United States District Court, S.D. New York
MEMORANDUM AND ORDER
C. FRANCIS IV UNITED STATES MAGISTRATE JUDGE.
plaintiff in this copyright action, Joseph Separzadeh, has
filed letter motions dated February 3, 2017, and February 28,
2017, seeking an order (1) compelling defendants Iconix Brand
Group Inc. ("Iconix") and Roc Apparel Group LLC
("RAG") to provide additional discovery responses,
(2) imposing discovery sanctions, including judgment by
default, against both defendants for purported discovery
abuses, and (3) granting leave to amend the complaint to add
New Rise Brands Holdings, LLC ("New Rise") as a
defendant. I will address each request in turn.
motion to compel discovery “must include a
certification that the movant has in good faith conferred or
attempted to confer with the person or party failing to make
disclosure or discovery in an effort to obtain it without
court action.” Fed.R.Civ.P. 37(a)(1). Here,
plaintiff's counsel acknowledges that he did not succeed
in scheduling a conference with RAG's attorney prior to
filing the motion, but contends that further delay would have
caused his client some unspecified prejudice. (Kleinman
2/3/17 Letter at 2). This does not satisfy the
meet-and-confer requirement; there has been not an adequate
showing that “temporal exigencies required speedy
action” or that “efforts at informal compromise
would have been clearly futile.” Prescient
Partners, L.P. v. Fieldcrest Cannon, Inc., No. 96 Civ.
7590, 1998 WL 67672, at *3 (S.D.N.Y. Feb. 18, 1998). And,
while there was some discussion with counsel for Iconix, the
specific issues raised in the plaintiff's motion do not
appear to have been addressed in detail. (Letter of Andrew T.
Hambleton dated Feb. 20, 2017 (“Hambleton 2/20/17
Letter”), at 9).
failure to conduct a meaningful conference is, by itself,
grounds for denying the relief requested by the plaintiff.
See Vaigasi v. Solow Management Corp., No. 11 Civ.
5088, 2016 WL 616386, at *11 (S.D.N.Y. Feb. 16, 2016);
Veleron Holding, B.V. v. BNP Paribas SA, No. 12 Civ.
5966, 2014 WL 4184806, at *2 (S.D.N.Y. Aug. 22, 2014).
However, in the interest of completing discovery so that this
case may be resolved on the merits, I will consider the
substance of the plaintiff's arguments.
plaintiff's general complaints about the quality of the
defendants' discovery responses are meritless. For
example, to the extent that RAG objected to the
plaintiff's interrogatories, those objections were
well-taken, since the interrogatories seek information beyond
the scope permitted by Local Civil Rule 33.3, without any
showing that interrogatories are a more efficient means of
obtaining the requested information than other forms of
discovery. (Defendant Roc Apparel Group LLC's Responses
and Objections to Plaintiff's First Set of
Interrogatories, attached as Exh. 9 to Declaration of
Nathaniel Kleinman dated Feb. 3, 2017 (“Kleinman
Decl.”), at 1). Similarly, RAG either produced
documents in response to the plaintiff's requests or
indicated that no such documents existed. (Defendant Roc
Apparel Group LLC's Responses and Objections to
Plaintiff's First Request for Production of Documents,
attached as Exh. 5 to Kleinman Decl.). And RAG responded to
the plaintiff's requests for admissions with appropriate
admissions, denials, and objections. (Defendant Roc Apparel
Group LLC's Responses and Objections to Plaintiff's
First Set of Requests for Admissions, attached as Exh. 12 to
only viable complaint the plaintiff has about RAG's
discovery responses concerns the tardy production of certain
sales records. Since this case arises from the
defendants' marketing of apparel containing the
plaintiff's copyrighted photograph, discovery has focused
in part on records of sales of that apparel. RAG's
ability to locate and produce such information was hampered
by the fact that the business made its last sales by December
31, 2013, and wound up operations by June 30, 2014.
(Affidavit of Ronnie DeMichael dated Feb. 16, 2017
(“DeMichael Aff.”), ¶ 8). RAG's computer
and email systems were shut down in December 2014 or January
2015. (DeMichael Aff., ¶ 13). As a result, RAG's
former COO/CFO searched his own work computer and was able to
locate and produce sales records for two relevant clothing
styles for October and November of 2013. (DeMichael Aff.,
¶¶ 4, 10-11). However, in connection with unrelated
litigation, RAG was recently required to reconstruct its
email system, as a result of which RAG located and produced
relevant royalty reports for the fourth quarter of 2013.
(DeMichael Aff., ¶¶ 15, 17-18).
a plausible explanation for RAG's failure to produce the
recently located sales records earlier in the discovery
process. Nevertheless, the plaintiff is entitled to explore
this issue further, and RAG shall therefore identify the
matter in which it was compelled to reconstruct its email
system and produce any order to that effect.
plaintiff argues that Iconix has waived all objections to the
plaintiff's discovery demands by failing to answer them
in a timely manner. This contention ignores the fact that
discovery was stayed for a substantial period while a motion
to amend the complaint was pending and while the parties
discussed a potential resolution of the action. As late as
January 23, 2017, plaintiff's counsel agreed to continue
to forego discovery pending further settlement discussions.
(Hambleton 2/20/17 Letter at 8). After the plaintiff
terminated settlement talks and indicated a desire to move
forward with discovery on January 27, 2017 (Hambleton 2/20/17
Letter at 8), Iconix served its discovery responses on
February 17, 2017 (Defendant Iconix Brand Group, Inc.'s
Objections and Responses to Plaintiff's First Requests
for Admission, attached as Exh. B to Hambleton 2/20/17
Letter; Defendant Iconix Brand Group, Inc.'s Objections
and Responses to Plaintiff's First Set of
Interrogatories, attached as Exh. C to Hambleton 2/20/17
Letter). There is therefore no basis for deeming any
objections to have been waived.
is one issue worthy of more discussion. Iconix only recently
identified New Rise as a licensee for products bearing the
image at issue. There is, however, an explanation for this
belated disclosure. No individual currently employed at
Iconix has first-hand knowledge of the design and sale of the
allegedly infringing goods. (Hambleton 2/20/17 Letter at 2).
Accordingly, when it initially searched for information
responsive to the plaintiff's demands, Iconix did not
realize that RAG had ceased operating as licensee for the
relevant products in 2013 and that New Rise had taken over
the license. (Hambleton 2/20/17 Letter at 2). Indeed, by its
terms, the license with RAG extended through March 31, 2016,
a fact that deterred Iconix from investigating whether there
might be other licensees. (Hambleton 2/20/17 Letter at 10).
Under these circumstances, Iconix's failure to disclose
New Rise as a licensee sooner than it did is understandable.
plaintiff's application for discovery sanctions is
denied. He has failed to demonstrate that the defendants
engaged in discovery abuse, intentional or otherwise.
Moreover, he has not shown that any ...