packaging and package
inserts. Id. ¶ 30 & Ex. 10. Apple refused to 19 provide the requested
discovery, on grounds that future Apple products would have no
relevance to 20 any preliminary injunction motion. Id. ¶ 32-34 & Ex.
12-13. Apple indicated, however, that it 21 remained willing to engage
in expedited discovery directed to relevant issues and proposed a 22
schedule for production of documents and depositions of declarants
following the filing of a 23 preliminary injunction motion.*fn1
Id. Ex. 13. Samsung now moves to compel Apple to produce, as
24 reciprocal expedited discovery, samples of Apple's next generation
iPhone and iPad and the 25 associated packaging and inserts. Apple
opposes Samsung's motion.
regarding any non-privileged matter that is relevant to any party's claim or defense." Fed. R. Civ. 4 P. 26(b)(1). The Rules also provide a method for compelling such discovery, in the event that a 5 party refuses to provide requested discovery that falls within the scope of Rule 26(b). If, after 6 notice and an attempt to meet and confer, a party fails to provide requested discovery, the 7 requesting party "may move for an order compelling disclosure or discovery." Fed. R. Civ. P. 8
The Federal Rules also dictate the timing of discovery. Pursuant to Rule 26(d), a party "may not seek discovery from any source" prior to the conference required by Rule 26(f), which 26(d), (f). In this case, because the parties have not held a 26(f) conference and discovery has not 13 formally commenced, Samsung must show that expedited discovery is warranted in order to 14 compel production by Apple. Courts within the Ninth Circuit generally use the "good cause" 15 standard to determine whether to permit discovery prior to a Rule 26(f) conference. See, e.g., 16 (N.D. Cal. Jan. 7, 2010); Semitool, Inc. v. Tokyo Electron America, Inc., 208 F.R.D. 273, 276 (N.D. 18 Cal. 2002). "Good cause may be found where the need for expedited discovery, in consideration of 19 the administration of justice, outweighs the prejudice to the responding party." Semitool, 208 20 F.R.D. at 276. In determining whether good cause justifies expedited discovery, courts commonly 21 consider factors including: "(1) whether a preliminary injunction is pending; (2) the breadth of the 22 discovery requests; (3) the purpose for requesting the expedited discovery; (4) the burden on the 23 defendants to comply with the requests; and (5) how far in advance of the typical discovery process 24 the request was made." American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1067 (C.D. Cal. 25 2009).
introducing allegedly infringing products into the U.S. market. Apple previously sought expedited
Under the Federal Rules of Civil Procedure, parties generally "may obtain discovery 37(a)(1).
l Case Management Conference. Fed. R. Civ. P. must take place at least 21 days before the initia 12
Interserve, Inc. v. Fusion Garage PTE, Ltd., No. C 09-05812 JW (PVT), 2010 WL 143665, at *2 17
Apple has indicated that it may seek a preliminary injunction to prevent Samsung from discovery in support of this potential motion and submitted evidence that Samsung had released 2 images and information about all of the five products for which Apple sought expedited discovery. 3
The Court therefore granted Apple limited expedited discovery of Samsung's unreleased products 4 on grounds that Apple's need for such discovery to evaluate a preliminary injunction motion 5 outweighed the relatively minimal potential prejudice to Samsung. The question now before the Court is whether good cause exists to require Apple to provide expedited discovery of its future 7 products to Samsung for use in its opposition to any preliminary injunction motion filed by Apple. 8
9 likely to allege that Samsung's recently released and forthcoming
products infringe Apple's 10 trademarks and trade dress.*fn2
"A plaintiff seeking a preliminary injunction must establish
that he is
The parties' briefs suggest that any preliminary injunction motion brought by Apple is
likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the 13 public interest." Winter v. Natural Res. Def. Council, Inc., 129 S.Ct. 365, 374 (2008). Thus, any 14 preliminary injunction motion is likely to focus significantly on whether Apple is likely to succeed 15 on the merits of its infringement claims. To prevail on a claim of trademark infringement, a party 16 must prove (1) that it has a protectable interest in the mark, and (2) that the defendant's use of a 17 similar mark is likely to cause consumer confusion. See Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011). The concept of "trade dress" is 19 somewhat broader than "trademark," as it "refers to the 'total image of a product' and may include 20 features such as size, shape, color, color combinations, texture or graphics." International Jensen, 21
Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993). Nonetheless, "the analysis for 22 trade dress and an unregistered trademark under section 43(a) of the Lanham Act is very similar." 23
Id. at 823. Under either theory, a plaintiff must show that the trade dress or unregistered trade 24 mark: "(1) is nonfunctional; (2) is either inherently distinctive or has acquired a secondary 25 meaning; and (3) is likely to be confused with [the defendant's] products by members of the 26 consuming public." Id. 27
2 the similarity of the marks is likely to confuse customers about the source of the products." 3 Cir. 1999) (quoting Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1391 (9th Cir. 1993)). 5 "The core element of trademark infringement is the likelihood of confusion, i.e., whether Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1053 (9th 4 Courts within the Ninth Circuit look to the following eight factors, known as the Sleekcraft factors, 6 for guidance in determining the likelihood of confusion: (1) strength of the plaintiff's mark; (2) 7 proximity or relatedness of the parties' products; (3) similarity of the marks; (4) evidence of actual 8 confusion; (5) marketing channels used; (6) the type of goods and the degree of care likely to be 9 exercised by purchasers in selecting the goods; (7) defendant's intent in selecting its mark; and (8) 10 likelihood of expansion of the product lines. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), abrogation in part on other grounds recognized by Mattel, Inc. v. Walking
Mountain Prods., 353 F.3d 792, 810 n. 19 (9th Cir. 2003). The Ninth Circuit has cautioned that the Sleekcraft factors should be applied flexibly, as some factors may be "much more important than 14 others, and the relative importance of each individual factor will be case-specific." Brookfield, 174 F.3d at 1054. Thus, "[t]he Sleekcraft factors are intended as an adaptable proxy for consumer 16 confusion, not a rote checklist." Network Automation, 638 F.3d at 1145. 17 18 request for expedited discovery and its potential preliminary injunction motion on the allegation 19 that Samsung's new and forthcoming products infringe the trademarks and trade dress embodied in
Apple's existing products. In its motion for expedited discovery, Apple specifically alleged that 21 after Apple announced its new iPad 2 on March 2, 2011, Samsung delayed introduction of its new 22 tablet computers in order to more closely mimic the iPad 2. See Pl.'s Mot. to Expedite Discovery 23 at 3-4. Apple also specifically alleged that Samsung's forthcoming Galaxy S2 cell phone was 24 likely to mimic Apple's iPhone 4. Id. at 5. Indeed, Apple's motion requested written discovery 25 and a 30(b)(6) deposition specifically "relating to any copying of design elements of, or attempts to 26 design around Apple's intellectual property relating to, the iPhone 4, iPad, and iPad 2." Id. at 9-10. 27
This suggests, and Apple insists, that any motion for preliminary injunction filed by Apple will be 28 based upon Samsung's alleged infringement of the trademarks and trade dress embodied in the As an initial matter, the Court notes that throughout this proceeding, Apple has premised its existing iPhone 4, iPad, and iPad 2, rather than any next generation products that Apple may 2 release in the future. For this reason, Apple argues that its future products have no relevance to its 3 anticipated motion, and Samsung has no need to obtain these products in order to oppose the 4 motion. 5
on products already in the market, but contends that Apple's future products will nevertheless be 7 relevant to the Court's evaluation of Apple's motion. Specifically, Samsung argues that Apple's 8 next generation iPhone and iPad will be relevant to the Court's evaluation of several factors in the 9 likelihood of confusion analysis, including the similarity of the marks, proximity of the products, 10 and the strength of Apple's mark. First, Samsung points out that under Sleekcraft, the similarity of Samsung does not question Apple's intent to base its preliminary injunction motion solely the parties' marks "is tested on three levels: sight, sound, and meaning," and "[e]ach must be considered as they are encountered in the marketplace." Sleekcraft, 599 F.2d at 351. That is, 13 similarity should be evaluated by "examining the actual situations in which consumers [are] likely 14 to read, hear, and consider" the marks. Network Automation, 638 F.3d at 1150-51. Samsung 15 claims that Internet reports and Apple's past practice indicate that Apple will be releasing its next 16 generation iPhone and iPad later this year.*fn3 Therefore, Samsung argues that "the most likely 17 manner in which consumers will encounter Samsung's just-released products will be alongside 18 No. 64. For this reason, Samsung contends that a proper likelihood of confusion analysis must 20 include a comparison of Samsung's new and forthcoming products with Apple's next generation 21 products. 22 23 products and the strength of Apple's mark. Samsung claims that Apple's future products are Apple's just-released products," not alongside the iPhone 4, iPad 2, or iPad. Reply Br. at 6, ECF 19 Samsung makes similar claims with regard to the factors regarding proximity of the relevant to the "proximity" or "relatedness" factor because Apple's future products may be less 2 directly related to Samsung's products, and to the "strength" factor because differences in the next 3 generation products could weaken the strength of Apple's trade dress. Additionally, in its reply 4 brief, Samsung also argues, for the first time, that Apple's future products could affect the 5 protectability of Apple's trade dress because these products are relevant to the "consistent overall 6 look" requirement for trade dress protection in a line of products. 7
8 strong need for the expedited discovery Samsung requests. The Court agrees that the possibility 9 that Apple will introduce next generation iPhone and iPad products in the near future may have 10 some effect on the likelihood of confusion analysis. The Court also agrees that Samsung should be 11 entitled to parity in discovery related to the preliminary injunction motion. This does not mean, While these arguments are not without merit, the Court finds that they do not establish a however, that Samsung must have access to prototypes of Apple's next generation products. Apple 13 has repeatedly stated that it will seek preliminary relief based only on the alleged infringement of 14 its existing products, in particular the iPhone 4, iPad, and iPad 2. Apple is entitled to do this, and 15 the Court must consider the claims that Apple actually brings. The Court finds, moreover, that 16 there is nothing unreasonable or deceptive about Apple's decision to limit its claims in this manner. 17
Of the five Samsung products for which this Court ordered expedited discovery, three were 18 publicly released in the United States before the deadline for production set by the Court.*fn4
Apple products. Similarly, as to the tablet computers, Samsung's evidence does not strongly 21 support its contention that release of an iPad 3 is imminent. Apple's release history suggests that 22
Decl. Exs. 3-8. The new iPad 2 was introduced in March 2011, a mere three months ago. Id. Ex. 24
7. Thus, Samsung's contention that its new tablet products are likely to be encountered alongside a 25 next generation iPad product is quite speculative, and Apple's decision to focus on infringement of 26
Presumably consumers are already encountering these new Samsung products alongside existing Apple tends to release new versions of its iPad and iPhone products about once a year. See Briggs the iPad 2 appears reasonable. Finally, although the Court agrees that Apple's past history of 2 releasing a new iPhone each June over the past four years supports an inference that the next 3 generation iPhone will be forthcoming, this in itself is not sufficient to support expedited 4 discovery. Ultimately, the essence of Apple's claims is that Samsung has copied Apple's products. 5
Common sense suggests that allegations of copying are necessarily
directed at Apple's existing 6 products, to which Samsung has access
and could potentially mimic, and not at Apple's unreleased, 7
inaccessible, next generation products. Samsung has cited no case
requiring a plaintiff in a trade 8 dress or trademark case to produce
its future products in a context similar to this one. Given these 9
circumstances, the Court agrees with Apple that it simply has not put
its next generation products 10 at issue, at least with respect to its
anticipated motion for a preliminary injunction, and Samsung
products in its opposition to a preliminary injunction motion.
Samsung is free to argue, for 14 instance, that there is little
likelihood of confusion because consumers will not encounter its 15
products side-by-side with the iPhone 4 or iPad 2, but rather with
Apple's next generation iPhone 16 and iPad. Similarly, as to
proximity, Samsung is free to argue that because the iPhone 4 and 17
iPhone 2 will soon be outmoded and reduced in price, they are not
being sold (or very soon will not 18 be sold) to the same class of
purchasers who are likely to buy new Samsung products. By choosing 19
to allege infringement only of its current products, Apple opens
itself up to these arguments. 20
Nothing about these arguments, however, requires Samsung to have access to samples of the next 21 generation products themselves. 22
In its reply brief, Samsung also raised the argument that samples of Apple's future products
23 and packaging are relevant to the protectability of Apple's trade dress in the iPhone and iPad 24 product lines. Although the Ninth Circuit does not appear to have addressed the issue, some 25 circuits have held that where a plaintiff seeks trade dress protection in a line of products, the 26 plaintiff must establish that the line of products has a consistent overall look. See Yurman Design, 27 165, 172 (3d Cir. 2000). The "consistent overall look" standard "do[es] not require that the does not need access to these products in order to oppose such a motion.
This does not mean that Samsung cannot raise the possible introduction of next generation
Inc. v. PAJ, Inc., 262 F.3d 101, 116 (2d Cir. 2001); Rose Art Industries, Inc. v. Swanson, 235 F.3d 28 appearance of the series or line of products or packaging be identical," and a plaintiff generally is 2 permitted to define a product line "as it sees fit." Rose Art Industries, Inc. v. Swanson, 235 F.3d at 3 173. It is true that if Apple eventually introduces an iPhone 5 or an iPad 3 that diverges from the 4 overall consistent look of the existing iPhone or iPad products, Apple might not be able to claim 5 trade dress protection as to its entire line of products. As discussed above, however, Apple's 6 decision to limit its claims to its trademarks and trade dress as embodied in products currently in 7 the market is not unreasonable, and Samsung points to no authority suggesting that the Court must 8 look ahead to unreleased, and possibly not-yet-developed, products in order to evaluate the overall 9 look of an existing product line.
Finally, the Court notes that the relative burden of producing unreleased products may be somewhat greater for Apple than for Samsung. When the Court considered the potential prejudice to Samsung of producing unreleased product samples, the Court emphasized that Samsung had 13 already released significant information about its forthcoming products into the public domain. 14
Indeed, in addition to the images and information released to the media, Samsung had recently 15 released 5,000 samples of its Galaxy Tab 10.1 to members of the public. See Order Granting 16
Samsung's forthcoming products were already publicly available, the Court found that the burden 18 to Samsung of producing the latest iterations of those products, along with their packaging, was 19 minimal. In contrast, Apple maintains a strict policy of not commenting on future products and 20 takes extensive measures to protect information about its unreleased products. Unlike Samsung, 21
Apple closely guards this information as a trade secret. However, while this difference carries 23 some weight, the Court agrees with Samsung that the strict protective order required by the Court 24 and stipulated to by the parties would provide adequate protection to both parties. Apple's 25 contention that this protective order is sufficient for Samsung, but not for Apple, is not well-taken. 26
The Court will not assume that outside counsel and experts who agree to strict confidentiality will 27 nevertheless leak information about Apple's products, nor will the Court assume that Apple would 28 face greater harm from the release of confidential information than would Samsung. In any case,
Limited Expedited Discovery at 5-6. Considering that images, descriptions, and actual samples of Apple has not publicly announced or described the products Samsung seeks to obtain. Instead, the Court need not resolve the issue of prejudice to Apple because it has already found that Apple 2 has not put its future products at issue, and therefore Samsung does not need access to those 3 products in order to oppose a preliminary injunction motion. Accordingly, Samsung has not shown 4 good cause for the expedited discovery it seeks, and its motion must be denied.
For the reasons discussed above, the Court concludes that Samsung has not shown good cause to justify expedited discovery of Apple's future products, packaging, and packaging inserts.
Samsung's motion to compel is therefore DENIED. As noted above, the Court nonetheless 9 believes that Samsung should be entitled to parity in discovery directed at Apple's potential 10 preliminary injunction motion. If Samsung had requested reasonable discovery along the lines e's motion for expedited discover discussed at the hearing on Appl y, the Court would have granted 12 the request. However, as Samsung has not requested such discovery in this motion, the Court 13 cannot order it. In any case, it appears that Apple may be willing to provide such discovery 14 without the need for Court intervention.
IT IS SO ORDERED.