1 UNITED STATES DISTRICT COURT 2 NORTHERN DISTRICT OF CALIFORNIA 3 EUREKA DIVISION 4 5 AIRWAIR INTERNATIONAL LTD., Case No. 20-cv-07696-SI (RMI)

6 Plaintiff,

ORDER RE: FIRST SET OF

7 v. DISCOVERY DISPUTES

8 ZOETOP BUSINESS CO., LIMITED, Re: Dkt. Nos. 61, 63, 64, 67, 69, 70, 71, 72, 9 Defendant. 73, 85

10 11 Now pending before the court are a series of discovery disputes in a trademark 12 infringement suit concerning the design and sale of certain footwear between Plaintiff and 13 Counterclaim-Defendant AirWair International Ltd. (“AirWair”) and Defendant and 14 Counterclaim-Plaintiff Zoetop Business Co., Limited (“Zoetop”). Following the filing of several 15 letter briefs (see dkts. 61, 63, 64, 67, 69, 70, 71, 72, & 73), the case was referred to the 16 undersigned (dkt. 79) for the resolution of all pending and future discovery disputes. A review of 17 the filings indicated that the Parties could benefit from further efforts in the meet and confer 18 process; hence, the undersigned issued an order to that effect on December 10, 2021 (see dkt. 81). 19 Thereafter, on December 17, 2021, the Parties filed another joint letter brief (dkt. 85), through 20 which they informed the court that they had fully resolved the disputes presented in their letter 21 briefs of December 2, 2021 (dkt. 70) and December 3, 2021 (dkt. 72). Accordingly, the requests 22 encompassed in those filings (dkts. 70 & 72) are DENIED as moot. Further, the Parties also 23 informed the court that they may be able to similarly resolve the disputes presented in another pair 24 of letter briefs, filed on December 2, 2021 (dkt. 71) and December 3, 2021 (dkt. 73); hence, the 25 Parties have jointly requested that the disputes encompassed in those filings (dkts. 71 & 73) be 26 held in abeyance for two weeks. That request is GRANTED and the Parties are encouraged to 27 continue their efforts at resolving those disputes without the need for court intervention. The court 1 brief of December 17, 2021 (dkt. 85), and which were originally presented in a series of letter 2 briefs filed between October 29, 2021, and December 1, 2021 (see dkts. 61, 63, 64, 67, & 69). 3 Dkt. 61 – AirWair’s Request to Compel Further Responses to Certain Interrogatories 4 AirWair seeks an order compelling further responses to six interrogatories (Set Two, Nos. 5 19-24) (see dkt. 61 at 14-15). AirWair contends that these interrogatories seek information about 6 specific infringing footwear that Zoetop has allegedly sold after the institution of this suit and that 7 the information sought is directly relevant to (1) AirWair’s claims in this case because “that 8 footwear infringes on the same trademarks and trade dress” asserted in this case; (2) AirWair’s 9 damages; and (3) whether Zoetop is liable for willful infringement. See Ltr. Br. (dkt. 85) at 2. The 10 gist of the information sought by the interrogatories in question (pertaining to a number of post- 11 filing infringing footwear styles, Set-1) is as follows: (1) ROG-19 seeks the date of first sale and 12 the number of styles sold from that date to the present; (2) ROG-20 seeks annual sales amounts for 13 US sales and the method used to calculate those amounts; (3) ROG-21 inquires about annual 14 profits from those sales and the method used for its calculation; (4) ROG-22 seeks details about 15 the process by which these footwear styles were designed and the names of all individuals 16 involved in the design process; (5) ROG-23 asks for the names of any suppliers from which these 17 footwear styles were purchased, that is, if they were purchased from a third party; and, (6) ROG- 18 24 seeks information about any inquiries as to the authenticity or nature of the footwear styles, 19 including inquiries as to whether there was an actual or potential connection or relationship 20 between AirWair or Dr. Martens and any of the post-filing infringing footwear encompassed in 21 Set-1. See Ltr. Br. of October 29, 2021, Exh. A (dkt. 61) at 14-15. 22 Zoetop argues that these interrogatories “seek to expand discovery to include unpled shoes 23 despite the imminent close of fact discovery and ongoing expert discovery which depends on what 24 products AirWair asserts . . . [and] [b]ecause AirWair has refused to amend its Complaint to 25 include this footwear, there remains no basis to require Zoetop to search for and produce irrelevant 26 information about products unrelated to any claim or defense in this case.” See Ltr. Br. of 27 December 17, 2021 (dkt. 85) at 4. Zoetop’s arguments are unpersuasive and take an unduly narrow 1 on the same trademarks and the same trade dress that has been asserted in this case; second, in 2 light of the fact that the post-infringing footwear is asserted to infringe on the same trademarks 3 and trade dress, the interrogatories appear to be logically related to the issue of damages as well; 4 and, third, the undersigned is similarly persuaded that the interrogatories seek information that is 5 logically related to the issue of willfulness as well. See Levi Strauss & Co. v. Esprit US 6 Distribution, Ltd., No. C 07-910 SI, 2008 U.S. Dist. LEXIS 119866, at *10-11 (N.D. Cal. Mar. 28, 7 2008) (citing Agilent Techs., Inc. v. Micromuse, Inc., 2004 U.S. Dist. LEXIS 20723, at *15 8 (S.D.N.Y. Oct. 19, 2004) (“. . . a pleading need not identify every infringing product where some 9 other limiting parameter has been set forth or at least one purportedly infringing product has been 10 identified.”). Similarly, putting aside the logical relevance to the issue of willfulness, the 11 Complaint in this case has sufficiently identified various limiting parameters in the footwear that 12 has been specifically included in the Complaint (see generally Compl. (dkt. 1) at 3-14) such that 13 the undersigned is persuaded that AirWair’s burden of establishing the relevance of the 14 interrogatories in question has been satisfied. Accordingly, Zoetop’s objections are 15 OVERRULED and AirWair’s request to compel further responses to the above-described 16 interrogatories is GRANTED. 17 Dkt. 63 – AirWair’s Request to Compel Zoetop to Fully Respond to Interrogatory No. 13 18 Through ROG-13, AirWair seeks the identification of “each person who has any 19 responsibility for or knowledge of the advertising, marketing and/or sale of the Alleged Infringing 20 Footwear.” See Ltr. Br. of November 18, 2021, Exh. A (dkt. 63) at 16. AirWair has justified 21 seeking this information as such: (1) AirWair has asserted trademark infringement and 22 counterfeiting claims based on Zoetop’s marketing and sale of footwear bearing AirWair’s 23 trademarks and trade dress. Id. at 2. Zoetop’s response provided the name of one employee, Lynn 24 Xu, Senior Marketing Manager, who was asserted to have “general information regarding 25 Zoetop’s marketing practices.” Id. AirWair’s dissatisfaction with Zoetop’s response appears to be 26 two-fold: (1) AirWair seems to want the names of more persons, literally anyone involved in 27 marketing, advertising, or sales related to any of the allegedly infringing products; and (2) the 1 and proportionality grounds. See Ltr. Br. of December 17, 2021 (dkt. 85) at 4-5. In this regard, 2 Zoetop submits that “there are no individuals responsible for marketing footwear – let alone the 3 specific footwear at issue – as distinct from marketing, generally.” Id. Zoetop then adds that 4 “[r]equiring [it] to interview thousands of employees across the world to assess if they would be 5 considered ‘responsible] for marketing or sales is a fishing expedition and ignores the substantial 6 discovery AirWair has taken and will take on relevant advertising, marketing, and sales, including 7 by way of Zoetop’s designated corporate representative. Id. at 5. In this regard, the court finds that 8 AirWair has not carried its burden of establishing the necessity and proportionality of the “further 9 responses” it seeks to ROG-13. However, to the extent that AirWair still seeks a business address 10 for Ms. Xu, that request is GRANTED and Zoetop is directed to furnish that information if it has 11 not done so already. Otherwise, AirWair’s request to compel further responses to ROG-13 is 12 DENIED because AirWair has failed to even assert, let alone demonstrate, that it cannot get the 13 pertinent information it needs to prove its claims or defenses, in this regard, through Zoetop’s 14 Senior Marketing Manager. 15 Dkt. 64 – AirWair’s Request to Compel Information re: Past Intellectual Property Claims 16 Initially, the court will note that the “Parties narrowed the issues raised by ECF 64 and 67 17 by agreeing that neither side must produce settlement agreements.” See Ltr. Br. of December 17, 18 2021 (dkt. 85) at 3. At issue here are AirWair’s RFP No. 10 (seeking “[d]ocuments sufficient to 19 show all claims of U.S. Intellectual property infringement asserted against You, whether in court 20 or by demand letter.”) and RFP No. 19 (seeking “[n]on-privileged Documents sufficient to show 21 all intellectual property infringement claims, settlements, and litigation involving You.”). See id. 22 at 3; see also Ltr. Br. of November 18, 2021, Exh. A (dkt. 64) at 15-16. In support of this request, 23 AirWair contends that this information is relevant to issues such as bad faith and willful 24 infringement, adding that “Zoetop’s purported concern about admissibility at trial cannot justify its 25 refusal to produce these documents. In support of its request, AirWair cites to Judge Scheindlin’s 26 opinion in Gucci Am., Inc. v. Guess?, Inc., 858 F. Supp. 2d 250, 254 (S.D.N.Y. 2012) (declining a 27 request to preclude evidence about third-party cease-and-desist letters from other fashion 1 information “presumptively admissible under Federal Rule of Evidence 402,” and declining to 2 exclude the evidence under Rule 403, upon finding that the probative value was not substantially 3 outweighed by the waste of time it might cause). Zoetop’s principal objection to producing this 4 material is two-fold: (1) Zoetop submits a good-for-the-goose, good-for-the-gander objection by 5 contending that AirWair cannot seek such discovery that is unrelated to pleaded intellectual 6 property while resisting similar discovery (in dkt. 67) that is related to the pleaded intellectual 7 property; and (2) Zoetop contends that AirWair’s request drastically expands the universe of 8 discovery which “would result in many trials within trials as Zoetop would be compelled to 9 explain the context for and its defenses to any third-party claims.” See Ltr. Br. of December 17, 10 2021 (dkt. 85) at 4. Zoetop’s objections are unpersuasive. First, its good-for-the-goose argument is 11 undermined by the fact that (see infra) AirWair contends that it has already produced the 12 documents (encompassed in dkt. 67) sought by Zoetop. More importantly, Zoetop’s second 13 argument is essentially an objection under F.R.E. 403 to the effect that the probative value of this 14 information is outweighed by its propensity to waste time at trial. While that may or may not be 15 true – it is not a question for today, and Zoetop’s Rule 403 objection is premature. Discovery is to 16 be allowed as to all non-privileged information that is relevant to a claim or defense and 17 proportional to the needs of the case, and information within that scope need not be admissible in 18 evidence to be discoverable. See e.g., Peng v. Nw. Mut. Life Ins. Co., No. 17-cv-01760-SI, 2017 19 U.S. Dist. LEXIS 109760, at *2 (N.D. Cal. July 14, 2017) (“Pre-trial discovery is ordinarily 20 accorded a broad and liberal treatment.”) (quoting Shoen v. Shoen, 5 F.3d 1289, 1292 (9th Cir. 21 1993)). Accordingly, because Zoetop’s Rule 403 objection must be presented to the presiding 22 judge at the appropriate time; because that objection is unrelated to the standard for whether the 23 information is discoverable rather than admissible; and, because AirWair’s showing regarding its 24 relevance and proportionality are persuasive, Zoetop’s objections are OVERRULED and 25 AirWair’s request to compel this information is GRANTED. 26 Dkt. 67 – Zoetop’s Efforts to Establish that Much of the Pleaded IP is Not Protectable 27 Through ROG-4 and RFP Nos. 3, 4, 7, and 26 (see generally Ltr. Br. of November 30, 1 AirWair’s efforts to defend and police its intellectual property rights such as to establish that much 2 of the pleaded intellectual property is not protectable and to investigate AirWair’s claims. See Ltr. 3 Br. of December 17, 2021 (dkt. 85) at 4. In turn, AirWair claims that it has already produced more 4 than 149 documents, consisting of 4,498 pages of its cease and desist letters, complaints, and 5 similar documents showing its efforts to police its intellectual property. See id. at 3. Zoetop’s 6 portion of the latest joint letter brief (dkt. 85) does not address AirWair’s statement to the effect 7 that it has already “complied with its discovery obligations by producing these documents, despite 8 the fact that they are only of attenuated relevance.” See id. at 3. Once again, the court will note 9 that this sort of misdirected argument – where parties argue past one another – demonstrates 10 inadequate efforts at the meet-and-confer process and operate to waste the court’s time and scarce 11 judicial resources. Since AirWair claims to have discharged its obligations as to Zoetop’s 12 discovery requests (in dkt. 67) and since Zoetop’s portion of the most recently filed letter brief 13 (dkt. 85 at 3-6) does not identify any missing information or any deficient production, Zoetop’s 14 motion to compel the information encompassed by ROG-4 and RFP Nos. 3, 4, 7, and 26 is 15 DENIED as moot. However, in order to prevent the Parties from saddling the court with an 16 element of this same dispute for a third time – to the extent that AirWair has not yet given a 17 fulsome response to ROG-4, or to the extent that any production remains outstanding regarding 18 RFP Nos. 3, 4, 7, and 26, AirWair is ORDERED to produce that discovery forthwith (excepting 19 of course any settlement agreements which were expressly excluded from both Parties’ requests 20 by subsequent stipulation). 21 Dkt. 69 – Zoetop’s Request to Compel Responses to ROG-6 and its Second Set of RFAs 22 Here, the Parties once again argue past one another and fail to address each other’s 23 contentions and concessions – rendering the court’s task difficult, if not impossible. Zoetop 24 contends that the Complaint does not apprise it of what infringement claims it must defend for 25 each product, necessitating it to propound ROG-6, which asks AirWair to identify which product 26 allegedly infringes which pleaded intellectual property and why. See Ltr. Br. of December 17, 27 2021 (dkt. 85) at 4. Zoetop then adds that “[t]o date, AirWair still refuses to disclose why any 1 providing unqualified answers to these RFAs.” /d. For its part, AirWair states that it has prepared 2 an 18-page response to ROG-6 which it has appended to the latest letter brief. See id. Exh A (dkt. 3 85) at 7-26. AirWair also notes that, during the meet and confer process, Zoetop has taken the 4 || position that its RFSs 23-193 were only necessary to discover information sought by ROG-6, to 5 which Zoetop claimed that AirWair had insufficiently responded. Jd. at 3. Consequently, AirWair 6 || contends that its “amended response to Interrogatory 6 resolves and/or moots ECF 69.” Id. 7 || Disappointingly, Zoetop’s portion of the letter brief simply ignores AirWair’s contentions and its 8 amended response to ROG-6. This leaves the court with an incomplete set of arguments on which 9 to base a reasoned decision. However, because Zoetop bears the burden of persuasion on what is 10 || in essence its request to compel discovery, the court can easily find that Zoetop has failed to carry 11 that burden. While Zoetop contends that AirWair must either properly answer ROG-6 or give 12 unqualified answers to the RFAs (see id. at 4), AirWair contends that it has now submitted an 5 13 amended response to ROG-6 about which Zoetop’s portion of the letter brief is silent. Because of 14 || that silence, the court must assume that Zoetop has no complaints about AirWair’s amended 3 15 answer to ROG-6, and therefore Zoetop’s request to compel an amended response to ROG-6 is z 16 || DENIED as moot. 5 17 Going forward, the court expects significantly more from the Parties regarding their efforts S 18 || to narrow their arguments and to coordinate and focus them to an intelligible and comprehensible 19 set of well-organized and well-presented disputes that are easily justiciable. For the reasons 20 || described herein (as well as due to not taking the meet and confer process as seriously as they 21 should), the Parties’ submissions of their discovery disputes thus far have been woefully deficient 22 || in that regard. 23 IT IS SO ORDERED. 24 Dated: December 23, 2021. 25 Mt Z 26 7 ROBERT M. ILLMAN United States Magistrate Judge 28