UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF INDIANA INDIANAPOLIS DIVISION
RENEE GABET, ) ANNIE OAKLEY ENTERPRISES INC., ) ) Plaintiffs, ) ) v. ) No. 1:22-cv-02246-JPH-MKK ) AMAZON.COM INC, ) JOHN DOES 1-50, ) ) Defendants. )
ORDER OVERRULING DEFENDANTS' DISCOVERY OBJECTION
Plaintiffs Renee Gabet and her company, Annie Oakley Enterprises, Inc., allege that Amazon has infringed on their trademarked fragrance names by selling confusingly similar health and beauty products. Dkt. 22. Plaintiffs' amended complaint included pictures of products as "example[s]" that allegedly infringed their "Indian Musk," "Sunset," and "Morning Dew" trademarks.1 Id. at 10–14. Plaintiffs then alleged that "Amazon has displayed, listed, and sold other products that infringe Plaintiffs' trademarks in addition to those pictured above," but they could not yet identify each product because of Amazon's sales practices. Id. at 15. The amended complaint defined these products—whether pictured or not—"as the 'Accused Products.'" Id. On November 16, 2023, Magistrate Judge Klump held a discovery conference regarding several topics, including whether Plaintiffs were entitled
1 The parties agree that claims under Plaintiffs' "Rise N Shine" and "Sagebrush" trademarks are not part of this case. Dkt. 170 at 32–33, 38–39; dkt. 175; see dkt. 166 at 1–2. to discovery related to allegedly infringing products that were not specifically referenced in the amended complaint and identified with a corresponding image. Dkt. 166 at 1. Plaintiffs argued that Amazon was required to provide
discovery on the "Accused Products" that Amazon identified by searching its internal databases with key words. Dkt. 170 at 32–40. Amazon contended that it had provided discovery on all products that are depicted in the operative complaint and "obvious variations of those products," but should not have to provide discovery on other products that weren't specifically identified. Id. at 33–34. Magistrate Judge Klump noted that Plaintiffs drafted the operative complaint "pretty expansively," dkt. 170 at 34, and later ruled: Defendant may not limit its productions regarding Accused Products to only those products depicted in Plaintiffs' Amended Complaint, (Dkt. 22). Defendant must produce responsive information for the approximately 34 Accused Product families identified by the agreed keyword search, as discussed at the Discovery Conference. Dkt. 166 at 1. Amazon objected to that ruling under Federal Rule of Civil Procedure 72(a). Dkt. 176. Federal Rule of Civil Procedure 72(a) allows district courts to consider "timely objections" to magistrate judges' orders "and modify or set aside any part of the order that is clearly erroneous or is contrary to law." "Clear error is an extremely deferential standard of review." Pinkston v. Madry, 440 F.3d 879, 888 (7th Cir. 2006). An order is clearly erroneous when the reviewing court is "left with the definite and firm conviction that a mistake has been committed." Id.; see Weeks v. Samsung Heavy Indus. Co., 126 F.3d 926, 943–44 (7th Cir. 1997) (discussing Rule 72(a) objections). Amazon argues that the Magistrate Judge's ruling is clearly erroneous
because it orders discovery on "products that plaintiffs have twice tried and failed to add to the complaint," making discovery on those products irrelevant to any claim. Dkt. 177 at 9. Plaintiffs respond that the amended complaint's broad allegations are not limited to the products that are specifically referenced and identified with a corresponding image. Plaintiffs further argue that the Court's denial of their motions for leave to amend their complaint did not narrow the scope of the amended complaint or the corresponding scope of discovery. Dkt. 183 at 8.
The denial of Plaintiffs' two motions for leave to amend their complaint does not narrow the operative complaint and therefore does not narrow the scope of discovery. The Court denied Plaintiffs' motions because they did not show good cause for seeking leave to amend after the Case Management Plan's deadline passed. Dkt. 138; dkt. 175. As the Magistrate Judge explained, Plaintiffs' attempt to clarify the Accused Products in an amended complaint does not admit that those products weren't adequately identified in the prior complaint. Dkt. 170 at 34 ("[I]f [an amendment] had been granted, [] it would
have been crystal clear [that these Accused Products were included.]" But since it was denied, it's not "just an automatic win in [Amazon's] favor."). The Magistrate Judge therefore properly examined the operative complaint to determine whether the Accused Products at issue were included. Dkt. 170 at 34–35. She explained that because Plaintiffs' First Amended Complaint used language like "in addition to those pictured" and "by way of example," and alleged that Amazon sold "at least the following products," it was
hard for Amazon to contend that non-pictured Accused Products were not included in Plaintiffs' claims. Id. After the conference, she ruled that: Defendant may not limit its productions regarding Accused Products to only those products depicted in Plaintiffs' Amended Complaint, (Dkt. 22). Defendant must produce responsive information for the approximately 34 Accused Product families identified by the agreed keyword search, as discussed at the Discovery Conference. Dkt. 166 at 1. Because of the broad language in Plaintiffs' operative complaint, it was not clearly erroneous for the Magistrate Judge to conclude that the Accused Products are within the scope of the complaint. See Vasquez v. Indiana Univ. Health, Inc., 40 F.4th 582, 587 (7th Cir. 2022) (A complaint "need only present enough facts to raise a reasonable expectation that discovery will reveal evidence."); Killingsworth v. HSBC Bank Nevada, N.A., 507 F.3d 614, 618 (7th Cir. 2007) (The allegations "must be enough to give the defendant fair notice of what the . . . claim is and the grounds upon which it rests."). This pleading standard applies equally in trademark cases. See Auto Driveway Franchise Sys., LLC v. Auto Driveaway Richmond, LLC, 928 F.3d 670, 675 (7th Cir. 2019) ("[T]he federal courts require notice pleading, not fact pleading complete with all the minutiae."). The Magistrate Judge therefore did not clearly err in determining that the scope of Plaintiffs' complaint included products sold by Amazon that may infringe on Plaintiffs' trademarks regardless of whether those products were specifically identified and pictured in the complaint. See Auto Driveway, 928 F.3d at 675.
From there, under Rule 26(b)(1), discovery can be ordered of "any nonprivileged matter relevant to any party's claim." See Jones v. City of Elkhart, Ind., 737 F.3d 1107, 1115 (7th Cir. 2013) ("[M]agistrate and district courts enjoy extremely broad discretion in controlling discovery."). Amazon argues only that the Accused Products not pictured in the complaint are not included in this case; it makes no other argument that the extent of discovery ordered by the Magistrate Judge could be clearly erroneous. See dkt. 177; dkt. 201.
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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF INDIANA INDIANAPOLIS DIVISION
RENEE GABET, ) ANNIE OAKLEY ENTERPRISES INC., ) ) Plaintiffs, ) ) v. ) No. 1:22-cv-02246-JPH-MKK ) AMAZON.COM INC, ) JOHN DOES 1-50, ) ) Defendants. )
ORDER OVERRULING DEFENDANTS' DISCOVERY OBJECTION
Plaintiffs Renee Gabet and her company, Annie Oakley Enterprises, Inc., allege that Amazon has infringed on their trademarked fragrance names by selling confusingly similar health and beauty products. Dkt. 22. Plaintiffs' amended complaint included pictures of products as "example[s]" that allegedly infringed their "Indian Musk," "Sunset," and "Morning Dew" trademarks.1 Id. at 10–14. Plaintiffs then alleged that "Amazon has displayed, listed, and sold other products that infringe Plaintiffs' trademarks in addition to those pictured above," but they could not yet identify each product because of Amazon's sales practices. Id. at 15. The amended complaint defined these products—whether pictured or not—"as the 'Accused Products.'" Id. On November 16, 2023, Magistrate Judge Klump held a discovery conference regarding several topics, including whether Plaintiffs were entitled
1 The parties agree that claims under Plaintiffs' "Rise N Shine" and "Sagebrush" trademarks are not part of this case. Dkt. 170 at 32–33, 38–39; dkt. 175; see dkt. 166 at 1–2. to discovery related to allegedly infringing products that were not specifically referenced in the amended complaint and identified with a corresponding image. Dkt. 166 at 1. Plaintiffs argued that Amazon was required to provide
discovery on the "Accused Products" that Amazon identified by searching its internal databases with key words. Dkt. 170 at 32–40. Amazon contended that it had provided discovery on all products that are depicted in the operative complaint and "obvious variations of those products," but should not have to provide discovery on other products that weren't specifically identified. Id. at 33–34. Magistrate Judge Klump noted that Plaintiffs drafted the operative complaint "pretty expansively," dkt. 170 at 34, and later ruled: Defendant may not limit its productions regarding Accused Products to only those products depicted in Plaintiffs' Amended Complaint, (Dkt. 22). Defendant must produce responsive information for the approximately 34 Accused Product families identified by the agreed keyword search, as discussed at the Discovery Conference. Dkt. 166 at 1. Amazon objected to that ruling under Federal Rule of Civil Procedure 72(a). Dkt. 176. Federal Rule of Civil Procedure 72(a) allows district courts to consider "timely objections" to magistrate judges' orders "and modify or set aside any part of the order that is clearly erroneous or is contrary to law." "Clear error is an extremely deferential standard of review." Pinkston v. Madry, 440 F.3d 879, 888 (7th Cir. 2006). An order is clearly erroneous when the reviewing court is "left with the definite and firm conviction that a mistake has been committed." Id.; see Weeks v. Samsung Heavy Indus. Co., 126 F.3d 926, 943–44 (7th Cir. 1997) (discussing Rule 72(a) objections). Amazon argues that the Magistrate Judge's ruling is clearly erroneous
because it orders discovery on "products that plaintiffs have twice tried and failed to add to the complaint," making discovery on those products irrelevant to any claim. Dkt. 177 at 9. Plaintiffs respond that the amended complaint's broad allegations are not limited to the products that are specifically referenced and identified with a corresponding image. Plaintiffs further argue that the Court's denial of their motions for leave to amend their complaint did not narrow the scope of the amended complaint or the corresponding scope of discovery. Dkt. 183 at 8.
The denial of Plaintiffs' two motions for leave to amend their complaint does not narrow the operative complaint and therefore does not narrow the scope of discovery. The Court denied Plaintiffs' motions because they did not show good cause for seeking leave to amend after the Case Management Plan's deadline passed. Dkt. 138; dkt. 175. As the Magistrate Judge explained, Plaintiffs' attempt to clarify the Accused Products in an amended complaint does not admit that those products weren't adequately identified in the prior complaint. Dkt. 170 at 34 ("[I]f [an amendment] had been granted, [] it would
have been crystal clear [that these Accused Products were included.]" But since it was denied, it's not "just an automatic win in [Amazon's] favor."). The Magistrate Judge therefore properly examined the operative complaint to determine whether the Accused Products at issue were included. Dkt. 170 at 34–35. She explained that because Plaintiffs' First Amended Complaint used language like "in addition to those pictured" and "by way of example," and alleged that Amazon sold "at least the following products," it was
hard for Amazon to contend that non-pictured Accused Products were not included in Plaintiffs' claims. Id. After the conference, she ruled that: Defendant may not limit its productions regarding Accused Products to only those products depicted in Plaintiffs' Amended Complaint, (Dkt. 22). Defendant must produce responsive information for the approximately 34 Accused Product families identified by the agreed keyword search, as discussed at the Discovery Conference. Dkt. 166 at 1. Because of the broad language in Plaintiffs' operative complaint, it was not clearly erroneous for the Magistrate Judge to conclude that the Accused Products are within the scope of the complaint. See Vasquez v. Indiana Univ. Health, Inc., 40 F.4th 582, 587 (7th Cir. 2022) (A complaint "need only present enough facts to raise a reasonable expectation that discovery will reveal evidence."); Killingsworth v. HSBC Bank Nevada, N.A., 507 F.3d 614, 618 (7th Cir. 2007) (The allegations "must be enough to give the defendant fair notice of what the . . . claim is and the grounds upon which it rests."). This pleading standard applies equally in trademark cases. See Auto Driveway Franchise Sys., LLC v. Auto Driveaway Richmond, LLC, 928 F.3d 670, 675 (7th Cir. 2019) ("[T]he federal courts require notice pleading, not fact pleading complete with all the minutiae."). The Magistrate Judge therefore did not clearly err in determining that the scope of Plaintiffs' complaint included products sold by Amazon that may infringe on Plaintiffs' trademarks regardless of whether those products were specifically identified and pictured in the complaint. See Auto Driveway, 928 F.3d at 675.
From there, under Rule 26(b)(1), discovery can be ordered of "any nonprivileged matter relevant to any party's claim." See Jones v. City of Elkhart, Ind., 737 F.3d 1107, 1115 (7th Cir. 2013) ("[M]agistrate and district courts enjoy extremely broad discretion in controlling discovery."). Amazon argues only that the Accused Products not pictured in the complaint are not included in this case; it makes no other argument that the extent of discovery ordered by the Magistrate Judge could be clearly erroneous. See dkt. 177; dkt. 201. Indeed, when Magistrate Judge Klump asked Amazon about the potential
burden from producing information about the Accused Product families, Amazon's counsel responded only that "[i]t's a lot of work" before pivoting to its argument that "the real burden is they're not in the case." Dkt. 170 at 39. Amazon's counsel concluded that allowing discovery on those Accused Products "would sanction a fishing expedition." Id. at 40. But that's not the case—the Accused Products were identified through a targeted keyword search that was designed and agreed to by the parties. Id. at 33–39; dkt. 166 at 1. This discovery ruling, of course, does not mean that any of Plaintiffs'
claims are meritorious or would survive summary judgment. See Uncommon, LLC v. Spigen, Inc., 926 F.3d 409, 425 (7th Cir. 2019). But the Magistrate Judge's ruling that allowed Plaintiffs to conduct discovery related to all Accused Products—regardless of whether they are specifically referenced and identified with a photograph in the amended complaint—was not clearly erroneous. Amazon's objection is therefore OVERRULED. Dkt. [176].2 The Magistrate Judge is asked to set appropriate deadlines for completing discovery and creating a complete and final listing of the Accused Products proceeding in this case in advance of the dispositive motion deadline. SO ORDERED. Date: 4/17/2024 S\amnu Patruck lbanlove James Patrick Hanlon United States District Judge Southern District of Indiana Distribution: All electronically registered counsel
2 The Court does not address Plaintiffs’ alternate argument that the objection was untimely because Magistrate Judge Klump had previously decided this issue without objection. See dkt. 183 at 7 (citing dkt. 69 at 1).