Macy's Inc. et al v. Strategic Marks, LLC

Filing 91

Order by Magistrate Judge Donna M. Ryu granting in part 74 Discovery Letter Brief.(dmrlc1, COURT STAFF) (Filed on 4/22/2013)

Download PDF
1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 11 For the Northern District of California United States District Court 10 MACYS INC AND MACYS.COM INC, 12 Plaintiffs, 13 No. C-11-06198 SC (DMR) ORDER ON FEBRUARY 27, 2013 JOINT DISCOVERY LETTER v. 14 STRATEGIC MARKS INC, 15 Defendant. ___________________________________/ 16 17 On February 27, 2013, the parties submitted a joint letter brief regarding Plaintiffs Macy’s, 18 Inc. and motion for a protective order regarding Requests for Admission propounded by 19 Defendant Strategic Marks, LLC. [Docket No. 74 (Jt. Letter).] The court conducted a hearing on 20 April 18, 2013. This order summarizes the rulings made by the court on the record during the 21 hearing. 22 23 I. Discussion Plaintiffs filed suit against Defendant alleging trademark infringement, false designation of 24 origin, dilution, and unfair competition as to eight different trademarks (the “Heritage marks”). 25 Defendant asserted a number of defenses, including abandonment of the Heritage marks, and 26 counterclaimed against Plaintiffs as to twelve trademarks. In January 2013, Defendant propounded 27 3,171 identical sets of requests for admission (RFAs) on each Plaintiff, for a total of 6,342 RFAs. 28 Plaintiffs now seek a protective order with respect to the RFAs, arguing that many of them are 1 irrelevant, duplicative, and call for legal conclusions. In addition, Plaintiffs argue that the number of 2 RFAs is burdensome, harassing, and abusive. Defendant claims that the RFAs are necessary given 3 that it seeks admissions regarding 8 separate trademarks and two geographical regions (California 4 and the United States), and that it will be unable to obtain all of the information sought by the RFAs 5 from depositions. 6 On April 4, 2013, Defendant submitted a “summary chart” of its RFAs, in which it noted that 7 in preparing the chart for filing, it determined that it is willing to withdraw approximately 50 RFAs. 8 [Docket No. 81 (“Summary Chart”).] Defendant also noted that it began deposing Plaintiffs on 9 April 2, 2013, and that as a result of information learned in that deposition, it believed that it would be prepared to withdraw a “significant number” of additional RFAs. (Summary Chart at 1.) On 11 For the Northern District of California United States District Court 10 April 17, 2013, the court ordered Defendant to specifically identify the RFAs it would withdraw as a 12 result of information learned at the April 2 deposition, as well as any other subsequent deposition 13 testimony. [Docket No. 86.] In response, Defendant submitted a letter in which it identified over 14 1,700 RFAs it was withdrawing, leaving well over 1,000 RFAs pending per Plaintiff. [Docket No. 15 89.] 16 Federal Rule of Civil Procedure 36 authorizes a party to serve “a written request to admit . . . 17 the truth of any matters within the scope of Rule 26(b)(1) relating to . . . facts, the application of law 18 to fact, or opinions about either.” Fed. R. Civ. P. 36(a)(1)(A). RFAs “are sought, first, to facilitate 19 proof with respect to issues that cannot be determined from the case, and second, to narrow the 20 issues by eliminating those that can be.” Conlon v. United States, 474 F.3d 616, 622 (9th Cir. 2007). 21 The goal of RFAs is to “eliminate from the trial matters as to which there is no genuine dispute.” 22 People of the State of California v. The Jules Fribourg, 19 F.R.D. 432, 436 (N.D. Cal. 1955). For 23 this reason, “requests for admissions are not principally discovery devices.” Safeco of Am. v. 24 Rawstron, 181 F.R.D. 441, 445 (C.D. Cal. 1998). 25 Here, the court finds that the remaining RFAs -- over 1,000 per Plaintiff -- are unduly 26 burdensome. Essentially, Defendant seeks to use its RFAs as its central discovery device. This 27 results in undue burden to Plaintiffs. Defendant has the opportunity to obtain the information it 28 seeks through deposition testimony, as its Rule 30(b)(6) depositions of Plaintiffs are not yet 2 1 concluded and discovery is still open. Accordingly, Plaintiffs’ motion for a protective order is 2 GRANTED IN PART. Defendant may select a set of 120 RFAs, or 15 per each of the eight Heritage 3 marks, to re-serve on each Plaintiff, for a total of 240 RFAs. Each set of 120 RFAs must be 4 identical as to each Plaintiff; however, Defendant does not have to ask identical RFAs as to each of 5 the eight marks. If a response to an RFA is identical for each Plaintiff, Plaintiffs may so indicate, 6 and may provide a consolidated response to that RFA. If Plaintiffs’ responses to an RFA differ, 7 Plaintiffs must set forth separate responses. In selecting which RFAs to re-serve, Defendant is 8 cautioned that while RFAs which seek the application of law to fact are permissible under Rule 9 36(a), RFAs which seek to compel an admission of one of the ultimate legal issues in this case are improper. See Google, Inc. v. Amer. Blind & Wallpaper Factory, Inc., No. C 03-5340 JF (RS), 2006 11 WL 3290402, at *2 (N.D. Cal. Nov. 13, 2006) (noting that “requests for admissions cannot be used 12 to compel an admission of a conclusion of law” (citing Playboy Enters., Inc. v. Welles, 60 F. Supp. 13 2d 1050, 1057 (S.D. Cal. 1999) (quotation marks omitted)). 14 At the hearing, Defendant requested an order shortening time with respect to Plaintiffs’ 15 responses to any amended RFAs in light of the dispositive motion deadline in this case. Defendant’s 16 request is granted. If Defendant re-serves the amended RFAs by no later than April 22, 2013, 17 Plaintiffs’ responses will be due by May 6, 2013. Following the hearing, the parties were ordered to 18 meet and confer in the courthouse regarding the RFAs, as well as other outstanding discovery. 19 S Dated: April 22, 2013 23 NO DONNA M. RYU Ryu United States Magistrate M. Donna Judge RT ER H 25 Judge 26 27 28 3 LI 24 A 22 DERED O OR IT IS S R NIA 21 FO IT IS SO ORDERED. S DISTRICT TE C TA RT U O 20 UNIT ED For the Northern District of California United States District Court 10 N D IS T IC T R OF C

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?