KINGDOMWORKS STUDIOS, LLC, Plaintiff, v. KINGDOM STUDIOS, LLC, and KINGDOM INC., Defendants CASE NO. 19-cv-14238-MARTINEZ/MAYNARD United States District Court, S.D. Florida Entered on FLSD Docket December 21, 2020 Counsel Salvatore Fazio, Joseph V. Priore, Michael I. Santucci, Santucci Priore, P.L., Fort Lauderdale, FL, for Plaintiff. Brian A. Glasser, Pro Hac Vice, Bailey Glasser, LLP, Henrik Jonathan Redway, Pro Hac Vice, Melissa Alcantara, Pro Hac Vice, Dickinson Wright PLLC, Washington, DC, John G. Turner, III, Pro Hac Vice, Robert R. Bell, III, Pro Hac Vice, Bailey Glasser, LLP, Charleston, WV, Nicole Louise Ballante, Bailey and Glasser, St. Petersburg, FL, Vijay Gibran Brijbasi, Dickinson Wright PLLC, Ft. Lauderdale, FL, for Defendant Kingdom Studios, LLC. Kent E. Baldauf, Jr., Pro Hac Vice, Maximilian D. Meese, Pro Hac Vice, The Webb Law Firm, Pittsburgh, PA, Vijay Gibran Brijbasi, Dickinson Wright PLLC, Ft. Lauderdale, FL, for Defendant Kingdom Inc. Maynard, Shaniek M., United States Magistrate Judge ORDER ON PLAINTIFF'S MOTION TO COMPEL [DE 81] *1 THIS CAUSE comes before this Court upon the above-referenced Motion. Upon review of the Motion, the record, arguments of counsel during the November 20, 2020 hearing, and the applicable law, the Motion is granted in part and denied in part as set forth below. This matter arises from a trademark dispute between the parties regarding the use of the marks KINGDOMWORKS STUDIOS, KINGDOM STUDIOS, KINGDOM, and KINGDOM STORY COMPANY in connection with, inter alia, video and film production. See generally DE 7, 17, 19. Plaintiff filed its initial Complaint on July 12, 2019, asserting seven federal, state, and common law trademark claims against Defendants Kingdom Studios, LLC, (“KS LLC”) and Kingdom, Inc. (“K Inc.”). DE 1. In response, Defendants asserted six counterclaims generally alleging that Plaintiff—and not them—is the infringing entity. See DE 17, 19. On May 5, 2020, the Honorable Jose E. Martinez, the presiding judge in this case, entered a Scheduling Order setting a discovery cut-off date of October 22, 2020, and a dispositive motion deadline of November 20, 2020. DE 30. Both deadlines have passed. Trial in this matter is currently set for the two-week calendar period beginning March 1, 2020.[1] Id. PREVIOUS MOTIONS TO COMPEL (DE 43, 44, 46) The instant Motion is only the latest of a number of motions to compel filed in this case. On August 31, 2020, and September 3, 2020, Plaintiff filed motions to compel discovery from K Inc. and KS LLC, respectively. DE 43, 44. The motions identified a laundry list of dozens of discovery requests to which Plaintiff contended Defendants had not fully or properly responded. See id. In their responses, both Defendants raised concerns that Plaintiff failed to satisfy its obligation to meet and confer prior to filing the motions to compel. See DE 47, 52. K Inc. also filed a motion to compel Plaintiff to supplement its responses to two discovery requests on September 4, 2020. DE 46. On September 21, 2020, this Court held a hearing on the three motions to compel pending at that time. See DE 57, 60. By the date of the hearing, the issues raised in K Inc.’s motion to compel had been resolved by the parties without the need for Court intervention. See DE 60 at 3:25-4:5. Regarding Plaintiff's two motions to compel, the Court noted that the scope and general nature of the motions made it difficult to specifically identify what issues remained outstanding. Id. at 12:4-15. Indeed, Plaintiff represented that by the date of the hearing, numerous issues raised in its motions had been rendered moot by further conferral and production between the parties. See, e.g., id. at 23:8-11. Despite mentioning more than twenty discovery requests in its motion to compel K Inc., see generally DE 43, by the time of the hearing only three specific discovery requests remained. Plaintiff confirmed that outside of those three requests there was no other outstanding issues as to K Inc. DE 60 at 6:5-21:23, 23:1-3. Next, turning to KS LLC, Plaintiff explained that the parties had “worked through a lot of the issues and resolved almost all of them.” Id. at 23:8-10. Plaintiff represented that only two issues raised in its motion to compel KS LLC remained outstanding: the production of an agreement between non-party Lionsgate Films, Inc. (“Lionsgate”) and KS LLC (“the Agreement”); and a concern regarding deposition scheduling. See id. at 23:4-31:25, 28:9-13, 30:7. *2 The Court issued an Order on the three motions to compel—DE 43, 44, and 46—on September 22, 2020. DE 58. K Inc.’s motion was denied as moot. Plaintiff's motion to compel K Inc. was granted as to two discovery requests and denied as moot with respect to all other issues raised in the motion. Plaintiff's motion to compel KS LLC wad denied as moot as to all issues except the production of the Lionsgate Agreement. DE 58. The Court deferred ruling on this issue pending an in camera review. DE 58. After such a review, the Court ordered KS LLC provide a redacted copy of the Agreement to Plaintiff. DE 78. PLAINTIFF'S SECOND MOTION TO COMPEL KINGDOM INC. (DE 79) On November 12 and 13, 2020—three weeks after the October 22, 2020 discovery deadline in this case had passed—Plaintiff filed a second round of motions to compel K Inc. and KS LLC, respectively. DE 79, 81. The Court held a hearing on the motions on November 20, 2020. DE 89, 102. Plaintiff's first motion sought an order compelling K Inc. to supplement its responses to four specific discovery requests. DE 79. Among its arguments in response, K Inc. again raised concerns that Plaintiff failed to properly confer prior to filing its motion. DE 83 at 1-2. Although the November 12, 2020 motion to compel K Inc. was addressed by the Court in its November 23, 2020 Order, DE 100, the Court takes a brief detour now to address K Inc.’s contention that Plaintiff again failed to properly confer before filing that motion. DE 83 at 1-2. To demonstrate that proper conferral occurred, Plaintiff's counsel proffered email correspondence with K Inc.’s counsel as an exhibit to the motion to compel. DE 79-2. In the initial email, Plaintiff's counsel requested items that had not been produced that he believed were within the scope of prior requests. DE 79-2 at 3. K Inc.’s counsel responded that he was traveling, asked Plaintiff's counsel to identify the discovery requests to which the items were responsive, and indicated he would be happy to discuss the matter the following week. Id. at 2. Plaintiff's counsel responded that he was not required to show that these items were requested prior to the expiration of discovery—the deadline of which had already passed—and that he would like to proceed with a motion to compel “without waiting until the week after next for a phone conversation.” Id. at 1. In response, K Inc.’s counsel said he was unavailable as he was tending to the estate of his recently deceased father but would discuss the matter with his client if Plaintiff's counsel sent the relevant discovery requests. Id. Rather than send the relevant discovery requests or wait until a telephone conversation could be had, Plaintiff's counsel filed the motion to compel. This purported effort to confer, which essentially amounted to emailing a list of demands, does not comply with the District's Local Rule 7.1. In order to “confer” as required by Local Rule 7.1(a)(3), a party “must have a give-and-take exchange with opposing counsel.” Royal Bahamian Ass'n, Inc. v. QBE Ins. Corp., 744 F. Supp. 2d 1297, 1299 n.2 (S.D. Fla. 2010). “Sending an email ... and then filing a motion before having an actual substantive discussion with opposing counsel does not amount to a conference or consultation.” Id.; see also Wrangen v. Pennsylvania Lumbermans Mut. Ins. Co., No. 07–61879, 2008 WL 5427785, at *1 (S.D. Fla. Dec. 30, 2008) (“Simply sending a letter without further follow-up does not constitute the type of effort to engage in a pre-filing conference anticipated by Local Rule 7.1”). The emails Plaintiff's counsel sent were sufficient to start a good faith conferral, but from there counsel should have provided the discovery references defense counsel requested or simply picked up the phone for a phone call after waiting a reasonable amount of time given the situation (which involved the passing of opposing counsel's father). In addition, the undersigned's standard discovery procedures require an actual conversation. DE 31 at 1 (“If a discovery dispute arises, counsel must actually speak to one another (in person or via telephone) and engage in reasonable compromise in a genuine effort to resolve their discovery disputes before seeking Court intervention.”). The point of this rule is to avoid exactly what has happened multiple times in this case. Repeatedly, discovery issues have largely been resolved by conferral by the time the parties appear before the Court for a hearing. See, e.g., DE 60 at 23:4-11; DE 102 at 17:10-21; and DE 102 at 22:6-9. While the issue with conferral on discovery motions “is water under the bridge” at this point since discovery is over, see id. at 29:4, this litigation remains on-going and the parties continue to file motions, e.g., DE 111 (motion to seal filed December 11, 2020) and DE 112 (motion for an extension of time filed December 15, 2020). Counsel are reminded of the need for meaningful conferral prior to filing their motions in the future. Such conferral is an integral part of our cooperative adversarial system and promotes efficient use of both the Court and the parties’ time and resources. Should the parties fail to properly confer before filing future motions before the undersigned, those motions risk dismissal for failure to comply with the Local Rules and this Court's Order Setting Discovery Procedures. PLAINTIFF'S INSTANT MOTION TO COMPEL KINGDOM STUDIOS, LLC (DE 81) *3 The Court now turns to Plaintiff's November 13, 2020 Motion to Compel KS LLC (DE 81). Plaintiff's motion was filed more than three weeks after the discovery deadline passed, and neither party sought an extension of that deadline in this case. Moreover, the motion was filed only one week before the November 20, 2020 dispositive motion deadline. Even with the accelerated briefing schedule set in the undersigned's Order Setting Discovery Procedures, see DE 31, there was no way for the Court to review and rule on the Motion before the parties’ dispositive motions were due. And, at this point, the parties have all filed their motions for summary judgment. DE 95, 97, 98. The time for discovery is over. The instant Motion is clearly untimely, and the Court will not compel written discovery or permit the parties to conduct depositions after the discovery cut-off has passed and dispositive motions have been filed unless there are compelling reasons to do so. See Wing Kei Ho v. Bank of Am., N.A., No. 16-80538-CV, 2019 WL 1333097, at *1 (S.D. Fla. Mar. 19, 2019); Wademan v. United States, No. 16-10002-CIV, 2017 WL 7794321, at *1 (S.D. Fla. May 3, 2017). The instant Motion raises three issues: first, Plaintiff requests KS LLC be compelled to supplement its responses to Plaintiff's Request for Production #4, #5, and #6, specifically as to communications related to “logo credit” and KS LLC's name change to Kingdom Story Company; second, Plaintiff raises concern that additional agreement(s) between KS LLC and Lionsgate, responsive to Request for Production #28, were not produced; and finally, the Motion seeks an order compelling a continuation of the deposition of KS LLC's CEO, Jon Erwin. See DE 81. Except as to the additional agreements(s) between KS LLC and Lionsgate, the Court does not find compelling reasons to require additional discovery or depositions in this matter. Request for Production #4, #5, #6. Plaintiff's Requests for Production #4 and #5 seek correspondence announcing KS LLC's name change to Kingdom Story Company or mentioning the adaptation of a new mark. DE 81 at 3; DE 44-1 at 6. Request for Production #6 seeks correspondence with distributors that mentions any film, tv, or video branded with the marks KINGDOM STUDIOS or KINGDOM STORY COMPANY. Id. Plaintiff contends that it learned about “email communications between [KS LLC] and Lionsgate discussing details pertaining to [ ] ‘logo credits,’ ” during the November 9, 2020 deposition of KS LLC's CEO, Jon Erwin. DE 81 at 2. Plaintiff now moves for an order compelling KS LLC to supplement its responses to Request for Production #4, #5, and #6 in light of this “untimely mention” of the email communications that were not previously produced. Id. Plaintiff bases its argument on testimony by Mr. Erwin allegedly referring to “email communications” with Lionsgate regarding logos. Id.; DE 102 at 32:25-33:3. At the November 20, 2020 hearing, Plaintiff requested the Court refrain from ruling on this issue before reviewing a forthcoming transcript of Mr. Erwin's testimony, id. at 43:9-15; 52:4-7, which the undersigned has now done. In responding to a question at his October 6, 2020, deposition regarding how his company's name appeared in various marketing materials, Mr. Erwin described having “thousands” of brief, oral conversations about such matters daily, but could not recall discussing such matters through email. DE 101-1 at 106:2-107:9. Then, in his November 9, 2020 deposition, Mr. Erwin was asked how logos were exchanged between KS LLC and Lionsgate, to which he responded, “at that level logos are exchanged, I hate to say by the geeks of each organization, so their technical people and our technical people would have exchanged logos on a regular basis.” Id. DE 101-2 at 59:4-11. Due to the redaction of the transcript, the Court has no additional context as to what logos specifically the question refers or for what purpose those logos were being used. The single line from Mr. Erwin's deposition and Plaintiff's speculations do not provide a compelling reason for the Court to entertain additional discovery months after the discovery deadline has passed. Plaintiff acknowledges that KS LLC looked for email correspondence responsive to these discovery requests and found none. DE 102 at 32:18-23. One of KS LLC's 30(b)(6) designees, Brian Woodland, testified that he searched for email correspondences using the search terms “Lionsgate” and “LG,” and found none. DE 85 at 4; DE 85-3 at 36-37. While there is no indication in the record that the parties conferred regarding what specific search terms were to be used in satisfying this discovery request, at no point—including in this Motion—does Plaintiff allege the search or search terms employed were deficient. Rather, Plaintiff latches onto Mr. Erwin's statement and assumes that other emails exist as it “would befuddle” Plaintiff's counsel if none of the negotiations between Lionsgate and KS LLC were “in writing.” DE 102 at 45:21-25. Mr. Erwin's statement is that individuals at the two companies “would have exchanged logos on a regular basis.” DE 101-2 at 59:10-11. His statement is not definitive and does not refer to any specific communications, let alone emails. Additionally, Request for Productions #4, #5, and #6 were all included in Plaintiff's September 3, 2020 motion to compel. See DE 44. At the September 21, 2020 hearing on that motion, Plaintiff represented that the parties had “worked through a lot of the issues and resolved almost all of them,” with only the production of the Lionsgate agreement and a concern regarding deposition scheduling remaining. DE 60 at 23:8-31:25. Plaintiff represented that these two issues were the only issues raised in its motion as to KS LLC that remained outstanding. Id. at 23:4-12, 28:9-13, 30:7. Considering Mr. Erwin's statements, the totality of the record, and the late stage of this litigation, Plaintiff's Motion to Compel is DENIED as to Request for Production #4, #5, #6. *4 Deposition of Jon Erwin. Next, the Court addresses Plaintiff's request for additional time to depose Mr. Erwin. Mr. Erwin, who is designated as both a trial witness and corporate designee for KS LLC, has already sat for two depositions in this case: the first on October 6, 2020 and a second, after the close of discovery, on November 9, 2020. See 101-1, and 101-2. According to the parties, the October 6, 2020 deposition ran for a little over seven hours (inclusive of breaks), and the November 9, 2020 deposition ran for approximately two and a half hours. DE 102 at 66:17-67:21, 73:7-8; 74:24-75:3. Plaintiff now seeks more time because Mr. Erwin was noticed as a witness to be deposed under both Rules 30(b)(1) and 30(b)(6) of the Federal Rules of Civil Procedure. DE 81 at 4-5. Plaintiff maintains that although the parties agreed to combine the Rule 30(b)(1) and 30(b)(6) depositions of Mr. Erwin for efficiency's sake, they did not agree to limit his depositions under both rules to only one day. Id. Instead, almost a month after discovery is over, Plaintiff contends that it is entitled to seven hours on the record to depose Mr. Erwin under each of these Rules. Id. at 4 (citing Belfor United States Grp. v. Bray & Gillespie, No. 6:05-cv-1624-Orl-18JGG, 2007 U.S. Dist. LEXIS 117767, *7 (M.D. Fla. Apr. 23, 2007)). Plaintiff seeks, at a minimum, another 1.5 hours to depose Mr. Erwin because defense counsel said Mr. Erwin would be available for 4 hours on November 9, 2020, but Mr. Erwin left early due to his schedule. Id.; see DE 81-4 at 2. KS LLC responds that Mr. Erwin has already sat for two depositions and has been on the record for approximately nine hours in this case. DE 85 at 5. Further, KS LLC argues, there was no agreement between the parties to combine Mr. Erwin's 30(b)(1) and 30(b)(6) depositions and Plaintiff chose to notice both depositions for the same day and time. Id. KS LLC maintains that after Mr. Erwin spent six and three-quarter hours on the record the first day, see DE 102 at 66:17-22, it was not obligated to make him available for a second day after discovery closed, but did so as a courtesy. DE 85 at 5. KS LLC opposes Plaintiff's request to have Mr. Erwin now sit for a third deposition. This Court agrees with KS LLC. First, it is not clear to this Court that Plaintiff is entitled to depose Mr. Erwin seven hours under each of Rules 30(b)(1) and 30(b)(6) since Mr. Erwin was provided as a Rule 30(b)(6) witness only as to some topics. Mr. Erwin was proffered as Rule 30(b)(6) witness for less than half of the twenty topics noticed for the deposition. See DE 85-4 at 8; DE 102 at 61:13-25. KS LLC made other Rule 30(b)(6) witnesses available to testify regarding the remaining topics. In total, Plaintiff has had 21 hours to depose Rule 30(b)(6) witnesses. DE 102 at 75:7-12. That amount of time is not insignificant. Second, if Plaintiff wanted a ruling compelling the continuation of Mr. Erwin's deposition, it should have sought such a ruling prior to the close of discovery. Plaintiff knew weeks before discovery ended on October 22, 2020 that it had deposed Mr. Erwin on October 6, 2020 for only about seven hours. Plaintiff should not have waited until after the discovery deadline had passed to make this request. Judge Martinez's Order Setting Trial Date and Pretrial Schedule provides that “it is the duty of all counsel and pro se litigants to enforce the timetable set forth herein in order to ensure an expeditious resolution of this cause.” DE 30 at 7. Further “[a]ny private agreement ... attempting to set dates contrary to this order are hereby STRICKEN and VOID.” De 30 at 7. Thus, while KS LLC consented to, and did in fact, make Mr. Erwin available for a second deposition after the discovery deadline had passed, doing so was a courtesy between the parties and not an agreement to be enforced by this Court. At this point, discovery is over and the dispositive motions have been filed in this case. No additional time will be granted at this late date. Plaintiff's Motion is DENIED as to the request to compel a continuation of the deposition of Jon Erwin. Additional Agreement(s) Between Kingdom Studios and Lionsgate. Lastly, the Motion requests KS LLC be compelled to supplement its response to Plaintiff's Request for Production #28. Request for Production #28 sought all agreements between KS LLC and Lionsgate or its Affiliates (as defined). DE 85 at 3; DE 44-1 at 9. In the Motion, Plaintiff alleges that KS LLC “still will not definitively commit to the production of the other agreements.” De 85 at 4. At the November 20, 2020 hearing the parties clarified that late in the discovery period a second agreement between KS LLC and Lionsgate, responsive to Request for Production #28 was disclosed. DE 102 at 33:20-34:4; 37:6-12; 60:23-61:1 (explaining the agreement was executed October 20, 2020). KS LLC explained that this agreement related to a motion picture titled I Still Believe and was between a subsidiary of KS LLC and Lionsgate. Id. at 37:13-20. Due to the confidential nature of the agreement, non-party Lionsgate requested the same procedure be done with regards to the production of this agreement (the “I Still Believe Agreement”) as was done with the previously-disclosed Lionsgate Agreement: namely, that the agreement be submitted for an in camera review, and the Court order what, if any, provisions of the agreement should be produced. Id. at 39:19-40:3. Despite KS LLC's representation that this is the only remaining agreement responsive to Request for Production #28, Plaintiff expressed concern that still other responsive agreements may exist. Id. at 50:9-51:2. Therefore, the Court ordered KS LLC to submit the I Still Believe Agreement and any other potentially responsive agreement(s) to the Court for in camera review. DE 100; see also DE 102 at 59:2-60:22. *5 As with the previous Lionsgate Agreement, the undersigned has determined after in camera review that the vast majority of the I Still Believe Agreement is irrelevant to any claims or defenses in this case. The agreement is an “acquisition agreement” that contains non-party Lionsgate's proprietary business information regarding various investment and production details for the I Still Believe motion picture. Weighing the relevance of the agreement, Plaintiff's need for it, and the burden imposed on Lionsgate, there are only a few discrete provisions that the Court finds relevant and which warrant disclosure. Therefore, Plaintiff's Motion to Compel is GRANTED in part as to the I Still Believe Agreement. The Court will provide instructions to KS LLC regarding which specific portions of the agreement need to be produced.[2] Once KS LLC has made the redactions as instructed, it shall copy the Court on its production of the I Still Believe Agreement so that the Court may ensure compliance with its directions. Accordingly, it is ORDERED AND ADJUDGED that Plaintiff's Motion to Compel, [DE 81], is GRANTED IN PART as to the agreement between Defendant Kingdom Studios, LLC, and non-party Lionsgate Films, Inc., and DENIED IN PART as to all other issues raised in the Motion. IT IS FURTHER ORDERED that by Monday, December 28, 2020, Defendant Kingdom Studios, LLC, shall provide Plaintiff with a redacted copy of the I Still Believe Agreement in accordance with the Court's directions. DONE AND ORDERED in Chambers at Fort Pierce, Florida, this 18th day of December, 2020. Footnotes [1] Pursuant to Administrative Order 2020-76 issued on October 20, 2020 in United States District Court for the Southern District of Florida, all jury trials in the Southern District of Florida scheduled to begin on or after March 30, 2020, are continued until April 5, 2021 due to the coronavirus public emergency. A new trial date has not yet been set in this matter. [2] The I Still Believe Agreement is more than twenty pages in length and includes by reference numerous attachments, totaling several hundreds of pages. The directions describing the exact provisions that shall be unredacted necessarily include reference to numerous portions of the documents which will remain redacted. Thus, the Court's directions for KS LLC cannot be included in this Order.