Summary
stating that "[reconsideration] is appropriate only where the Court has `overlooked controlling decisions or factual matters that were put before it on the underlying motion'"
Summary of this case from Gemmy Industries Corporation v. Chrisha Creations LimitedOpinion
No. 99 Civ. 9307 (JFK).
December 20, 2000.
MEMORANDUM OPINION and ORDER
Before the Court are Defendant's objections to Magistrate Judge Kevin Fox's July 13, 2000 Order denying Defendant's request to compel discovery, as well as to Judge Fox's August 7, 2000 Order granting Defendant's motion for reconsideration but ultimately adhering to his prior decision. While the form of the motion suggests that the Defendant objects solely to the August 7 Order, much of the argument presented in Defendant's motion refers to the July 13 Order, and therefore the Court assumes that Defendant in fact objects to both orders. For the reasons outlined below, the Court affirms Magistrate Judge Fox's July 13, 2000 Order, and remands this case back to Magistrate Judge Fox for clarification of the reasons behind his August 7, 2000 Order.
Greater care could have been taken in the preparation of the Defendant's motion, as is evident from the fact that on page one of the motion the Defendant is mistakenly referred to as the Plaintiff.
As a threshold matter, Plaintiff argues that this Court should not entertain objections to the July 13, 2000 order because the motion was not filed in a timely fashion. See Pl.'s Mem. at 2. Discovery issues generally are considered non-dispositive, see Hoar, Inc. v. Sara Lee Corp., 900 F.2d 522, 525 (2d Cir. 1990), and the Federal Rules of Civil Procedure provide that parties must file objections to a non-dispositive magistrate judge's decision "[w]ithin 10 days of being served with a copy of the magistrate judge's order," Fed.R.Civ.P. 72(a). The Defense motion was filed on August 21, 2000, within the deadline with respect to the August 7, 2000 Order but clearly more than business 10 days following receipt of the July 13, 2000 Order. Chaindom's motion would meet the deadline with respect to the earlier order, however, if the statutory period for filing objections is tolled while motions to amend or reconsider an order are pending before the Magistrate Judge.
The Federal Rules provide that the statutory period should be calculated beginning the day following the service of the order, and should not include weekends or legal holidays. Fed.R.Civ.P. 6 (a).
The Federal Rules do not address whether motions to reconsider toll the deadline for objecting to a Magistrate Judge's order, but courts have held that the deadline is tolled, and this Court is persuaded by their reasoning. See e.g., American Medical Systems, Inc. v. National Union Fire Insurance Co., No. Civ. A. 98-1788, 1999 U.S. Dist. LEXIS 19230, at *5 (E.D.La. Dec. 10, 1999), (noting that to decide otherwise would either require magistrates to "turn around motions to reconsider with lightning speed" or would require litigants to bypass motions to reconsider if they contemplated filing appeals), vacated on other grounds, 2000 U.S. Dist. LEXIS 1441 (E.D.La. Feb. 8, 2000); Epperly v. Lehman Co., 161 F.R.D. 72, 74 (S.D. Ind. 1994) (analogizing to provisions of the Federal Rules of Appellate Procedure); Comeau v. Rupp, 142 F.R.D. 683, 685-86 (D. Kan. 1992). Consequently the Court holds that, since the ten-day statutory period within which parties may file objections to a magistrate judge's decision should be tolled while motions to reconsider or amend that decision are pending, this Court is not barred from entertaining Defendant's Objection to Magistrate Judge Fox's July 13, 2000 Order.
Background
The Court assumes familiarity with its earlier opinions in this case, and provides below only a rudimentary recitation of the facts and procedural history. Plaintiff Yurman Design Inc. brought this action for copyright infringement under the copyright laws of the United States and misappropriation and unjust enrichment under the laws of the State of New York. Yurman claims that Defendants have infringed its bracelet style B4995, which was first published on February 5, 1994, and for which Yurman received a copyright registration on July 1, 1997. See Compl. Ex. A. In November of 1999 this Court, finding that Yurman demonstrated a likelihood of success on the merits of its copyright infringement claim, ordered a recall of existing stock of the bracelets ordered by jewelry businesses and issued a preliminary injunction enjoining Defendants from the manufacture and sale of the allegedly infringing bracelets. See Yourman Design, Inc. v. Chaindom Enterprises, Inc., No. 99 Civ. 9307 (JFK), 1999 WL 1075942 at *8 (S.D.N.Y. Nov. 29, 1999).
Chaindom, while acknowledging the substantial similarity between its two bracelets and Yurman's B4995 bracelet, claimed that Yurman's copyright was invalid and that Yurman was in fact the infringer since Chaindom had created and published a substantially similar work in 1988.See id. at *2. Chaindom provided no credible evidence of independent creation of the disputed designs, however, and, since Chaindom had neither a certificate of registration nor a denial from the Copyright Office regarding those designs, this Court dismissed Chaindom's cross-claim for copyright infringement in its November, 1999 Decision.See id. at *4, *8. Chaindom's later motion to amend its Amended Answer to include a counterclaim for copyright infringement was also denied, since the Defendant again failed to demonstrate that it actually held a copyright for the disputed designs. See Yourman Design, Inc. v. Chaindom Enterprises, Inc., No. 99 Civ. 9307 (JFK), 2000 WL 897141 at *5-6 (S.D.N Y July 5, 2000).
Surprisingly, Chaindom now contends that the dismissals of its copyright infringement claims, along with this Court's dismissal of the Defendants' claim that Yurman fraudulently obtained its copyright on the B4995 design, were merely procedural, see Def. Reply Mem. at 2. Obviously Chaindom's failure to produce a valid copyright of its own or to specify the fraudulent means by which Yurman secured its copyright weaken its substantive claim that it independently produced the disputed design.
The current dispute began in February, 2000, when Chaindom sought information from Yurman regarding 78 of its jewelry styles, contending that they were "similar enough [to the disputed design] to be either infringements of our client's copyright or derived from or based upon [Yourman's] alleged original work." See Greendorfer Decl. Ex. A-a at 3. Plaintiff resisted production, maintaining that the document request was both burdensome and irrelevant. See Greendorfer Decl. Exh. A-b. at 2 ("Plaintiff should not be burdened with producing almost forty times the amount of documents thus far produced without Defendant being required to articulate its specific basis for asserting relevance of such documents, particularly when such documents contain confidential and proprietary information.").
On July 3, 2000, Chaindom wrote a letter to Magistrate Judge Fox requesting that he compel the discovery and stating that the relevance of the information had been "established by Defendant's claim of copyright infringement." Greendorfer's Decl. Ex. A-a at 4. In light of this Court's July 5 Opinion and Order dismissing that copyright infringement claim, Magistrate Judge Fox denied the discovery request on the grounds that it was no longer relevant. "The decisions rendered by Judge Keenan have narrowed the issues and limited the defenses in this action such that the relevancy of the discovery Chaindom seeks, respecting 78 pieces of plaintiff's jewelry, is now suspect." See July 13, 2000 Order at 2.
Claiming that Magistrate Judge Fox may have failed to consider the relevance of the discovery request to Chaindom's general defense, Defendant significantly narrowed the scope of production sought and requested that Judge Fox reconsider his decision. See Greendorfer Decl. Ex. A-c at 1-2. Chaindom claimed that if Yurman's B4995 bracelet was based on earlier Yurman designs which had fallen into the public domain, Yurman's copyright on B4995 would be invalid, and asserted that it needed information about Yurman's similar styles in order to adequately put forth a defense. See id. at 3. Now seeking information regarding only those 18 designs which it felt were "substantially similar" to the disputed bracelet, Chaindom asked Magistrate Judge Fox to find that the requested discovery was relevant for its general defense, not merely for its dismissed counterclaim. Yurman countered that there was no grounds for reconsideration, see Greendorfer Decl. Ex. A-d at 2, and, while acknowledging that Chaindom raised this legal theory in the July 12 telephone conference with Magistrate Judge Fox, argued that Chaindom was improperly raising a new legal theory in its request for reconsideration. See id. at 3, Greendorfer Decl. Ex. A-f at 1. In a Memo Endorsed Order dated August 7, 2000, Magistrate Judge Fox granted the motion to reconsider but denied Chaindom's request to compel discovery.
Discussion
When a party files an objection to a magistrate judge's order on a non-dispositive matter, the district judge to whom the case is assigned "shall modify or set aside any portion of the . . . order found to be clearly erroneous or contrary to law." Fed.R.Civ.P. 72(a). A decision should be found clearly erroneous when "the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." Litton Indus. v. Lehman Bros. Kuhn Loeb Inc., 734 F. Supp. 1071, 1080 (S.D.N.Y. 1990) (quoting United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948)). Furthermore, in deciding discovery disputes, a magistrate judge is entitled to "broad discretion, which will be overruled only if abused." Dubin v. E.F. Hutton Group Inc., 125 F.R.D. 372, 373-74 (S.D.N.Y. 1989).
Applying this highly deferential standard of review, this Court affirms Magistrate Judge Fox's July 13, 2000 Order in its entirety. A Court has the discretion to deny discovery requests if it determines that they are not "reasonably calculated to lead to the discovery of admissible evidence." Fed.R.Civ.P. 26(b)(1), or that "the burden or expense of the proposed discovery outweighs its likely benefit." Fed.R.Civ.P. 26 (b)(2). There is nothing in the record to suggest that Magistrate Judge Fox abased this discretion, nor to lead this Court to a "definite and firm conviction that a mistake has been committed." Litton Indus. v. Lehman Bros. Kuhn Loeb Inc., 734 F. Supp. at 1080. Chaindom maintains that Magistrate Judge Fox applied "an incorrect and legally erroneous standard" of relevance, see Defs.' Reply Mem. at 2, and argues "[t]he Magistrate did not find that the discovery sought . . . was irrelevant to the subject matter of this action," id. at 1, but Chaindom misreads the July 13 Order. In fact, Magistrate Judge Fox considered Chaindom's claim that the information was relevant to its general defense but nevertheless determined that Chaindom's discovery request was no longer relevant since its claims of fraud and copyright infringement had been dismissed. See July 13, 2000 Order at 2. This determination was well within the discretion afforded courts by Federal Rule of Civil Procedure 26(b). Since Magistrate Judge Fox's Order of July 13, 2000 is not clearly erroneous or contrary to law, it is hereby affirmed.
Similar deference is due Magistrate Judge Fox's August 7, 2000 Order granting reconsideration but ultimately denying Chaindom's request for discovery. Unfortunately, insofar as Magistrate Judge Fox did not explain either the reason he granted the reconsideration in the first place or the reason he ultimately denied Chaindom's request, this Court cannot ascertain the exact rationale behind the decision and so cannot properly determine whether the Magistrate Judge's order was clearly erroneous or contrary to law. The August 7, 2000 Order consists of only two sentences: "Defendants' application for reconsideration is granted. Upon reconsideration, the Court adheres to its prior determination." Since a motion to reconsider "is not a motion to reargue those issues already considered when a party does not like the way the original motion was resolved," In re Houbigat, Inc., 914 F. Supp. 997, 1001 (S.D.N.Y. 1996), Magistrate Judge Fox had to decide that he had overlooked controlling decisions or factual matters that were put before it on the underlying motion," Davis v. The Gap, 186 F.R.D. 322, 323 (S.D.N.Y. 1999), in order to grant Chaindom's motion for reconsideration. This Court needs to know why the Magistrate Judge came to this conclusion, as well as why he decided, after reconsideration, to deny discovery. Accordingly, the Court remands this case to Magistrate Judge Fox for an explanation of the grounds for his August 7 ruling.
SO ORDERED.