MGA Entertainment Inc. v. Clifford T.I. Hams et al Case No. 2:20-cv-11548-JVS (AGRx) United States District Court, C.D. California Filed July 07, 2022 Counsel Carole E. Reagan, Dean J. Zipser, Mark A. Finkelstein, Umberg Zipser LLP, Irvine, CA, Laurence Cheng, Elizabeth Susan Lachman, MGA Entertainment, Inc., Chatsworth, CA, for MGA Entertainment Inc. Erin R. Ranahan, Jiepu Li, Winston and Strawn LLP, Los Angeles, CA, Cesie C. Alvarez, Winston and Strawn LLP, San Francisco, CA, Chante B. Westmoreland, Pro Hac Vice, Sheppard Mullin Richter and Hampton LLP, Houston, TX, Peter L. Haviland, Wheaton Law Group, Santa Monica, CA, for Clifford T.I. Harris, Tameka Tiny Harris, OMG Girlz LLC, Grand Hustle LLC, Pretty Hustle LLC. Selna, James V., United States District Judge Proceedings: [IN CHAMBERS] Order Regarding Motion to Strike Consumer Declarations [269] *1 Counter-Defendants move to strike as untimely six declarations from new witnesses used to establish a genuine dispute as to the likelihood of confusion element of their trade dress infringement claim. Mot. Strike, Dkt. No. 269. Counterclaimants oppose. Opp'n Mot. Strike, Dkt. No. 277. Counterclaimants filed a request for hearing following receipt of the Court's tentative order. Pl. Request for Hearing re Mot. Strike, Dkt. No. 300. The Court finds that oral argument would not be helpful in this matter. Fed. R. Civ. P. 78; L.R. 7-15. For the following reasons, the Court DENIES the motion to strike the declarations.[1] Parties shall meet and confer and submit proposed redactions to this Order within fourteen days of the entry of this Order. I. BACKGROUND The motion and opposition involve two categories of evidence; (1) public social media posts and accompanying comments; and (2) six declarations submitted by individuals who had commented on the public social media posts. Counter-Defendants only move to strike the declarations. See Mot. Strike. The parties disagree about when discovery closed, but it appears from a review of the email exchange between counsel that both sides were struggling to complete their discovery obligations by the scheduling order's stated deadline of April 13, Dkt. No. 88, and that the parties had agreed to extend the deadline to April 18, 2022.[2] Ranahan Decl. ISO Mot. Strike, Dkt. No. 277-2, Ex. A at 2. On April 18, Tameka Harris and Zonnique Pullins both posted on their social media images of the OMG Girlz next to certain of the OMG Dolls. Pullins' social media post included the caption: “Do these dolls look familiar?” Mot. Strike at 3; Opp'n Mot. Strike at 2. These posts received many hundreds or thousands of “likes” and comments, including comments expressing that the commenters believed that the OMG Dolls were the OMG Girlz. During a deposition of one of MGA's employees, Counterclaimants' counsel suggested that she had been in contact with some of the commenters. Rather than disclose their identities, Counterclaimants' counsel told opposing counsel that they had the information necessary to reach out to the commenters themselves. Ranahan Decl. ISO Mot. Strike, Ex. D at 10. Counterclaimants made Tameka Harris available for another deposition to discuss recently produced documents, including the social media post, which Counter-Defendants took on April 25, 2022. During the deposition, Counter-Defendants asked Harris if she believed the commenters were telling the truth when they said they were confused by the Dolls, and asked her if she had followed up with any of the commenters to see if they were telling the truth. Ranahan Decl. ISO Opp'n Mot. Strike, Ex. E, Dkt. No. 277-6 at 10-12 (excerpts of Tameka Harris Dep. II). *2 Counterclaimants reached out to several of the commenters. As a result, six of these commenters submitted declarations expressing that they had been believed that the OMG Dolls were the OMG Girlz or that they had specifically purchased the OMG Dolls harboring that belief (“Confused Consumer Declarations”). Counterclaimants included these declarations in their opposition to the motion for summary judgment. Confused Consumer Declarations, Dkt. Nos. 161–166. II. DISCUSSION “If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless.” Fed.R.Civ.P. 37(c)(1). Among the factors that may properly guide a district court in determining whether a violation of a discovery deadline is justified or harmless are: (1) prejudice or surprise to the party against whom the evidence is offered; (2) the ability of that party to cure the prejudice; (3) the likelihood of disruption of the trial; and (4) bad faith or willfulness involved in not timely disclosing the evidence. Lanard Toys Ltd. v. Novelty, Inc., 375 F. App'x 705, 713 (9th Cir. 2010). The burden is on the party facing exclusion to prove the delay was justified or harmless. Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1107 (9th Cir. 2001). Counterclaimants assert that they promptly disclosed “sufficient information to contact the witnesses” when they first learned of and confirmed their identifies and that the disclosures were sufficient under Rule 26. Opp'n Mot. Strike at 21-22. Counterclaimants contend that they gave notice on multiple occasions of their intent to contact the commenters to Counter-Defendants, and that Counter-Defendants were invited to and had the ability to do the same. Opp'n Mot. Strike at 19, 21-22. Counterclaimants' assertion is based on the fact that the social media posts produced to Counter-Defendants included images of the comments and the associated usernames, which Counter-Defendants could have used to investigate further. But Counterclaimants did not identify which individuals they actually contacted until the declarations were filed on May 24, 2022. This is not a sufficient disclosure. See Fed. R. Civ. P. 26(a)(1)(A)(i) (requiring parties to disclose “the name and, if known, the address and telephone number of each individual likely to have discoverable information—along with the subjects of that information—that the disclosing party may use to support its claims or defenses). Accordingly, the next question is whether this failure was substantially justified or harmless. Counterclaimants advance two primary arguments on this issue: (1) they could not have discovered the information sooner, and (2) Counter-Defendants' own misconduct and failures justify the delay. Opp'n Mot. Strike. First, Counterclaimants argue that they could not have discovered the identity of the witnesses earlier because the witnesses surfaced in response to the social media posts on April 18, 2022. Counterclaimants do not explain why Pullins and Harris could not have posted on social media weeks or months prior, which would have allowed Counterclaimants to gather these witnesses and disclose them prior to the close of discovery or briefing deadlines. Nonetheless, the Court accepts that Counterclaimants were unable to confirm that they would actually receive signed declarations from certain individuals that they contacted until receiving those declarations starting on May 16, 2022. See Pl. Request for Hearing re Mot. Strike at 1-2. *3 Second, Counterclaimants contend that Counter-Defendants' own discovery disclosures and conduct necessitated or justify the late disclosure. The issue of consumer confusion, and whether the relevant consumers were being considered, was raised in Counter-Defendants' expert survey used in support of the motion for summary judgment. Counterclaimants argue that the Confused Consumer Declarations present stronger evidence of confusion than this survey, which they object to on various grounds but primarily for its purported failure to survey the proper universe of consumers. Opp'n Mot. Strike at 3. Counterclaimants also assert that Counter-Defendants relied on employee declarations despite not disclosing the identity of those employees. Id. at 19. Counterclaimants also raise a litany of complaints of Counter-Defendants conduct regarding motions practice and discovery, including a document production of 39,000 documents on April 18, 2022 and multiple missteps in the summary judgment filing, which “took days to resolve.” Opp'n Mot. Strike at 22; Ex. K, Dkt. No. 277-12 at 5. Counterclaimants argue that given the confusion and delays caused by Counter-Defendants' own actions, Counter-Defendants cannot now claim to be prejudiced by the introduction of the declarations, which they received in time to address in their reply briefing. More compellingly, at Tameka Harris's deposition, the credibility of the comment responses to the social media posts was specifically called into question. Counter-Defendants asked if Harris believed the commenters were being truthful or simply supportive when they agreed that the OMG Dolls looked like the OMG Girlz. Ranahan Decl. ISO Opp'n Mot. Strike, Ex. E, Dkt. No. 277-6 at 10 (excerpts of Tameka Harris Dep. II). Counsel asked Harris if Counterclaimants intended to follow up with the commenters to determine the truth of their words. Id. at 12. Counterclaimants argue that the declarations support the credibility of that evidence, which was called into question. Opp'n Mot. Strike at 11. Counterclaimants also state that they offered Counter-Defendants the opportunity to depose declarants and Counter-Defendants declined. Opp'n Mot. Strike at 19. Counterclaimants' identifying these consumers so late in discovery, when they had many months of opportunities to do so, was not entirely harmless, as Counter-Defendants did not receive the declarations or identity of the witnesses until after the close of discovery and after they had filed their motion for summary judgment. For that reason, the Court declines to consider the Consumer Declarations for purposes of the motion for summary judgment. However, allowing Counter-Defendants to depose these witnesses will cure the prejudice suffered by Counter-Defendants. As the trial has been continued to January 17, 2023, doing so will not disrupt the trial schedule and will render the disclosure harmless. Accordingly, the Court DENIES the motion to strike the six consumer declarations, Dkt. Nos. 161-166, and reopens discovery for the limited purpose of allowing Counter-Defendants to depose the Consumer Declarants. Parties shall meet and confer and submit proposed redactions of the Order to the Court within fourteen days of the entry of this Order. IT IS SO ORDERED. Footnotes [1] Particularly given the disposition of the order, the Court declines to address any arguments regarding the timeliness of Counterclaimants' opposition to the motion to strike. See Opp'n Mot. Strike at 20. [2] Counter-Defendants themselves requested extensions and were unable to complete their document production by the deadline, finally confirming that they would complete their document production by April 18. Ranahan Decl. ISO Mot. Strike, Dkt. No. 277-2, Ex. A at 2.