AirWair International Ltd. v. Zoetop Business Co., Limited
- Susan Illston
- 3:20-cv-07696
- U.S. District Court · Northern District of California
- 7
In AirWair v. Zoetop, Judge Illman ruled on discovery disputes, granting some requests, denying others, and holding two disputes for further negotiations.
AirWair International Ltd. and Zoetop Business Co., Limited, the parties involved in the pending trademark-infringement and counterclaim litigation.
What happened
AirWair International Ltd. v. Zoetop Business Co., Limited is a trademark-infringement case involving the design and sale of footwear. The court addressed several discovery disputes after the parties submitted letter briefs and were directed to continue meeting and conferring.
The court granted AirWair’s request for further answers to six interrogatories about footwear allegedly sold after the lawsuit began, and granted its request for information about Zoetop’s past intellectual-property claims. It granted AirWair’s request for Zoetop’s business address for one employee but otherwise denied the request for more answers about people involved in marketing and sales. The court denied Zoetop’s discovery request as moot, while ordering AirWair to provide any remaining information if its production was incomplete.
The court denied as moot the parties’ disputes in two filings because they had resolved them, granted their request to hold two other disputes for two weeks, and denied Zoetop’s remaining request as moot. Judge Illman also criticized the parties’ meet-and-confer efforts and ordered them to provide more focused discovery submissions.
The detailed version
- AirWair International Ltd. v. Zoetop Business Co., Limited · No. 3:20-cv-07696
- Susan Illston
- Dec. 23, 2021
Background
This order addresses the first set of discovery disputes in AirWair’s trademark-infringement suit against Zoetop. AirWair is also a counterclaim defendant, and Zoetop is also a counterclaim plaintiff. The disputes were referred to the undersigned for resolution. After the court ordered additional meet-and-confer efforts, the parties reported that they had resolved some disputes and might resolve others.
Rulings on AirWair’s requests
Docket No. 61
AirWair sought further responses to six interrogatories concerning footwear that Zoetop allegedly sold after the lawsuit began. The requests sought information including sale dates, sales and profits, design participants, suppliers, and inquiries about the footwear’s authenticity or possible connection to AirWair or Dr. Martens.
The court found the requests logically related to AirWair’s claims, damages, and whether Zoetop’s alleged infringement was willful. It concluded that AirWair had established the relevance of the requests and that the complaint identified sufficient limits for the discovery. The court overruled Zoetop’s objections and granted AirWair’s request to compel further responses.
Docket No. 63
AirWair sought the identity of each person with responsibility for or knowledge of Zoetop’s advertising, marketing, or sale of the allegedly infringing footwear. Zoetop had identified one employee, Lynn Xu, a Senior Marketing Manager, and argued that broader discovery would be burdensome and disproportionate.
The court found that AirWair had not shown the necessity or proportionality of requiring further responses identifying additional people. However, to the extent AirWair still sought Ms. Xu’s business address, the court granted that request and directed Zoetop to provide the address if it had not already done so. Otherwise, the court denied AirWair’s request to compel further responses to the interrogatory.
Docket No. 64
AirWair sought documents showing intellectual-property-infringement claims asserted against Zoetop, including claims made in court or by demand letter, as well as nonprivileged documents concerning intellectual-property claims, settlements, and litigation. The parties agreed that neither side had to produce settlement agreements.
The court found the requested information relevant and proportional to the needs of the case. It ruled that Zoetop’s objection based on the possible use of the information at trial was premature because discovery is broader than admissible trial evidence. The court overruled Zoetop’s objections and granted AirWair’s request for the information, excluding settlement agreements under the parties’ agreement.
Rulings on Zoetop’s requests
Docket No. 67
Zoetop sought information about AirWair’s efforts to defend and police its intellectual-property rights, arguing that the information could show that some of the pleaded intellectual property was not protectable. AirWair stated that it had already produced more than 149 documents, totaling 4,498 pages, concerning its cease-and-desist letters, complaints, and similar materials.
Because AirWair claimed to have completed its production and Zoetop’s latest submission did not identify missing information or an inadequate production, the court denied as moot Zoetop’s motion to compel. The court nevertheless ordered AirWair to promptly provide any remaining response to one interrogatory or production responsive to specified requests, except for settlement agreements, if anything remained outstanding.
Docket No. 69
Zoetop sought to compel a response to an interrogatory asking AirWair to identify which products allegedly infringed which pleaded intellectual property and why. Zoetop also connected that request to its requests for admissions. AirWair stated that it had prepared and submitted an amended response to the interrogatory and argued that the amended response resolved or mooted the dispute.
The court found that Zoetop had not addressed AirWair’s amended response in its submission. Because Zoetop had the burden of supporting its request to compel discovery and had not shown a remaining problem with the amended response, the court denied as moot Zoetop’s request to compel an amended response.
Other disputes and overall disposition
The parties reported that they had fully resolved the disputes presented in docket numbers 70 and 72. The court therefore denied as moot the requests in those filings. The parties jointly asked the court to hold the disputes in docket numbers 71 and 73 in abeyance for two weeks, and the court granted that request while encouraging continued efforts to resolve those disputes without court intervention.
The court criticized both sides’ submissions and meet-and-confer efforts, stating that the parties had often argued past one another and had not presented focused, well-organized disputes. The order resolved discovery matters only; it did not decide the underlying trademark-infringement claims.
Read the full 7-page opinion on CourtListener, the free public archive maintained by the Free Law Project.