IHOP IP, LLC et al v. International House of Prayer et al

Filing 13

PROPOSED SCHEDULING ORDER Joint Proposed Discovery Schedule and Trial Order by IHOP IP, LLC, International House of Pancakes, LLC. (Tassi, Elizabeth)

IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF MISSOURI
IHOP IP, LLC et al.,

Plaintiffs,
vs.
INTERNATIONAL HOUSE OF PRAYER
et al.,
Defendants.

)
)
)
)
)
)
)
)
)
)
)

Case No.: 4:11-cv-00548-JTM

PROPOSED DISCOVERY SCHEDULE AND TRIAL ORDER
Pursuant to Fed. R. Civ. P. 26(f), a discovery and case management conference was held
on September 16, 2011 by telephone and was attended by Mark Iba and Elizabeth Tassi (counsel
for plaintiffs) and Keith Grady(counsel for defendants International House of Prayer, Friends of
the Bridegroom, Inc, Shiloh Ministries, Inc. and Mike Bickle).
The parties have agreed to serve their initial disclosures under Fed. R. Civ. P. 26(a)(1) on
or before November 15, 2011. The parties expect to request a protective order and plaintiffs
have agreed to serve a proposed protective order and stipulation for its entry no later than
November 15, 2011 pursuant to Local Rule 16.1(f)(7).
Disclosure or discovery of electronically stored information (ESI) will be treated the same
as paper discovery. In other words, each party intends to rely on the opposing party to conduct
the same diligent search of ESI as it will conduct of paper materials. The parties do not intend to
impose on the opposing party any additional requirements beyond the good faith obligation to
conduct a diligent search for responsive information.
1
DB04/808085.0002/5059209.2DD02

If the disclosing party inadvertently produces privileged or trial preparation materials, it
must notify the requesting party of such disclosure. After the requesting party is notified, it must
return, sequester, or destroy all information and copies and may not use or disclose this
information until the claim of privilege or protection as trial preparation materials is resolved. If
the receiving party recognizes that a production includes privileged or trial preparation materials,
it must notify the producing party of such disclosure, giving the disclosing party the opportunity
to request its return. The parties have agreed that privilege or protection is not waived if the
responding party produces privileged or protected materials, without intending to waive privilege
or protection, and so long as the responding party identifies the materials mistakenly produced.
The parties jointly propose to the Court the following discovery plan and trial order:
A. DISCOVERY SCHEDULE
NOTICE TO ALL COUNSEL: Counsel are advised to read this Order carefully.
Suggestions in support of or in opposition to a motion shall be no longer than 15
double spaced typewritten pages, exclusive of facts presented in accordance with
Local Rule 56.1, without permission of the Court. Reply suggestions shall be limited
to 10 double spaced pages, unless otherwise authorized by the Court. Suggestions
exceeding 10 pages in length shall have a table of contents and table of authorities.
Pursuant to Fed. R. Civ. P. 16(b) and 26(f), and upon consideration of the parties' proposed
scheduling order, this Court finds that the following time limits are appropriate:
I.

Any motion to join additional parties will be filed on or before December 2,
2011.

II.

Any motion to amend the pleadings will be filed on or before December 2, 2011.

III.

All other non-dispositive motions except motions in limine will be filed on or before
October 31, 2012. Notwithstanding the above, no motion relating to a discovery
dispute shall be filed until the following steps have been taken:
A.

Counsel for the moving party has in good faith conferred or attempted to
confer by telephone or in person with opposing counsel concerning the matter
prior to the filing of the motion. Merely writing a demand letter is not
2

DB04/808085.0002/5059209.2DD02

sufficient. Counsel for the moving party shall certify compliance with this rule
in any discovery motion. See Fed. R. Civ. P. 26(c).
B.

IV.

If the issues remain unresolved after the attorneys have conferred in
person or by telephone, counsel shall arrange with the Court for an
immediate telephone conference with the judge and opposing counsel. No
written discovery motion shall be filed until this conference has been held. See
Local Rule 37.1.

All dispositive motions, except those under Fed. R. Civ. P. 1 2(h)(2) or (3), will be filed
on or before November 30, 2012.
A.

Dispositive Motions:
All dispositive motions shall have a separate section wherein each
statement of fact is individually numbered, so that any party
opposing such motions may specifically point to a genuine issue of
material fact.

B.

Summary Judgment Motions:
1.

The suggestions in support of a motion for summary
judgment shall begin with a concise statement of
uncontroverted material facts. Each fact shall be set forth
in a separately numbered paragraph. Each fact shall be
supported by reference to where in the record the fact
is established. See Fed. R. Civ. P. 56(e).

2.

Suggestions in opposition to a motion for summary
judgment shall begin with a section that contains a concise
listing of material facts as to which the party contends a
genuine issue exists. Each fact in dispute shall be set forth in
a separate paragraph, shall refer specifically to those portions
of the record upon which the opposition party relies, and, if
applicable, shall state the paragraph number in movant's
listing of facts that is in dispute. All facts set forth in the
statement of the movant shall be deemed admitted for the
purpose of summary judgment unless specifically
controverted by the opposing party.

3.

All facts on which a motion or opposition is based shall be presented
in accordance with Fed. R. Civ. P. 56. Affidavits or declarations
shall be made on personal knowledge and by a person competent
to testify to the facts stated. Where facts referred to are contained
3

DB04/808085.0002/5059209.2DD02

in another document, such as a deposition, interrogatory answer or
admission, a copy of the relevant excerpt from the document shall
be attached.
V.

All pretrial discovery authorized by the Federal Rules of Civil Procedure will be
completed on or before October 31, 2012. In support of their request that this Court
permit discovery to continue past 180 days after a defendant has been served, the
parties state: (1) the parties previously engaged in voluntary settlement negotiations
for close to five months in an attempt to settle their dispute outside of Court and
would like the opportunity to continue these discussions over the next several weeks
without first expending substantial resources on discovery or prejudicing their
opportunity to conduct thorough discovery; (2) there are complex issues in this case
as it is primarily based on plaintiffs' trademark infringement and dilution claims,
which will likely require survey evidence and it is counsel's experience that survey
evidence can be time-consuming to obtain; and (3) the time frame accommodates
anticipated maternity leave for counsel for plaintiffs.
Discovery is needed on the following specific subjects: (1) defendants' use of
plaintiffs' marks at issue; (2) the effect of defendants' use of plaintiffs' marks at
issue, including the likelihood of confusion and dilution it allegedly causes; (3)
defendants' intent in adopting and using plaintiffs' marks at issue; (4) whether
plaintiffs' marks are indeed famous; (5) the basis for plaintiffs' claims that
defendants' actions were willful and that this constitutes an "exceptional" case; (6)
any damages allegedly suffered by plaintiffs and the basis for plaintiffs' request for
equitable relief; (7) the products or services on which plaintiffs' and defendants'
marks are used and the channels of trade for those products and services; (8) any
actual confusion between plaintiffs' and defendants' marks; and (9) the basis for
plaintiffs' claim that defendants actions falsely designated the origin of defendants'
products and services.
A.

On or before May 30, 2012, the plaintiff will designate expert witnesses.

B.

On or before May 30, 2012, the defendant will designate expert witnesses.

C.

Disclosure of Expert Testimony:
1.

With respect to a party who intends to call an expert for the purpose
of supporting an affirmative claim for relief, Rule 26 expert
witness reports shall be exchanged, and a Certificate of Service
filed, no later than May 30, 2012; and shall, with respect to a party
who intends to call an expert for the purpose of defending against
an affirmative claim for relief, be exchanged, and a Certificate of
Service filed, no later than May 30, 2012.

4
DB04/808085.0002/5059209.2DD02

2.

3.

D.

Each party shall disclose to every other party any evidence that the
party may present at trial under Rules 702, 703, or 705 of the
Federal Rules of Evidence. This disclosure shall be in written
affidavit form, prepared and signed by the witnesses and shall
include a complete statement of all opinions to be expressed, and
the basis and reasons therefor; the data or other information relied
upon in forming such opinions; the qualifications of the witness;
and a listing of any other cases in which the witness has testified as
an expert at trial or in deposition within the preceding five (5)
years.
If any party after receiving the reports described in paragraphs
D.(1) and D.(2) above from an opposing party wishes to submit
evidence intended solely to contradict or rebut evidence on the same
subject matter, they may do so in the same manner described above
within thirty (30) days after the receipt of said reports from such
other party. Thereafter, the testimony of each party's expert
witness shall be strictly limited at trial to the opinions and the
bases for the opinions filed under this section.

Daubert Motions
All motions to strike expert designations or preclude expert testimony premised
on Daubert v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), shall
be filed on or before November 30, 2012. The deadline for filing motions
in limine does not apply to these motions. Failure to file a Daubert
motion prior to this deadline will constitute a waiver of any arguments based on
Daubert.

VI.

Motions for Extension of Time:
All motions for extension of time, pursuant to Fed. R. Civ. P. 6(b), or to respond to
request for discovery, pursuant to Fed. R. Civ. P. 31, 33, 34, and 36, must state:
A.

The date when the original pleading, response, or other action is or was
first due;

B.

The number of previous extensions and the date the last extension expires;

C.

The cause for the requested extension, including a statement as to why the
action due has not been completed in the allotted time; and

D.

Whether the requested extension is approved or opposed by opposing
counsel (agreement by counsel of a requested extension is not binding on
5

DB04/808085.0002/5059209.2DD02

the Court).
Any motion for an extension of time filed without first complying with these procedures
will be denied.
VII.

Certifications to the Court:
Prior to the close of discovery, counsel for all parties shall meet, at least once, in
person, and discuss settlement. Upon completion of this requirement, counsel
shall certify to this Court the time and place of such meeting, the names of parties
and counsel present and the results of the meeting.

PLEASE NOTE: Counsel are directed to accompany all motions with a proposed order.

B. TRIAL ORDER
I.

Trial Setting:
A.

B.

II.

Counsel for the parties will have this case will be ready for trial by
February 15, 2013. It is estimated that nine (9) full trial days will be
necessary to try this case after the jury is impaneled: four days for plaintiffs'
case; three days for defendants' case; and two days for rebuttal testimony and
closing arguments. This case is scheduled as the #2 case for a jury trial
commencing ____________________________. Counsel for the parties
shall have the responsibility to maintain contact with the Court to ascertain if the
#2 case will be tried on _____________________________. The trial will be
held in Courtroom 7E (7th Floor), Charles Evans Whittaker United States
Courthouse, 400 E. 9th Street, Kansas City, Missouri.
A final pretrial conference will be held one-half (1/2) hour before the trial in
Courtroom 7E, Charles Evans Whittaker United States Courthouse, 400 E. 9th
Street, Kansas City, Missouri.

Initial Pretrial Conference:
A.

An initial pretrial conference in this case will be held on ________________,
at ______________ in CHAMBERS, Room 7662 (7th floor), Charles Evans
Whittaker United States Courthouse, 400 E. 9th Street, Kansas City, Missouri.

B.

The agenda for the initial pretrial conference will include:
1.

Identification of facts not in dispute to which the parties will stipulate, in
6

DB04/808085.0002/5059209.2DD02

order to save trial time;
2.
3.

Disposition of pending motions;

4.

Discussion of any legal questions which a party or parties believe must be
resolved prior to trial;

5.

Discussion of any suggestions by counsel to simplify and expedite the
trial;

6.

Discussion of the status of settlement negotiations;

7.

Notification of specific rules of trial procedures employed by the Court;
and,

8.
III.

Identification of factual and legal issues to be tried;

Discussion of expert testimony expected to be presented at trial.

Post Discovery:
A
.

Witness List: Ninety (90) days prior to trial, each party will file a list of the
names of all persons the party anticipates calling as witnesses at trial. If a person
is not listed by a party, that person will not be permitted to testify, absent leave of
court and for the sole purpose of reasonably unanticipated rebuttal or
impeachment. After the time for filing lists of witnesses has expired, no
supplemental or amended list will be filed without leave of Court and for good
cause.

B.

Exhibit List: Ninety (90) day prior to trial, each party shall serve and file a list of
all exhibits which may be offered in evidence. It is not necessary to list exhibits
to be used solely for reasonably unanticipated impeachment or rebuttal purposes.
1.

2.

C.

Except by leave of Court for good cause, no exhibit will be received in
evidence which is not so listed by the counsel offering the exhibit, and
After the time for filing lists of exhibits has expired, no supplemental or
amended list of exhibits will be filed without leave of Court for good
cause.

Making Exhibits Available to Opposing Party: Unless otherwise agreed to, the
parties shall exchange copies of all trial exhibits, including documents, ten (10)
days before trial, each party bearing the costs of producing their own exhibits.
Any party having an authenticity objection to any exhibit shall file its objection
7

DB04/808085.0002/5059209.2DD02

five (5) days before trial.
D.

Exhibit Index: All exhibits to be offered in evidence shall be listed on the
court's Exhibit Index form which can be obtained from the Clerk's Office. The
original and two copies of the completed index shall be delivered to the
courtroom deputy at least one-half hour before trial.

E.

Exhibits Delivered to the Court: Each exhibit that may be offered into evidence
should be properly marked with the court's exhibit sticker which can be obtained
from the Clerk's Office. Plaintiff shall number its exhibits 1 through 499;
defendant shall number its exhibits 500 through 999. Each party shall provide
two binders containing copies of each exhibit that can be copied inexpensively to
be used by the Judge and Law Clerk during trial. These binders shall be delivered
to the courtroom deputy one-half hour before trial.

F
.

Deposition Testimony:
1.
2.

At least seven (7) days prior to the date of the trial, each party shall
designate deposition testimony in response to an opponent's designation; and

3.

G.

At least ten (10) days prior to the date of the trial, each party shall
designate the parts of each deposition which will be offered as evidence;

At least five (5) days prior to the date of the trial, each party shall file its
objections to any deposition testimony designated pursuant to paragraphs 1.
and 2. above.

Proposed Jury Instructions:
Thirty (30) days prior to trial, each party shall file the original and one copy of
each proposed jury instruction. The original of each proposed instruction should
be entitled "Instruction No. ___" and have no citations of authority typed on it.
Each copy, however, should reflect the authorities upon which the instruction is
based. Proposed instructions in diversity cases where Missouri law applies
should conform to MAI. In all other cases, the Manual of Model Civil Jury
Instructions for the District Courts of the Eighth Circuit should be followed if
reasonably possible. If the proposed jury instructions have been prepared on a
computer using Word Perfect, please submit the proposed instructions on a 3 1/2
inch disk as well as on paper.

H.

Filing of List of Voir Dire Questions in Jury Cases:
1.

Thirty (30) days prior to trial, each party shall file proposed voir dire
questions. Counsel will be afforded an opportunity to examine the panel.
8

DB04/808085.0002/5059209.2DD02

Prior to the pretrial conference, counsel should confer regarding their
proposed voir dire questions they plan to ask. If opposing counsel objects
to a particular question, counsel should discuss and attempt to resolve the
objection. If not resolved, counsel should bring the objection up at the
pretrial conference, and
2.

I.

The Court will ask qualifying questions and questions from each party's
prepared questions. At the conclusion of the Court's questioning, if time
permits, each attorney will be allowed up to 20 minutes to direct questions
to the entire jury panel. An Attorney may then direct follow-up questions
to a juror who responds to a question directed to the entire panel.

Filing of Trial Briefs in Jury and Non-Jury Cases and Suggested Findings of Fact
in Non-Jury Cases:
1.

2.

J.

In actions to be tried with or without a jury, at least ten (10) days prior to
the date of trial, counsel for each party shall file a trial brief stating
separately the factual and legal contentions for the party for whom the trial
brief is filed, with citations of authority relied upon in respect to each legal
contention, and
In actions to be tried without a jury, each party will file suggested
findings of fact and suggested conclusions of law separately stated in
separately numbered paragraphs.

Pretrial Evidentiary Motions:
1.

2.

K.

At least seven (7) days prior to the pretrial conference on
_______________, counsel shall file any motion seeking an
evidentiary ruling before trial, and
Any responses to these motions shall be filed four (4) days prior to the
pretrial conference.

Filing of Stipulation of Uncontroverted Facts:
1.

Within twenty (20) days after the time fixed for the completion of
discovery, counsel for each party will meet and enter into a stipulation of
uncontroverted facts and waive objections to admissibility of exhibits
which are based on lack of identification, when the identification thereof
is not to be contested. At this conference, counsel will produce each
exhibit listed, or to be listed, on behalf of his client for inspection by
counsel for other parties. Notwithstanding the fact that the time for
discovery will have closed by the time set for this meeting, a request to
9

DB04/808085.0002/5059209.2DD02

stipulate, if preserved in the record, will constitute a request for admission
under Fed. R. Civ. P. 36, and failure to stipulate may be subject to
sanctions under Fed. R. Civ. P. 37(c). The Stipulation of Uncontroverted
Facts will then be prepared by counsel for plaintiff, signed by counsel for
all parties, and filed by counsel for plaintiff no more than forty (40) days
after the date fixed for the close of discovery.
2.

Counsel for plaintiff will initiate the arrangements for the meeting
outlined in K.1. above.

10
DB04/808085.0002/5059209.2DD02

Respectfully submitted,
/s/ Elizabeth A. Tassi
Mark D. Hinderks (MO Bar No. 58124)
Mark M. Iba (MO Bar No. 45452)
Elizabeth A. Tassi (MO Bar No. 59621)
STINSON MORRISON HECKER LLP
1201 Walnut Street, Suite 2900
Kansas City, Missouri 64106
[phone] (telephone)
[phone] (facsimile)
Email: [e-mail]
[e-mail]
[e-mail]
Attorneys for Plaintiffs
INTERNATIONAL HOUSE OF PANCAKES, LLC
and IHOP IP, LLC

/s/ Keith J. Grady
Keith J. Grady
John M. Challis
POLSINELLI SHUGHART PC
100 S. Fourth Street, Suite 1000
St. Louis, MO 63102
Telephone: [phone]
Fax: [phone]
Email: [e-mail]
[e-mail]
Lauren Tucker McCubbin
POLSINELLI SHUGHART PC
Twelve Wyandotte Plaza
120 West 12th Street, Suite 1800
Kansas City, MO 64105
Telephone: [phone]
Fax: [phone]
Email: [e-mail]
Attorneys for Defendants
INTERNATIONAL HOUSE OF PRAYER,
11
DB04/808085.0002/5059209.2DD02

FRIENDS OF THE BRIDEGROOM, INC.,
SHILOH MINISTRIES, INC., and MIKE BICKLE

12
DB04/808085.0002/5059209.2DD02