Bluetooth SIG, Inc. v. FCA US, LLC

W.D. Washington

Bluetooth SIG, Inc. v. FCA US, LLC

District Court, W.D. Washington·Decided October 4, 2019·No. 2:18-cv-01493·Unknown

Opinion

i HONORABLE RICHARD A. JONES 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 WESTERN DISTRICT OF WASHINGTON AT SEATTLE BLUTOOTH SIG, INC., a Delaware 9 corporation, 10 Plaintiff, Case No. 2:18-cv-0 1493-RAJ 11 y ORDER GRANTING IN PART AND DENYING IN PART Lage FF’ M2 FCA US LLC, a Delaware limited liability CORMPEL F's MOTION TO 13 company, 14 Defendant.

16 I. INTRODUCTION 7 This matter is before the Court on Plaintiff's motions to compel. Dkt. #44. For the 18 reasons below, the Court GRANTS in part and DENIES in part the motions. 19 Il. BACKGROUND 20 Plaintiff Bluetooth SIG, Inc. (“Plaintiff or “SIG”) owns trademarks for BLUETOOTH, BLUETOOTH & B Design, and “B Design” (collectively, the 99 “BLUETOOTH Marks”). Dkt. # 44. To date, the SIG has granted licenses to use the 73 BLUETOOTH Marks to more than 34,000 member companies. Jd. Defendant FCA US LLC (“Defendant” or “FCA”) is a North American automotive 95 manufacturer of brands such as Fiat, Chrysler, Dodge, Jeep, and Ram. Jd. FCA claims 26 that among the myriad of components in its automobiles are radio head unit components, some of which are Bluetooth-enabled. Jd. FCA claims to have purchased these radio head 28 |! ORDER 1

| || unit components from various third-party suppliers that had already secured licenses from 2 || SIG. Id. 3 SIG brings claims against FCA for (i) trademark infringement, counterfeiting, and 4 || dilution; (ii) unfair competition; (iii) and violations of the Washington Consumer 5 || Protection Act. Dkt. #1. On December 10, 2018, SIG propounded its First Set of Requests 6 || for Production on FCA, and requested, among other things, the production of financial 7 || documents reflecting FCA’s wholesale and retail fees or prices charged for its products, 8 || FCA’s gross sales revenues, profits, and costs, and FCA’s volume for each unit sold on a 9 || monthly basis since each such good or service was first offered using the SIG’s marks (the 10 || “Requested Documents”). Dkt. # 44. The parties dispute the relevance of the requested 11 || documents. Jd. 12 Il. DISCUSSION 13 The Court has broad discretion to control discovery. Avila v. Willits Envtl. 14 || Remediation Trust, 633 F.3d 828, 833 (9th Cir. 2011). That discretion is guided by several 15 || principles. Most importantly, the scope of discovery is broad. A party must respond to 16 || any relevant discovery request that is not privileged and that is “reasonably calculated to 17 || lead to the discovery of admissible evidence.” Fed. R. Civ. P. 26(b)(1). The Court, 18 || however, must limit discovery where it can be obtained from some other source that is 19 || more convenient, less burdensome, or less expensive, or where its “burden or expense... 20 || outweighs its likely benefit, considering the needs of the case, the amount in controversy, 21 || the parties’ resources, the importance of the issues at stake in the action, and the importance 22 || of the discovery in resolving these issues.” Fed. R. Civ. P. 26(b)(2)(C)(i), (iii). 23 A. Disputed Discovery Request 24 i. Request for Production No. 5 25 In its Request for Production (“RFP”) No. 5, SIG seeks “DOCUMENTS sufficient 26 || to show the wholesale and retail fees or prices charged for each of YOUR GOODS AND 27 || SERVICES.” Dkt. # 44 at 5. 28 |! ORDER -2

1 Here, SIG claims that documents relating to the wholesale and retail fees or prices 2 || charged by FCA for its products are integral to the SIG’s ability to perform an accounting 3 || and compute its damages. /d. at 6. FCA objects to this request for production, arguing that 4 || discovery of FCA’s financial information as to its automobiles is not proportional to the 5 || needs of the case. /d. at 7-8. The Court disagrees with FCA’s assertion that SIG may not 6 || be awarded discovery without first presenting evidence of the “commercial magnetism” of 7 || the BLUETOOTH marks. /d. FCA appears to admit the use of BLUETOOTH marks to 8 || inform consumers that the radio head unit components installed in FCA’s automobiles use 9 || Bluetooth technology. Jd. The prices charged by FCA for products alleged to be using or 10 || advertising the use of BLUETOOTH-equipped products is reasonably relevant to SIG’s 11 || claims. Fed. R. Civ. P. 26(b)(1). However, the Court will DENY SIG’s motion to compel 12 || production because RFP No. 5, as written, is overly broad and unduly burdensome. 13 ii. Request for Production No. 15 14 SIG seeks “DOCUMENTS sufficient to show the gross sales revenues, profits, and 15 || costs for each of YOUR GOODS AND SERVICES on a monthly basis since each such 16 || good or service was first offered USING the BLUETOOTH MARKS.” Dkt. # 44 at 9. 17 SIG claims that the documents sought by this request are directly relevant to the 18 || SIG’s computation of damages, a portion of which will comprise of disgorgements of 19 || FCA’s profits. Jd, at 10. Moreover, SIG argues request is as narrowly tailored, demanding 20 || only those documents from the time period from which FCA began misappropriating the 21 || SIG’s BLUETOOTH Marks. Jd. FCA reiterates its contention that discovery should not 22 || be rewarded without first presenting evidence of the “commercial magnetism” of the 23 || BLUETOOTH marks. Jd. at 12. For the reasons previously stated, this argument is 24 || unpersuasive. Accordingly, the Court GRANTS SIG’s motion to compel. 25 iii, | Request for Production No. 16 26 SIG seeks “DOCUMENTS sufficient to show the volume of each of YOUR 27 || GOODS AND SERVICES sold on a monthly basis since each such good or service was 28 |! ORDER —3

1 || first offered USING the BLUETOOTH MARKS.” /d. at 13. 2 SIG claims that the documents sought by this request are directly relevant to the 3 || SIG’s computation of damages, a portion of which will comprise of disgorgements of 4 || FCA’s profits. Jd. at 15. FCA again claims that discovery should not be rewarded without 5 || first presenting evidence of the “commercial magnetism” of the BLUETOOTH marks. For 6 || the reasons previously stated, this argument is unpersuasive. Accordingly, the Court 7 || GRANTS SIG’s motion to compel. 8 IV. CONCLUSION 9 For the reasons stated above, the Court GRANTS in part and DENIES in part 10 || SIG’s motions to compel. Dkt. # 44. DATED this 44, of Oo ape 13 . Lt b 15 16 The Honorable Richard & Jones United States District Court Judge 17 18 19 20 21 22 23 24 25 26 27 28 |! ORDER-4

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i HONORABLE RICHARD A. JONES 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 WESTERN DISTRICT OF WASHINGTON AT SEATTLE BLUTOOTH SIG, INC., a Delaware 9 corporation, 10 Plaintiff, Case No. 2:18-cv-0 1493-RAJ 11 y ORDER GRANTING IN PART AND DENYING IN PART Lage FF’ M2 FCA US LLC, a Delaware limited liability CORMPEL F's MOTION TO 13 company, 14 Defendant.

16 I. INTRODUCTION 7 This matter is before the Court on Plaintiff's motions to compel. Dkt. #44. For the 18 reasons below, the Court GRANTS in part and DENIES in part the motions. 19 Il. BACKGROUND 20 Plaintiff Bluetooth SIG, Inc. (“Plaintiff or “SIG”) owns trademarks for BLUETOOTH, BLUETOOTH & B Design, and “B Design” (collectively, the 99 “BLUETOOTH Marks”). Dkt. # 44. To date, the SIG has granted licenses to use the 73 BLUETOOTH Marks to more than 34,000 member companies. Jd. Defendant FCA US LLC (“Defendant” or “FCA”) is a North American automotive 95 manufacturer of brands such as Fiat, Chrysler, Dodge, Jeep, and Ram. Jd. FCA claims 26 that among the myriad of components in its automobiles are radio head unit components, some of which are Bluetooth-enabled. Jd. FCA claims to have purchased these radio head 28 |! ORDER 1

| || unit components from various third-party suppliers that had already secured licenses from 2 || SIG. Id. 3 SIG brings claims against FCA for (i) trademark infringement, counterfeiting, and 4 || dilution; (ii) unfair competition; (iii) and violations of the Washington Consumer 5 || Protection Act. Dkt. #1. On December 10, 2018, SIG propounded its First Set of Requests 6 || for Production on FCA, and requested, among other things, the production of financial 7 || documents reflecting FCA’s wholesale and retail fees or prices charged for its products, 8 || FCA’s gross sales revenues, profits, and costs, and FCA’s volume for each unit sold on a 9 || monthly basis since each such good or service was first offered using the SIG’s marks (the 10 || “Requested Documents”). Dkt. # 44. The parties dispute the relevance of the requested 11 || documents. Jd. 12 Il. DISCUSSION 13 The Court has broad discretion to control discovery. Avila v. Willits Envtl. 14 || Remediation Trust, 633 F.3d 828, 833 (9th Cir. 2011). That discretion is guided by several 15 || principles. Most importantly, the scope of discovery is broad. A party must respond to 16 || any relevant discovery request that is not privileged and that is “reasonably calculated to 17 || lead to the discovery of admissible evidence.” Fed. R. Civ. P. 26(b)(1). The Court, 18 || however, must limit discovery where it can be obtained from some other source that is 19 || more convenient, less burdensome, or less expensive, or where its “burden or expense... 20 || outweighs its likely benefit, considering the needs of the case, the amount in controversy, 21 || the parties’ resources, the importance of the issues at stake in the action, and the importance 22 || of the discovery in resolving these issues.” Fed. R. Civ. P. 26(b)(2)(C)(i), (iii). 23 A. Disputed Discovery Request 24 i. Request for Production No. 5 25 In its Request for Production (“RFP”) No. 5, SIG seeks “DOCUMENTS sufficient 26 || to show the wholesale and retail fees or prices charged for each of YOUR GOODS AND 27 || SERVICES.” Dkt. # 44 at 5. 28 |! ORDER -2

1 Here, SIG claims that documents relating to the wholesale and retail fees or prices 2 || charged by FCA for its products are integral to the SIG’s ability to perform an accounting 3 || and compute its damages. /d. at 6. FCA objects to this request for production, arguing that 4 || discovery of FCA’s financial information as to its automobiles is not proportional to the 5 || needs of the case. /d. at 7-8. The Court disagrees with FCA’s assertion that SIG may not 6 || be awarded discovery without first presenting evidence of the “commercial magnetism” of 7 || the BLUETOOTH marks. /d. FCA appears to admit the use of BLUETOOTH marks to 8 || inform consumers that the radio head unit components installed in FCA’s automobiles use 9 || Bluetooth technology. Jd. The prices charged by FCA for products alleged to be using or 10 || advertising the use of BLUETOOTH-equipped products is reasonably relevant to SIG’s 11 || claims. Fed. R. Civ. P. 26(b)(1). However, the Court will DENY SIG’s motion to compel 12 || production because RFP No. 5, as written, is overly broad and unduly burdensome. 13 ii. Request for Production No. 15 14 SIG seeks “DOCUMENTS sufficient to show the gross sales revenues, profits, and 15 || costs for each of YOUR GOODS AND SERVICES on a monthly basis since each such 16 || good or service was first offered USING the BLUETOOTH MARKS.” Dkt. # 44 at 9. 17 SIG claims that the documents sought by this request are directly relevant to the 18 || SIG’s computation of damages, a portion of which will comprise of disgorgements of 19 || FCA’s profits. Jd, at 10. Moreover, SIG argues request is as narrowly tailored, demanding 20 || only those documents from the time period from which FCA began misappropriating the 21 || SIG’s BLUETOOTH Marks. Jd. FCA reiterates its contention that discovery should not 22 || be rewarded without first presenting evidence of the “commercial magnetism” of the 23 || BLUETOOTH marks. Jd. at 12. For the reasons previously stated, this argument is 24 || unpersuasive. Accordingly, the Court GRANTS SIG’s motion to compel. 25 iii, | Request for Production No. 16 26 SIG seeks “DOCUMENTS sufficient to show the volume of each of YOUR 27 || GOODS AND SERVICES sold on a monthly basis since each such good or service was 28 |! ORDER —3

1 || first offered USING the BLUETOOTH MARKS.” /d. at 13. 2 SIG claims that the documents sought by this request are directly relevant to the 3 || SIG’s computation of damages, a portion of which will comprise of disgorgements of 4 || FCA’s profits. Jd. at 15. FCA again claims that discovery should not be rewarded without 5 || first presenting evidence of the “commercial magnetism” of the BLUETOOTH marks. For 6 || the reasons previously stated, this argument is unpersuasive. Accordingly, the Court 7 || GRANTS SIG’s motion to compel. 8 IV. CONCLUSION 9 For the reasons stated above, the Court GRANTS in part and DENIES in part 10 || SIG’s motions to compel. Dkt. # 44. DATED this 44, of Oo ape 13 . Lt b 15 16 The Honorable Richard & Jones United States District Court Judge 17 18 19 20 21 22 23 24 25 26 27 28 |! ORDER-4

Bluetooth SIG, Inc. v. FCA US, LLC, (W.D. Wash. 2019).

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