United States District Court, S.D. California
WAHOO INTERNATIONAL, INC., a California corporation, Plaintiff,
PHIX DOCTOR, INC., a Florida Corporation; and DOES 1-10, Defendants.
ORDER: (1) DENYING DEFENDANT'S EX PARTE MOTION TO QUASH THIRD PARTY SUBPOENAS;
(2) DIRECTING THE PARTIES TO EXECUTE A PROTECTIVE ORDER; AND (3) MODIFYING
PLAINTIFF'S SUBPOENAS. [ECF No. 50]
BARBARA L. MAJOR, Magistrate Judge.
On June 25, 2014, Defendant Phix Doctor, Inc. ("Phix Doctor") filed an "Ex Parte Application for Protective Order, Motion to Quash and an Order Shortening Time." ECF No. 50. On June 27, 2014, Plaintiff Wahoo International, Inc. ("Wahoo") filed an "Opposition to Defendant's Ex Parte Motion to Quash and/or for a Protective Order." ECF No. 51. Having considered all of the briefing and supporting documents presented, and for the reasons set for below, the Court DENIES Defendant's motion to quash third-party subpoenas, ORDERS the parties to execute a protective order, and MODIFIES Plaintiff's subpoenas.
FACTUAL AND PROCEDURAL BACKGROUND
On June 14, 2013, Plaintiff Wahoo filed this lawsuit against Defendants alleging trademark infringement, in violation of 15 U.S.C. § 1114, trademark dilution and false designation of origin, in violation of 15 U.S.C. § 1125 (A)&(C), and other related causes of action. ECF No. 1. Plaintiff manufactures UV cure resins that are used to repair fiberglass, plastic, wood, and metal, and sells its products online and through distributors in California, Maryland and Hawaii. Id. at 3. Plaintiff owns SOLAREZ trademark on its repair putty, and alleges that Defendants developed a resin product, which they began marketing under the confusingly similar "Durarez" mark in November 29, 2011. Id. at 4-6, 8, 12.
Defendant did not obtain counsel or otherwise respond to the complaint, and on September 17, 2013, Plaintiff filed a motion for entry of default. ECF No. 6. On September 19, 2013, District Judge Gonzalo P. Curiel issued an Order to Show Cause ("OSC") why default judgment should not be entered against Defendant for failing to obtain counsel. ECF No. 10. At the November 8, 2013 OSC hearing, Defendant appeared through counsel, Isi Mataele, and the Court ordered "defense counsel to file their appearance by 11/12/2013." ECF No. 15. After Defendant did not appear or respond to the complaint by the deadline, Plaintiff renewed its request for entry of default on November 18, 2013, and the district court entered a default judgment against Defendant on November 20, 2013. ECF Nos. 16 & 17.
On December 13, 2013, Plaintiff filed an ex parte motion for an extension of time to file for default judgment and for leave to conduct limited discovery necessary for Plaintiff's default prove-up, which was granted on December 19, 2013. See ECF No. 22; see also ECF No. 23 (containing District Judge Curiel's order allowing Plaintiff to "conduct discovery for the limited purpose of proving Defendant's profits pursuant to 15 U.S.C. § 1117"). On February 18, 2014, Plaintiff served Defendant with discovery requests seeking Defendant's profits from the use of the allegedly infringing mark. ECF No. 51-1, Declaration of Erin K. Barns ("Barns Decl.") at 3. Plaintiff alleges that in response to its discovery requests, Defendant produced two excel spreadsheets, which listed total sales and some categories of expenses, but did not produce any other documents, such as invoices or receipts. ECF No. 51 at 7. Although the parties preliminarily agreed on June 5, 2014, to enter into a protective order, such order was not executed. Id. at 4, 7; see also Barns Decl. at 4; ECF No. 50-3, Declaration of Isi Mataele ("Mataele Decl.") at 2.
Plaintiff asserts that on June 5,  2014, it served five subpoenas on Eastern Surf Supply, Larry Block Enterprises, Ocean Lineage, Rainbow Distributing, and Shane Preston of Salamander Paddle Gear. Barns Decl. at 5; see also ECF No. 51-1 at 13, 23, 33, 43, 53, 63.
The subpoenas requested the following documents:
1. ALL DOCUMENTS evidencing, constituting or relating to all agreements with PHIX DOCTOR, INC. regarding DURA REZ, including but not limited to, contracts for purchase or sale and license agreements.
2. ALL DOCUMENTS evidencing, constituting or relating to the purchase or sale of DURA REZ products, including but not limited to all invoices, receipts, refunds, COMMUNICATIONS, and agreements with third parties, including retailers.
3. ALL DOCUMENTS evidencing, constituting or relating to all COMPLAINTS received by YOU regarding DURA REZ products.
ECF No. 51-1 at 20, 30, 40, 50, 70 (emphasis in original).
Defendant filed the instant motion requesting the Court to enter a "protective order, a motion to quash, and order shortening time regarding disclosure of Defendant and third party trade secrets, proprietary information, and other protected information." ECF Nos. 50 at 1; 50-1 at 9. In the alternative, Defendant asks the Court to order Plaintiff to bear the cost of production. ECF No. 50-1 at 9. Defendant alleges that Plaintiff's subpoenas are procedurally deficient, improperly served, and seek to compel Defendant's distributors to produce protected information. ECF No. 50 at 2.
Plaintiff denies Defendant's allegations that the challenged subpoenas are procedurally deficient and seek privileged or trade secret information. ECF No. 51 at 1; see also ECF No. 50 at 2. Plaintiff further asserts that Defendant's motion is "procedurally and substantively deficient, " factually inaccurate, and that the ex parte relief sought by Defendant is improper in light of Defendant's delay in bringing the motion. ECF No. 51 at 1. Plaintiff thus asserts that Defendant's ...