Pan v. Kohl's Department Stores, Inc. et al
Filing
53
ORDER: The Court grants 43 MOTION to Compel to this extent: Discovery cutoff date is extended to 8/13/2015, to permit additional discovery to be taken relating to the reindeer snow globe. The motion is otherwise denied. Signed by Magistrate Judge Terence P. Kemp on 7/15/2015. (agm)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
Hua-Cheng Pan,
:
Plaintiff,
:
v.
:
Case No. 2:12-cv-1063
:
JUDGE ALGENON L. MARBLEY
Magistrate Judge Kemp
Kohl’s Department Stores, Inc.,
et al.,
:
Defendants.
:
ORDER
Plaintiff Hua-Cheng Pan has filed a motion to compel
discovery.
The motion is now fully briefed.
For the following
reasons, it will be granted in part and denied in part.
I.
Background
As more fully set forth in the Court’s order of September
12, 2013, (Doc. 18), which granted in part and denied in part a
motion to dismiss, the amended complaint asserted seven claims,
all arising out of a copyright obtained by Mr. Pan for a holiday
sculpture (a plastic Santa Claus figurine).
The complaint
alleges that “knock-offs” of the figurine were sold in Kohl’s
Department Stores and that they were manufactured by Defendant
Leader Light.
The Court denied the motion as it related to Count
One (copyright infringement), Count Two (violation of the Lanham
Act), Count Six (constructive trust), and Count Seven
(accounting), and granted it as to Counts Three, Four, and Five,
all of which were state law tort claims.
The parties then commenced discovery pursuant to a
scheduling order (Doc. 22) which required all fact discovery to
be completed by March 31, 2014.
After that date had passed, the
parties participated in a conference with Magistrate Judge Mark
R. Abel on January 28, 2015.
Judge Abel then issued an order
(Doc. 41) which permitted two additional depositions to be taken
on or before March 17, 2015.
The dispositive motion date was
also extended to July 31, 2015.
The motion to compel was filed on May 1, 2015.
It raised a
number of issues, many of which have been resolved by the
parties.
According to the responsive and reply memoranda, and
confirmed by the parties in a telephone conference held on July
8, 2015, only two issues remain for decision.
The Court will
discuss each of them separately in the following sections of this
order.
II.
Training Materials
This issue arises, according to Mr. Pan, from deposition
testimony given by William Barnett, one of the two witnesses whom
Judge Abel authorized Mr. Pan to depose.
Mr. Barnett explained
that Kohl’s employees receive annual training to avoid copyright
infringement issues, and he identified various training
materials, including a video, which are used in this process.
Mr. Pan’s attorney asked for these materials after the
deposition, but Kohl’s refused to produce them.
Kohl’s provided
two bases for its refusal: the documents are not relevant, and
Mr. Pan did not make a timely request for them.
Mr. Pan argues,
in his supporting memorandum, that the documents “clearly relate
to product development, marketing and research strategies
utilized by Kohl’s, and to the willfulness of the alleged
infringement.”
Doc. 43, at 10.
He does not directly address the
question of when they were first requested, but in his reply, in
an effort to counter Kohl’s assertion that he has not identified
where he asked for these documents during the discovery period,
he says this: “The attention of the Court is respectfully
directed to Exhibit A attached to the Motion to Compel providing
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the relevant discovery requests as well as the definitions page
attached to it.”
(Doc. 51, at 9).
Exhibit A to the motion to compel is a set of document
requests served on January 14, 2014.
requests.
It contains 28 numbered
The motion to compel does not identify which of these
requests calls for the production of training materials, and most
of them ask either for the production of information which Kohl’s
intends to use to support various defenses it has raised
(Requests 16-24, in particular, fall into this category) or which
relate to Kohl’s decision to purchase Mr. Pan’s Santa figurine,
its decision to stop buying that item, or its decision to
purchase the allegedly infringing product from Leader Light.
These latter documents include ones showing the date of purchase,
the terms of purchase, the number of figurines purchased and sold
(including the sales price), and communications about the design
and manufacture of the allegedly infringing product.
None of
them make any reference to training materials relating to
copyright infringement (or the avoidance of infringement), and
the Court is left to guess, based on the vagueness of the reply
brief’s reference to the document request in its entirety, which
request Mr. Pan believes such training materials are responsive
to.
In construing a document request, the Court must apply an
objective standard.
As the court said in Hager v. Graham, 267
F.R.D. 486, 493 (N.D. W.Va. 2010),
Rule 34 states that the request “must describe with
reasonable particularity each item or category of items
to be inspected.” Fed.R.Civ.P. 34(b)(1)(A). “The test
for reasonable particularity is whether the request
places the party upon ‘reasonable notice of what is
called for and what is not.’ ” Kidwiler v. Progressive
Paloverde Ins. Co., 192 F.R.D. 193, 202 (N.D.W.V.
2000). “Therefore, the party requesting the production
of documents must provide ‘sufficient information to
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enable [the party to whom the request is directed] to
identify responsive documents.’ ” Id. (citing Parsons
v. Jefferson–Pilot Corp., 141 F.R.D. 408, 412 (M.D.N.C.
1992)). This test, however, is a matter of degree
depending on the circumstances of the case. Id. n. 98;
see also, U.S. v. National Steel Corp., 26 F.R.D. 607
(S.D.Tex.1960) (stating that particularity or
preciseness of designation depends on circumstances of
each case, and the goal is that the description be
sufficient to apprise man of ordinary intelligence
which documents are required).
Under this standard, the Court agrees with Kohl’s that none of
the 28 requests found in the document request at issue reasonably
identifies copyright infringement training materials and calls
for their production.
The training, or lack of training, of
Kohl’s employees - either generally, or the ones specifically
responsible for ordering the Leader Light Santa - is not the
topic of any of the requests.
Mr. Pan argues that such materials address the issue of
willfulness.
The complaint alleges that the infringements were
either willful or reckless.
See, e.g., Doc. 9, ¶30.
Had he
wanted to see this type of material - which cannot be uncommon or
unanticipated in the retail world - he could have asked for it in
terms clear enough to put Kohl’s on notice that training
materials were being requested.
He did not.
The request made at
or after the deposition of Mr. Barnett is therefore untimely, and
the Court finds that Kohl’s is under no legal obligation to
produce these training materials, whatever their relevance.
Mr.
Pan will, of course, be free to pursue this line of questioning
at trial should the District Judge view it as relevant, but he is
not entitled to an order compelling Kohl’s to produce training
materials as part of the discovery in this case.
II.
Further Discovery about the Thumbnail Picture
The background of the second issue raised by the motion to
compel is somewhat more complex.
It relates to a very small, or
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“thumbnail” picture, of another allegedly infringing product,
apparently a reindeer.
The thumbnail picture was apparently
produced in 2014, but Mr. Pan did not ask for follow-up discovery
about it until almost a year later.
Kohl’s claims he was not
diligent in pursuing such discovery and has not shown good cause
for extending the discovery cutoff date to allow it to go
forward.
Mr. Pan views the issue differently.
His take on the reindeer photograph is best explained in the
reply brief, and particularly in the affidavit of one of his
attorneys, John Zervas, which is Exhibit P to the reply.
Mr.
Zervas avers that although the picture was produced fairly early
on, it was so small (½" by 1") that the image could not be
identified.
Even using a magnifying glass, it could not be seen
clearly, and the same was true when it was enlarged using a
digital camera, magnifying glass, and photocopier, and when
asking an independent photo service to do an enlargement.
Finally, after asking for a better picture, Mr. Pan received a
copy on May 1, 2015, which allowed him to see that it related to
a reindeer snow globe - another alleged knock-off of his design.
He also argues that it was not until a deposition taken on March
17, 2015, that it became evident that the photo might be of a
copy of one of Mr. Pan’s designs, and even then he thought it
might be a polar bear instead of a reindeer.
Taking these facts as true - and they do not appear to be
contested - the Court is not persuaded by Kohl’s argument that
Mr. Pan should have known much earlier that this thumbnail
photograph had some relevance to the case.
Further, if the
thumbnail was produced, it is not clear why either the digital
file or a larger copy was not produced at the same time.
In any
event, Mr. Pan did exercise reasonable diligence in pursing
discovery about this item, and good cause therefore exists to
extend the discovery deadline as to this single issue.
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Mr. Pan has not specifically stated how much time will be
needed to explore issues relating to the reindeer snow globe.
The Court assumes that thirty days is sufficient.
It will
therefore extend the discovery cutoff date to August 13, 2015,
for this issue only.
The Court sees no need to make any change
to the dispositive motions date.
IV.
Order
For the reasons set forth above, the Court grants the motion
to compel (Doc. 43) to this extent: the discovery cutoff date is
extended to August 13, 2015, to permit additional discovery to be
taken relating to the reindeer snow globe.
The motion is
otherwise denied.
V.
Motion to Reconsider
Any party may, within fourteen days after this Order is
filed, file and serve on the opposing party a motion for
reconsideration by a District Judge.
28 U.S.C. §636(b)(1)(A),
Rule 72(a), Fed. R. Civ. P.; Eastern Division Order No. 14-01,
pt. IV(C)(3)(a).
The motion must specifically designate the
order or part in question and the basis for any objection.
Responses to objections are due fourteen days after objections
are filed and replies by the objecting party are due seven days
thereafter.
The District Judge, upon consideration of the
motion, shall set aside any part of this Order found to be
clearly erroneous or contrary to law.
This order is in full force and effect even if a motion for
reconsideration has been filed unless it is stayed by either the
Magistrate Judge or District Judge.
S.D. Ohio L.R. 72.3.
/s/ Terence P. Kemp
United States Magistrate Judge
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