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Brady v. Grendene Usa, Inc.

United States District Court, S.D. California

September 26, 2014

GRENDENE USA, INC., a Delaware corporation, and GRENDENE S.A., a Brazil corporation, Defendants.


KAREN S. CRAWFORD, Magistrate Judge.

Before the Court are the parties' (1) Joint Motion for Determination of Discovery Dispute to compel the plaintiffs to appear for depositions; [Doc. 68] (2) Joint Motion for Determination of Discovery Dispute to compel the defendants to respond to the plaintiffs' Interrogatory Nos. 1-7 and 9-15 and Request for Production Nos. 1-85, to compel the defendants and three witnesses to appear for depositions, and to compel the defendants to pay the costs for a defense witness from Brazil to travel to his deposition in Orlando, Florida; [Doc. 70] (3) Joint Motion for Determination of Discovery Dispute to compel the plaintiffs to schedule third-party depositions, to compel the plaintiffs to remove improper confidentiality designations from over 35, 000 pages of documents produced in discovery, and to compel the plaintiffs to identify which documents were produced pursuant to initial disclosures; [Doc. 74] and (4) Joint Motion for Determination of Discovery Dispute to compel the plaintiffs to respond to Defendant's Document Request Nos. 37 and 14.[1] [Doc. 88] Both sides further seek attorneys fees under Federal Rule of Civil Procedure 37(a)(5). For the reasons outlined below, the defendants' request in the first Joint Motion [Doc. 68] is GRANTED, and the parties' requests in the remaining Joint Motions [Docs. 70, 74, 88] are GRANTED in part and DENIED in part without prejudice. The Court declines to award attorneys' fees.

Having resolved the parties' discovery disputes, the Court also amends the Scheduling Order [Doc. 62] to permit the parties time to complete discovery. Accordingly, the parties' Joint Motion to Extend Pretrial Deadlines [Doc. 101] is DENIED as moot in light of the amended Scheduling Order contained herein.


Plaintiffs James W. Brady and Patricia M. Brady instituted this action by filing their initial Complaint on March 9, 2012. [Doc. 1] A First Amended Complaint was thereafter filed on March 16, 2012. [Doc. 4] The plaintiffs allege that the defendants Grendene USA and Grendene S.A. improperly use the name "iPanema" on their sandals which are sold in California, creating a likelihood of confusion with the plaintiffs' products which are sold in California and elsewhere. Id. The plaintiffs assert claims for (1) trademark infringement under 15 U.S.C. § 1114; (2) false designation of origin under 15 U.S.C. § 1125(a)(3); (3) unfair competition under California Business and Professions Code § 17200; (4) unfair competition under California common law; and (5) cancellation of Grendene S.A.'s U.S. Trademark Registration No. 1, 908, 543 for the mark "IPANEMA" in connection with footwear. Id.

In response to the First Amended Complaint, on May 2, 2012, defendants filed a Motion to Dismiss, or in the alternative, Motion to Transfer, on the grounds that the Court lacks personal jurisdiction over foreign defendant Grendene S.A. [Doc. 13] Judge Gonzalo P. Curiel denied this motion on August 19, 2013, finding that Grendene S.A. is subject to specific jurisdiction in this case by virtue of its activities, purposefully directed at California. [Doc. 55] The defendants filed their answer on September 3, 2013, and asserted a counterclaim seeking declaratory judgments on noninfringment and invalidity. [Doc. 56] Subsequently, this Court held an Early Neutral Evaluation Conference on December 17, 2013, [Doc. 59] and issued a scheduling order regulating discovery and pre-trial proceedings on February 11, 2014. [Doc. 62]

Between May and July, the parties filed four Joint Motions to resolve discovery disputes which provide an overview of the parties' numerous discovery disagreements in this case. [Docs. 68, 70, 74, 88] It appears that the parties reached an initial impasse in April and May over the scheduling of the plaintiffs' depositions. [Doc. 68, pp. 1-3] This, combined with other discovery disagreements, escalated to the point where the defendants resolved to withhold all future responsive discovery and production of witnesses for deposition. [Doc. 70, p. 10] The plaintiffs in turn refused to schedule their own witnesses for depositions. [Doc. 74, p. 11] Now it appears that discovery has come to a standstill, as the parties await this Court's intervention.

On July 25, 2014, the defendants filed a Motion for Summary Judgment regarding the likelihood of confusion, which is currently pending before Judge Curiel. [Doc. 92] On August 4, 2014, the parties filed a Joint Motion to Extend Certain Pretrial Deadlines seeking approximately a one-month continuance of deadlines in light of the pending discovery disputes and the Motion for Summary Judgment. [Doc. 101] Before this Court is also the plaintiffs' ex parte Motion to Seal Documents Publicly Filed, [Doc. 78] which will be addressed in a separate written order.

In the four Joint Motions for Determination of Discovery Disputes pending before this Court, the parties have outlined 13 contested discovery issues. [Docs. 68, 70, 74, 88] Taking these 13 issues in the order in which they were raised, the Court will incorporate the parties' responses and provide its analysis in each subsection below.


As a preliminary matter, the Court is unimpressed by the parties' efforts to informally resolve their discovery disputes. Going forward, the parties are admonished to obey both the letter and the spirit of the Federal Rules of Civil Procedure and work together to manage discovery in the most efficient manner practical. These Rules do not permit parties to unilaterally refuse to produce discovery or schedule depositions.

The scope of discovery under Rule 26(b) is broad: "Parties may obtain discovery regarding any matter, not privileged, which is relevant to the claim or defense of any party involved in the pending action. Relevant information need not be admissible at trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence." FED. R. CIV. P. 26(b). This Court has broad discretion when determining relevancy for discovery purposes. See Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002) ("Broad discretion is vested in the trial court to permit or deny discovery, and its decision to deny discovery will not be disturbed except upon the clearest showing that denial of discovery results in actual and substantial prejudice to the complaining litigant.") (internal citations omitted). However, this discretion should be balanced with the obligation to interpret the Rules in order to secure a "just, speedy, and inexpensive determination" of the action. FED. R. CIV. P. 1.

When a discovery dispute arises, the party seeking to compel discovery has the burden of establishing that its request satisfies the relevancy requirements of Rule 26(b)(1). Soto v. City of Concord, 162 F.R.D. 603, 610 (N.D. Cal. 1995). Thereafter, the party opposing discovery has the burden of clarifying, explaining or supporting its objections. DIRECTV, Inc. v. Trone, 209 F.R.D. 455, 458 (C.D. Cal. 2002), citing Blankenship v. Hearst Corp., 519 F.2d 418, 429 (9th Cir. 1975). Those opposing discovery are "required to carry a heavy burden of showing" why discovery should be denied. Blankenship, 519 F.2d at 429.

"Complete and accurate responses to discovery are required for the proper functioning of our justice system... [and] parties have a duty to provide true, explicit, responsive, complete and candid answers to discovery [.]" Skinner v. Ryan, CV-12-1729-PHX-SMM (LOA), 2014 WL 3064897, at *4 (D. Ariz. July 7, 2014), citing Wagner v. Dryvit Sys., Inc., 208 F.R.D. 606, 609-10 (D. Neb. 2001). "Providing false or incomplete discovery responses violates the Federal Rules of Civil Procedure and subjects the offending party and its counsel to sanctions." Id. Moreover, Rule 26(e)(1) requires a party to amend prior responses if that party learns that the response is incorrect in some material respect, or if additional or corrective information comes to light that has not otherwise been made known to the other parties during the discovery process.


In the first Joint Motion, the defendants request that this Court compel the plaintiffs' depositions. For the reasons explained below, the defendants' request to compel is GRANTED, and the depositions shall occur within 21 days of this order.[2]

Between March 31 and April 2, 2014, the plaintiffs served deposition notices for defendants Grendene USA and Grendene S.A. and three individuals, setting the depositions for dates between May 9 and May 16, 2014. [Doc. 70-2, Exs. 3-7] The defendants thereafter noticed the depositions of the plaintiffs for April 21, 2014. [Doc. 68-1, Exs. M-N] Defense counsel had previously requested on or about April 9, 2014, [3] convenient dates and times to depose the plaintiffs, via emails and telephone calls to the plaintiffs' counsel. Id. at pp. 6-7, Exs. I, L. After receiving no response to his inquiry, the defendants served deposition notices setting the deposition dates for May 6 and May 19, 2014. Id. at Exs. M-N. The plaintiffs' counsel thereafter informed defense counsel that the plaintiffs would not be available on those dates in May, but could be deposed on June 24 and June 26, 2014, "provided that the depositions of Defendants' Rule 30(b)(6) witnesses [] proceed before those dates." Id. at Ex. R. The defendants responded that these dates were unacceptably close to Court's discovery cut-off deadline of July 11, 2014, and that they would not make their witnesses available to be deposed while the plaintiffs insisted on priority. [Doc. 68-1, p. 9] [Doc. 70, pp. 50-51] This Joint Motion follows.

The defendants' position is that the plaintiffs improperly asserted "deposition priority" by insisting that they should be permitted to take a Rule 30(b)(6) deposition before the plaintiffs' depositions could proceed. [Doc. 68, p. 8] [Doc. 68-1, p. 8] The plaintiffs concede that there is no rule of deposition priority under the Federal Rules of Civil Procedure, but argue instead that their position is justified because the defendants have "stonewalled" them by refusing to provide any firm dates for the depositions of their own witnesses and by failing to produce the discovery necessary to complete those depositions. [Doc. 68, pp. 11-12]

Rule 26(d)(2) states that unless the Court orders otherwise for the parties' and witnesses' convenience and in the interests of justice, "methods of discovery may be used in any sequence; and discovery by one party does not require any other party to delay its discovery." Thus it is clear that Rule 26(d) abolishes the deposition priority rule of the past. U.S. v. Bartesch, 110 F.R.D. 128, 129 (N.D. Ill. 1986). Courts do not regularly issue orders altering the sequence of depositions unless a specific reason justifies taking one party's deposition before other depositions commence. Stein v. TriCity Healthcare Dist., 12cv2524-BTM (BGS), 2014 WL 458021, at *2 (S.D. Cal. Feb. 4, 2014) (citation omitted).

As there is no rule of "deposition priority, " this Court finds that the depositions noticed by the defendants should proceed first. Two factors support this conclusion. First, the plaintiffs are the moving party in the law suit; they should be prepared to be deposed first to demonstrate the bases for their claims. Second, the plaintiffs have already had an opportunity to depose four witnesses: two defense witnesses as part of the early jurisdictional discovery, and two third-party witnesses on the issue of product confusion. [Doc. 68-1, p. 11] [Doc. 71, p. 1] The defendants' request to compel the plaintiffs' depositions is therefore GRANTED. These depositions shall take place within 21 days of this Order, and will occur before any other defense witnesses are deposed, unless the parties mutually agree to a different deposition schedule.


The second Joint Motion raises 7 discrete issues which will be addressed in turn.

A. Plaintiffs' Interrogatory Nos. 1-7, 9, 11-15 and Request for Documents Nos. 1-18, 20-68, 70-84

The plaintiffs seek an order compelling the defendants to respond to Interrogatory Nos. 1-7 and 9-15 and Request for Documents Nos. 1-85. By way of background, the plaintiffs served their First Set of Interrogatories (Nos. 1-20) and First Set of Requests for Production (Nos. 1-85) on March 21, 2014. [Doc. 70, pp. 12, 39] The defendants responded on April 30, 2014, stating objections to each of the Interrogatories[4] and Document Requests[5] that are the subject of this section of the Order. [Doc. 70-2, Exs. 1-2] Counsel met and conferred about their discovery disputes on May 7, 2014. [Doc. 68-5, p. 5; Doc. 70-2, p. 2]

Five days before the filing of this Joint Motion, on May 16, 2014, the defendants served their First Supplemental Responses to Plaintiffs' First Set of Interrogatories (Nos. 1-20). [Doc. 68-5, Ex. F] That same day, they also made documents available for inspection in response to the Interrogatories and the plaintiffs' First Set of Requests for Production (Nos. 1-85). [Doc. 68-5, p. 5] Counsel for the parties met and conferred again on May 20, 2014. [Doc. 70-2, p. 2] This Joint Motion was filed May 21, 2014.

The defendants now argue that the plaintiffs' requests to compel responses to Interrogatory Nos. 1-7, 9, and 11-15, and Request for Documents Nos. 1-18, 20-68, and 70-84, are moot in light of their supplemental responses on May 16, 2014. [Doc. 70, pp. 15-48] The defendants continue to object to Plaintiffs' Interrogatory No. 10 and Plaintiffs' Request for Documents Nos. 19, 69 and 85, and their arguments will be addressed separately, below.

The Federal Rules dictate that parties must serve answers and any objections to interrogatories and document requests within 30 days. FED. R. CIV. P. 33(b)(2); FED. R.CIV.P. 34(b)(2)(A). The responding party should respond to interrogatories to the fullest extent possible, and any objections must be stated with specificity. FED. R. CIV. P. 33(b)(3)-(4). There is some suggestion from the parties' filings that the defendants deliberately withheld responsive discovery until May 16, 2014, in the face of mounting discovery disputes. See [Doc. 70, pp. 10, 13-14]. If a discovery dispute arises, the proper procedure is for the parties to submit a joint motion to this Court within 45 days. CRAWFORD CHAMBERS R. V. The Federal Rules do not permit parties to take matters into their own hands by delaying or forestalling the discovery process. See FED. R. CIV. P. 26(d)(2)(B) ("discovery by one party does not require any other party to delay its discovery"); Nat'l Acad. of Recording Arts & Sci., Inc. v. On Point Events, LP, 256 F.R.D. 678, 680 (C.D. Cal. 2009) ("discovery is not conducted on a tit-for-tat' basis").

However, since the plaintiffs' statement in the Joint Motion does not address the adequacy of the defendants' supplemental discovery responses which were provided on May 16, 2014, this Court lacks the information necessary to evaluate these disputes. Accordingly, the plaintiffs' request is DENIED without prejudice to the ...

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