Summary
permitting plaintiff bicycle manufacturer to subpoena website for early discovery about contact and sales information for seller of counterfeit bicycle components, but not permitting early discovery of bank account information
Summary of this case from Patent Tech., LLC v. WoodmanOpinion
No. C10-05725 HRL.
April 28, 2011
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION FOR LEAVE TO CONDUCT ADDITIONAL EARLY DISCOVERY [Re: Docket No. 24]
BACKGROUND
Plaintiff Specialized Bicycle Components, Inc. ("Specialized"), a maker of bicycles, cycling accessories, and apparel, owns and uses the trademark "Specialized" and a "Specialized S Logo." Docket No. 1 ("Complaint"), ¶ 11. Specialized filed suit against defendant "David Barton," the contact name for eBay, Inc. ("eBay") seller "buzzboysales," for trademark counterfeiting, infringement, and dilution under the Lanham Act, 15 U.S.C. §§ 1051 et seq., and for other violations of state law. Id. at ¶ 1.
With this Court's permission, Specialized took early discovery and identified individual Chuck Gibson ("Gibson") as the man behind the "David Barton" moniker, and so it filed a First Amended Complaint adding him as a defendant. Docket No. 12 ("First Amended Complaint" or "FAC") ("David Barton" and Gibson hereafter referred to as "Defendants"). Default has since been entered against Gibson. Docket No. 23.
Shortly after serving the First Amended Complaint on Gibson, Specialized received an email from "David Barton." Docket No. 25 ("Lugo Decl."), ¶ 4, Ex. C. In it, "David Barton" states that at least some of the allegedly counterfeit goods at issue were purchased from the website www.alibaba.com. Id., Ex. C.
Specialized now moves the Court for leave to conduct additional early discovery, namely, to serve a subpoena duces tecum pursuant to Federal Rule of Civil Procedure 45 on the owners and/or operators of www.alibaba.com that requests: (1) information regarding the source and value of the allegedly counterfeit goods purportedly obtained by Gibson; (2) information about sales to other individuals of similar allegedly infringing goods; (3) the identities of any other individuals who bought similar allegedly infringing goods; (4) further information about the eBay profile "buzzboysales"; (5) further information about Defendants, such as their true names, addresses, telephone numbers, dates of birth, and e-mail addresses; and (6) information, including bank account information, about all sales of any goods bearing the Specialized marks to Defendants. See Docket Nos. 24 ("Motion"), 26 ("Proposed Order"). No party opposed Specialized's motion.
LEGAL STANDARD
Under Federal Rule of Civil Procedure 26(d), a court may authorize early discovery before the Rule 26(f) conference for the parties' and witnesses' convenience and in the interests of justice. FED. R. CIV. P. 26(f)(1), (2). The key inquiry is whether a plaintiff has shown "good cause" for the early discovery. See, e.g., Patrick Collins, Inc. v. Does 1-1219, No. C10-04468 LB, 2010 U.S. Dist. LEXIS 138306, at *3 (N.D. Cal. Dec. 28, 2010); IO Group, Inc. v. Does 1-65, No. C10-04377 SC, 2010 U.S. Dist. LEXIS 114039, at *2 (N.D. Cal. Oct. 15, 2010);Semitool, Inc. v. Tokyo Electron America, Inc., 208 F.R.D. 273, 275-277 (N.D. Cal. 2002).
DISCUSSION
In this action, Specialized claims that Defendants knowingly sold, offered for sale, or otherwise contributed to the sale of counterfeit versions of cycling accessories and apparel bearing Specialized's trademarks and that Defendants' alleged conduct resulted in consumer confusion. See FAC. No Rule 26(f) conference has occurred since Gibson, the only defendant known to be an actual person, has not appeared in the action. Yet Specialized has received information that could lead to admissible evidence relevant to its claims in this case. In this circumstance, the Court believes good cause exists to allow Specialized to serve a subpoena duces tecum on the owners and/or operators of www.alibaba.com that requests information about (1) the eBay profile "buzzboysales" and/or Defendants in this case, and (2) information regarding the source and value of the allegedly counterfeit goods purportedly obtained by Defendants.
However, good cause does not exist to allow Specialized to serve a subpoena that requests information about individuals other than Defendants or about Specialized products sold to individuals other than Defendants. Such a subpoena would allow Specialized to conduct a fishing expedition in search of other potential defendants not related to this action. "While the standard of relevancy [in discovery] is a liberal one, it is not so liberal as to allow a party `to roam in shadow zones of relevancy and to explore matter which does not presently appear germane on the theory that it might conceivably become so.'" In re Fontaine, 402 F.Supp. 1219, 1221 (E.D.N.Y. 1975) (quotingBroadway Ninety-Sixth St. Realty Co. v. Loew's Inc., 21 F.R.D. 347, 352 (S.D.N.Y. 1958); see also WILLIAM W. SCHWARZER, A. WALLACE TASHIMA JAMES M. WAGSTAFFE, CAL. PRAC. GUIDE: FED. CIV. PRO. BEFORE TRIAL § 11:626 (The Rutter Group 2010).
CONCLUSION
Based on the foregoing, the Court GRANTS IN PART and DENIES IN PART Specialized's motion for leave to conduct additional early discovery. Specialized may serve a subpoena duces tecum on the owners and/or operators of www.alibaba.com that requests information about (1) the eBay profile "buzzboysales" and/or Defendants in this case, and (2) information regarding the source and value of the allegedly counterfeit goods purportedly obtained by Defendants. In allowing Specialized to conduct this discovery, the Court does not intend to foreclose any valid objections that may be raised by any parties responding to it.