Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA209217
`ESTTA Tracking number:
`05/05/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92046928
`Defendant
`Dorfman, William M.
`Kristine M. Boylan
`Merchant & Gould P.C.
`80 South 8th Street, Suite 3200
`Minneapolis, MN 55402-2215
`UNITED STATES
`kboylan@merchantgould.com, msindt@merchantgould.com,
`dockmpls@merchantgould.com, soslick@merchantgould.com
`Opposition/Response to Motion
`Scott M. Oslick
`soslick@merchantgould.com, dockmpls@merchantgould.com,
`kboylan@merchantgould.com
`/Scott M. Oslick/
`05/05/2008
`2008 05 05 Registrants Response to Petitioners Motion to Compel.pdf ( 21
`pages )(1199830 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Billion Dollar Smile, Ltd.
`Petitioner,
`
`j
`j Cancellation No. 92046928
`v.
`j Mark: MILLION DOLLAR SMILE
`William M. Dorfman,
`j Registration No. 3,084,967
`Registrant. 3
`
`
`
`REGISTRANT’S RESPONSE TO PETITIONER’S MOTION TO COMPEL
`
`INTRODUCTION
`
`Petitioner’s Motion should be denied, as Petitioner’s Second Motion for An Order
`
`to Compel Discovery fails to comply with applicable rules for a discovery motion.
`
`Petitioner’s Memorandum does not set forth any specific discovery request, Registrant’s
`
`response thereto or a concise description of why Registrant’s response or objection to that
`
`discovery request is improper. Petitioner’s Motion is vague, confusing, and the relief
`
`requested by Petitioner is not properly founded. In fact, Petitioner’s Motion is almost too
`
`vague and nonspecific to warrant a response.
`
`Petitioner’s Motion should also be denied because Registrant did timely respond
`
`to Petitioner’s discovery with proper objections and substantive responses. Petitioner, on
`
`the other hand, never responded to Registrant’s objections or rephrased its requests. In
`
`fact, Petitioner’s Motion papers do not even contain a response to the objections. The
`
`Motion should be denied.
`
`

`
`FACTS RELEVANT TO REGISTRANT’S COOPERATION IN DISCOVERY
`
`Registrant respectfully disagrees with Petitioner’s contention that Registrant’s
`
`counsel has neglected discovery discussions. In September 2007, this case was
`
`suspended. During that time, no activity occurred with respect to any aspect of the case.
`
`Less than one full business day after the Board issued its Order denying Petitioner’s
`
`Motion for Summary Judgment on March 28, 2008,‘ Petitioner’s counsel demanded that
`
`Dr. Dorfman immediately supplement the discovery responses already served. Three
`
`days later, Petitioner filed its first Motion to Compel. Just a short seventeen days later,
`
`Petitioner filed its Second Motion to Compel.
`
`As Petitioner’s counsel was advised, Registrant’s counsel was unavailable for a
`
`week during that latter seventeen-day period. Moreover, Petitioner’s counsel is unaware
`
`of, and has not inquired into the details of, Registrant’s availability to respond to
`
`discovery requests. The 28 emails and 8 phone calls referenced in Petitioner’s Motion
`
`are not an indication of neglect on the part of Registrant, but instead show the degree to
`
`which Registrant’s counsel extended professional courtesies and was responsive to
`
`Petitioner’s counsel’s many phone calls and emails. Petitioner, on the other hand, never
`
`even responded to the Registrant’s timely served objections.
`
`1 The Board’s Order was mailed to Registrant’s counsel via US Mail on March 28, 2008. Registrant’s
`counsel did not at that time receive Notices from the Board via Email.
`
`

`
`ARGUMENT
`
`I.
`
`Petitioner’s Motion Should Be Disregarded As Noncompliant With The
`Special Requirements for A Motion to Compel Discovery.
`
`The TTAB Manual of Procedure requires that any motion to compel discovery
`
`include a Verbatim recitation of the discovery request, a copy of the response thereto and
`
`a concise recitation of why the response is improper. TBMP §523.02 (“Special
`
`Requirements for Motion to Compel Discovery”)? Petitioner’s submission included
`
`complete copies of Registrant’s Answers to lnterrogatories and Responses to Document
`
`Requests, but failed to indicate any particular interrogatory or document request at issue.
`
`In no place does it set forth a particular request, the response thereto or a concise
`
`recitation of why the response or objection is improper. The Motion is noncompliant and
`
`misdirected. Therefore, the Board should deny the Motion to Compel.
`
`2 The District Minnesota Local Rule 37.2 can be used as an example of the specific requirements in 37
`CFR 2.120(e) and TBMP Rule 523.02 because it unambiguously describes the level of specificity needed
`for any Motion to Compel:
`
`LR 37.2 FORM OF DISCOVERY MOTIONS
`
`Any discovery motion filed pursuant to Rules 28 through 37 of the Federal Rules of Civil
`Procedure shall
`include, in the motion itself or in an attached memorandum, (a) a
`specification of the discovery in dispute, and (b) a verbatim recitation of each
`inte. rrogatory, request, answer, response, and objection which is the subject of the motion
`ora copy of the actual discovery document which is the subject ofthe motion. %n the case
`of motions involving interrogatories, document requests or requests for admissions, the
`moving party's memorandum shall set forth only the particular interrogatories, document
`requests or requests for admissions which are the subject of the motion, the response
`thereto, and a concise recitation of why the response or objection is improper.
`
`[Adopted effective February 1, 1991]
`
`D.Minn. LR 37.2.
`
`

`
`II.
`
`Should This Tribunal Treat Petitioner’s Motion On The Merits, An Order
`Denying the Motion Is Appropriate.
`
`A.
`
`The Objections To Overly Broad and Unduly Burdensome Requests
`Should Be Sustained.
`
`Petitioner’s discovery requests are overly broad and unduly burdensome. More
`
`than 40 of Petitioner’s 46 document requests seek production of all documents. In a
`
`timely response, Registrant objected to the production of all documents as overly broad
`
`and unduly burdensome. Petitioner never responded to the objections and never
`
`rephrased the requests.
`
`Petitioner’s discovery requests are also burdensome in that the same information
`
`is repeatedly sought in multiple requests. One example of the burdensome nature of
`
`Petitioner’s document requests can be found in Requests Nos. 15-19. These five different
`
`requests seemingly seeking the same information in five different ways:
`
`15.
`
`flocumeivts relating to or showing the dollar amount of expenses relating to 3€lV(.‘1"il$lI1;1_-;
`
`and promotion ofthc "Mark or goods hearing or services sold under 111.: Mark,
`
`£6.
`
`Documents relating to or showing the dollar amount‘ of expenses for each month relating
`
`10' 3dV¢1T355fl£ and promotion of the Mark or goods bearing or services sold under the Mark.
`
`I7.
`
`Documents relating to or showing the dollar amount of expenses for each quarter relating
`
`to advertising and promotion of the Mark or goods bearing of services sold under the Mark.
`
`l3.
`
`{Documents relating to or showing the dollar amount of expenses for each year relating to
`
`3d"¢T‘5Slfl3 3113 nromotion of the Mark or goods bearing or services sold under me Mark.
`
`19.
`
`Documents relating to or showing the dollar amount of expenses for any period relating
`
`to advertising and promotion ofthe ‘Mark or goods hearing or services sold under the Mark.
`
`Attachment 3 to Pet. Mot. To Compel. This type of discovery request is unduly
`
`burdensome and harassing. Registrant’s objections to the discovery should be sustained.
`
`

`
`B.
`
`The Objections On Relevance Should Be Sustained.
`
`A party is entitled to discover only information that is relevant to the claims and
`
`defenses in an action. The question Petitioner put at issue in this case, namely, whether
`
`MILLION DOLLAR SMILE is generic or so highly descriptive that the registration
`
`should be cancelled is determined by an examination of whether the mark is generic or
`
`whether the mark merely describes the goods or services listed in the registration.
`
`Omnicom, Inc. v. Open Systems, Inc., Cancellation No. 16,177, 1989 TTAB LEXIS 28,
`
`*3 (TTAB April 28, 1989).
`
`In a case like the present one, the plaintiff has the burden of making a prima facie
`
`showing that the marks are not entitled to registration by virtue of their descriptive
`
`character as applied to the goods or services. Id. Thus, Petitioner has the burden of
`
`showing that MILLION DOLLAR SMILE is unregistrable because it merely describes
`
`dentist services.
`
`If the plaintiff meets its burden, the defendant then must overcome the plaintiffs
`
`showing by demonstrating either that the marks are not merely descriptive or that they
`
`have acquired distinctiveness. Id. As such, Registrant must demonstrate that MILLION
`
`DOLLAR SMILE is unregistrable only if Petitionerfirst puts forth a prima facie case that
`
`the mark is, in fact, merely descriptive of “dentist services.”
`
`Even under a broad interpretation of relevance, there are few documents
`
`exclusively in Registrant’s possession that are relevant to Petitioner’s claim. For
`
`example, Registrant is not in possession of evidence to support Petitioner’s claim that
`
`MILLION DOLLAR SMILE is generic and that it was generic before the filing date of
`
`the application. The question of whether a term is generic is answered by how the term is
`
`

`
`used in common parlance and by how it appears in a dictionary. Registrant does not have
`
`a dictionary in his possession that includes an entry or definition for the term MILLION
`
`DOLLAR SMILE. Further, to the best of Registrant’s knowledge, no such dictionary
`
`exists. Registrant did not think the mark was generic or he would not have adopted it as a
`
`trademark.
`
`Registrant is entitled to rely upon the presumption accorded his registration for
`
`MILLION DOLLAR SMILE in the defense of this action, and Registrant will identify
`
`any documents and witnesses it intends to rely upon for the defense of this action at trial
`
`when they become known.
`
`Registrant objected to 19 of Petitioner’s 46 document requests as seeking
`
`information not relevant to‘ Petitioner’s claim. Petitioner has not addressed Registrant’s
`
`basic objections to the relevance of requested information.3 Because, inter alia, the
`
`information sought by Petitioner is not relevant, this Motion should be denied.
`
`CONCLUSION
`
`An Order denying Petitioner’s Motion to Compel is appropriate. Petitioner’s
`
`Motion lacks the specificity required for this tribunal to grant the Motion. Further, based
`
`on the merits of Registrant’s objections, and the fact that Petitioner has failed to address
`
`
`
`3 Petitioner repeatedly cites to TBMP Section 414 (on discoverability) as support for the propriety of its
`requests, but relevance is a threshold question about whether a party is entitled to information in discovery.
`See, e.g., Huggins v. Federal Express Corporation, No. 4-06-CV-01283, 2008 US. Dist. LEXIS 11663, #8
`(E.D. Mo. Feb. 15 2008)(“notwithstanding the liberal scope of discovery, some threshold showing of
`relevance must be made. . .”)(attached as Exh. H to the S. Oslick Affidavit).
`Discoverability is a separate and secondary question. Dr. Dorfman has not raised the issue of
`discoverability.
`
`

`
`the merits of those objections, there is nothing to compel in discovery. Based on the
`
`foregoing, Petitioner’s Motion should be denied.
`
`Respectfully Submitted:
`
`William M. Dorfman
`
`By his Attorneys,
`
`
`
`Kristine M. Boylal/21
`‘\,
`Scott M. Oslick
`MERCHANT & GOULD P.C.
`
`
`
`80 South Eighth Street, Suite 3200
`Minneapolis, MN 55402-2215
`Telephone: (612) 332-5300
`
`542,
`
`Date: May _, 2008
`
`

`
`CERTIFICATE OF FILING
`
`I hereby certify that REGISTRANT’S RESPONSE TO PETITIONER’S MOTION TO
`
`COMPEL is being filed electronically through on-line TTAB filing systems, ESTTA on
`
`May;:3_, 2008.
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing REGISTRANT’S RESPONSE TO
`
`PETITIONER’S MOTION TO COMPEL has been served on counsel for Petitioner by e-
`
`mail and first class mail, postage prepaid, this 5_th day of May, 2008 as follows:
`
`Tom Adolph
`Jackson Walker L.L.P.
`
`1401 McKinney Street
`Suite 1900
`
`Houston, Texas 77010
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`) Cancellation No. 92046928
`)
`) Mark: MILLION DOLLAR SMILE
`)
`) Registration No. 3,084,967
`)
`
`Billion Dollar Smile, Ltd.
`
`Petitioner,
`
`v.
`
`William M. Dorfman,
`
`) )
`
`Registrant.
`
`DECLARATION OF SCOTT M. OSLICK
`
`I, Scott M. Oslick, being warned that willful false statements and the like are
`
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such
`
`willful false statements and the like may jeopardize the Validity of the application or
`
`document or any registrations resulting therefiom, declare that all statements made of my
`
`own knowledge are true, and all statements made on information and belief are believed
`
`to be true.
`
`I have personal knowledge of the matters contained in this declaration.
`
`1.
`
`My name is Scott M. Oslick. I am an associate in the firm of Merchant &
`
`Gould, 3200 IDS Center, 80 South 8th Street, Minneapolis, Minnesota 55402, and I am
`
`one of the attorneys that represent Registrant William M. Dorfman.
`
`2.
`
`I have practiced trademark law continuously and exclusively since
`
`January, 1998.
`
`3.
`
`Attached hereto as Exhibit A is a true and correct copy of Trademark Trial
`
`and Appeal Board’s decision in Omnicom, Inc. v. Open Systems, Inc., Cancellation No.
`
`16,177, 1989 TTAB LEXIS 28 *3 (TTAB April 28, 1989).
`
`

`
`4.
`
`Attached hereto as Exhibit B is a true and correct copy of the U.S. District
`
`Court for the Eastern District of Missouri, Eastern Division’s decision in Huggins v.
`
`Federal Express Corporation, N0. 4-06—CV-01283, 2008 U.S. Dist. LEXIS 11663, #8
`
`(E.D. Mo. Feb. 15,2008).
`
`I DECLARE UNDER PENALTY OF PERJURY
`
`THAT THE FOREGOING IS TRUE AND CORRECT
`
`Dated: May 5, 2008
`
`
`s/Scoz‘tM. Oslick
`Scott M. Oslick
`
`

`
`TTAB LEXlS 28
`Get a Document‘,-[by Citation -
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`Citation: 1989 TTAB LEXIS 28
`
`1989 TTAB LEXIS 28, *
`
`Omnicom, Inc. v. Open Systems, Inc.
`
`Opposition No. 72,367
`
`Cancellation No. 16,177
`
`Trademark Trial and Appeal Board
`
`1989 TTAB LEXIS 28
`
`April 28, 1989, Decided
`
`CORE TERMS: descriptive, registration, opposer, distinctiveness, descriptiveness, reconsideration, secondary meaning,
`summary judgment, days prior, distinctive, opening, prima facie, trademark, inherently, reset
`
`JUDGES:
`
`[*1]
`
`Before Sams, Krugman and Seeherman, Members.
`
`OPINION BY: KRUGMAN
`
`OPINION:
`
`Opinion by Krugman, Member:
`
`The Board, in a ruling issued January 17, 1989, granted opposer/petitioner's motion for summary judgment on the issue of
`opposer/petitioner's standing and granted applicant/respondent's cross motion for summary judgment on the issue of the
`genericness of the term "OPEN SYSTEMS." The motions were otherwise denied, leaving for trial the remaining issues of
`whether "OPEN-SYSTEMS" is merely descriptive and, if so, whether said term has acquired a secondary meaning. Trial
`dates were then reset.
`
`This case now comes up on opposer/petitioner's request for reconsideration of the Board's January 17, 1989 ruling.
`Opposer/petitioner asserts that the application opposed herein was refused registration on the ground that the mark was
`merely descriptive; that applicant then amended its application to seek registration pursuant to Section 2(f) of the Act and
`that this amendment to Section 2(f) constitutes an admission that the term sought to be registered is merely descriptive
`and a concession that the term is not inherently distinctive. Opposer/petitioner concludes that there is no need to decide
`the [*2]
`issue of whether applicant/respondent's mark is merely descriptive since descriptiveness has already been
`admitted by applicant/respondent and that the only issue remaining for trial is whether the term has acquired secondary
`meaning. Opposer/petitioner requests that the Board's January 17, 1989 ruling be modified so as to grant
`opposer/petitioner's motion for summary judgment on the question of whether "OPEN SYSTEMS" is merely descriptive as
`used in connection with the services of applicant/respondent.
`
`Applicant/respondent has filed a brief in opposition to the request for reconsideration. n1
`
`n1 Applicant/respondent implies in its brief that there is some question as to whether or not the application was
`prosecuted pursuant to Section 2(f), comparing this case to the one in Conggleum Corp. v. Armstrongcork Co., 218 USPQ
`528 (TTAB 1983). However, it is quite clear that the application involved herein was amended to one seeking registration
`pursuant to Section 2(f) and that the application was published with a Section 2(f) notation. This was specifically
`acknowledged by applicant/respondent in the supplemental affidavit of John Cifford filed on November 18, 1988. [*3]
`
`The Board has carefullyconsidered opposer/petitioner's remarks made in its request for reconsideration but remains of the
`view that the Board's January 17, 1989 ruling is correct and free of error. Where, as here, a plaintiff opposes registration
`of a mark and seeks to cancel the registration of a mark on the basis that those marks are merely descriptive (Section 2
`(e)(1)), that is to say, that said marks are not inherently distinctive and have not acquired distinctiveness, the plaintiff's
`burden of proving that the marks are not entitled to registration is the same whether or not the application or registration
`included a claim of distinctiveness under Section 2(f) of the Trademark Act. If the application was published and the
`registration issued with no reference to Section 2(f), the plaintiff has the burden of making a prima facie showing that the
`
`http://wvvw.lexis.com/research/retrieve?_m=8a95393215810205ce217fe5bfb8b9d2&csvc=|e&... 05/05/2008
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`
`Page 2 of 3
`Get a Document — by Citation - 1989 'l‘l'AB LEXIS 28
`marks are not entitled to registration by virtue of their descriptive character as applied to the goods or services. If the
`plaintiff meets this burden, the defendant then must overcome plaintiff's showing by demonstrating either that the marks
`are not, in fact, merely descriptive or that they have acquired distinctiveness. The Board [*4] would then decide themere
`descriptiveness/acquired distinctiveness issue based on the entire record presented.
`
`Similarly, where, as here, a mark published pursuant to Section 2(f) is opposed on the ground that said mark is merely
`descriptive and has not acquired secondary meaning, the plaintiff must come forward with evidence to establish, prima
`facie, that the defendant did not satisfy the acquired distinctiveness requirement of Section 2(f). What this must
`necessarily consist of is evidence that the mark is merely descriptive of the goods or services and that it has not acquired
`distinctiveness as a trademark of defendant's. Defendant's claim of the benefits of Section 2(f) may, of course, be
`considered as a piece of evidence that the mark in question was, at the time of its adoption, merely descriptive of the
`goods or services in connection with which it was adopted (or evidence, at least, that defendant so believed). The
`existence of a Section 2(f) claim does not, on the other hand, pre-empt consideration of the descriptiveness issue. Indeed,
`because the statutory ground for opposing or cancelling the registration of a mark that is asserted to be merely descriptive
`and/or [*5] not distinctive is Section2(e)(1), and not Section 2(f), it is somewhat illogical to maintain that the issue of
`mere descriptiveness "drops out" when a mark is allowed publication pursuant to Section 2(f). Section 2(f) is defendant's
`shield, not plaintiff's sword. The core of the issue to be decided in these cases always remains the merely descriptive
`character of the mark and whether such merely descriptive character has been replaced, through use, with trademark
`meaning. We must decide these issues on the entire evidentiary record presented and, in our view, plaintiff has the same
`evidentiary burden of establishing a prima facie case of descriptiveness, regardless of the presence in the record of a claim
`under Section 2(f). See, generally, Yamaha International v. Hoshino Gaklgi, 840 F.2d 1S72,_6USPQ 2d 1001 (Fed. Cir.
`1988).
`
`The request for reconsideration is denied. Trial dates are reset as shown in the accompanying trial order.
`
`Merchant, Gould, Smith, Edell, Welter and Schmidt
`Att: John A. Clifford
`3100 Norwest Center
`90 South 7th Street
`Minneapolis, MN 55402
`
`Opposition No. 72,367
`
`Cancellation No. 16,177
`
`Omnicom, Inc. v. Open Systems, Inc. [*6]
`
`In accordance with the Trademark Rules of Practice, trial dates are set as indicated below.
`
`IN EACH INSTANCE, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on
`the adverse party WITHIN THIRTY DAYS after completion of the taking of testimony. Rule 2.125.
`
`THE PERIOD FOR DISCOVERY TO CLOSE:
`
`Testimony period for party in position of plaintiff to close (opening thirty days prior thereto)
`
`June 30, 1989
`
`Testimony period for party in position of defendant to close (opening thirty days prior thereto)
`
`August 29, 1989
`
`Rebuttal testimony period to close (opening fifteen days prior thereto)
`
`October 13, 1989
`
`Briefs shall be filed in accordance with Rule 2.128 (a) and (b).
`
`An oral hearing will be set only upon request filed as provided by Rule 2.129.
`
`Robert G. Roomian
`P.O. Box 71111
`
`Alexandria, VA 22307-7010
`
`Legal Topics:
`
`For related research and practice materials, see the following legal topics:
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`http://wvvw.lexis.com/research/retrieve?_m=8a95393215810205ce217fe5bfb8b9d2&csvc=le&... 05/O5/2008
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`Get a Document - by Citation - 1989 TTAB LEXIS 28
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`Citation: 2008 u.s. dist. LEXIS 11663
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`2008 U.S. Dist. LEXIS 11663, *
`
`WALTER HUGGINS, Plaintiff, vs. FEDERAL EXPRESS CORPORATION, BRADFORD HOLDING COMPANY, INC., d/b/a UNIQUE
`STAFFING, LTD., IRELAND LOGISTICS CORPORATION, TETON TRANSPORTATION, INC., and SWANSTON EQUIPMENT
`COMPANY, Defendants.
`
`UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MISSOURI, EASTERN DIVISION
`
`Case No. 4:06-CV-01283 SNL
`
`2008 U.S. Dist. LEXIS 11663
`
`February 15, 2008, Decided
`February 15, 2008, Filed
`
`PRIOR HISTORY: Hgggins V. Fed. Express Co_rp., 2008 U.S. Dist. LEXIS 11376 (ED. Mo., Feb. 14,_2_O08)_
`
`CORE TERMS: discovery, driver, protective order, photographs, ncident, settlement, privileged, custody, discovery of
`admissible evidence, reasonably calculated to lead, insurer, responding party, work—product, discovery requests,
`inspection, relevancy, trailer, repair, advis, medical records, scene, work product doctrine, vicarious liability, objected,
`formally, driving, hiring, moot, hire, confidential
`
`[*1] For Walter Huggins, Plaintiff: Kelly J. Curnutt -rfigt, LEAD ATTORNEY, CURNUTT AND HAFER, LLP,
`COUNSEL:
`Arlington, TX; Michelle M. Funkenbusch v, LEAD ATTORNEY, THE FUNKENBUSCH LAW FIRM, St. Louis, MO.
`
`For Federal Express Corporation, Defendant: John S. Mccollough 453%, LEAD ATTORNEY, HEPLER BROOM, St. Louis, MO;
`Melissa R. Null 1-, LEAD ATTORNEY, WAGENFELD LEVINE, St. Louis, MO.
`
`For Ireland Logistics Corporation, Defendant: John S. McCo||ough 7“, LEAD ATTORNEY, HEPLER BROOM, St. Louis, MO.
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`For Teton Transportation, Inc., Defendant: Joseph R. Swift flit, LEAD ATTORNEY, BROWN AND JAMES, P.C., St. Louis, MO.
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`For Swanston Equipment Company, Defendant: Mark J. Cero Sr. ‘fir, LEAD ATTORNEY, HAHN AND ENRIGHT, St. Louis,
`MO.
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`JUDGES: Stemen N. Limbau_gh wr, SENIOR UNITED STATES DISTRICT JUDGE.
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`OPINION BY: Stephen N. Limbaugh v
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`OPINION
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`MEMORANDUM
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`
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`This matter is before the Court on Plaintiff's motions to compel (Doc. # 36, filed Sep. 5, 2007; Doc. # 55, filed Nov. 29,
`2007) and Defendant's motion for a protective order (Doc. # 50, filed Nov. 21, 2007). Upon due consideration of the
`parties‘ filings, Plaintiff's motions to compel (Docs. ## 36 & 55) are HEREBY GRANTED. Defendant's motion for a
`protective order (Doc. # 50) is HEREBY DENIED, as moot.
`
`BACKGROUND
`
`In September [*2] of 2005, Plaintiff filed a petition in the Circuit Court of the City of Saint Louis, State of Missouri.
`Plaintiff was involved in a motor vehicle accident in Webster County, Missouri while acting in the scope of his employment
`with former Defendant Bradford Holding Company, Inc. ("Bradford"). Thereafter, Plaintiff filed a worker's compensation
`claim with the Texas Workers‘ Compensation Commission against Bradford and has received to date in excess of $
`70,000.00 for his work-related injuries. Subsequent to his workers‘ compensation claim, and relevant here, Plaintiff
`brought suit against Defendants Ireland Logistics Corporation (''Ireland'') and Federal Express Corporation v("FedEx")
`<FN1> alleging negligence, based on a theory of vicarious liability. Plaintiff bases his claims on the alleged facts that
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`Ireland and FedEx employed the driver ("Gutierrez"), who was operating the truck (in which Plaintiff was riding), and
`acting in the course and scope of his agency/employment, at the time of the accident.
`
`FN1. "Federal Express Corporation '7'“ was the name used in Plaintiff's state court petition and by both sides
`during subsequent filings, to identify the instant defendant.
`
`Now before the Court, [*3] Plaintiff requests an order compelling FedEx to respond to his discovery requests;<FN2>
`while FedEx seeks an order of protection from the same.
`
`FN2. As of this moment, Ireland is no longer a party to this action. Therefore, Plaintiff's motion to compel,
`insofar as it relates to former Defendant Ireland, is HEREBY DENIED, as moot. If Plaintiff desires to discover
`certain evidence from non-parties, he must comply with the applicable Rules of Procedure. See FED. R. Civ. P.
`34(C) &4_S.
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`LEGAL STANDARD
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`The Federal Rules relating to discovery permit each party to serve the opposing party with document requests which relate
`to "any matter that may be inquired into under Rule 26(b)." FED R. Civ. P. 34(a). "For each item or category, the response
`must either state that inspection and related activities will be permitted as requested or state an objection to the request,
`including the reasons." Id. R. 34(b)(2)(B). If only part of the request is objectionable, the responding party must specify
`the part and permit inspection of the rest. Id. R. 34(b)(2)(C). Where a party fails to cooperate in discovery, the
`propounding party may motion the Court "for an order compelling an answer, designation, production,
`[*4] or
`inspection." Id. R. 37(a)(3)(B).
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`ANALYSIS
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`The issue before the Court is not one uncommon. The Court acknowledges that parties to litigation would be much better
`off if they did not have to disclose certain evidence under their control. But alas, this is not the state of affairs intended by
`our adversarial system, nor is it amenable to our rules of discovery. The Court reminds the parties of the well-established
`principle:
`
`"Mutual knowledge of all the relevant facts gathered by both parties is essential to proper |itigation." Thus the
`spirit of the rules is violated when advocates attempt to use discovery tools as tactical weapons rather than to
`expose the facts and illuminate the issues by overuse of discovery or unnecessary use of defensive weapons or
`evasive responses. All of this results in excessively costly and time—consuming activities that are
`disproportionate to the nature of the case, the amount involved, or the issues or values at stake. FED. R. Civ.
`P. 26 advisory committee note (1983) (quoting Hickman v. Tay/or,_329 U.S. 495, 5074 67 S. Ct. 385,_91 L. Ed.
`451 (1947)).
`
`I. Plaintiff's First Motion to Compel
`
`In his first motion to compel (Doc. # 36), Plaintiff avers that FedEx responded to his production [*5] requests with
`incomplete or evasive answers, and unfounded objections. Upon reviewing Plaintiff's requests and Defendant's responses
`thereto, the Court notes that Defendant objected to (or otherwise declined to answer) 16 of Plaintiff's 19 document
`requests. The Court undertakes to address FedEx's seemingly insurmountable claim of privilege under Rule 26.
`
`A. Work-Product Doctrine
`
`First, FedEx objects to several of Plaintiffs requests on the basis that the sought—after documents are protected work-
`product.
`
`The rules of discovery shield against the disclosure of documents prepared in anticipation of litigation by or for another
`party. FED. R. Civ. P. 26(b)(3)(A). To invoke the "work- product" doctrine, the party from whom discovery is sought must
`"(i) expressly make the claim [of privilege]; and (ii) describe the nature of the documents .
`.
`. 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." Id. R. 26(b)(5). While work-product is broadly applied, it is a qualified privilege that may be overcome by a
`proper showing of substantial need and an inability without undue hardship [*6] to obtain the substantial equivalent by
`other means. Onwuka v. Federal Express Corp.,_178 F.R.D. 508, 512-15 (D.Minn.1997) (quoting FED. R. Civ. P. 26(b)(3)
`advis. comm. n.).
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`Here, Plaintiff's requests and FedEx's respective objections were as follows:
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`Page 3 of 8
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`REQUEST FOR PRODUCTION NO. 3
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`Copies of any and all photographs taken of the vehicles involved in the accident in question.
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`RESPONSE: Objection in that the request is not limited as to time or scope. Furthermore, the request may call
`for information which is privileged under the attorney work product doctrine.
`
`First, FedEx's temporal objection is overruled. While it is well—established that discovery must be limited as to time,
`geography, and/or subject matter, Plaintiff's request is not overly broad. Plaintiff seeks photographs which depict the
`vehicles involved in the subject accident. Even assuming FedEx is being asked for photographs over the course of the
`vehicles‘ usable lives, the Court finds Plaintiff's request manageable. Plaintiff says it well: "Are there hundreds or
`thousands of photographs within FedEx's possession, custody, or control?"
`
`FedEx's second objection "may” be attorney work—product. Even assuming FedEx had demonstrated [*7] the basis for its
`privilege claim (which it has not), Plaintiff has sufficiently established "substantial need," e.g., inability to re—create the
`scene or otherwise access the subject photographs.
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`Accordingly, FedEx must produce copies of any and all photographs (if any) taken of the vehicles involved in the subject
`accident.
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`REQUEST FOR PRODUCTION NO. 8
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`Any and all photographs taken of the scene of the accident.
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`RESPONSE: Objection in that the request calls for information which is privileged under the attorney work
`product doctrine.
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`Here, Defendant alleg