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Systems Incorporated v. Joshua Christenson

February 7, 2011


The opinion of the court was delivered by: George Foley, Jr. U.S. Magistrate Judge

Motion to Compel - #73



This matter is before the Court on Plaintiff Adobe Systems, Inc.'s Motion to Compel Defendants' Supplemental Discovery Responses and Production of Documents (#73), filed on December 20, 2010; Defendants' Opposition to Plaintiff's Motion to Compel (#76), filed on 7, 2011; and Plaintiff's Reply in Support of Plaintiff's Motion to Compel (#78), filed on 18, 2011. The Court conducted a hearing in this matter on January 27, 2011.


Plaintiff Adobe Systems, Inc. filed its Complaint for Copyright Infringement and Trademark Infringement against Defendants Joshua Christenson and Software Surplus, Inc. in the United States District Court for the Northern District of California on October 30, 2009. Defendants responded to the Complaint by filing a motion to dismiss for lack of personal jurisdiction or to transfer/change venue on December 20, 2009. On March 8, 2010, the court denied Defendants' motion to dismiss, but granted their motion to transfer the case to the District Nevada pursuant to 28 U.S.C. § 1406(a). Defendants filed their Answer, Counterclaim and Third Party Complaint (#39) in this district on May 4, 2010.

Plaintiff's Complaint alleges that it owns exclusive rights under the Copyright Act to reproduce and distribute Adobe Software in the United States. Complaint, ¶ 8. Among the titles that it produces and distributes are Acrobat, Creative Suite, Dreamweaver, Flash, Illustrator, PageMaker, Photoshop and Shockwave. Plaintiff attached to the Complaint a "nonexhaustive list" of its copyright registrations for these titles. Id. Plaintiff further alleges that manufactured and sold by it bear Adobe's trademarks. These trademark products include ADOBE, ACROBAT, CREATIVE SUITE, DREAMWEAVER, FLASH, ILLUSTRATOR, MACROMEDIA, PAGEMAKER, PHOTOSHOP, POSTSCRIPT, READER and SHOCKWAVE.

9. Plaintiff alleges that it has secured registrations for its trademarks, all of which are valid, and in full force and effect. Plaintiff also attached a nonexhaustive list of its trademark registrations as an exhibit to the Complaint. Id., ¶ 10. Plaintiff alleges that Defendants Joshua Christenson and Software Surplus, Inc. have engaged in the unlawful sale and distribution of unauthorized copies of Plaintiff's software products through their online business Id., ¶¶ 12- 18. The Complaint alleges causes of action for copyright infringement pursuant to 17 U.S.C. § 504 and trademark infringement pursuant to 15 U.S.C. § 1117. The Complaint does not identify the time period during which Defendants allegedly sold and distributed infringing products.

Plaintiff served interrogatories, requests for production of documents and requests for admissions on Defendants on or about August 24, 2010. Defendants served their discovery responses on October 12, 2010 in which they objected to the requests on the grounds that the Complaint "sets forth no time frames for any of the acts alleged therein, and, therefore, the information sought . . . is irrelevant without a proper time context in the complaint." The parties' engaged in a dispute resolution conference on November 3, 2010. Plaintiff asserts that the agreed that for purposes of responding to discovery, (1) the applicable default time frame be October 30, 2006 to the present, (2) that Plaintiff would again review the need to amend the to add dates, and (3) that Defendants would supplement their responses based on this understanding. Motion to Compel (#73), Exhibit "I". Plaintiff's counsel states that it was her understanding that Defendants would supplement their discovery responses based on the October 30, 2006 to the present time frame. Id, Affidavit of Annie S. Wang.

Defendants' counsel asserts, however, that the agreement to supplement discovery responses was conditioned on Plaintiff filing an amended complaint to include a time frame for the alleged infringement. Opposition to Motion to Compel (#76), Declaration of Lisa A. Rasmussen. Instead of serving supplemental discovery responses, Defendants filed a Motion for Judgment on Pleadings or In the Alternative Motion to Compel Amendment of the Complaint (#70) on December 5, 2010 in which they ask the Court to either dismiss the Complaint or require Plaintiff an amended complaint to include a specific time frame for the alleged infringement. Defendants argue that they should not be required to respond to Plaintiff's discovery requests until and unless an amended complaint is filed.


1. Defendants' Objection to Written Discovery Based on the Lack of an Allegation in the Complaint as to When the Alleged Infringement Occurred. Defendants argue that they should not be required to respond to written discovery because time period of the alleged infringement is not set forth in the Complaint as required by Fed.R.Civ.Pro. 8(a). Plaintiff argues, however, that there is no requirement under Rule 8 or Bell Corp.v.Twombly, 550 U.S. 544, 127 S.Ct. 1955 (2007), that a plaintiff plead the time period for Defendants' alleged copyright or trademark infringement. Plaintiff argues that, at minimum, it should be permitted to conduct discovery within the applicable statute of limitations period which is three years for copyright infringement. See 15 U.S.C. § 507(b); Roley v. New World Pictures, Ltd., 19 F.3d 479, 481-82 (9th Cir. 1994); and Polar Bear Productions, Inc. v.Corporation, 384 F.3d 700, 705-07 (9th Cir. 2004). Because Plaintiff has agreed to limit its discovery requests to such a time frame, it argues that Defendants' objections should be overruled should be ordered to supplement their discovery responses.*fn1

Some district courts have dismissed complaints, with leave to amend, where the complaints fail to set forth the operative dates with respect to the applicable statute of limitations.

Ackley v. City of Fort Lauderdale, Building Dept., 2007 U.S. LEXIS 73118 (S.D. Flor. 2007), for example, the court dismissed an action under the Fair Labor Standards Act ("FLSA") where the failed to state the dates of plaintiff's employment. The court noted that FLSA claims are governed by either a two or three year limitations period depending on whether the alleged are willful. In Loftus v. S.E. Pa. Transp. Authority, 843 F.Supp. 981 (E.D. Pa. 1994), the dismissed a complaint alleging a conspiracy to violate the plaintiff's civil rights under 42 U.S.C. § 1983, where the complaint failed to allege that the defendants acted in concert and no time period was alleged as to when the alleged conspiracy occurred. Obviously, an allegation in the as to when the defendant's alleged wrongful conduct occurred provides greater notice. It also serves to inform the defendant whether the alleged breach or other wrongful conduct occurred the statute of limitations. Allen v. Dairy Farmers of America, Inc., 2010 U.S. Dist. LEXIS *74-75 (D. Vt. 2010) states, however, that because the statute of limitations is an affirmative defense which the defendant has the burden of pleading and proving, a plaintiff need affirmatively plead facts showing the absence of such a defense in order to state a claim. See also Ortiz v. City of New York, 2010 WL 5116129 at *1 (E.D.N.Y. 2010). The issue on the instant motion to compel is whether Defendants should be required to respond to Plaintiff's discovery requests prior to a decision on their motion for judgment on the or, alternatively, to require Plaintiff to amend its complaint. By objecting to the written discovery requests and refusing to supplement their responses, Defendants, in effect, seek a stay of discovery pending decision on the motion for judgment on the pleadings. In Blankenship v. Corp., 519 F.2d 418, 429 (9th Cir. 1975), the Ninth Circuit stated that a party carries a heavy of making a "strong showing" why discovery should be stayed. The movant must show a limitations for trademark infringement. The courts instead look to the relevant state statute of limitations. Aristocrat Technologies, Inc. v. High Impact Design & Entertainment, 2009 WL 1811464 at *3-4 (D. Nev. 2009), holds that the applicable statute of limitation in Nevada is four and specific need for a discovery stay. It cannot base its request on stereotyped or conclusory statements. Skellerup Industries Limited v. City of Los Angeles, 163 F.R.D. 598, 600 (C.D. Cal. 1995). Whether discovery should be stayed pending the outcome of a dispositive motion a case-by-case analysis. The factors the court should consider include: "'[T]he type of and whether it is a challenge as a 'matter of law' or the 'sufficiency' of the allegations; the and complexity of the action; whether counterclaims and/or cross-claims have been interposed; whether some or all of the defendants join in the request for a stay; the posture or stage litigation; the expected extent of the discovery in light of the number of parties and complexity of the issues in the case; and any other relevant circumstances. Skellerup, 163 F.R.D. at 601, quoting Hachette Distribution, Inc. v. Hudson County News Company, 136 F.R.D. 356, 358 (E.D.N.Y. 1991). See also Lofton v. Bank of America Corporation, 2008 WL 2047606 (N.D. Cal. and U.S. Philips Corporation v. Synergy Dynamics International, LLC, 2006 WL 3453225 (D. Nev. 2006).

If the District Judge agrees with Defendants' position that the time frame for the alleged infringement should be pled in the complaint, he will in all likelihood grant Plaintiff leave to amend complaint to allege claims for copyright or trademark infringement that occurred within the of limitations period. Because Plaintiff has already agreed to limit its discovery to that period, Defendants have not demonstrated good cause why they should not be required to respond to Plaintiff's discovery requests. Defendants will not be prejudiced by being required to respond to discovery within this stipulated time period. Defendants presumably know whether or when they distributed products that allegedly infringe on Plaintiff's copyrights or trademarks and will able to assert any valid statute of limitations defenses they may have. The absence of prejudice also demonstrated by the fact that Defendants have engaged in deposition discovery notwithstanding the lack of a time allegation in the Complaint. Accordingly, Defendants' objections to Plaintiff's written ...

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