United States District Court, E.D. Tennessee, Knoxville
MEMORANDUM AND ORDER
C. Poplin United States Magistrate Judge
case is before the undersigned pursuant to 28 U.S.C. §
636, the Rules of this Court, and Standing Order 13-02.
before the Court are the parties' supplemental briefs
[Doc. 81, 86] with respect to Plaintiff's Request for
Production of Documents No. 55 (“Request No.
55”), which seeks documents evidencing the realtors and
title companies that have done business with or referred
business to Defendant. By way of background, on September 18,
2019, the Court ordered [Doc. 80] the parties to submit
additional briefing on why or why not such discovery is
relevant and proportional to the needs of this case. Both
parties submitted their additional briefs, and the issue is
now ripe for adjudication. Accordingly, for the reasons
explained below, the Court finds limited discovery warranted.
POSITIONS OF THE PARTIES
requests [Doc. 81] that the Court order Defendant to respond
to Request No. 55. Plaintiff states that in the spring of
2016, Defendant opened an office in Knox County,
approximately one mile away from one of Plaintiff's
offices. Plaintiff states that Defendant refers to its new
office on its website as follows: “HFBMortgage is the
newest office at Home Federal Bank.” Plaintiff argues
that Defendant's actions have caused confusion in the
market and that the requested discovery is relevant and
proportional to the needs of this case.
respect to relevancy, Plaintiff contends that
“HFBMortgage” infringes upon its mark and that
documents showing all realtors and title companies that have
done business with or referred business to Defendant's
new Knoxville office are likely to lead to evidence of actual
confusion. Further, Plaintiff states that it needs documents
because Defendant has been unwilling to produce other
documents related to issues of confusion. Plaintiff states
that it has discovered twenty (20) instances of actual
confusion. Plaintiff maintains that it has a right to
discover incidents of actual confusion through
Defendant's real estate agents and title companies among
other sources. Plaintiff argues that the information Request
No. 55 seeks will assist it in determining how Defendant
interacts with and markets to local realtors and title
companies. Plaintiff states that such information may also
reveal that Defendant intended to use Plaintiff's
trademarks in order to obtain business from or work with such
realtors and title companies. Plaintiff submits that the
documents sought by Request No. 55 directly relate to the
scope of Defendant's use of Plaintiff's trademarks in
the Knoxville area and, by extension, Plaintiff's
damages. Finally, Plaintiff argues that evidence of
Defendant's use of its marks, particularly with regard to
the Knoxville office, is also relevant to its defenses
against Defendant's counterclaims.
respect to proportionality, Plaintiff argues that Defendant
submitted unfounded boilerplate objections. Further,
Plaintiff states that documents responsive to Request No. 55
may reveal information regarding actual confusion and
dilution of the market, which is essential for
Plaintiff's damages analysis. Plaintiff asserts that the
amount in controversy is potentially millions of dollars and
may involve injunctive relief against one of the parties.
Plaintiff states that it does not have access to this
information and that Defendant should have at least some of
the requested information readily available. Plaintiff states
that any burden to Defendant is not outweighed by
Plaintiff's need of such discovery. Finally, Plaintiff
argues that Defendant has not established that such
information is proprietary and that the Court has already
entered a Protective Order in this case that should alleviate
any confidentiality concerns with such information.
Response [Doc. 86], Defendant submits that the unfettered
production of information responsive to Request No. 55 poses
an undue and unfair risk of harassment of its business
contacts, which outweighs the limited relevance of such
information. Defendant states that Document Request No. 55
seeks the name of every realtor and title company that has
done business with its Knoxville Office, no matter if the
entity was an existing contact of Defendant prior to opening
its Knoxville office. Defendant argues that Plaintiff will
contact its customers and interrogate them about their
business relationships, subjecting the non-parties to
harassing discovery regarding confidential referral and
customer relationships. Defendant fears that its customers
will abstain from doing business with it.
Defendant argues that Plaintiff has not made an effort to
tailor the discovery request and is seeking all documents
regarding the Knoxville office's referral relationships.
Defendant maintains that Plaintiff's overly broad request
goes beyond the question of confusion. Defendant proposes, to
the extent the Court will allow discovery into confusion,
that it produce a list of realtors and title companies who
were developed as new relationships after the Knoxville
office opened and that the parties send an agreed-upon email
to those realtors and title companies, asking questions
regarding customer confusion between the entities. Defendant
states that to the extent any respond that they did
experience confusion, Plaintiff may depose the realtor or
title company representative. Defendant argues that this
procedure would allow Plaintiff to obtain the discovery it
seeks while minimizing the risk of overreaching and
oppression of Defendant's customers.
Court has considered the parties' positions as outlined
above, and for the reasons explained below, the Court finds
limited discovery warranted.
Court mentioned in its previous Memorandum and Order [Doc.
80], Federal Rule of Civil Procedure 26(b) governs discovery.
Specifically, Rule 26(b) provides:
Unless otherwise limited by court order, the scope of
discovery is as follows: Parties may obtain discovery
regarding any nonprivileged matter that is relevant to any
party's claim or defense and proportional to the needs of
the case, considering the importance of the issues at stake
in the action, the amount in controversy, the parties'
relative access to relevant information, the parties'
resources, the importance of the discovery in resolving the
issues, and whether the burden or expense of the proposed
discovery outweighs its likely benefit.
have explained that the “scope of discovery under the
Federal Rules of Civil Procedure is traditionally quite
broad.” Meredith v. United Collection Bureau,
Inc., 319 F.R.D. 240, 242 (N.D. Ohio 2017) (quoting
Lewis v. ACB Bus. Serv., Inc., 135 F.3d 389, 402
(6th Cir. 1998)). Courts have cautioned, however, that
“[d]iscovery requests are not limitless, and parties
must be prohibited from taking ‘fishing
expeditions' in hopes of developing meritorious
claims.” Bentley v. Paul B. Hall Reg'l Med.
Ctr., No. 7:15-CV-97-ART-EBA, 2016 WL 7976040, at *1
(E.D. Ky. Apr. 14, 2016). “[T]he [C]ourt retains the