MICROSOFT CORPORATION v. SOFTICLE.COM et al

Filing 69

OPINION/ORDER TO SHOW CAUSE that Defendants, Aymen Abunamous and Softicle shall file a written submission (affidavit or declaration) with the Court within 14 days showing cause why they should not be sanctioned for failing to provide their initial d isclosures and for failing to comply with the Courts orders and rules; that Plaintiff, Microsoft Corporations informal motion to compel Defendants, Aymen Abunamous and Softicle to provide further responses to interrogatories 7, 8, 9, and 12 and re quests for production 1 and 2 are granted. Defendants, Aymen Abunamous and Softicle shall serve their amended discovery responses consistent with this Order and the Courts opinion within 14 days. The amended response shall include a signature from Mr. Bahgat for the objections posed to all interrogatories as required by the Federal Rules. Signed by Magistrate Judge Steven C. Mannion on 10/2/17. (DD, )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
NOT FOR PUBLICATION
Civil Action No.
MICROSOFT CORPORATION.,
2:16-CV-02762-MCA-SCM
Plaintiff,
v.

OPINION AND ORDER ON
DISCOVERY DISPUTE AND ORDER
TO SHOW CAUSE

SOFTICLE.COM, et al.,
Defendants.
Steven C. Mannion, United States Magistrate Judge.
Before this Court are informal discovery motions by Plaintiff Microsoft Corporation
(“Microsoft”) to compel further responses by Defendant Mr. Aymen Abunamous, doing business
as Softicle.com (hereafter “Mr. Abunamous” or “Softicle”).1 Mr. Abunamous has also requested
relief which is now moot, but the Court will nonetheless address his procedural complaints so the
parties know how to proceed going forward. The Court has reviewed the parties’ respective
submissions and decides the issues without oral argument. For the reasons set forth herein,
Microsoft’s informal motion to compel further discovery responses is granted. Also, Mr.
Abunamous shall show cause why he should not be sanctioned for failing to comply with this
Court’s discovery orders.

(ECF Docket Entry No. (“D.E.”) 58, Pl.’s Ltr, Sept. 13, 2017). Unless indicated otherwise, the
Court will refer to documents by their docket entry number and the page numbers assigned by the
Electronic Case Filing System.
1

BACKGROUND AND PROCEDURAL HISTORY2

I.

Microsoft “develops, advertises, markets, distributes, and licenses a number of computer
software programs.”3 Its “software programs are distributed together with associated proprietary
materials such as user’s guides, user’s manuals, end user license agreements, Certificates of
Authenticity, product keys and other components.”4 Microsoft holds valid copyrights in those
software programs.5 Microsoft also has duly registered trademarks associated with those
programs.6
On May 16, 2016, Microsoft filed its Complaint alleging that in August and November
2014, Mr. Abunamous committed copyright and trademark infringement by distributing
unauthorized and infringing copies of Microsoft Office 2013 software.7 Microsoft filed its
Amended Complaint on February 16, 2017, which “asserts claims of copyright infringement,
trademark infringement, false designation of origin, and statutory and common law unfair
competition. Plaintiff also seeks a constructive trust and accounting.”8

2

The allegations set forth within the pleadings and motion record are relied upon for purposes of
this motion only. The Court has made no findings as to the veracity of the parties’ allegations.
3

(D.E. 16, Am. Compl. ¶ 9).

4

Id.

5

(D.E. 16, Am. Compl. ¶¶ 12–13).

6

(D.E. 16, Am. Compl. ¶ 14).

7

(D.E. 1, Compl. ¶ 13).

8

(D.E. 66, Dismissal Order at 2; D.E. 16, Am. Compl. ¶ 15).
2

Microsoft alleges that Mr. Abunamous marketed his website as a “Microsoft Software
Repository.”9 The website advertised: “Download the software of your choice, directly, safely
and instantly” and activate it “with the most affordable licensing on the market. Up to 80% off
retail.”10 However, Mr. Abunamous allegedly “did not sell Microsoft software licenses to [his]
customers.”11 Microsoft claims he “sold unauthorized Microsoft product activation keys and
misrepresented to [his] customers that those product activation keys were licenses.” Microsoft
defines such “abused product activation keys”12 as those that “had been separated from the
Microsoft software they were intended and authorized to activate and were determined by
Microsoft to be abused because the keys had already been used to activate other copies of
software.”13 Microsoft further alleges that Mr. Abunamous distributed unauthorized copies of its
software by “provid[ing] [his] customers with access to sites from which unauthorized download
copies of Microsoft software were made.”14 Moreover, Mr. Abunamous allegedly included
unauthorized copies of Microsoft’s trademarks and copyrighted works in his advertisements.15
Mr. Abunamous moved to dismiss, arguing that copyright infringement, must be
dismissed because Microsoft fails to provide sufficient allegations supporting direct,

9

(D.E. 16, Am. Compl. ¶ 17).

10

Id.

11

Id.

12

(D.E. 16, Am. Compl. ¶ 18).

13

(D.E. 16, Am. Compl. ¶ 17).

14

Id.

15

(D.E. 16, Am. Compl. ¶ 16).
3

contributory, or vicarious copyright liability.16 The Honorable Madeline Cox Arleo, U.S.D.J.
agreed with Mr. Abunamous and dismissed the claims for direct copyright infringement and
vicarious copyright infringement, but disagreed regarding the claim for contributory copyright
infringement.17 Judge Arleo found that Microsoft sufficiently plead:
(1) third-party infringement by the investigators in connection with the
December 2015 sale; (2) Defendants’ knowledge of the third-party
infringement based on the May 2015 letter; and (3) Defendants’ material
contribution to the infringement by providing links to the website from
which unauthorized copies were made. Therefore, the copyright
infringement claim cannot be dismissed.18
The Court also found that Microsoft’s allegations “are sufficient to state a plausible claim for
trademark infringement and false designation of origin”, and disagreed that the allegations of
statutory and common law unfair completion claims were preempted by the Copyright Act.19
Finally, the Court denied dismissal of the counts requesting a constructive trust and accounting.
On May 18, 2017, the Court entered an initial scheduling order (“Scheduling Order”).20
The Scheduling Order prescribed the timing for the parties to serve initial disclosures, discovery
requests and responses in accordance with the Federal Rules of Civil Procedure.21

16

(D.E. 66, Dismissal Order at 2).

17

(D.E. 66, Dismissal Order at 2, 4).

18

(D.E. 66, Dismissal Order at 2).

19

(D.E. 66, Dismissal Order at 5).

20

(D.E. 41, Sched. Order, May 18, 2017).

21

(D.E. 41, Sched. Order, May 18, 2017, ¶¶ 1, 3).
4

By letter dated August 9, 2017, Microsoft filed the parties’ proposed agenda for the
telephone status conference held on August 14, 2017.22 Therein, Microsoft complained that Mr.
Abunamous had not served his initial disclosures and responses to interrogatories. Mr.
Abunamous did not dispute those contentions, so the Court ordered him to serve initial
disclosures and responses to interrogatories by August 28, 2017.23
The agenda letter further indicated that Mr. Abunamous wanted a protective order, but
did not state why.24 During the conference, Mr. Abunamous complained that Microsoft was
seeking his confidential financial records, and both sides agreed to the entry of a discovery
confidentiality order.25
On September 10, 2017, Mr. Abunamous filed a unilateral dispute letter complaining that
Microsoft served a subpoena for documents upon the custodian of records for Bank of
America.26 The Court responded with a Text Order: “The Court has received Defendants letter
(D.E. 56), which fails to comply with Paragraph 5 of the Scheduling Order (D.E. 41) and L. Civ.
R. 37.1(a)(1). Counsel are directed to meet and confer to file a joint dispute letter in compliance
with Paragraph 5[.]”27

22

(D.E. 51, Joint Ltr.).

23

(D.E. 55, Order, Aug. 14, 2017, ¶¶ 1, 2).

24

(D.E. 51, Joint Ltr.).

25

(D.E. 53, Disc. Confidentiality Order, Aug. 14, 2017).

26

(D.E. 56, Def.’s Ltr.).

27

(D.E. 57, Order, Sept. 12, 2017).
5

Counsel for Microsoft attempted to confer with Mr. Abunamous’s counsel, who sent an
email stating “the court has tied my hands with regard to challenging the unlawful subpoena. I
am advising you that if you do not voluntarily withdraw the subpoena by 2 p.m. ET, I am going
to file motions to vacate the scheduling order, quash the subpoena, and if necessary TRO, and
interlocutory appeal to the Third Circuit.”28 Mr. Abunamous’s counsel then stated in a following
email “I filed my letter already. You can use that as ‘my portion.’”29
Microsoft then notified the Court that Mr. Abunamous refused to participate in the joint
dispute protocol.30 It countered Mr. Abunamous’s legal arguments and subsequently advised that
Bank of America had since produced the at-issue documents.31 Microsoft further complained that
Mr. Abunamous has “failed to produce any documents or information in response to Microsoft’s
discovery requests and…” still has not served his initial disclosures.32 Mr. Abunamous has not
responded to that complaint.
II.

MAGISTRATE JUDGE AUTHORITY
Magistrate judges are authorized to decide any non-dispositive motion designated by the
Court.33 This District specifies that magistrate judges may determine all non-dispositive pre-trial

28

(D.E. 58-1, Pl.’s Ltr., Sept. 13, 2017, Ex. 1, 2).

29

(D.E. 58-1, Pl.’s Ltr., Sept. 13, 2017, Ex. 1, 1).

30

(D.E. 58, Pl.’s Ltr., Sept. 13, 2017, 1 - 2).

31

(D.E. 58, Pl.’s Ltr., Sept. 13, 2017; D.E. 59, Pl.’s Ltr., Sept. 15, 2017).

32

(D.E. 58, Pl.’s Ltr., Sept. 13, 2017, 1 - 2).

33

28 U.S.C. § 636(b)(1)(A).
6

motions which includes discovery motions.34 Decisions by magistrate judges must be upheld
unless “clearly erroneous or contrary to law.”35
III.

DISCOVERY STANDARD
“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any
party's claim or defense and proportional to the needs of the case, considering the importance of
the issues at stake in the action, the amount in controversy, the parties' relative access to relevant
information, the parties' resources, the importance of the discovery in resolving the issues, and
whether the burden or expense of the proposed discovery outweighs its likely benefit.”36
“Although the scope of discovery under the Federal Rules is unquestionably broad, this right is
not unlimited and may be circumscribed.”37
Federal courts employ a burden-shifting analysis to resolve discovery disputes. A party
seeking to compel discovery bears the initial “burden of showing that the information sought is
relevant to the subject matter of the action.”38 That is because the sole purpose of discovery is to
add flesh for trial on the parties’ respective claims and defenses in the given action.
Evidence is relevant if “it has any tendency to make a fact more or less probable than it
would be without the evidence” and “the fact is of consequence in determining the action.”39

34

L. Civ. R. 72.1(a)(1); 37.1.

35

§ 636(b)(1)(A).

36

Fed. R. Civ. P. 26(b)(1).

37

Bayer AG v. Betachem, Inc., 173 F.3d 188, 191 (3d Cir. 1999).

38

Caver v. City of Trenton, 192 F.R.D. 154, 159 (D.N.J. 2000).

39

Fed. R. Evid. 401.
7

District courts must remain mindful that relevance is a broader inquiry at the discovery stage than
at the trial stage.40
If that burden is met, an objecting party “must state with specificity the objection and how
it relates to the particular request being opposed, and not merely that it is ‘overly broad and
burdensome’ or ‘oppressive’ or ‘vexatious’ or ‘not reasonably calculated to lead to the discovery
of admissible evidence.’”41 The objecting party “shall use common sense and reason, and hypertechnical, quibbling, or evasive objections will be viewed unfavorably.”42 “The burden [is upon]
the party resisting discovery to clarify and explain its objections and to provide support therefor.”43
Failure to meet this standard may result in waiver of an objection.44 Furthermore, in
addition to trying to eliminate “kneejerk discovery requests,” Rule 26(g) was enacted “to bring an
end to the equally abusive practice of objecting to discovery requests reflexively [.]”45 The rule “is
intended to curb discovery abuse by requiring the court to impose sanctions if it is violated, absent
‘substantial justification’ [.]”46

40

Nestle Foods Corp. v. Aetna Cas. & Sur. Co., 135 F.R.D. 101, 104 (D.N.J. 1990).

41

Harding v. Dana Transp., Inc., 914 F. Supp. 1084, 1102 (D.N.J. 1996).

42

Williams v. Acxiom Corp., No.15-8464, 2017 WL 945017, at *2 (D.N.J. Mar. 10,
2017)(quoting Lamon v. Adams, 2014 WL 309424 at *3 (E.D. Cal. 2014)).
43

Harding, 914 F. Supp. at 1102 (citations omitted).

44

Id. (citations omitted).

45

Mancia v. Mayflower Textile Servs. Co., 253 F.R.D. 354, 358 (D.Md. 2008).

46

Id. (quoting Fed. R. Civ. P. 26(g)).
8

IV.

DISCUSSION AND ANALYSIS
A. Initial Disclosures
The purpose of initial disclosures is to “accelerate the exchange of basic information about
the case and to eliminate paper work involved in requesting such information.”47 This Court
ordered that the parties exchange initial disclosures by May 31, 2017.48 Mr. Abunamous did not
comply with the Scheduling Order, so Microsoft sought and obtained an order compelling Mr.
Abunamous to provide the initial disclosures.49 Microsoft states that Mr. Abunamous has still
failed to provide his initial disclosures.50 Mr. Abunamous shall show cause why he should not be
sanctioned for failing to comply with the Orders of this Court.
B. Discovery Responses
Microsoft complains about the sufficiency of responses to its discovery requests and seeks
to compel further responses to interrogatories 7, 8, 9, and 12 and requests for production 1 and 2.51
Mr. Abunamous has not contested these requests for relief.
1. Interrogatory Responses
Interrogatories are a discovery device designed “to obtain simple facts…” and “can be a
simple mode of obtaining the names and addresses of persons having knowledge of pertinent facts,

47

U.S. ex rel. Hunt v. Merk-Medco Managed Care, LLC, 223 F.R.D. 330, 333 (E.D.Pa.
2004)(quoting Advisory Committee Notes to 1993 amendments).
48

(D.E. 41, Sched. Order, May 18, 2017, ¶ 1).

49

(D.E. 51, Joint Ltr.; D.E. 55, Order, Aug. 14, 2017).

50

(D.E. 58, Pl.’s Ltr., Sept. 13, 2017, 2).

51

(D.E. 58, Pl.’s Ltr., Sept. 13, 2017, 3).
9

or of securing information about the existence of documentary evidence[.]”52 “[A] responding
party generally is not required to conduct extensive research to answer an interrogatory, [but] …
must make a reasonable effort to respond.”53 The responding party must respond “to the fullest
extent possible, stating any objections with specificity.”54 If the responding party does not have
the information, he must describe the efforts undertaken to obtain it.55 Responses must be “in
writing under oath.”56 Interrogatory “answers” must be signed by the responder and objections
must be signed by their attorney.57
Preliminarily, the Court notes that Mr. Abunamous certified his interrogatory responses.58
His counsel (Joseph A. Bahgat, Esq.), however, did not sign for the objections posed.59 Therefore,
Mr. Bahgat is ordered to sign for the objections to all interrogatories as required.60

52

Erie Ins. Property & Cas. Co. v. Johnson, 272 F.R.D. 177, 183 (S.D.W.Va. 2010)(quoting
Wright, Miller, & Marcus, Federal Practice & Procedure: Civil 3d § 2163).
53

Williams v. Acxiom Corp., No. 2:15-CV-8464, 2017 WL 945017, at *2 (D.N.J. Mar. 10,
2017)(citing Lamon v. Adams, 2014 WL 309424 at *4 (E.D. Cal. 2014).
54

Reyes v. City of Paterson, No. 2:16-CV-2627, 2017 WL 1536425, at *2 (D.N.J. Apr. 28, 2017)
(citing Fed. R. Civ. P. 33(b)(3) and (4)); see also Lamon v. Adams, 2014 WL 309424 at *3 (E.D.
Cal. 2014).
55

See Hansel v. Shell Oil Corp., 169 F.R.D. 303, 305 (E.D.Pa.1996)).

56

Fed. R. Civ. P. 33(b)(3).

57

Fed. R. Civ. P. 33(b)(5).

58

(See D.E. 58-1, Pl.’s Ltr., Sept. 13, 2017, Ex. 4, 6).

59

(See D.E. 58-1, Pl.’s Ltr., Sept. 13, 2017, Ex. 4, 1).

See Fed. R. Civ. P. 11(a) (“Every pleading, written motion, and other paper must be signed by
at least one attorney of record in the attorney's name….”).
60

10

With regard to the substance, Microsoft received the following responses to its
interrogatories:
Interrogatory No. 7: Identify all sources from which Defendants have
acquired Microsoft items, including but not limited to product keys.
Response: Respondent objects to this interrogatory to the extent the
supplied definition of the term "Microsoft items" is vague and ambiguous.
Respondent further objects to this interrogatory because it seeks
information that is not relevant to plaintiff's cause of action, and is not
reasonably calculated to lead to the discovery of admissible evidence.
Respondent further objects to this interrogatory on the grounds that it overly
broad and burdensome because it is unlimited in scope, and would require
respondents to create volumes of data that do not now exist, and did not ever
exist. Respondent further objects to this interrogatory because it seeks the
identities of third parties not interested in this litigation, who would not want
to be associated with this litigation, and could bring an action against
respondents if their identities were revealed.
Subject to and without waiving the foregoing objections, respondent states
that to the extent he has ever acquired any "Microsoft items," such items
would have been purchased lawfully through ordinary means of commerce.
Respondent further states that he has never had a practice of keeping records
related to the acquisition of any items, Microsoft notwithstanding, and that
they would have no way of providing the requested information. Further,
respondent states that to the extent he ever acquired any "Microsoft items,"
such items would have been genuine products, and that as such, the "source"
of the items would have most certainly been Microsoft.61
The Court finds that Microsoft’s request seeks relevant information and overrules the
objections to interrogatory 7. Mr. Abunamous’s has not met his burden to explain his objections
and provide support for them. With respect to his first objection (which is included in all the
interrogatory responses at issue in this Order), the Court notes that Microsoft’s prayer for relief
in its Amended Complaint contains a list of eighteen specific copyrights and thirty-four specific
trademarks at issue in this case, along with the trade names of said copyrights and trademarks.62

61

(D.E. 58-1, Pl.’s Ltr., Sept. 13, 2017, Ex. 4, 3).

62

(D.E. 16, Am. Compl., 19-21).
11

Therefore, “Microsoft items” is neither vague nor ambiguous. Additionally, Mr. Abunamous has
failed to provide reasons for his objection that the material sought is not relevant. One of the core
disagreements in this case is whether the Microsoft products that Mr. Abunamous sold were
genuine or unauthorized. The sources from which Mr. Abunamous acquired the Microsoft
products are relevant to that determination. Thirdly, since those sources are undoubtedly not
infinite in number, the request is not “unlimited in scope.” Finally, the fact that third parties
would be identified does not constitute sufficient reason to overcome the broad scope of
discovery and the relevance of the request to the Microsoft’s cause of action.
Mr. Abunamous claims to have no responsive documents. However, his certification in
support of his motion to dismiss refers to and attaches two e-mails purportedly between Softicle
and Microsoft.63 Though these e-mails are not records of an acquisition, they are records related
to an acquisition, and they demonstrate that Mr. Abunamous has had some, even if not a
comprehensive or organized, “practice of keeping records related to the acquisition of any
items,” contradicting his statement in his response to interrogatory 7. Furthermore, that same
certification states that Mr. Abunamous “purchased bundles of licenses from third-party resellers
at wholesale prices.”64 The next sentence in that paragraph reads: “With regard to Microsoft
software, such as that which is at issue in this lawsuit, we confirmed that the licenses were valid
and genuine.”65 Taken together, these two sentences from Mr. Abunamous’s certification admit
that he acquired Microsoft items from third parties, which contradicts the claim in his response to

(D.E. 23-2, Mot. to Dismiss, Def.’s Certification, ¶ 5,6; D.E. 23-3, Mot. to Dismiss, Ex. A;
D.E. 23-4, Mot. to Dismiss, Ex. B).
63

64

(D.E. 23-2, Mot. to Dismiss, Def.’s Certification, ¶ 4).

65

Id.
12

interrogatory 7 that the source of any Microsoft items acquired by Mr. Abunamous “would have
most certainly been Microsoft.” Because Mr. Abunamous’s objections fail and his own
certification contradicts his response to interrogatory 7, Microsoft’s motion to compel is
granted. Mr. Abunamous shall identify the “third-party resellers” he used to purchase Microsoft
items.

Interrogatory No. 8: Identify all customers that have acquired more than
$100 worth of Microsoft items from Defendants.
Response: Respondent objects to this interrogatory to the extent the
supplied definition of the term ''Microsoft items" is vague and ambiguous.
Respondent further objects to this interrogatory because it seeks
information that is not relevant to plaintiff's cause of action, and is not
reasonably calculated to lead to the discovery of admissible evidence.
Respondent further objects to this interrogatory on the grounds that it overly
broad and burdensome because it is unlimited in scope, and would require
respondents to create volumes of data that do not now exist, and did not ever
exist. Respondent further objects to this interrogatory because it seeks the
identities of third parties not interested in this litigation, who would not want
to be associated with this litigation, and could bring an action against
respondents if their identities were revealed.
Subject to and without waiving the foregoing objections, respondent states
that he has never had a practice of keeping records related to the sales of
any items, Microsoft notwithstanding, and that he would have no way of
providing the requested information.66
Interrogatory No. 9: State the full name of each type of Microsoft item
(e.g., "Product Keys for Office 2013 Professional,"" Product Keys for Visio
Standard 2010" etc.) acquired and/or distributed by Defendants from 2013
to the present.
Response: Respondent objects to this interrogatory to the extent the
supplied definition of the term ''Microsoft items" is vague and ambiguous.
Respondent further objects to this interrogatory because it seeks
information that is not relevant to plaintiff's cause of action, and is not
reasonably calculated to lead to the discovery of admissible evidence.
66

(D.E. 58-1, Pl.’s Ltr., Sept. 13, 2017, Ex. 4, 4).
13

Respondent further objects to this interrogatory on the grounds that it overly
broad and burdensome because it is unlimited in scope, and would require
respondents to create volumes of data that do not now exist, and did not ever
exist.
Subject to and without waiving the foregoing objections, respondent states
that he has never had a practice of keeping records related to the sales of
any items, Microsoft notwithstanding, and that he would have no way of
providing the requested information.67
Mr. Abunamous’s objections to interrogatories 8 and 9 are overruled for the same reasons
that the identical objections to interrogatory 7 were overruled. He has not met his burden to
explain his objections and provide support for them. Additionally, though Mr. Abunamous
claims not to have “had a practice of keeping records related to the sales of any items,” his
parallel statement in response to interrogatory 7 with respect to the acquisition of items was
demonstrated to be contradicted by two e-mails Mr. Abunamous submitted to the record.68 This
statement is also contradicted by the same two e-mails. Those e-mails are indeed “records related
to the sales of…items,” because in the first e-mail, Softicle asked Microsoft to confirm Softicle’s
“exclusive rights to the licenses to use or distribute.”69 Mr. Abunamous’s certification attests to
the fact that this e-mail exchange sought to confirm the validity of Microsoft licenses that he
intended for resale.70
Furthermore, it is unusual that Mr. Abunamous, a student of computer engineering,71
claims to have no way of providing basic information regarding the customers he dealt with and

67

(D.E. 58-1, Pl.’s Ltr., Sept. 13, 2017, Ex. 4, 4-5).

68

See supra pp. 11-12.

69

(D.E. 23-3, Mot. to Dismiss, Ex. A) (emphasis added).

70

(D.E. 23-2, Mot. to Dismiss, Def.’s Certification, ¶ 4).

71

(D.E. 23-2, Mot. to Dismiss, Def.’s Certification, ¶ 2).
14

the products he sold. This is all the more strange in an era in which records are often
automatically generated with respect to online transactions, and “[c]ourts have been loathe to
reward (and possibly encourage) poor record keeping by shielding companies with inefficient
recording methods from discovery.”72 Microsoft argues, on the other hand, that it is “entitled to
discover the scope and extent” of Mr. Abunamous’s alleged infringement.73 Microsoft has met
its burden to show the response is deficient. The motion to compel is granted.
Interrogatory No. 12: Identify where Defendants deposit payments
received for Microsoft items.
Response: Respondent repeats the objection and response to Interrogatory
No. 9 as if fully rewritten herein.74
Mr. Abunamous’s objections are overruled for the same reasons. They constitute the sorts
of reflexive objections that Rule 26 seeks to deter,75 as certain objections patently do not apply to
the request. The request is not “unlimited in scope” and would not “require respondents to create
volumes of data that do not now exist, and did not ever exist.” Presumably Mr. Abunamous
knows of, and is in possession of the data relating to, accounts he uses to deposit “money [he]
made from reselling…software[.]”76 Furthermore, even if it were the case that Mr. Abunamous
“has never had a practice of keeping records related to the sales of any items” (a proposition
already demonstrated to be contradicted by the record), that does not bear on whether he is aware

72

Briddell v. Saint Gobain Abrasives Inc., 233 F.R.D. 57, 61 (D.Mass. 2005).

73

(D.E. 58, Pl.’s Ltr., Sept. 13, 2017, 3).

74

(D.E. 58-1, Pl.’s Ltr., Sept. 13, 2017, Ex. 4, 5).

75

See supra pp. 7-8 (discussing Mancia, 253 F.R.D. at 358).

76

(D.E. 23-2, Mot. to Dismiss, Def.’s Certification, ¶ 9).
15

of the accounts to which he makes deposits. Microsoft argues in response that the amount of
money received from selling allegedly infringing Microsoft products is relevant to the
determination of damages under the Lanham and Copyright Acts for their trademark and
copyright claims.77 For these reasons, Microsoft’s motion to compel is granted.
2. Document Demands
Parties may serve on any other party a demand to produce any designated documents that
are in the possession, custody, or control of another party.78 The responding party must produce
all relevant documents in his “possession, custody, or control.”79 Documents are within the
possession, custody, or control of the recipient if “the party has the legal right or ability to obtain
the documents from another source upon demand.”80 “Control” is broadly construed, so a party
may be required “to produce a document that is in the possession of a nonparty entity if the party
has the legal right to obtain the document.”81 This means a party must produce documents that

77

(D.E. 58, Pl.’s Ltr., Sept. 13, 2017, 3).

78

Fed. R. Civ. P. 34(a).

79

Id.; see also Love v. NJ Dept of Corr., No. 2:15-CV-4404, 2017 WL 3477864, at *4 (D.N.J.
Aug. 11, 2017)(citing Bryant v. Armstrong, 285 F.R.D. 596, 603 (S.D.Cal. 2012)).
80

Mercy Catholic Medical Ctr. v. Thompson, 380 F.3d 142, 160 (3d Cir. 2004). See also In re
Bankers Trust Co., 61 F.3d 465, 469 (6th Cir.1995) (“[D]ocuments are deemed to be within the
‘possession, custody or control’ for purposes of Rule 34 if the party has actual possession,
custody or control, or has the legal right to obtain the documents on demand.”).
81

Bryant v. Armstrong, 285 F.R.D. 596, 603 (S.D.Cal. 2012); see also Mercy Catholic, 380 F.3d
at 160 (“In the Rule 34 context, control is defined as the legal right to obtain required documents
on demand.”).
16

have been turned over to his agent, such as his insurer or attorney.82 The requesting party bears the
burden of establishing control.83
Responses must be made to each item or category of documents requested with a
production, an objection, or an answer.84 A “response must either state that inspection and related
activities will be permitted as requested” or “that it will produce copies of [the] documents[.]”85
An objection must “state with specificity the grounds for objecting to the request, including the
reasons.”86 Also, “[a]n objection must state whether any responsive materials are being withheld
on the basis of that objection. An objection to part of a request must specify the part and permit
inspection of the rest.”87 If instead, a responder answers that there are no responsive documents,
the answer “must state under oath that he is unable to provide the information and ‘set forth the
efforts he used to obtain the information.’”88 Finally, a responding party must also supplement
their responses if the information sought is later obtained, or amend the responses if they require
correction.89

82

See, e.g., Henderson v. Zurn Industries, 131 F.R.D. 560, 567 (S.D.Ind.1990).

United States v. Int’l Union of Petroleum & Indus. Workers, 870 F.2d 1450, 1452 (9th
Cir.1989).
83

84

Fed. R. Civ. P. 34(b)(2)(B).

85

Id.

86

Id.

87

Fed. R. Civ. P. 34(b)(2)(C).

88

Hansel, 169 F.R.D. at 305 (quoting Milner v. National School of Health Tech., 73 F.R.D. 628,
632 (E.D.Pa.1977)).
17

Microsoft received the following responses to its requests for production:
Request No. 1: All documents (including, without limitation, sales
invoices, receipts, purchase orders, or shipping records) that relate to any
acquisition by Defendants of Microsoft items, including product keys.
Response: Respondent objects to this interrogatory on the grounds that it
overly broad and burdensome because it is unlimited in scope, and would
require respondents to create volumes of data that do not now exist, and did
not ever exist. Respondent further objects to this request to the extent it
seeks confidential and/or privileged materials relating to third parties not
interested in this litigation, who would not want to be associated with this
litigation, and could bring an action against respondent if their identities
were revealed. Subject to and without waiving the foregoing objections,
respondent does not have any responsive documents.90
Request No. 2: All documents (including, without limitation, sales
invoices, receipts, purchase orders, or shipping records) that relate to any
distribution by Defendants of Microsoft items, including product keys.
Response: Respondent objects to this interrogatory on the grounds that it
overly broad and burdensome because it is unlimited in scope, and would
require respondents to create volumes of data that do not now exist, and did
not ever exist. Respondent further objects to this request to the extent it
seeks confidential and/or privileged materials relating to third parties not
interested in this litigation, who would not want to be associated with this
litigation, and could bring an action against respondent if their identities
were revealed. Subject to and without waiving the foregoing objections,
respondent does not have any responsive documents.91

89

Fed. R. Civ. P. 26(e); see also Newman v. GHS Osteopathic, Inc., 60 F.3d 153, 156 (3d Cir.
1995)(“Under Rule 26(e), a party is under a continuing obligation to supplement its discovery
responses.”).
90

(D.E. 58-1, Pl.’s Ltr., Sept. 13, 2017, Ex. 3, 2).

91

Id.
18

Mr. Abunamous claims to have no responsive documents and certified his response, but
he failed to detail his search efforts.92 Therefore, Microsoft’s motion to compel a further
response to both requests is granted.
The Court further observes that, as discussed above with respect to interrogatories 7, 8,
and 9, Mr. Abunamous demonstrated in the certification and exhibits attached to his motion to
dismiss, that he is in possession of at least some documents that relate to both his acquisition and
distribution of Microsoft items.93 Softicle’s e-mail to Microsoft referred to Softicle as the
“verified purchaser” of various Microsoft licenses (which relates to an “acquisition by
Defendants of Microsoft items”), and also asked for confirmation of Softicle’s “exclusive rights
to the licenses to use or distribute” (which relates to a “distribution by Defendants of Microsoft
items”).94 Mr. Abunamous’s claims in his responses to Requests 1 and 2 “not to have any
responsive documents” are belied by his own submissions to the record.
C. Subpoena
Although the dispute concerning Microsoft’s subpoena upon Bank of America is moot, Mr.
Abunamous’s complaints about Microsoft’s service of subpoenas and this Court’s discovery
dispute protocol is not. Mr. Abunamous argues that Microsoft violated this Court’s rules by serving
subpoenas on Bank of America and previously on PayPal without first conferring with him.95 Mr.
Abunamous further contends that “[b]ecause of the limitations in the pretrial scheduling order,

92

See Hansel, 169 F.R.D. at 305; Bryant, 285 F.R.D. at 603 (quoting James Wm. Moore, et al.,
Moore’s Federal Practice, § 34.13[2][a], at 34–57 (footnote omitted)).
(D.E. 23-2, Mot. to Dismiss, Def.’s Certification, ¶ 5,6; D.E. 23-3, Mot. to Dismiss, Ex. A;
D.E. 23-4, Mot. to Dismiss, Ex. B); see supra pp. 11-12.
93

94

(D.E. 23-3, Mot. to Dismiss, Ex. A).

95

(D.E. 56, Def.’s Ltr., 1-2).
19

defendants have been stripped of all the tools to combat a plaintiff’s abusive discovery tactics, and
are now left without a remedy to attack the subpoena.”96 Microsoft countered that “there is nothing
in the Pretrial Scheduling Order that prohibits the issuance of subpoenas.”97
Microsoft is correct that the Scheduling Order does not prohibit the service of subpoenas;
it only requires that the parties comply with the Court’s discovery dispute protocol before raising
such issues to this Court. The Federal Rules are clear that any motions to quash a subpoena must
be filed with the “district where compliance is required[.]”98 The at-issue subpoena was served on
Bank of America in California and directed that responsive documents be produced by mailing or
emailing the same to a firm in California.99 Accordingly, if Mr. Abunamous wanted to move to
quash the subpoena in California, the Scheduling Order did not prevent him from doing so.
With regard to Mr. Abunamous’s subsequent complaint that pro hac vice counsel issued
the California subpoena,100 local counsel shall respond in writing within the next week and that
issue along with the alleged conflict claim will be discussed at the upcoming status conference.
An appropriate order follows:
ORDER
WHEREAS, pursuant to Federal Rules of Civil Procedure 16(f) and 37(b), if the Court
determines that Defendants, Aymen Abunamous and/or Softicle have violated an Order of the

96

(D.E. 56, Def.’s Ltr., 1).

97

(D.E. 58, Pl.’s Ltr., Sept. 13, 2017, 2).

98

Fed.R.Civ.P.45(d)(3).

99

(D.E. 56, Def.’s Ltr., 8).

100

(D.E. 67).
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Court, sanctions provided in the stated Rules, including, but not limited to, payment of attorneys’
fees and striking your defenses, may be appropriate; and therefore
IT IS on this Monday, October 02, 2017,
1. ORDERED, that Defendants, Aymen Abunamous and Softicle shall file a written
submission (affidavit or declaration) with the Court within 14 days showing cause why they
should not be sanctioned for failing to provide their initial disclosures and for failing to
comply with the Court’s orders and rules; and it is further
2. ORDERED, that Plaintiff, Microsoft Corporation’s informal motion to compel Defendants,
Aymen Abunamous and Softicle to provide further responses to interrogatories 7, 8, 9, and
12 and requests for production 1 and 2 are granted. Defendants, Aymen Abunamous and
Softicle shall serve their amended discovery responses consistent with this Order and the
Court’s opinion within 14 days. The amended response shall include a signature from Mr.
Bahgat for the objections posed to all interrogatories as required by the Federal Rules.

10/2/2017 10:29:10 AM

Original: Clerk of the Court
Hon. Madeline Cox Arleo, U.S.D.J.
cc: All parties
File

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