Deckers Outdoor Corporation v. Wholesale In Motion Group, Inc.

Background

Deckers sued Wholesale in Motion over alleged infringement of Deckers’s footwear-related rights, including claims under the Lanham Act, patent law, and state statutory and common law. The opinion text describes the dispute as involving Wholesale in Motion’s manufacture, importation, marketing, distribution, offers for sale, and sales of certain footwear products that Deckers alleged infringed its Fluff Yeah Dress and a patent identified as the “’941 Patent.”

Deckers served requests for production and interrogatories on November 13, 2023. After Wholesale in Motion failed to provide responses by the stated deadline, Deckers sought court assistance. Wholesale in Motion then served responses and some documents, and the court denied Deckers’s earlier letter motion without prejudice to renewal.

Discovery dispute

Deckers later reported that the responses remained deficient. According to Deckers, Wholesale in Motion used identical or substantially identical responses for multiple requests, did not clearly state whether it had produced responsive documents or had none, and failed to respond adequately to requests concerning the accused products, their design and development, the “’941 Patent,” communications referencing “Fluff Yeah” or “UGG,” and advice-of-counsel materials. Deckers also reported that Wholesale in Motion had not produced a privilege log for documents it claimed were protected by attorney-client privilege and had not answered a request for document-retention policies.

Deckers asked for the right to file a motion to compel—an application asking the court to require fuller discovery responses and production of documents.

Ruling

The court stated that it was dismayed that document discovery remained outstanding, particularly in light of an earlier order reminding Wholesale in Motion of its discovery obligations. The court instructed Wholesale in Motion to respond specifically to Deckers’s account by March 6, 2024.

The order did not grant or deny a motion to compel, determine whether any privilege had been waived, or decide whether the disputed documents had to be produced. Judge Paul A. Engelmayer’s order addressed the next step in the discovery process.