Deckers Outdoor Corporation v. Last Brand, Inc.

Background

Deckers Outdoor Corporation sued Last Brand, Inc., doing business as Quince, in an action involving alleged trade dress and patent infringement. The court resolved two joint discovery letter briefs.

Discovery disputes in the first letter

Quince asked the court to require Deckers to respond to fifteen amended interrogatories served beyond the twenty-five-interrogatory limit in Federal Rule of Civil Procedure 33. The court denied that request because Quince served the additional interrogatories without a stipulation or court order. The denial was without prejudice to Quince filing a new joint discovery letter seeking permission to serve additional interrogatories. The court directed the parties to meet and confer about additional written discovery or, if more appropriate, a further deposition concerning two newly alleged infringing products.

Quince also sought Deckers’ settlement agreements from prior intellectual-property infringement cases. Deckers represented that it had not entered into licensing agreements in settling other trademark or patent infringement cases involving the three products at issue. The court concluded that Quince had not shown why settlement agreements without licensing provisions were relevant to damages or to a possible request for attorneys’ fees under the Patent Act. The court also found Quince’s claim that Deckers had pursued baseless cases to obtain nuisance settlements speculative and unsupported by evidence. The request for the settlement agreements was denied.

Discovery disputes in the second letter

The court addressed the preparation and scope of Quince’s deposition under Rule 30(b)(6), which permits an organization to designate a witness to testify about specified topics. The court directed the parties to identify an appropriate witness to testify about Quince’s search for responsive documents, or to agree that Quince could provide a detailed declaration instead.

The court found that information about prior accusations of intellectual-property infringement could be relevant to knowledge, intent, or absence of mistake. But it found the deposition topic too broad because it covered Quince’s products generally, rather than products involving intellectual property similar to that at issue. The parties were directed to meet and confer to narrow the topic, such as to shoes or apparel.

The court rejected Quince’s position that California financial-privacy privilege law barred questions about revenue and profits. It directed Quince to identify a witness who could testify about annual revenue, income, and profits from 2019 to the present. The court noted that Quince could instead provide annual profit-and-loss statements or use another agreed method to provide the information.

The court ordered Quince to supplement responses to Interrogatories 8, 23, and 24 with details about the circumstances in which it first became aware of the three Deckers products. The parties were also directed to clarify any agreement limiting the response to four employees. Regarding information about how the three accused products were designed and supplied, the court ordered further discussion and, if necessary, supplemental responses and deposition testimony. The court also required Quince to respond to a request for documents and communications concerning accusations of infringement, but only after the parties narrowed the request to exclude publicly available information and intellectual property dissimilar to that at issue.

Deposition of Deckers’ former chief executive officer

Quince sought to depose Deckers’ former chief executive officer, Dave Powers, about what Quince described as Deckers’ strategy of filing numerous lawsuits against competitors. The court explained that a deposition of a high-level executive may be limited when the information is available from a more convenient, less burdensome, or less expensive source. Deckers represented that Powers lacked unique, firsthand knowledge of the issues. The court also found that Quince had not shown that the requested information was relevant, particularly because Quince appeared to seek it to support a possible argument that the case was exceptional and warranted an attorneys’ fee award. The court denied Quince’s request to order Powers’s deposition.

Disposition

The court denied Quince’s requests for Deckers’ prior settlement agreements and for the deposition of Dave Powers. It denied the amended-interrogatory request without prejudice. For the remaining discovery disputes, it ordered the parties to meet and confer and, where specified, required Quince to provide additional discovery or identify a witness. If the parties could not reach a stipulated agreement before September 24, 2024, the court ordered them to appear for another in-person meeting on September 26, 2024.