Ceballos v. Banda Maguey Corporation et al Case No. 2:23-cv-10911-CBM (MARx) United States District Court, C.D. California Filed February 27, 2025 Rocconi, Margo A., United States Magistrate Judge Proceedings: (In Chambers) ORDER RE: MOTION TO COMPEL, DKT. 57 I. BACKGROUND *1 On December 31, 2023, Plaintiff Jorge Ernesto Ramirez Ceballos (“Ceballos”) filed the original complaint against Defendants Banda Maguey Corporation (“BMC”), Miguel Angel Vidal Pulido, Samuel Vidal Pulido (collectively “Defendants”), and ten unnamed Doe Defendants. ECF Docket No. (“Dkt.”) 1 at 3–4.[1] On December 6, 2024, Plaintiffs Ceballos, Fernando Guardado Rosales, Jose Rosario Cisneros Gutierrez, and Luis Antonio Plasencia Martinez (collectively “Plaintiffs”) filed a Motion to Compel Production of Documents from Nonparties Manuel Palomino (“Palomino”) and FM Entertainment Artist Management & Booking, Inc. (“FME”). Dkt. 57. The Court has summarized the factual background in a prior order: Plaintiffs' lawsuit centers on Banda Maguey, a prominent “technobanda genre” musical band that has toured in Mexico and the United States for over thirty years since its formation in Jalisco, Mexico in 1992. [Dkt. 30] at 6–7. Plaintiffs assert that they are “the owners and/or exclusive licensees of the Banda Maguey trademarks and the copyright over the Banda Maguey logo artwork.” Dkt. 65-1 (“Joint Stip.”) at 4. Plaintiffs allege that Defendants are “using the Banda Maguey trademarks and [logo artwork] illegally and without authorization, including through” Defendants' “impostor company, Banda Maguey Corporation.” Id. Plaintiffs brought this action alleging: (1) trademark counterfeiting, infringement, dilution, and cancellation; (2) copyright infringement; and (3) unfair competition, all under both federal and California state law. [Dkt. 30] at 27–39. On August 7, 2024, Defendants filed an Answer and [Defendant] Miguel Pulido filed a Counterclaim against Plaintiffs alleging that Plaintiffs fraudulently procured the “963 Registration”[2] for “the mark ‘La Original Banda Maguey, Y Sigue, Y Sigue Y ... Puro Villa Corona’ and [accompanying] design.” Dkts. 30 at 10; 31 at 22. Dkt. 69 at 1–2. Nonparties Palomino and FME (“Nonparties”) are the booking agents for the Defendants, whom Plaintiffs describe as the “renegade former band members of Banda Maguey and their impostor company Banda Maguey Corporation.” Dkt. 57-1 (“Mot.”) at 4. Plaintiffs issued identical subpoenas on the Nonparties seeking the production of documents related to FME's operations, the relationship between Defendants and the Nonparties, and Defendants' use of the disputed trademarks and Plaintiffs' likenesses. Mot. at 4, 9. Each subpoena contained twenty-five requests for production (“RFPs”). Dkt. 57-2, Declaration of Daniel Allender in Support of Plaintiffs' Motion (“Allender Decl.”), at 16–17. The proofs of service indicate that both subpoenas were served on Palomino, an agent of FME, on October 10, 2024. Id. at 341, 343. Plaintiffs' counsel sent letters to the Nonparties on October 30, 2024, and November 1, 2024, seeking the Nonparties' objections and available times to meet and confer. Id. at 337, 339. The Nonparties served their objections to the subpoena on November 1, 2024. Id. at 298. Plaintiffs, dissatisfied with the Nonparties objections, filed this instant motion to compel on December 6, 2024, and served it on the Nonparties the same day. Dkts. 57, 58. The Nonparties have not filed an opposition. *2 The Court finds these matters suitable for resolution without oral argument. See Fed. R. Civ. P. 78(b); Local Rule 7-15. For the reasons discussed below, Plaintiffs' motion is GRANTED. II. DISCUSSION A. THE NONPARTIES' OBJECTIONS TO THE SUBPOENA HAVE BEEN WAIVED Pursuant to Federal Rule of Civil Procedure 45 (“Rule 45”), a party may serve a subpoena on a non-party requiring attendance and the production of documents. Fed. R. Civ. P. 45(a)(1)(C). Objections to a command to produce documents must be served “before the earlier of the time specified for compliance or 14 days after the subpoena is served.” Fed. R. Civ. P. 45(d)(2)(B). “Failure to serve timely objections waives all grounds for objection.” McCoy v. Sw. Airlines Co., 211 F.R.D. 381, 385 (C.D. Cal. 2002) (citing In re DG Acquisition Corp., 151 F.3d 75, 81 (2d Cir. 1998)). Courts have recognized an exception where the responding party establishes unusual circumstances and good cause for the failure to timely object. See Elite Sports Ltd. v. Bftv, LLC, No. CV 06-4151-GHK (PLAx), 2007 WL 9706016, at *2 (C.D. Cal. Aug. 24, 2007) (finding unusual circumstances sufficient to preclude waiver of objections where untimely response was inadvertent and “constitute[d] good cause sufficient to excuse [non-party's] conduct.”). If the recipient responds to a subpoena with objections, the party who served the subpoena may move for an order compelling compliance. See Fed. R. Civ. P. 45(d)(2)-(3). Here, the proof of service attached to the subpoena indicates it was served on the Nonparties on October 10, 2024. Allender Decl. at 341, 343. Thus, the period for the Nonparties to object to the document requests expired on October 24, 2024. See Fed. R. Civ. P. 45(d)(2)(B). However, the Nonparties did not serve objections until November 1, 2024. Allender Decl. at 298. The Nonparties' objections appear to have been waived. Plaintiffs' counsel served this motion on the Nonparties on December 6, 2024. Dkt. 58 at 2. The Nonparties have not filed an opposition to Plaintiffs' motion in the ensuing months and therefore have offered no explanation for their failure to timely serve objections. Without any indication of good cause or unusual circumstances to justify the untimely response, this Court cannot find that the Nonparties are exempted from the obligations of Fed. R. Civ. P. 45(d)(2)(B). Accordingly, the Court finds that the Nonparties have waived any objections to Plaintiffs' subpoenas. B. DEFENDANTS' OBJECTIONS CANNOT PREVENT THE NONPARTIES FROM COMPLYING While at first glance it appears that the Nonparties objected to the subpoenas, there are some indications that Defendants actually compiled and served the objections. The objections indicated that they were “on behalf of the subpoenaed parties and every objection was articulated on behalf of the ‘Responding Party’,” meaning the Nonparties. Mot. at 5; see, e.g., Allender Decl. at 284–85, 302–03. However, as Plaintiffs point out, “the objections were captioned ‘Defendants' Objections,’ and signed by Defendant's counsel as ‘Attorney for Defendants’.” Mot. at 5; Allender Decl. at 298, 317. To add to the confusion, a few weeks after objections were served at the parties' meet and confer regarding the subpoenas, Defendants' counsel stated they represented the Nonparties. Mot. at 5; Allender Decl. at 320 (in an email, Plaintiffs' counsel explaining that an attorney from Defendants' counsel's office made clear that Defendants' counsel's firm represented the Nonparties). However, two weeks later, when Plaintiffs sought Defendant's portion of a proposed joint stipulation, Defendants' counsel immediately made clear his office no longer represented the Nonparties. Mot. at 5–6; Allender Decl. at 321. To the extent that Defendants objected to the subpoenas on the Nonparties' behalf, the objections are insufficient to prevent the Nonparties' compliance. *3 To prevent a nonparty from complying with a subpoena, a party cannot simply object, “but rather, must seek a protective order or make a motion to quash.” Moon v. SCP Pool Corp., 232 F.R.D. 633, 636 (C.D. Cal. 2005); McCoy, 211 F.R.D. at 384. However, even if a party fails to seek a protective order or motion to quash, “under [Federal] Rule [of Civil Procedure] 26(c), [a] [c]ourt may sua sponte grant a protective order for good cause shown.” McCoy, 211 F.R.D. at 385. The moving party must show that good cause exists and the interests of justice weigh in favor of issuing the protective order. Fed. R. Civ. P. 26(c); see Acer Inc. v. Tech. Props. Ltd., No. C 08-00877-JF (HRL), 2010 WL 4807101, at *4 (N.D. Cal. Nov. 19, 2010) (finding good cause to issue a protective order because documents nonparty produced were privileged and defendant had promptly asserted the privilege once it learned of the document's contents). The party seeking a protective order must show it will suffer “specific prejudice or harm if no protective order is granted.” Phillips v. Gen. Motors Corp., 307 F.3d 1206, 1210–11 (9th Cir. 2002). Here, Defendant's objections cannot prevent the Nonparties from complying with Plaintiffs' subpoenas. Defendants needed to assert their objections in a motion to quash or seek a protective order. See Moon, 232 F.R.D. at 636. Additionally, while Defendants have not asked this Court to issue a protective order, the Court finds that there does not appear to be good cause to issue one sua sponte. In response to each RFP, Defendants offered boilerplate privilege and work-product objections. See, e.g., Allender Decl. at 285 (Defendants objecting that RFP No. 1 sought documents protected by the Nonparties' “rights of privacy,” “attorney-client privilege and/or attorney work product doctrine”); see also Mot. at 5 (“Defendants' counsel stated that the objections were solely intended to be placeholders in order to ‘preserve’ them ....”) (citing Allender Decl. at 325). However, these vague assertions of attorney-client and work product privileges fall well below what is necessary to show these documents are protected. Defendants simply asserted these privileges may apply, without offering any explanation. See In re Grand Jury Investigation, 974 F.2d 1068, 1071 (9th Cir. 1992) (explaining that “the party asserting the [attorney-client] privilege must make a prima facie showing that the privilege” applies to the information sought); Kandel v. Brother Intern. Corp., 683 F. Supp. 2d 1076, 1083 (C.D. Cal. 2010) (“Like the attorney-client privilege, the party claiming work product immunity has the burden of proving the applicability of the doctrine.”). Accordingly, since Defendants have failed to show that the documents sought are privileged, there is not good cause for this Court to issue a protective order. See McCoy, 211 F.R.D. at 385–88 (finding there was not good cause to issue a protective order sua sponte because the information sought was not privileged). Finally, the Court notes that there is already a stipulated protective order in place that is sufficient to addresses any lingering privacy concerns. Dkt. 64; see In re Heritage Bond Litig., No. CV 02-1475-DT(RCX), 2004 WL 1970058, at *5 n.12 (C.D. Cal. July 23, 2004) (finding privacy interests were adequately protected by a protective order already in place in the litigation). C. PLAINTIFFS' MOTION TO COMPEL IS GRANTED 1. Applicable law Rule 45 of the Federal Rules of Civil Procedure governs the issuing and service of subpoenas on nonparties. Fed. R. Civ. P. 45. If necessary to enforce that subpoena, a party may move to compel the nonparty to comply in the court where the discovery is to be taken. Fed. R. Civ. P. 37(a)(1)–(2). Under Rule 45, a subpoena must be modified or quashed if it “requires disclosure of privileged or other protected matter, if no exception or waiver applies,” or if the subpoena “subjects a person to undue burden.” Fed. R. Civ. P. 45(d)(3)(A)(iii), (iv); see also Fed. R. Civ. P. 45(d)(1) (party issuing a subpoena “must take reasonable steps to avoid imposing undue burden or expense on a person subject to the subpoena”). *4 Whether a subpoena imposes an undue burden on a particular witness is a “case specific inquiry.” Thayer v. Chiczewski, 257 F.R.D. 466, 469 (N.D. Ill. 2009) (internal quotations and citations omitted). Generally, the scope of discovery available through a Rule 45 subpoena is the same as the scope of discovery permitted under Rule 26(b). Beaver Cty. Employers Ret. Fund v. Tile Shop Holdings, Inc., No. 3:16-mc-80062-JSC, 2016 WL 3162218, at *2 (N.D. Cal. June 7, 2016) (citing Fed. R. Civ. P. 45 advisory comm. note to 1970 amendment). Under Rule 26(b), Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable. Fed. R. Civ. P. 26(b)(1). Relevancy is broadly defined to encompass any matter that bears on, or that reasonably could lead to other matters that could bear on, any issue that is or may be in the case. Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978). In deciding discovery disputes, courts must be careful not to deprive the party of discovery that is reasonably necessary to their case. Id. at 650. “Thus, a court determining the propriety of a subpoena balances the relevance of the discovery sought, the requesting party's need, and the potential hardship to the party subject to the subpoena.” Heat & Control, Inc. v. Hester Industries, Inc., 785 F.2d 1017, 1024 (Fed. Cir. 1986). However, while discovery should not be unnecessarily restricted, nonparty[3] discovery is more limited to protect nonparties from harassment, inconvenience, or disclosure of confidential documents. Dart Indus. Co. v. Westwood Chem. Co., 649 F.2d 646, 649 (9th Cir. 1980). Accordingly, “concern for the unwanted burden thrust upon nonparties is a factor entitled to special weight in evaluating the balance of competing needs.” Cusumano v. Microsoft Corp., 162 F.3d 708, 717 (1st Cir. 1998). However, “third party discovery is a time-honored device to get at the truth of a claim or defense. A party in litigation is not obligated to take the word of an opponent regarding what relevant documents do or do not exist.” L.G. Philips LCD Co. v. Tatung Co., No. C 07-80073-WHA, 2007 WL 869256, at *2 (N.D. Cal. March 20, 2007). 2. Analysis Plaintiffs' document requests can be placed into five categories: documents related to (1) FME's corporate structure, finances, and dealings with Defendants (RFP Nos. 1–10); (2) the Nonparties' knowledge of Defendants' alleged trademark infringement and uses of Plaintiffs' likenesses (RFP Nos. 11–12); (3) Plaintiffs' allegations in their Second Amended Complaint and Defendants' Counterclaims (RFP Nos. 14–15); (4) the Nonparties' communications with the Defendants, including those about the disputed trademarks; and (5) Defendants' concerts and use of the disputed trademarks. Mot. at 9–17. *5 Each category of documents appears relevant to Plaintiffs' claims and allegations. The documents requested appear likely to discover evidence related to Defendants' uses of the disputed Banda Maguey trademarks and Plaintiffs' likenesses. The communications between the Nonparties and Defendants could discover evidence about whether Defendants' infringement of the trademarks has been intentional. The Nonparties' financial records are relevant to Defendants' financial gain derived from using the disputed trademarks, and thus Plaintiffs' potential damages award. The evidence sought appears central to litigating Plaintiffs' claims and allegations. Additionally, while the Nonparties should not be subjected to an undue burden, their only possible argument related to potential burden appears to be that the RFPs implicate privilege and privacy concerns. However, as discussed above, these concerns were raised in the form of boilerplate objections; neither Defendants nor the Nonparties have offered any explanation as to how the document requests sought private or privileged information. See Allender Decl. at 285–298, 303–317 (Nonparties objecting to each RFP because they implicated the “[Nonparties'] rights of privacy, and the attorney-client privilege and/or attorney work product doctrine”). The Nonparties make no allegation that Plaintiffs seek their proprietary or confidential information for any improper purpose. Furthermore, though the Nonparties are entitled to a certain amount of protection against disclosure of confidential documents, they do not appear to allege that any unique harm will result from their disclosure to Plaintiffs, specifically. As the Court noted above, there is already a stipulated protective order in place in this matter, and the Nonparties have made no showing that the protective order is insufficient to address their privacy concerns. Dkt. 64; see In re Heritage Bond Litigation, 2004 WL 1970058, at *5 n.12. In conclusion, the Court finds that the evidence Plaintiffs seeks is directly relevant to their claims and allegations, thus satisfying the low bar of Rule 26(f). Furthermore, the Nonparties have made no showing that the production would be unduly burdensome or that the protective order in place does not sufficiently address their privacy concerns. Accordingly, Plaintiff's Motion with respect to RFP Nos. 1–12 and 14–25 is GRANTED. D. THE COURT DECLINES TO AWARD COSTS AND FEES Here, Plaintiffs do not seek an award of costs and fees. In any case, this Court does not have the authority to impose costs and fees on the Nonparties at this time. The Court can only impose sanctions on a non-party for failing to comply with a subpoena under Rule 45, not Rule 37, which generally governs discovery sanctions. See In re Pham, 536 B.R. 424, 431 (B.A.P. 9th Cir. 2015) (“Rule 45 is the sole basis for enforcing a nonparty's noncompliance with a subpoena duces tecum.”). Under Rule 45, the “nonparty must first be subject to an order compelling discovery and then fail to comply with that order before the court can invoke its contempt powers and impose a sanction of attorney's fees.” Id. (citing In re Plise, 506 B.R. 870, 877–79 (B.A.P. 9th Cir. 2014); Pennwalt Corp. v. Durand-Wayland, Inc., 708 F.2d 492, 494 (9th Cir. 1983)). Thus, since this Court has yet to compel production from the Nonparties, it cannot impose a sanction of costs and fees. However, even though this motion involves subpoenas served on the Nonparties, the Court admonishes Defendants' counsel for their role in driving this dispute to motion practice. Defendants' counsel raised, by their own admission, boilerplate objections on the Nonparties' behalf and made no effort to supplement these responses. Additionally, Defendants' counsel's filings created serious confusion about whether they actually represented the Nonparties. Defendants' counsel's obfuscation raises serious concerns about whether they even had the authority to represent the Nonparties in the first place. See Mot. at 5–6 (explaining that the attorney from Defendants' counsel's office at the meet and confer “was not willing to actually discuss the subpoenas” or “any particular objection,” indicating they did not actually represent the Nonparties). Defendants' counsel's apparent misdirection in this matter, coupled with Defendants' counsel's numerous transgressions regarding Plaintiffs' other motion to compel,[4] leave this Court highly inclined to impose sanctions should Defendants' counsel's conduct result in further motions before this Court. III. ORDER *6 Plaintiffs' motion with respect to RFP Nos. 1–12 and 14–25 is GRANTED. The Nonparties shall produce responsive documents to Plaintiffs within twenty-one (21) days of this Order. IT IS SO ORDERED. Footnotes [1] All citations to electronically filed documents refer to the CM/ECF pagination. [2] The “963 Registration” refers to U.S. Trademark Registration No. 5,985,963. [3] See Dart Indus., 649 F.2d at 649 (“One author has stated that the more appropriate nomenclature is nonparty discovery, not third-party discovery, as the word nonparty serves as a constant reminder of the reasons for the limitations that characterize third-party discovery.”) (quoting Getman, R., “Federal ‘Third-Party’ Discovery in the Small Antitrust Case,” 45 Brooklyn L.Rev. 311 (1979)). [4] In addition to this motion to compel, Plaintiffs filed a separate motion seeking further responses from Defendants to their interrogatories and RFPs. Dkt. 65. In its order granting Plaintiffs' motion in part, this Court admonished Defendants' counsel for their conduct contributing to the discovery dispute. Dkt. 69 at 24. Specifically, the Court noted that many of Defendants' objections to Plaintiffs' discovery requests were unsupported legally or “directly contradicted by their own admissions and the evidentiary record.” Id.; see, e.g., id. at 5–6 (this Court finding Defendants' objections “meritless” because “neither the facts of this case nor the laws of discovery support[ed] [them]”); 8 (finding Defendant's objections “confounding” because they were “completely implausible and directly contradicted by their admission”). Additionally, Defendants' counsel failed to produce responsive documents upon entry of a protective order as promised, and never certified that Defendants conducted a reasonable inquiry for responsive documents. Id. at 24. This Court noted that Defendants' conduct “appear[ed] consistent with an attempt to deliberately withhold discovery and make the discovery process more onerous for Plaintiffs.” Id.