Hornady Manufacturing v. Double Tap Ammunition
Filing
92
MEMORANDUM DECISION denying 43 Motion to Compel; denying 43 Motion for Extension of Time to Complete Discovery; denying 59 Motion to Stay; finding as moot 61 Motion to Expedite; denying 67 Motion to Strike. Signed by Magistrate Judge Paul M. Warner on 09/19/2012. (tls)
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION
HORNADY MANUFACTURING
COMPANY, a Nebraska corporation,
MEMORANDUM DECISION
AND ORDER
Plaintiff,
Case No. 2:11cv18
v.
DOUBLE TAP AMMUNITION, INC., a
Utah corporation,
Chief District Judge Ted Stewart
Defendant.
Magistrate Judge Paul M. Warner
This matter was referred to Magistrate Judge Paul M. Warner by Chief District Judge Ted
Stewart pursuant to 28 U.S.C. § 636(b)(1)(A).1 Before the court are (1) Double Tap
Ammunition, Inc.’s (“Double Tap”) motion to compel discovery and for an extension of time to
complete discovery;2 (2) Double Tap’s motion to stay;3 (3) Double Tap’s motion to expedite;4
and (4) Hornady Manufacturing Company’s (“Hornady”) motion to strike untimely designation
of expert witnesses.5 The court has carefully reviewed the memoranda submitted by the parties.
1
See docket no. 42.
2
See docket no. 43.
3
See docket no. 59.
4
See docket no. 61.
5
See docket no. 67.
Pursuant to civil rule 7-1(f) of the United States District Court for the District of Utah Rules of
Practice, the court elects to determine the motions on the basis of the written memoranda and
finds that oral argument would not be helpful or necessary. See DUCivR 7-1(f).
BACKGROUND
Hornady and Double Tap both sell ammunition for various types of firearms. Hornady
has registered its TAP trademark with the Patent and Trademark Office. On January 5, 2011,
Hornady filed this action alleging that Double Tap’s use of “tap” in its name infringes on
Hornady’s TAP trademark.
On October 22, 2011, Double Tap filed a motion for summary judgment and argued that
Hornady’s trademark infringement claims were barred by the doctrine of laches. Specifically,
Double Tap argued that in September 2006, a representative of Hornady sent a cease and desist
letter by email (“2006 Email”) to Double Tap requesting that it cease using another Hornady
trademark (“XTP mark”) on its website at www.doubletapammo.com. Double Tap asserted that
based on the 2006 Email, as well as two previous encounters between representatives of both
companies, Hornady knew no later than September 2006 that Double Tap was selling
ammunition under the name Double Tap Ammunition and was thus barred from bringing the
instant lawsuit.
In a December 15, 2011 memorandum decision and order, Chief Judge Stewart denied
Double Tap’s motion for summary judgment. Specifically, the court held that because laches is
a fact-intensive affirmative defense, the material facts are in dispute, and Double Tap failed to
2
meet its burden of production with regards to the 2006 Email, summary judgment was
inappropriate.6
Motion to Compel and Enlarge Discovery Period
On December 12, 2011, Double Tap served its first set of discovery requests on Hornady,
to which Hornady responded on January 23, 2012. Double Tap’s interrogatories requested that
Hornady identify all individuals at Hornady (1) “who before or on September 1, 2006 viewed
Doubletap’s website”; (2) “who sent, received or reviewed email between September 1, 2006
and December 31, 2007 related to Doubletap’s use of the XTP mark”; and (3) “who on or after
September 1, 2006 spoke via telephone with Mike McNett of Doubletap regarding the XTP
mark.”7 In addition, Double Tap’s document requests sought production of documents related to
communications between Hornady and Double Tap; Hornady’s viewing of Double Tap’s
website; the sending, receiving, or reviewing of email by any Hornady representative related to
Double Tap’s use of the XTP mark; and the identification of any person at Hornady who spoke
with Mike McNett of Double Tap regarding the XTP mark. Double Tap also requested
admissions regarding the 2006 Email and Double Tap’s website.
In response, Hornady stated that it could not identify any individuals who had viewed
Double Tap’s website, nor could it identify any person who sent, received, or reviewed email
during that time period related to Double Tap’s use of the XTP mark. Hornady also asserted that
6
See docket no. 41.
7
Docket no. 44, Exhibit 5 at 4.
3
it could not locate any documents that were responsive to Double Tap’s requests regarding its
use of the XTP mark.
In its motion to compel, Double Tap asserts that through its discovery requests, it has
attempted to seek information as to the identity of the individual(s) who sent the 2006 Email on
behalf of Hornady’s president and that Horandy has refused Double Tap’s follow up attempts to
obtain that information. In particular, Double Tap argues that its
[f]ollow up attempts to identify all potential persons which might
be identified in payroll records for 2006 showing all employees as
well as any contractor(s), a list of former Hornady employees or
contractor who were associated with Hornady in the 2006 time
frame, information about Hornady’s email server and any backups
of email for the Aug.-Oct. 2006 time frame, and a copy of
Hornady’s document retention policy and who at Hornady is
responsible for compliance with it, Hornady refuses to provide the
follow up information.8
In response, Hornady asserts that Double Tap has never propounded discovery requests
encompassing the specific records set forth above and that Double Tap first requested these
documents by telephone days before the fact discovery deadline. Hornady also contends that it
“diligently investigated its records and the recollection of its employees on the matter and could
not identify a single person with the specific knowledge requested [in the propounded discovery]
. . . . Nor could Hornady locate any responsive documents.”9 Hornady further notes that Double
Tap’s narrow discovery requests do not ask for information regarding Hornady’s employee
rosters, payroll records, email servers, or document retention policy for the relevant time frame.
8
Docket no. 44 at 1.
9
Docket no. 45 at 7.
4
While Double Tap asserts that the information it now seeks “is at least a subset of
Doubletap’s discovery requests,”10 the court is not persuaded by this argument. The original
requests were very narrow seeking only the identification of individuals who may have been
involved with the 2006 Email and any related documents. Double Tap could have requested that
specific information prior to the expiration of the fact discovery deadline but chose not to do so.
As such, Double Tap’s motion to compel and enlarge the discovery period is DENIED.
Furthermore, the court cannot compel a party to produce evidence it does not have. In its
memorandum in opposition to Double Tap’s motion to compel, Hornady indicates that it
“diligently investigated its records and the recollection of its employees on the matter and could
not identify a single person with the specific knowledge requested[,] . . . [n]or could Hornady
locate any responsive documents.”11 However, Hornady has not explained the methods it used to
diligently investigate its records and question those employees about the 2006 Email.
Accordingly, within twenty (20) days of the date of this order, Hornady shall provide an affidavit
to Double Tap describing its method of investigating the events surrounding the 2006 Email.
Motion to Stay and Motion to Expedite
On May 14, 2012, Double Tap filed a motion to stay (“Motion to Stay”) the proceedings
pending a ruling on its motion to compel and request to extend the discovery period by forty-five
10
Docket no. 44 at 1.
11
Docket no. 45 at 7.
5
days.12 Double Tap also filed a motion to expedite consideration of its Motion to Stay.13
Because the court has now denied Double Tap’s motion to compel, the Motion to Stay is
DENIED and the motion to expedite has been rendered MOOT.
Motion to Strike Untimely Designation of Expert Witnesses
Hornady moves the court to strike Double Tap’s designation of two expert witnesses.
Hornady asserts that the designation was untimely as the additional experts were disclosed after
the February 15, 2012 deadline and that this untimely designation is prejudicial.
In response, Double Tap argues that its designation is not untimely because the court
extended the deadline for initial expert reports until thirty days after Double Tap produced
supplemental financial data to Hornady, with responsive reports due thirty days after service of
the initial expert reports.14 Double Tap asserts that because footnote ii in the original scheduling
order provides that “[a] party shall disclose the identity of each testifying expert and the subject
of each such expert’s testimony at least 60 days before the deadline for expert reports from that
party,”15 it was not required to identify its experts until May 31, 2012, notwithstanding the
original scheduling order’s expert disclosure deadline of February 15, 2012. Double Tap
concludes that because it disclosed its additional experts on May 15 and May 16, it was well in
advance of the deadline.
12
See docket no. 59.
13
See docket no. 61.
14
See docket no. 55.
15
Docket no. 11.
6
Hornady contends that the deadline for identifying experts was not automatically
extended by the footnote in the initial scheduling order. Further, Hornady argues that it would
be prejudiced because it is not prepared to pursue expert discovery regarding likelihood of
confusion as Double Tap originally designated a damages expert only. Hornady asserts that
Double Tap’s untimely designations will force it to revise its trial strategy and jeopardize the
trial date of February 11, 2013.
The court concludes that, given a narrow reading of the scheduling order, Double Tap’s
additional expert designations were untimely. However, because the trial is nearly five months
from now and Double Tap has a pending motion to extend the dispositive motion deadline
(which, if granted, would necessitate moving the trial date as well), Hornady has not
demonstrated undue prejudice if Double Tap is allowed to designate and submit additional
expert reports. This is consistent with a search for the truth. As such, Hornady’s motion to
strike is DENIED. The parties may conduct any additional expert discovery related to Double
Tap’s designations until December 3, 2012.
CONCLUSION
In summary, IT IS HEREBY ORDERED that:
(1) Double Tap’s motion to compel discovery and enlarge the discovery period16 is
DENIED;
(2) Double Tap’s motion to stay17 is DENIED;
16
See docket no. 43.
17
See docket no. 59.
7
(3) Double Tap’s motion to expedite18 has been rendered MOOT; and
(4) Hornady’s motion to strike untimely designation of expert witnesses19 is DENIED.
The parties may have until December 3, 2012, to conduct expert discovery related to Double
Tap’s expert designations.
IT IS SO ORDERED.
DATED this 19th day of September, 2012.
BY THE COURT:
PAUL M. WARNER
United States Magistrate Judge
18
See docket no. 61.
19
See docket no. 67.
8
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