“Just as a plaintiff may not take discovery regarding unpled claims, so a defendant is precluded from seeking discovery concerning unpled defenses.”

Lifeguard Licensing Corp. v. Kozak, No. 15 Civ. 8459 (LGS)(JCF), 2016 WL 3144049 (S.D.N.Y. May 23, 2016)

In this intellectual property dispute, the court denied Defendants’ motion to compel Plaintiffs’ production of “discoverable information relevant to the defendants’ likely defenses and counterclaims” citing Defendants’ decision to move for dismissal without filing an answer to the Complaint and reasoning, among other things, that the “plain language” of Fed. R. Civ. P. 26(b)(1)—recently amended “so that discovery now extends only as far as information relevant to claims or defenses”—“does not provide for discovery of ‘likely,’ ‘anticipated,’ or ‘potential’ claims or defenses.”

In this case, Defendants filed for declaratory judgment in the United States District Court for the Eastern District of Michigan and sought a declaration that the use of the word “Lifeguard” on t-shirts did not infringe upon Plaintiffs’ mark. Thereafter, Plaintiffs commenced an infringement action in the Southern District of New York.  Both sides then moved to dismiss the other’s cases.  Despite the pending motions and without filing an answer, Defendants served discovery upon Plaintiffs in the New York case but were dissatisfied with their response.  After Defendants’ Michigan action was dismissed for lack of personal jurisdiction, Defendants filed the instant motion to compel in the Southern District of New York.

“According to the defendants, ‘[t]his motion present[ed] the simple question of whether plaintiffs should be permitted to file a lawsuit and then, due to the pendency of a pre-answer motion to dismiss, refuse to produce (or even search for) discoverable information relevant to the defendants’ likely defenses and counterclaims.’” Specifically, Defendants asserted their right to discovery of “information that would go to possible defenses of ‘genericness [sic], descriptive use, functional use, and naked licensing.’”

Taking up the question, the court first noted recent amendments to Fed. R. Civ. P. 26(b)(1) that eliminated the “second tier” of discovery which allowed “discovery of any matter relevant to the subject matter involved in the action” and acknowledged that even prior to the amendment it was “well-established that information relevant only to claims not yet pled was beyond the scope of discovery, at least without leave of the court.” The court then concluded that the reasons for limiting discovery to claims that have been pled “apply with full force to defenses as well”:

First, it would be a waste of resources to devote discovery to issues that may never be addressed in the litigation. Second, a party and its attorney must have conducted “an inquiry reasonable under the circumstances” before filing a pleading. Fed. R. Civ. P. 11(b). Permitting discovery on unpled claims or defenses would dilute this obligation by permitting a party to file one plausible claim and then take discovery on any tangentially related potential claims before deciding whether to actually assert them. Finally, and perhaps most significantly, Rule 26(b)(1) makes no distinction between claims and defenses; to be discoverable, information must be “relevant to a party’s claim or defense.” And the plain language of the Rule does not provide for discovery of “likely,” “antcipated,” [sic] or “potential” claims or defenses.

Emphasis added.

Rejecting Defendants’ arguments that the anticipated defenses in the New York case had been raised as affirmative claims in the dismissed Michigan action and that their right to discovery in that case had been recognized by the New York court, the court reasoned that the Michigan action had been dismissed, leaving “no extant pleading to which the defendants [could] tie their requested discovery,” and that, “the pleadings in [the New York] case define[d] the scope of discovery.” Finally, the court reasoned that the problem at issue was “of the defendant’s own making,” where it was their strategic determination to move for dismissal before answering.

A copy of the Court’s Memorandum and Order is available here.

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