Separzadeh v. Iconix Brand Group, Inc. et al

Filing 121

MEMORANDUM AND ORDER denying 97 Letter Motion to Compel; denying 111 Letter Motion to Compel. Within two weeks of the date of this order, (1) RAG shall identify the matter in which it was required to reconstruct its email system and shall prod uce any order to that effect, and (2) the plaintiff shall make any motion to amend the complaint to add New Rise as a defendant unless the parties stipulate to amendment. In all other respects, the plaintiff's motion to compel (Docket nos. 97 a nd 111) is denied. The deadline for completion of discovery is held in abeyance pending a determination as to the status of New Rise. SO ORDERED. (Signed by Magistrate Judge James C. Francis on 4/10/2017) Copies Transmitted this Date By Chambers. (anc)

Discovery Demands
A motion to compel discovery “must include a certification
that the movant has in good faith conferred or attempted to confer
with the person or party failing to make disclosure or discovery
in an effort to obtain it without court action.”
37(a)(1).

Fed. R. Civ. P.

Here, plaintiff’s counsel acknowledges that he did not

succeed in scheduling a conference with RAG’s attorney prior to
filing the motion, but contends that further delay would have
caused his client some unspecified prejudice.
Letter

at

2).

This

does

not

satisfy

the

(Kleinman 2/3/17
meet-and-confer

requirement; there has been not an adequate showing that “temporal
exigencies required speedy action” or that “efforts at informal
compromise would have been clearly futile.”

Prescient Partners,

L.P. v. Fieldcrest Cannon, Inc., No. 96 Civ. 7590, 1998 WL 67672,
at *3 (S.D.N.Y. Feb. 18, 1998).

And, while there was some

discussion with counsel for Iconix, the specific issues raised in
the plaintiff’s motion do not appear to have been addressed in
detail.

(Letter of Andrew T. Hambleton dated Feb. 20, 2017

(“Hambleton 2/20/17 Letter”), at 9).
This failure to conduct a meaningful conference is, by itself,
grounds for denying the relief requested by the plaintiff.

See

Vaigasi v. Solow Management Corp., No. 11 Civ. 5088, 2016 WL
616386, at *11 (S.D.N.Y. Feb. 16, 2016); Veleron Holding, B.V. v.
2

BNP Paribas SA, No. 12 Civ. 5966, 2014 WL 4184806, at *2 (S.D.N.Y.
Aug. 22, 2014).

However, in the interest of completing discovery

so that this case may be resolved on the merits, I will consider
the substance of the plaintiff’s arguments.
A. RAG
The plaintiff’s general complaints about the quality of the
defendants’ discovery responses are meritless.

For example, to

the extent that RAG objected to the plaintiff’s interrogatories,
those objections were well-taken, since the interrogatories seek
information beyond the scope permitted by Local Civil Rule 33.3,
without any showing that interrogatories are a more efficient means
of

obtaining

discovery.

the

requested

information

than

other

forms

of

(Defendant Roc Apparel Group LLC’s Responses and

Objections to Plaintiff’s First Set of Interrogatories, attached
as Exh. 9 to Declaration of Nathaniel Kleinman dated Feb. 3, 2017
(“Kleinman

Decl.”),

at

1).

Similarly,

RAG

either

produced

documents in response to the plaintiff’s requests or indicated
that no such documents existed. (Defendant Roc Apparel Group LLC’s
Responses

and

Objections

to

Plaintiff’s

First

Request

for

Production of Documents, attached as Exh. 5 to Kleinman Decl.).
And RAG responded to the plaintiff’s requests for admissions with
appropriate admissions, denials, and objections.

(Defendant Roc

Apparel Group LLC’s Responses and Objections to Plaintiff’s First
Set of Requests for Admissions, attached as Exh. 12 to Kleinman
3

Decl.).
The only viable complaint the plaintiff has about RAG’s
discovery responses concerns the tardy production of certain sales
records.

Since this case arises from the defendants’ marketing of

apparel

containing

the

plaintiff’s

copyrighted

photograph,

discovery has focused in part on records of sales of that apparel.
RAG’s ability to locate and produce such information was hampered
by the fact that the business made its last sales by December 31,
2013, and wound up operations by June 30, 2014.

(Affidavit of

Ronnie DeMichael dated Feb. 16, 2017 (“DeMichael Aff.”), ¶ 8).
RAG’s computer and email systems were shut down in December 2014
or January 2015.

(DeMichael Aff., ¶ 13).

As a result, RAG’s

former COO/CFO searched his own work computer and was able to
locate and produce sales records for two relevant clothing styles
for October and November of 2013.

(DeMichael Aff., ¶¶ 4, 10-11).

However, in connection with unrelated litigation, RAG was recently
required to reconstruct its email system, as a result of which RAG
located and produced relevant royalty reports for the fourth
quarter of 2013.

(DeMichael Aff., ¶¶ 15, 17-18).

This is a plausible explanation for RAG’s failure to produce
the

recently

process.

located

sales

records

earlier

in

the

discovery

Nevertheless, the plaintiff is entitled to explore this

issue further, and RAG shall therefore identify the matter in which
it was compelled to reconstruct its email system and produce any
4

order to that effect.
B. Iconix
The plaintiff argues that Iconix has waived all objections to
the plaintiff’s discovery demands by failing to answer them in a
timely manner.

This contention ignores the fact that discovery

was stayed for a substantial period while a motion to amend the
complaint was pending and while the parties discussed a potential
resolution of the action. As late as January 23, 2017, plaintiff’s
counsel agreed to continue to forego discovery pending further
settlement discussions.

(Hambleton 2/20/17 Letter at 8).

After

the plaintiff terminated settlement talks and indicated a desire
to move forward with discovery on January 27, 2017 (Hambleton
2/20/17 Letter at 8), Iconix served its discovery responses on
February 17, 2017 (Defendant Iconix Brand Group, Inc.’s Objections
and

Responses

to

Plaintiff’s

First

Requests

for

Admission,

attached as Exh. B to Hambleton 2/20/17 Letter; Defendant Iconix
Brand Group, Inc.’s Objections and Responses to Plaintiff’s First
Set of Interrogatories, attached as Exh. C to Hambleton 2/20/17
Letter).

There is therefore no basis for deeming any objections

to have been waived.
There is one issue worthy of more discussion.

Iconix only

recently identified New Rise as a licensee for products bearing
the image at issue.

There is, however, an explanation for this

belated disclosure.

No individual currently employed at Iconix
5

has first-hand knowledge of the design and sale of the allegedly
infringing goods.

(Hambleton 2/20/17 Letter at 2).

Accordingly,

when it initially searched for information responsive to the
plaintiff’s demands, Iconix did not realize that RAG had ceased
operating as licensee for the relevant products in 2013 and that
New Rise had taken over the license.
2).

(Hambleton 2/20/17 Letter at

Indeed, by its terms, the license with RAG extended through

March 31, 2016, a fact that deterred Iconix from investigating
whether there might be other licensees.
at 10).

(Hambleton 2/20/17 Letter

Under these circumstances, Iconix’s failure to disclose

New Rise as a licensee sooner than it did is understandable.
Sanctions
The
denied.

plaintiff’s

application

for

discovery

sanctions

is

He has failed to demonstrate that the defendants engaged

in discovery abuse, intentional or otherwise.

Moreover, he has

not shown that any delay in providing relevant information has
caused prejudice.
Leave to Amend
While it may well be appropriate for New Rise to be added as
a defendant, it is difficult to evaluate a request to amend
pleadings in the abstract.

“In order to meet the requirements of

particularity in a motion to amend, ‘a complete copy of the
proposed amended complaint must accompany the motion so that both
the Court and opposing parties can understand the exact changes
6