Deckers Outdoor Corporation v. Last Brand, Inc.

Background

The case was referred to the magistrate judge for discovery. Deckers Outdoor Corporation, which owns the “UGG” footwear brand, alleges that Last Brand, Inc., doing business as Quince, infringed Deckers’s trade dress for the “Ultra Mini,” “Bailey Button,” and “Tasman” products and infringed a design patent for the Ultra Mini product. The discovery deadline was September 27, 2024.

The dispute concerned Deckers’s requests for documents containing the terms “Ultra Mini,” “Bailey Button,” “Tasman,” or “UGG.” Quince agreed to produce documents containing the first three terms from certain custodians but argued that “UGG” was too broad. Deckers agreed to limit the search to certain custodians, although the opinion states that it was unclear whether the parties had agreed on the specific custodians.

Electronic-information order

Quince requested entry of the Northern District of California’s Model Stipulated Order Regarding Discovery of Electronically Stored Information, or ESI. ESI means electronically stored information, such as electronic documents and emails. Deckers argued that an ESI order was unnecessary because the discovery was relatively straightforward.

The court found that some form of ESI order was appropriate. It did not decide that the patent-specific version was necessary or appropriate. The parties were ordered to meet and confer and file, by August 28, 2024, either a stipulation attaching a proposed ESI order or a joint letter of no more than five pages attaching their separate proposals. Any proposed order also had to include the declaration required by Judge Martínez-Olguín’s standing order. If both parties agreed that an ESI order was unnecessary in light of the ruling on the document dispute, they could file a stipulation stating that. If Quince continued to believe an order was necessary, the parties had to follow the submission instructions.

Document production

If the parties had already agreed on the custodians, Quince was ordered to produce documents from those custodians containing “Ultra Mini,” “Bailey Button,” and “Tasman” by September 4, 2024. If they had not agreed on custodians, they had to meet and confer and file, by August 28, 2024, either a stipulation identifying the custodians and a production deadline or a joint letter stating their positions.

The court did not require immediate production of every document containing “UGG.” It found that such a search might not be proportional to the needs of the case because the claims concerned only three specific products and one of them was the subject of the patent claim. At the same time, the court recognized that documents about those products might contain “UGG” without using the products’ specific names. The court also stated that evidence of Quince’s knowledge of an existing product and intent to copy it could be relevant to consumer confusion, although it was not necessary to prove that element of the trade-dress claim.

No later than one week after the custodians were agreed upon or designated by court order, Quince had to search those custodians’ records and determine how many documents contained “UGG” but none of the three agreed search terms. Quince had to share that number with Deckers. The parties then had to meet and confer about how to handle those documents and, within one week after Quince disclosed the number, file either a stipulation or a joint letter stating their positions.

Disposition

The court ordered the parties to meet and confer regarding an ESI order and the disputed documents, imposed the stated production and reporting requirements, and terminated ECF No. 52. The opinion does not state that the discovery dispute was granted or denied in those terms.