Kenyon v. Clare
OPINION & ORDER re: 1 MOTION to Compel Simon & Schuster, Inc. to appear. Other Court Name: USDC-MDTN. Other Court Case Number: 3:16-CV-0191. (Filing Fee $ 46.00, Receipt Number 465401161471), filed by Sherrilyn Kenyon. Subject to any subsequent order staying discovery in the Tennessee Action and Kenyon's re-service of the subpoena by personal delivery, S&S is directed to produce nonprivileged documents responsive to Request Nos. 2 through 8 and to provide Kenyon w ith a log for any responsive documents withheld on grounds of privilege within a reasonable time. Mindful of S&S's nonparty status, Kenyon and S&S are directed to meet and confer to decide upon a reasonable number of custodians and a reason able list of keywords to search to apply for potentially responsive documents within three weeks of personal service of the subpoena on S&S. To help ensure that these lists remain reasonable, S&S may apply to the Court for cost-shifting if the costs of responding to the subpoena become too onerous. To the extent that the existing protective order permits, Kenyon is directed to describe the documents it has received or later receives from Clare to (1) provide a starting point for approp riate custodians and keywords and (2) avoid duplicating production of such documents. Kenyon's motion to compel documents responsive to Request No. 9 is quashed without prejudice because it is unreasonably duplicative of documents sought from Clare. (As further set forth in this Opinion) (Signed by Judge John F. Keenan, Part I, on 10/11/2016) (kl)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-againstSIMON & SCHUSTER, INC.,
No. 16 Misc. 327 (P1)
OPINION & ORDER
JOHN F. KEENAN, United States District Judge:
Before the Court is Movant Sherrilyn Kenyon’s (“Kenyon”)
motion to compel Respondent Simon & Schuster, Inc. (“S&S”) to
produce documents responsive to a subpoena pursuant to Federal
Rule of Civil Procedure 45(d)(2)(B)(i).
Kenyon’s subpoena relates to an action for trademark
infringement and unfair competition that she brought in the
Middle District of Tennessee against Cassandra Clare (“Clare”),
Kenyon v. Clare, No. 3:16-cv-0191 (M.D. Tenn.) (the “Tennessee
Kenyon and Clare are both authors.
holds the trademark “Dark-Hunter” and uses it in one of her
series of novels.
In the Tennessee Action, Kenyon asserts that
Clare’s use of “Shadowhunter” in her own series of novels
creates confusion with “Dark-Hunter.”
S&S published a number of Clare’s works at issue in the
Tennessee Action, but is not a party there.
S&S objects to
Kenyon’s subpoena because it unduly burdens S&S by failing first
to exhaust Clare as a source of the requested documents.
Kenyon’s motion to compel is granted as modified below.
Procedural History of the Tennessee Action
Kenyon initiated the Tennessee Action on February 5, 2016.
Clare moved to dismiss the action on April 25, 2016, and Kenyon
filed an amended complaint on May 16, 2016.
Clare moved to
dismiss the amended complaint on June 22, 2016.
to dismiss remains sub judice. (See Decl. of Thomas B. Sullivan
in Opp’n to Sherrilyn Kenyon’s Mot. to Compel ¶ 6, ECF No. 9
[hereinafter Sullivan Decl.]; id. Ex. A at 4-9, ECF No. 9-1.)
On April 8, 2016, the Middle District of Tennessee entered
an Initial Case Management Order setting the discovery period to
begin on May 18, 2016, and fact discovery to close on December
16, 2016. (See Decl. of Tonya J. Austin in Support of Pl.
Sherrilyn Kenyon’s Mot. to Compel Simon & Schuster, Inc. to
Comply With [FR]CP Subpoena and for Sanctions Ex. 3, at 5, ECF
No. 3-3 [hereinafter Austin Decl.].)
The Initial Case
Management Order explicitly declined to stay discovery “during
dispositive motions, unless ordered by the Court.” (Id.)
On July 27, 2016, Clare moved the Middle District of
Tennessee to stay discovery pending a decision on her motion to
dismiss. (See Austin Decl. ¶ 10; Sullivan Decl. Ex. A at 8
(Docket No. 48).)
Clare’s motion to stay also remains sub
judice. (See Austin Decl. ¶ 10; Sullivan Decl. Ex. A.)
On August 5, 2016, Kenyon and Clare entered into a
protective order in the Tennessee Action. (See Sullivan Decl.
Ex. A at 8 (Docket No. 59).)
The S&S Subpoena
On May 25, 2016, one week after the opening of discovery,
Kenyon issued document requests to Clare. (See id. Ex. B at 24,
ECF No. 9-2.)
That same day, Kenyon served a subpoena duces
tecum on S&S by certified mail. (See id. Exs. C-D, ECF Nos. 9-3
S&S timely objected (including to service by certified
mail), and Kenyon recognized that she had inadvertently attached
an incorrect version of Exhibit A to the subpoena, which
contained her specific document requests.
Kenyon served a
corrected Exhibit A to the subpoena by email. (See id. Ex. E ¶
13, at 4, ECF No. 9-5; Austin Decl. Ex. 4, ECF No. 3-4.)
July 8, 2016, S&S timely objected to Kenyon’s corrected subpoena
(including to service by certified mail). (See Austin Decl. Ex.
5 ¶ 13, at 3, ECF No. 3-5.)
Between July 8 and July 19, 2016, Kenyon and S&S met and
conferred, which resulted in Kenyon narrowing her requests from
fifteen to nine. (See id. Ex. 6, at 5-7, ECF No. 3-6.)
nine requests are as follows:
All contracts and license agreements including
amendments, relating to the novels in the Shadowhunter
Series (as defined in the Request No. 2 of the revised
Exhibit A), to the extent those novels were published
by Simon & Schuster.
Documents and communications with Cassandra Clare, or
her representatives or agents, regarding the decision
to include “A Shadowhunter Novel” on the redesigned
cover of certain books within the Shadowhunter Series.
Author questionnaires completed by Cassandra Clare, or
her representatives or agents, and any documentation
provided to Simon & Schuster by same regarding the
visual representation of the characters in the Mortal
Documents and communications with Cassandra Clare or
her representatives or agents, regarding the decision
to redirect www.mortalinstruments.com to www.shadow
Documents and communications with Cassandra Clare
www.shadowhunters.com, including the decision to
obtain the domain name “shadowhunter.com.”
representatives or agents, relating to the 2009 use of
“Darkhunter” on the cover of the novel City of Bones.
Documents and communications regarding Cassandra
Clare’s review and/or approval of the 2009 cover of
the novel City of Bones containing the word
“Darkhunter,” including documents and communications
relating to the final “mechanic” approved for printing
Documents and communications directed to Simon &
Schuster regarding confusion between the Shadowhunters
Series and Sherrilyn Kenyon’s series of books
Documents and communications relating to money paid to
Cassandra Clare or her representatives, agents or
assigns regarding the Shadowhunter Series (to the
extent it was published by Simon & Schuster).
(Sullivan Decl. Ex. F at 2, ECF No. 9-6.)
On August 18, 2016, S&S
agreed to produce documents responsive to Request No. 1, but
maintained its objections to Request Nos. 2 through 9. (Austin
Decl. Ex. 6, at 3-4.)
On August 23, 2016, Kenyon responded to
S&S’s objections and requested production of documents responsive
to Request Nos. 2 through 9 by August 31, 2016. (Id. at 1-2.)
When no response came, Kenyon moved to compel S&S to comply
with the subpoena in this Court on September 6, 2016.
Discovery from Clare
In a June 22, 2016 declaration in support of her motion to
dismiss, Clare stated that her contracts with S&S “make clear
(at § 12(b)) that ‘[f]inal decisions as to format, style of
printing and binding, title, cover presentation, trade name,
trademark, logo, imprint or other identification, and retail
price and all other matters of sale, distribution, advertising
and promotion of each Work shall be within [S&S]’s sole
discretion.” (See Reply Ex. 2 ¶ 3, ECF No. 14-2.)
that she has no control over the marketing and sales of her
works, (id.), that www.shadowhunters.com is not her website, and
that review of www.shadowhunters.com’s homepage “clearly
demonstrates” that S&S operates it, (id. ¶ 4.).
2009 misprint (the subject of Request No. 7), Clare claimed that
S&S prepared a “proposed joint apology” to Clare and Kenyon
where it “stress[ed] that Ms. Clare was not in any way
responsible for the misprint.” (Id. ¶ 8.)
On August 26, 2016, Clare produced 222 pages of redacted
emails. (Austin Decl. ¶ 19.)
Kenyon argues that her document requests on nonparty S&S
are relevant, specifically tailored, and necessary to present a
full case of Clare’s alleged trademark infringement, unfair
competition, and use of S&S to distribute infringing works.
S&S objects to Kenyon’s document requests procedurally
because Kenyon did not personally serve S&S.
argues that Kenyon’s requests are unduly burdensome for a
nonparty and cumulative and duplicative of requests to Clare.
Kenyon responds that S&S’s nonparty status alone is not a
sufficient burden to warrant quashing the subpoena, that S&S, as
a large corporation, is likely to have a more complete set of
documents than Clare, and that the risk of document destruction
and the Tennessee Action’s impending deadline for fact discovery
justifies seeking discovery from nonparty S&S concurrent with
Federal Rule of Civil Procedure 45 permits a party to
request a subpoena from the clerk of an issuing court that
commands the person to whom it is directed to “produce
designated documents, electronically stored information, or
tangible things in that person’s possession, custody, or
control.” Fed. R. Civ. P. 45(a)(1)(A)(iii).
“Serving a subpoena requires delivering a copy to the named
person.” Id. R. 45(b)(1).
“There is no Second Circuit case law
interpreting the Rule 45 requirement of ‘deliver[y]’ as
requiring personal service.” Tube City IMS, LLC v. Anza Capital
Partners, LLC, No. 14 Civ. 1783(PAE), 2014 WL 6361746, at *2
(S.D.N.Y. Nov. 14, 2014) (alteration in original) (quoting
JPMorgan Chase Bank, N.A. v. IDW Grp., LLC, No. 08 Civ.
9116(PGG), 2009 WL 1313259, at *2 (S.D.N.Y. May 11, 2009)).
Traditionally, district courts in this Circuit have
interpreted Rule 45 to require personal service. See, e.g.,
Agran v. City of New York, No. 95 Civ. 2170(JFK), 1997 WL
107452, at *1 (S.D.N.Y. Mar. 11, 1997) (“[T]he weight of
authority is that a subpoena duces tecum must be served
More recently, recognizing that nothing in Rule
45’s language itself calls for personal service, district courts
have authorized alternative service that is reasonably designed
to ensure that a witness actually receives a subpoena. See,
e.g., Simmons v. Fervent Elec. Corp., No. 14 Civ.
1804(ARR)(MDG), 2016 WL 3661274, at *1 (Go, Mag. J.) (describing
the trend as “growing” and collecting cases from the Eastern and
Southern Districts of New York); JPMorgan Chase Bank, N.A., 2009
WL 1313259, at *2 (collecting cases from the Southern District
of New York that held “that effective service under Rule 45 is
not limited to personal service”).
Courts that follow the recent trend do not give serving
parties carte blanche.
These courts typically require the
serving party to seek leave to serve by alternative means and to
demonstrate a prior diligent attempt to personally serve. See,
e.g., Simmons, 2016 WL 3661274, at *1 (“Even those courts that
have sanctioned alternative means of service have done so only
after the plaintiff had diligently attempted to effectuate
personal service.”); JPMorgan Chase Bank, N.A., 2009 WL 1313259,
at *3 (granting a request for leave to serve by alternative
means after serving party attempted personal service nine
times). But see Sheet Metal Workers’ Nat’l Pension Fund v. Rhb
Installations, Inc., No. 12 Civ. 2981(JS)(ARL), 2016 WL 128153,
at *2 (E.D.N.Y. Jan. 12, 2016) (Lindsay, Mag. J.) (requiring
compliance even when the serving party failed to show diligent
attempts to personally serve because the commanded person
“clearly received the subpoena as his attorney . . . requested
two extensions of time to comply therewith”).
Rule 45 requires that the serving party “take reasonable
steps to avoid imposing undue burden or expense on a person
subject to the subpoena.” Fed. R. Civ. P. 45(d)(1).
for the district where compliance is required must enforce this
duty and impose an appropriate sanction—which may include lost
earnings and reasonable attorney’s fees—on a party or attorney
who fails to comply.” Id.
If the commanded person objects to the subpoena, “the
serving party may move the court for the district where
compliance is required for an order compelling production or
inspection.” Id. R. 45(d)(2)(B)(i).
The court “must quash or
modify a subpoena that . . . subjects a person to undue burden.”
Id. R. 45(d)(3)(A)(iv).
Additionally, “Rule 45 requests for production are subject
to the limits on discovery under Rules 26 and 34.” Atwell v.
City of New York, No. 07 Civ. 2365(WHP), 2008 WL 5336690, at *1
(S.D.N.Y. Dec. 15, 2008) (citing Burns v. Bank of Am., No. 03
Civ. 1685(RMB)(JCF), 2007 WL 1589437, at *14 (S.D.N.Y. June 4,
2007) (Francis, Mag. J.)).
Rule 26 requires a court to “limit
the frequency or extent of discovery otherwise allowed by these
rules or by local rule if it determines that:
. . . the
discovery sought is unreasonably cumulative or duplicative, or
can be obtained from some other source that is more convenient,
less burdensome, or less expensive.” Id. R. 26(b)(2)(C)(i).
Kenyon’s Service Is Defective
Kenyon made no attempt to personally serve S&S and did not
apply for authorization to serve by alternative means before
sending the subpoena to S&S by certified mail.
the persuasive reasoning supporting the modern trend of
authorizing alternative service, the weight of authority in this
Circuit requires first a diligent attempt to personally serve
the commanded person. See, e.g., Tube City IMS, LLC, 2014 WL
6361746, at *1-2 (granting motion for leave after six failed
attempts at personal service); Ultradent Prods., Inc. v. Hayman,
No. M8-85 RPP, 2002 WL 31119425, at *4 (S.D.N.Y. Sept. 24, 2002)
(forgiving the serving party’s failure to seek leave to serve by
alternate means, but considering the “practical circumstances”
supporting the serving party’s actions in this case including
two separate failed attempts at personal service when
authorizing alternative service).
Kenyon’s failure to first attempt personal service and her
failure to seek leave to serve by alternative means before
mailing the subpoena renders her service defective.
seems pointless to require Kenyon to re-serve the subpoena given
that S&S has received, reviewed, and partially complied with it,
see Agran, 1997 WL 104752, at *1, the Court will not sanction
Kenyon’s departure from normal service requirements absent
Kenyon is directed to personally re-
serve the subpoena on S&S.
Kenyon’s Document Requests Do Not Impose an Undue Burden
S&S argues that Kenyon’s document requests impose an undue
burden because of the amount of effort S&S would need to expend
in order to locate responsive documents.
In support of this
argument, S&S submits a declaration from a paralegal in S&S’s
legal department. (See Decl. of Tracy Woelfel in Opp’n to
Sherrilyn Kenyon’s Mot. to Compel, ECF No. 10 [hereinafter
The Woelfel Declaration states that S&S employs hundreds of
people in numerous departments and divisions. (Id. ¶ 5.)
maintains no central document repository system, and S&S’s
departments or individual employees are responsible for
controlling their own files. (Id. ¶ 6.)
Therefore, S&S’s search
for responsive documents would proceed as follows:
would need to identify the relevant departments and employees
for each book at issue. (Id. ¶ 7.)
Next, it would need to
conduct two searches—one of electronic documents by its
information technology staff and another of hardcopy documents
by employees. (Id. ¶ 8.)
Because electronic documents are not
maintained in any sort of order, S&S would need to perform
keyword searches to identify potentially responsive documents.
(Id. ¶ 10.)
S&S would then need to personally review these
potentially responsive documents to determine actual
Actually responsive documents would then
be subjected to a second review for documents containing any
privileged information. (Id. ¶ 11.)
This could take weeks and
involve numerous employees. (Id. ¶ 12.)
What S&S describes as an undue burden is merely the typical
process for a corporation responding to document requests. See
The Sedona Conference, The Sedona Conference Best Practices
Commentary on the Use of Search & Information Retrieval Methods
in E-Discovery, 2014 Sedona Conf. J. 217, 244 (2014) (“[I]n many
cases, both automated and manual searches will be conducted,
with automated searches used for culling down a universe of
material to more manageable size (or prioritizing documents),
followed by a secondary manual review process.”)
In essence, S&S argues that even the normal burden of
document production is too much for a nonparty when there exists
some possibility that a party may have the documents.
S&S’s burdensome argument is really an argument that Kenyon’s
requests are unreasonably duplicative or cumulative of discovery
she seeks from Clare, the Court addresses it as such below.
Kenyon’s Document Requests Are Not Unreasonably
Duplicative or Cumulative Nor Are the Documents
Sought Available From a More Convenient,
Less Burdensome, or Less Expensive Source
Rule 26(b)(1) sets the scope of discovery as
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
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
Fed. R. Civ. P. 26(b)(1).
The scope of discovery does not
change based on party status, see id. R. 45 advisory committee’s
note to 1991 amendment (“The non-party witness is subject to the
same scope of discovery under this rule as that person would be
as a party to whom a request is addressed pursuant to Rule
34.”); id. advisory’s committee’s note to 1970 amendment (“[T]he
scope of discovery through a subpoena is the same as that
applicable to Rule 34 and the other discovery rules.”), although
some courts have given special weight to nonparty status when
considering whether the “the burden or expense of the proposed
discovery outweighs its likely benefit.” See, e.g., Arista
Records LLC v. Lime Grp. LLC, No. 06 Civ. 5936(KMW), 2011 WL
781198, at *2 (S.D.N.Y. Mar. 4, 2011).
Determining relevance requires consideration of the
substantive law underlying Kenyon’s claims against Clare in the
The Sixth Circuit applies the same
likelihood-of-confusion analysis to claims of trademark
infringement and unfair competition. See AutoZone, Inc. v. Tandy
Corp., 373 F.3d 786, 791 (6th Cir. 2004).
This analysis weighs
eight factors to determine whether there is a likelihood of
(1) strength of the senior mark;
(2) relatedness of the goods or services; (3) similarity of the
marks; (4) evidence of actual confusion; (5) marketing channels
used; (6) likely degree of purchaser care; (7) the intent of
defendant in selecting the mark; and (8) likelihood of expansion
of the product lines. Hensley Mfg., Inc. v. ProPride, Inc., 579
F.3d 603, 610 (6th Cir. 2009).
S&S points out that seven of Kenyon’s eight remaining
requests identify documents that Clare should possess:
Nos. 2, 4, 5, and 6 each seek “documents and communications” or
“communications” with Clare; Request No. 7 seeks “documents and
communications regarding Clare’s review;” Request No. 3 seeks
documents that Clare herself provided to S&S; and Request No. 9
seeks documentation substantiating Clare’s compensation.
argues that the remaining Request No. 8 seeks information
regarding consumer confusion between “Dark-Hunter” and
“Shadowhunter” that is either publicly available or more likely
to have been sent to Kenyon and Clare themselves rather than to
Accordingly, S&S asks the Court to quash the subpoena
because the documents Kenyon seeks from a nonparty are
“unreasonably cumulative or duplicative or can be obtained from
some other source [i.e., Clare or public resources] that is more
convenient, less burdensome, or less expensive.” Fed. R. Civ. P.
Kenyon responds that S&S played a significant role in the
events at issue in the Tennessee Action and that S&S’s control
over Clare’s marketing and sales and the website located at
www.shadowhunter.com establishes that S&S’s documents will
differ from Clare’s documents.
Moreover, Kenyon argues that it
has received only 222 pages of emails from Clare and that Rule
26(d)(3) specifically rejects sequenced discovery.
Kenyon is correct that the status quo under Rule 26(d)(3)
avoids sequenced discovery.
But that subsection permits the
court to order otherwise “for the parties’ and witnesses’
convenience and in the interests of justice.” Fed. R. Civ. P.
While the Middle District of Tennessee has made no
such order, S&S’s contention that this Court should rule that
Kenyon’s subpoena unduly burdens S&S until Kenyon can
conclusively establish Clare does not possess the documents that
Kenyon seeks is, in effect at least, a request for the type of
order contemplated by Rule 26(d)(3).
Accordingly, Rule 26(d)(3)
provides no persuasive grounds for compelling S&S’s compliance
with the subpoena.
S&S’s relative access to relevant information and the
importance of the sought-after discovery in resolving the
issues, however, does provide persuasive grounds for compelling
Since the entrance of the protective order on
August 5, 2016, Clare has produced just 222 pages of emails.
(Austin Decl. ¶ 19.)
In support of her motion to dismiss, Clare
testified (quoting her contracts with S&S) that S&S has sole
discretion over the “[f]inal decisions as to format, style of
printing and binding, title, cover presentation, trade name,
trademark, logo, imprint or other identification, and retail
price and all other matters of sale, distribution, advertising
and promotion” of her books. (Reply Ex. 2 ¶ 3.)
testified that S&S operates the website located at
www.shadowhunters.com and S&S took sole responsibility for the
2009 cover misprint. (Id. ¶¶ 4, 8.)
S&S’s role as Clare’s
publisher with sole discretion over the marketing and sales of
her books and control over the www.shadowhunters.com website
establishes that S&S in the best position to produce the
documents sought in Request Nos. 2 through 8.
The Court is not persuaded that simply because a subset of
documents—i.e., communications with Clare—may also be available
from Clare, Kenyon’s requests are unreasonably duplicative or
S&S, as the entity in control of the marketing and
sales of Clare’s books and the www.shadowhunters.com website,
likely has the lion’s share of documents responsive to Kenyon’s
Rule 26(b)(2)(C)(i) does not require requests to be
circumscribed pens sharing no common ground.
that the overlap not be “unreasonable.”
It requires only
The Court concludes
that de minimis overlap here is reasonable.
Separately, the Court is sensitive to the possibility that
documents responsive to Request No. 8 may be publicly available
or likely targeted Kenyon and Clare rather than S&S.
because Clare’s intent in selecting her mark is a factor in the
likelihood-of-confusion analysis, whether S&S received
complaints of confusion and when these complaints were received
are relevant facts themselves.
S&S’s substantial role in the facts at issue in the
Tennessee Action makes the value of its documents significantly
greater than the normal burden of production, even though S&S is
not a party to the Tennessee Action.
Therefore, the Court
orders S&S to comply with Request Nos. 2 through 8 of Kenyon’s
By contrast, S&S’s position of control over the marketing,
sales, and the website at issue in the Tennessee Action does not
place it in a unique position from Clare with regards to Request
No. 9, which seeks “[d]ocuments and communications relating to
money paid to Cassandra Clare or her representatives, agents or
assigns regarding the Shadowhunter Series (to the extent it was
published by Simon & Schuster).”
Kenyon has not yet established
that Clare cannot produce documents and communications relating
to money paid to her, and absent this showing, Clare remains a
more convenient source for these documents.
The Court quashes
without prejudice Request No. 9 of Kenyon’s subpoena.
Subject to any subsequent order staying discovery in the
Tennessee Action and Kenyon’s re-service of the subpoena by
personal delivery, S&S is directed to produce nonprivileged
documents responsive to Request Nos. 2 through 8 and to provide
Kenyon with a log for any responsive documents withheld on
grounds of privilege within a reasonable time.
Mindful of S&S’s
nonparty status, Kenyon and S&S are directed to meet and confer
to decide upon a reasonable number of custodians and a
reasonable list of keywords to search to apply for potentially
responsive documents within three weeks of personal service of
the subpoena on S&S.
To help ensure that these lists remain
reasonable, S&S may apply to the Court for cost-shifting if the
costs of responding to the subpoena become too onerous.
extent that the existing protective order permits, Kenyon is
directed to describe the documents it has received or later
receives from Clare to (1) provide a starting point for
appropriate custodians and keywords and (2) avoid duplicating
production of such documents.
Kenyon's motion to compel documents responsive to Request
9 is quashed without prejudice because it is unreasonably
duplicative of documents sought from Clare.
New York, New York
October j J , 2016
United States District Judge
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