Opinion
No. C07-02258 RMW (HRL).
May 30, 2008
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION TO COMPEL DISCOVERY [Re: Docket No. 26]
Plaintiff CG Roxane LLC, the maker of the Crystal Geyser brand of bottled water, claims that it owns the registered trademark "Bottled at the Source." It alleges that defendants have manufactured and sold bottled water that infringes that mark. The gravamen of the complaint concerns defendants' use of the phrases "Bottled at Source" and "Bottled at the source." Defendants deny any wrongdoing and maintain that the mark is generic and merely descriptive.
Plaintiff moves to compel defendant Fiji Water Company LLC ("Fiji") to (1) answer interrogatories; (2) produce documents; (3) produce a designee for Fiji's Fed.R.Civ.P. 30(b)(6) deposition; and (4) serve supplemental initial disclosures. Fiji opposes the motion. Upon consideration of the papers filed by the parties, as well as the arguments presented at the April 29, 2008 hearing, this court grants plaintiff's motion in part and denies it in part.
Preliminarily, the court notes that, while it appears plaintiff made some attempt to confer with Fiji about the issues, those negotiations were not as fruitful as they might have been. Indeed, the record presented suggests that plaintiff may have led Fiji to believe that certain matters were resolved and then filed the instant motion without advising Fiji as to what it found to be lacking. Additionally, plaintiff's counsel made representations to this court that appeared to be exaggerations or which seemed to backtrack on prior statements. In short, the instant motion presented somewhat of a moving target over the course of the briefing and hearing on this matter. Better meet-and-confer efforts by plaintiff might have obviated the need for motions practice — or at least refined the issues for the court's consideration. It is hoped that meet-and-confer efforts on any future discovery dispute will be much improved so as to avoid the needless expenditure of time and resources by the parties and the court.
A. Plaintiff's Motion to Compel Interrogatory Answers
1. Interrogatory No. 11
Interrogatory No. 11 asks Fiji to "[s]tate all projections and forecasts of sales for any goods or service marketed or sold bearing `Bottled at Source.'" (Eletich Decl., Ex. D). Plaintiff initially argued that the information was relevant to the calculation of "disgorgement of profits" as a potential measure of damages. (Mot. at 4:15-16). Fiji contends that only its actual sales (and not its sales projections or forecasts) are relevant to the issue of damages. It says that it has already produced its actual sales information (in units and dollars). Plaintiff does not appear to dispute that, under the Lanham Act, actual sales are the measure of "disgorgement" damages. See 15 U.S.C. § 1117(a).
Nonetheless, in its reply brief, plaintiff then asserted that it seeks forecast and projection information to help it decide whether it will pursue "disgorgement" or some other measure of damages (e.g., reasonable royalty). It further contends that the requested information is also relevant to establish trademark infringement — that is, to show whether there is a likelihood of expansion of Fiji's product lines. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). On the record presented, however, plaintiff has not satisfactorily explained or shown the relevance of the requested information. Its motion as to Interrogatory No. 11 is DENIED.
2. Interrogatory No. 14
Interrogatory No. 14 asks Fiji to "[s]tate the number of customers annually to whom Defendant has provided goods bearing `Bottled at Source.'" Fiji objected to this interrogatory as overbroad and unduly burdensome. It claims that (a) the Fiji Water brand has been sold worldwide since 1996 and in the United States since 1997; and (b) since 1996, more than 500 million bottles of water have been sold. (Campbell Decl., ¶ 2). Fiji says that it is impossible to calculate the number of customers that make up those sales.
In its motion papers, plaintiff clarified its discovery request as follows: "Presumably FIJI sells its products to distributors whom [sic] in turn sell said products to consumers. Thus, FIJI's distributors are its customers. Plaintiff simply wants to know how many distributors FIJI has sold goods to." (Mot. at 5:13-15). In its opposition brief, Fiji argued that the interrogatory does not seek distributor information. Nevertheless, it agreed to identify the number of distributors it has used annually since it acquired the company in 2004. Then, in its reply brief, plaintiff did an apparent about-face, insisting that Fiji provide information about anyone to whom Fiji has sold goods bearing "Bottled at Source," adding that the interrogatory contemplates information about "wholesale and retail customers, including distributors." (Reply at p. 3). At oral argument, plaintiff's counsel stated that the reference to "distributors" in plaintiff's opening brief was intended to be merely illustrative of all "customer" information it seeks. Fiji argues that the instant motion should be denied because plaintiff is now attempting to obtain information it never properly requested in the first place.
Plaintiff's motion plainly stated that it sought information about distributors — and only distributors; and, this court now finds it necessary to take plaintiff's counsel's representations as to what plaintiff reportedly really meant with a substantial grain of salt. To the extent the interrogatory can be read to include all consumers, it is overbroad and unduly burdensome. However, Fiji has indicated that (a) it sells products primarily to distributors, (b) a small percentage of its business also consists of so-called "direct sales" to companies; and (c) a small percentage of its business consists of home deliveries directly to consumers. ( See Eletich Decl., Ex. H at p. 9 (Fiji's Supplemental Response to Interrogatory No. 13)). Fiji has not shown any undue burden in connection with identifying the number of distributors, direct sales and home deliveries for products bearing "Bottled at Source," and the interrogatory reasonably may be read to include this information. Accordingly, plaintiff's motion as to Interrogatory No. 14 is GRANTED; however, the interrogatory shall be limited to the annual number of (a) distributors used, (b) "direct sales" customers and (c) home delivery customers. Fiji shall serve its response no later than June 13, 2008.
B. Plaintiff's Motion to Compel Production of Documents
1. Request Nos. 3 and 4
With respect to Request Nos. 3 and 4, plaintiff seeks documents sufficient to establish the nature of the relationship between Fiji and the other named defendants: Fiji Water Company Holdings LLC and Paramount International Export, Ltd. ( See Eletich Decl., Ex. B). According to defense counsel, Fiji initially offered to provide verified interrogatory responses on the issue, but plaintiff's counsel ultimately agreed that a letter summarizing the nature of the relationship between the defendants would suffice. (Campbell Decl., ¶ 6 and Ex. B). Defense counsel further attests that the instant motion was the first communication from plaintiff suggesting that defense counsel's emailed summary was inadequate. ( Id., ¶ 7). Fiji contends that plaintiff cannot now complain because it previously agreed that counsel's summary was sufficient.
Plaintiff claims that it agreed only to evaluate defendant's summary. However, the record presented indicates that plaintiff may have acted in a way to signal that what it got was good enough. There is no indication that plaintiff complained about defendant's emailed summary before the instant motion was filed. Plaintiff's apparent silence on this point could well have been taken as assent. Nevertheless, there is no dispute that the requested documents are relevant, and Fiji has not shown any undue burden. Nor is the court persuaded that plaintiff should be precluded from obtaining the requested documents merely because Fiji reportedly has provided deposition testimony on the subject. Accordingly, plaintiff's motion as to these requests is GRANTED. Fiji shall produce non-privileged responsive documents no later than June 13, 2008.
2. Request Nos. 9 and 10
Plaintiff's motion as to Request Nos. 9 and 10 is moot. These requests seek all documents that mention, discuss, evidence, refer to, or relate to defendant's intended use of "Bottled at Source" and "Bottled at the Source." ( See Eletich Decl, Ex. B). Defendant agrees to produce any additional documents responsive to these requests, to the extent such documents exist. If it has not already done so, defendant shall produce non-privileged, responsive documents no later than June 13, 2008.
3. Request Nos. 50 and 51
Request Nos. 50 and 51 seek all documents that mention, discuss, evidence, refer to or relate to the established, likely-to-continue trade channels for Defendant's goods bearing "Bottled at Source" and "Bottled at the Source," including the methods and channels by which defendant has marketed, sold or offered for sale any such goods. ( See Eletich Decl., Ex. B). Defendant says that it has already provided deposition testimony on this matter as well as a supplemental response to Interrogatory No. 13 explaining where and how defendant's products are sold. (Eletich Decl., Ex. D, pp. 17-18; Ex. H, p. 9). Defense counsel attests that plaintiff agreed to revisit the necessity of these document requests in light of the discovery that had already been produced. (Campbell Decl., ¶ 9). Defendant asserts that plaintiff then filed the instant motion "out of nowhere" on a matter that Fiji believed had been resolved. Plaintiff says that it seeks documents pertaining to Fiji's efforts to market and sell products bearing the two phrases in question. It argues that the requested information is relevant to show the scope of defendants' use of the two phrases in commerce.
There is no dispute that the requested documents are relevant. While it is not entirely clear what additional information plaintiff hopes to obtain, this court is not persuaded that plaintiff is precluded from seeking document discovery because defendant reportedly has provided deposition testimony and interrogatory answers on the same subject. The requested documents may contain relevant information beyond that which has already been provided by Fiji in discovery. As drafted, however, the requests are overbroad. Accordingly, plaintiff's motion as to Request Nos. 50 and 51 is GRANTED; however, the requests shall be limited to documents sufficient to identify the established, likely-to-continue trade channels for defendant's goods bearing "Bottled at Source" and "Bottled at the Source" and the methods and channels by which defendant has marketed, sold or offered for sale any such goods. Defendant shall produce non-privileged responsive documents no later than June 13, 2008.
4. Requests Nos. 52-67
Request Nos. 52-63 seek Fiji's financial records for goods bearing "Bottled at Source" and "Bottled at the Source" — that is, monthly sales (in units and dollars); advertising, marketing, sales and manufacturing costs; and income statements and balance sheets through the end of September 2007. ( See Eletich Decl., Ex. B). Fiji represents to the court that it does not maintain the requested information on a monthly basis. However, Fiji agreed to produce its annual financial statements, which it says include its income and balance sheets, for the years 2004 (when it acquired the company) through 2007. At the motion hearing, plaintiff complained that Fiji had produced only annual sales and cost information. And, while its counsel seemed to assert this is not a dispute over monthly information, plaintiff insisted that defendant be compelled to produce monthly financial information. Fiji maintains that it has already produced documents providing detailed financial information and that it should not be compelled to produce monthly data.
On the record presented, and given the ever-changing nature of the instant discovery dispute, this court was hard-pressed to ascertain precisely what plaintiff claims is lacking, save for financial information broken down by month. Inasmuch as Fiji represents to the court that it does not maintain such information, plaintiff's motion as to Request Nos. 52-63 is DENIED. Fiji is not required to create information that it does not have.
Request Nos. 64 and 65 seek documents that mention, discuss, evidence, refer to or relate to "transfer pricing calculations or compliance for sales of goods" bearing the two phrases at issue from the inception of defendant's use of the two phrases at issue through the end of September 2007. Plaintiff has not sufficiently explained how or why this information is relevant to damages. The motion as to these requests is DENIED.
Request Nos. 66 and 67 seek all documents that mention, discuss, evidence, refer to or relate to the valuation of the Fiji water brand from the inception of defendant's use of the two phrases at issue through the end of September 2007. Plaintiff has not satisfactorily explained how or why this information is relevant to damages. The motion as to these requests is DENIED.
5. Request Nos. 69-71
These requests seek documents sufficient to identify each of Fiji's "past and current corporate entities, affiliates, divisions, groups or other functional units" (Request No. 69); "past and current managers" (Request No. 70) and "past and current members" (Request No. 71). Plaintiff asserts that Fiji and other entities named in this action have overlapping duties and purposes and argues that the requested information is relevant to plaintiff's attempt to locate potential witnesses in this action. Fiji argues that these requests are overbroad, seek irrelevant information and are harassing. Fiji says that it has already verified in written discovery responses and deposition testimony that it is solely responsible for marketing and selling Fiji Water in the US, and has been since 2004 when it acquired the Fiji Water brand. (Campbell Decl., ¶ 11, Ex. A; Eletich Decl., Exs. D and H).
As drafted, these requests are overbroad. However, the court will GRANT the motion as to these requests, but they shall be limited to documents sufficient to identify Fiji's past and present managers, members, affiliates, divisions, groups or other functional units that are or were responsible for the development, sale, marketing, advertising, or provision of any product bearing the phrases "Bottled at Source" and "Bottled at the Source." Fiji shall produce non-privileged responsive documents no later than June 13, 2008.
C. Plaintiff's Motion to Compel Fiji's Fed.R.Civ.P. 30(b)(6) Deposition
Pursuant to Fed.R.Civ.P. 30(b)(6), plaintiff served a notice for defendant's deposition. (Eletich Decl., Ex. C). That notice required Fiji to produce person(s) to testify about 42 matters for examination. Plaintiff says that Fiji produced two deponents to testify about only 19 of those subjects. Confusingly, plaintiff's motion also suggests that Fiji failed to provide a designee prepared to testify about 19 topics. It now moves for an order compelling Fiji to produce designee(s) to testify about the "remaining" topics. However, plaintiff failed to identify which topics are at issue. Defendant identifies them as topics 14-16, 17-27, 28-33, 38 and 39. Plaintiff has not made any showing to the contrary.
1. Topics 14-16
Topics 14-16 seek testimony about "[a]ny comments, inquiries, questions, correspondence, or statements from any person or entity" about "plaintiff," "Defendant's use of `Bottled at Source'" and "plaintiff's goods or services." ( See Eletich Decl., Ex. C). These topics are rather broadly worded; and, at oral argument, plaintiff agreed to limit them to comments, inquiries, questions, correspondence or statements from any person about any instances of actual confusion. Fiji contends that it has already answered questions about actual confusion. Plaintiff disagrees and says that Fiji's designee was not able to answer those questions. There is nothing in the record presented by which this court properly may determine whether actual confusion was sufficiently addressed during Fiji's earlier Fed.R.Civ.P. 30(b)(6) deposition. But inasmuch as it finds that these topics (as limited) seek relevant information, plaintiff's motion as to these topics is GRANTED. The topics shall be limited to comments, inquiries, questions, correspondence, or statements received from any person about any instances of actual confusion with plaintiff's goods or services.
2. Topics 17-33
These topics seek testimony about defendant's affirmative defenses and its legal contentions. ( See Eletich Decl., Ex. C). Fiji contends that this information is more appropriately sought through written interrogatories and asserts that it has already responded to several contention interrogatories on these matters.
The determination whether Fed.R.Civ.P. 33 contention interrogatories are more appropriate than a Fed.R.Civ.P. 30(b)(6) deposition is to be made on a case by case basis. See United States v. Taylor, 166 F.R.D. 356, 363 n. 7 (M.D.N.C. 1996). In making this determination, courts should consider "which of the available devices is more appropriate, i.e., which device would yield most reliably and in the most cost-effective, least burdensome manner information that is sufficiently complete to meet the needs of the parties and the court in a case like this?" McCormick-Morgan, Inc. v. Teledyne Indus., Inc., 134 F.R.D. 275, 286 (N.D. Cal. 1991), rev'd on other grounds, 765 F. Supp. 611 (N.D. Cal. 1991).
Plaintiff failed to address (or identify) any particular topic in its motion papers and made very little effort to argue its position, except in the most conclusory fashion. Nor did it explain why it needs corporate testimony on these topics over and above the information that has already been provided by Fiji. In any event, this court is unpersuaded that another Fed.R.Civ.P. 30(b)(6) deposition is the most appropriate or efficient means of obtaining information about Fiji's affirmative defenses and legal contentions. Moreover, the record presented indicates that Fiji has answered, in some detail, several contention interrogatories as to its position that the mark is generic and merely descriptive, that the mark has not acquired secondary meaning, that the mark must be canceled and how defendants have been (or will be) damaged. ( See Eletich Decl., Exs. D and H). Plaintiff's motion as to these topics is DENIED.
3. Topic 38
This topic seeks testimony about the monthly costs for manufacturing, marketing and selling goods bearing "Bottled at Source" from the inception of defendant's use of that phrase through September 2007. ( See Eletich Decl., Ex. C). Defendant says it does not maintain such information on a monthly basis. To the extent plaintiff seeks to compel testimony about monthly information, its motion is DENIED. The motion is otherwise deemed moot because Fiji agrees to produce a designee to testify about annual costs.
4. Topic 39
This topic seeks testimony about "[v]aluation of the FIJI water brand from the inception of Defendant's use of `Bottled at Source' through the end of September 2007." (Electich Decl., Ex. C). Plaintiff has not satisfactorily explained how or why this information is relevant. The motion as to this topic is DENIED.
D. Plaintiff's Motion to Compel Supplemental Initial Disclosures
Plaintiff contends that Fiji's initial disclosures, which were served in September 2007, are deficient in several respects. Fiji disagrees, but in its opposition brief, it nonetheless agreed to supplement them. Accordingly, this court finds plaintiff's motion to be moot. To the extent it has not already done so, defendant shall serve its supplemental disclosures no later than June 13, 2008.
IT IS SO ORDERED.