Opinion
01 Civ. 11295
September 24, 2003
Milton Springut, Tal S. Benschar, Kalow Springut, LLP New York, NY, for Plaintiffs
Robert D. Katz, Cooper Dunham, LLP New York, NY, for Defendants
MEMORANDUM OPINION
Plaintiffs move the court to order the immediate production of all expert reports prepared by defendants' expert in cases in which the expert has testified in the last five years. For the reasons set forth below, plaintiffs' motion to compel production is DENIED. I. BACKGROUND
Plaintiffs Carrier Inc. and Carrier International (collectively "Carrier" or "plaintiffs") allege that defendants Four Star Jewelry Creations, Inc., Globe Jewelry, Inc. and Crown Jewelry Creations, Inc. (collectively "defendants") sell watches that are indistinguishable from four lines of Carrier watches thereby violating defendants' trade dress protected by Section 43(a) of the Lanham Act and registered mark under Section 349 of the New York General Business Law, infringing upon defendants' patent, falsely designating the origin of their watches, and diluting plaintiffs' trademark. In response, defendants deny plaintiffs' allegations of infringement and request a declaratory judgment that plaintiffs' patents are invalid and hence unenforceable.
To establish that defendants have infringed upon their trademarked design, plaintiffs must show that the appearance of the four Cartier watches at issue has secondary meaning. Courtenay Communications Corp. v. Hall 334 F.3d 210 (2nd Cir. 2003). To negate the existence of secondary meaning, defendants commissioned Harry O'Neill, whom defendants holds out as an expert in consumer surveys, to determine whether buyers of luxury watches identify the watches at issue as originating exclusively from Cartier. O'Neill's survey concludes that the watches do not have secondary meaning.
The defendants provided plaintiffs with a copy of the O'Neill report in early August, 2003. Plaintiffs subsequently issued a request for documents related to the report. Because defendants allegedly failed to comply with the request, on August 27, 2003, plaintiffs filed a subpoena on O'Neill's company, Roper ASW ("Roper"), to compel production of the discovery items. On September 5, 2003, Roper responded to the subpoena, stating that most of the documents requested are not in Roper's possession. Plaintiffs' second request, however, asked for all expert reports from cases in which Roper testified in the last five years. In response to this request, Roper concedes that it has the expert reports but objects to producing them for plaintiffs.
The issue before the court is whether plaintiffs are entitled to the O'Neill export reports prepared in cases in which O'Neill testified in the last five years. Plaintiffs rely upon Fed.R.Civ.P. 26(a) and aver that "expert testimony in other cases may well shed light on the credibility or weight to be given to the expert testimony in the case at bar." Plaintiffs invoke 8 Wright and Miller, Federal Practice and Procedure 2d, § 203.1 at 442 (1994) and Hussey v. State Farm Lloyds Ins. Co., 2003 WL 21919357 (E.D. Tex. 2003) to support their position. From plaintiffs' perspective, comparing the methodology O'Neill used in conducting the survey for the defendants to his previous reports will shed light on the weight the court should afford to O'Neill's testimony.
The defendants claim that O'Neill's expert reports from previous cases are irrelevant, especially given that according to O'Neill, none of the previous suits addressed trademark, trade dress, or secondary meaning. From defendants' perspective, the request is overly broad and burdensome and based upon "a speculative and paltry showing of alleged relevance." II. ANALYSIS
The Federal Rules of Civil Procedure require parties to disclose reports for a witness who is retained or employed to provide expert testimony. Fed.R.Civ.P. 26(a)(2)(B). The report shall include, among other items, "a listing of any other cases in which the witness has testified as an expert at trial or by deposition within the preceding four years." Id.
"The obvious purpose of providing lists of prior cases is to enable opposing counsel to obtain prior testimony of the expert." Coleman v. Dydula, 190 F.R.R.D. 316, 318 (W.D.N.Y. 1999)."While the rule does not specify what should be in the `listing of other cases/ the cases have emphasized that the key is whether sufficient information is provided so that the opposing party's counsel can procure copies of the deposition or trial testimony." Norris v. Murphy. 2003 WL 21488640 at *1 (D.Mass. 2003). citing Coleman v. Dydula. 190 F.R.D. at 318 (W.D.N.Y. 1999) (citing Majewski v. Southland Corp., 170 F.R.D. 182, 185 (D.Kan 1996));Nguyen v. EBP, Inc., 162 F.R.D. 675, 682 (D.Kan. 1995).
The overwhelming majority of courts that have considered the scope of Rule 26 agree on the following principle:
"The information required to be disclosed are `cases' in which the witness has testified. The identification of `cases' at a minimum should include the courts or administrative agencies, the names of the parties, the case number, and whether the testimony was by deposition or at trial. Such information should be sufficient to allow a party to review the proceedings to determine whether relevant testimony was given. With this information, a party should be able to determine the type of claim presented and locate any recorded testimony."Nguyen v. IBP, Inc., supra. See also Zollinger v. Owens — Brockway Glass Container. 233 F. Supp.2d 349 (N.D.N.Y. 2002); Carlson v. Ferris, 58 P.3d 1055 (Colo.App. 2002); Giladi v. Strauch, 2001 WL 388052 (S.D.N.Y. April 16, 2001); Coleman v. Dydula. supra; Hilt v. SFC Inc., 170 F.R.D. 182, 185 (D.Kan. 1997).
Applying the aforementioned principles, plaintiffs' request for O'Neill expert reports from all cases in which he was an expert in the last five years is beyond the scope of Rule 26. As long as defendants provides plaintiffs with the name of the case, the court in which it was tried, the case number, the nature of O'Neill's testimony, and the names of the parties, defendants satisfy Rule 26. With this information, plaintiffs Cartier can easily obtain prior testimony given by O'Neill.
Because plaintiffs' disputed discovery request specifically asks for cases listed in the O'Neill report, the implication is that plaintiffs already have, at the very least, case names for which O'Neill has served as an expert.
Plaintiffs' reliance on Hussey v. State Farm Lloyds Insurance Company. 2003 WL 21919357 (E.D. Tex., Aug. 11, 2003) does not alter the analysis. In Hussey. plaintiffs purchased homeowner insurance from defendant State Farm. They alleged that damage to their home's foundation stemmed from a plumbing leak, thereby requiring State Farm to provide coverage for their insurance claim. State Farm's expert engineer concluded a leaky pipe was not the cause of the damage. Based on the report, State Farm denied plaintiffs' claim, resulting in plaintiffs' lawsuit against State Farm. As a part of the action, plaintiffs requested "any and all engineering reports prepared by State Farm for the past five years on residential foundation claims where damage was alleged to be caused by a plumbing leak." Hussey ruled in favor of the plaintiffs, finding that whether or not State Farm knowingly hired a biased engineering firm and whether its reliance on its expert was pretextual directly related to the legal question of whether State Farm breached an insurance company's duty of good faith and fair dealing.
The request at stake in this case is readily distinguishable from the one in Hussey. Here, the past expert reports are tangentially related to the legal question of secondary meaning. Although plaintiffs Cartier aver that comparing the methodology from previous O'Neill reports will facilitate the plaintiffs' argument that the court should not afford weight to the report prepared for this case, this purpose speaks to O'Neill's credibility more so than it addresses the central legal question. Further, plaintiffs request expert reports from all cases in which O'Neill has testified in the last five years, whereas in Hussey, the request was confined to expert reports dealing with the same facts and issues as the case being considered.
In light of these dissimilarities, the court is more persuaded thatSurles v. Air France, 2001 WL 815522 (S.D.N.Y. July 19, 2001) provides the controlling analysis than Hussey. In Surles, plaintiff served Air France with a subpoena seeking production of any expert reports prepared by Air France's expert in connection with cases in which the expert had testified over the last four years. The court denied Surles' request for the expert's previous reports. "By implication, because the rule requires only the production of a list of the expert's cases, Surles is not entitled to disclosure of the reports in those cases, regardless of their subject matter." Surles v. Air France, 2001 WL 815522Jd at *7 (emphasis in original). "Rule 26(b) does not mandate the disclosure of any additional reports that the expert may have prepared." Id. Surles further noted that Rule 26 does not tolerate discovery requests "`based on pure speculation or conjecture.'" Id. at *4, citing In Re Alliance Pharm. Sec. Litig., 1995 WL 51189, at *1 (S.D.N.Y. Feb. 9, 1999) (Owen, J.) (citingMicro Motors, Inc. v. Kane Steel Co., 894 F.2d 1318, 1326 (Fed. Cir. 1990).
This court agrees. The plain language of Rule 26 directs parties to provide a list of cases, not the expert reports relied upon in those cases. Plaintiffs' expectation that the previous reports will shed light on O'Neill's credibility or the weight that should be attributed to his report is simply too speculative to warrant a broader reading of the rule. So long as defendants provide plaintiffs with the names of the cases, the courts in which they were tried, the case numbers, the nature of O'Neill's testimony, and the names of the parties involved, defendants' obligation extends no further under Rule 26.
III. CONCLUSION
Plaintiff Cartier's motion to compel disclosure of all expert reports prepared by defendants' expert O'Neill in cases in which O'Neill has testified in the last five years is DENIED.
SO ORDERED.