Xenos, Inc. et al v. Tilly's, Inc.

Filing 82

MEMORANDUM AND ORDER - IT IS ORDERED: The plaintiff's motion to compel, (Filing No. 57 ), is granted in part and denied in part as set forth in this order. The defendants shall serve full and complete responses to the plaintiffs' discovery requests, as narrowed and re-crafted in this memorandum and order, on or before July 14, 2014. Ordered by Magistrate Judge Cheryl R. Zwart. (TCL )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
XENOS, INC., a Nebraska corporation; and
OTTILIA CHAPMAN, an individual;
Plaintiffs,
vs.

8:13CV202
MEMORANDUM AND ORDER

TILLY'S, INC., a Delaware corporation;
and WORLD OF JEANS AND TOPS,
INC., a California corporation;
Defendants.
This is an action based on an alleged violation of the Nebraska Deceptive Trade
Practices Act. Plaintiffs operate a store in Omaha under the “Tilly’s” name. Defendants,
or one of them, recently opened a store in Omaha under the same name.
Plaintiffs have moved to compel production of documents from the defendants.
(Filing No. 57). After conferring with the parties, the plaintiffs’ requests, the defendants’
responses, and the court’s rulings are as follows:
REQUEST NO. 2: Produce all communications, memos, reports or other
documents concerning use of the name “Tilly’s”, or any derivative, in the
Omaha, Nebraska market. (If any communications or reports are in electronic
format, they shall be produced in “hard printed copy”).
The plaintiffs argue:
Plaintiffs did not ask for "any and all" documents concerning the Omaha
Tilly's store, but only those documents "concerning the use of the name
"Tilly's" in the Omaha, Nebraska Market." The Defendants' infringing use
of the name is at the heart of Plaintiffs' claims for trade name infringement,
dilution and violation of the Nebraska Deceptive Trade Practices Act.
Since the Defendants' store in Omaha has been operating for only a year,
the request is sufficiently narrowed at to time.

The defendants argue:
Plaintiffs’ request is grossly overbroad and incomprehensible because it
seeks an undefined universe of documents. The defendants operate under
the TILLY’S® name, so every document “concerning” the existence of the
Omaha TILLY’S® store would include all documents related to the store’s
financials, construction, design, management, personnel, insurance, etc.
The breadth of the request includes documents that are irrelevant to
Plaintiffs’ claims in this trademark infringement action. Moreover, the
defendants have provided the information the plaintiff needs in response to
other requests.
Ruling: As written, the plaintiffs’ request is overbroad. After conferring with the
parties, and with their agreement, the request is narrowed as a request for:
All documents reflecting who was involved, what was said, when it was
said, and how the decision was made to investigate, or to not investigate,
the use the Tilly’s name in the Omaha, Nebraska market before the
defendants opened a store under the Tilly’s name in that market, and any
documents reflecting the results of any such investigation conducted by the
defendants.
REQUEST NO. 11: Produce a copy of all reports showing sales at the Westroads
store by product line or category (e.g., women’s clothing, men’s clothing,
accessories, etc.) from the date of opening the store to the present.
The plaintiffs argue:
The information in the sales reports by product line or category is relevant
to Plaintiffs' claims because the reports will reflect sales volume across
Defendants' different product lines and allow Plaintiffs to determine the
percentage of Defendants' volume derived from the sale of women's
clothing and accessories. The Plaintiffs believe this information is relevant
to Plaintiffs' claim that Defendants are engaging in deceptive trade practices
which will likely cause customer confusion regarding the source of
Plaintiffs' goods and services.
The defendants argue:
The request, as written, encompasses the dollar value of the defendants
sales, and since the Plaintiffs’ own pleadings and discovery responses do
not seek monetary damages, the sales numbers are irrelevant.

Ruling: As written, the plaintiff’s request is overbroad. After conferring with the
parties, and with their agreement, the request is narrowed to request:
Any reports generated in the ordinary course of either defendant’s business
reflecting the percentage of sales by volume (not to include financial data)
of male clothing and accessories compared to female clothing and
accessories at the Tilly’s store owned and operated by the defendants, or
either of them, in Omaha, Nebraska.
REQUEST NO. 15: Produce all minutes of the Board of directors of Defendant
concerning opening a store in Omaha, Nebraska.
The plaintiffs argue:
This information is relevant to Plaintiffs claims and defenses because it will
likely disclose whether Defendants: 1) conducted a trade name search
before opening a store in the Omaha market, and 2) knew of Plaintiffs'
business before they entered the Omaha market. Defendants' store in
Omaha has only been operating for a year, so Plaintiffs’ request is limited
as to time.
The defendants argue:
Defendants should not be required to comply with such a sweeping
discovery request. The request seeks information well beyond WOJT’s use
of the TILLY’S® mark, and as such, seeks information that is irrelevant to
any claim or defense in this action. Corporate boards direct and advise
companies on virtually all operational matters. Plaintiffs should not be
allowed to receive irrelevant and competitively sensitive information
through discovery.
Ruling: As written, the plaintiffs’ request is overbroad. After conferring with the
parties, the request is narrowed as requesting:
For each defendant, any board minutes mentioning:
a)
A defendant’s or the defendants’ investigation, or the absence of any
investigation, on the use of the Tilly’s name in the Omaha, Nebraska
market before the defendants, or either of them, opened a store under the
Tilly’s name in that market; and
b)
Any discussions or communications between the defendants, or by
the board of Defendant Tillys and mentioning World of Jeans and Tops, or

by the board of Defendant World of Jeans and Tops and mentioning
Defendant Tillys, regarding opening a store under the Tilly’s name in the
Omaha, Nebraska market.
The court further finds that Defendants’ objections to the discovery before the
court on Plaintiffs motion to compel were not unreasonable. The plaintiffs’ request for
recovery of attorney fees and costs is denied.
Accordingly,
IT IS ORDERED:
1)
The plaintiff’s motion to compel, (Filing No. 57), is granted in part and
denied in part as set forth in this order.
2)
The defendants shall serve full and complete responses to the plaintiffs’
discovery requests, as narrowed and re-crafted in this memorandum and order, on or
before July 14, 2014.
June 12, 2014.
BY THE COURT:
s/ Cheryl R. Zwart
United States Magistrate Judge