Moore et al v. Weinstein Company, LLC et al

Filing 373

MEMORANDUM OF THE COURT. Signed by District Judge Aleta A. Trauger on 5/11/12. (rd)

UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF TENNESSEE
NASHVILLE DIVISION
SAMUEL DAVID MOORE, JOYCE ELLEN
MOORE, and THE SJM TRUST,
Plaintiffs,
v.
THE WEINSTEIN COMPANY, LLC, doing
business as DIMENSION FILMS; METROGOLDWYN-MAYER STUDIOS, INC.;
GENIUS PRODUCTS, LLC; and CONCORD
MUSIC GROUP, INC.
Defendant.

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Case No. 3:09-CV-00166
Judge Aleta A. Trauger
Magistrate Judge Brown

MEMORANDUM

Pending before the court is the plaintiffs’ Motion for Review (Docket No. 348), to which
the defendants have filed a Response in opposition (Docket No. 361). For the reasons stated
herein, the Motion for Review will be granted in part and denied in part.
BACKGROUND
I.

Overview
Plaintiff Samuel David Moore, along with Dave Prater, was part of the popular singing

duo, “Sam & Dave,” which released the songs “Soul Man” and “Hold On’, I’m Comin’” in the
1960's. Sam & Dave ceased performing together by the 1980's and, although Prater died in
1988, Sam Moore continues to perform and make celebrity appearances, at times holding himself
out as “the Soul Man,” “The Legendary Soul Man,” or some variation thereof. Sam Moore, his
wife Joyce Moore, and The SJM Trust (collectively, “plaintiffs”) claim to possess intellectual
property rights in several unregistered trademarks, including the terms “Soul Man,” “The
1

Legendary Soul Man,” and “The Original Soul Man,” each of which invoke the Sam & Dave
song and albums that utilized the term “Soul Man.”
In 2008, defendant The Weinstein Company LLC, d/b/a Dimension Films (“TWC”)
released a feature film called Soul Men, starring Samuel L. Jackson and Bernie Mac. Broadly,
the movie concerns a pair of estranged soul music backup singers, who reunite to take a crosscountry road trip to attend the funeral of their former lead singer. Pursuant to contractual
agreements with TWC and/or its affiliates, defendant Metro-Goldwyn Mayer Studios, Inc.
distributed Soul Men in theaters nationwide, defendant Genius Products, LLC distributed a DVD
version of the movie (following its brief theatrical run), and Concord Music Group, Inc.
distributed the Soul Men Original Motion Picture Soundtrack.
In this lawsuit, the plaintiffs broadly allege that the defendants violated their intellectual
property, publicity, and/or privacy rights by producing and/or distributing Soul Men and its
soundtrack. They allege, inter alia, that Soul Men was in fact based on the history of “Sam &
Dave” and painted them in a false light, sought to capitalize on the alleged “Soul Man”-related
marks without permission, improperly competed with certain of Sam Moore’s works, and
otherwise diluted the plaintiffs’ interests in the alleged marks.
In the First Amended Complaint, the plaintiffs alleged that Joyce Moore was a “co-owner
of the rights referenced” in the First Amended Complaint, that “Plaintiff SJM Trust is a
Tennessee Irrevocable Trust,” and that The SJM Trust “is the ultimate beneficiary of the
trademarks and the rights that flow through and from the Moores.” (Docket No. 146 (“First Am.
Compl.”) ¶¶ 1 and 23.) The plaintiffs also alleged that they collectively own the intellectual
property rights being asserted. (See, e.g., First. Am. ¶¶ 76 (“Despite actual knowledge of the

2

Plaintiffs’ request to not infringe on their rights, the Weinsteins proceeded ahead without ever
obtaining Plaintiffs’ consent or a license.”); 116 (“Defendants’ SOUL MEN is identical in
appearance, sound, and meaning to the SOUL MEN mark owned by the Plaintiffs, and is highly
similar in appearance, sound, and meaning to the SOUL MEN mark owned by the Plaintiffs.”);
and 126 (referencing confusion generated by defendants’ alleged “continuing use of Plaintiffs’
marks”) (all emphases added).) Furthermore, the plaintiffs alleged that they had continuously
utilized the “Soul Man”-related marks in connection with Sam Moore’s performances. (See,
e.g., id. ¶ 113) (“SOUL MAN has, without interruption, functioned as a mark for the goods and
services of Sam Moore . . . .”)1
II.

Motions Presented for Review
During the course of a remarkably contentious discovery process, the Magistrate Judge

made the following four decisions that are the subject of the Motion for Review:
(1)

In a February 2, 2012 Order (Docket No. 323 (“2/2/12 MJ Order”))
concerning the defendants’ pending Application for Fees and pending
Motion for Sanctions,2 the Magistrate Judge:

1

The plaintiffs’ original Complaint (Docket No. 1) contained, in relevant part, essentially
the same allegations.
2

The 2/2/12 MJ Order reflected the culmination of a series of rulings stretching back to
early 2011, when the Magistrate Judge considered the defendants’ initial Motion to Compel
(Docket No. 180), which had been filed on March 23, 2011. In a March 30, 2011 Order denying
the Motion to Compel without prejudice (Docket No. 183), the Magistrate Judge expressed
frustration with the pace of discovery efforts to that point and granted the defendants leave to file
a renewed Motion to Compel no sooner than 14 days from the date of the order. After the
plaintiffs continued to resist their discovery obligations, the defendants accordingly filed a
Renewed Motion to Compel on June 21, 2011 (Docket No. 202), which included a request for
attorney’s fees. In an August 3, 2011 Order ( (Docket No. 247 (“8/3/11 MJ Order”)), the
Magistrate Judge granted the Renewed Motion to Compel, granted the associated request for
fees, and ordered the defendants to file an Application for Fees. The defendants accordingly
filed an Application for Fees (Docket No. 255), which the plaintiffs opposed (Docket No. 257).
3

(a)

(b)

(2)

ordered the plaintiffs to pay the defendants $17,513.50 in
attorney’s fees as a discovery sanction; and
granted the Motion for Sanctions and accordingly recommended
that: (1) the defendants “are entitled to an adverse inference with
regard to Plaintiffs’ claim that they received income from the
intellectual property asserted in the lawsuit”; and (2) the plaintiffs
be precluded from relying on any records not produced as of the
date of the Order (i.e., February 2, 2012);

In a February 3, 2012 Order (Docket No. 324 (“2/3/12 MJ Order”))
concerning the plaintiffs’ pending Motion to Amend the First Amended
Complaint and Renewed Motion to Compel Reclassification of
Confidentiality Designations and Production of Non-Redacted Documents
(“Motion to Compel Reclassification/Non-Redacted Documents”),3 the
Magistrate Judge:
(a)

Denied the Motion to Amend the First Amended Complaint; and

(b)

Granted in part and denied in part the Motion to Compel
Reclassification/Non-Redacted Documents.

While the Application for Fees was pending, the defendants also filed a Motion for Sanctions
(Docket No. 259) related to the plaintiffs’ continuing discovery violations, which the plaintiffs
opposed (Docket No. 271), and the defendants filed a Reply (Docket No. 276). The 2/2/12 MJ
Order resolved both the Application for Fees and the Motion for Sanctions.
3

The 2/3/12 Order similarly resolved a long-pending dispute between the parties. On
June 28, 2011, the plaintiffs filed an initial Motion to Compel Reclassification/Non-Redacted
Documents (Docket No. 216), which the defendants opposed (Docket No. 232), and the plaintiffs
filed a Reply (Docket No. 246). In an August 17, 2011 Order, the Magistrate Judge denied the
plaintiffs’ Motion to Compel Reclassification/Non-Redacted Documents. (See Docket No. 248
(initial order) and 250 (clarification of Order).) After the close of discovery, the plaintiffs filed a
Renewed Motion to Compel Reclassification/Non-Redacted Documents (Docket No. 279),
which the defendants opposed (Docket No. 291).
On November 22, 2011 – after the close of fact discovery – the plaintiffs also filed a
Motion for Leave to Amend the First Amended Complaint (Docket No. 277), which the
defendants opposed (Docket No. 284), and the plaintiffs filed a Reply (Docket No. 290). The
2/3/12 MJ Order resolved both the Motion to Amend and the Renewed Motion to Compel
Reclassification/Non-Redacted Documents.
4

Within 14 days of each of these orders, the plaintiffs filed a Motion for Reconsideration and
Clarification of the 2/2/12 MJ Order (Docket No. 330) and a Motion for Reconsideration of the
2/3/12 MJ Order (Docket No. 331). On February 22, 2012, the Magistrate Judge issued a
consolidated order denying both motions. (Docket No. 333 (“2/22/12 MJ Order Denying
Reconsideration”).)
On March 7, 2012, 14 days from the date of denial of the 2/22/12 MJ Order Denying
Reconsideration, the plaintiffs filed the instant Motion for Review, which seeks relief from the
Magistrate Judge’s refusal to reconsider his previous decisions concerning the Application for
Fees, the defendants’ Renewed Motion to Compel, the plaintiffs’ Motion to Amend, and the
plaintiffs’ Renewed Motion to Compel Reclassification/Non-Redacted Documents.
Although the plaintiffs have characterized the instant motion as a “Motion for Review”
pursuant to Rule 72 and Local Rule 72.02(b), the court is concerned that the plaintiffs reflexively
sought “reconsideration” by the Magistrate Judge of his 2/2/12 and 2/3/12 Orders in the first
instance, thereby affording themselves “two bites at the apple” and an extra 14 days to seek
review. Nevertheless, as described herein, one of the arguments raised in the Motions for
Reconsideration is, in part, meritorious. Also, aside from pointing out the peculiar procedural
posture of the instant motion, the defendants do not request denial of the Motion for Review on
this basis and instead address the underlying merits of the 2/2/12 MJ Order, the 2/3/12 MJ Order,
and the 2/22/12 MJ Order Denying Reconsideration. Under these circumstances, the court will
address the merits of the arguments raised by the plaintiffs in support of their Motion for
Review, to the extent those arguments were properly preserved below.
STANDARD OF REVIEW

5

Under Fed. R. Civ. P. 72(a) and 28 U.S.C. § 636(b), a district court may modify a
Magistrate Judge’s ruling on non-dispositive preliminary matters only where that ruling is
“clearly erroneous or contrary to law.” This is a “limited standard of review.” Massey v. City of
Ferndale, 7 F.3d 506, 509 (6th Cir. 1993). A ruling is clearly erroneous “where it is against the
clear weight of the evidence or where the court is of the definite and firm conviction that a
mistake has been made.” Galbraith v. N. Telecom, Inc., 944 F.2d 275, 281 (6th Cir. 1991)
(internal citations omitted). The test is “not whether the finding is the best or only conclusion
that can be drawn from the evidence, or whether it is the one the reviewing court would draw.
Rather the test is whether there is evidence in the record to support the lower court’s finding, and
whether its construction of the evidence is a reasonable one.” Heights Cmt’y Congress v. Hilltop
Realty, Inc., 774 F.2d 135, 140 (6th Cir. 1985).
ANALYSIS
I.

Fee Award
In their Renewed Motion to Compel, the defendants identified various discovery abuses

by the plaintiffs, including, inter alia, their continued failure to provide meaningful information
regarding alleged licensing and enforcement efforts, their damages, and the nature of The SJM
Trust. The defendants demanded certain discovery sanctions and/or an award of reasonable
attorney’s fees pursuant to Fed. R. Civ. P. 37(a)(5)(a) and 37(c)(1). In granting the Renewed
Motion to Compel (Docket No. 247), the Magistrate Judge admonished the plaintiffs for
“drag[ging] their feet and [fail]ing to respond to document requests,” finding that “enough is
enough.” (Docket No. 247 at p. 17.) The Magistrate Judge found that, as the defendants had
argued, the plaintiffs had continued to provide evasive/non-responsive information to the

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defendants on relevant issues (see, e.g., id. at pp. 14 (as to interrogatories regarding licensing and
enforcement efforts, “Plaintiffs’ responses are not responsive to the requests . . . .”)) and had
failed to comply with his previous discovery orders. (Id. at p. 19.) In particular, as to discovery
concerning The SJM Trust, he found that the plaintiffs’ foot-dragging was “either due to bad
faith, fault, or a continued search for a theory that does not exist,” and he was “very concerned
that The SJM Trust has no claims in this lawsuit . . . .” (Id. at p. 14.) As a sanction for the
plaintiffs’ continued discovery abuses, the Magistrate Judge found that the defendants were
entitled to fees pursuant to Rule 37(a)(5)(A). He explicitly warned the plaintiffs that continued
failure to participate in discovery in violation of the court’s discovery orders would lead to
additional sanctions.4 Having granted the Motion to Compel, the Magistrate Judge ordered the
defendants to file an Application for Fees with supporting documentation.
The defendants accordingly submitted an Application for Fees supported by the
Declaration of Robb Harvey (Docket No. 256), which attached billing records reflecting
approximately 68 hours of work allegedly “incurred in connection with their Renewed Motion to
Compel” (id. at ¶ 4 and Ex. 1) and 25 hours of work preparing the Application itself (id. at ¶ 4
and Ex. 2). The defendants’ Application requested reimbursement at the following rates: Robb
Harvey - $400; Heather Hubbard - $270; Emily Zibart - $210; David C. Scott - $200; and Jeana
Clark (paralegal) - $160. With respect to time spent on the Renewed Motion to Compel, the

4

See, e.g., 8/3/11 Order at pp. 14-15 (issuing a “final warning” to The SJM Trust that
continued failure to produce records relating to alleged royalties, licensing, and enforcement
would lead to a recommendation of dismissal), 18 (stating that, pursuant to Fed. R. Civ. P.
37(b)(2)(A)(ii), plaintiffs will be precluded from relying on documents not produced by August
31, 2011), and 19 (stating that, if plaintiffs continued to refuse to provide proper deposition dates
for the trustees, The SJM Trust could be dismissed pursuant to Fed. R. Civ. P. 37(b)(2)(A)(v)).
7

application listed time entries between April 11, 2011 and July 15, 2011, the date on which the
defendants filed their Reply Brief concerning the Renewed Motion to Compel.
The plaintiffs opposed the requested fee award, essentially arguing that (a) no fees should
have been awarded in the first place;5 (b) the total reimbursable hours should be reduced because
the time spent was excessive, redundant, and/or not directly related to the Renewed Motion to
Compel; (c) the billing entries were insufficiently detailed and/or improperly reflected “block
billing”; and/or (d) the rates demanded were unreasonable. The plaintiffs did not file itemized
objections to specific time entries. Instead, they identified examples of the types of allegedly
improper billing entries and left the Magistrate Judge to extrapolate from those examples to the
remainder of the billing entries. Also, the plaintiffs did not state that time entries for any
particular month should be summarily disallowed.
The Magistrate Judge granted the defendants’ Application, but sustained some of the
plaintiffs’ objections, as follows: he disallowed three time entries totaling 2.9 hours as
insufficiently detailed and/or reflecting work that would have been performed regardless (see
2/2/12 MJ Order at p. 2, n.2),6 reduced the reimbursable attorney time for preparing the
Application to just two hours (rather than the approximately 25 hours requested), and, pursuant
this court’s analogous decision in Cummings, Inc. v. BP Prods. N.A., Inc., No. 3:06-0890, 3:070834, 2010 WL 796825, at *4 n.3 (M.D. Tenn. Mar. 3, 2010), reduced the hourly rates for

5

The Magistrate Judge did not intend for the parties to reargue this point, but both parties
did so regardless. The Magistrate Judge summarily refused to reconsider his prior decision to
award fees. (2/2/12 MJ Order at p. 2.)
6

For example, the Magistrate Judge disallowed a May 9, 2011 Zibart entry reflecting time
spent “conduct[ing] preliminary review of additional documents produced by Plaintiffs in order
to determine document requests for which no response has been provided.”
8

Hubbard to $255, Zibart to $200, and Scott to $180.7 After factoring in these reductions, the
Magistrate Judge ordered the plaintiffs to pay the defendants $17,513.50.8
B.

Challenge to the denial of Reconsideration of the Fee Application.

The plaintiffs challenge the Magistrate Judge’s refusal to reconsider his decision
concerning the Application for Fees on two grounds: (1) the fees should not have been awarded
in the first place; and (2) the refusal to disallow additional time entries manifested clear error.
1.

Whether the Fee Sanction Was Justified

As to the first argument, it is both untimely and entirely without merit. First, the
Magistrate Judge granted the defendants’ request for fees on August 3, 2011. Although the
plaintiffs have sought to re-argue this issue to the Magistrate Judge multiple times (see Docket
No. 257 at pp. 2-8;9 Docket No. 331 at p. 2, n.1), they did not seek this court’s review of the
underlying 8/3/11 MJ Order for nearly nine months. Thus, the request for relief from that order

7

It appears that the defendants only sought reimbursement for time spent by its paralegal
relative to preparing the Application for Fees itself. Because the Magistrate Judge ultimately
reduced the award relative to the Application for Fees to just two total hours at an aggregated
rate, the Magistrate Judge did not need to address the reasonableness of awarding $160 per hour
for paralegal work. The court notes that it would not typically reimburse a party for paralegal
work at a rate of $160 per hour.
8

The Magistrate Judge calculated that the defendants were entitled to reimbursement for
65.5 reimbursable hours associated with the Renewed Motion to Compel, which amounted to
$16,995.50 after applying the rates for each attorney to the associated hours worked, for an
aggregated rate of approximately $259 per hour (i.e., $16,995.50 divided by 65.5). With respect
to the two hours of reimbursable time preparing the Application for Fees, the Magistrate Judge
applied the aggregated rate of $259, for a total of $518.
9

Incredibly, in opposing the Application for Fees, the plaintiffs argued to the Magistrate
Judge that they “were not sufficiently warned that their discovery responses could lead to
sanctions.” (Docket No. 257 at pp. 6.) Of course, even absent specific warnings from the court,
the plaintiffs were under a continuing obligation to provide timely, accurate, and complete
responses to discovery.
9

is plainly untimely.
Regardless, having reviewed the record in detail, the court agrees with the merits of the
8/3/11 MJ Order, which properly sanctioned the plaintiffs for refusing to comply with their
discovery obligations. In particular, the plaintiffs’ allegations that The SJM Trust had an
ownership interest in the alleged intellectual property rights at issue appear to have been false,10
the plaintiffs had disobeyed a court order to produce tax returns (or to “stop beating around the
bush” and state that no such records existed) (see Docket No. 188, 4/27/11 MJ Order), and the
plaintiffs still had not provided complete responses to discovery requests that had been pending
for nearly a year. The plaintiffs had also engaged in a host of other discovery abuses, including
refusing to provide contact information for individuals identified in their Rule 26 initial
disclosures, failing to provide Electronically Stored Information (“ESI”) in the format specified
by the Case Management Order, continuing to provide non-responsive answers to requests
relating to licensing and enforcement efforts, generally “dragging their feet” on producing
records, and engaging in “constant flip-flopping” regarding the status of the supposed Trustees in
the case, leaving the Magistrate Judge “at a loss for words.” (See 8/3/11 MJ Order at p. 18.) As
confirmed by later discovery, the plaintiffs were essentially leading the defendants and the court
in circles for information concerning their alleged branding/licensing efforts, enforcement
efforts, and alleged damages.
Under these circumstances, the Magistrate Judge properly found that the defendants were

10

Furthermore, although the Complaint stated that The SJM Trust was a “Tennessee
Irrevocable Trust,” the face of the trust agreement states that it is, in fact, an Arizona irrevocable
trust. Because The SJM Trust was the only alleged Tennessee resident party, that fact is
significant as to jurisdiction and choice of law.
10

entitled to fees pursuant to Rule 37(a)(5)(a), which provides that, if a motion to compel is
granted, the court may award “reasonable expenses incurred in making the motion, including
attorney’s fees.”11
2.

Whether the Award of Fees Was Properly Calculated

In their Motion for Review, the plaintiffs challenge the assessment of hours relative to
the Renewed Motion to Compel, but not the reduced rates applied by the Magistrate Judge, the
reduced award of two hours of attorney time relative to the Application for Fees, or the manner
in which the Magistrate Judge calculated the fees associated with preparing the Application.12
As an initial matter, two of the plaintiffs’ arguments in the Motion for Review were not
properly preserved. First, the plaintiffs argue that some of the time entries reflect time spent
dealing with defendants’ discovery deficiencies, instead of, or in addition to, time spent on
plaintiffs’ deficiencies. Second, the plaintiffs argue that it was per se inappropriate to allow any
time entries reflecting work performed “nearly three months” before the Renewed Motion to
Compel was filed. The plaintiffs did not raise either of these arguments in opposing the
Application for Fees, even though all of the relevant information was available to them at the
time. Therefore, these arguments were not properly preserved and will be summarily rejected.
However, the court will consider whether any fees, including fees for time spent several months
before the Renewed Motion to Compel was filed, should have been disallowed on properly

11

With respect to the Renewed Motion to Compel, it appears that the Magistrate Judge
could have issued sanctions pursuant to Fed. R. Civ. P. 37(b)(2), which provides broad sanctions
for failing to comply with discovery orders, but he did not do so.
12

As the defendants point out, they could have sought review of these aspects of the
Magistrate Judge’s decision, which significantly reduced the total fee award, but did not.
11

preserved grounds, such as lack of relatedness to the Renewed Motion to Compel.
Having considered the plaintiffs’ objections, the court agrees with the plaintiffs that,
relative to a handful of time entries, the Magistrate Judge should have reconsidered his decision
and disallowed additional entries. First, it was inconsistent for the Magistrate Judge to disallow
the May 9, 2011 Zibart entry without disallowing three other entries that similarly reflected work
that would have been performed regardless of the plaintiffs’ discovery deficiencies. See 5/9/11
Hubbard - 1.0 (“Review additional discovery response letter from A. Lutzker and coordinate
efforts to upload and review documents and analyze revised discovery responses”); 5/9/11
Hubbard - 1.1 (“review additional documents and responses to document requests produced by
Plaintiffs”); 5/10/11 Zibart - 0.7 (“Review plaintiffs’ supplemental discovery responses to
requests for documents and identify issues therein”). Second, two entries do not contain
sufficient detail to demonstrate relatedness to the plaintiffs’ discovery deficiencies necessitating
the Renewed Motion to Compel. See 4/26/11 Hubbard - 0.2 (“follow up on outstanding
discovery”); 5/26/11 Harvey - 1.9 (“Work on discovery dispute issues.”)
As to the remaining time entries, the court finds the plaintiffs’ objections to be without
merit. First, the defendants provided itemized billing entries, not block billing. Second, except
as noted above, it was not clear error for the Magistrate Judge to find that none of the challenged
entries reflected redundant and/or duplicative entries. Third, it was not clear error for the
Magistrate Judge to allow entries for time spent on tasks other than specifically researching and
drafting the Renewed Motion to Compel. First, the plaintiffs have not shown that only hours
spent on researching and drafting a Motion to Compel constitute time spent “making the motion”
for purposes of Rule 37(a)(5)(A), a position for which they provide no case law authority. To

12

the contrary, district courts within the Sixth Circuit have found that, under appropriate
circumstances, fees for time spent on certain activities other than researching and drafting the
motion are recoverable under Rule 37(a)(5)(A), because good faith efforts to identify and
resolve discovery disputes are a necessary precondition to recovering expenses and attorney’s
fees for an opposing party’s discovery failures.13
Furthermore, here the Magistrate Judge originally deferred decision on the issues raised
by the original Motion to Compel, presumably in the hope that the plaintiffs would honor their
discovery obligations without further court intervention. Had the plaintiffs honored those
obligations, the issue would not have come before this court again. Instead, the plaintiffs chose
to engage in a campaign of delay and obfuscation, requiring the defendants to expend significant
good-faith efforts “policing” the plaintiffs before being forced to renew the Motion to Compel to
the obtain the long-requested discovery. Accordingly, it was not clear error for the Magistrate
Judge to find that, under the exceptional circumstances presented by this case, efforts undertaken
with respect to the initial Motion to Compel and/or as a necessary precursor to the Renewed
Motion to Compel were properly reimbursable pursuant to Rule 37(a)(5)(a).

13

See J4 Promotions, Inc. v. Splash Dogs, LLC, et al., No. 2:09-cv-136, 2010 WL
2162901, at *3-*4 (S.D. Ohio May 25, 2010) (reimbursing plaintiff for “hours [plaintiff’s
counsel] spent on efforts to obtain the requested discovery before he filed the motion to
compel”); JP Morgan Chase Bank, N.A. v. Neovi, Inc., No. 2:06-CV-0095, 2007 WL 781648, at
*4 (S.D. Ohio Mar. 12, 2007) (awarding fees related to attempts to obtain supplemental
responses to interrogatories without judicial involvement, because engaging in these good-faith
efforts was a necessary precondition to recovering its expenses and therefore constituted the
“reasonable expenses incurred in making the motion” under Rule 37(a)(5)); see also Local Rule
37.01(b)(3) (“Counsel for party moving to compel discovery . . . shall file with the Court . . . a
statement certifying that the he has conferred with counsel for the opposing party in a good faith
effort to resolve by agreement the issues raised . . . .”); Docket No. 201 at p. 2 (Local Rule
37.01(b) Certification in support of Renewed Motion to Compel).
13

In sum, the court will disallow four additional time entries totaling $1,486.50,14 but will
uphold the Magistrate Judge’s decision regarding the Application for Fees in all other respects.
This reduces the recovery relative to the Renewed to Motion to Compel from $16,995.50 to
$15,509.00. Because this adjustment reduces the aggregate hourly rate from $259 to $256 per
hour, the court will also reduce the award for preparing the Application for Fees itself from $518
to $512. Accordingly, the plaintiffs will be ordered to pay the defendants $16,021.00.
II.

Rule 37(b)(2)(C) Sanctions
A.

Magistrate’s Judge Recommendations Regarding Sanctions

In their Motion for Sanctions, the defendants argued that, in violation of the court’s
orders, the plaintiffs had failed to search for and produce all responsive records by a courtordered September 1, 2011 deadline and had improperly continued to withhold tax returns and
accounting records, among various other discovery deficiencies. In particular, the plaintiffs still
had not produced any tax returns or complete accounting records to show income and expenses
related to the alleged trademarks, rights of publicity, appearances, or other rights asserted in the
lawsuit.15 The defendants further argued that the plaintiffs had simply failed to provide, by
interrogatory response or deposition testimony, any indication of what they were seeking in

14

The court calculates the $1,486.50 deduction as follows: 1.9 Harvey hours @ $400/hour
= $760; 2.3 Hubbard hours @ $255/hour = $586.50; and 0.7 Zibart hours @ $200/hour = $140.
15

Furthermore, on September 15, 2011 – when Joyce Moore finally appeared for
deposition as The SJM Trust representative – Joyce Moore testified that The SJM Trust had
never in fact received any income on Sam Moore’s behalf. She asserted that any such income
had, instead, been deposited in their personal checking accounts but acknowledged that she and
her husband had refused to produce their financial records in full because of their purported
“absolute right of privacy” in those records and the lack of “a proper hearing”on the issue.
14

damages, what that calculation might incorporate, or how it would be itemized.16
Among other forms of relief, the defendants requested that the court impose one or more
of the following sanctions: (1) preclude the plaintiffs from presenting any evidence regarding
damages or, alternatively, draw an adverse inference that the plaintiffs had never received
income for, or related to, any purported trademarks, rights of publicity, or other rights asserted in
the lawsuit; (2) preclude the plaintiffs from relying on documents not produced; (3) preclude the
plaintiffs from relying on ESI; and/or (4) award reasonable attorney’s fees to the defendants for
bringing the motion.
In the 2/2/12 MJ Order, the Magistrate Judge found as follows:
Plaintiffs have been repeatedly warned of the consequences for missing deadlines
and failure to produce documents. Plaintiffs failed to comply with the August 31,
2011 deadline in the Magistrate Judge’s previous Order (Docket Entry 247) and
informed Defendants they had done their “best” but intended to reserve their right
to rely on documents discovered after the deadline. Ms. Moore informed
Defendants at her deposition that she had not searched all her files, more than two
years into the litigation. Plaintiffs have repeatedly failed to produce ESI.
Plaintiffs have also failed to produce their tax returns to Defendants, as ordered
by the Magistrate Judge. For these reasons, the Magistrate Judge believes that the
penalties above are appropriate and necessary.
(Id. at pp. 3-4.) As a sanction for this conduct, he recommended that (1) the defendants “are
entitled to an adverse inference with regard to Plaintiffs’ claim that they received income from
the intellectual property asserted in the lawsuit” (reflecting the lesser of the two sanctions

16

The defendants also identified various other discovery abuses. For instance, in their
Rule 26 disclosures, the plaintiffs had purported to identify an unspecified agent at “Buddy Lee
Attractions” as possessing relevant information. After the court ordered the plaintiffs to provide
contact information for each witness – which the plaintiffs had improperly refused to provide –
the plaintiffs identified Buddy Lee himself as the relevant agent at Buddy Lee Attractions.
However, Buddy Lee had actually been dead for nearly 10 years. As the defendants pointed out,
this reflected “just another example of the casual disregard Plaintiffs have for the Court’s
Order[s].” (Docket No. 260 at p. 6.)
15

requested by the defendants); and (2) the plaintiffs be precluded from relying on any records not
yet produced. (Id.) However, he did not grant the defendants’ additional request for attorney’s
fees.
The plaintiffs did not object to the second recommendation (relating to reliance on
certain records), which the court will therefore adopt without further analysis. However, the
plaintiffs initially moved for “clarification” of the adverse inference recommendation, arguing
that it was “overbroad” because (1) Sam Moore and Joyce Moore never possessed responsive tax
records to produce in the first place; and/or (2) an adverse inference regarding “intellectual
property” would encompass Sam Moore’s publicity rights, which plaintiffs contended had
“absolutely no nexus” to the failure to produce tax returns. (Id. at p. 8.) The Magistrate Judge
denied the motion, finding that his recommendation was clear. (Docket No. 330.)
B.

Challenges to the Rule 37(b)(2)(C) Sanctions in the Motion for Review

In the Motion for Review, the plaintiffs argue that the Magistrate Judge committed clear
error by refusing to reconsider and/or clarify his previous decision. The plaintiffs essentially
reiterate on review the arguments that they made in their Motion for Reconsideration.
The court finds the plaintiffs’ arguments to be without merit. The record – which this
court has reviewed in detail – indicates that the plaintiffs essentially played a game of “hide the
ball” with respect to their licensing efforts, enforcement efforts, and alleged damages. They
provided evasive discovery responses, refused to produce responsive records or to declare that
none existed, appear to have made affirmative misrepresentations in the Complaint/First
Amended Complaint and in discovery about the The SJM Trust, and have engaged in

16

unreasonable word-smithing of the Magistrate Judge’s Orders,17 apparently in an effort to avoid
producing otherwise responsive records or to avoid stating that none existed in the first place.
Furthermore, at deposition, Joyce Moore testified that personal accounts reflecting income from
Sam Moore’s appearances – at which he claims he held himself out as the “Soul Man” or some
variation thereof – were incomplete, asserting baseless justifications for refusing to produce
those records. These practices are unacceptable and merited sanctions.
As to the argument that the sanction related to “intellectual property” is overbroad, the
court disagrees. First, in their Response to the Motion for Sanctions below, the plaintiffs did not
argue that the sanctions suggested by the defendants, if imposed, should be limited to
“trademark” licensing income. Therefore, the plaintiffs did not properly preserve this argument
for review. Second, even addressing the merits of the plaintiffs’ argument, the court finds no
indication of clear error. The plaintiffs essentially complain that the recommended adverse
inference “could be understood to mean Sam Moore’s income from performances and/or his
publicity rights.” (Docket No. 348 at p. 6.) The court interprets the Magistrate Judge’s order
precisely to have that scope: the sanction encompassing “intellectual property”reflects one of the
(lesser) sanctions requested by the defendants in their Motion for Sanctions, which the
Magistrate Judge considered and granted.18 The plaintiffs engaged in vexatious and dilatory

17

For example, following the Magistrate Judge 8/3/11 Order, the plaintiffs moved for
clarification of that Order. In an August 25, 2011 Order concerning the plaintiffs’ motion, the
Magistrate Judge expressed frustration with the plaintiffs, stating that, “[w]ith all due respect, the
Plaintiffs continue to tilt at the windmill rather than move forward with their case.” (Docket No.
250 at p. 2.)
18

As defendants point out, the Magistrate Judge could have imposed one of the more
severe sanctions requested by the defendants, but did not do so.
17

discovery tactics with respect to their licensing efforts, enforcement efforts, and damages claims,
including disobeying court orders, for which plaintiffs must suffer adverse consequences.
Furthermore, the plaintiffs myopically focus on their failure to produce tax returns, even though
it is apparent that the Magistrate Judge sanctioned the plaintiffs for their continued failure to
obey a host of discovery obligations and court orders (including the CMO), not just their failure
to file tax returns specifically. At any rate, the fact that the plaintiffs would simply prefer a more
narrowly tailored sanction – apparently one with no “teeth” – provides no basis for overturning
the Magistrate Judge’s reasoned judgment.
Thus, the court finds no clear error in the Magistrate Judge’s recommendation of an
adverse inference that is broader than the self-serving language the plaintiffs would prefer.
However, to ensure that the record is clear, the court will modify the adverse inference to the
form originally requested by the defendants in their Motion for Sanctions, which reads as
follows: “The plaintiffs have never received income for or related to any purported trademarks,
rights of publicity, or other rights asserted in this lawsuit.”
III.

Motion to Amend
The plaintiffs filed a Motion to Amend on November 22, 2011, nearly one year after the

CMO deadline to do so, nearly two months after the close of fact discovery, and just seven
weeks before dispositive motions were due. In the Motion to Amend, the plaintiffs sought leave
to do the following: (1) dismiss The SJM Trust as a party by removing it from the First
Complaint;19 (2) “clarify” that their Lanham Act and state law publicity claims have an

19

Apparently, the plaintiffs sought to “dismiss” The SJM Trust by removing their name
from the case caption and from the text of the First Amended Complaint, which would have been
procedurally improper. Although the plaintiffs have essentially conceded, in the Motion to
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international scope; and (3) add a new copyright claim concerning an ad lib catch phrase that
Sam Moore allegedly coined in 1966, which Samuel L. Jackson’s character utilized in Soul Man
when performing “Hold On, I’m Comin’” during a scene early in the movie.
Because the plaintiffs would have required an amendment to the CMO to file the
proposed Second Amended Complaint, under Fed. R. Civ. P. 16(b)(4) they were required to
demonstrate “good cause” to amend the CMO on the eve of summary judgment. After
considering the plaintiffs’ arguments, the Magistrate Judge found that the plaintiffs had not
shown good cause for requesting amendments to the Lanham Act and state law publicity claims
at this late stage, rather than much earlier in this lawsuit’s proceedings (if not at its outset). With
respect to the proposed copyright claim, the Magistrate Judge found that the plaintiffs had not
shown good cause for proposing the amendment much earlier in the case, that adding the claim
would be highly prejudicial to the defendants, and that adding the claim would require reopening discovery.
In their Motion for Review, the plaintiffs challenge the Magistrate Judge’s rulings as to
the Lanham Act, state law publicity, and proposed copyright claims. As to the proposed
amendments concerning the Lanham Act and state law publicity claims, the plaintiffs in their
Motion for Review have not identified any aspect of the record that rebuts the Magistrate
Judge’s finding that the amendments should have been made, if at all, much earlier.
As to the new copyright claim, the plaintiffs similarly could have raised the claim much

Amend and elsewhere, that The SJM Trust has no claims to assert in this lawsuit, they have not
yet filed a Motion for Voluntary Dismissal pursuant to Fed. R. Civ. P. 41. At any rate, in the
2/3/12 MJ Order, the Magistrate Judge noted that both parties appeared to agree that The SJM
Trust should be dismissed.
19

earlier in the litigation, but chose to wait until after the close of discovery to request leave to do
so.20 As the Magistrate Judge properly found, the plaintiffs did not demonstrate that any of the
referenced deposition testimony and other evidence was necessary for Sam Moore to understand
that a copyright claim might exist. The Magistrate Judge did not, as the plaintiffs contend,
“impose a huge and unfair legal standard on a layman” by holding that Sam Moore should have
ascertained, at some point before the close of discovery, that he may have had some form of
intellectual property interest in the catch phrase. (Docket No. 348 at p. 8.) The denial of the
Motion to Amend was justifiable on these bases alone.
Furthermore, the possibility of re-opening discovery to address the late-filed copyright
claim and the potential need to add an indispensable party (see Docket No. 284 at p. 16) to the
case with respect thereto are simply not acceptable at this stage. It was not clear error for the
Magistrate Judge to find that the substantial prejudice to the defendants and the potential need to
re-open discovery also compelled denial of the request to add the unjustifiably untimely
copyright claim.
In sum, as concerns the Motion to Amend, the plaintiffs simply re-argue points
considered and appropriately addressed by the Magistrate Judge, without providing any basis for
a finding of clear error.
IV.

Confidentiality Designations
In the 2/3/12 MJ Order, the Magistrate Judge granted in part and denied in part the

plaintiffs’ renewed request to reclassify certain records marked as “Attorney Eyes Only” and to

20

Furthermore, although the court need not reach the issue, the proposed copyright claim
was likely futile anyway. (See Docket No. 285 at pp. 15-17 (arguing, inter alia, that a copyright
claim extends only to duplication of a sound recording itself).)
20

provide the plaintiffs with unredacted versions of these documents. The Magistrate Judge had
examined a banker’s box of over 200 challenged records and made the following findings:
(1)

The defendants’ redactions were appropriate, because the plaintiffs and the
defendants were competitors and the redacted materials constituted highly
sensitive “trade secrets”;

(2)

With respect to documents designated as “Attorneys’ Eyes Only”:
(A)

Records relied upon by the defendants in their pending Motion for
Summary Judgment would be immediately redesignated as “Confidential,”
thereby permitting the plaintiffs to view them in preparing their Response
to the Motion for Summary Judgment.

(B)

As to the remaining Attorneys’ Eyes Only records – i.e., those on which
the defendants did not rely in their Motion for Summary Judgment – those
documents would be redesignated as “Confidential” and provided to the
plaintiffs only after the court’s disposition of the Motion for Summary
Judgment.

In the Motion for Review, the plaintiffs first argue that the 2/3/12 MJ Order was unclear
because it did not require the defendants to produce unredacted copies of the challenged
documents to plaintiffs. To the contrary, the order is quite clear that the trade secret redactions
were proper and that the documents would be furnished to the plaintiffs in redacted form – the
same form available to the plaintiffs’ attorneys. The Magistrate Judge plainly did not commit
clear error by denying the plaintiffs’ request for clarification on this issue.
The plaintiffs further argue that they were prejudiced by the redactions in preparing their
opposition to the Motion for Summary Judgment. However, the plaintiffs make this argument in
blanket fashion, without citation to any specific records, without citation to any legal authority,
and without any discussion of how the defendants’ redactions of highly sensitive “trade secret”
information somehow prejudiced them. Furthermore, the plaintiffs do not contend that the
defendants, in their Motion for Summary Judgment, relied on the redacted information in any
21

fashion. Therefore, the court finds no basis to find that the Magistrate Judge’s decision in this
regard constituted clear error.
The plaintiffs also contend that it was clear error for the Magistrate Judge to preclude
them from viewing additional Attorneys’ Eyes Only materials (i.e., those not utilized by the
defendants in their Motion for Summary Judgment) until after the summary judgment stage.
Again, the plaintiffs make this argument in blanket and conclusory fashion: they do not reference
any particular records among the 200+ records at issue; nor do they explain specifically how
they were prejudiced by the inability to view certain records personally.21 Thus, the court finds
that plaintiffs have not demonstrated that it was clear error for the Magistrate Judge to refuse to
reconsider his earlier judgment, which reflected a document-by-document review and fair
consideration of the parties’ arguments with respect to those materials.
Finally, the plaintiffs contend that it was clear error for the Magistrate Judge to find that
the plaintiffs and the defendants are “competitors,” thereby entitling the defendants to assert
trade secret objections in the first place. The court disagrees. The plaintiffs have repeatedly
asserted that the defendants compete with them – indeed, they assert an unfair competition claim
under the Lanham Act and, in Response to the pending Motion for Summary Judgment (Docket
No. 340 at pp. 28-29), they have argued that “[t]he parties both offer the same type of goods and
services . . . . Defendants’ Movie and DVD compete directly with Plaintiffs’ DVD and
Defendants’ Soundtrack competes directly with Plaintiffs’ CD and musical performance
services.” Accordingly, it was plainly not clear error for the Magistrate Judge to find that the

21

Of course, the plaintiffs’ attorneys had access to the Attorneys’ Eyes Only materials in
preparing the Response to the Motion for Summary Judgment and could have incorporated those
materials into the Response.
22

parties are competitors and, therefore, that the defendants are entitled to protect their trade
secrets from the plaintiffs.
In sum, the plaintiffs have not demonstrated that the Magistrate Judge’s reasoned
consideration of the 200+ documents submitted for in camera review manifested clear error in
any respect.
CONCLUSION
For the reasons stated herein, the plaintiffs’ Motion for Review will be granted in part
and denied in part. The plaintiffs will be ordered to pay to the defendants $16,021.00 in
reasonable attorney’s fees. The court will modify the recommended adverse inference as
expressed herein and will otherwise accept the Magistrate Judge’s recommendations. The
remainder of the relief requested in the Motion for Review will be denied.
An appropriate order will enter.
_____________________________
ALETA A. TRAUGER
United States District Judge

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