Texas Roadhouse, Inc. v. Texas Corral Restaurants, Inc.
2:16-cv-00028
N.D. Ind.May 10, 2017Background
- Plaintiffs Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC sued multiple Texas Corral–related defendants for trade dress, trademark, copyright infringement, deceptive trade practices and unfair competition; litigation proceeds on the Second Amended Complaint.
- Defendants moved to compel discovery seeking: (1) detailed trade dress development/use evidence across Plaintiffs’ stores, (2) U.S. franchise agreements, (3) site selection plans and consumer/market research (esp. IL, IN, MI), (4) identities of trade-dress suppliers, and (5) store-level profit-and-loss data; they also sought fees.
- Plaintiffs resisted on grounds the motion violated Local Rule 37-1 (lack of good-faith conferral), that requests were overbroad and unduly burdensome, and limited production should be geographically constrained.
- The magistrate judge found Defendants sufficiently conferred under Local Rule 37-1, granted the motion in part and denied in part, and set deadlines for Defendants to select stores and for Plaintiffs to produce ordered materials.
- Rulings: trade-dress discovery compelled but narrowed (specific numbers of IL, IN, MI stores plus certain Louisville, “implicated,” and recently-opened stores); U.S. franchise agreements compelled; site-selection and market research for IL/IN/MI compelled; suppliers interrogatory compelled; store-level financial discovery denied without prejudice as premature due to bifurcation motion; no fee award to either side.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Compliance with Local Rule 37-1 conferral | Motion premature; defendants failed to confer in good faith | Defendants conducted multiple deficiency letters and calls over months | Defendants complied with Rule 37-1; motion not barred |
| Scope of trade-dress discovery | Limit to stores near defendants; seven plaintiff-selected stores suffice; broader production unduly burdensome | Need development, first-use, duration across stores to test protectability and timing vs. defendants' stores | Compelled limited production: defendants may pick 10 IL, 15 IN, 10 MI stores + all Louisville (within 10 miles), plaintiffs’ seven “implicated” stores, and five most recently opened before suit |
| Franchise agreements | Produce U.S. agreements only; international not relevant/burdensome | Sought all franchise agreements | Compelled U.S. franchise agreements only; international agreements disproportionate |
| Site-selection plans and consumer/market research | Offered geographically limited production (IL/IN/MI) | Needed to show plaintiffs’ entry timing/knowledge of defendants | Compelled production for IL, IN, and MI locations and related consumer/market research |
| Identification of trade-dress suppliers (Interrogatory 29) | Produced common supplier list but lacked sworn interrogatory response | Sought complete sworn response identifying suppliers | Ordered plaintiffs to provide a complete sworn response to Interrogatory 29 |
| Store-level financial P&L data | Produced national-level and store data where confusion probable; objected as premature given bifurcation | Sought store-level financials to calculate damages | Denied without prejudice as premature due to pending motion to bifurcate liability and damages |
| Allocation of production costs and Rule 37 expenses | Requested defendants bear costs for inaccessible data; sought fees | Sought fees for bringing motion to compel | Court declined cost-shifting and declined to award attorney's fees to either party |
Key Cases Cited
- Computer Care v. Serv. Sys. Enterprises, Inc., 982 F.2d 1063 (7th Cir. 1992) (elements required to prevail on trade dress claim)
- Roulo v. Russ Berrie & Co., 886 F.2d 931 (7th Cir. 1989) (trade dress distinctiveness/secondary meaning discussed)
- Eli Lilly & Co. v. Nat. Answers, Inc., 233 F.3d 456 (7th Cir. 2000) (likelihood-of-confusion multi-factor test and non-mechanical weighting)
- AM Gen. Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir. 2002) (requirement of specific definition and stable visual appearance for family/theme trade dress)
- Keystone Camera Prods. Corp. v. Ansco Photo-Optical Prods. Corp., 667 F. Supp. 1221 (N.D. Ill. 1987) (trade dress protection requires stable visual appearance)