F & J Samame, Inc. v. Arco Iris Ice Cream
5:13-cv-00365
W.D. Tex.Jul 2, 2015Background
- Plaintiff F&J Samame, Inc. (Alamo Packing and Candy) sues Arco Iris Ice Cream (Arco) for trade dress and trademark claims, alleging Arco copied Alamo’s candy packaging.
- Arco began selling candy circa 2011; communications and design work involved Gilberto Luna/Empaques y Conversiones and Baur Label. Plaintiff sought pre- and post‑2011 emails, design files, and sales data in discovery.
- Arco previously used Hotmail through ~Aug 2012 and then a ymail account; defendants claim old Hotmail access was lost. Plaintiff found a 2008 email showing a ymail address, generating disputes over account timing.
- After the court appointed a Special Master (May 27, 2014) to inspect Arco computers, Arco’s IT person Rafael Villalpando Jr. ran CCleaner on a laptop and PC on May 27–28, 2014, including the "wipe free space" function, deleting ~62,000 files and overwriting remnant data.
- The Special Master found missing emails and design files; some emails and Baur proofs were produced but many .jpeg design attachments and cost data are missing. Plaintiff has gross-sales data but incomplete cost/profit records relevant to disgorgement and willfulness.
- The court found defendants failed to preserve ESI, violated a court order, and acted with intent to deprive Plaintiff of relevant data; it awarded limited attorney’s fees, ordered additional depositions, but denied (without prejudice) a spoliation jury instruction pending further discovery.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether defendants had a duty to preserve ESI and whether relevant ESI existed at preservation trigger | Arco had relevant ESI on laptops/PCs (emails, design files, sales) as of service and failed to preserve it | Arco lost Hotmail earlier; most activity was phone/face-to-face and little remained on drives by preservation date | Court: Duty to preserve existed at service; drives likely contained relevant non‑email files (designs, sales data) at that time |
| Whether Villalpando Jr.’s running of CCleaner constituted intentional spoliation | Deletion was willful and intended to deprive Plaintiff of evidence | Villalpando Jr. claims he deleted only "junk"/protected family privacy and that CCleaner pre‑existed; any post‑order update was inadvertent | Court: Running CCleaner (including wipe free space) after preservation order was intentional, in violation of court order; culpable state of mind found |
| Whether destroyed evidence was relevant and prejudiced Plaintiff’s ability to prove willfulness and damages (disgorgement) | Missing emails/designs/profit/cost data are relevant to willfulness and disgorgement; Plaintiff prejudiced | Defendants say bags are available for jury and some documents produced; some data recovered from third parties | Court: Destroyed evidence was relevant and Plaintiff suffered prejudice as to willfulness and complete profit/cost picture; but some mitigation occurred via produced materials |
| Appropriate sanctions/remedy for spoliation | Seek attorney’s fees and an adverse‑inference (spoliation) jury instruction | Argue severe sanctions require bad faith and harsh measures disproportionate; mitigation efforts limit relief | Court: Sanctions warranted (attorney’s fees limited to specified discovery work and costs; depositions ordered); adverse‑inference instruction denied without prejudice pending completion of additional discovery |
Key Cases Cited
- Rimkus Consulting Group, Inc. v. Cammarata, 688 F. Supp. 2d 598 (S.D. Tex. 2010) (framework for adverse‑inference instruction: duty, culpability, relevance/prejudice; bad‑faith requirement for severe sanctions)
- Jerry’s Famous Deli, Inc. v. Papanicolaou, 383 F.3d 998 (9th Cir. 2004) (disgorgement of profits is a traditional trademark remedy)
- Anderson v. Beatrice Foods Co., 900 F.2d 388 (1st Cir. 1990) (sanctions should be proportionate—court should not use an "elephant gun to slay a mouse")