United States District Court, D. New Hampshire
D'Pergo Custom Guitars, Inc.
Sweetwater Sound, Inc.
McCafferty, United States District Judge
Custom Guitars, Inc. (“D'Pergo”) brings this
suit against Sweetwater Sound, Inc.
(“Sweetwater”), alleging claims of copyright and
trademark infringement and violations of the New Hampshire
Consumer Protection Act (“CPA”). D'Pergo
alleges that Sweetwater used a copyrighted photograph of
D'Pergo's trademarked custom guitar necks to promote
and sell Sweetwater products on Sweetwater's website.
Both D'Pergo and Sweetwater move to compel the opposing
party to respond to discovery requests. For the reasons
discussed below, both motions are granted in part and denied
may obtain discovery regarding any nonprivileged matter that
is relevant to any party's claim or defense . . . [which]
need not be admissible at trial if the discovery appears
reasonably calculated to lead to the discovery of admissible
evidence.” Fed.R.Civ.P. 26(b)(1). A party may serve on
another party a request “to produce and permit the
requesting party or its representative to inspect, copy,
test, or sample” certain documents that are within the
scope of Federal Rule of Civil Procedure 26(b) and are in the
party's custody and control. Fed.R.Civ.P. 34(a)(1).
“A party seeking discovery may move for an order
compelling an answer, designation, production, or inspection.
The motion may be made if . . . (iv) a party fails to respond
that inspection will be permitted-or fails to permit
inspection-as requested under Rule 34.” Fed.R.Civ.P.
manufactures and sells custom guitars. In 2003, D'Pergo
created a photograph showcasing a number of its unique guitar
necks, which it published to its website. D'Pergo later
registered the copyright for the photograph and registered
its signature guitar neck headstock as a trademark.
is a retailer that sells musical instruments, including
guitars, through its website. D'Pergo alleges that
Sweetwater copied D'Pergo's photograph and published
it on Sweetwater's website. More specifically, Sweetwater
used the photograph in an “Electric Guitar Buying
Guide, ” in the section titled “Guitar necks
explained.” The end of the Buying Guide features a
number of guitars from various manufacturers for purchase, as
well as a hyperlink to “Shop for Electric
Guitars.” Sweetwater admits that it used the photograph
as early as August 5, 2004, and claims that it discontinued
using the photograph within two days of receiving notice from
D'Pergo on January 4, 2016. See doc. no. 63 at 5.
asserts five claims in its amended complaint: 1) copyright
infringement in violation of the Copyright Act (Count I); 2)
unfair competition in violation of the CPA (Count II); 3)
deceptive business practices in violation of the CPA (Count
III); 4) false designation of origin and unfair competition
in violation of the Lanham Act (Count IV); and 5) trademark
infringement in violation of the Lanham Act (Count V).
moves for an order compelling Sweetwater to provide further
responses to D'Pergo's Request for Production and its
First Set of Interrogatories. See doc. no. 60. Sweetwater
moves for an order compelling D'Pergo to provide further
responses to Sweetwater's first and second requests for
production of documents. See doc. no. 62. The court first
addresses D'Pergo's motion and then turns to
speaking, D'Pergo's motion focuses on the
parties' disagreement over the effect of the three-year
statute of limitations applicable to each of
D'Pergo's claims in this case. Sweetwater refuses to
produce any information prior to December 26, 2014, three
years before D'Pergo filed this suit, arguing that such
information is irrelevant because it is outside of the
statute of limitations. In addition, Sweetwater contends that
D'Pergo's requests are overbroad and that it would be
unduly burdensome to respond.
Applicable Limitations Period
parties agree that a claim under the Copyright Act must be
brought within three years after the claim accrues. See 17
U.S.C. § 507(b). The parties further agree that
D'Pergo's CPA claims and its trademark claims under
the Lanham Act also have a three-year statute of
limitations. See RSA § 508:4, I. In addition, the
parties agree for purposes of D'Pergo's motion that
D'Pergo's action is timely, meaning that its claims
accrued no earlier than December 26, 2014.
the parties agree as to the appropriate limitations period,
they disagree as to its effect on discovery about
D'Pergo's damages. D'Pergo asserts that it is
entitled to discovery about information regarding
Sweetwater's sales of electric guitars beginning two
years before Sweetwater began using the image (in 2004) and
continuing until it ceased using the image (in 2014). In
response, Sweetwater contends that D'Pergo is entitled to
no information for the period prior to December 26, 2014, the
earliest possible date that D'Pergo's claims accrued.
support of its position, Sweetwater relies almost entirely on
the Supreme Court's decision in Petrella v. MGM,
572 U.S. 663 (2014). In Petrella, the Supreme Court held that
the equitable defense of laches does not apply to claims for
copyright infringement brought within the limitations period
under the Copyright Act. See Id. at 687. Sweetwater
seizes on the following language in Petrella:
In sum, Congress provided two controlling time prescriptions:
the copyright term, which endures for decades, and may pass
from one generation to another; and § 507(b)'s
limitations period, which allows plaintiffs during that
lengthy term to gain retrospective relief running only three
years back from the date the complaint was filed.
Id. at 671 (emphasis added). Sweetwater interprets
this language from Petrella as limiting D'Pergo's
right to recover damages on its Copyright Act claim-and,
therefore, it's right to discover information-to three
years prior to the date it filed its complaint in this
argument is unpersuasive. The language from Petrella upon
which Sweetwater relies is dicta, as it “was a case
about laches, and the holding is limited to that
issue.” Grant Heilman Photography, Inc. v.
McGraw-Hill Companies, Inc., 28 F.Supp.3d 399, 411 (E.D.
Pa. 2014). As D'Pergo notes, several defendants in
Copyright Act cases have attempted to use the dicta quoted
above from Petrella to limit a plaintiff's claim for
damages. Courts have repeatedly rejected these attempts
because the three-year look-back rule for damages does not
apply when the discovery rule extends the limitation period.
See PK Music Performance, Inc. v. Timberlake, No.
16-CV-1215 (VSB), 2018 WL 4759737, at *9-10 (S.D.N.Y. Sept.
30, 2018) (discussing and explaining damages under the
discovery rule and discussing Petrella); Sohm v.
Scholastic Inc., No. 16-CV-7098 (JPO), 2018 WL 1605214,
at *11 (S.D.N.Y. Mar. 29, 2018) (The “Court rejects
Scholastic's argument that damages [in a Copyright Action
case] should be limited to three years before the filing of
this case.”); Mitchell v. Capitol Records,
LLC, 287 F.Supp.3d 673, 678 (W.D. Ky. 2017);
Panoramic Stock Images, Ltd v. McGraw-Hill Glob. Educ.
Holdings, LLC, No. 12 C 9881, 2015 WL 393381, at *2
(N.D. Ill. Jan. 27, 2015). Thus, information relating to a
defendant's first infringing act, even when it occurs
prior to the discovery of infringement, is discoverable. See
Mitchell v. Universal Music Grp. Inc., No.
3:15-CV-174-JHM, 2018 WL 1573233, at *3 (W.D. Ky. Mar. 30,
2018), objections sustained in part and overruled in part sub
nom. Mitchell v. Capitol Records, LLC, No.
3:15-CV-00174-JHM, 2018 WL 2011934 (W.D. Ky. Apr. 30, 2018)
(“Mitchell's discovery requests for financial
documents dating back to 1988 (or whatever date he believes
defendants' first infringing act occurred on) are highly
relevant to his claims, and defendants cannot impose a
three-year limitation period on the financial records they
produce in discovery.”).
D'Pergo is entitled to discovery pertaining to its claim
for damages beyond the three-year limitations period in the
Copyright Act, the court need not address Sweetwater's
similar arguments pertaining to the limitations period
applicable to D'Pergo's Lanham Act
claims. The court notes, however, that Sweetwater
does not cite any case in its objection to support its
contention that damages for a timely-filed Lanham Act claim
are limited by the analogous state statute of limitations.
And, as both parties acknowledge, courts in this circuit have
allowed claims for damages under the Lanham Act for periods
of time beyond the applicable limitations period. See
Venture Tape Corp. v. McGills Glass Warehouse, 540
F.3d 56, 64 (1st Cir. 2008) (upholding district court's
award of three-and-a-half years' worth of damages in a
Lanham Act case subject to a three-year statute of
limitations); Santana-Cuesta v. Maldonado-Vargas,
No. CV 14-1456 (CCC/BJM), 2016 WL 9459759, at *8 (D.P.R. Jan.
29, 2016) (awarding damages for seven years of infringing
activity in a Lanham Act case), report and recommendation
adopted, No. CV 14-1456CCC, 2016 WL 9458791 (D.P.R. Mar. 7,
those reasons, D'Pergo may seek information in support of
its claim for ...