1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 ADVANTUS, CORP., Case No.: 19cv1892-CAB (NLS) 12 Plaintiff, ORDER ON MOTION FOR

DETERMINATION OF DISCOVERY

13 v.

DISPUTE NO. 4

14 SANDPIPER OF CALIFORNIA, INC.; n/k/a DBJ Enterprises, Inc.; PIPERGEAR [ECF No. 193] 15

USA, INC.; INNOVAPRO

16 CORPORATION; and DAVID JACOBS, 17 Defendants. 18 19 Before the Court is Plaintiff Advantus, Corp.’s (“Advantus”) Motion for 20 Determination of Discovery Dispute No. 4, wherein Plaintiff seeks to compel Defendants 21 Innovapro Corporation (“Innovapro”) and Sandpiper of California (“Sandpiper”) to 22 respond to its Requests for Admission (“RFA”) 2, 4, 6, 8, 10, 12, 14, 16, and 18. ECF 23 No. 193. After due consideration and for the reasons set forth below, the Court 24 GRANTS Advantus’s motion to compel responses to these RFAs. 25 I. BACKGROUND 26 Advantus is a company that manufactures and distributes various products, 27 including military style bags, backpacks, and other luggage items under its Mercury 28 Luggage and Mercury Tactical Gear Brands (“Mercury”). ECF No. 121 at ¶ 2. It filed 1 this lawsuit against Defendants, alleging that they engaged in false advertising of 2 competing products and labeled their goods as being made in the USA without any basis 3 to do so. Id. at ¶¶ 19-23. 4 Innovapro in turn asserted counterclaims against Advantus and Mercury for 5 trademark infringement. ECF No. 150. Among other claims, Innovapro alleges that 6 Mercury’s Bunker 72 Hour Pack and Blaze Bugout backpack products infringe on the 7 trade dress of its own Three Day Pass and Bugout backpack products. Id. at ¶¶ 32-33. 8 Specifically, Innovapro alleges that the trade dress arises from a combination of the 9 following design features: (1) a top carrying handle comprising bare webbing, (2) 10 compartment-wide webbed MOLLE panels, (3) enlarged name tape panel located at the 11 top-center of the secondary external compartment, (4) external compartment zipper tracks 12 that are completely rounded at the top, (5) faux leather ID tag, (6) rectangular patch and 13 stitching on the bottom of the bags, and (7) the particular compartment numbers and 14 arrangement. Id. at ¶ 33. In its answer, Advantus and Mercury assert the defense that 15 this trade dress is not protectable because the features are functional. ECF No. 177 at 13, 16 ¶¶ 81-84, 90-94. 17 On December 30, 2020, Advantus served several RFAs regarding these design 18 features on Innovapro and Sandpiper.1 In their responses, Innovapro and Sandpiper both 19 provided only objections to the RFAs at issue and did not provide any substantive 20 responses. In this motion, Advantus seeks to compel responses from Innovapro and 21 Sandpiper. 22 II. DISCUSSION 23 The RFAs that are at issue in this motion are recited below, each essentially asking 24 for an admission on whether an individual design feature or combination of features 25 would make the bag less useful for users: 26

27 1 Sandpiper originally marketed and sold the Three Day Pass and Bugout backpack 28 1 RFA 2: If the Sandpiper Bags did not have a top carrying handle, such bags would be less useful to users of the bags. 2 3 RFA 4: If the Sandpiper Bags did not have compartment-wide webbed MOLLE panels, such bags would be less useful to users of the bags. 4 RFA 6: If the Sandpiper Bags did not have the enlarged name tape panel, such 5 bags would be less useful to users of the bags. in the case. 6 RFA 8: If the Sandpiper Bags did not have the external compartment zipper tracks 7 that are completely rounded at the top, such bags would be less useful to users of such 8 bags. 9 RFA 10: If the Sandpiper Bags did not have a faux leather ID tag, such bags would be less useful to users of the bags. 10 11 RFA 12: If the Sandpiper Bags did not have the rectangular patch and stitching on the bottom of the bags, such bags would be less useful to users of the bags. 12 RFA 14: If the Sandpiper Bags did not have the particular compartment number 13 and arrangement of such compartments, such bags would be less useful to users of the 14 bags. 15 RFA 16: If the S.O.C. Bugout Bag had fewer features, it would be less useful to 16 users of the bag. 17 RFA 18: If the Three Day Pass Bag had fewer features, it would be less useful to users of the bag. 18 19 Innovapro and Sandpiper objected to each of these on the same grounds—that each 20 calls for a legal conclusion, is vague as to time and the term “useful,” assumes facts and 21 is an incomplete hypothetical, and violates Rule 36 because the rule “does not ask 22 responding party to admit or deny either: (a) facts, the application of law to fact, or 23 opinions about either, or (b) the genuineness of any described documents; rather, the 24 request proposes a hypothetical that is not based on fact and impermissibly requests that 25 responding party provide, in effect, an opinion to that effect.” ECF No. 193-2 at 11. 26 Innovapro and Sandpiper’s arguments in opposition to this motion are the same— 27 primarily that they cannot be compelled to respond to a RFA that is predicated on an 28 incomplete hypothetical. Id. at 18. 1 Advantus disagrees, arguing that the RFAs are not incomplete hypotheticals 2 because they directly relate to an issue in dispute and would reduce the burden on the 3 factfinder at trial. Id. at 14-17. In addition, Advantus argues that the RFAs do not call 4 for a legal conclusion because they do not use legal terms or concepts and simply ask a 5 factual question. Advantus also argues that the RFAs are not vague because the term 6 “useful” is a commonly understood term in the English language. 7 Courts have not compelled parties to respond to incomplete hypotheticals that are 8 “not tied to the facts at issue in the case.” Friedman v. Godiva Chocolatier, Inc., No. 9 09CV977-L BLM, 2010 WL 4009660, at *2 (S.D. Cal. Oct. 13, 2010) (declining to 10 compel responses to admissions regarding a hypothetical retailer and hypothetical 11 customer). In Apple Inc. v. Samsung Elecs. Co., No. C 11-CV-1846 LHK PSG, 2012 WL 12 952254, at *4 (N.D. Cal. Mar. 20, 2012), the court explained that the issue of whether an 13 admission sought is proper reduces to this question: “does a given RFA address a 14 disputed fact in the case and would an affirmative response reduce the burden on a jury at 15 trial?” 16 Advantus argues that the RFAs here are tethered to an issue in the case—whether 17 the claimed trade dress is functional or not—and an affirmative answer would reduce the 18 burden on the fact finder at trial. ECF No. 193-2 at 15. Thus, Advantus argues that the 19 RFAs are comparable to conditional hypotheticals that have been permitted by other 20 courts. See, e.g., Apple Inc. v. Samsung Elecs. Co., 2012 WL 952254, at *4 (permitting 21 RFAs that compared an asserted design to specific design patents identified to be prior art 22 in patent infringement lawsuit because the RFAs addressed the factual issue of whether 23 the patents were anticipated by prior art). Furthermore, Advantus argues that the RFAs 24 are not the same of the RFAs in the cases that Innovapro and Sandpiper rely upon, 25 because the hypotheticals in those cases addressed factual situations that have no impact 26 on the issues to be decided. ECF No. 193-2 at 16-17. 27 The Court agrees with Advantus. Whether the trade dress specifically named in 28 the RFAs are functional or not is at clearly in the case as a defense asserted by Advantus 1 and Mercury. ECF No. 177 at 13, ¶¶ 81-84, 90-94. “A trademark is functional ‘when it 2 is essential to the use or purpose of the device or when it affects the cost or quality of the 3 device.’” Talking Rain Beverage Co. Inc. v. S. Beach Beverage Co., 349 F.3d 601, 603 4 (9th Cir. 2003) (quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 5 (2001)). “The functionality doctrine prevents trademark law, which seeks to promote 6 competition by protecting a firm’s reputation, from instead inhibiting legitimate 7 competition by allowing a producer to control a useful product feature.” Qualitex Co. v. 8 Jacobson Prod. Co., 514 U.S. 159, 164 (1995). In determining whether a product feature 9 if functional, one of the factors that the court considers is “whether the design yields a 10 utilitarian advantage.” Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 11 1006 (9th Cir. 1998). Thus, whether a product feature is useful or not to consumers is a 12 question that may be useful to a jury at trial. Innovapro and Sandpiper do not provide a 13 compelling counterargument as to why the RFAs targeting whether certain features are 14 useful do not relate to an issue in this case. 15 In addition, the Court also overrules the objections as to vagueness and calling for 16 a legal conclusion. The vagueness objection appears to be little more than a boilerplate 17 objection. Innovapro and Sandpiper do not explain why the term “useful” is vague. To 18 the contrary, the term is readily understood in common usage. The legal conclusion 19 objection is also overruled. The RFAs targeting whether certain features are useful do 20 not ask Innovapro and Sandpiper to opine on the actual question of functionality. Rather, 21 usefulness is one factor that may be considered as part of the ultimate inquiry. Disc Golf 22 Ass’n, 158 F.3d at 1006; Blumenthal Distrib., Inc. v. Herman Miller, Inc., 963 F.3d 859, 23 869 (9th Cir. 2020) (“[A] feature that provides a utilitarian benefit is not functional unless 24 the Disc Golf factors weigh in favor of finding it so.”). 25 Accordingly, Innovapro and Sandpiper’s objections to the RFAs are overruled and 26 the motion to compel is GRANTED. 27 // 28 // 1 Hl. CONCLUSION 2 After due consideration and for the reasons stated above, Plaintiff's motion to 3 ||compel responses to the RFAs is GRANTED. Defendants Innovapro and Sandpiper 4 || must provide responses to RFA Nos. 2, 4, 6, 8, 10, 12, 14, 16, and 18 within 14 days of 5 || this order. 6 IT IS SO ORDERED. 7 Dated: May 21, 2021 g Mite. Lemme 9 Hon. Nita L. Stormes 10 United States Magistrate Judge

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