CytoSport, Inc. v. Select Milk Producers, Inc. et al

Filing 56

ORDER signed by Magistrate Judge John F. Moulds on 12/7/12 ORDERING that Defendants' 42 motion for a protective order is DENIED; Plaintiff's 44 motion to compel is GRANTED; and Defendants' shall serve responses to plaintiff's first request for production ofdocuments and first interrogatories on or before 12/14/12. (Kastilahn, A)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE EASTERN DISTRICT OF CALIFORNIA

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CYTOSPORT, INC.,
Plaintiff,

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No. 2: 11-cv-1705 MCE JFM

vs.
SELECT MILK PRODUCERS, INC.,
et al.,

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Defendants.

ORDER
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This matter came to be heard on December 6, 2012 at 11:00 a.m. in courtroom

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# 26 on defendants’ motion for a protective order seeking a stay of all discovery and plaintiff’s

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motion to compel responses by defendants to its first request for the production of documents

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and first interrogatories. For the following reasons, defendants’ motion for a protective order

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will be denied and plaintiff’s motion to compel will be granted.

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I. BACKGROUND
In June 2011, plaintiff filed this action against defendants for protection of its

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trademarks associated with its ready to drink nutritional supplements and powders sold under a

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variety of trademarks including, among others, “Muscle Milk” as well as its slogan “Recover,

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Restore, Rebuild.” Plaintiff asserts that defendants’ products target its “Milk” family of
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trademarks by calling its products “Athlete’s Honey Milk” and using slogans such as “Rebuild,

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Refuel, Recover” to market and promote its nutritional supplement drinks. Among the causes of

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action that plaintiff raises in the complaint are federal claims for trademark infringement, unfair

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competition, cancellation of defendants’ trademark registrations and state law claims for

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trademark infringement and unfair competition.

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Defendants answered the complaint in February 2012. Defendants raise three

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counterclaims against the plaintiff. First, defendants assert a federal false advertising claim

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against plaintiff pursuant to 15 U.S.C. §§ 1125(a), 1119. Defendants assert that plaintiff’s

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promotion and advertising of its beverages as “Milk” is likely to cause consumers to mistakenly

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believe that plaintiff’s beverages are milk-based when they are not. Additionally, defendants

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raise two state law counterclaims for false advertising.

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On September 10, 2012, the district court issued a scheduling order which calls

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for fact discovery to conclude by April 24, 2013. (See Dkt. No. 40 at p. 2.) Plaintiff served its

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first request for the production of documents and first set of interrogatories on defendants on

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August 7, 2012. (See Dkt. No. 45 Ex. A & B.) Defendants did not answer plaintiff’s discovery

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requests. Instead, on October 12, 2012, plaintiff filed a motion for a protective order seeking a

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stay of all discovery. On October 31, 2012, plaintiff filed a motion to compel defendants to

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respond to its discovery requests as well as an opposition to defendants’ motion for a protective

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order.

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II. DEFENDANTS’ MOTION FOR A PROTECTIVE ORDER

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Defendants seek an order staying all discovery pending resolution of an expected

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motion to dismiss by plaintiff on defendants’ counterclaims. The Federal Rules of Civil

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Procedure provide that a court may issue a protective order “for good cause” to protect a party

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from annoyance, embarrassment, oppression or undue burden or expense. See FED. R. CIV. P.

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26©. Defendants assert that a protective order is warranted because the Ninth Circuit’s decision

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in Pom Wonderful LLC v. Coca-Cola Co., 679 F.3d 1170 (9th Cir. 2012) may affect the court’s
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subject matter jurisdiction over its counterclaims.

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Defendants have failed to show the requisite “good cause” to warrant their request

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to stay all of discovery. First, the court notes that defendants filed their motion for a protective

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order beyond the thirty-day period for which responses to plaintiff’s discovery requests were

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due. See FED. R. CIV. P. 33(b)(2) (“The responding party must serve its answers and any

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objections within 30 days after being served with the interrogatories); FED. R. CIV. P. 34(b)(2)

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(“The party to whom the request is directed must respond in writing within 30 days after being

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served.”). Second, almost all of plaintiff’s discovery requests relate to its affirmative claims

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against defendants, not defendants’ counterclaims against plaintiff. Thus, responding to

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plaintiff’s discovery requests on defendants’ counterclaims would not unduly burden defendants.

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Defendants’ request to stay all discovery is overly broad and would unnecessarily halt discovery

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on plaintiff’s affirmative claims against defendants. Furthermore, as previously stated,

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defendants’ counterclaims remain pending and active in this case. Finally, the court notes that

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plaintiff’s request to stay discovery relies in part on something that may or may not ever come to

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pass. Staying all of discovery for this purpose would unnecessarily delay the case (and

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particularly plaintiff’s claims) from proceeding in due course. For these reasons, the court finds

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defendants have failed to show “good cause” to warrant granting a protective order staying all of

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discovery.
III. PLAINTIFF’S MOTION TO COMPEL

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Plaintiff has filed a motion to compel which seeks to have defendants respond to

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plaintiff’s first request for the production of documents and first interrogatories. Defendants

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oppose the motion to compel arguing that a stay of discovery is warranted as set out in their

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motion for a protective order. For the reasons discussed supra Part II, defendants motion for a

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protective order will be denied. Thus, plaintiff’s motion to compel will be granted.

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IV. CONCLUSION

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Accordingly, IT IS HEREBY ORDERED that:

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1. Defendants’ motion for a protective order (Dkt. No. 42.) is DENIED;

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2. Plaintiff’s motion to compel (Dkt. No. 44.) is GRANTED; and

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3. Defendants’ shall serve responses to plaintiff’s first request for production of

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documents and first interrogatories on or before December 14, 2012.

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DATED: December 7, 2012.

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cyto1705.protordcompel

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