WRB, Inc. v. DAMM, LLC

Background

The court addressed three motions: the DAMM Defendants’ motion to compel discovery, WRB’s motion to compel discovery, and the DAMM Defendants’ motion for leave to amend their answer and counterclaims. The parties initially disputed close to 120 discovery requests, but resolved or narrowed roughly 80% of them through later discussions and depositions.

Discovery rulings

WRB’s motion to compel was denied as moot because the parties resolved all discovery disputes covered by that motion.

The DAMM Defendants’ motion to compel was granted in part and denied in part. The court denied the motion as to Michael Nicholas Request for Production No. 11 and Matthew Reck Request for Production No. 12 because WRB represented that it had produced all responsive documents in its possession. The court also denied the motion as to DAMM, LLC Interrogatory Nos. 9 and 10 and Request for Admission No. 24 because WRB had provided sufficient responses; disagreement with the truth or substance of those responses was not a proper basis for compelling further answers.

The court granted in part the motion as to DAMM Request for Admission No. 9 and Allison Reck Request for Production No. 7, based on compromises reached by the parties, and ordered WRB to supplement its responses consistently with those compromises. The court granted in part the motion as to Danielle Nicholas Request for Production No. 4, requiring production of items showing rights, permissions, licenses, or assignments concerning U.S. Registration Nos. 2,405,337, 4,804,117, and 5,548,112 from January 1, 1999, to the present; the remainder of that request was denied.

The court denied the motion as to Danielle Nicholas Request for Production Nos. 5 and 7 because the DAMM Defendants had not sufficiently shown that the broad requests were relevant and proportional to the case. The court granted in part the motion as to Michael Nicholas Request for Production No. 12, requiring production of items referring to “hammer-schlagen stump” as a source identifier of goods, but otherwise denied that request. The court granted the motion as to Matthew Reck Request for Production Nos. 4, 5, 6, and 7 to the extent additional responsive information existed and required WRB to state that no responsive “items” existed if that was the case. The court denied the motion as to Matthew Reck Request for Production No. 11 and DAMM Request for Production Nos. 11 and 12.

The court also denied the motion as to DAMM Request for Admission Nos. 6 and 11. It granted the motion as to Request for Admission No. 17, requiring WRB to identify what portion of the request was true and admit, qualify, or deny the remainder. It also granted the motion as to Request for Admission No. 22 to the extent WRB had to admit that the image in U.S. Registration No. 5,548,112 did not include the outer bark layer.

WRB requested attorney fees and costs for responding to the DAMM Defendants’ motion. The court declined to award fees and costs, concluding that an award would be unjust under the circumstances. Each party was ordered to bear its own attorney fees and costs connected with the DAMM Defendants’ motion to compel.

Motion to amend

The DAMM Defendants sought to add clarity, factual allegations, an additional legal basis, and additional requested relief to their answer and counterclaims. The court granted the motion as to proposed amendments identified as items (a), (b), (c), (d), (e), (g), and (h). It granted in part item (k), allowing the proposed Paragraph L in the prayers for relief, but denied the proposed Paragraphs J and K for the reasons discussed in the order. Except where expressly denied, the court granted the remaining proposed amendments that WRB had not separately opposed.

The court denied the proposed amendments concerning the Minnesota Uniform Deceptive Trade Practices Act. The DAMM Defendants alleged that WRB’s demand letters and related communications disparaged their business, but the court found that the proposed facts described statements about the scope of WRB’s own intellectual-property rights rather than statements disparaging DAMM or its business. The court also found that the alleged confusion about WRB’s intellectual-property rights was not the type of product- or service-identity confusion covered by the statute’s catch-all provision.

The court also denied the proposed damages claim under 15 U.S.C. § 1120 for allegedly fraudulent procurement of U.S. Registration No. 5,548,112. The court concluded that the proposed allegations did not plausibly show that a written assignment was required for the alleged earlier transfers of common-law rights. It also concluded that awareness of other users was not enough to show that WRB or its representative knew those users had superior rights or clearly established rights that had to be disclosed to the United States Patent and Trademark Office. Because the proposed claim could not survive a motion to dismiss, the amendment would have been futile.

The DAMM Defendants separately sought to add Michael Martin as a party. The court denied that request because the deadline for motions to amend pleadings had passed and the request was not made through a proper motion. The court stated that the DAMM Defendants would need to file a proper motion if they wished to add Martin as a defendant.

Order and deadlines

The court ordered that the DAMM Defendants’ motion to compel was granted in part and denied in part, and that WRB’s motion to compel discovery was denied as moot. Discovery supplementation had to occur within 21 days of the order, and the DAMM Defendants had to file their amended answer and counterclaims within seven days. Tony N. Leung, United States Magistrate Judge, ordered each party to bear its own fees and costs related to the DAMM Defendants’ motion to compel.