Home Design Services v. Alan V Gren Enterprises et al

Filing 66

MEMORANDUM DECISION granting 47 Motion to Compel and denying the Motion to find the Gren Defendants in contempt. Signed by Magistrate Judge Dustin B. Pead on 4/9/13. (ss)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, CENTRAL DIVISION

HOME DESIGN SERVICES,
Plaintiff,

MEMORANDUM DECISION AND ORDER

v.

Case No. 2:12-cv-00398-TS-DBP

ALAN V. GREN ENTERPRISES, et al.

District Judge Ted Stewart

Defendants.

I.

Magistrate Judge Dustin B. Pead

INTRODUCTION

This copyright infringement matter was referred to the Court under 28 U.S.C. §
636(b)(1)(A). (Docket Nos. 37; 47.) Plaintiff, Home Design Services (“HDS”), alleges Alan V.
Gren Enterprises, and Alan V. Gren (the “Gren Defendants”) constructed multiple residences by
duplicating HDS’s copyrighted architectural work. (Dkt. No. 21.)
The Court considers HDS’s motion to compel the Gren Defendants to disclose their
insurance agreements, or, in the alternative, to hold the Gren Defendants in contempt because
their failure to disclose violated a scheduling order. (Dkt. No. 47.) For the reasons below, the
Court GRANTS in part, and DENIES in part the motion.
II.

STANDARD OF REVIEW FOR MOTION TO COMPEL

Parties must provide each other initial disclosures “without awaiting” discovery requests.
Fed. R. Civ. P. 26(a)(1)(A). These initial disclosures include insurance agreements. Id.

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26(a)(1)(A)(iv). If a party fails to make required initial disclosures, any other party may move to
compel such disclosure, and for appropriate sanctions. Id. 37(a)(3)(A).
III.

ANALYSIS OF HDS’S MOTION TO COMPEL INITIAL DISCLOSURES

On February 1, 2013, HDS filed this motion to compel the Gren Defendants to disclose their
insurance agreements. (Dkt. No. 47.) HDS also seeks to recover reasonable expenses, including
attorney’s fees, incurred by filing the motion. (Id.) On February 8, 2013, the Gren Defendants
provided HDS the insurance agreements it sought. (Dkt. No. 55-7, Ex. G.)
A. Whether Gren Defendants’ Subsequent Disclosure Moots HDS’s Motion
The Gren Defendants argue their subsequent disclosure moots HDS’s motion to compel.
(Dkt. No. 55 at 2.) The Court disagrees to the extent the motion relates to expenses. If an
opposing party provides disclosures after the moving party files a motion to compel the
disclosures, “the court must . . . require . . . the party or attorney advising that conduct, or both to
pay the movant’s reasonable expenses incurred in making the motion, including attorney’s fees.”
Fed. R. Civ. P. 37(a)(5)(A). See also Home Design Serv., Inc. v. Collard Prop., LLC, No. 11-cv00011-MSK-BNB, 2012 WL 1801946, at *1 (D. Colo. 2012) (granting plaintiff’s motion to
compel where defendants produced discovery after plaintiff filed the motion “insofar as [the
motion sought] an award of the plaintiff’s expenses and attorney’s fees . . . .”).
B. Whether HDS Warrants Reasonable Expenses Award
A court “must not order” an opposing party to pay the movant’s reasonable expenses if the
opposing party’s nondisclosure was “substantially justified,” or “other circumstances make an
award of expenses unjust.” Fed. R. Civ. P. 37(a)(5)(A)(ii)-(iii). See Pierce v. Underwood, 487
U.S. 552, 565 (1988) (interpreting “substantially justified” to mean “‘justified in substance or in
the main’ - that is, justified to a degree that could satisfy a reasonable person.”).

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The Gren Defendants oppose granting HDS its reasonable expenses. They argue they never
“refused” to disclose their insurance agreements to HDS. (Dkt. No. 55 at 5.) They only sought
to delay disclosure until the Court entered a protective order that allowed them to designate the
insurance agreements as confidential. (Id. at 5-7.) They wanted to prevent the insurance
agreements from being publicly disclosed because such disclosure would encourage similarly
minded plaintiffs to bring lawsuits against them. (Id. at 6-7.)
The Court finds the Gren Defendants’ desire to delay disclosure was not substantially
justified, and other circumstances do not make awarding expenses unjust. The Gren Defendants’
delay contradicted both federal and local civil procedure rules. Fed. R. Civ. P. 26(a)(1)(A)(iv)
mandates that parties initially disclose their insurance agreements. Moreover, DUCivR 262(a)(1) prohibits parties from delaying confidential disclosures based on their desire to first have
the court enter a protective order. 1 Indeed, the Gren Defendants acknowledge their original
delay stemmed from their “unintentional ignorance” of DUCivR 26-2(a)(1). (Dkt. No. 55 at 6.) 2
The Gren Defendants also argue that HDS’s motion “could have easily been avoided had
HDS agreed to” the Gren Defendants’ proposed protective order, which “closely track[ed]” the
standard protective order language at DUCivR 26-2. (Dkt No. 55 at 7.) The Court finds this
1

If a party designates its initial disclosures as confidential, “it shall not be a legitimate ground
for . . . declining to provide information otherwise required to be disclosed pursuant to Fed. R.
Civ. P. 26(a)(1) that the . . . disclosure requirement is premature because a protective order has
not been entered by the court.” DUCivR 26-2(a)(1). Instead, in such circumstances, a “Standard
Protective Order . . . shall govern and discovery under the Standard Protective Order shall
proceed.” Id. This standard protective order automatically applies, and “need not be entered in
the docket of the specific case.” Id. On February 8, 2013, the Gren Defendants disclosed their
insurance agreements under this standard protective order. (Dkt. No. 55-7, Ex. G.)
2

This acknowledgment, and the fact the Gren Defendants disclosed the insurance agreements
promptly after HDS filed its motion to compel, may serve to mitigate HDS’s reasonable
expenses. But this potential mitigation does not change the underlying merit behind HDS’s
motion to compel.
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argument unpersuasive. A party’s refusal to agree to a protective order it finds inappropriate
does not prohibit that party from filing a motion to compel otherwise discoverable information.
C. HDS’s Contempt Request
On September 13, 2012, Magistrate Judge Evelyn J. Furse issued a scheduling order. (Dkt.
No. 32.) The order reflected that the parties exchanged initial disclosures on September 7, 2012.
(Id. at 2.) Because the Gren Defendants failed to disclose their insurance agreements by that
date, HDS moves this Court to find the Gren Defendants in contempt for violating this
scheduling order. (Dkt. No. 47.) 3
If a party fails to obey a Fed. R. Civ. P. 26(f) discovery order, 4 the court “may issue further
just orders” such as “treating as contempt of court the failure to obey” the discovery order. Fed.
R. Civ. P. 37(b)(2)(A)(vii). Because the Gren Defendants eventually disclosed the insurance
agreements, and because this Court orders them to pay HDS’s reasonable expenses for its motion
to compel, the Court finds a contempt finding unnecessary.
IV.

ORDERS

For the reasons above, the Court issues the following ORDERS:
Pursuant to Fed. R. Civ. P. 37(a)(5)(A), the Court GRANTS HDS’s motion to compel
insofar as HDS seeks reasonable expenses, including attorney’s fees, incurred in bringing its
motion. (Dkt. No. 47.) On or before April 23, 2013, HDS shall submit a memorandum of costs
to the Court. In this memorandum, HDS will specify the amounts it seeks from the Gren
Defendants, their counsel, or both. On or before May 7, 2013, the Gren Defendants may respond
3

On February 25, 2013, this Court granted the Gren Defendants’ motion to extend the
scheduling order. (Dkt. No. 58.) The Court extended all deadlines in the original scheduling
order by three months. (Id. at 3.)
4

Fed. R. Civ. P. 26(f) requires parties to confer about scheduling issues such as initial
disclosures prior to a court’s scheduling order.
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to that memorandum. After receiving these submissions, the Court will determine an appropriate
dollar amount, and enter the order against the Gren Defendants.
Pursuant to Fed. R. Civ. P. 37(b)(2)(A)(vii), the Court DENIES HDS’s motion to find the
Gren Defendants in contempt. (Dkt. No. 47.)
Dated this 9th day of April, 2013.

By the Court:

Dustin B. Pead
United States Magistrate Judge

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