300 F.R.D. 406
C.D. Cal.2014Background
- Jane Seymour, a non-party and actress, was subpoenaed for deposition by defendants McFerran Home Furnishings and Sharon Lin in a trade dress/copyright suit brought by Amini; Seymour is identified as a “co-designer” and appears in ads for Amini’s Hollywood Swank Bedroom Collections.
- McFerran’s subpoena included 33 broad topics covering Amini’s allegations, the Villa Valencia and Hollywood Swank Collections’ design, functionality, secondary meaning, advertising, sales, and alleged infringement.
- Seymour moved to quash, arguing she lacks personal knowledge on most topics, that the subpoena is unduly burdensome and improperly treats her as Amini’s 30(b)(6) witness, and that any probative information could be obtained from Amini.
- McFerran argued Seymour uniquely could testify about her role in the design process, inspirations, and advertising related to the Collections; contended a non-party cannot object on grounds the subpoena is duplicative.
- The court found McFerran served discovery late, had deposed Amini’s witnesses (who provided testimony about Seymour’s limited role), and failed to show Seymour possessed unique, material information not available from party witnesses.
- Balancing the low likely value of Seymour’s testimony against the substantial burden on her as a non-party (including possible travel and short notice), the court granted the motion and quashed the subpoena.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the subpoena for a non-party should be enforced despite burden | Seymour: subpoena is unduly burdensome; she lacks personal knowledge on most topics; info obtainable from Amini; not Amini’s 30(b)(6) witness | McFerran: Seymour uniquely can testify about her design role, inspirations, advertising and acquired distinctiveness; non-party may not object that request is duplicative | Quashed — court found burden on non-party substantial, McFerran’s need slight or speculative, and information obtainable from party witnesses |
| Whether late service of discovery undermines need for non-party testimony | Seymour: late service indicates subpoena was not essential | McFerran: served within discovery period and entitled to seek testimony | Court: McFerran delayed propounding discovery and served subpoena near cutoff, undermining claim that Seymour was critical; this weighed against enforcement |
| Whether testimony about design inspiration and involvement is directly relevant to trade dress elements (functionality, secondary meaning, likelihood of confusion) | Seymour: her inspirations are marginal and likely cumulative of party witnesses | McFerran: Seymour’s personal design input is relevant to creation and distinctiveness | Court: inspiration evidence would be marginal to core trade dress issues and likely cumulative; insufficient to overcome burden |
| Whether duplicative requests to a non-party are permissible | Seymour: subpoena seeks information available from parties and is duplicative | McFerran: argued non-party cannot object on duplicative grounds | Court: duplicative nature is relevant to assessing need and burden; non-party may object and court may quash on that basis |
Key Cases Cited
- Int’l Jensen, Inc. v. Metrosound USA, Inc., 4 F.3d 819 (9th Cir.) (defines trade dress content)
- One Indus., LLC v. Jim O’Neal Distrib., Inc., 578 F.3d 1154 (9th Cir.) (trade dress infringement elements)
- Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252 (9th Cir.) (factors for functionality analysis)
- Art Attacks Ink, LLC v. MGA Enter., Inc., 581 F.3d 1138 (9th Cir.) (secondary meaning discussion)
- Vision Sports, Inc. v. Melville Corp., 888 F.2d 609 (9th Cir.) (likelihood-of-confusion factors)
- Wal–Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (rule on secondary meaning for product design)