Rubenstein Law, P.A. v. Friedman Law Associates, P.L. et al

Filing 149

ORDER granting in part and denying in part 106 Plaintiff's Motion to Compel Defendants to Answer Plaintiff's First Set of Interrogatories; granting in part and denying in part 108 Plaintiff's Motion to Compel Defendants to Produce Documents in Response to Plaintiff's First Set of Requests for Production. Signed by Magistrate Judge Julie S. Sneed on 3/23/2017. (SMC)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
RUBENSTEIN LAW, P.A.,
Plaintiff,
v.

Case No: 8:16-cv-1511-T-36JSS

FRIEDMAN LAW ASSOCIATES, P.L.,
PHILIP A. FRIEDMAN and
CHRISTOPHER K. LEIFER,
Defendants.
___________________________________/
ORDER ON PLAINTIFF’S MOTIONS TO COMPEL
THIS MATTER is before the Court on Plaintiff’s Motion to Compel Defendants to Answer
Plaintiff’s First Set of Interrogatories (Dkt. 106) and Plaintiff’s Motion to Compel Defendants to
Produce Documents in Response to Plaintiff’s First Set of Requests for Production (Dkt. 108).
BACKGROUND
Plaintiff Rubenstein Law, P.A. brings this trademark infringement action alleging
Defendants willfully adopted and used trademarks and domain names that are confusingly similar
to Plaintiff’s 1-800-FL-LEGAL mark. Defendants in turn brought a counterclaim against Plaintiff
in connection with the toll-free numbers containing the alphanumeric characters “FL Legal.”
Specifically, Plaintiff uses the toll-free number “1-800-FL-LEGAL” and Defendants use “888-FLLegal.”
On January 30, 2017, Plaintiff filed its Motion to Compel Defendants to Answer Plaintiff’s
First Set of Interrogatories (“Motion to Compel Answers”) and its Motion to Compel Defendants
to Produce Documents in Response to Plaintiff’s First Set of Requests for Production (“Motion to
Compel Documents”). (Dkts. 106, 108.) Plaintiff argues that Defendants served their responses

to Plaintiff’s discovery requests past the deadline and, therefore, Defendants’ objections have been
waived. (Dkts. 106, 108.) Moreover, at the time of filing the Motions at issue, Defendants had
not produced a single responsive document. Defendants initially filed motions to strike Plaintiff’s
Motions to Compel. (Dkts. 107, 109.) However, the parties later filed a Joint Statement Regarding
Pending Motions, withdrawing the motions to strike and stating that the parties would engage in
“further good faith discussions to resolve all discovery disputes.” (Dkt. 122 at 2.)
On March 3, 2017, Defendants filed responses to Plaintiff’s Motions to Compel. (Dkts.
139, 140.) In their response to Plaintiff’s Motion to Compel Documents, Defendants represented
that Plaintiff’s motion should be denied as moot as Defendants had produced responsive
documents. (Dkt. 140 at 1.) The Court ordered the parties to confer in light of Defendants’
response and directed Plaintiff to supplement its Local Rule 3.01(g) certificate or withdraw the
Motion to Compel Documents.

(Dkt. 141.)

Subsequently, Plaintiff filed a Supplemental

Certificate Under Local Rule 3.01(g) for its Motion to Compel Documents (“Supplemental
Certificate”) indicating that a discovery dispute remains. (Dkt. 142.)
APPLICABLE STANDARDS
Federal Rule of Civil Procedure 37 allows any party “on notice to other parties and all
affected persons…[to] move for an order compelling disclosure or discovery.” Fed. R. Civ. P. 37.
District courts have broad discretion in managing pretrial discovery matters and in deciding
whether to grant motions to compel. Perez v. Miami-Dade Cnty., 297 F.3d 1255, 1263 (11th Cir.
2002); Commercial Union Ins. Co. v. Westrope, 730 F.2d 729, 731 (11th Cir. 1984).
A party is entitled to “discovery regarding any nonprivileged matter that is relevant to any
party’s claim or defense[.]” Fed. R. Civ. P. 26(b)(1). Relevant discovery is defined broadly as any
information that “appears reasonably calculated to lead to the discovery of admissible evidence.”

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Id. The U.S. Supreme Court held that the term “relevant” in Rule 26 should encompass “any matter
that bears on, or that reasonably could lead to other matter that could bear on, any issue that is or
may be in the case.” Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351-52 (1978).
ANALYSIS
A.

Plaintiff’s Motion to Compel Answers

Plaintiff moves to compel Defendants to provide better answers to Interrogatories Number
1, 3, 4, 5, 6, 7, 8, 9, and 12. In Interrogatory Number 1, Plaintiff seeks the following:
Describe with specificity how the Defendants first obtained the Defendants’ 888Phone Number, including but not limited to: (a) the date upon which such phone
number was obtained; (b) from whom such phone number was obtained; (c) the
type of rights that were obtained in such phone number, whether ownership, license,
or other grant of right; and (d) the agreed price for the grant of rights obtained for
the Defendants’ 888-Phone Number.
(Dkt. 106-1 at 4.) In response, Defendants state: “[c]ompleted a toll free number search, using the
internet, to ascertain available toll free numbers. Saw that 888-355-3425 (888-FL-LEGAL) was
available. Contacted its owner and negotiated a sales price. (a) March 2015 (b) Daniel Lacheen
(c) 100% interest (d) $32,500.00.” (Dkt. 106-1 at 4.) Plaintiff argues that Defendants failed to
provide specific information, including who conducted the activity addressed in Defendants’
response.

(Dkt. 106 at 9.)

Defendants argue that the interrogatory does not request this

information. (Dkt. 139 at 5.) However, the interrogatory requests Defendants to “[d]escribe with
specificity.” Further, the response is written in incomplete sentences, specifically omitting who
conducted the activity.
infringement.

This information is relevant to Plaintiff’s allegations of trademark

Therefore, Defendants are directed to supplement their response to this

interrogatory to include who conducted the activity in question.
Interrogatory Number 3 requests Defendants to “[f]ully explain the facts and circumstances
under which Defendants first became aware of Plaintiff’s Mark and each of Plaintiff’s Domain
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Names, including but not limited to the date, and the identity of all persons associated with
Defendants that Acquired such Names as a result of the instant litigation.” (Dkt. 106-1 at 4.) In
their response, Defendants state that they “first learned of Counterdefendants’ use of the infringing
‘1-800-FL-Legal’ designation in or about July 2015 and learned about Plaintiff’s Domain Names
as a result of the instant litigation.” (Dkt. 106-1 at 4.) Plaintiff argues that this response is
“demonstrably false” in light of a January 2015 email between Defendant Philip Friedman and a
web designer wherein Friedman states that “Rubenstein” owns “1800flegal.” (Dkt. 106-2 at 3.)
In response, Defendants argue that “Friedman was aware that Plaintiffs were using 1-800-FLLegal in Tampa, but was not aware until July 2015 that Plaintiffs had a Florida trademark.” (Dkt.
139 at 3.) Defendants further argue, and the Court agrees, that Plaintiff cannot compel Defendants
to provide an answer that is inaccurate from their point of view and can question the relevant
witness about this issue during a deposition. (Dkt. 139 at 3.) Therefore, the Motion to Compel
Answers as to this interrogatory is denied.
Interrogatories Number 4, 5, and 6 request information regarding Defendants’ advertising,
the confusion of consumers caused by the alleged trademark infringement, and the legal services
Defendants have performed in connection with the alleged trademark infringement. (Dkt. 106-1
at 4–6.) In their responses, Defendants reference Federal Rule of Civil Procedure 33(d) and state
that documents from which the answers to the interrogatories may be determined will be provided
to Plaintiff in response to Plaintiff’s First Request for Production. (Dkt. 106 at 3–6.) Plaintiff
requests that the Court order Defendants to fully comply with Rule 33(d) by identifying and
producing the specific responsive documents. (Dkt. 106 at 3–6.) Federal Rule of Civil Procedure
33(d) provides:
If the answer to an interrogatory may be determined by examining, auditing,
compiling, abstracting, or summarizing a party's business records (including
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electronically stored information), and if the burden of deriving or ascertaining the
answer will be substantially the same for either party, the responding party may
answer by:
(1) specifying the records that must be reviewed, in sufficient detail to enable the
interrogating party to locate and identify them as readily as the responding party
could; and
(2) giving the interrogating party a reasonable opportunity to examine and audit the
records and to make copies, compilations, abstracts, or summaries.
Fed. R. Civ. P. 33(d). Defendants may not simply incorporate by reference every single document
they have produced in response to Plaintiff’s requests to produce. A reference to documents “is
not necessarily a full answer, and the information in the document—unlike the interrogatory
answer—is not ordinarily set forth under oath.” Middle District Discovery (2015) at § IV.C.3.
Therefore, Defendants are directed to supplement their responses to Interrogatories Number 4, 5,
and 6 to specifically identify responsive documents by Bates label. Further, with regard to
Interrogatory Number 6, Defendants argue that most of its responsive information would be
privileged. (Dkt. 139 at 4.) However, Defendants did not provide a privilege log. Therefore,
Defendants are directed to supplement their response with a privilege log identifying the author(s)
of the document, the recipient(s) (including copy recipients) of the document, the subject matter
of the document, the date of the document, and a specific explanation of why the document is
privileged or excluded from discovery. See Fed. R. Civ. P. 26(b)(5)(A).
Interrogatory Number 7 requests Defendants to “[i]dentify and describe any and all
searches conducted on the availability for use of the Infringing Mark and the Defendants’
Infringing Domain Names.” (Dkt. 106-1 at 6.) Defendants’ response states that the availability
of the toll free number was discovered using a Google search and the availability of the domains
were located by searching GoDaddy.com. (Dkt. 106-1 at 6.) Plaintiff argues that this response is
deficient because Defendants did not provide the dates that the searches were performed, the
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content of the searches, or the results received from the searches. (Dkt. 106 at 10.) However, the
interrogatory did not request this information. Therefore, the Motion to Compel Answers as to
this interrogatory is denied.
Interrogatory Number 8 requests information regarding Defendants’ damages suffered as
a result of the alleged infringing conduct by Plaintiff and Third-Party Defendants. (Dkt. 106 at
10.) In response, Defendants state that the alleged infringement has caused them “substantial
damages, including loss revenues.” (Dkt. 106 at 10.) Defendants further state that they have not
completed calculating the damages and an expert will be used in calculating the damages. (Dkt.
139 at 6.) The Court finds that the information sought by Plaintiff meets the relevancy requirement
of Rule 26(b), and Defendants are directed to supplement their response as additional information
is acquired. See Fed. R. Civ. P. 26(e)(1)(A) (“A party who has . . . responded to an interrogatory
. . . must supplement or correct its disclosure or response . . . in a timely manner if the party learns
that in some material respect the disclosure or response is incomplete or incorrect . . . .”).
Interrogatory Number 8, subpart (h), further requests information regarding the steps
Defendants have taken to mitigate their damages. (Dkt. 106 at 10.) Defendants’ response states
“FL Legal Group has made attempts to differentiate our advertising message from that of the
Counterdefendant.” (Dkt. 106 at 10.) Plaintiff argues that Defendants fail to identify what steps
Defendants have taken to differentiate their advertising. (Dkt. 106 at 10–11.) Defendants’
response is incomplete and evasive. Therefore, Defendants are directed to supplement the
response to subpart (h) of this interrogatory. See Fed. R. Civ. P. 37(a)(4) (“An “evasive or
incomplete” answer to an interrogatory is treated as a failure to answer.”)
Interrogatory Number 9 requests Defendants to “[d]escribe with specificity each
relationship any of the Defendants have with any witness in this dispute, whether involving

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business or personal matters” and requests specific information regarding the relationship,
including “the frequency of contact between any of the Defendants and the witness since January
1, 2014.” (Dkt. 106-1 at 7.) Defendants’ response identifies three witnesses and describes the
frequency of contact as “ongoing” or “not routine.” (Dkt. 106-1 at 7.) Plaintiff argues that in
transferring this matter to the Middle District of Florida, Defendants identified 26 witnesses.
Plaintiff further argues that Defendants’ response is vague and incomplete and requests the
Defendants supplement their response with a description of the nature of the relationship each
Defendant has with each of the 26 previously identified witnesses, when the relationship
commenced, and the actual frequency of contact between each of the Defendants and the witnesses.
(Dkt. 106 at 7.) The Court finds this interrogatory overly broad and unduly burdensome under
Rule 26(b)(1). Therefore, the Motion to Compel Answers as to this interrogatory is denied.
Plaintiff’s Interrogatory Number 12 requests the following:
Describe with specificity the history of use in commerce of Defendants’ alleged FL
LEGAL GROUP mark, including but not limited to by: (a) identifying the first
owner and user of the mark; (b) identifying all persons who participated in creating
or adopting the mark; (c) identifying all persons who have participated in
advertising or promoting the mark and the particular tasks they perform with regard
thereto; (d) the specific advertisement in which the mark was first used; (e) for each
year since its first use in commerce, the number of advertisements featuring the
mark that have been published along with a description of each such advertisement,
the date on which it was published, and place where it was published.
(Dkt. 106-1 at 8.) Defendants state that they will produce “documents from which the answers to
some of the subparts to this interrogatory may be determined . . . .” (Dkt. 106-1 at 8.) Defendants
argue that this request is overly broad and unduly burdensome and that “in no event should
Defendants be required to provide detailed summaries of documents to the Plaintiffs when the
documents themselves are being, or have been produced.” Plaintiff requests that Defendants be
compelled to withdraw the Rule 33(d) reference and fully respond to the interrogatory in writing.

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A party is entitled to “discovery regarding any nonprivileged matter that is relevant to any
party’s claim or defense and proportional to the needs of the case . . . .” Fed. R. Civ. P. 26(b)(1).
In the Amended Complaint, Plaintiff alleges that “Defendants’ unauthorized use of Plaintiff’s 1800-FL-LEGAL Mark and/or of the confusingly similar 888-FL-LEGAL mark in commerce in
connection with the promotion and sale of legal services is likely to cause confusion among
consumers” and that Defendants have engaged in this conduct willfully. (Dkt. 71 ¶¶ 72, 73.)
Plaintiff further alleges that this willful conduct has caused injury to Plaintiff, “including without
limitation irreparable injury to the goodwill associated with Plaintiff’s 1-800-FL-LEGAL Mark.”
(Dkt. 71 ¶ 74.) Interrogatory Number 12 is therefore relevant to Plaintiff’s claims. However,
subpart (c), requesting Defendants to identify “all persons who have participated in advertising or
promoting the mark and the particular tasks they perform,” is overly broad and not narrowly
tailored. Therefore, the Motion to Compel Answers as to Interrogatory Number 12 is granted in
part and denied in part. Defendants are directed to supplement their response to subparts (a), (b),
(d) and (e) of Interrogatory Number 12. The Motion to Compel Answers is denied as to subpart
(c) of Interrogatory Number 12.
B.

Plaintiff’s Motion to Compel Documents

In its Motion to Compel Documents, Plaintiff addresses nearly all of its 109 requests for
production to Defendants, contending that Defendants’ responses are deficient because, in part,
Defendants have not produced any responsive documents or a privilege log. (Dkt. 106.) In their
response, Defendants merely state that Plaintiff’s Motion to Compel Documents should be denied
as moot “because Defendants produced additional responsive documents on March 2, 2017.” (Dkt.
140.) However, in its Supplemental Certificate, Plaintiff states that the parties have conferred in
good faith but have not reached an agreement with respect to Plaintiff’s Motion to Compel

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Documents. (Dkt. 142 at 2.) Specifically, Plaintiff argues that on January 31, 2017, Defendants
produced documents, but failed to identify which requests the documents were responsive to, if
any. (Dkt. 142 at 1.) Counsel for both parties conferred on February 27, 2017, regarding
Defendant’s requirement to identify to which requests the documents were responsive. (Dkt. 142
at 2.) Thereafter, on March 1, 2017, Defendants produced a second set of documents, but again
failed to identify to which requests the documents were responsive. (Dkt. 142 at 2.) On March 6,
2017, Plaintiff’s counsel requested that Defendants amend their responses to identify which
requests the documents were responsive to in order for Plaintiff to determine whether its Motion
to Compel Documents could be narrowed or withdrawn. (Dkt. 142 at 2.) On March 7, 2017,
Defendants responded that they would provide such information; however, to date, they have failed
to do so. (Dkt. 142 at 2.) “A party and counsel have complied with the duty to respond to a
document request if they have…specifically identified those documents that are being or will be
produced.” Middle District Discovery (2015) at § III.A.5. Accordingly, Defendants are directed
to supplement their responses to specifically identify responsive documents by Bates label.
Further, to the extent necessary, Defendants are directed to supplement their responses with a
privilege log identifying the author(s) of the document, the recipient(s) (including copy recipients)
of the document, the subject matter of the document, the date of the document, and a specific
explanation of why the document is privileged or excluded from discovery. See Fed. R. Civ. P.
26(b)(5)(A).
Accordingly, it is
ORDERED:
1.

Plaintiff’s Motion to Compel Defendants to Answer Plaintiff’s First Set of
Interrogatories (Dkt. 106) is GRANTED in part and DENIED in part. Defendants are

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directed to supplement the responses to Interrogatories 1, 4, 5, 6, 8, and 12 as stated
above within ten (10) days of this Order. The motion is denied as to Interrogatories 3,
7, and 9. Plaintiff’s Motion to Compel is denied with respect to the request for fees
and costs incurred in connection with the Motion.
2. Plaintiff’s Motion to Compel Defendants to Produce Documents in Response to
Plaintiff’s First Set of Requests for Production (Dkt. 108) is GRANTED in part and
DENIED in part. Defendants are directed to supplement their responses within ten
(10) days of this Order. Plaintiff’s Motion to Compel is denied with respect to the
request for fees and costs incurred in connection with the Motion.
DONE and ORDERED in Tampa, Florida, on March 23, 2017.

Copies furnished to:
Counsel of Record

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