Creative Co-op, Inc. v. The Elizabeth Lucas Company et al

Filing 86

ORDER granting in part and denying in part 78 Emergency MOTION to Strike; 67 First MOTION to Compel; and 62 MOTION for Protective Order. Any discovery required to be produced pursuant to this order shall be provided by March 30, 2012. Signed by Judge Ronald E Bush. (kb)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
CREATIVE CO-OP, INC.,
Plaintiff,

Case No. CV 11-116 -REB

v.
THE ELIZABETH LUCAS COMPANY,
LLC, ELIZABETH LUCAS, and SCOTT
LUCAS
Defendants.

ORDER RE: DISCOVERY MOTIONS
(Dkts. 62 & 67)

THE ELIZABETH LUCAS COMPANY,
LLC, ELIZABETH LUCAS, AND SCOTT
LUCAS
Counterclaimants,
v.
CREATIVE CO-OP, INC.
Counterdefendant.
_____________________________________________

Pending before the Court are a Motion for Protective Order Limiting Defendants’ First
Revised Set of Requests for Production of Documents, filed by Plaintiff/Counterdefendant
Creative Co-Op, Inc. (Dkt. 62), and a Motion to Compel Documents and Things, filed by
Defendants/Counterclaimants The Elizabeth Lucas Company, LLC, Elizabeth Lucas, and Scott
Lucas (the “Defendants”) (Dkt. 67). The Motion to Compel seeks production of documents
requested by Defendants’ First Amended Request for Production of Documents, the same
discovery request at issue in Creative Co-Op’s Motion for Protective Order. Defs.’ Mot., p. 2

ORDER RE: DISCOVERY MOTIONS - 1

(Dkt. 67). The Court has considered the entire record and the parties’ briefs and now enters the
following order on the parties’ cross-motions:
BACKGROUND
Defendants allege that Creative Co-Op “copied” some of Defendants’ products (works of
art) and sold them at a much lower price than that Defendants’ charged. Defendants sent a letter
to Creative Co-Op when they discovered the alleged copying, asking Creative Co-Op to stop
selling the products. Creative Co-Op then filed this declaratory judgment action, asserting
copyright invalidity and non-infringement. Compl., pp 3-4, Exs. 1-3 (Dkt. 1). Defendants
responded and filed counterclaims for copyright infringement, unfair competition, and trade
dress infringement. Defendants’ counterclaims allege that Creative Co-Op has infringed their
copyrights and trade dress in five products and that Creative Co-Op has engaged in unfair
competition. (Dkt. 49).
Defendants’ first request for production of documents was met with a motion for
protective order. This Court denied the motion for protective order for failure to demonstrate
that the parties had adequately met and conferred.1 Thereafter, the parties met, conferred, and
exchanged written correspondence, the result of which was a revised request for production of
documents. In response to this revised request, Creative Co-Op has provided 13 pages of
documents. Creative Co-Op also has provided initial disclosures and supplemental initial
disclosures, producing 162 total pages of documents, and plans to produce a disc of images.
Thus, Creative Co-Op, to date, has produced some responses to the discovery requests to which
1

Counsel have met and conferred and satisfied the requirements of both the Federal
Rules of Civil Procedure and the Court’s local rules with respect to the pending discovery
motions.
ORDER RE: DISCOVERY MOTIONS - 2

it has not objected. Defendants seek responses to all of their requests and Creative Co-Op seeks
further limitations on those requests.
One key debate centers on whether Creative Co-Op should be required to produce
documents related to allegations of intellectual property infringement made by third parties
against Creative Co-Op. In particular, the parties are currently engaged in proceedings in the
Northern District of California, initiated by Creative Co-Op’s motion to quash a subpoena
seeking information about a lawsuit initiated by Regal Art & Gift, Inc. for copyright
infringement, unfair competition, and trade dress infringement. That court has scheduled a
hearing on the matter. In short, in those proceedings Creative Co-Op opposes Defendants’
attempt to obtain (from an attorney involved in the Regal Art & Gift litigation) one
non-privileged document form that litigation — Creative Co-Op’s response to Regal Art’s
accusations of infringement.
DISCUSSION
A.

Legal Standards

Federal Rule of Civil Procedure states that, in general, any matter relevant to a claim or
defense is discoverable. “Unless otherwise limited by court order, the scope of discovery is as
follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any
party's claim or defense . . . .” Fed. R. Civ. P. 26(b). Moreover, relevancy does not mean
admissibility: “relevant information need not be admissible at the trial if the discovery appears
reasonably calculated to lead to the discovery of admissible evidence.” Id. (emphasis added).
The general rules is not, however, without limitation. Upon a showing of good cause, the
Court may exercise its discretion to issue any protective order “which justice requires to protect

ORDER RE: DISCOVERY MOTIONS - 3

a party or person from annoyance, embarrassment, oppression, or undue burden or expense,”
including any order prohibiting the requested discovery altogether, limiting the scope of the
discovery, or fixing the terms of disclosure. Fed. R. Civ. P. 26(c). Creative Co-Op’s burden
here is to “show good cause” by demonstrating harm or prejudice that will result from the
discovery. See Rivera v. NIBCO, Inc., 364 F.3d 1057 (9th Cir. 2004). “For good cause to exist,
the party seeking protection bears the burden of showing what specific prejudice or harm will
result if no protective order is granted.” Phillips v. General Motors Corp., 307 F.3d 1206,
1210-11 (9th Cir. 2002).
Consistent with the above standards, the Court will conduct a two part inquiry. First, it is
necessary to determine whether the information sought is relevant under Rule 26(b). If so, then
the Court determines whether disclosure should be otherwise limited or even prohibited based on
the additional considerations Creative Co-Op argues should preclude or limit discovery.
B.

Specific Limitations Requested

Creative Co-Op requests that the Court enter a Protective Order: (1) quashing Request
Nos. 9, 10, 11, 17, 18, and 19 as irrelevant and not reasonably calculated to lead to the discovery
of admissible evidence; (2) quashing Request Nos. 12 and 21 as overbroad, duplicative, and not
reasonably calculated to lead to the discovery of admissible evidence, and directing Defendants
to narrow Request No. 12 and to withdraw Request No. 21, and/or serve an appropriate
corresponding Interrogatory; (3) quashing Request No. 13 as overbroad and unduly burdensome;
and (4) limiting the relevant time period of Defendants’ remaining and future discovery requests
to the purported dates of first publication of Defendants’ works at issue. Pl.’s Mot., pp. 2-3 (Dkt.

ORDER RE: DISCOVERY MOTIONS - 4

62). Defendants argue that no limitations are needed and Creative Co-Op should be compelled
to provide the discovery as requested.
C.

Relevance
1.

Requests related to other allegations of copyright, trade dress, or
intellectual property infringement.

Six of Defendants’ requests for production generally seek all non-privileged documents
discussing, referencing, or relating to any allegations of infringement (of any intellectual
property right) against Creative Co-Op from time periods spanning five years to “throughout the
course” of Creative Co-Op’s business. Miller Aff. on Prot. Ord., Ex. 4, Requests 9, 10, 11, 17,
18, 19 (Dkt. 62-6). Creative Co-Op argues that “[n]one of these six Requests seek any
documents or information likely to lead to the discovery of admissible evidence.” Mem., p. 8
(Dkt. 62-1).
Defendants respond that any threatened or actual lawsuits for copyright and trade dress
infringement, including the recent case against Creative Co-Op in the Northern District of
California (which has been dismissed with prejudice), “have direct bearing in the case at hand in
evidencing a recurring course of conduct.” Defendants further submit that “recurring conduct”
pertains directly to damages and Defendants would use the information not to prove that
infringement occurred in this case, but to prove “a callous disregard on behalf of [Creative CoOp] for the intellectual property rights of others, a course of conduct that Defendants believe
falls within [an] award of treble damages and attorney’s fees.”
Section 35(a) of the Lanham Act provides that “[t]he court in exceptional cases may
award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). An action may be

ORDER RE: DISCOVERY MOTIONS - 5

considered exceptional “[w]hen a plaintiff’s case is groundless, unreasonable, vexatious, or
pursued in bad faith.” Stephen W. Boney, Inc. v. Boney Servs., 127 F.3d 821, 827 (9th Cir. 1997)
(internal citation and quotation marks omitted). Although the Ninth Circuit has construed the
“exceptional circumstances” requirement “narrowly”, Classic Media, Inc. v. Mewborn, 532 F.3d
978, 990 (9th Cir. 2008), it also has explained that “a finding that the losing party has acted in
bad faith may provide evidence that the case is exceptional [and] other exceptional
circumstances may warrant a fee award,” Stephen W. Boney, 127 F.3d at 827. See also Seclat
S.A. v. Wuxi Shenxi Const. Machinery Co., Ltd., 2012 WL 373102, 6 (9th Cir. 2012) (citing
Mennen Co. v. Gillette Co., 565 F.Supp. 648, 657 (S.D.N.Y. 1983), aff'd, 742 F.2d 1437 (2d Cir.
1984), which determined that attorney’s were fees justified where suit was filed “as a
competitive ploy”). The Court’s own research has found no case in which a federal court has
ruled that repeated conduct of other infringing behavior can never be considered in determining
whether a case meets the “exceptional circumstances” standard, nor have the parties provided
cases that explicitly decide the issue either way in this same context (or at the discovery stage of
the proceedings).
Regardless, the fact that appropriate discovery can be undertaken of information related
to third party allegations of infringement against Creative Co-Op does not set in stone the
admissibility of such evidence in any future proceeding in this case.2 Indeed, such information is
2

There is ample authority for excluding this type of information at hearings and trial.
See, e.g., ICU Medical, Inc. v. RyMed Techs., Inc., 752 F.Supp.2d 486, 493-94 (D.Del. 2010)
(explaining that such “contentions would cause substantial delay, wasted time, and confusion
because it would require mini-trials to determine whether [the accused infringer] actually copied
the unrelated ICU devices nearly twenty years ago”): Santrayll v. Burrell, No. 91 Civ.
3166(PKL), 1998 WL 24375, at *3 (S.D.N.Y. Jan. 22, 1998) (excluding evidence of defendant’s
alleged prior acts of copying in a copyright case in part because “[i]t would seriously prejudice
ORDER RE: DISCOVERY MOTIONS - 6

facially irrelevant on the issue of whether infringement occurred in this case. See Conopco, Inc.
v. Warner-Lambert Co., 1999 WL 1565082, 13 (D.N.J. 1999) (“Motive may affect damages, but
not liability.”). However, in the present context, the issue is not whether the information is
admissible, but whether it might be relevant and/or lead to the discovery of admissible evidence.
Additionally, the information potentially may be useful for impeachment. See e.g.,
Santrayll v. Burrell, 1998 WL 24375, *3 (S.D.N.Y., 1998) (allowing the plaintiffs to impeach
the credibility of a witness through the use of the settlement agreement from another
infringement case). For all these reasons, the Court finds the discovery requests are reasonably
posed as to the subject matter. Whether those requests are overly broad is another question, and
the one Creative Co-Op focuses its briefing on.
2.

Documents related to “accused instrumentalities”.

Creative Co-Op objects to the request for all documents involving the allegedly
infringing products. For the most part, the relevance issue has been conflated with the challenge
to these requests as overly broad.3 The Court is satisfied that the subject matter of the allegedly

the defendants for the Court to . . . permit what would in essence be a series of ‘mini-trials’ on
other acts of copying”). Again, that is not the issue now.
3

For instance, with regard to Request No. 13, Creative Co-Op argues that Defendants
seek “all documents discussing or referencing any of the ‘accused instrumentalities,’” which
Creative Co-Op submits “is overly broad and unduly burdensome.” Creative Co-Op goes on to
argue that "[s]uch an overbroad request would result in the production of potentially thousands
of documents that provide no relevant or useful information, and are not likely to lead to the
discovery of admissible evidence, and/or documents protected by attorney/client privilege,” and
“[t]he limited probative value of ‘all documents discussing or referencing any of the ‘accused
instrumentalities’ is severely outweighed by the burden upon Plaintiff to locate, collect, review,
and produce the likely thousands of pages, many of which are irrelevant and not likely to lead to
the discovery of any admissible evidence.”
ORDER RE: DISCOVERY MOTIONS - 7

infringing products (or the “accused instrumentalities”) is an appropriate one for discovery
purposes. The Court also will consider the relevance and burdonsomeness of certain requests in
the discussion below.
D.

Alleged Overly Broad and Burdensome Requests
1.

Unrelated, third party allegations of infringement.

Creative Co-Op contends that Defendants’ requests for documents related to third party
allegations of infringement are overly broad and too burdensome.4 According to Creative CoOp, Defendants’ allegations of a “modus operandi” of infringement (of other third parties’
intellectual property) are “simply untrue and lack a single scintilla of factual or legal support.”
Pl.’s Resp. to Mot. Compel, p. 2 (Dkt. 72). If so, there will be few, if any, documents responsive
to Defendants’ requests. Accordingly, the requests cannot be overly burdensome. Similarly,
Creative Co-Op states there have been no judgments against if for intellectual property
infringement of any kind during its existence. Mem., p. 10 (Dkt. 62-1). Again, that appears to
be true, but it is not a basis for a protective order. It is, at most, an explanation as to why any
documents that might be produced are few, if any, in number, not that an explanation is even
necessary.

4

Creative Co-Op relies on a case from the District Court for the District of Columbia,
which considered a request for discovery of documents and communications from third parties
related to “all allegations of copyright infringement by ABC” and found this request to be
overbroad. See Slate v. American Broadcasting Cos., Inc., 274 F.R.D. 350, 352-53 (D.D.C.
2011). However, the discovery in that case sought documents unlimited by any time frame and
from a large media and broadcast company that regularly uses intellectual property and
sufficiently described the burden such a request would impose given the number of documents
that would be responsive. For that reason, the Court finds is largely inapposite here.
ORDER RE: DISCOVERY MOTIONS - 8

2.

Information about the “accused instrumentalities”.

Creative Co-Op objects to the following document requests as overbroad:
No. 12 for “all documents evidencing the names and contact
information for all people associated with creating the accused
instrumentalities including those who have purchased materials to
manufacture the accused instrumentality, manufactured the
accused instrumentality, and sold each of the accused
instrumentalities.
No. 21 for “all documents evidencing the individuals who
participated in the creation of the accused instrumentalities.¨
Miller Aff. on Prot. Order, Ex. 4 (Dkt. 62-6). Creative Co-Op argues that the term “associated”
is particularly overbroad and “[s]uch an overbroad request could feasibly seek irrelevant
information, for example, the identity of the person who placed an order for the wood to make
the frame(s) of the products at issue, which is utterly and completely irrelevant, and not likely to
lead to the discovery of admissible evidence pertaining to any issue in the case.” It argues that
“at a minimum” the request should be rephrased to seek documents about only those individuals
who contributed to the creation of the works at issue.
First, as noted above, there are only five products at issue. Second, the Court finds
instructive a case cited by Creative Co-Op, in which the party opposing discovery had objected
as overly broad and unduly burdensome a request for all documents “concerning” any decision
to market, launch, introduce or sell “any or all products.” Conopco, Inc. v. Warner-Lambert Co.,
1999 WL 1565082, *13 (D.N.J. 1999). The court in Conopco concluded that “this request is
overbroad in that it requests information regarding all [of the alleged infringer’s] products,” but
required the defendants to produce “all non-privileged documents that relate only to the accused
products, infringement, and the function/process/operation of the products.” Id. The Court finds

ORDER RE: DISCOVERY MOTIONS - 9

similarly that discovery directed at all documents related to the alleged infringing products is
reasonably calculated to lead to the discovery of admissible evidence and, therefore, is
appropriately sought.
Further, Creative Co-Op believes that Request No. 12 should be framed as an
interrogatory, because Creative Co-Op presumes that the information sought is the identity of
those materially contributing to the works at issue. Creative Co-Op also submits that Request
No. 21 is duplicative of the information sought in Request No. 12. However, to the extent it may
be duplicative, Request No. 21 contains a built-in protection; it seeks production only “[t]o the
extent not duplicitous of any previous Request.” Accordingly, Court intervention is not required
to resolve Creative Co-Op’s complaint with Request No. 21. Additionally, although the requests
could have been more artfully worded, or fine-tuned, the Court will not engage in rewriting
discovery requests that appear to seek appropriate information.
Moreover, No. 12 seeks information about those manufacturing and selling the products,
and No. 21 seeks information about those individuals who created the products. Likewise, the
Court will not step into the discovery process and require Defendants to submit their requests in
a different format (e.g., interrogatory versus request for production). Defendants may properly
seek documents related to the products at issue in this lawsuit. If there are no documents that are
responsive to the request, the answering party can say so. On the flip side, if the propounding
party is sending out requests for production that are intended to elicit information that is more
easily obtained in interrogatory, for the reason of avoiding some limitation upon the number of
interrogatories, then that also would be an abuse of the process, and the propounding party
should more properly seek leave of the Court to propound additional interrogatories. Regardless,

ORDER RE: DISCOVERY MOTIONS - 10

on the current record, the Court is not going to step in and rewrite the propounded discovery, nor
is it going to prohibit such discovery on the argument currently presented.
E.

The Relevant Time Frame

Creative Co-Op asserts that there are “potentially thousands of documents that provide no
relevant or useful information, and are not likely to lead to the discovery of admissible evidence,
and/or documents protected by attorney/client privilege.” This is in part due to the scope of the
requested time period. Accordingly, Creative Co-Op requests that this Court enter an order
limiting the relevant time period to one after the dates of first publication of Defendants’ works
at issue, all of which were created in approximately October 2009. See Defs.’ Answer and
Counterclaims (Dkt. 49) at ¶¶ 5, 7, 9, 11, 13. Defendants counter that “if a lack of development
of products such as those [Creative Co-Op is] accused of infringing . . . did not exist before the
existence of Defendants’ goods but appeared after Defendants developed their goods, the
material is highly relevant to whether or not Plaintiff copied Defendants’ products.” Defs.’
Resp., p. 10 (Dkt 63). The Court agrees that the state of Creative Co-Op’s product line prior to
2009 is relevant, but will limit production to a three-year time period preceding the first
publication. Such a time period is drawn from the Court’s estimation as to a reasonable period
that would likely include any development period.
F.

Emergency Motion to Strike

Creative Co-Op filed a motion to strike Defendant’s Reply to Plaintiffs’ Response to
Defendants’ Motion to Compel (Doc. 75) and the supporting affidavits and exhibits (Dkts. 76 &
77). Creative Co-Op alleges that these filings “attempt to introduce new evidence that was not
previously submitted with their Motion to Compel” and, therefore, cannot be considered.

ORDER RE: DISCOVERY MOTIONS - 11

Creative Co-Op first argues that the reply and associated filings should be stricken
because it does not have the opportunity to submit a sur-reply or respond to the evidence under
the rules. To alleviate this concern, the Court will not consider any of the new exhibits or
arguments related to those exhibits contained in the reply brief. The Court will consider all other
arguments in the reply.
Creative Co-Op next argues that the Local Rules do not allow for additional evidence to
be submitted with a reply brief. The Court notes that Creative Co-Op submitted an affidavit and
additional evidence in its reply to support its motion for protective order. (Dkt. 65)
Additionally, at times evidence may be helpful to support arguments made in reply to an
opposition to a motion. Although the rules do not specifically allow for submission of evidence
on reply, where it relates to an argument made in reply to an opposition, the Court often
considers the information.
More concerning is Creative Co-Op’s third objection, which states that Defendants have
not produced the exhibits attached to the Swanson Affidavit in discovery and that Swanson does
not identify the third party from which the product depicted was purchased. Defendants explain
in their reply brief that they obtained the photos on March 2, 2012, the Friday before Defendants
filed the reply brief and affidavit. Regardless, the Court finds that it does not need to consider
Defendants’ reply brief or the Swanson Affidavit in this decision, one which is favorable to
Defendants. Accordingly, the Court will strike the information in the reply brief and Affidavit
that constitutes or relies on new information not yet produced in discovery or for which purchase
information has not been provided. The Court has considered all other information in the reply
as responsive to Creative Co-Op’s opposition memorandum.

ORDER RE: DISCOVERY MOTIONS - 12

G.

Attorneys’ Fees

No fees will be awarded related to these motions. See Fed. R. Civ. P. 37(a)(5)(B).
Neither party received the full relief requested. However, the Court is concerned about the
degree of discovery skirmishing that is occurring in this case. The parties are encouraged to be
careful and tailored in their discovery requests, and to avoid gamesmanship in responding to
such discovery. If the Court is faced with further discovery motions, and the Court concludes
that the propounded discovery is not carefully and thoughtfully tailored to the issues in
controversy, or that the responses to such discovery obfuscate and avoid good faith answers and
production, then the Court will likely award attorney fees in favor of the non-culpable party.
ORDER
IT IS THEREFORE HEREBY ORDERED that
1.

Creative Co-Op’s Emergency Motion to Strike (Dkt. 78) is DENIED in part and
GRANTED in part, as set forth in more detail above.

2.

Creative Co-Op’s Motion for Protective Order Limiting Defendants’ First
Revised Set of Requests for Production of Documents (Dkt. 62), is DENIED in
part and GRANTED in part, as set forth above. Any documents required to be
produced in response to Defendants’ Revised Set of Requests for Production of
Documents shall be produced by March 30, 2012.

ORDER RE: DISCOVERY MOTIONS - 13

3.

Defendants’ Motion to Compel Documents and Things (Dkt. 67) is DENIED in
part and GRANTED in part, as set forth above. To the extent Creative Co-Op has
additional information responsive to the discovery requests this Court has upheld,
that information shall be provided on or before March 30, 2012.
DATED: March 7, 2012

Honorable Ronald E. Bush
U. S. Magistrate Judge

ORDER RE: DISCOVERY MOTIONS - 14