Design Basics LLC v. Campbellsport Building Supply Inc et al

Filing 36

ORDER signed by Judge Rudolph T. Randa on 2/19/2014. 27 Plaintiff's Motion to Strike/Motion to Compel GRANTED as to Request No. 1 of first request for production of documents and DENIED in all other respects. (cc: all counsel) (cb)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
DESIGN BASICS, LLC,,
Plaintiff/Counterclaim Defendant,
v.

Case No. 13-C-0560

CAMPBELLSPORT BUILDING SUPPLY INC.,
BERLIN BUILDING SUPPLY INC.,
KIEL BUILDING SUPPLY INC.,
DREXEL INC.,
DREXEL BUILDING SUPPLY INC.
JOEL M. FLEISCHMAN
also known as JOEL C. FLEISCHMAN,
and ALBERT J. FLEISCHMAN,
Defendants,
and
WILSON MUTUAL INSURANCE COMPANY,
Intervenor Defendant/Counterclaimant.

DECISION AND ORDER

This action alleging that the Defendants committed copyright violations of
Plaintiff Design Basics, LLC (―Design Basics‖) copyrighted architectural works is
before the Court on the motion of Design Basics to strike the Defendants’ objections to
discovery and to compel discovery. (ECF No. 27.) The motion, filed as a single
document with the supporting brief, does not cite any federal rule of civil procedure
relative to the relief that is sought, which is contrary to Civil Local Rule 7(a) (E.D.
Wis.).

Regardless of the omission, at a minimum, the motion invokes Federal Rule of
Civil Procedure 37(a)(1) and Civ. L.R. 37.

Both rules require any motion be

accompanied by a statement certifying that Design Basics met and conferred with the
Defendants in a ―good faith‖ effort to resolve the discovery dispute. The meet and
confer requirements were piloted in local rules (see Rule 37, Advisory Comm. Note
1993 Amend.), and were added to Rule 37(a) because they were successful. Although
not explicitly stated by the Advisory Committee Note, inferentially the success is the
informal resolution of discovery disputes and a reduction of the filing of unnecessary
discovery motions.
Not all pre-filing meet and confer statements are sufficient. In considering
whether pre-filing ―meet and confer‖ requirements have been satisfied, courts in this
district have considered the tone and content of communications. See Carlson v. City
of Delafield, No. 08-C-751, 2010 WL 1641915, at *2 (E.D. Wis. Apr. 21, 2010).
The motion contains the following certification:
Plaintiffs’ Counsel, Dana LeJune, certifies that on
December 9, 2013, he sent a letter to defense counsel
detailing why Defendants’ responses to discovery and
disclosures were deficient (Exhibit 1). Thereinafter on
December 11, 2013, Attorney Michael Hopkins had a
telephone conference with Attorney Buttchen to discuss
Mr. LeJune’s letter and Defendants’ discovery responses.
Mr. Hopkins confirmed the substance of this discussion
with Attorney Buttchen via an email, which was
responded to, in part, by Attorney Buttchen (See email
string, Exhibit 2). In this email correspondence
Defendants agreed to produce all available emails (in
native format) and allow mirroring of the hard drives of
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computers used by defendants’ in-house draftsmen. A
dispute exists as to whether Defendants have agreed to
produce digital copies of the house plans located in
Defendants’ cloud storage service.
Soon after Defendants were told that this motion was
being drafted, on December 13, 2013, they supplemented
their initial discovery responses. In summary, although
some additional materials have been provided, Defendants
still have not answered all the interrogatories, and still
have not produced any emails (archived or otherwise), and
still resist production of their collection of house plans
numbering in the thousands. Additionally, they continue
to resist the mirroring of the hard drives on their
computers, servers and storage devices.
****
CERTIFICATE OF CONFERENCE
I hereby certify that on December 13, 2013 at 4:22 pm,
counsel for Plaintiff conferred with opposing counsel on
this matter, and that multiple email and telephone
communications have been engaged in this endeavor.
s/Dana A. LeJune
Dana A. LeJune
(Pl.’s Mot. & Br. Strike & Compel, 1-2, 17.)
Neither the tone nor the content of the foregoing statement and/or the
supporting exhibits disclose that Design Basics met and conferred with the
Defendants in a ―good faith‖ effort to resolve the discovery dispute. Design Basics’
statement discloses that, despite the Defendants’ responsiveness, Design Basics was
didactic and unwilling to work with them to resolve the discovery disputes, instead
filing its motion to compel all outstanding answers and/or materials requested by its
interrogatories and requests for production.
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Design Basics’ contact with the

Defendants does not reflect good faith on its part. The Court would have a sound
basis to deny the motion outright.
The filings before the Court establish that the Defendants’ responses were not
complete as of December 9, 2013.

However, they began to supplement their

responses. The Defendants provided Design Basics with their first supplemental
response on December 13, 2013.
Instead of engaging in good faith negotiations to obtain the additional
outstanding materials from the Defendants, Design Basics filed its motion to strike
and compel on December 17, 2013. The Defendants subsequently provided Design
Basics with additional supplemental responses dated December 19, 2013.

(Pl’s

Reply, Ex. E), January 7, 2014 (Id., Exs. F & G), January 17, 2014, (Id. Ex. H). (ECF
Nos. 29-5, 30, 30-1, 30-2.) Additional information is also included in letter dated
January 31, 2014, from the Defendants to Design Basics. (ECF Nos. 31, 31-1.)
The parties’ filings have consumed about a ream of paper – 500 sheets.
Having combed through the parties’ filings, there is a clear dispute regarding the
scope of the plans to be disclosed by the Defendants. That request is contained in
Request No. 1 of the Plaintiff’s First Request for Production of Documents which
reads as follows:
REQUEST 1. Your house plan ―inventory‖ including but
not limited to all genesis and template documents, in
native format (such as CAD files, including but not
limited to *.dwg, *.spd, *.dxf, *.cdc, *.plt, *.dgn, and/or
*.dwf."). This request includes all house plans (and all
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drafts, sketches, mockups, genesis and other precursor
documents, including everything shown to each and every
person who did plan modification and/or drafting for you
and/ or any other Defendant) you have drawn or have had
drawn, including those you and/or any other defendant
helped to draw.
(Ex. F.) (ECF No. 30.)
The Defendants’ second supplemental response is as follows:
RESPONSE N0.1: Objection. This document request is
overly broad, unduly burdensome, and seeks information
that is not reasonably calculated to lead to the discovery of
admissible evidence. Subject to such objection, and
without waiving the same, see Exhibit A, which has
already been provided, and Exhibit I. All plans relevant to
this suit have been provided to Plaintiff.
(Id.)
According to Rule 26 of the Federal Rules of Civil Procedure,
[p]arties may obtain discovery regarding any
nonprivileged matter that is relevant to any party’s claim
or defense—including the existence, description, nature,
custody, condition, and location of any documents or
other tangible things and the identity and location of
persons who know of any discoverable matter. For good
cause, the court may order discovery of any matter
relevant to the subject matter involved in the action.
Relevant information need not be admissible at the trial if
the discovery appears reasonably calculated to lead to the
discovery of admissible evidence.
Fed. R. Civ. P. 26(b)(1).
Design Basics’ Complaint alleges that the Defendants, singularly or
collectively, have infringed its copyright-protected plans entitled ―Morgan,‖
―Ambrose,‖ and/or ―Manning‖ on one or more occasions by, inter alia, creating one or

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more derivative works from said plans for one or more of their customers. (Compl. ¶
16.) It further alleges that the Defendants ―have regularly and systematically infringed
[Design Basics’] copyrights and those of other designers and architects in original
architectural works, and have induced others, including individual homeowners,
contractors and other entities and individuals engaged in the business of home building
to infringe [Design Basics’] copyrights in its original architectural works, to the profit
of said Defendants, contractors and other home builders, and to [Design Basics’]
detriment,‖ and ―[u]pon information and belief, the Defendants have infringed the
copyrights in other original architectural works of [Design Basics], the scope and
breadth of which infringing activities will be ascertained during the course of
discovery.‖ (Id. at ¶¶ 18, 20.)
In their opposing brief, the Defendants cite DellaCasa, LLC v. John Moriarty
& Associates of Florida, Inc., No. 07-21659-CIV, 2007 WL 4117261, at *2 (S.D. Fla.
Nov. 16, 2007), a decision in an architectural copyright infringement action denying
the plaintiff’s motion to compel the defendant to produce all drawings and designs in
its possession including those for Harbour House and Carillon projects. In denying the
motion, the court relied on the fact that the plaintiff’s causes of action involved three
Trump Tower projects and did not relate to either the Harbour House or Carillon
projects. Id. Furthermore, the court determined that the plaintiff had not established
good cause to allow discovery under the broader subject matter standard. Id.
DellaCasa is distinguishable because the copyright infringement allegations of
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the Complaint in this action are not limited to a specific plan or plans. Design Basics
alleges that the Defendants have regularly and systemically infringed on its
copyrighted plans and those of others. Given the breadth of the allegations in this
action, the Defendants’ contention that the request is not likely to lead to the discovery
of admissible evidence lacks merit. Furthermore, the Defendants’ conclusory and
unsubstantiated claims that the request is overly broad and burdensome are insufficient
to provide a basis for denying the request for relevant materials.
Therefore, request number one of Design Basics’ request for production of
documents is granted.

In all other respects, the motion to compel is denied.

Additionally, at this juncture, the Defendants’ request for fees and costs is denied. See
Fed. R. Civ. P. 37(a)(5)(C).
NOW, THEREFORE, BASED ON THE FOREGOING, IT IS HEREBY
ORDERED THAT:
Design Basics’ motion to strike the Defendants’ objections to discovery and to
compel discovery (ECF No. 27) is GRANTED as to Request No. 1 of its first request
for production of documents and DENIED in all other respects.
Dated at Milwaukee, Wisconsin, this 19th day of February, 2014.
BY THE COURT:

__________________________
HON. RUDOLPH T. RANDA
U.S. District Judge
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