Reflex Media, Inc. et al. v. Luxy Limited Case No. CV 20-423-RGK (KSx) United States District Court, C.D. California Filed October 18, 2021 Counsel Gay Roberson, Deputy Clerk, Attorneys Present for Plaintiffs: Court Reporter / Recorder, Attorneys Present for Defendants: Stevenson, Karen L., United States Magistrate Judge Proceedings: (IN CHAMBERS) ORDER RE: PLAINTIFFS' MOTION TO COMPEL FURTHER DISCOVERY RESPONSES [DKT. NO. 115] *1 On September 21, 2021, the Court held a discovery conference with Plaintiffs Reflex Media, Inc. and Clover8 Investments Pte. Ltd. (together “Plaintiffs” or “Reflex”) and Defendant Luxy Limited (“Defendant” or “Luxy”) regarding eleven (11) categories of information where Plaintiff argued that Luxy's responses to Plaintiffs' written discovery requests were inadequate. (See Dkt. No. 109.) The disputed issues concern the adequacy of Luxy's responses to certain Interrogatories (“ROGs”); Requests for Production of Documents (“RFPs”); and Requests for Admissions (“RFAs”). (Id.) The Court authorized the parties to file expedited letter briefing in support of their respective positions on Category 1 (Plaintiffs' requests for Defendant's international financial data); Category 4 (RFA concerning authenticity of Wayback Machine webpage captures); Category 5 (RFAs regarding Defendant's infringement of other companies' intellectual property); Category 7 (RFA seeking admissions on copying of specific material); Category 10 (request for Luxy studies and/or surveys regarding its platforms, products, and services); and Category 11 (request for documents regarding instances of “sugar dating” on Luxy's platforms).[1] (Dkt. No. 109.) On September 28, 2021, Plaintiffs filed a letter brief addressing each of the disputed categories and the related discovery requests (“Pltfs.' Letter Br.”) along with Declarations of I. Eddington (“Eddington Decl.”) and J. Schaeffer (“Schaeffer Decl.”) and related exhibits in support of Pltfs.' Letter Br. (See Dkt. No. 115.) On October 5, 2021, Defendant filed its responsive letter brief (“Deft.'s Letter Br.”) with a Declaration of Kollin Zimmermann (“Zimmermann Decl.”) and related exhibits. (Dkt. No. 130.) No reply briefs were required. The Court finds these matters suitable for decision without oral argument and for the reasons outlined below grants in part and denies in part Plaintiffs' requests for further discovery responses. Relevant Background The parties to this copyright infringement action each operate competing online dating services and applications that bring together individuals seeking “elite” dating experiences. The Court detailed the allegations of the operative Second Amended Complaint in a previous discovery order on August 4, 2021. (Dkt. No. 74.) The Court, therefore, assumes that the parties are familiar with those allegations and the counterclaims and does not repeat them here. Legal Standard Federal Rule of Civil Procedure 26 permits a party to obtain discovery concerning any nonprivileged matter that is relevant to any party's claim or defense and is proportional to the needs of the case. FED. R. CIV. P. 26 (b)(1). The proportionality requirements of Rule 26(b)(1) include six factors to be considered when determining if the proportionality requirement has been met: (1) the importance of the issues at stake in the action; (2) the amount in controversy; (3) the parties' relative access to the relevant information; (4) the parties' resources; (5) the importance of the discovery in resolving the issues; and (6) whether the burden or expense of the proposed discovery outweighs its likely benefit. Id. Relevant information need not be admissible to be discoverable. Id. *2 District courts have broad discretion in controlling discovery. See Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir. 2002). The right to discovery, while broad, is not limitless. United States ex rel. Brown v. Celgene Corp., No. CV 10-3165-GHK (SS), 2015 WL 12731923, at * 2 (C.D. Cal. July 24, 2015) (noting that “the right to discovery, even plainly relevant discovery, is not limitless.”). The court may exercise its discretion in “determining the relevance of discovery requests, assessing oppressiveness, and weighing [the Rule 26] factors in deciding whether discovery should be compelled.” Unilin Beheer B.V. v. NSL Trading Corp, No. CV 14-2210-BRO (SSx), 2015 WL 12698382, at *4 (C.D. Cal. Feb. 27, 2015) (citing Favale v. Roman Catholic Diocese of Bridgeport, 235 F.R.D. 553, 558 (D. Conn. 2006) (internal quotation marks omitted)). DISCUSSION Category No. 1: Luxy Must Disclose its Financial Data, Including International Financial Data (ROGs Nos. 14 and 15; RFPs Nos. 16, 46, and 47) In its September 21, 2021 Order, the Court ruled that Luxy must produce information concerning its revenues and profits for the United States and its territories for 2015 to the present. (See Dkt. No. 109.) Although the infringement is alleged from 2016 to the present, Plaintiffs are entitled to data from one year prior, i.e., 2015, to establish a baseline of pre-infringement revenues. The remaining dispute concerns whether Luxy must also produce information regarding its international revenues and profits in response to Plaintiffs' ROGs Nos. 14 and 15 and RFPs Nos. 16, 46, and 47. Luxy argues that it is not required to produce financial information regarding its operations outside the United States because Plaintiffs have not “plead[ed] facts supporting the extraterritorial application of the Lanham Act[.]” (Deft.'s Letter Br. at 2.) On that basis, Luxy maintains that the discovery Plaintiffs seek is neither relevant nor proportional to the needs of the case. (Id.) Further, Luxy argues that it has been “prejudiced” by Plaintiffs' “failure to plead extraterritoriality in its pleadings[.]” (Id.) Luxy's pleading arguments are misdirected in this discovery dispute. For purposes of evaluating the discovery dispute presented here, this Court need not – and does not – reach the merits issue of the Lanham Act's extraterritorial application – or lack thereof. Rather, Plaintiffs are indisputably entitled to discovery of financial information for purposes of assessing damages arising from Luxy's allegedly infringing conduct. Indeed, Plaintiffs argue that as an American company, Reflex “may lose sales in a foreign jurisdiction[,]” thus making Luxy's international sales relevant to discovery. (Pltfs.' Letter Br. at 4.) The Court finds that the discovery sought here is relevant to the claims at issue in this case. Indeed, the authorities that Plaintiffs cite are persuasive on this point. See Theia Techs LLC v. Theia Grp., Inc., No. CV 20-97, 2020 WL 6450468, at *5 (E.D. Pa. Nov. 3, 2020) (directing defendants to “produce contracts for foreign—as well as domestic—sales”); Munhwa Broad. Corp. v. Create New Tech. Co., No. CV 14-4213-RGK (RZx), 2015 WL 12749448, at *4 (C.D. Cal. Sept. 2, 2015) (including consideration of worldwide revenue in determining trademark statutory damages award). Accordingly, Defendant shall provide supplemental responses to Plaintiffs' ROGs Nos. 14 and 15 and RFPs Nos. 16, 46, and 47 that include information concerning its international sales, revenues, and profits, within three (3) days of the date of this Order. To the extent necessary, the information may be produced subject to the protections of the Stipulated Protective Order. (See Dkt. No. 61.) Category No. 4: Luxy is Not Required to Admit or Deny the Authenticity of Wayback Machine Captures of Luxy's Website (RFA No. 96) *3 Plaintiffs' RFA No. 96 asks that Luxy admit or deny that Wayback Machine screen captures of Luxy's website are authentic. Specifically, RFA No. 96 states: “Admit that all WEBPAGE CAPTURES of the LUXY WEBSITE (which can be found at http://web.archive.org/web/*/onluxy.com/*) are accurate renderings of the content contained on the LUXY WEBSITE on the date that each webpage was archived.” (Schaeffer Decl., Ex. 2.) Luxy objects that RFA No. 96 is unduly burdensome to the extent that it requires Luxy to review “every single capture” located at this internet archival site. (Deft.'s Letter Br. at 5.) Luxy argues that “[t]here are 1,169 URLs, many of which have multiple captures on various dates.” (Id. at 6.) As an initial matter, Luxy argues that it is not obligated to authenticate documents created by a third party. (Deft.'s Letter Br. at 6 (citing Bado v. Southland Indus., Inc., No. CV PJM-7-1081, 2008 WL 11366413, at *3 (D. Md. May 21, 2008)).) Next, Luxy provides evidence of the burden imposed by RFA No. 96 by noting that even with high-speed internet, it took “approximately 30 seconds each just to navigate and fully load the first ten such captures ... significant additional time would be needed on each capture to determine whether it is, in fact an ‘accurate rending’ of all content on the LUXY WEBSITE as of that date, as requested by Reflex.” (Id. (emphasis in original); Zimmermann Decl., ¶ 7.) Plaintiffs provide no evidence to refute the extraordinary time that would be required to authenticate each and every page from the thousands of URLs captured by Wayback Machine. Instead, Plaintiffs point to authorities that routinely take judicial notice of information from Wayback Machine. That may be so, but a court taking judicial notice is not the same thing as requiring a party to self-authentic each and every version of its archived webpages on every given date. Plaintiffs' request is facially overbroad and disproportionate to the needs of this case. Further, if the documents can be readily subject to judicial notice as Plaintiffs suggest, then Defendant need not be put to the burden of authenticating every single archived page of its website when Plaintiffs can easily seek judicial notice of any particular pages it believes are salient for motion practice and/or trial. Accordingly, Plaintiffs' motion on RFA No. 96 is DENIED. Defendant's objections to RFA No. 96 are sustained and no further response is required. Category No. 5: Luxy Must Answer RFAs Nos. 12, 18, 19, 20, 21, 145, 148, 149, and 150 Plaintiff maintains that the RFAs at issue ask Luxy to admit that it has used other companies' trademarks without permission to do so as evidence of “Luxy's pattern and practice of infringing on its competitors' trademarks to show intent and willfulness.” (Pltfs.' Letter Br. at 8.) Each RFA asks about Luxy's use of certain words in its metadata and/or in its APP's descriptions on the Google Play Store or Apple App Store: - RFA No. 12 – asks Luxy to admit its use of the term “the league” in its metadata; - RFA No. 18 – asks Luxy to admit its use of the word “coffee” in its APP's description on the Apple App Store; - RFA No. 19 – asks Luxy to admit its use of the word “coffee” in its APP's description on the Google Play Store; - RFA No. 20 – asks Luxy to admit its use of the word “bagel” in its APP's description on the Google Play Store or the Apple App Store; - RFA No. 21 – asks Luxy to admit its use of the word “bagel” in its APP's description on the Google Play Store; - RFA No. 145 – asks Luxy to admit its use of the phrase “the league” as a search term; - RFA No. 148 – asks Luxy to admit that it considered The League App, Inc. to be a competitor to the LUXY APP; *4 - RFA No. 149 – asks Luxy to admit it used the phrase “the league” knowing it was a phrase used by The League App, Inc.; and - RFA No. 150 – asks Luxy to admit it used or uses the phrase “the league” knowing it was a trademark of a competitor. (Schaeffer Decl., ¶ 7, Ex. 5 (Dkt. No. 115-7).) Luxy's response to each of these RFAs is that the information sought “is not relevant to any of the claims or defenses asserted in this action” or disproportionate to the needs of the case. (Id.) In support of its position that these words and/or phrases are relevant to establish a pattern and practice of infringement, Plaintiffs cite several cases for the proposition that “many courts have considered an intellectual property defendant's pattern of infringement in assessing culpability.” (Pltfs.' Letter Br. at 8.) Atari Interactive, Inc. v. RageOn, Inc., No. CV 19-10806-DSF (MAAx), 2020 WL 10501843 (C.D. Cal. Apr. 2, 2020), vacated on other grounds, 2020 WL 5802376 (C.D. Cal. Aug. 25, 2020) is a decision after default judgment; Lahoti v. Vericheck, Inc., 708 F. Supp. 2d 1150 (W.D. Wash. 2010) reflects Amended Findings of Fact and Conclusions of Law in a trademark infringement case following a bench trial and remand from the Ninth Circuit on appeal; while Elec. Boutique Holdings Corp. v. Zuccarini, No. CIV. A. 00-4055, 2000 WL 1622760, at *2 (E.D. Pa. Oct. 30, 2000) involved a cybersquatting action where the district court granted the plaintiff's motion to enjoin the use of domain names or marks “identical to or confusingly similar to [the plaintiff's] registered service marks[.]” While none of these cases are discovery decisions, they do support Plaintiffs' position that the RFAs at issue seek information both relevant and proportionate to the needs of this case with respect to showing willfulness and intent. Defendant argues that Plaintiffs fail to establish that the acts asserted in the RFAs are actually unlawful. (Deft.'s Letter Br. at 6.) But it is well recognized that “[r]elevance within the meaning of Rule 26(b)(1) is considerably broader than relevance for trial purposes.” Fed. Trade Comm'n v. DIRETV, Inc., No. CV 15-1129-HSG (MEJ), 2015 WL 8302932, at *3 (N.D. Cal. Dec. 9, 2015). Contrary to Defendant's assertions, to justify the RFAs at issue, Plaintiffs are not required to “cite court decisions finding that Luxy engaged in unlawful trademark infringement directly relevant to this case.” (Deft.'s Letter Br. at 6. ) Indeed, the RFAs merely ask that Defendant admit or deny its use of certain words and phrases in either its metadata or in the Google Play Store or the Apple App Store. The Court finds that the discovery sought is both relevant and proportionate to the needs of this case, particularly as Defendant has unique access to the information. Defendant's objections on relevance grounds to Plaintiffs' RFAs Nos. 12, 18, 19, 20, 145, 148, 149, and 150 are overruled. Rule 36 of the Federal Rules of Civil Procedure requires “[i]f a matter is not admitted, the answer must specifically deny it or state in detail why the answering party cannot truthfully admit or deny it.” FED. R. CIV. P. 36 (A)(4). *5 Accordingly, within three (3) days of the date of this Order, Defendant must provide complete, nonevasive responses compliant with Rule 36(a)(4) to Plaintiffs' RFAs Nos. 12, 18, 19, 20, 145, 148, 149, and 150. Category No 7: Luxy is Not Required to Admit or Deny Whether it Copied the Unspecified Content Sought in RFA No. 76 RFA No. 76 asks that Luxy “Admit that YOU copied content from MillionaireMatch.com and used it on the LUXY WEBSITE.” (Schaeffer Decl., Ex. 2.) Here too, Luxy responded that the information sought is not relevant to any claim or defense asserted in the action. (Id.) Plaintiffs, however, maintain that the information sought in RFA No. 76 is directly relevant because of the relationship between Successful Match, a California Company that owns MillionaireMatch.com, and Luxy. (Pltfs.' Letter Br. at 9.) Moreover, Plaintiffs argue that even if there is no relationship between Luxy and MillionaireMatch, discovery regarding “deliberate copying from others' websites would show a pattern and practice of Luxy's infringement and would be relevant for demonstrating Luxy's culpability and intent.” (Id.) Defendant's written responses to RFA No. 76 only object on the ground of relevance, but at the pre-motion discovery conference with the Court, Defendant objected that in addition to the information being “minimally relevant” it would also entail a “burdensome task” to determine whether any employee might have copied information from the MillionaireMatch.com website. (See Dkt. No. 109 at 5.) The Court specifically directed Defendant to demonstrate any burden that RFA No. 76 would impose. Deft.'s Letter Br. points to the “sheer breadth” of RFA No. 76, which seeks an admission about unspecified content purportedly copied from the MillionaireMatch.com website. (Deft.'s Letter Br. at 7.) Defendant argues that in order to comply with RFA No. 76, Luxy would have to compare its own website with historical versions of the MillionaireMatch.com website. (Id. at 8.) Defendant points out that, as noted above, there are more than 1,169 captures of the Luxy website on the Wayback Machine and “more than 100,000 captures for MillionaireMatch.com.” (Id. (emphasis in original).) Defendant represents that “accessing, reviewing, and comparing the ‘content’ of all of these captures would easily take more than 150 hours and cost Luxy more than $60,000 in attorney's fees.” (Id.) The Court agrees that the information, if it exists, may be relevant, but the indeterminate nature of RFA No. 76 would impose a significant and disproportionate burden on Luxy to review all of the content of both Luxy's historical website captures and MillionaireMatch.com's historical website data in order to respond. The scope of that undertaking is not proportionate to the needs of this case where the burden and expense of that undertaking outweighs its likely benefit. Accordingly, Defendant's objections to RFA No. 76 are sustained. No further response is required to RFA No. 76. Category No. 10: Luxy Need Not Produce Documents Concerning “Tests” or “Ratings” Relating to Luxy's Platforms, Products, and Services (RFP No. 59) RFP No. 59 seeks, “DOCUMENTS concerning any studies, tests, ratings, or surveys related to the LUXY PLATFORMS and/or products or services offered on the LUXY PLATFORMS.” (Schaeffer Decl., Ex. 2.) Luxy objects to RFP No. 59 as “overbroad insofar as it concerns ‘ratings,’ as searching for, reviewing, and collecting all documents concerning any rating any consumer has ever made as to the LUXY PLATFORMS would impose an enormous burden and expense on Luxy.” (Id.) *6 Plaintiff argues that Luxy's response to RFP No. 59 is deficient because Luxy “does not specifically object that the requested tests, studies, ratings or surveys are not relevant” and did not “provide[ ] a declaration or any other evidence to show exactly why this request is overburdensome.” (Pltfs.' Letter Br. at 9.) Plaintiff also maintains that “Luxy must state what documents it is withholding based on each objection, and Luxy has not done [so.]” (Id. at 10.) Defendant responds that in its written responses it specifically objected based on lack of relevance by objecting that the “likely utility” of any documents concerning “tests” and “ratings” was low. (Deft.'s Letter Br. at 8.) However, Defendant's written response also states: “Luxy has conducted a reasonable investigation for studies or surveys concerning the LUXY PLATFORMS and/or the products or services offered on the LUXY PLATFORMS and will produce responsive documents.” (Schaeffer Decl., Ex. 2.) Defendant argues that its written response fulfilled the requirements of Rule 34(b)(2)(C) to indicate whether documents are being withheld subject to its objections and no substantiation is needed with a declaration. (Deft.'s Letter Br. at 8.) The Court agrees. As both parties acknowledge, during the pre-motion discovery conference, the Court found that RFP No. 59 is facially overbroad and objectionable. (See Dkt. No. 109 at 5.) Defendant's response unambiguously states its objections to producing documents concerning “tests” and “ratings” and specifically indicates that it will produce information concerning “studies” or “surveys” concerning its platforms or products. Consequently, Plaintiff's motion to compel further responses to RFP No. 59 is DENIED and Defendant need not provide any further response to the request. However, to the extent that Defendant has not completed its production of responsive documents regarding “studies” or “surveys” that it located through its search and investigation, Defendant must produce any additional responsive documents in response to RFP No. 59 within three (3) days of the date of this Order. Category No. 11: Luxy Can Provide Representative Examples of Documents Relating to Instances of Sugar Dating on its Platforms, Including Documents Relating to Luxy's Actions or Reactions to Such Instances (RFP No. 71) In RFP No. 71, Plaintiffs seek “all DOCUMENTS regarding any instance of sugar dating on the LUXY PLATFORMS, including the response and actions documenting the course of action taken by YOU.” (Schaeffer Decl., Ex. 2 (emphasis added).) Plaintiffs raise this issue because Luxy “has argued that it is not a competitor with Reflex.” (Pltfs.' Letter Br. at 10.) Despite Luxy's assertions that the parties are not direct competitors and Luxy's app is not a “sugar dating” app, Plaintiffs maintain that it has identified several Luxy “ads that say differently.” (Id.) With their letter brief, Plaintiffs included Google Play Store screenshots (apparently captured through Wayback Machine) of a Luxy Millionaire Match Dating webpage (bates identifier Reflex 005085) and a screenshot dated November 15, 2017 for Luxy Pro-Elite Dating Single (bates identifier Reflex 005087). (Schaeffer Decl., Exs. 15-16.) Defendant objects that RFP No. 71 is facially overbroad insofar as it seeks “all” documents concerning “any” instance of sugar dating on Defendant's website. (Deft.'s Letter Br. at 9.) Defendant has agreed to produce representative examples “of documents concerning Luxy's enforcement efforts and policies against so-called ‘sugar dating’ on the LUXY PLATFORMS. (Id.) Luxy argues that this compromise on RFP No. 71 is both “workable and proportional to the needs of the case” and it has produced “more than 50 documents responsive to RFP 71, including at least seventeen documents showing Luxy's actual enforcement of its sugar dating policies, at least six articles concerning Luxy's sugar dating policies, at least two responses to consumer reviews concerning sugar dating, at least two documents showing steps Luxy can take to remove sugar daters, at least three app listings discussing Luxy's sugar dating policies, and at least eighteen captures from Luxy's website discussing Luxy's sugar dating policies.” (Id.; and see Zimmermann Decl. ¶ 11.) *7 The Court finds that RFP No. 71 is facially overbroad, particularly in light of the discussions above concerning the many thousands of webpage URLs that may have been generated for the Luxy website. Moreover, the list of “representative” documents that Luxy has produced demonstrates a good faith effort to provide relevant and proportional discovery responsive to RFP No. 71. Accordingly, Defendant's objections to RFP No. 71 are sustained and Plaintiffs' request for further search and production of “all documents” concerning Luxy's sugar dating policies and evidence of “any instances” of sugar dating on its platforms is DENIED. CONCLUSION For the foregoing reasons, Plaintiffs' motion to compel is GRANTED in part and DENIED in part as follows: Category No. 1: The Motion is GRANTED as to Plaintiffs' ROGs Nos. 14 and 15 and RFPs Nos. 16, 46, and 47. Within three (3) days of the date of this Order, Defendant shall serve supplemental responses to Plaintiffs' ROGs Nos. 14 and 15 and RFPs Nos. 16, 46, and 47 that include information concerning its international sales, revenues, and profits. Category No. 4: The Motion is DENIED as to RFA No. 96. Defendant's objections to RFA No. 96 are sustained and no supplemental response is required. Category No. 5: The Motion is GRANTED as to Plaintiffs' RFAs No. 12, 18, 19, 20, 145, 148, 149, and 150. Within three (3) days of the date of this Order, Defendant must provide complete, nonevasive responses compliant with Rule 36(a)(4) to Plaintiffs' RFAs Nos. 12, 18, 19, 20, 145, 148, 149, and 150. Category No. 7: The Motion is DENIED as to RFA No. 76. Defendant's objections to RFA No. 76 are sustained. Category No. 10: The Motion is DENIED as to documents concerning “tests” and/or “studies” in response to RFP No. 59. However, to the extent Defendant has not completed its production of responsive documents concerning “studies” or “surveys” that it located through its search and investigation, Defendant must produce any additional responsive documents in response to RFP No. 59 within three (3) days of the date of this Order. Category No. 11: The Motion is DENIED as to RFP No. 71. Because the Motion is granted in part and denied in part, the Court exercises its discretion and declines to apportion the reasonable expenses for the motion. FED. R. CIV. P. 37 (A)(5)(C). Each party to bear its own costs. IT IS SO ORDERED. Footnotes [1] The categories are numbered here as they were identified in the parties' joint submission to the Court on September 16, 2021 and are included as Appendix A to the Court's Order of September 21, 2021. (Dkt. No. 109.) Further, because of the voluminous nature of the discovery requests and responses, the Court has not set out each disputed request and response in the text of this Order. The specific requests and responses at issue are identified in Exhibit 2. (Dkt. No. 115-4.)