Design Basics LLC v. Campbellsport Building Supply Inc et al
Filing
85
ORDER signed by Judge Rudolph T. Randa on 11/10/2014. 76 Defendants' MOTION to Enlarge Defense Expert Disclosure Dates GRANTED. Scheduling order modified as follows: disclosure of defense expert reports to Design Basics must be made within 21 days of Defendants' receipt of construction drawings for allegedly infringing plans; disclosure of rebuttal expert reports must be made within 21 days of receipt of Defendants' expert reports. 58 Defendants' MOTION for Protective Ord er GRANTED to the extent that interrogatories 2 and 4 of Design Basics' second sent of interrogatories directed to entity defendants are NARROWED to cover the period since 1/1/2001; DENIED in all other respects. 67 Signature's motion to quash third-party subpoena GRANTED with respect to request 1 for plans previously produced and request 4; requests 3 and 5 NARROWED to materials since 1/1/2001; DENIED in all other respects. (cc: all counsel)(cb)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
DESIGN BASICS LLC,
Plaintiff,
v.
Case No. 13-C-560
CAMPBELLSPORT BUILDING SUPPLY, INC.,
BERLIN BUILDING SUPPLY, INC.,
KIEL BUILDING SUPPLY, INC.,
DREXEL, INC.,
DREXEL BUILDING SUPPLY, INC.,
JOEL M. FLEISCHMAN, and
ALBERT J. FLEISCHMAN,
Defendants / Cross-Claim Defendants,
and
WILSON MUTUAL INSURANCE COMPANY,
Intervenor Defendant/Counterclaimant/Cross-Claimant.
DECISION AND ORDER
This matter is before the Court on the Defendants’ motions for a
protective order and to enlarge the defense expert disclosure date (ECF
Nos. 58, 76).
Also addressed are the objections of non-party Frank
Adashun (“Adashun”) individually and his company, Signature Homes by
Adashun Jones, Inc. (“Signature Homes”) (collectively “Signature”), to
Design Basics’ third-party subpoena addressed to them. (ECF No. 67.)
Motion to Extend
The time for filing any response to the Defendants’ motion to extend
the defense disclosure date has passed, and none has been filed.
The
Defendants have established good cause for the modification of the
scheduling order deadline for the disclosure of the defense experts’ reports.
(ECF No. 20.) Such disclosure must be made within 21 calendar days from
the Defendants’ receipt of the construction drawings for the allegedly
infringing plans.
This modification also requires an extension of the deadline for
rebuttal expert reports. Such disclosure must be made within 21 calendar
days from Design Basics LLC’s (“Design Basics”) receipt of the Defendants’
expert reports. The balance of the scheduling order remains in full force
and effect.
Defendants’ Motion for Protective Order
The Defendants seek a protective order declaring that all discovery
relating to the Defendants’ alleged copyright infringements must be
limited to alleged infringements occurring from May 2010 onwards, based
on the Defendants’ intent to file a motion for judgment on the pleadings
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within 30 days.1 The Defendants also seek rulings that certain discovery
not be had because the discovery requests are irrelevant, unduly
burdensome and intrusive, and improperly designed to “fish” for additional
claims against not only the Defendants, but other non-parties.
By
affidavit, Defendant Joel Fleischman estimates that it will take 10 hours
per alleged infringing plan to fully respond to Design Basics’ discovery
requests, and it will take the entity defendants four months to respond to
the discovery requests.
(ECF No. 61.)
The Defendants’ motion also
challenges third-party subpoenas issued pursuant to Fed. R. Civ. P. 45.
Meet and Confer Requirements
The Defendants’ discovery motion does not reflect compliance with
the meet and confer requirements. Simply asking a party whether they
would agree to limit discovery does not constitute a sincere effort to
resolve a discovery dispute. A request by email followed by a reminder to
respond, see Buttchen Aff., Ex. B (ECF Nos. 60, 60-2), does not reflect any
meaningful attempt by the movant to resolve the dispute. Moreover, there
is no indication of any discussion regarding the third-party subpoenas.
The motion could be denied outright based on non-compliance with such
1
The motion has since been filed. (ECF No. 73.) Two summary judgment motions are also
pending. (ECF Nos. 41, 62.) On November 4, 2014, the Defendants also filed a motion to compel.
(ECF No. 82.) The latter is not ready for decision; that motion and the other pending motions will be
addressed subsequently.
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requirements. The Defendants are admonished to genuinely comply with
the spirt of the meet and confer requirements of Rule 26 and this District’s
Civ. L. R. 37. The Court will consider imposing monetary sanctions to the
failure to comply with those requirements in this action. However, at this
juncture the Court declines to award fees to Design Basics as it requests.
Discovery Requests Addressed to Defendants
The Defendants contend that all discovery relating to their alleged
copyright infringements should be limited to alleged infringements
occurring from May 2010 onwards. Such contention is inconsistent with
the case law of this Circuit holding that copyright infringement claims
accrue as soon as a plaintiff learns, or should as a reasonable person have
learned, that a defendant violated his copyright.
See Gaiman v.
McFarlane, 360 F.3d 644, 653 (7th Cir. 2004). Thus, the Defendants have
not met their burden of showing that the discovery is overly broad, unduly
burdensome, or not relevant. See Teed v. JT Packard & Assocs., Inc., No.
10-MISC-23, 2010 WL 2925902, *2 (E.D. Wis. July 20, 2010).
The Defendants also specifically object to interrogatories two and
four of the second set of interrogatories directed to the entity defendants
which state:
INTERROGATORY NO. 2: Please identify all
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entities for which Defendant had any partnership,
joint venture or other business relationship since
January 1, 1994 regarding the design and
construction of residential homes.
INTERROGATORY NO. 4: Provide the name and
approximate location of each and every
subdivision where you have constructed one or
more houses since January 1, 1994.
(ECF No. 60-1.) The requests fall within the scope of discovery because
they are relevant to Design Basic’s copyright infringement claims and are
reasonably calculated to lead to the discovery of admissible evidence. See
N.W. Mem’l Hosp. v. Ashcroft, 362 F.3d 923, 930 (7th Cir. 2004). However,
given the estimated time it will take the Defendants to respond, the
Defendants have met their burden of establishing that the requests are
overly burdensome.
Therefore, the Court will reduce the 20-year time
period for which Design Basics seeks discovery to the period since January
1, 2001—the same time frame for which Design Basics seeks materials by
means of request number one of its third-party subpoenas.
Third-Party Subpoenas—Defendants
Relying on Rule 26(c), which provides for protective orders for
various reasons including embarrassment, the Defendants assert they have
standing to object to the 22 third-party subpoenas contending that Design
Basics’ subpoenas are causing them embarrassment and hardship because
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several builders have contacted them and been outraged about the invasion
of their confidential business documents and the time it will take to comply
with the subpoenas. The Defendants assert that the builders should not be
required to respond to requests numbers three through five.
Rule 45 contains provisions to protect the recipient of a subpoena
from undue burden or expense, invasion of a privilege, or disclosure of
protected material. U.S. S.E.C. v. Hyatt, 621 F.3d 687, 694 (7th Cir. 2010)
(citing Fed. R. Civ. P. 45(c)).2 A motion to quash or modify a subpoena may
only be made by the party to whom the subpoena is directed except where
the party seeking to challenge the subpoena has a personal right or
privilege with respect to the subject matter requested in the subpoena. See
9A Charles Alan Wright et al., Federal Practice and Procedure § 2459, at
435 (3d ed. 2008); Teed, 2010 WL 2925902, at *2 (citing Minn. Sch. Boards
Ass’n Ins. Trust v. Employers Ins. Co. of Wausau, 183 F.R.D. 627, 629 (N.D.
Ill. 1999); Smith v. Midland Brake, Inc., 162 F.R.D. 683, 685 (D. Kan.
1995)).
See also, Malibu Media, LLC v. Doe, No. 13-C-536, 2013 WL
5276081, at *1 (E.D. Wis. Sept. 17, 2013) (noting there is a division of
authority among district courts regarding whether a party has standing to
2
The 2013 amendments to Rule 45 resulted in the relocation of the contents of former
subdivision (c) to subdivision (d). See Rule 45 Advisory Comm. Notes, 2013 Amend. Subdivision
(d).
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quash a subpoena issued to a non-party internet service provider and citing
reFX Audio Software, Inc. v. Does 1–11, No. 13 C 975, 2013 WL 3867656, at
*1 (N.D. Ill. July 23, 2013)). The Defendants have not shown either a
personal right or a privilege in the subpoenaed information.
The Defendants’ argument based on Rule 26(c) is not accompanied
by any case citation. However, the Court’s research has disclosed a nonbinding opinion in Breaking Glass Pictures, LLC v. Does 1-15, No. 13-CV275-WMC, 2013 WL 4084749, at *1 (W.D. Wis. Aug. 13, 2013) construing a
party’s objection to a third-party subpoena as a Rule 26(c) motion for
protective order, which is available “to protect a party or person from
annoyance, embarrassment, oppression, or undue burden or expense,” Fed.
R. Civ. P. 26(c), and granting the motion to protect the party’s identity.
Unfettered, such construction could eliminate the requirement of standing
to quash a subpoena.
Nonetheless, Rule 45(c) (now (d)) is not intended to “diminish rights
conferred by Rules 26-37.” See Rule 45 Advisory Comm. Notes, 1987 Amend.
Subdivision (c). To the extent the Defendants are embarrassed by the subpoenas
issued to the builders, Design Basics’ interest in protecting its copyrighted design
plans outweighs that embarrassment.
Therefore, as to the third-party
subpoenas, the Defendants’ motion for a protective order is denied.
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Third-Party Subpoenas—Signature
Construed as a motion to quash, Signature opposes request number
one of the third-party subpoena because it requires production of materials
dating from 2001, and Design Basics has previously inspected and copied
Signature Homes’ plans.
If Signature Homes has previously produced
plans, the duplicative subpoena request would subject it to undue burden
and is quashed. However, to the extent that there are any subject plans
that Signature has not provided to Design Basics, they must do so
promptly.
Signature also opposes request numbers three through five because
they are unlimited with respect to time. Requests numbers three through
five of the third-party subpoenas state:
3. All documents related to and/or concerning
Design Basics, including but not limited to DB
house plans, elevations, and/or books or web pages
displaying DB house plans or elevations in your
possession or constructive possession. The
subpoenaed documents also include but are not
limited to any and all order forms, receipts,
licenses, and/or downloads of anything whatsoever
from the DB website, and/or from any third party
marketer of DB’s house plans;
4. All books of house plans from any source or
publisher in your possession or constructive
possession; and
5. All advertising and/or marketing materials that
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used or incorporated all or a portion of DB’s house
plans and/or elevations, or derivatives thereof.
(ECF No. 60-3.) Request number four is beyond the scope of this lawsuit,
and any books with Design Basics’ house plans should be produced in
response to request number three.
Therefore, request number four is
quashed. Additionally, absent some limitation as to time frame, requests
three and five are overbroad and are modified to relate to materials since
2001.
NOW, THEREFORE, BASED ON THE FOREGOING, IT IS
HEREBY ORDERED THAT:
The Defendants’ motion to extend the deadline for expert reports
(ECF No. 76) is GRANTED;
The scheduling order (ECF No. 20) is MODIFIED as follows:
(1) The disclosure of defense expert reports to Design Basics must be
made within 21 calendar days from the Defendants’ receipt of the
construction drawings for the allegedly infringing plans;
(2) The disclosure of rebuttal expert reports must be made within 21
calendar days from the receipt of the Defendants’ expert reports.
All other provisions of the September 25, 2013, scheduling order remain in
full force and effect.
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The Defendants’ motion for a protective order (ECF No. 58) is
GRANTED to the extent that interrogatories numbers two and four of
Design Basics’ second set of interrogatories directed to the entity
defendants are narrowed to cover the period since January 1, 2001, and
DENIED IN ALL OTHER RESPECTS; and
Signature’s motion to quash the third-party subpoena (ECF No. 67)
is GRANTED with respect to request one for plans which were previously
produced and request number four, and with respect to requests three and
five which are narrowed to materials since January 2001 and DENIED
IN ALL OTHER RESPECTS.
Dated at Milwaukee, Wisconsin, this 10th day of November, 2014.
BY THE COURT:
__________________________
HON. RUDOLPH T. RANDA
U.S. District Judge
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