Oriental Trading Company, Inc. et al v. Yagoozon, Inc.

Filing 46

MEMORANDUM AND ORDER - The plaintiffs' motion (Filing No. 36 ) is granted in part and denied in part. The Court accepts as waived plaintiffs' motion as to Request for Production No. 12. The defendant will produce all documents currentl y in its possession and will demand that Amazon produce all documents to the plaintiffs in its possession, in response to Request for Production Nos. 13, 14, 15, 16, 18, 19, 20, and 22. The defendant will produce all documents currently in its posse ssion in response to Request for Production No. 24. The plaintiffs' request for sanctions is denied without prejudice. The defendant's request that the plaintiffs pay for its discovery expenses (Filing No. 40 ) is denied. Ordered by Senior Judge Lyle E. Strom. (GJG)

IN THE UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF NEBRASKA
ORIENTAL TRADING COMPANY,
INC., a Delaware corporation,
and FUN EXPRESS LLC, a
Nebraska limited liability
corporation,

)
)
)
)
)
)
Plaintiffs,
)
)
v.
)
)
YAGOOZON, INC., a Rhode
)
Island corporation,
)
)
Defendant.
)
______________________________)

8:13CV351

MEMORANDUM AND ORDER

This matter is before the Court on the motion (Filing
No. 36) of plaintiffs Oriental Trading Company (“OTC”) and Fun
Express L.L.C. (“FEL”) to compel discovery from defendant
Yagoozon Incorporated (“Yagoozon”).

The matter has been fully

briefed and after review of the filings and relevant case law,
the Court finds as follows.
I.

FACTS
The plaintiffs in this case allege numerous

infringements of their copyrights and trademarks, unfair
competition, false advertising, and deceptive trade practices
(Filing No. 1, at 5-8, 13-27).

Plaintiffs allege that Yagoozon

maintained an Amazon account where it sold its products with its
trademarks.

Plaintiffs delivered requests for production

(“RFPs”) of documents upon Yagoozon on March 28, 2014 (Filing No.
38, at 1).

Yagoozon responded with a series of objections on May

7, 2014 (Id.).

On June 19, 2014, the plaintiffs sent a letter to

Yagoozon outlining various problems with its responses (Id.).
Yagoozon produced three of the plaintiffs’ 26 requests on July
25, 2014 (Id.).

The plaintiffs and Yagoozon exchanged additional

correspondence regarding RFP numbers 12, 13, 14, 15, 16, 18, 19,
20, 22, and 24 to no avail.
II.

LAW
“On notice to other parties and all affected persons, a

party may move for an order compelling disclosure or discovery.”
Fed. R. Civ. P. 37(a)(1).

“A party seeking discovery may move

for an order compelling an answer, designation, production, or
inspection.”

Fed. R. Civ. P. 37(a)(3)(B).

“The party resisting production bears the burden of
establishing lack of relevancy or undue burden.”

Prism Techs.,

L.L.C. v. United States Cellular Corp., Case No. 8:12CV125, 2013
WL 6712665, at *1 (D. Neb. Dec. 18, 2013) (citing Prism Tech.,
L.L.C. v. Adobe Sys. Inc., 284 F.R.D. 448, 449 (D. Neb. 2012)).
The resisting party must “provide sufficient detail and
explanation about the nature of the burden in terms of time,
money, and procedure required to produce the requested
discovery.”
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Furthermore, “control is defined as the legal right,
authority, or ability to obtain upon demand documents in the
possession of another.”

In re Hallmark Capital Corp., 534 F.

Supp. 2d 981, 982 (D. Minn. 2008)).

The party is not required to

have legal ownership or actual possession of documents, but
documents are in a party’s control “when that party has the
right, authority, or practical ability to obtain the documents
from a non-party to the action.”

Id.

III. DISCUSSION
The parties have reached an unnecessary impasse.
First, Yagoozon admits it possesses several documents which might
satisfy the plaintiffs’ requests, but Yagoozon has not produced
those documents because the documents may be insufficient.

See

e.g., Filing No. 40, at 10-14 (quoting and citing to various
agreements between Amazon and Yagoozon which respond to the
plaintiffs’ RFPs). To the extent that Yagoozon admitted in its
brief in opposition that it could respond to the plaintiffs’
request, Yagoozon should produce those documents.
Second, Yagoozon argues it does not possess, hold
custody over, or control numerous documents because of its
business model with Amazon.

Essentially, Yagoozon claims to have

outsourced numerous aspects of ordinary business to Amazon’s
“Fulfillment by Amazon” program.

Yagoozon argues Amazon handles

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“receipt, sale, warehousing, and shipping of Yagoozon’s products.
[]Amazon also handles all customer services associated with every
transaction.”

Filing No. 40, at 14.

Yagoozon has not attempted

to request the plaintiffs’ demanded documents from Amazon because
Yagoozon does not control the documents.

However, case law

supports the plaintiffs’ position that Yagoozon has a legal duty
to obtain these documents from its very close business partner,
Amazon.

See New Alliance Bean & Grain Co. v. Anderson

Commodities, Inc., 8:12CV197, 2013 WL 1869832, *3 (D. Neb. May 2,
2013) (“A party does not need to have legal ownership or actual
possession of documents, ‘rather documents are considered to be
under a party's control when that party has the right, authority,
or practical ability to obtain the documents from a non-party to
the action’”) (citing In re Hallmark Capital Corp., 534 F. Supp.
2d 981, 982 (D. Minn. 2008)).

The mere presence of information

in Amazon’s website does not mean that information belongs solely
to Amazon to the exclusion of Yagoozon, its close business
partner.

The Court finds that plaintiffs have met their burden

that Yagoozon has the practical ability to obtain the documents
at issue from Amazon, and, therefore, Yagoozon is under a legal
obligation to demand these documents from Amazon and to present
Amazon’s response to the parties-in-suit.

If Yagoozon is unable

to acquire these documents from Amazon, the plaintiffs must be
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made aware immediately so that they may pursue Amazon
independently.
Third, Yagoozon objects to RFP 24.

RFP 24 asks

Yagoozon to produce “any and all emails referencing or mentioning
Oriental Trading or Fun Express.”
was overly broad.

Yagoozon objected that the RFP

Yagoozon emails containing the OTC or FEL

would be highly probative to the plaintiffs’ claims of trademark
infringement, among others.

The request is not overly broad.

In

addition, the Court finds that Yagoozon has failed in its burden
to prove production of these emails would be overly burdensome.
According to Yagoozon’s briefs, its operation is small and
produces almost no correspondence with Amazon or its Amazon
customers.

Therefore, the quantity of emails which may contain

the plaintiffs’ trademarks are likely low.
The Court will deny without prejudice plaintiffs’
motion to the extent it requests sanctions, but the Court views
unnecessary stalling of discovery with extreme disfavor and will
not tolerate any further non-responsive arguments from Yagoozon.
The Court will also deny Yagoozon’s request that the
plaintiffs cover the cost of responding to their discovery
requests.

Accordingly,

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IT IS ORDERED:
1) The plaintiffs’ motion (Filing No. 36) is granted in
part and denied in part.
2) The Court accepts as waived plaintiffs’ motion as to
Request for Production No. 12.
3) The defendant will produce all documents currently
in its possession and will demand that Amazon produce all
documents to the plaintiffs in its possession, in response to
Request for Production Nos. 13, 14, 15, 16, 18, 19, 20, and 22.
4) The defendant will produce all documents currently
in its possession in response to Request for Production No. 24.
5) The plaintiffs’ request for sanctions is denied
without prejudice.
6) The defendant’s request that the plaintiffs pay for
its discovery expenses (Filing No. 40) is denied.
DATED this 1st day of October, 2014.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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