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Copperhead Agricultural Products, LLC v. KB AG Corporation, LLC

United States District Court, D. South Dakota, Southern Division

December 10, 2019






         This matter is pending before the court on the complaint of Copperhead Agricultural Products, LLC, and Copperhead Concave LLC, (collectively "Copperhead"), both South Dakota entities. See Docket No. 1. Copperhead sues defendants KB Ag Corporation, LLC, and its principals Kimber Mitchell and Brian Robertson (collectively "KB Ag"), for trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a) and (d) and various state law claims. Id. Jurisdiction is premised on the presence of a federal question, 28 U.S.C. § 1331; supplemental jurisdiction, 28 U.S.C. § 1367; and diversity jurisdiction, 28 U.S.C. § 1332. Now pending is Copperhead's motion to compel certain discovery, Docket No. 43, which the district court, the Honorable Lawrence L. Piersol, referred to this magistrate judge for determination pursuant to 28 U.S.C. § 636(b)(1)(A). See Docket No. 47.


         The district court recently issued an opinion in this matter setting forth the facts and procedural history of this case in great detail. See Docket No. 78 at pp. 1-16. That description is incorporated herein by reference. What follows is a shortened version of facts relevant to this motion. This action is one of four pending actions in different venues with overlapping claims, all of which stem from a personal relationship between Carolyn Estes and Don Estes, formerly husband and wife, and a product invented by Don.

         Carolyn owned CW Welding, an Indiana company. Don invented the product known as the RPR Concave, also known variously as Estes RPR Concaves or Estes Performance Concaves. Concaves are devices fitted on combines which do the initial work of separating the grain from the chaff during harvesting. See, e.g.洊찊ᶆ泣, last checked December 11, 2019.

         Don allowed his wife, Carolyn, to use Don's name in advertisements for the RPR Concaves and Don promoted CM Welding products. Defendants herein, Mitchell and Robertson, were also involved in the sale and marketing of RPR Concaves for CM Welding at trade shows, in media and video reports, and other events associated with CM Welding. Carolyn was Mitchell's legal guardian and grandmother. Robertson is Mitchell's finance.

         Then Carolyn and Don filed for divorce and things became complicated. On August 20, 2018, a civil action was filed in Indiana state court by CM Welding, Inc., against Don, Copperhead, Steven William Greeno, and CSM Corp. See Docket No. 67 at p. 7. [XXXXX] See Docket No. 59-1 (sealed). [XXXXX] Id [XXXXX] Id. [XXXXX] See Docket No. 59-2 (sealed). Counsel for Copperhead represents to the court that the stay in the Indiana state court action has now been lifted.

         [XXXXX] See Docket No. 59-3 (sealed). [XXXXX] Id. On September 2019, the USPTO registered the mark "RPR" in association with agricultural harvester machinery. Docket No. 74. The registration is on the Principal Register in favor of CM Welding. Id, Docket No. 74-1. However, the application for the mark "RPR Concaves" remains pending and subject to opposition before the USPTO.[2] Id.

         There is also litigation pending in the Southern District of Texas in which claims are made collectively against Don Estes, CSM Corporation and Copperhead Concave Systems, and CM Welding, Inc., seeking to declare Don Estes' patents unenforceable and invalid. Docket No. 63, 63-9.

         This action in the District of South Dakota was filed by Copperhead on September 27, 2018. See Docket No. 1. In lieu of an answer to the complaint herein, defendants filed a motion to dismiss under Fed.R.Civ.P. 12(b) for failure to state a claim and for lack of personal jurisdiction. See Docket Nos. 14 85 42.[3] Because no answer was filed, the parties were not ordered to hold the Rule 26(f) meeting where deadlines for stages of the litigation and discovery plans are discussed and agreed upon. Had that planning meeting taken place, the parties' agreement would have been incorporated into a Rule 16 scheduling order issued subsequent to the meeting by the district court. Also because the initial planning meeting did not take place, the parties did not exchange the initial voluntary discovery which parties are required to provide each other under Fed.R.Civ.P. 26.

         On February 8, 2019, Copperhead filed a motion for permission from the court to conduct expedited discovery for purposes of (1) responding to KB Ag's motion to dismiss for lack of personal jurisdiction and (2) supporting a motion for preliminary injunctive relief which Copperhead also planned to file.[4] See Docket No. 23. Copperhead supplied the district court with a copy of the written discovery requests (interrogatories and requests for production of documents) it proposed serving on defendants. See Docket No. 23-1.

         In its brief in support of the motion to conduct discovery, Copperhead explained it wanted to develop information relating to the nature of Carolyn's relationship with defendants and whether Carolyn or CM Welding authorized, assigned or otherwise purported to transfer intellectual property rights to defendants relating to the RPR Concaves. See Docket No. 24 at pp. 6-8.

         Copperhead did not inform the district court in its request for expedited discovery that the Indiana state court had stayed discovery in that action some four months earlier in November, 2018, nor was any mention made of the USPTO action or the then-pending motion to stay in that tribunal in favor of the Indiana action, Id The district court approved the proposed discovery and granted Copperhead permission to conduct expedited discovery as indicated in the proposed document. See Docket No. 33. The court notes that the two purposes proposed by Copperhead for conducting the discovery-to respond to personal jurisdiction defenses and to support a preliminary injunction motion-are now moot, both of those issues having been decided by the district court.

         Copperhead served defendants with its written discovery requests. Defendants provided some documents, but not all, and not all electronic documents were provided in the format desired by Copperhead. This motion to compel ensued. The parties engaged in good faith efforts to resolve their differences before Copperhead filed the instant motion. Their unresolved disputes are described in more detail below.

         A motion to stay was filed by defendants after Copperhead filed the instant motion to compel. Accordingly, this court held the motion to compel in abeyance pending the district court's ruling on the motion to stay. After the district court denied the motion to stay, this court requested counsel for Copperhead to provide the court with an "executive summary" of the discovery disputes still extant. Prior to doing so, the parties' counsels met again on November 11, 2019, to attempt to resolve their dispute. The court was informed that no issues were resolved at that conference. Accordingly, the court requested that the previously-asked-for executive summary be filed. It was, and defendants responded to the same. Those informal responses are filed herewith as an appendix to this opinion.


         A. Scope of Discovery

         Federal Rule of Civil Procedure 26(b)(1) sets forth the scope of discovery in civil cases pending in federal court:

Unless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within the scope of discovery need not be admissible in evidence to be discoverable.

See Fed.R.Civ.P. 26(b)(1). Rule 26 contains specific limitations relative to electronic discovery and other objections to providing discovery:

(B) Specific Limitations on Electronically Stored Information. A party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost. On motion to compel discovery or for a protective order, the party from whom discovery is sought must show that the information is not reasonably accessible because of undue burden or cost. If that showing is made, the court may nonetheless order discovery from such sources if the requesting party shows good cause, considering the limitations of Rule 26(b)(2)(C). The court may specify the conditions for the discovery.
(C) When Required. On motion or on its own, the court must limit the frequency or extent of discovery otherwise allowed by these rules or by local rule if it determines that:
(i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive;
(ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or
(iii) the proposed discovery is outside the scope permitted by Rule 26(b)(1).

See Fed.R.Civ.P. 26(b)(2)(B) and (C). A party claiming a privilege as to requested discovery has the burden of proving the basis for the application of the privilege:

When a party withholds information otherwise discoverable by claiming that the information is privileged or subject to protection as trial-preparation material, the party must:
(i) expressly make the claim; and
(ii) describe the nature of the documents, communications, or tangible things not produced or disclosed-and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim.

See Fed.R.Civ.P. 26(b)(5)(A). If a party fails to respond to a proper request for discovery, or if an evasive or incomplete response is made, the party requesting the discovery is entitled to move for a motion compelling disclosure after having made a good faith effort to resolve the dispute by conferring first with the other party. See Fed.R.Civ.P. 37(a).

         The scope of discovery under Rule 26(b) is extremely broad. See 8 Charles A. Wright 85 Arthur R. Miller, Federal Practice & Procedure § 2007, 36-37 (1970) (hereinafter "Wright & Miller"). The reason for the broad scope of discovery is that "[m]utual knowledge of all the relevant facts gathered by both parties is essential to proper litigation. To that end, either party may compel the other to disgorge whatever facts he has in his possession." 8 Wright 85 Miller, § 2007, 39 (quoting Hickman v. Taylor, 329 U.S. 495, 507-08, 67 S.Ct. 385, 392, 91 L.Ed.2d 451 (1947)). The Federal Rules distinguish between discoverability and admissibility of evidence. Fed.R.Civ.P. 26(b)(1), 32, and 33(a)(2). Therefore, the rules of evidence assume the task of keeping out incompetent, unreliable, or prejudicial evidence at trial. These considerations are not inherent barriers to discovery, however.

         The advisory committee's note to the 2000 amendments to Rule 26(b)(1) provide guidance on how courts should define the scope of discovery in a particular case:

Under the amended provisions, if there is an objection that discovery goes beyond material relevant to the parties' claims or defenses, the court would become involved to determine whether the discovery is relevant to the claims or defenses and, if not, whether good cause exists for authorizing it so long as it is relevant to the subject matter of ...

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