1:19-cv-00660
N.D. Ill.Apr 29, 2020Background
- Learning Resources sued Playgo and Walmart-related defendants for copyright infringement over play-food products; parties exchanged documents under the Northern District of Illinois Amended MIDP Standing Order.
- Learning Resources produced ~30,000 documents; defendants collectively produced <2,000. Walmart defendants later agreed to supplement production and resolved that portion of the dispute.
- Learning Resources contended Playgo produced far fewer communications (produced 39 e-mail chains/32 communications vs. Walmart’s 289 communications) and omitted e-mail chains Walmart produced; Playgo said it produced what it deemed relevant and that some communications occur via text.
- Playgo produced 320 documents total and submitted declarations describing its document collection and custodial practices; Playgo argued MIDP required only initial disclosures and that Learning Resources should serve Rule 34 requests for additional material; it also raised a proportionality objection.
- Learning Resources discovered Playgo’s 2019 Soft Play Food after filing suit and sought MIDP-ordered production of documents about the design/development of those 2019 products, arguing they may show redesigns to disguise infringement.
- Magistrate Judge Jeffrey Cummings granted the motion in part: ordered defense counsel to confirm Playgo’s production is complete as to communications and compelled production of 2019 Soft Play Food design/development documents by June 1, 2020; denied relief as to further Gourmet Play Food development documents (Playgo had already produced those).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Completeness of Playgo's communications production | Playgo withheld relevant internal and Walmart communications; large discrepancy with Walmart productions suggests omissions | Playgo produced threaded emails, texts, and used judgment about relevance under MIDP | Court ordered defense counsel to confer and certify reasonable effort to ensure Playgo produced all communications; any missing responsive docs due by June 1, 2020 |
| Production of 2019 Soft Play Food design/development docs | Docs are relevant because new 2019 products were introduced during litigation and may show design changes to conceal infringement | Playgo: 2019 products not in complaint; MIDP only required initial disclosures; Learning Resources must serve Rule 34 requests; production would be disproportional | Court held 2019 product docs are part of the case and relevant; MIDP imposes a continuing duty to supplement; ordered production by June 1, 2020 |
| MIDP continuing-duty vs. need for Rule 34 request | MIDP requires supplementing disclosures when new info arises | Playgo said Rule 34 request necessary before production | Court applied MIDP continuing-duty rule and rejected need for a separate Rule 34 request for MIDP-ordered materials |
| Proportionality objection to producing 2019 docs | Production would be unduly burdensome and disproportionate to stakes | Learning Resources showed significant alleged sales/revenue and limited number of Playgo docs produced to date | Court found Playgo failed to particularize proportionality objection and burden is not disproportionate given stakes; objection overruled |
Key Cases Cited
- Derek Andrew v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008) (courts may treat new products introduced during litigation as part of the same case)
- Tennessee Fabricating Co. v. Moultrie Mfg. Co., 421 F.2d 279 (5th Cir. 1970) (infringement can include colorable alterations made to disguise piracy)
- Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600 (1st Cir. 1988) (redesigns with minor variations can still constitute infringement)