Coty Inc. v. Cosmopolitan Cosmetics Inc.

Background

Plaintiffs Coty Inc., Calvin Klein Trademark Trust, Calvin Klein, Inc., Calvin Klein Cosmetic Corporation, HUGO BOSS Trade Mark Management GmbH & Co. KG, and Marc Jacobs Trademarks, LLC sued Cosmopolitan Cosmetics Inc., Eugene Abraham, and William Gold. The claims include trademark infringement and counterfeiting under the Lanham Act, unfair competition, false description, false designation of origin, and New York common-law unfair competition. The discovery dispute concerned fragrances whose production codes had been removed, obscured, covered with stickers, or otherwise damaged, which the order calls “Decoded Products.”

At the June 11, 2020 telephone conference, the parties presented disputes through a joint letter-motion. The court applied Federal Rule of Civil Procedure 26(b)(1), which generally permits discovery of nonprivileged information relevant and proportional to the needs of the case. The court explained that discovery may be limited when its burden or expense outweighs its likely benefit.

Plaintiffs’ discovery requests

The court denied Plaintiffs’ request for information about Cosmopolitan’s sales of products whose production codes had not been removed or obscured, called “Non-Decoded Products.” The court reasoned that the claims focus on allegedly nonconforming Decoded Products and that the Non-Decoded Products posed no likelihood of confusion under the court’s analysis. The court therefore held that Plaintiffs were not entitled to discovery about those products.

The court granted in part and denied in part Plaintiffs’ request for information about Cosmopolitan’s sales of Decoded Products. To the extent Cosmopolitan had not already done so, it had to produce information sufficient to show sales of Decoded Products after November 29, 2018, including sales since Plaintiffs’ inspection of Cosmopolitan’s facility.

The court denied Plaintiffs’ request to compel amended responses to requests for admission numbered 51 through 62. It gave three reasons: Cosmopolitan had denied each request; the requests concerned the central factual disagreement in the lawsuit rather than facts suitable for admission; and the requests used multiple defined and undefined terms and covered multiple periods and trademarks, making them unsuitable for answers that could be admitted or denied without explanation.

The court also denied Plaintiffs’ request for a second inspection of Cosmopolitan’s facility. It found that Plaintiffs had not shown that they received material information after the May 2019 inspection that would justify another inspection, and characterized a second inspection as cumulative and duplicative.

The court denied Plaintiffs’ request to compel Cosmopolitan to revise or supplement its documents, production, and interrogatory responses concerning the Individual Defendants. The court stated that Cosmopolitan could not be faulted for failing to produce records it did not have. It said Plaintiffs could question the identified individuals through depositions if they wanted more detailed information about their roles.

Cosmopolitan’s discovery requests

The court granted Cosmopolitan’s request for production of the agreement between Marc Jacobs Trademarks, LLC and Marc Jacobs International LLC, referred to as the Marc Jacobs Agreement. The court found that the agreement appeared relevant and responsive and should not be burdensome to produce. The court accepted Plaintiffs’ position that they had satisfied their obligation to produce agreements governing Calvin Klein Trademark Trust.

For six other agreements, the court ordered the parties to meet and confer in good faith about redactions and confidentiality classifications. If they could not agree by July 1, 2020, they had to submit disputed agreements to the court in redacted and unredacted form for private judicial review.

The court granted Cosmopolitan’s request to compel the Brand Owner Plaintiffs to provide substantive responses to interrogatories 2 through 10. The court rejected Plaintiffs’ argument that a pending motion to dismiss a licensing counterclaim automatically stayed discovery. It also found that the interrogatories sought information relevant beyond that counterclaim, including the quality-control measures used by Coty and the Brand Owner Plaintiffs.

The court granted in part and denied in part Cosmopolitan’s motion to compel production from the Brand Owner Plaintiffs. Plaintiffs had to identify which documents in their production came from the custody or control of each Brand Owner Plaintiff, either by providing a list of document numbers or by using a separate numbering system. The remainder of Cosmopolitan’s request was denied.

The court denied Cosmopolitan’s request for additional sales and revenue information. It found that Cosmopolitan had not shown good cause for requiring information beyond the unit-sales information Plaintiffs had already produced.

The court denied Cosmopolitan’s request for further documents identifying which products bore the asserted production codes. Cosmopolitan had not shown that Plaintiffs possessed additional documents on that subject. The court stated that questions about an existing document, including how it was prepared and which products bore the codes at particular times, could instead be addressed through depositions.

The court ordered the parties to meet and confer about disputed confidentiality designations. If disputes remained by July 1, 2020, the parties had to submit redacted and unredacted versions of the disputed documents for private judicial review. The parties were also directed to meet and confer and jointly file an amended proposed case-management plan by July 1, 2020.

Disposition

The court denied Plaintiffs’ requests concerning Non-Decoded Products, amended admissions, a second inspection, and additional responses about the Individual Defendants. It granted Cosmopolitan’s request for the Marc Jacobs Agreement and substantive answers to interrogatories 2 through 10. It granted in part and denied in part Cosmopolitan’s request for production from the Brand Owner Plaintiffs, denied Cosmopolitan’s requests for additional sales and revenue information and further product-identification documents, and issued additional meet-and-confer and document-review directives. The Clerk was directed to close the joint letter-motion.