Cambria Company, LLC v. Pental Granite & Marble, Inc. et al

Filing 124

MEMORANDM OPINION AND ORDER Overuling defendant Pental Marble & Granite's 101 OBJECTION OF MAGISTRATE JUDGE DECISION; Affirming Magistrate Judge's 100 ORDER (Written Opinion). Signed by Judge John R. Tunheim on July 8, 2013. (DML)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
CAMBRIA COMPANY, LLC,

Civil No. 12-228 (JRT/AJB)
Plaintiff,

v.
PENTAL GRANITE & MARBLE, INC.
and VINACONEX ADVANCED
COMPOUND STONE JOINT STOCK
COMPANY,

MEMORANDUM OPINION AND
ORDER AFFIRMING THE
MAGISTRATE JUDGE’S MARCH 5,
2013 DISCOVERY ORDER

Defendants.

Ann N. Cathcart Chaplin and Rebecca L. Shult, FISH & RICHARDSON
PC, 60 South Sixth Street, Suite 3200, Minneapolis, MN 55402, for
plaintiff.
Anthony J. Alt, Jeffrey M. Thompson, John E. Radmer, and Bradley M.
Jones, MEAGHER & GEER, PLLP, 33 South Sixth Street, Suite 4400,
Minneapolis, MN 55402, for defendant Pental Granite & Marble, Inc.

Plaintiff Cambria Company, LLC (“Cambria”) sells natural quartz surfacing
products, including countertops.

Cambria alleges that Defendant Pental Granite &

Marble, Inc. (“Pental”) is selling copies or derivative works of its copyrighted quartz
surfacing products. Pental moved to compel further answers to multiple interrogatories
answered by Cambria. Following a hearing, United States Magistrate Judge Arthur J.
Boylan granted in part and denied in part Pental’s motion. Pental appeals portions of that

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Order. Because the Court finds that the Magistrate Judge’s Order is neither clearly
erroneous nor contrary to law, it will overrule Pental’s objections and affirm the Order.

BACKGROUND
Cambria filed this action against Pental in January 2012. (Compl., Jan. 27, 2012,
Docket No. 1.)

Cambria brings claims for copyright infringement, violation of the

Minnesota Uniform Deceptive Trade Practices Act, unfair competition, and unjust
enrichment. (See generally First Amended Compl., Feb. 16, 2012, Docket No. 3.) In lieu
of answering the complaint, Pental moved to dismiss for lack of jurisdiction under
Federal Rule of Civil Procedure 12(b)(2). (Mot. to Dismiss, Mar. 13, 2012, Docket
No. 5.) After hearing oral argument, the Court denied Pental’s motion. (Mem. Op. &
Order, Mar. 27, 2013, Docket No. 102.)
While Pental’s motion was pending, and pursuant to Federal Rule of Civil
Procedure 16, the Court issued a pretrial scheduling order setting a deadline for prediscovery disclosures and permitting each side to serve 15 interrogatories.1 (See Pretrial
Scheduling Order, May 9, 2012, Docket No. 33.) The Court postponed setting the
remainder of the schedule until the motion to dismiss was decided. (Id.) Both sides
served interrogatories, resulting in discovery disputes. (See Cambria’s Mot. to Compel
Disc., Aug. 10, 2012, Docket No. 55; Pental’s Mot. to Compel, Jan. 17, 2013, Docket
No. 76.) The Magistrate Judge granted in part and denied in part both motions to compel.
(See Order, Dec. 18, 2012, Docket No. 75; Order, Mar. 5, 2013, Docket No. 100). Pental
1

Pental filed a motion to stay discovery which the Court denied as moot after issuing its
abbreviated pre-trial scheduling order. (Order, May 11, 2012, Docket No. 34.)
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now objects to the Magistrate Judge’s decision regarding its motion to compel. (Def.’s
Objections, Mar. 19, 2013, Docket No. 101.) After filing its objections, Pental filed its
Answer and Counterclaims. (Def.’s Answer & Countercl., Apr. 24, 2013, Docket No.
109).

ANALYSIS
I.

STANDARD OF REVIEW
The standard of review applicable to an appeal of a Magistrate Judge’s order on

nondispositive pretrial matters is extremely deferential. Reko v. Creative Promotions,
Inc., 70 F. Supp. 2d 1005, 1007 (D. Minn. 1999). This Court will reverse such an order
only if it is clearly erroneous or contrary to law. 28 U.S.C. § 636(b)(1)(A); Fed. R. Civ.
P. 72(a); D. Minn. L.R. 72.2(a).
Discovery of non-privileged information is permissible if reasonably calculated to
lead to the discovery of admissible evidence related to the claim or defense of any party.
Fed. R. Civ. P. 26(b)(1). Parties have “no entitlement to discovery to develop new claims
or defenses that are not already identified in the pleadings.” Fed. R. Civ. P. 26(b)(1)
advisory committee’s note (2000); see also Crawford-El v. Britton, 523 U.S. 574, 598
(1998) (court had broad discretion to tailor discovery narrowly). Additionally, relevant
discovery may be limited if the court determines that “the burden or expense of the
proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(2)(C)(iii).

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II.

RELEVANCY OF PENTAL’S REQUESTS TO ITS DEFENSES
The Court declines to address whether portions of the Interrogatories may now be

relevant in light of the defenses asserted in Pental’s later-filed Answer and
Counterclaims. When Pental served the interrogatories and filed its motion to compel, it
had not yet filed its Answer and Counterclaims. Cf. Fed. R. Civ. P. 26(b)(1) advisory
committee’s note (2000) (“[A party has] no entitlement to discovery to develop new
claims or defenses that are not already identified in the pleadings.” (emphasis added)).
The Magistrate Judge has broad discretion to manage the discovery process, see
McGowan v. Gen. Dynamics Corp., 794 F.2d 361, 363 (8th Cir. 1986), including
revisiting these issues if Pental makes further requests related to the defenses identified in
its more recent pleadings.

III.

PENTAL’S APPEAL OF THE MAGISTRATE JUDGE’S ORDER
Pental moved to compel Cambria to provide supplemental answers to

Interrogatory Numbers 2 through 12. The Magistrate Judge considered each of Pental’s
requests, granted two, granted one in part, and denied the remainder. Pental now appeals
the Magistrate Judge’s denial of its motion to compel further answers for Interrogatory
Numbers 2 through 8, 12 and 13.

A.

Interrogatory 2

Interrogatory Number 2 seeks the identity of persons involved with creating,
developing, designing, or manufacturing certain Cambria products.

Pental seeks to

compel Cambria to provide a supplemental answer identifying manufacturing

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supervisors.

The Magistrate Judge concluded that the requested information is not

relevant to Cambria’s claims, the request is overbroad, and the burden of gathering the
information outweighs any marginal relevance. At the time of the Magistrate Judge’s
order, Pental had not asserted any defenses.
In its objection to the Magistrate Judge’s order, Pental argues that Cambria’s
manufacturing is relevant to Cambria’s claims and to whether Cambria is an “author.”
While the relevancy of this information to Pental’s now-asserted defenses is more
apparent, Pental does not provide any argument specifically identifying why
identification of Cambria’s manufacturing supervisors is relevant to Cambria’s claims.
Pental has not demonstrated that the Magistrate Judge’s denial of Pental’s motion to
compel further answer to Interrogatory 2 was erroneous or contrary to law, and the denial
will be affirmed.

B.

Interrogatory Numbers 3-5

Interrogatory Numbers 3 through 5 seek information relating to Cambria’s
development and design of the products at issue and identification of the machine and the
process used to manufacture the products. The Magistrate Judge found that the design
and manufacturing information requested was outside the scope of permissible discovery
and denied Pental’s motion to compel further answer. The Magistrate Judge considered
Cambria’s arguments regarding the confidentiality of this information and further found
Pental’s reliance on Century Tile, Inc. v. Hirsch Glass Co., 467 F. App’x 651, 652

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(9th Cir. 2012), unpersuasive and concluded that no controlling case law suggests that the
design and manufacturing process for a copyright work is relevant and must be produced.
In its objection, Pental argues the Magistrate Judge’s determination is clearly
erroneous because Cambria has admitted that product design is relevant to Cambria’s
claims by identifying employees who will testify and documents relating to product
design and manufacturing. Even if the testimony and documents make product design
and manufacturing relevant to some extent, Pental does not explain why its requests are
not overly broad and unduly burdensome and thus outside the scope of permissible
discovery, particularly in light of Cambria’s confidential design and manufacturing
processes. Because the Court does not find the Magistrate Judge’s determination clearly
erroneous or contrary to law, it will affirm with respect to these interrogatories.

C.

Interrogatory Number 6

Interrogatory Number 6 seeks information regarding Cambria’s analyses to
determine if Pental’s products are copies of Cambria’s copyrighted products. Cambria
asserted that any additional information not already produced was protected by attorneyclient privilege and the work product doctrine. The Magistrate Judge noted the Pental did
not address privilege issues in its motion and denied Pental’s motion to compel further
answer. In its objection, Pental does not expressly address any error regarding this
holding nor does it address the privilege issues. The Court will, therefore, affirm with
respect to these interrogatories.

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D.

Interrogatory Numbers 7-8

Interrogatory Numbers 7 and 8 seek identification of the copyrightable elements of
expression in Cambria’s products and the infringing elements in Pental’s products. The
Magistrate Judge determined that no relevant case law requires Cambria to break down
the separate copyrightable elements of its overall copyrighted design.
In its objection, Pental argues that Cambria’s identification of two employees with
factual information relating to the alleged similarities between Cambria and Pental’s
products gives Pental the right to know what factual information these individuals
possess. Pental appears to be attempting to extend the language of its request which
simply asks for identification of elements.

Pental does not identify any case law

indicating that the Magistrate Judge’s holding that Cambria need not break down the
separate copyrightable elements of its overall design is contrary to law or clearly
erroneous. Consequently, the Court will affirm this portion of the Magistrate Judge’s
order.

E.

Interrogatory Numbers 12-13

Interrogatory Numbers 12 and 13 seek information related to prior litigation
between Cambria and Breton S.p.A. Cambria argues that the prior case was a contract
dispute; Pental contends that the litigation included allegations relating to the intellectual
property rights of Breton, a seller of machines used by Cambria. The Magistrate Judge
concluded that Pental was “on a fishing expedition” and the information requested was
outside the scope of permissible discovery. (Order at 6, Docket No. 100.)

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Pental alleges that the allegations relating Breton and Cambria’s intellectual
property rights will clarify who owns what intellectual property rights and are relevant to
Cambria’s claim to own the “processes, products, designs, and trade secrets at issue –
whether related to its copyright or state law claims.” (Def.’s Objections at 14.) But
Pental provides nothing to support its assertion that the prior litigation was relevant to
Cambria’s claims or that relevant intellectual property rights were addressed by the
parties. Finding no clear error or mistake of law, the Court will affirm.
CONCLUSION
In no instance is the Court “left with the definite and firm conviction that a
mistake has been committed,” Chakales v. Comm’r, 79 F.3d 726, 728 (8th Cir. 1996), or
that this order will cause “fundamental unfairness in the trial of the case,” McGowan, 794
F.2d at 363. As a result, the Court finds that the Magistrate Judge’s Order is neither
clearly erroneous nor contrary to law and, therefore, affirms the Order.

28 U.S.C.

§ 636(b)(1)(A); Fed. R. Civ. P. 72(a); D. Minn. L.R. 72.1(b)(2).
ORDER
Based on the foregoing, and all the records, files, and proceedings herein, IT IS
HEREBY ORDERED that Defendant Pental Marble & Granite, Inc.’s Objections
[Docket No. 101] are OVERRULED and the Magistrate Judge's March 5, 2013 Order
[Docket No. 100] is AFFIRMED.
DATED: July 8, 2013
at Minneapolis, Minnesota.

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JOHN R. TUNHEIM
United States District Judge
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