United States District Court, S.D. California
ORDER GRANTING IN
PART AND DENYING IN PART DEFENDANT'S MOTION TO COMPEL PLAINTIFF TO PRODUCE
DOCUMENTS AND REQUESTING SANCTIONS [ECF NO. 105]
JILL L. BURKHARDT, Magistrate Judge.
Presently before the Court is Defendant R.F. Technologies' Motion to Compel Plaintiff to Produce Documents in Response to Requests for Production of Documents, Set One, and Request for Sanctions. (ECF No. 105.) After careful consideration of all of the papers filed in support of and in opposition to this motion, and the authorities cited therein, Defendant's Motion to Compel is GRANTED IN PART and the request for sanctions is DENIED.
This action involves Plaintiff HM Electronic's claims of economic damages and losses arising from Defendant's alleged trademark and trade dress infringement of certain "drive-thru headset systems." (ECF No. 1.) Plaintiff manufactures, sells and repairs drive-thru headset systems used in the quick service restaurant industry. (ECF No. 1 at ¶¶ 6-7.) Plaintiff's First Amended Complaint ("FAC") against Defendant asserts claims for trademark infringement, false designation of origin, trade dress infringement, trade libel, unfair competition and interference with prospective economic advantage. (ECF No. 156.) Plaintiff alleges that Defendant has violated the Lanham Act by using Plaintiff's trademarks and trade dress in advertising and promotional materials, falsely suggesting an association with or sponsorship by Plaintiff in connection with its marketing campaigns, and re-branding Plaintiff's products as Defendant's products and attempting to pass those products off as its own. The FAC further alleges that Defendant has published false information regarding the quality, durability and reliability of Plaintiff's products, and unsubstantiated claims that Plaintiff's products that have been repaired and refurbished by Defendant are stronger and more durable than Plaintiff's OEM (Original Equipment Manufacturer) products. Defendant repairs drive-thru headset products manufactured by Plaintiff and by others (most notably, 3M and Panasonic). Plaintiff asserts that Defendant does not manufacture drive-thru headset systems, but does manufacture a few products for use with other manufacturers' systems.
On or about December 13, 2013, Defendant served its Request for Production of Documents, Set One upon Plaintiff. (ECF No. 105-1 at 5.) On February 14, 2014, Plaintiff served its responses to the document requests. Defendant contends that the responses were "laden with meritless objections, " and that Plaintiff failed to produce documents sufficiently responsive to the requests. ( Id. ) Plaintiff and Defendant met and conferred telephonically on March 7, 2014 to discuss these alleged deficiencies. At the conclusion of the call, Defendant claims that Plaintiff gave assurances that it would revisit its discovery responses. ( Id. ) According to Defendant, over three months have passed since the initial production request and Plaintiff has yet to produce adequately responsive documents. ( Id. at 6.) Defendant filed its Motion to Compel on March 27, 2014. (ECF No. 105.)
II. The Instant Motion to Compel
Defendant's Motion seeks to compel production of documents responsive to Request for Production of Documents, Set One. Defendant's Motion addresses the requests in two groups.
A. Request Nos. 5, 7, 9, 30, 49-52, 53-57, 73-74, 92, 102-106, and 119-128
This above group of production requests seek documents indicating the characteristics and durability of Plaintiff's drive-thru headset products, as well as the quality and costs to repair and maintain them. (ECF No. 105-1 at 8.) The requests also seek documents "sufficient to indicate the products [Plaintiff] contends were infringed by [Defendant], " and "documents indicating whether consumers or third-parties are confused about whether there is any connection between [Defendant and Plaintiff]." ( Id. )
Defendant argues that such documents are clearly relevant to the instant lawsuit. The documents, Defendant contends, "help establish whether [Plaintiff] has a unique trademark and trade dress worthy of protection." ( Id. at 8-9.) The documents will also help to establish whether there was in fact any confusion about a connection or affiliation between the Plaintiff and Defendant and whether customers and third-parties were misled in anyway. ( Id. at 9.)
Plaintiff objects to the above requests on the grounds that they are vague, ambiguous and overboard, and therefore unduly burdensome. Plaintiff further objects to a number of the above requests on the grounds that they seek "information not relevant to the claims or defenses at issue, nor reasonably calculated to lead to the discovery of admissible information." (ECF No. 105-3 at 10.) Additionally, Plaintiff objects to these requests to the extent that they seek "documents that contain confidential, sensitive, proprietary, or trade secret information belonging to Plaintiff." ( Id. at 12.)
Defendant contends that further responses and production should be compelled because Plaintiff's general objections are not sufficient responses. (ECF No. 105-1 at 14.) Defendant adds that Plaintiff has failed to provide a privilege log identifying which documents it is withholding on the basis of privilege. ( Id . at 15. ) Defendant objects to Plaintiff's responses that agree to production, but contain the limiting language "to the extent they [the responsive documents] exist." ( Id. ) Defendant seeks unequivocal responses to document requests, stating either that the responsive documents do not exist or in the alternative, that the documents do exist and will be produced forthwith. ( Id. )
B. Request Nos. 3, 5-13, 15-20, 23, 27 and 39
Plaintiff has objected to the above requests on the grounds that they are vague, ambiguous and overbroad, and therefore unduly burdensome and harassing. (ECF No. 105-1 at 21.) Furthermore, a number of requests are objected to on the basis that they seek information protected by the attorney-client privilege or the attorney work product doctrine. (ECF No. 105-3 at 12.)
Defendant argues that Plaintiff's relevancy objections to the above requests "are self-serving, and ring hollow." (ECF No. 105-1 at 17.) The threshold for relevance is minimal, and Defendant contends that it is entitled to discovery regarding any non-privileged matter that is relevant to any party's claim or defense. ( Id. at 21 (citing Fed.R.Civ.P. 26(b)(1).) "Documents that pertain in any way to [Plaintiff's] method and manner of competing with [Defendant] are relevant to [Defendant's] defense of [Plaintiff's] unfair competition allegations, particularly if these documents show that [Plaintiff] is engaged in similar, identical conduct in the drive-thru headset market." ( Id. ) Defendant argues that because truth is one of Defendant's affirmative defenses to the trade libel allegations, documents concerning complaints lodged by customers regarding the service, repair, or sale of Plaintiff's products are relevant and should be produced. ( Id. at 23.)
C. Defendant Contends that Monetary Sanctions Should be Awarded
Defendant submits that monetary sanctions are appropriate here because Plaintiff has "abused the discovery process by making unmeritorious boilerplate objections to discovery, without substantial justification, and providing evasive and incomplete responses...." ( Id. at 24.) Defendant seeks sanctions in the amount of $5, 150 for attorney's fees and costs occurred in bringing the instant motion. ( Id. )
Plaintiff argues that the request for sanctions should be denied because "discovery sanctions must not' be ordered where the opposing party's nondisclosure, response, or objection was substantially justified' or other circumstances make an award unjust.'" (ECF No. 123 at 21 (citing Fed.R.Civ.P. 37(a)(5)(A)).) According to Plaintiff, both preclusions apply in this case. ( Id. ) First, Plaintiff's objections and refusals to produce documents are justified because genuine disputes exist over whether the documents should be produced. ( Id. (citing Pierce v. Underwood, 487 U.S. 522, 556 (1988)).) Secondly, an award of expenses in this case would be unjust because Defendant has also acted unjustifiably in providing "piecemeal production of scant documents responsive" to Plaintiff's requests. ( Id. at 22.)
III. Legal Standard
The Federal Rules of Civil Procedure ("FRCP") generally allow for broad discovery, authorizing parties to obtain discovery regarding "any nonprivileged matter that is relevant to any party's claim or defense." Fed.R.Civ.P. 26(b)(1). In addition, "[f]or good cause, the court may order discovery of any matter relevant to the subject matter involved in the action." Id. Relevant information for discovery purposes includes any information "reasonably calculated to lead to the discovery of admissible evidence, " and need not be admissible at trial to be discoverable. Id. There is generally no requirement that the information sought by a party directly relate to a particular issue in the case. Rather, relevance encompasses any matter that "bears on, " or could reasonably lead to matter that could bear on, any issue that is or may be present in the case. Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978).
District courts have broad discretion to determine relevancy for discovery purposes. Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002). Similarly, district courts have broad discretion to limit discovery where the discovery sought is "unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive." Fed.R.Civ.P. 26(b)(2)©. Limits should also be imposed where the burden or expense outweighs the likely benefits. Id.
A party may request the production of any document within the scope of Rule 26(b). Fed.R.Civ.P. 34(a). "For each item or category, the response must either state that inspection and related activities will be permitted as requested or state an objection to the request, including the reasons." Fed.R.Civ.P. 34(b)(2)(B). Under FRCP 26(e), a party who has made a disclosure under Rule 26(a), or who has responded to an interrogatory, request for production, or request for admission must supplement or correct its disclosure or response in a timely manner if the party learns in some material respect the disclosure or response is incomplete or incorrect. Fed.R.Civ.P. 26(e).
A party who prevails on a motion to compel is entitled to his or her expenses, including reasonable attorney fees, unless the losing party was substantially justified in making or opposing the motion, or if other circumstances make such an award unjust. Fed.R.Civ.P. 37(a)(5)(A). The losing party must have had notice and an opportunity to be heard before a court will award expenses to the prevailing party on a motion to compel. Id. ; Falstaff Brewing Corp. v. Miller Brewing Co., 702 F.2d 770, 784 (9th Cir.1983).
Plaintiff's Opposition addresses the requests for ...