The Scooter Store, Inc. et al v. Spinlife.com, LLC

Filing 107

ORDER denying 100 Motion for Protective Order. Signed by Magistrate Judge Elizabeth Preston Deavers on 6/1/11. (jcw1)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION

THE SCOOTER STORE, INC. et al.,
Plaintiffs,
Civil Action 2:10-cv-18
Judge Algenon L. Marbley
Magistrate Judge E.A. Preston Deavers

v.

SPINLIFE.COM, LLC,
Defendant.

DISCOVERY OPINION AND ORDER
Plaintiffs, The Scooter Store, Inc., and The Scooter Store, Ltd., filed this action against
Defendant, Spinlife.com, LLC, asserting state and federal unfair competition and trademark
claims. Defendant asserts counterclaims for Sherman Act attempted monopolization and Ohio
Unfair Competition. This matter is before the Court for consideration of Defendant’s Motion for
Protective Order (ECF No. 100), Plaintiffs’ Memorandum in Opposition (ECF No. 105), and
Defendant’s Reply (ECF No. 106). For the reasons that follow, Defendant’s Motion for
Protective Order is DENIED.
I.
Pursuant to Rule 26(c) of the Federal Rules of Civil Procedure, Defendant moves the
Court for a protective order prohibiting Plaintiffs from obtaining discovery concerning
Defendant’s purchase of the phrases “scooter store” and “your scooter store” for purposes of its
internet advertising. Referencing the arguments set forth in its pending Motion for Partial

Summary Judgment, Defendant contends that Plaintiffs “cannot as a matter of law assert causes
of action based on [Defendant’s] claimed purchase and/or use of ‘scooter store’ and ‘your
scooter store.’” (Pls.’ Mem. in Opp. 1, ECF No. 105.) Defendant also submits that its need to
protect commercially-sensitive information from disclosure also justifies its proposed protective
order. Defendant concludes that the contested discovery constitutes an “unduly burdensome,
oppressive, and harassing fishing expedition.” (Id.)
Plaintiffs oppose Defendant’s Motion, characterizing it as “a back-door attempt to obtain
the functional equivalent of a partial summary judgment by improperly stifling relevant
discovery.” (Pls.’ Mem. in Opp. 1, ECF No. 105.) Plaintiffs assert that the proposed protective
order runs counter to the broad and liberal discovery regime of the Federal Rules of Civil
Procedure. Plaintiffs also maintain that Defendant’s concerns relating to the disclosure of
commercially-sensitive information are rendered inconsequential by the parties’ agreed
protective order. Plaintiffs ask the Court to deny Defendant’s Motion and permit discovery
concerning Defendant’s purchase of the internet search terms “scooter store” and “your scooter
store.”
II.
Defendant has moved for a protective order. Federal Rule of Civil Procedure 26(c)
affords district courts with discretion to issue a protective order “forbidding inquiry into certain
matters, or limiting the scope of disclosure or discovery to certain matters” to prevent
“annoyance, embarrassment, oppression, or undue burden or expense.” Fed. R. Civ. P.
26(c)(1)(D). Determining the scope of discovery is within this Court’s discretion. Bush v.
Dictaphone Corp., 161 F.3d 363, 367 (6th Cir. 1998). As the United States Court of Appeals for
the Sixth Circuit has recognized, “[t]he scope of discovery under the Federal Rules of Civil
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Procedure is traditionally quite broad.” Lewis v. ACB Bus. Serv., Inc., 135 F.3d 389, 402 (6th
Cir. 1998). In particular, discovery is more liberal than the trial setting, as Rule 26(b) allows any
“line of interrogation [that] is reasonably calculated to lead to the discovery of admissible
evidence.” Id. (quoting Mellon v. Cooper-Jarrett, Inc., 424 F.2d 499, 501 (6th Cir. 1970)). In
other terms, the Court construes discovery under Rule 26 “broadly to encompass any matter that
bears on, or that reasonably could lead to other matter that could bear on, any issue that is or may
be in the case.” Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978). In considering
the scope of discovery, the Court may balance Plaintiffs’ “right to discovery with the need to
prevent ‘fishing expeditions.’” Conti v. Am. Axle and Mfg., Inc., 326 Fed. Appx. 900, 907 (6th
Cir. 2009) (quoting Bush, 161 F.3d at 367).
III.
In the instant case, the Court finds that discovery concerning Defendant’s purchase of the
phrases “scooter store” and “your scooter store” for purposes of its internet advertising “bears
on” or “reasonably could lead to other matter that could bear on” issues in this action. See
Oppenheimer, 437 U.S. at 351. A fair reading of Defendant’s Motion and Reply reveal that its
only basis for challenging this conclusion is its belief that it will obtain a favorable ruling on its
pending Motion for Partial Summary Judgment. To be clear, Defendant has moved the Court for
partial summary judgment on the ground that Plaintiffs have no trademark or other rights “in the
unregistered, generic phrase ‘scooter store’ or other phrases containing ‘scooter store’ such as
‘your scooter store’ . . . .” (Defs.’ Mot. for Partial Summ J. 1, ECF No. 99.) Then, Defendant
moved for a protective order seeking to prohibit discovery related to the purchase of these
phrases because Plaintiffs “undisputedly [do] not have any trademark or other rights to these
unregistered, generic phrases . . . .” (Def.’s Mot. for Prot. Order 1, ECF No. 100.) Further, the
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majority of Defendant’s Reply is dedicated to arguing the merits of its underlying assertion that
Plaintiffs cannot have trademarks in these phrases, instead of addressing the chief issue for
purposes of the instant motion, namely whether the purchase of the terms “scooter store” and
“your scooter store” are relevant under Rule 26(b). Indeed, the Court cannot grant Defendant’s
request to prohibit discovery on these matters without delving into the merits of the claims that
are subject to its Motion for Partial Summary Judgment. Whether or not Plaintiffs’ claims
involving these terms survive summary judgment, however, has no bearing on whether the
discovery Plaintiffs seek is relevant, particularly viewed in light of a party’s broad rights to
discovery under Rule 26. See Fed. R. Civ. P. 26(b). Here, it is clear from Plaintiffs’ Amended
Complaint and Defendant’s Motion for Partial Summary Judgment that the subject discovery is
relevant to Plaintiffs’ claims, which is all that Rule 26(b) requires. (See, e.g., Am. Compl. ¶¶
66–68, ECF No. 25-8.) The Court, therefore, rejects Defendant’s assertions that the contested
discovery is not relevant.
Additionally, the Court is unpersuaded by Defendant’s arguments relating to the sensitive
nature of the subject discovery. The parties can address any potentially sensitive information in
accordance with their agreed protective order. Indeed, Defendant acknowledges as much in its
Motion: “[S]uch testimony could be properly handled in accordance with the protective order
and designated ‘attorneys’ eyes only . . . . ’” (Def.’s Mot. to Compel 9, ECF No. 100.)
IV.
For the reasons set forth above, Defendant’s Motion for a Protective Order is DENIED.
(ECF No. 100.) Accordingly, Plaintiffs may obtain deposition discovery concerning
Defendant’s purchase of the internet search terms “scooter store” and “your scooter store.”

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IT IS SO ORDERED.

Date: June 1, 2011

/s/ Elizabeth A. Preston Deavers
Elizabeth A. Preston Deavers
United States Magistrate Judge

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