Fantasia Distrib., Inc. v. Rand Wholesale, Inc., No. 14 C 1546, Slip Op. (N.D. Ill. Dec. 2, 2014) (Chang, J.).
Judge Chang ruled upon the following discovery disputes in this case regarding alleged counterfeit sales of ehookah products:
- Defendant Rand was to conduct a “reasonable” search for exchanges of returned products having plaintiff Fantasia’s Fantasia label and provide a sworn affidavit how the relevant records are generated and maintained, stating that the records were searched and describing the search, and supplying any results of the search.
- Rand had sufficiently produced sales summaries and underlying documents, although the parties were to work together if any unreadable PDFs were identified.
- Fantasia’s interrogatory was overbroad. Fantasia could not ask for “basically every record of any kind that Defendant has on any e-hookah” based upon suspicions generated from a separate case that did not involve Rand.
Hubbell Indus. Controls, Inc. v. Electro Power Sys. Of Utah, Inc., No. 12 C 8609, Slip Op. (N.D. Ill. Oct. 17, 2013) (St. Eve., J.).
Judge St. Eve granted in part defendant Electro Power’s motion to compel further interrogatory responses and denied Electro Power’s motion to compel production of unredacted attorney billing records in this Lanham Act case involving Electro Power’s alleged improper reproduction of components of plaintiff Hubbell’s braking contactors and allegedly passing them off as genuine Hubbell parts.
Hubbell listed twenty one elements of its trade dress. For all but three, Hubbell provided detail regarding the aspects that were part of the trade dress. Those eighteen elements were sufficiently described and no further interrogatory responses was required. For the other three — armature assembly, stator assembly and arc shield assembly — Hubbell was ordered to supplement its interrogatory response to specifically identify the aspects that were part of the trade dress. The Court also struck the phrase “include[ing], but not limited to” from Hubbell’s responses. Hubbell was required to identify all elements of its alleged trade dress.
As to the other eighteen elements of Hubbell’s alleged trade dress, Hubbell’s descriptions were not “amorphous,” “vague” or “unclear” as Electro Power asserted.
Hubbell’s response regarding its date of first use of its trade dress was deficient in two respects. First, although Hubbell had three distinct trade dresses, it only provided one date of first use. If all three share the same date, Hubbell must state that. Otherwise, three dates should be provided. Hubbell also failed to respond to the request for the circumstances of its first use and any documents evidencing the use.
The Court also denied Electro Power’s motion to compel unredacted attorney’s bills. While Hubbell sought damages in the amount of certain attorney’s fees, the parties failed to brief whether unredacted bills were required to decide fees pursuant to the Lanham Act. The motion failed, however, for a more basic reason. Electro Power’s interrogatory only seeks documents upon which Hubbell intends to rely. To the extent that Hubbell does not intent to rely upon unredacted bills, it need not produce them. The Court, however, gave Electro Power the opportunity to request additional documents on the limited issue of Hubbell’s fees damages.
John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, Slip Op., No. 12 C 1446 (N.D. Ill. Sep. 16, 2013) (Keys, Mag. J.).
Judge Keys granted in part defendant McDonnell Boehnen’s (“MBHB”) Fed. R. Civ. P. 37 motion to compel document production and interrogatory responses in this copyright infringement case involving the use of various copyrighted scientific articles. The Court previously warned that discovery could not be used as a fishing expedition, but allowed certain discovery regarding MBHB’s alleged use of the copyrighted articles in their law practice. MBHB asserts fair use, laches and estoppels as affirmative defenses.
The Court ordered production of budgetary information from plaintiff’s relevant group because the annual reports plaintiff already produced lacked information regarding operating costs, allocation of shared costs, and revenue expense drivers. Additionally, they were prepared by or with input from key witnesses.
The Court denied MBHB’s request to compel a response to an interrogatory seeking the basis for plaintiff’s statements in its complaint that plaintiff had reviewed public records and found “substantial evidence of unlicensed copying . . . .” Plaintiff had already withdrawn the claim, and making the claim could not be a basis for copyright misuse.