United States District Court, D. South Dakota, Southern Division
COPPERHEAD AGRICULTURAL PRODUCTS, LLC, A SOUTH DAKOTA LIMITED LIABILITY COMPANY; AND COPPERHEAD CONCAVE LLC, A SOUTH DAKOTA LIMITED LIABILITY COMPANY; Plaintiffs,
KB AG CORPORATION, LLC, KIMBER MITCHELL, BRIAN ROBERTSON, Defendants.
ORDER GRANTING IN PART AND DENYING IN PART
PLAINTIFFS' MOTION TO COMPEL DOCKET NO. 43
VERONICA L. DUFFY UNITED STATES MAGISTRATE JUDGE.
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.
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.
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.
https://wwwyoutube.com/watch?v洊찊ᶆ泣, last checked
December 11, 2019.
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
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.
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. Id.
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.
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
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.
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. 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.
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.
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
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.
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.
Scope of Discovery
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
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
(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
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
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 ...