United States District Court, S.D. California
ORDER RE JOINT MOTION FOR DETERMINATION OF DISCOVERY
DISPUTE (PLAINTIFFS DOCUMENT REQUEST NOS. 73-78) [DOC. NOS.
70 AND 72.]
S. Crawford United States Magistrate Judge
the Court is the parties' Joint Motion for Determination
of Discovery Dispute. [Doc. Nos. 70 and 72.]In the Joint
Motion, plaintiff seeks an order compelling defendant to
produce documents in response to Request for Production of
Document Nos. 73 through 78. [Doc. No. 72, at p. at p. 2-6.]
Alternatively, plaintiff wants the Court to conduct an in
camera review to determine whether defendant's
privilege claims are valid under the common interest
doctrine. [Doc. No. 72, at p. 16.]
argues that plaintiffs request for an order compelling
production of all documents responsive to Request Nos. 73
through 78 should be denied, because it has already produced
responsive documents that are non-confidential and
non-privileged. [Doc. No. 72, at p. 16-18.] As to responsive
documents that purportedly include trade secrets or
confidential commercial information, defendant argues that
the Court should not order them produced to plaintiff, who is
defendant's competitor, because they are not important to
resolving matters at issue in the case and because production
would be harmful to defendant's business interests.
Defendant also requests a protective order pursuant to
Federal Rule of Civil Procedure 26(c) precluding the
production of certain confidential documents. As to other
responsive documents, defendant argues that its assertion of
the attorney-client privilege is appropriate based on the
common interest doctrine. Both parties seek monetary
sanctions against the other for costs and fees related to
resolving their dispute. [Doc. No. 72, at p. 16, 29.]
reasons outlined more fully below, the Court finds that
plaintiffs request for an order compelling defendant to
produce all documents responsive to Request Nos. 73 through
78 must be DENIED as untimely and because relevance and/or
proportionality have not been demonstrated under Federal Rule
26(b)(1). In addition, plaintiffs request for an in
camera review is DENIED as unnecessary and inappropriate
under the circumstances presented. Defendant's request
for a Federal Rule 26(c) protective order as to confidential
documents exchanged with a third party is also DENIED as
untimely and because defendant did not make the required
showing. Finally, the Court finds that the parties'
mutual requests for monetary sanctions must be DENIED.
operative Third Amended Complaint was filed on November 7,
2016 and includes nine causes of action for: (1) breach of
written contract; (2) breach of the covenant of good faith
and fair dealing; (3) trademark infringement in violation of
the Lanham Act; (4) trademark infringement via reverse
confusion under the Lanham Act; (5) fraud in obtaining
registered marks; (6) unfair competition; (7) copyright
infringement; (8) an accounting; and (9) declaratory relief.
[Doc. No. 49, at pp. 1, 11-38.] Since two of plaintiff's
claims are asserted under Federal law, jurisdiction in this
case is based on Title 28, United States Code, Section 1331.
[Doc. No. 49, at p. 3.]
Leadership Studies, Inc., doing business as Center for
Leadership Studies ("CLS"), represents in the Third
Amended Complaint that it "is engaged in the business of
teaching and promoting the 'Situational Leadership Model,
' which enables managers, salespeople, peer leaders,
teachers, and parents to interface with and influence others
more effectively. [Plaintiff] conducts workshops and
certification processes with its customers, who use its
unique curriculum to guide the customers onto the path of
becoming more effective leaders." [Doc. No. 49, at p.
2.] Defendant is essentially involved in the same type of
business. [Doc. No. 49, at p. 2.]
founder, Paul Hersey ("Dr. Hersey"), developed the
"Situational Leadership Model" methodology while
working with Ken Blanchard ("Dr. Blanchard"), and
the two became partners in CLS. [Doc. No. 49, at p. 4.] Dr.
Blanchard later sold his interest in CLS, released his rights
to any of CLS's copyrighted materials, and assigned his
interest in a pending trademark application for the mark
"Situational Leadership" to CLS. [Doc. No. 49, at
Dr. Blanchard decided to open his own company, apparently
known as Blanchard Training and Development, Inc., the
defendant in this action. [Doc. No. 49, at p. 2, 5.]
Defendant entered into a License Agreement with plaintiff in
1987 to use the trademark "Situational Leadership."
[Doc. No. 49, at p. 4.] According to the Third Amended
Complaint, the License Agreement only permitted the use of
the Situational Leadership trademark "in association
with goods and services which [met] and [exceeded] a level of
quality exemplified by the goods and services presently
offered under the mark 'Situational
Leadership.'" [Doc. No. 49, at p. 4.] Under the
License Agreement, defendant was also obligated to cooperate
with plaintiff in maintaining the viability of the trademark
and was required to use the "appropriate statutory
notice symbol" (i.e., Situational
Leadership®). [Doc. No. 49, at p. 5.]
2006, plaintiff learned that defendant "registered the
mark 'Situational Leadership II' in English in
China." [Doc. No. 49, at p. 6.] To avoid litigation,
plaintiff and defendant entered into an agreement allowing
defendant to use the "Situational Leadership" mark
in English in China. [Doc. No. 49, at p. 7.] However,
defendant then "commenced a pattern and practice of
registering the marks 'Situational Leadership' and
'Situational Leadership II' in other countries"
in violation of the License Agreement [Doc. No. 49, at p. 7.]
As a result of defendant's actions, plaintiff has been
denied the ability to register the mark in these other
countries. [Doc. No. 49, at p. 7.]
also claims that defendant began marketing its product as
"Situational Leadership® II - the SLII
Experience" and then applied to register
"SLII" as a trademark. [Doc. No. 49, at p. 8.] The
acronym "SLII" did not "trigger any potential
conflicting marks with the Patent and Trademark Office or
other notice to [plaintiff] that [defendant] claimed
ownership of this derivative mark." [Doc. No. 49, at p.
8.] In addition, plaintiff claims that defendant did not
disclose the existence of a senior mark (i.e.,
Situational Leadership®) in its trademark application
even though "SLII" is shorthand for
"Situational Leadership® II." [Doc. No. 49, at
p. 8.] According to the Third Amended Complaint,
defendant's position is that its use of "Situational
Leadership II" falls outside of and is not governed by
the License Agreement. [Doc. No. 49, at p. 9.]
further alleges in the Third Amended Complaint that
"Situational Leadership II" and "SLII"
are "confusingly similar" and are "likely to
cause, and cause, consumer confusion, thereby infringing upon
[plaintiff's] rights to its mark, 'Situational
Leadership.'" [Doc. No. 49, at p. 9.] Other
allegations in the Third Amended Complaint are that defendant
is marketing its products in a manner that is detrimental and
disparaging to plaintiff. [Doc. No. 49, at pp. 9-11.]
Plaintiff represents that it terminated the License Agreement
in a letter to defendant on September 30, 2015. [Doc. No. 49,
at p. 11]
argues that plaintiffs request for an order compelling
production of documents responsive to Request Nos. 73 through
78 and plaintiffs alternative request for an in
camera review should be denied as untimely. [Doc. No.
72, at p. 17 n.7.] As with prior Scheduling Orders [Doc. Nos.
43 and 53], the Second Amended Scheduling Order in this case
states as follows:
1. ... All discovery motions must be filed within 45 days
of the service of an objection, answer, or response which
become the subject of dispute, or the passage of a discovery
due date without response or production, and only after
counsel have met and conferred and have reached an impasse
with regard to the particular issue.... In any case, the
event giving rise to a discovery dispute is not the date on
which counsel reach an impasse in meet and confer efforts. If
the discovery dispute concerns written discovery requests,
the parties shall submit a joint statement entitled,
"Joint Motion for Determination of Discovery
Dispute" with the Court. (For further information on
resolving discovery disputes, see Judge Crawford's
'Chambers' Rules' which are accessible via the
Court's website at www.casd.uscourts.gov.) A
failure to comply in this regard will result in a waiver of a
party's discovery issue. Absent an order of the
Court, no stipulation continuing or altering this requirement
will be recognized by the Court.
* * * *
15. The dates and times set forth herein will not be modified
except for good cause showing.
[Doc. No. 59, at p. 2 (emphasis added).]
Rule of Civil Procedure 16(b)(4) also states as follows:
"A schedule may be modified only for good cause and with
the judge's consent." Fed.R.Civ.P. 16(b)(4).
September 26, 2015, defendant served plaintiff with
objections to Document Request Nos. 73 through 78 and
declined to produce any responsive documents. [Doc. No. 72,
at p. 8.] Defendant then served plaintiff with amended
responses/objections to these requests on November 23, 2016
and agreed to produce some documents. [Doc. No. 72, at p. 8.]
The parties' Joint Motion was not filed until April 19,
2017, long after the 45-day deadline expired. [Doc. No. 72.]
Apparently, the parties did not follow the Court's
Scheduling Orders and informally agreed to "an ongoing
meet-and-confer process" that continued over an extended
period of time. [Doc. No. 72, at p. 16 n.7.] The parties did
not seek, and the Court did not grant, a request for an
extension of time for the parties to present their discovery.
Accordingly, the Court finds that plaintiff's request for
an order compelling defendant to produce documents in
response to Document Request Nos. 73 through 78 and
plaintiff's alternative request for in camera
review must be denied as untimely and because plaintiff's
requests are unsupported by a showing of good cause for
extending the time for the parties to present their discovery
dispute to the Court.
Procedural Backeround Relevant to the Parties'
Document Request Nos. 73 through 78 all seek documents
related to a "recently-contemplated transaction"
between defendant Blanchard Training and Development, Inc.
and third party Korn/Ferry International
("Korn/Ferry"). [Doc. No. 72, at p. 7.] Although
the parties' papers indicate the transaction was not
completed, Korn/Ferry considered purchasing defendant. [Doc.
No. 72, at pp. 7, 16-17.] Document Request Nos. 73 through 78
seek production of "[a]ll documents" showing
communications between defendant and Korn/Ferry concerning:
(1) defendant's "alleged rights" in the mark
"Situational Leadership®" (Req. No. 73); (2)
Korn/Ferry's potential acquisition of defendant (Req. No.
74); (3) ...