Grayson O Company v. Agadir International LLC

Filing 79

ORDER granting in part and denying in part 32 Motion to Compel, Defendant shall supplement its responses as directed above, on or before August 31, 2015. Signed by Magistrate Judge David Keesler on 08/19/2015. (jlk)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
CHARLOTTE DIVISION
CIVIL ACTION NO. 3:13-CV-687-MOC-DCK
GRAYSON O COMPANY,
Plaintiff,
v.
AGADIR INTERNATIONAL LLC,
Defendant.

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ORDER

THIS MATTER IS BEFORE THE COURT on “Plaintiff Grayson O Company’s
Motion To Compel Production of Documents Under Fed. R. Civ. P. 37” (Document No. 32) filed
June 18, 2015. This motion has been referred to the undersigned Magistrate Judge pursuant to 28
U.S.C. § 636(b), and immediate review is appropriate. Having carefully considered the motion,
the record, and applicable authority, the undersigned will grant the motion in part, and deny the
motion in part.
BACKGROUND
Plaintiff Grayson O Company (“Plaintiff” or “Grayson O”) initiated this action with the
filing of a “Complaint” on December 13, 2013.

(Document No. 1).

Defendant Agadir

International LLC (“Defendant” or “Agadir”) filed its “Answer And Affirmative Defenses”
(Document No. 12) on May 27, 2014. The Complaint asserts causes of action for: (1) federal
trademark infringement / unfair competition; (2) North Carolina unfair and deceptive trade
practices; (3) North Carolina common law trademark infringement; and (4) North Carolina
common law unfair competition. (Document No. 1, pp.4-6).

The Court entered its “Pretrial Order And Case Management Plan” (Document No. 18) on
July 1, 2014. The Case Management Order, inter alia, set the following deadlines: discovery
completion – February 20, 2015; ADR report – February 20, 2015; dispositive motions – March
20, 2015; and trial – August 17, 2015. (Document No. 18).
Plaintiff filed a revised “… Consent Motion To Extend The Deadlines For Expert Witness
Reports, Discovery, Mediation And Dispositive Motions” (Document No. 24) on February 19,
2015. The undersigned issued an “Order” (Document No. 27) granting, with modification, the
extension on February 24, 2015. The case deadlines were re-set as follows: discovery completion
– June 26, 2015; mediation report – July 10, 2015; dispositive motions – July 20, 2015; and trial
– October 19, 2015. (Document No. 27, p.2).
“Plaintiff Grayson O Company’s Motion To Compel …” (Document No. 32) and
“Plaintiff’s Memorandum Of Law In Support Of Motion To Compel Production” (Document No.
33) were filed on June 18, 2015. The pending motion seeks “an Order compelling Defendant
Agadir International LLC (“Agadir”) to produce documents responsive to Document Request Nos.
1, 2, 9 and 20, contained in Grayson O’s First Request for Documents and Things.” (Document
No. 32). “Defendant’s Response In Opposition To Motion To Compel Production Of Documents”
(Document No. 41) was filed July 6, 2015; and “Grayson O’s Reply …” (Document No. 42) was
filed on July 9, 2015. The pending motion is now ripe for review and disposition.
STANDARD OF REVIEW
Rule 26 of the Federal Rules of Civil Procedure provides that:
Parties may obtain discovery regarding any nonprivileged matter
that is relevant to any party’s claim or defense including the
existence, description, nature, custody, condition, and location of
any documents or other tangible things and the identity and location
of persons who know of any discoverable matter. For good cause,
the court may order discovery of any matter relevant to the subject
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matter involved in the action. Relevant information need not be
admissible at the trial if the discovery appears reasonably calculated
to lead to the discovery of admissible evidence.
Fed.R.Civ.P. 26(b)(1). The rules of discovery are to be accorded broad and liberal construction.
See Herbert v. Lando, 441 U.S. 153, 177 (1979); and Hickman v. Taylor, 329 U.S. 495, 507
(1947). However, a court may “issue an order to protect a party or person from annoyance,
embarrassment, oppression or undue burden or expense.” Fed.R.Civ.P. 26(c)(1).
Whether to grant or deny a motion to compel is generally left within a district court’s broad
discretion. See Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 929 (4th
Cir. 1995) (denial of motions to compel reviewed on appeal for abuse of discretion); Erdmann v.
Preferred Research Inc., 852 F.2d 788, 792 (4th Cir. 1988) (noting District Court’s substantial
discretion in resolving motions to compel); and LaRouche v. National Broadcasting Co., 780 F.2d
1134, 1139 (4th Cir. 1986) (same).
DISCUSSION
Plaintiff served Defendant with its “…First Request For Production Of Documents And
Things” (Document No. 33-1) and “…First Set of Interrogatories To Defendant” (Document No.
33-2) on or about August 26, 2014. (Document No. 33, p.4). Defendant provided responses on
October 29, 2014. Id. see also, (Document Nos. 34 and 38).
Plaintiff now contends that Defendant “only produced 10 pages of documents” in contrast
to Plaintiff’s production of “over 1500 pages of documents.” (Document No. 33, pp.2). Plaintiff
notes that Defendant promised “to produce all non-privileged documents” relating to, inter alia,
Grayson O’s document request Nos. 1, 2, 9, and 20” . . .but “produced nothing” until April 23,
2015. (Document No. 33, pp.6-7). At that time, Defendant allegedly produced only some

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documents responsive to some discovery requests. (Document No. 33, p.7). Plaintiff further notes
that Defendant “has not produced a privilege log.” (Document No. 33, p.2, n.2).
“Plaintiff’s Memorandum…” incorporates the underlying document requests and
Defendant’s responses. (Document No. 33, pp.4-5). The undersigned will include those requests
and responses below, along with a brief analysis of what further production, if any, is required.
Document Request No. 1
1.
All documents that reflect, refer to, relate to or evidence the
conception or creation of Defendant’s marks 450ºand 450º PLUS.
Response: Defendant objects to this Request to the extent that
it seeks documents that are protected by the attorney-client
privilege and/or the work-product doctrine. Subject to, and
without waiving the foregoing general and specific objections,
Defendant agrees to produce all non-privileged documents
relating to the conception or creation of the use of terms 450º
and 450º PLUS with Defendant’s marks.
(Document No. 33, p.4).
In response to the pending motion, Defendant asserts that it has “produced color images of
the first two products that it ‘conceptualized’ when it created the Heat Shield and Hair Shield
product bearing 450° on the labels.” (Document No. 41, p.5). Defendant further agrees to produce
“color copies of all its product labels, and color copies of all of its products, bearing 450° on the
labels,” and to conduct “an additional search for internal or external communications with respect
to the design and production of its labels bearing 450°.”
Plaintiff’s “…Reply…” characterizes Defendant’s “argument” regarding this request, and
the other subject requests, as objections that are now untimely. (Document No. 42, p.6). However,
Plaintiff fails to indicate whether Defendant’s proposed supplementary response is adequate. Id.
Instead, Plaintiff simply states that Defendant “should produce all relevant non-privileged
documents.” Id.
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Under the circumstances, the undersigned directs Defendant to produce high resolution
copies of all its product labels and products bearing 450°, and any responsive internal or external
communications, as soon as possible. To the extent Defendant has responsive documents it
contends are privileged, it shall provide Plaintiff with an appropriate privilege log.
Document Request No. 2
2.
All documents that reflect, refer, relate to or evidence the
selection or adoption by Defendant of the marks 450º and 450º
PLUS.
Response: Defendant objects to this Request to the extent that
it seeks documents that are protected by the attorney-client
privilege and/or the work-product doctrine. Subject to, and
without waiving the foregoing general and specific objections,
Defendant agrees to produce all non-privileged documents
relating to the selection or adoption by Defendant of the terms
450º and 450º PLUS with Defendant’s marks.
(Document No. 33, p.5).
Defendant contends that Document Request No. 2 is virtually identical to Document
Request No. 1, and incorporates its previous argument. (Document No. 41, p.5). Plaintiff declines
to specifically address Defendant’s “argument” regarding Document Request No. 2. (Document
No. 42).
Based on the foregoing, the undersigned directs Defendant to supplement its response to
this Document Request No. 2. To the extent Defendant has responsive documents it contends are
privileged, it shall provide Plaintiff with an appropriate privilege log.
Document Request No. 9
9.
All documents that reflect, refer to, relate to or evidence any
advertising agency or public relations firm activities, completed or
planned, for goods and/or services offered or to be offered under
Defendant’s marks 450º and 405º PLUS.

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Response: Defendant objects to this Request to the extent that
it seeks documents that are protected by the attorney-client
privilege and/or the work-product doctrine. Defendant further
objects to this Request to the extent it seeks confidential,
commercially sensitive, and/or proprietary information.
Subject to, and without waiving the foregoing general and
specific objections, and upon entry of a mutually agreeable
confidentiality order, Defendant agrees to produce all nonprivileged documents relating to any advertising agency or
public relations firm activities, completed or planned, for goods
and/or services offered or to be offered using the terms 450º and
450º PLUS in connection with Defendant’s marks.
(Document No. 33, p.5).
Defendant asserts that Plaintiff’s motion should be denied as it relates to Document
Request No. 9. (Document No. 41, p.6). Defendant now contends that Plaintiff has not bothered
“explaining why such documents are even relevant,” however, Defendant’s original response
included above did not object based on relevance. Id.
Defendant notes that it has produced “three tables listing its advertisements in years 2013,
2014, and 2015, showing that Agadir advertised in 32 issues across 8 periodicals in 2013, 27 issues
across 9 periodicals in 2014, and in 26 issues across 6 periodicals in 2014,” and has “produced
three color copies of advertisements it ran in those periodicals.” Id.
In reply, Plaintiff suggests that Document Request No. 9 includes “[a]dvertising and public
relations activities,” as well as “communications between Agadir and its third party advertisers,
such as periodical editors and tradeshow promoters.” (Document No. 42, pp.6-7).
The undersigned agrees with Defendant that Document Request No. 9 specifically
addresses “advertising agency or public relation firm activities,” not Plaintiff’s current and broader
demand for documents related to advertising and public relations. However, the undersigned is
not persuaded that Defendant’s tables listing advertisements and three copies of advertisements is
an adequate response, even to a narrower reading of the request.
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As such, the undersigned directs Defendant to supplement its response to include
documents related to advertising agency and/or public relation firm activities. To the extent
Defendant has responsive documents that it contends are privileged, it shall provide Plaintiff with
redacted versions of those documents, and/or provide Plaintiff with an appropriate privilege log.
Document Request No. 20
20.
Produce all documents which identify the channels of trade
through which Defendant offers goods or services or intends to offer
goods or services in connection with 450º and 450º PLUS marks.
Response: Defendant objects to this Request to the extent that
it seeks documents that are protected by the attorney-client
privilege and/or the work-product doctrine. Defendant further
objects to this Request to the extent it seeks confidential,
commercially sensitive, and/or proprietary information.
Defendant also objects to the production of documents relating
to any commercial conduct that it “intends” to conduct in the
future but is not in fact conducting as of this date as such
information is neither relevant nor reasonably calculated to lead
to the discovery of admissible evidence. Subject to, and without
waiving the foregoing general and specific objections, and upon
entry of a mutually agreeable confidentiality order, Defendant
agrees to produce all non-privileged documents relating to the
channels of trade through which Defendant offers goods or
services in connection with any products using the terms 450º
and 450º PLUS.
(Document No. 33, p.5).
Defendant also argues that the pending motion should be denied as to Document Request
No. 20. (Document No. 41, pp.7-8). Defendant specifically asserts that it provided Plaintiff with
a spreadsheet identifying the geographic regions where its products are sold and explained that it
sells its products through distributors who primarily distribute its products to hair salons within
their geographic regions. (Document No. 41, p.7).
Plaintiff’s “…Reply…” fails to elaborate on the additional information it seeks related to
Document Request No. 20. (Document No. 42). However, the undersigned is persuaded that
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Defendant’s spreadsheet alone is unlikely to be an adequate response to this request seeking
documents that “identify channels of trade….” Plaintiff is directed to supplement its response as
appropriate, and to provide a privilege log regarding responsive documents it contends are
privileged. Plaintiff is not required to provide documents regarding where it “intends” to offer
goods or services.
The undersigned directs Defendant to immediately supplement its discovery responses as
it is able, including complying with the specific directions herein. In addition, Defendant shall
provide a privilege log(s), and if appropriate, additional written explanations for any incomplete
responses. At this time, the Court will deny without prejudice Plaintiff’s requests for hard drives
and for expenses associated with the pending motion. Plaintiff may renew such requests at a later
date if Defendant fails to comply with this Order.
CONCLUSION
IT IS, THEREFORE, ORDERED that “Plaintiff Grayson O Company’s Motion To
Compel Production of Documents Under Fed. R. Civ. P. 37” (Document No. 32) is GRANTED
in part and DENIED in part, as described herein.
IT IS FURTHER ORDERED that Defendant shall supplement its responses as directed
above, on or before August 31, 2015.
SO ORDERED.

Signed: August 19, 2015

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