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)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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For the Northern District of California

United States District Court

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MACYS INC AND MACYS.COM INC,

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Plaintiffs,

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No. C-11-06198 SC (DMR)
ORDER ON FEBRUARY 27, 2013 JOINT
DISCOVERY LETTER

v.

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STRATEGIC MARKS INC,

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Defendant.
___________________________________/

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On February 27, 2013, the parties submitted a joint letter brief regarding Plaintiffs Macy’s,

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Inc. and Macys.com motion for a protective order regarding Requests for Admission propounded by

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Defendant Strategic Marks, LLC. [Docket No. 74 (Jt. Letter).] The court conducted a hearing on

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April 18, 2013. This order summarizes the rulings made by the court on the record during the

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hearing.

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I. Discussion
Plaintiffs filed suit against Defendant alleging trademark infringement, false designation of

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origin, dilution, and unfair competition as to eight different trademarks (the “Heritage marks”).

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Defendant asserted a number of defenses, including abandonment of the Heritage marks, and

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counterclaimed against Plaintiffs as to twelve trademarks. In January 2013, Defendant propounded

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3,171 identical sets of requests for admission (RFAs) on each Plaintiff, for a total of 6,342 RFAs.

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Plaintiffs now seek a protective order with respect to the RFAs, arguing that many of them are

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irrelevant, duplicative, and call for legal conclusions. In addition, Plaintiffs argue that the number of

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RFAs is burdensome, harassing, and abusive. Defendant claims that the RFAs are necessary given

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that it seeks admissions regarding 8 separate trademarks and two geographical regions (California

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and the United States), and that it will be unable to obtain all of the information sought by the RFAs

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from depositions.

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On April 4, 2013, Defendant submitted a “summary chart” of its RFAs, in which it noted that

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in preparing the chart for filing, it determined that it is willing to withdraw approximately 50 RFAs.

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[Docket No. 81 (“Summary Chart”).] Defendant also noted that it began deposing Plaintiffs on

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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

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For the Northern District of California

United States District Court

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April 17, 2013, the court ordered Defendant to specifically identify the RFAs it would withdraw as a

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result of information learned at the April 2 deposition, as well as any other subsequent deposition

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testimony. [Docket No. 86.] In response, Defendant submitted a letter in which it identified over

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1,700 RFAs it was withdrawing, leaving well over 1,000 RFAs pending per Plaintiff. [Docket No.

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89.]

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Federal Rule of Civil Procedure 36 authorizes a party to serve “a written request to admit . . .

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the truth of any matters within the scope of Rule 26(b)(1) relating to . . . facts, the application of law

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to fact, or opinions about either.” Fed. R. Civ. P. 36(a)(1)(A). RFAs “are sought, first, to facilitate

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proof with respect to issues that cannot be determined from the case, and second, to narrow the

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issues by eliminating those that can be.” Conlon v. United States, 474 F.3d 616, 622 (9th Cir. 2007).

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The goal of RFAs is to “eliminate from the trial matters as to which there is no genuine dispute.”

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People of the State of California v. The Jules Fribourg, 19 F.R.D. 432, 436 (N.D. Cal. 1955). For

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this reason, “requests for admissions are not principally discovery devices.” Safeco of Am. v.

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Rawstron, 181 F.R.D. 441, 445 (C.D. Cal. 1998).

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Here, the court finds that the remaining RFAs -- over 1,000 per Plaintiff -- are unduly

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burdensome. Essentially, Defendant seeks to use its RFAs as its central discovery device. This

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results in undue burden to Plaintiffs. Defendant has the opportunity to obtain the information it

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seeks through deposition testimony, as its Rule 30(b)(6) depositions of Plaintiffs are not yet

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concluded and discovery is still open. Accordingly, Plaintiffs’ motion for a protective order is

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GRANTED IN PART. Defendant may select a set of 120 RFAs, or 15 per each of the eight Heritage

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marks, to re-serve on each Plaintiff, for a total of 240 RFAs. Each set of 120 RFAs must be

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identical as to each Plaintiff; however, Defendant does not have to ask identical RFAs as to each of

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the eight marks. If a response to an RFA is identical for each Plaintiff, Plaintiffs may so indicate,

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and may provide a consolidated response to that RFA. If Plaintiffs’ responses to an RFA differ,

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Plaintiffs must set forth separate responses. In selecting which RFAs to re-serve, Defendant is

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cautioned that while RFAs which seek the application of law to fact are permissible under Rule

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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

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WL 3290402, at *2 (N.D. Cal. Nov. 13, 2006) (noting that “requests for admissions cannot be used

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to compel an admission of a conclusion of law” (citing Playboy Enters., Inc. v. Welles, 60 F. Supp.

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2d 1050, 1057 (S.D. Cal. 1999) (quotation marks omitted)).

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At the hearing, Defendant requested an order shortening time with respect to Plaintiffs’

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responses to any amended RFAs in light of the dispositive motion deadline in this case. Defendant’s

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request is granted. If Defendant re-serves the amended RFAs by no later than April 22, 2013,

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Plaintiffs’ responses will be due by May 6, 2013. Following the hearing, the parties were ordered to

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meet and confer in the courthouse regarding the RFAs, as well as other outstanding discovery.

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S

Dated: April 22, 2013

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NO

DONNA M. RYU
Ryu
United States Magistrate M.
Donna Judge

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Judge

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DERED

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FO

IT IS SO ORDERED.

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UNIT
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For the Northern District of California

United States District Court

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