Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Scandaglia v. Transunion Interactive, Inc., No. 09 C 2121, Slip. Op. (N.D. Ill. Jan 21, 2010) (Hibbler, J.)

Judge Hibbler granted in part plaintiffs’ discovery motion in this Lanham Act case involving the alleged infringement of plaintiffs’ “Always Know Where You Stand” registered trademark. After wading through the parties’ 267 pages of briefing and exhibits, the Court cautioned both parties to avoid bad faith and work together to resolve disputes:

Throughout its review of the parties’ materials it finds that both parties have acted in bad faith in this discovery dispute and therefore denies Plaintiffs’ request for attorneys fees. Both parties have obstinately drawn lines in the sand that have not been warranted: [Defendant] asserting, generally, that Plaintiffs are entitled to virtually nothing; Plaintiffs asserting, generally, that they are entitled to virtually everything. The Court has committed substantial judicial resources to reviewing the parties’ cumbersome materials and resolving a dispute that the parties should have been able to resolve themselves. Such resources have been diverted from resolving other claims. 

The Court hopes that in the future the parties will demonstrate a greater degree of professionalism and collegiality and make a good faith effort to resolve their disputes before consuming the Court’s resources.

The Court held that defendant’s production of documents sufficient to show its revenues, profits, and expenditures was enough. Defendant need not produce every such document. On a related issue, the Court warned defendant that actual confusion was not required in the case, only a likelihood of confusion. And the Court warned against misrepresenting law or fact: 

Lawsuits are not shell games in which counsel should try to hide the peanut from the Court’s eye. The Court will tolerate no further misrepresentation of fact or law to bolster an argument.

The Court also warned the parties against compound document requests because they were “bound to produce difficulties.”  And the Court refused to compel further production without proof of withheld documents, pursuant to a request seeking “everything, including the kitchen sink.” This request sought all documents related to the Complaint, answer, counterclaim and affirmative defenses. The Court would only enforce it with evidence of withheld documents. The Court held that an interrogatory seeking proof supporting defendant’s request for admission denials did not contain discrete subparts, ordering defendants to answer the interrogatory.

The Court held that defendant’s identification of people that potentially had relevant knowledge was a sufficient response because it answered plaintiffs’ broad interrogatory. If plaintiffs wanted only those people with actual knowledge, it should have prepared a narrower interrogatory. The Court ordered defendant to supplement its Fed. R. Civ. P. 33(d) response to a contention interrogatory regarding defendant’s genericness defense as more documents were identified. And defendant was directed to provide a “general statement of its legal basis.”

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Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 2156665 (N.D. Ill. Jul. 26, 2007) (Cole, M.J.)

Judge Cole granted in part defendant Little Lady Foods’ (“LLF”) Fed. R. Civ. P. 37 motion to bar evidence of allegedly late–identified trade secrets. Plaintiff Fast Food Gourmet (“FFG”) originally identified four trade secret elements of its process for making thin crust frozen pizza (you can read more about this case in the Blog's archives). FFG’s Vice President of Operations Crause identified four additional elements during his deposition. And FFG later identified two additional elements. LLF argued that FFG should be limited to the first four elements because FFG never updated its interrogatory responses to include the six additional elements. The Court held that the four additional elements disclosed during the deposition had “otherwise been made known” pursuant to Fed. R. Civ. P. 26(e) and, therefore, were not required to be added to FFG’s interrogatory responses. The Court excluded the other two elements. FFG argued that it had identified the elements by identifying documents containing the elements in its interrogatory responses pursuant to Fed. R. Civ. P. 33(d). But the Court held that the documents FFG identified only identified the two elements sporadically, and in connection with elements that were not trade secrets. This, combined with Crause’s testimony that he had identified all of the trade secret elements, made FFG’s Rule 33(d) statements insufficient.

Practice Tip: Rule 33(d) is often seen as a simple escape from answering cumbersome or difficult interrogatories. Of course, it is also often warranted. But when you use Rule 33(d), make sure to identify the correct documents, and make sure the identified documents fully support your position.

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Defendant failed to sufficiently produce documents, answer interrogatories and respond to requests for admission after the Court, over a six month period, repeatedly ordered defendant to comply with its discovery obligations and repeatedly threatened sanctions. After each order, defendant took additional action, but it never fully met its obligations or the Court’s requirements. For example, defendant answered interrogatories by citing Rule 33(d), but failed to identify ranges of documents that were responsive to the interrogatories. After being ordered to fully answer or specify documents, defendant specified document ranges, but did not produce all documents responsive to the interrogatories.

The Court gave defendant a final chance to comply with the Court’s previous orders. The Court provided Defendant with five additional days to produce documents, and held that Defendant would not be allowed to rely upon any documents not produced by that deadline. The Court also deemed admitted a Request for Admission that defendant repeatedly failed to fully answer.

The Court also noted one of the paradoxes of document production: generally, when a party claims that its opponent has not fully produced documents, but that party claims that it has fully produced or just does not have any of the type of documents, the Court cannot be sure which party is correct. The Court concluded that it must rely on the facts available and the veracity of counsels’ statements.

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