Seattle Trademark Lawyer

On Aug. 7, the Western District sanctioned the plaintiff in Mother, LLC v. L.L. Bean, Inc., for failing to comply with an order compelling discovery. In this trade dress infringement and false designation of origin case arising out of the parties’ competing hunting vests, the court had ordered Mother to produce “all electronically stored information regarding its finances (including sales, financial statement data, and data relating to its claimed damages)” by April 16. The court also had authorized L.L. Bean to continue the deposition of Mother’s president, Martin Grabijas, until after Mother produced such information. (STL previously discussed this order here.)

Mother responded by producing four pages of documents on May 17. In June, two weeks before the continued deposition, L.L. Bean’s attorney informed Mother’s attorney that the four pages Mother had produced did not appear to constitute full compliance with the court’s order. Mother’s attorney did not respond. At the deposition, Mother’s president acknowledged that the information had been in “summary form” and said he would be “happy to provide any additional information at any time.” He also told L.L. Bean’s counsel that “you’ve got the data, you could have pulled it together,” referring to Mother’s vendor files that Mother had previously produced. In response, L.L. Bean filed a motion for sanctions seeking to have all of Mother’s damages claims dismissed.

Magistrate Judge J. Kelly Arnold found Mother had violated the court’s order. As the court put it, “To announce at the deposition, and then only in response to questions seeking an explanation for failure to disclose, that the information in the form requested by defendant was unnecessary because defendant could calculate the content of the missing information from other data is disingenuous at best. It is important to remember that this was a continuing deposition required by an earlier failure to disclose.”

Addressing the appropriate sanction, Mother stated the need for any sanction was moot because it was willing to forgo its damages claim based on its “lost profits” and to pursue only the claim for “disgorgement” of L.L. Bean’s profits. L.L. Bean argued that the disgorgement claim necessarily required Mother to prove that L.L. Bean had earned some profits from the sale of an infringing product in an infringing market. Since the parties have different marketing channels, L.L. Bean argued it needed the requested financial information to counter Mother’s attempt to prove damages in an overlapping market. 

The court accepted Mother’s offer. It found: “Because the court is not familiar with the particular evidence supporting plaintiff’s damage claim for disgorgement, it is difficult to ascertain the degree of validity the court should place on defendant’s argument regarding the need for the undisclosed information as it may relate to the ‘infringement’ issue. There is, however, the potential for prejudice. Plaintiff submits that less serious sanctions may be imposed by accepting plaintiff’s offer to abandon all claims for plaintiff’s lost profits, although the tenor of plaintiff’s proposal suggests that it has chosen to proceed on that basis voluntarily, and its utilization as a sanction, standing alone, appears to be weak.”

The court also ordered Mother to pay the reasonable expenses, costs, and attorney’s fees that L.L. Bean incurred in bringing the motion.

The case cite is Mother, LLC v. L.L. Bean, Inc., No. 06-5540 (W.D. Wash. 2007).