United States District Court, W.D. Washington, Seattle
ORDER GRANTING IN PART AND DENYING IN PART
PLAINTIFF'S MOTION TO COMPEL
Honorable Richard A. Jones United States District
matter is before the Court on Plaintiffs motions to compel.
Dkt. # 44. For the reasons below, the Court GRANTS in
part and DENIES in part the
Bluetooth SIG, Inc. ("Plaintiff or "SIG") owns
trademarks for BLUETOOTH, BLUETOOTH & B Design, and
"B Design" (collectively, the "BLUETOOTH
Marks"). Dkt. # 44. To date, the SIG has granted
licenses to use the BLUETOOTH Marks to more than 34, 000
member companies. Id.
FCA U.S. LLC ("Defendant" or "FCA") is a
North American automotive manufacturer of brands such as
Fiat, Chrysler, Dodge, Jeep, and Ram. Id. FCA claims
that among the myriad of components in its automobiles are
radio head unit components, some of which are
Bluetooth-enabled. Id. FCA claims to have purchased
these radio head unit components from various third-party
suppliers that had already secured licenses from SIG.
brings claims against FCA for (i) trademark infringement,
counterfeiting, and dilution; (ii) unfair competition; (iii)
and violations of the Washington Consumer Protection Act.
Dkt. # 1. On December 10, 2018, SIG propounded its First Set
of Requests for Production on FCA, and requested, among other
things, the production of financial documents reflecting
FCA's wholesale and retail fees or prices charged for its
products, FCA's gross sales revenues, profits, and costs,
and FCA's volume for each unit sold on a monthly basis
since each such good or service was first offered using the
SIG's marks (the "Requested Documents"). Dkt. #
44. The parties dispute the relevance of the requested
Court has broad discretion to control discovery. Avila v.
Willits Envtl. Remediation Trust, 633 F.3d 828, 833 (9th
Cir. 2011). That discretion is guided by several principles.
Most importantly, the scope of discovery is broad. A party
must respond to any relevant discovery request that is not
privileged and that is "reasonably calculated to lead to
the discovery of admissible evidence." Fed.R.Civ.P.
26(b)(1). The Court, however, must limit discovery where it
can be obtained from some other source that is more
convenient, less burdensome, or less expensive, or where its
"burden or expense . . . outweighs its likely benefit,
considering the needs of the case, the amount in controversy,
the parties' resources, the importance of the issues at
stake in the action, and the importance of the discovery in
resolving these issues." Fed.R.Civ.P. 26(b)(2)(C)(i),
Disputed Discovery Request
Request for Production No. 5
Request for Production ("RFP") No. 5, SIG seeks
"DOCUMENTS sufficient to show the wholesale and retail
fees or prices charged for each of YOUR GOODS AND
SERVICES." Dkt. # 44 at 5.
SIG claims that documents relating to the wholesale and
retail fees or prices charged by FCA for its products are
integral to the SIG's ability to perform an accounting
and compute its damages. Id. at 6. FCA objects to
this request for production, arguing that discovery of
FCA's financial information as to its automobiles is not
proportional to the needs of the case. Id. at 7-8.
The Court disagrees with FCA's assertion that SIG may not
be awarded discovery without first presenting evidence of the
"commercial magnetism" of the BLUETOOTH marks.
Id. FCA appears to admit the use of BLUETOOTH marks
to inform consumers that the radio head unit components
installed in FCA's automobiles use Bluetooth technology.
Id. The prices charged by FCA for products alleged
to be using or advertising the use of BLUETOOTH-equipped
products is reasonably relevant to SIG's claims.
Fed.R.Civ.P. 26(b)(1). However, the Court will DENY SIG's
motion to compel production because RFP No. 5, as written, is
overly broad and unduly burdensome.
Request for ...