Wilt Toikka Kraft LLP


The Significance of Counsel’s Engagement in the Discovery Process

DC IP Lawyers Note: In the trademark infringement case ZAGG Inc, v. Ichilevici et al., ZAGG, a manufacturer of screen protectors and other products, deposed a corporate designee of the defendant the day before discovery closed. As a result of that deposition, ZAGG sought both to compel the production of additional documents and an extension of the discovery deadline so it could serve non-party subpoenas.[1] Specifically, the company sought an order, among other things, (1) compelling defendant DVG to produce additional financial documents associated with the sale of ZAGG products and a witness prepared to discuss the same; (2) compelling DVG’s counsel (rather than defendant Ichilevici himself) to search Ichilevici’s emails, cell phone, and Amazon portal and produce all responsive documents; and (3) granting leave to subpoena and depose a newly disclosed logistics vendor (motion).

In response, the court issued a short decision replete with important reminders for practitioners.

 In support of the motion, ZAGGargued that Mr. Ichilevici was unprepared for his deposition as a corporate designee and that he never produced relevant financial documents. Finding that “a Rule 30(b)(6) deposition is not a memory test, and ‘[a]bsolute perfection is not required of a … witness,’” the court disagreed. That Ichilevici “would have to look” into certain topics was not synonymous with a lack of preparation, especially since Ichilevici was deposed for over four hours, spent 20-30 hours preparing for the deposition, and explained key details associated with various financial documents.

The court denied ZAGG’s request for additional financial documents, including the “[t]otal sales of ZAGG products and … its total sales of all products for the entire time period that Defendant has been selling ZAGG products” because the motion lacked any evidence of a discovery request or interrogatory seeking sales data for this time frame.

As such, the court denied ZAGG’s motion to the extent it sought to compel the production of temporally broad financial documents and an additional corporate designee deponent.

Next, ZAGG took issue with defense counsel’s apparent lack of involvement with the collection process and its lack of review of responsive emails, text messages, and Amazon portal communications produced by his client. Specifically, noting that the defendant testified he did not provide his attorneys access to the data repositories he searched (email and Amazon portal), expressed uncertainty about the search terms he employed, and did not produce any text messages (despite testifying to having conducted business by text), ZAGG cried foul.

The court agreed, noting that a lay-person’s self-collection of relevant discovery on an electronic device “is highly problematic and raises a real risk that data could be destroyed or corrupted,” overlooked, or intentionally ignored.

The court went on to note that an attorney has a duty and obligation to have knowledge of, supervise, or counsel the client’s discovery search, collection, and production – a duty that an attorney cannot abandon by permitting an interested party or person to “self-collect” discovery without any attorney advice, supervision, or knowledge of the process utilized.

In its decision, the court ordered the defendants’ counsel to review its clients’ records and produce any documents responsive to ZAGG’s discovery requests. On the issue of whether to reopen discovery, the court, relying upon the standard in Rule 16(b)(4) (providing that after a scheduling order is entered, it “may be modified only for good cause and with the judge’s consent”), analyzed whether “good cause” existed. According to the court, the good cause standard “precludes modification unless the schedule cannot be met despite the diligence of the party seeking the extension” taking all relevant circumstances into account, including the danger of prejudice to the other side; the length of the delay; the potential impact of the delay; the reason for the delay; and whether the movant acted in good faith.

Weighing those factors, the court found good cause to reopen discovery. Indeed, based upon various instances of “excusable neglect” – including defendants’ counsel’s failure to supervise document collection and its last-minute disclosure during Ichilevici’s 11th-hour deposition of relevant non-parties, coupled with the defendants’ inability to articulate any prejudice from an extension of discovery, the court reopened discovery for a short time.

DC IP Lawyers note that this decision reminds counsel of its obligation to supervise data identification and collection for potential production. The ruling echoes the holdings of another federal judge who stated, “there is simply no responsible way that an attorney can effectively make the representations required under Rule 26(g)(1), and yet have no involvement in or close knowledge of the party’s search, collection and production of discovery.” Indeed, “an attorney’s signature on a discovery response is not a mere formality. Rather, it is a representation to the court that the discovery is complete and correct at the time it is made. An attorney cannot properly make this representation without having some participatory or supervisory role in the search, collection, and production of discovery by a client or interested person, or at least having sufficient knowledge of the efficacy of the process utilized by the client. Abdicating completely the discovery search, collection, and production to a layperson or interested client without the client’s attorney having sufficient knowledge of the process, or without the attorney providing necessary advice and assistance, does not meet an attorney’s obligation under our discovery rules and case law. Such conduct is improper and contrary to the Federal Rules of Civil Procedure.”

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