Life Technologies Corporation v. Life Technologies Corporation et al

Filing 149

REPORT AND RECOMMENDATIONS re 134 MOTION for Order to Show Cause Why Dr. Krishnamurthy Should Not Be Held in Contempt, and Motion for Order Holding Him in Contempt filed by Life Technologies Corporation Signed by: Judge Magistrate Judge William Connelly. Objections to R&R due by September 8, 2014. Signed by Magistrate Judge William Connelly on 08/22/2014. (Attachments: # 1 Letter, # 2 FRCP 72)(nk, Chambers)

UNITED STATES DISTRICT

LIFE TECHNOLOGIES
a Delaware Corporation

COURT FOR THE DISTRICT

OF MARYLAND

CORPORATION

Plaintiff
Case No. RWT 10-3527

v.
LIFE TECHNOLOGIES
CORPORATION,
et al., Montgomery County, Maryland
Defendants

REPORT AND RECOMMENDATIONS
FOR MOTION
FOR ORDER TO SHOW CAUSE WHY DR. KRISHNAMURTHY
SHOULD NOT BE HELD IN CONTEMPT AND MOTION
FOR ORDER HOLDING HIM IN CONTEMPT
On July 6, 2012 the Honorable Roger W. Titus referred this case to the undersigned for
the resolution of all discovery and related scheduling matters (ECF No. 63). Pending before the
court is the Plaintiffs Motion for Order to Show Cause Why Dr. Krishnamurthy Should Not Be
Held in Contempt and Motion for Order Holding Him in Contempt (ECF No. 134), Dr.
Krishnamurthy's

Response in Opposition (ECF No. 138), and the Plaintiffs Reply (ECF No.

139). Judge Titus orally instructed the undersigned to hold a hearing on the pending matter and
submit a Report and Recommendations pursuant to 28 U.S.C.

S 636(b)(l)(B).

A hearing on this

matter was held on May 16, 2014. The matter was taken under advisement for the preparation of
a Report and Recommendations.
PROPOSED

FINDINGS OF FACT

1. On December 16, 2010 the plaintiff, Life Technologies Corporation of Carlsbad,
California sued the defendants, Life Technologies Corporation of Rockville, Maryland and

DOES 1 to 5, for Declaratory Relief and an Injunction and for Federal Trademark Infringement
and Unfair Competition under 15 U.S.C. sl125(a)(l)(A).

The plaintiff is a business engaged in

the development, manufacture, distribution, marketing and sale of life science products for
scientific research. The company has more than 50,000 products used by more than 75,000
customers around the world and its products are found in more than 90% of the research
laboratories in the United States. The defendant corporation has offices in Rockville, Maryland
and Vellore, India and provides research, development and information technology services to
businesses. The plaintiff alleged that the defendants are using the plaintiffs LIFE
TECHNOLOGIES@ mark without authority and are engaged in trademark infringement and
unfair competition.

Equitable relief, an accounting of all profits derived from the trademark

infringement and monetary damages were sought.
2. On March 15,2012 Judge Titus granted the Plaintiffs Motion for Partial Summary
Judgment (ECF No. 14), Plaintiff s Motion for Sanctions or Other Relief Pursuant to Rule 56(h)
(ECF No. 21), and Plaintiffs Motion for Default Judgment (ECF No. 45). In an eleven page
order, Judge Titus ruled that the Plaintiff owns all right, title and interest and has superior rights
in and to the registered trademark LIFE TECHNOLOGIES@, enjoined the defendants from use
of the mark, ruled that the defendants had engaged in trademark infringement and unfair
competition and that the plaintiff is entitled to an accounting, monetary damages, treble damages,
attorney fees and costs.

The Plaintiff was granted leave to conduct additional discovery in

support of an award of damages.
3. On November 6,2012 the Plaintiff filed a Motion for Order to Show Cause Why
Defendant and Dr. and Mrs. Krishnamurthy Should Not Be Held in Contempt, and Motion for
Order Holding Them in Contempt and for Other Relief (ECF No. 78). The basis for the motion

was that the Defendant and Dr. and Mrs. Krishnamurthy had not complied with the directions
contained in the court's March 15,2012 order. Following hearings on December 10 and 18,
2012, Judge Titus held Defendant Life Technologies Corporation and Dr. Krishnamurthy in
contempt. An order to that effect was entered on December 20,2012 (ECF No. 94).
4. During the first part of2013 attempts to obtain written discovery and document
production from Dr. Krishnamurthy were largely unsuccessful.
discovery were granted by the undersigned.

Several motions to extend

On September 4, 2013 an in person discovery

hearing was held which was followed by telephone discovery conferences on September 24,27,
October 8, 16, 23, 2013. During these conferences the undersigned worked to obtain social
security numbers, email addresses, tax records and other information from Dr. Krishnamurthy to
aid the Plaintiff in its use of third party subpoenas on banks, internet service providers and other
businesses to obtain data required to support a monetary damage claim.
5. By order of October 23,2013 the undersigned directed:
That Dr. Krishnamurthy is hereby ORDERED to compile a list of
all e-mail addresses he is currently using and/or previously used.
Dr. Krishnamurthy must affirm the list of e-mail addresses is the
full, correct and absolute lis~ of all e-mail addresses he presently or
previously used. (ECF No. 116, Paragraph 2)
The period of time was for the years 2002 to the present.

Dr. Krishnamurthy provided four e-

mail addresses. Plaintiff through third party subpoenas uncovered approximately eleven or
twelve personal e-mail accounts and at least that many additional e-mail accounts that appear to
be related to either the Defendant or Dr. Krishnamurthy's related entities in India which have
been used at various times by Dr. Krishnamurthy from 2002 to the present. To date, Dr.
Krishnamurthy has not produced any emails.
6. On January 9,2014 a telephone discovery conference was held. Plaintiff explained

that it wished to subpoena internet service providers associated with Dr. Krishnamurthy to obtain
copies of e-mailsdirectlyfromthe

service provider, as Dr. Krishnamurthy had provided no

emails. However, the internet service providers would not honor a Federal subpoena unless the
e-mail account holder provides written consent pursuant to the Stored Wire Electronic
Communications Act, 18 U.S.c. 92701 et seq.
7. On January 9, 2014 the undersigned entered an order directing:
That for the reasons stated during the telephone conference,
Interested Party, Krishnamurthy Govindaraj, is hereby ORDERED
to sign and execute "consent and release forms" regarding various
e-mail accounts within ten (l0) days of Plaintiff s counsel
providing the forms to Dr. Krishnamurthy's counsel. (ECF No.
122, Paragraph 3)
The court also directed Dr. Krishnamurthy to sign and execute IRS Form 4506T. On January 21,
2014 Dr. Krishnamurthy filed objections pursuant Fed. R. Civ. P. 72 objecting to the unspecified
"nature of the"broad requests for e-mail production and moved for a Protective Order restricting
from discovery emails from third party providers that are not relevant or reasonably calculated to
lead to the discovery of admissible evidence (ECF No. 123 & 124). Plaintiff filed in opposition
to the objections and motion for a protective order on February 8, 2014 (ECF No. 125) and
supplemented its opposition with a letter filed on February 19,2014 (ECF No. 129). Dr.
Krishnamurthy filed a reply on February 28, 204 (ECF No. 130).
8. On March 4, 2014 Judge Titus overruled the objections to the undersigned's order of
January 9, 2014 and denied Dr. Krishnamurthy's

motion for a protective order. The order of

January 9, 2014 stands as a valid decree of this court.
9. On January 21, 2014 and March 4,2014 Plaintiffs counsel emailed to Dr.
Krishnamurthy's

counsel consent forms and updated consent forms for internet service providers

(ECF No. 134, Ex Nos. 2 & 5). Dr. Krishnamurthy was requested to sign these consent forms
consistent with the court's order of January 9, 2014. He did not. Rather, Dr. Krishnamurthy
submitted his own e-mail consent forms (ECFNo. 134, Ex. No. 7).
10. The court has examined the consent forms prepared by the Plaintiff and find them to
be appropriate and consistent with the court's order of January 9, 2014. The email consent forms
submitted by Dr. Krishnamurthy are not appropriate because: a) the forms limit and qualify his
consent by stating they are made only "under the threat of contempt," b) the forms do not
identify the information that is supposedly authorized for release, c) the forms fail to authorize
the release of any e-mails, d) the forms omit eight of the e-mail accounts in issue, e) the forms
omit critical information such as birth date, gender, current/previous telephone numbers,
current/previous physical addresses, other alternate/linked e-mail addresses, previously used IP
addresses, and the names of all of the related entities, and f) the forms are limited to a five year
time period. Dr. Krishnamurthy's

proposed consent forms are useless for their intended purpose.

11. The January 9, 2014 order directed Dr. Krishnamurthy to execute e-mail consent
forms as provided by Plaintiff s counsel. Dr. Krishnamurthy has refused and continues to refuse
to execute the forms.
STANDARD FOR CONTEMPT
The purposes of civil contempt are to coerce obedience to a court order and to
compensate a party for losses sustained as a result of the contumacy. In re General Motors

Corp., 61 F.3d 256, 258 (4th Cir. 1995). To establish civil contempt, a movant must show each
of the following elements by clear and convincing evidence:
(l) the existence of a valid decree of which the alleged contemnor
had actual or constructive knowledge; (2) ... that the decree was in
the movant's "favor"; (3) ... that the alleged contemnor by its

conduct violated the terms of the decree, and had knowledge (at
least constructive) of such violations; and (4) ... that [the] movant
suffered harm as a result.
Ashcraft v. Conoco, Inc., 218 F.3d 288,301 (4th Cir. 2000) (quoting Colonial Williamsburg
Foundv. The Kittinger Co., 792 F.Supp. 1397, 1405-06 (E.D.Va. 1992), aff'd, 38 F.3d 133, 136

If contempt is found, the remedy is within the trial court's broad discretion:
Remedies include ordering the contemnor to reimburse the
complainant for losses sustained and for reasonable attorneys fees.
United States v. Trudell, 563 F.2d 889, 891 (8th Cir. 1977).
However, the remedies and sanctions must be remedial and
compensatory and, unlike criminal contempt, nonpunitive. [United
States v.] United Mine Workers [of America], 330 U.S. [258] at
302-04,67 S.Ct. 677, 91 L.Ed. 884 [(1947)].
In re General Motors, 61 F.3d, 256, 259. Before awarding attorney's fees, however, a finding of
"willful disobedience" may be required. Omega World Travel, Inc. v. Omega Travel, Inc., 710
F.Supp. 169, 172-73 (E.D.Va. 1989), aff'd, 905 F.2d 1530 (4th Cir. 1990).
ANALYSIS
It is beyond question that the order of January 9,2014 directing Dr. Krishnamurthy to
execute consent and release forms for e-mail accounts within ten days of Plaintiffs counsel
providing the forms to Dr. Krishnamurthy's

counsel is valid. The objections of Dr.

Krishnamurthy to the order were overruled by Judge Titus on March 4,2014.

The order of

January 9, 2014 was in favor of the Plaintiff as it permitted the Plaintiff to obtain e-mails of the
Defendant and Dr. Krishnamurthy directly from the internet service providers in order to
establish the monetary damages sustained by the Plaintiff. Over the course of discovery in this
case, Dr. Krishnamurthy has produced not one e-mail.
By his refusal to execute the consent forms provided by the Plaintiff s counsel, Dr.

Krishnamurthy has violated the terms of the January 9,2014 order. Dr. Krishnamurthy had
actual knowledge of his violation of the court's order as demonstrated by his extensive
involvement in this matter and by the fact that Dr. Krishnamurthy submitted alternative e-mail
consent forms in direct contravention of the January 9,2014 order which directed him to execute
consent e-mail forms provided by the Plaintiffs counsel. The Plaintiff has suffered harm as a
result of Dr. Krishnamurthy's

conduct. The Plaintiff has been unable to promptly and

economically obtain relevant information necessary to prosecute its case, has incurred substantial
additional attorney fees and costs, and has been impaired in its calculation of the amount of
monetary damages sustained in this matter.
RECOMMENDA TIONS
1. That Dr. Krishnamurthy be held in contempt of the court's order of January 9,2014
(ECF No. 122).
2. That the court issue an order stating that Plaintiffs e-mail consent forms comply with
the provisions of the Stored Wire Electronic Communications Act, 18 U.S.C.

S 2701

et seq. and

that e-mail service providers such as Google/gmail, Yahoo!, Hotmail, and the Uniformed
Services University of the Health Sciences (USUHS) may rely on those consent forms and the
Order in providing the requested information.
3. That the court issue an order requiring Dr. Krishnamurthy to take all steps necessary to
allow the Plaintiff to complete and serve the subject e-mail consent forms and secure the e-mails,
content and associated documents and information sought.
4. That the court direct the Plaintiffs counsel to submit the e-mail consent forms to Dr.
Kristhnamurthy's

counsel for Dr. Kristhnamurthy's

signature. Dr. Kristhnamurthy will be given

five business days to sign the consent e-mail forms and return them to the Plaintiffs

counsel. If

the forms are not signed within that time period the court will issue a warrant for Dr.
Kristhnamurthy's

arrest and direct the United States Marshal to arrest and detain Dr.

Kristhnamurthy until such time as he purges himself of his contempt by signing the consent email forms.
4. That the court direct the Plaintiff to file with the court a pleading outlining the
monetary damages it has sustained as a result of the contempt of Dr. Krishnamurthy.

The

Plaintiff is to separate out the attorney fees it has incurred in connection with its Motion to Hold
Dr. Krinshnamurthy In Contempt (ECF No. 134) and should also set forth its evidence as to
whether Dr. Kristhnamurthy willfully disobeyed the court's January 9, 2014 order. The court
will hold in abeyance ruling on these issues until the requested pleading has been filed and Dr.
Kristhnamurthy has had an opportunity to respond.

August 22, 2014

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WILLIAM CONNELLY
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UNITED STATES MAGISTRATE JUDGE