Denver Urban Homesteading, LLC v. Dervaes Institute et al

Filing 37

ORDER granting in part and denying in part 26 Motion to Compel. by Magistrate Judge Kathleen M. Tafoya on 12/17/2013.(trlee, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Magistrate Judge Kathleen M. Tafoya
Civil Action No. 13BcvB00917BREBBKMT

DENVER URBAN HOMESTEADING, LLC,
Plaintiff,
v.
DERVAES INSTITUTE,
JULES DERVAES, and
MIGNON RUBIO DERVAES,
Defendants.

ORDER

This matter is before the court on “Plaintiff Denver Urban Homesteading, LLC’s
Motion to Compel Defendants to Respond to Discovery” [Doc. No. 26] (“Mot.”) filed November
1, 2013. Defendants filed their Response on November 22, 2013 [Doc. No. 29] (“Resp.”) and
Plaintiff replied on December 3, 2013 [Doc. No. 33] (“Reply”).
Originally, Plaintiff sought production of “a copy of the complaint made to Facebook (or
acknowledgment of such complaint by Facebook) about Plaintiff’s Facebook page that induced
Facebook to disable Plaintiff’s page” (Mot. at 1-2) and copies of deposition transcripts of Jules
Dervaes, Mignon Rubio Dervaes and three of their adult children which were taken in May 2012 in
a proceeding before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and
Trademark Office (PTO). (Mot. at 5.) Related to the second issue, Plaintiff also requested that

Defendants remove confidentiality designations placed on documents produced in the TTAB
matter which are now being produced by the Defendants as discovery in this case. The motion
was narrowed when Plaintiff advised in its Reply that it had received a copy of the Facebook
complaint through its direct subpoena to Facebook. (Reply, Ex. 1.) Therefore, the only
remaining disputed discovery involves the defendant depositions taken in the TTAB case and the
production of documents which contain confidentiality designations from the TTAB case.
Plaintiff, represented by attorney James Bertini who is also the owner of Plaintiff Denver
Urban Homesteading, LLC, is also a party to the proceedings before the TTAB. Neither party
herein disputes that Mr. Bertini had the opportunity to attend each of the questioned depositions in
person during the TTAB proceedings and to obtain transcripts of the depositions.1 (Resp at 6.)
Mr. Bertini chose not to attend the depositions “of my own volition” (Mot. at 5) because he would
not agree to the stipulations for confidentiality governing the taking of the depositions entered into
by lead counsel for the consolidated cases before the TTAB. (Id.) (See Fed. R. Civ. P. 29, “a
deposition may be taken before any person, at any time or place, on any notice, and in the manner
specified . . .”).
Now Mr. Bertini is attempting to gain access to the transcripts of the eschewed depositions,
which have been marked both confidential and highly confidential in the TTAB matter, without
the concomitant obligation to abide by the confidentiality provisions to which the parties involved
in taking the depositions stipulated in the TTAB matter. Such an end-run is not only improper; it
would also violate the confidentiality provisions in the TTAB case.

1

This court believes, based on statements in the briefing, that the TTAB matter is ongoing.
2

This court is confident that a procedure to challenge confidentiality designations exists in
the TTAB case; to the extent Mr. Bertini believes certain confidentiality designations are
improper, the remedy is to use the TTAB procedure, to which Plaintiff herein is a party, to
challenge the designations. Contrary to the argument of Plaintiff, the federal discovery rules do
not require producing parties to violate court orders or confidentiality stipulations in other cases.
Further, Plaintiff is free to take his own depositions of each of the Defendants, including a
Rule 30(b)(6) deposition of the corporate Defendant, in this case without the confidentiality
stipulations agreed to by other counsel in the TTAB matter. Plaintiff argues that “[i]t would truly
be a hardship and completely unnecessary for Plaintiff to reproduce these transcripts as it would
mean closing our business for a week, flying to Los Angeles and hiring a stenographer, not to
mention the burden it would create on Defendants themselves.” (Mot at 7) The court wholly
disagrees. This is precisely the path which Plaintiff and its counsel have chosen to take. Rather
than participate in depositions of the defendants and members of their household when they were
available in the TTAB matter, albeit subject to stipulations with which Mr. Bertini disagreed,
Plaintiff has elected to not attend the depositions during the TTAB matter and to instead take the
depositions in this case unhampered by the stipulations of lead counsel in the TTAB matter. This
court will honor that voluntary election.
As to document production, to the extent Defendants are producing documents which they
originally received with a marking of “confidential” or “highly confidential” the court will not
require the Defendants to alter the document by removing the designation on the document.2

2

While it is unclear, it appears that production of this kind of material is being withheld based on
3

There is no Protective Order entered in this case, so at this stage of the proceedings there is no
danger of confusion about whether a confidentiality marking is a part of this case or was part of the
proceedings in another case. To the extent a Protective Order is entered in this case, such
potential confusion can be assuaged by using unique confidentiality markings in this case, such as
“917 Confidential” or other case number related markings. On the other hand, to the extent
Defendants are producing documents which they or their attorneys labeled confidential in another
proceeding,3 Defendants shall remove such designations prior to production to Plaintiff in this
case. In the absence of a Protective Order or stipulation, it would be improper to label any
document as being protected by a confidentiality provision in this case.

the confidentiality agreement in the TTAB matter.
3

The court recognizes that Defendants may have marked a document as confidential in the TTAB
matter but yet be willing to produce the document to Plaintiff in this case without a Protective
Order in place. The two positions are not inconsistent given that different counsel appear for
Defendants in the two cases and the TTAB case is a consolidated matter and therefore implicates
other parties.
4

Therefore it is ORDERED
“Plaintiff Denver Urban Homesteading, LLC’s Motion to Compel Defendants to Respond
to Discovery” [Doc. No. 26] is GRANTED in part and DENIED in part. The motion is
granted in that Defendants shall remove confidentiality designations from documents which they
marked as confidential and produced in the TTAB matter and shall produce said documents to
Plaintiff in this case in unmarked form. The motion is denied in all other respects.
Dated this 17th day of December, 2013.

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