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.”