D'Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc.

Filing 92

ORDER denying 78 Motion for Reconsideration; granting 83 Motion to Withdraw and Amend. So Ordered by Chief Judge Landya B. McCafferty.(gla)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW HAMPSHIRE
D’Pergo Custom Guitars, Inc.
v.

Civil No. 17-cv-747-LM
Opinion No. 2019 DNH 068

Sweetwater Sound, Inc.

O R D E R
D’Pergo Custom Guitars, Inc. (“D’Pergo”) brings this suit
against Sweetwater Sound, Inc. (“Sweetwater”), alleging claims
of copyright and trademark infringement and violations of the
New Hampshire Consumer Protection Act (“CPA”).

D’Pergo alleges

that Sweetwater used a copyrighted photograph of D’Pergo’s
trademarked custom guitar necks to promote and sell Sweetwater
products on Sweetwater’s website.
On January 14, 2019, the court granted in part and denied
in part both parties’ motions to compel.

See doc. no. 76.

Sweetwater moves for reconsideration of “two distinct issues”
within that order, which it argues the court determined
incorrectly.

D’Pergo objects.

Separately, D’Pergo moves to withdraw and amend its
responses to Sweetwater’s Request for Admission, asserting that
it has recently learned that its responses to three specific
requests were incorrect.
motion.

Sweetwater objects to D’Pergo’s

BACKGROUND
D’Pergo manufactures and sells custom guitars.

In 2003,

D’Pergo created a photograph showcasing a number of its unique
guitar necks, which it published to its website.

D’Pergo later

registered the copyright for the photograph and registered its
signature guitar neck headstock as a trademark.
Sweetwater is a retailer that sells musical instruments,
including guitars, through its website.

D’Pergo alleges that

Sweetwater copied D’Pergo’s photograph and published it on
Sweetwater’s website.

More specifically, Sweetwater used the

photograph in an “Electric Guitar Buying Guide,” in the section
titled “Guitar necks explained.”

The end of the Buying Guide

features a number of guitars from various manufacturers for
purchase, as well as a hyperlink to “Shop for Electric Guitars.”
Sweetwater admits that it used the photograph as early as August
5, 2004 and claims that it discontinued using the photograph
within two days of receiving notice from D’Pergo on January 4,
2016.1

See doc. no. 63 at 5.

D’Pergo asserts five claims in its amended complaint: (1)
copyright infringement in violation of the Copyright Act (Count

To be consistent with the parties’ filings, the court will
refer to the photograph at the center of the parties’ dispute as
“the image.”
1

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I); (2) unfair competition in violation of the CPA (Count II);
(3) deceptive business practices in violation of the CPA (Count
III); (4) false designation of origin and unfair competition in
violation of the Lanham Act (Count IV); and (5) trademark
infringement in violation of the Lanham Act (Count V).

DISCUSSION
I.

Sweetwater’s Motion for Reconsideration
Reconsideration of an order “is an extraordinary remedy

which should be used sparingly.”

Palmer v. Champion Mortg., 465

F.3d 24, 30 (1st Cir. 2006) (internal quotation marks omitted).
To succeed, a movant must “demonstrate that the order was based
on a manifest error of fact or law . . . .”

LR 7.2(d).

Reconsideration is not “a vehicle for a party to undo its own
procedural failures” or a means to “advance arguments that could
and should have been presented to the district court prior to”
its decision.
Cir. 2006).

Iverson v. City of Boston, 452 F.3d 94, 104 (1st

As such, the court will not grant reconsideration

based on arguments that were not previously made or based on
arguments that were rejected in the prior order.

Biltcliffe v.

CitiMortgage, Inc., 772 F.3d 925, 930 (1st Cir. 2014).
Sweetwater takes issue with two aspects of the court’s
order on the parties’ motions to compel.

Sweetwater contends

that the court erred when it stated in that order: (1) D’Pergo
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is not asserting trade dress infringement claims in this case;2
and (2) Sweetwater included the image in its Electric Guitar
Buying Guide to aid purchasers in choosing the appropriate
electric guitar.

According to Sweetwater, the court should

reconsider these statements because the court “cites no
authority or record evidence to support its statements” and both
statements were “clear legal error” that would result in
manifest injustice if allowed to stand.

A.

Doc. no. 78 at 1.

Trade Dress

The amount of time and energy the parties have devoted to
litigating the issue of whether D’Pergo is asserting a trade
dress infringement claim in this case borders on the absurd.
First, in response to D’Pergo’s motion to amend its complaint,
Sweetwater objected, arguing that permitting D’Pergo to amend
its complaint to assert the “trademark or trade dress” claims
contained in Counts IV and V would be futile.
7.

Doc. no. 30-1 at

D’Pergo made it clear in its reply to the objection that it

was asserting trademark, and not trade dress, infringement
claims in those counts.

See doc. no. 38 at 8 (classifying its

claims as based on “trademark infringement”).

The court granted

D’Pergo’s motion.

Sweetwater contends that Counts IV and V, brought under
the Lanham Act, are trade dress infringement claims.
2

4

Next, Sweetwater moved to dismiss Counts IV and V of the
amended complaint, arguing that those claims were based on trade
dress infringement and failed to state a viable claim for
relief.

D’Pergo objected, stating that it “has not however

alleged in these counts (or any counts) that Defendant has
infringed Plaintiff’s trade dress.”
(emphasis in original).

Doc. no. 49-1 at 10

D’Pergo reiterated that Counts IV and V

assert claims based on trademark, and not trade dress,
infringement.3
Finally, Sweetwater moved to compel D’Pergo to produce
documents that were “critically relevant” to D’Pergo’s trade
dress claims.

Doc. no. 62 at 4.

In response, D’Pergo stated

that it “again asserts that it has not asserted a trade dress
claim.

Plaintiff has informed Defendant of this several times.”

Doc. no. 65 at 7 (emphasis in original).
file a reply to D’Pergo’s objection.

Sweetwater did not

The court denied

Sweetwater’s motion to the extent it sought information related
to a trade dress infringement claim because, as D’Pergo
represented, D’Pergo had not asserted any trade dress
infringement claim in this case.

The court held that,

therefore, Sweetwater had failed to carry its burden to show

The court denied Sweetwater’s motion to dismiss Counts IV
and V, noting that even if the court assumed those claims were
based on trade dress infringement, Sweetwater had not shown that
those claims should be dismissed.
3

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that the discovery it sought was relevant.

See Rutledge v.

Elliot Health Sys., No. 17-cv-110-JD, 2018 WL 1187406, at *1
(D.N.H. Mar. 7, 2018) (“Initially, the party moving to compel
bears the burden of showing that the discovery it seeks is
relevant.”).
Sweetwater did not file a response to D’Pergo’s objection
to its motion to compel, in which D’Pergo again represented to
the court that it was not asserting a trade dress infringement
claim.

Nevertheless, Sweetwater now argues that the court

committed “clear legal error” by “rel[ying] on no authority” in
support of its statement that D’Pergo has not asserted a trade
dress infringement claim in this case.

Doc. no. 78 at 4.

Sweetwater contends that absent reconsideration, it will be
significantly prejudiced and unable to mount a defense.
Sweetwater is mistaken in all respects.

In reaching its

conclusion as to the absence of a trade dress infringement claim
in this case, the court relied on D’Pergo’s repeated
representations to Sweetwater and the court that Counts IV and V
are not trade dress claims.

Sweetwater appears to be under the

misimpression that it is a defendant’s prerogative to define a
plaintiff’s claim in whatever manner best lends itself to an
adequate defense.

That is not the way the law works.

See Oldja

v. Warm Beach Christian Camps & Conference Ctr., No. C09-0122,
2011 WL 13100726, at *1 (W.D. Wash. Oct. 25, 2011) (rejecting
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defendant’s motion for reconsideration which argued that the
plaintiff’s general negligence claim “was merely a duty to
disclose claim in disguise,” stating that the “Court is
unwilling to permit Defendant to recharacterize Plaintiff's
claim out of existence”).
To the extent Sweetwater argues that it will be prejudiced
absent reconsideration because it cannot mount a defense to
D’Pergo’s claims, that is simply not the case.

Sweetwater will

not be prejudiced because no trade dress infringement claims
exist in this case.
To the extent after discovery Sweetwater believes that it
is entitled to judgment on D’Pergo’s trademark infringement
claims asserted in Counts IV and V, Sweetwater may move for
summary judgment on those claims.

But to claim legal error

entitling Sweetwater to relief on reconsideration is pure folly.
Sweetwater’s motion is denied to the extent it requests
reconsideration of the court’s order as to whether D’Pergo has
asserted a trade dress infringement claim in this case.

B.

Purpose of Image in Electric Guitar Buying Guide

D’Pergo moved to compel Sweetwater to produce information
related to Sweetwater’s sales of electric guitars.

Sweetwater

objected to requests to produce that information, arguing that
the requests were overbroad “because the image depicts only
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guitar necks” and, therefore, “D’Pergo is limited to seeking
information about Sweetwater’s sale of that product.”

Doc. no.

76 at 9.
In its order granting in part D’Pergo’s motion to compel,
the court noted that there were two problems with Sweetwater’s
argument.

The first was that D’Pergo’s federal trademark

registration for its Headstock design is registered for use of
the class of both electric guitars and necks for electric
guitars.

Id.

As for the second problem with Sweetwater’s

argument, the court stated:
[T]he image appears in Sweetwater’s Electric Guitar
Buying Guide. See doc. no. 44-3. In that
publication, Sweetwater provides an “anatomy of an
electric guitar,” which includes “tonewoods,” bodies,
and guitar necks. The publication ends with a link to
“shop for electric guitars,” as well as several
listings and reviews for electric guitars. In other
words, the publication in which the image appears is
one advertising the sale of electric guitars, not
guitar necks. There is no option to purchase, nor a
suggestion that an individual reading the guide could
purchase, a guitar neck without the remainder of the
guitar. The image is included in the publication to
aid purchasers in choosing the appropriate electric
guitar.
Id. at 9-10 (emphasis added).
Sweetwater challenges the last sentence, arguing that the
court erred in making that “conclusory” determination without an
evidentiary hearing and without citing any evidence.

It

requests that the court correct its “unsupported determination
as to the purpose of including the image in the Electric Guitar
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Buying Guide,” absent which it contends it will suffer manifest
injustice.

Doc. no. 78 at 5.

The court notes for the sake of clarity that any conclusion
set forth in the court’s order on D’Pergo’s motion to compel as
to the purpose of the image is relevant only as to that order.
It is not a factual finding that has preclusive effect for
purposes of a motion for summary judgment or at trial.

Thus, at

worst, the impact of any error in that statement is that
Sweetwater must produce sales information in discovery that may
be overbroad.

Overbroad discovery hardly rises to the level of

“manifest injustice.”
Regardless, Sweetwater has not shown any error.

To the

extent Sweetwater criticizes the court for resolving the
parties’ dispute without an evidentiary hearing, that argument
is misplaced, as Sweetwater did not request either an
evidentiary hearing or oral argument on D’Pergo’s motion to
compel.

See doc. no. 63.

Sweetwater’s reference to evidence in the record that
purportedly refutes the court’s conclusion is equally
unavailing.

Sweetwater points to the declaration of David

Stewart, its Executive Vice President and Chief Marketing
Officer.

See doc. no. 32.

Specifically, Sweetwater quotes

paragraph six of the declaration, which provides:

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The Guide described the various parts and attributes
of a typical electric guitar, allowing someone with
limited experience with guitars to be more comfortable
with the terminology of their parts and attributes.
The Guide also highlighted photographs of the distinct
“Gibson Les Paul Sunburst” and a diagram of the
classic “Fender Stratocaster.”
Id. at ¶ 6.

According to Sweetwater, this portion of Stewart’s

affidavit “would negate [the court’s] conclusory finding
altogether.”

Doc. no. 78 at 5.

The problem for Sweetwater is twofold.

First, it did not

submit Stewart’s declaration in its response to D’Pergo’s motion
to compel—indeed, Sweetwater did not mention the declaration or
Stewart at all.

Nor did Sweetwater respond in its objection or

surreply to D’Pergo’s argument as to the purpose of the image’s
placement in the Electric Guitar Buying Guide.

Therefore, it

cannot use a motion for reconsideration to advance those
arguments.

Biltcliffe, 772 F.3d at 930.

To the extent

Sweetwater faults the court for not taking it upon itself to
search the record for any shred of evidence that could possibly
support Sweetwater’s position, that contention is unpersuasive.4
The second problem is that, in any event, Stewart’s
declaration is hardly inconsistent with the court’s
determination.

Stewart states that the Electric Guitar Buying

The court notes that Stewart’s declaration is attached as
an exhibit to Sweetwater’s objection to D’Pergo’s motion to
amend its complaint. See doc. no. 30-2.
4

10

Guide lists the various parts of an electric guitar so that
potential purchasers can become more comfortable with those
parts.

Nothing in Stewart’s statement contradicts that: (1) the

image appears in an “Electric Guitar Buying Guide”; (2) the
publication ends with a link to purchase electric guitars; (3)
the publication advertises electric guitars, not guitar necks;
and (4) there is no option to purchase, or suggestion that a
customer could purchase, guitar necks separately from electric
guitars.

To the extent Sweetwater argues that despite these

facts, Stewart’s statement conclusively shows that the purpose
of the image in the Electric Guitar Buying Guide was not to aid
in the purchase of electric guitars, that contention is without
merit.
For all the aforementioned reasons, the court denies
Sweetwater’s motion for reconsideration.

II.

D’Pergo’s Motion to Withdraw and Amend its Responses
D’Pergo moves to withdraw and amend its responses to three

requests in Sweetwater’s Request for Admission.

Sweetwater

objects.
Under Federal Rule of Civil Procedure 36, a party may serve
written requests for admissions on another party.

“A matter

admitted under this rule is conclusively established unless the

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court, on motion, permits the admission to be withdrawn or
amended.”

Fed. R. Civ. P. 36(b).

The court may allow the moving party to withdraw or amend
its admissions “if it would promote the presentation of the
merits of the action and if the court is not persuaded that it
would prejudice the requesting party in maintaining or defending
the action on the merits.”

Id.

Prejudice for purposes of Rule

36(b) is not simply that the proponent of the admission would
have to prove the fact but instead requires a showing of a
particular difficulty in proving the case such as the absence of
a witness or evidence.

Farr Man & Co., Inc. v. M/V Rozita, 903

F.2d 871, 876 (1st Cir. 1990); see Brook Village N. Assocs. v.
Gen. Elec. Co., 686 F.2d 66, 70 (1st Cir. 1982).

The party who

requested the admission bears the burden of showing prejudice.
See Dillon v. United States, 357 F. Supp. 3d 49, 56 (D. Mass.
2019).

A court has “considerable discretion over whether to

permit withdrawal or amendment of admissions made pursuant to
Rule 36.”

Farr Man, 903 F.2d at 876.

D’Pergo moves to withdraw and amend its responses to
requests number 9, 10, and 12 of Sweetwater’s Request for
Admission.

All three responses state, in one form or another,

that D’Pergo has not sold guitar necks separately from a
completed guitar since January 1, 2013.

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D’Pergo asserts that it learned that its responses to those
three requests were not entirely accurate on November 15, 2018,
when Sweetwater took the Rule 30(b)(6) deposition of D’Pergo’s
corporate representative, Stefan Dapergolas.

The record shows

that Sweetwater deposed Dapergolas twice: once on November 14,
2018 in Dapergolas’s individual capacity, see doc. no. 83-5, and
again the following day in his capacity as D’Pergo’s corporate
representative under Rule 30(b)(6), see doc. no. 83-4.
On November 14, Dapergolas testified as follows in his
individual capacity:
Q: Okay. How many necks do you sell without
guitars?
A: So I’ll be very clear about this. I do not
sell necks separate, apart from an instrument. I sell
necks to someone who owns an authentic, genuine
D’Pergo that is in need of a replacement neck, and the
company has to install that neck.
Doc. no. 83-5 at 5.

The following day, Dapergolas offered the

following testimony as D’Pergo’s Rule 30(b)(6) designee:
Q: Yesterday you mentioned that you’ve sold a small
number of necks as replacement for other D’Pergo
necks; is that correct?
A: Correct.
Q: When did you sell your first?
A: I don’t recall the date.
* * * * *
Q: There haven’t been too many of them, right?
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A: It’s not been a lot.
dozen.

Maybe between a dozen and two

Q: Really?
A: Uh-hum.
Q: I wouldn’t have thought your number was that high,
wow, okay. And you have no records on that, correct?
A: I would have a recent record. Someone just
purchased one this past – in the last few months, last
year.
Q: Your records would only be 2015 and later; is that
correct?
A: Sure, yes.
Doc. no. 83-4 at 4-5.
D’Pergo moves to withdraw and amend its responses to
requests no. 9, 10, and 12 to reflect Dapergolas’s deposition
testimony.

Sweetwater objects, largely on the ground that it

would suffer prejudice if the court permits D’Pergo to amend its
responses.

To the extent Sweetwater addresses the first factor—

whether allowing the amendment would promote the presentation of
the merits of the action—it contends that the factor weighs
against allowing withdrawal and amendment because D’Pergo fails
to provide any “documentary evidence” to support its requested
amendment.

Doc. no. 88 at 2.

The court disagrees.

D’Pergo has submitted the sworn

deposition testimony of its Rule 30(b)(6) witness to support its
request.

Therefore, in light of this evidence, allowing D’Pergo
14

to amend its responses to reflect this testimony “would
facilitate the development of the case in reaching the truth.”
Farr Man, 903 F.2d at 876.
As to the second factor, Sweetwater argues that allowing
the amendment would severely prejudice it in defending this
action.

Specifically, Sweetwater states that it: (1) has

already conducted depositions in New Hampshire, Massachusetts,
and Florida in part based on D’Pergo’s responses to its Request
for Admission; (2) filed an action in the Trademark Trial and
Appeal Board based in part on D’Pergo’s responses; (3) would be
forced to retake both Dapergolas’s and potentially other
depositions; and (4) would possibly be forced to amend its
counterclaims.
In response, D’Pergo states that the only deposition
Sweetwater took prior to November 15, 2018—the date of the Rule
30(b)(6) deposition—was that of Dapergolas in his individual
capacity on the previous day.

D’Pergo further represents that

Sweetwater took only two depositions after November 15, 2018.
Both deponents were D’Pergo customers and neither deposition
included questioning related to the purchase of stand-alone
guitar necks.

D’Pergo also notes that Sweetwater filed its

counterclaims, see doc. no. 77, and its amended petition with
the Trademark Trial and Appeal Board in January 2019,

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approximately two months after Dapergolas’s depositions.
Sweetwater does not dispute these assertions.
Sweetwater has not carried its burden to demonstrate
prejudice.

Although Sweetwater contends that it “has filed

numerous pleadings and has conducted countless hours of
discovery and research on the belief that Plaintiff does not
sell stand-alone guitar necks,” as D’Pergo has shown, that is an
overstatement.5

Because, as the court has noted in prior orders,

both parties in this action have taken a scorched-earth approach
to what amounts to a relatively simple dispute, this case is
nowhere close to conclusion.

The deadline for completion of

discovery is not until July 1, 2019, and trial is not scheduled
until November 13, 2019.

Thus, Sweetwater has not shown that it

will be prejudiced under the Rule 36(b) standard.6

Indeed, D’Pergo notes that Sweetwater served its first
requests for production, which included 169 requests, over one
month prior to receiving D’Pergo’s responses to its Request for
Admission.
5

Sweetwater also complains about D’Pergo’s “undue delay” in
bringing this motion. Although not included in the Rule 36(b)
standard, certain “courts have been willing to consider a
party’s lack of diligence as a reason to deny withdrawal of
admissions.” Zimmerman v. Cambridge Credit Counseling Corp.,
529 F. Supp. 2d 254, 265 (D. Mass. 2008). Because time remains
in the discovery schedule, the delay has not prejudiced
Sweetwater.
6

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For these reasons, the court grants D’Pergo’s motion to
withdraw and amend its response to Sweetwater’s Request for
Admission.7

CONCLUSION
For the foregoing reasons, Sweetwater’s motion for
reconsideration (doc. no. 78) is denied and D’Pergo’s motion to
withdraw and amend its responses to Sweetwater’s Request for
Admission (doc. no. 83) is granted.
SO ORDERED.
__________________________
Landya McCafferty
United States District Judge
April 18, 2019
cc:

Counsel of Record

Sweetwater requests that if the court grants D’Pergo’s
motion, the court award “attorney fees and costs Defendant will
incur for new depositions, amending pleadings, etc.” Doc. no.
88. The court has considered the request and denies it.
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