PAGE 1 – OPINION AND ORDER

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

ADIDAS AMERICA, INC., a Delaware 

corporation; ADIDAS AG, a foreign entity;

ADIDAS INTERNATIONAL 

MARKETING B.V., a foreign entity; 

REEBOK INTERNATIONAL LTD., a 

Massachusetts corporation; and REEBOK 

INTERNATIONAL LIMITED, a foreign 

entity,

Plaintiffs,

v.

TRB ACQUISITIONS LLC, a New York 

limited liability company, et al.,

Defendants.

Case No. 3:15-cv-2113-SI

OPINION AND ORDER ON 

PLAINTIFFS’ MOTION TO COMPEL 

PRODUCTION OF DOCUMENTS

R. Charles Henn, Jr., Charles H. Hooker, III, and Nichole Davis Chollet, KILPATRICK TOWNSEND 

& STOCKTON LLP, 1100 Peachtree Street, Suite 2800, Atlanta, GA 30309; Stephen M. Feldman,

PERKINS COIE LLP, 1120 NW Couch Street, 10th Floor, Portland, OR 97209. Of Attorneys for 

Plaintiffs.

Michelle Mancino Marsh, Allen G. Reiter, Eric Roman, Alissa G. Friedman, Lindsay Korotkin, 

and Phaik Lin Goh, ARENT FOX LLP, 1675 Broadway, New York, NY 10019; Kenneth R. Davis 

II, Parna A. Mehrbani, and Hans H. Huggler, LANE POWELL PC, 601 SW Second Avenue, Suite 

2100, Portland, OR 97204. Of Attorneys for Defendants.

Michael H. Simon, District Judge.

Case 3:15-cv-02113-SI Document 147 Filed 11/28/16 Page 1 of 13
PAGE 2 – OPINION AND ORDER

In this lawsuit, Plaintiffs adidas and Reebok (collectively, “Plaintiffs”)1allege claims of 

trademark infringement, unfair competition, trademark dilution, and deceptive trade practices 

against Defendant TRB Acquisitions LLC (“TRB”) and fourteen licensees of TRB (the 

“Licensee Defendants”).

2 Before the Court is Plaintiffs’ Motion to Compel Production of 

Documents (“Motion to Compel”). ECF 131. Although there are a few concrete and specific 

matters presented for the Court to resolve, in general Plaintiffs’ Motion to Compel mostly 

expresses Plaintiffs’ skepticism that TRB has engaged in a diligent, sufficient, and reasonable 

search for and production of responsive documents. TRB maintains that it has. As discussed 

more fully below, the Court grants in part and defers in part Plaintiffs’ Motion to Compel.

APLICABLE RULES GOVERNING DISCOVERY

Federal Rule of Civil Procedure 26(b)(1) provides in relevant part:

Parties may obtain discovery regarding any nonprivileged matter 

that is relevant to any party’s claim or defense and proportional to 

the needs of the case, considering the importance of the issues at 

stake in the action, the amount in controversy, the parties’ relative 

access to relevant information, the parties’ resources, the 

importance of the discovery in resolving the issues, and whether 

the burden or expense of the proposed discovery outweighs its 

likely benefit. Information within this scope of discovery need not 

be admissible in evidence to be discoverable.

Fed. R. Civ. P. 26(b)(1)

Federal Rule of Civil Procedure 34(a) provides, among other things, that a party may 

serve on any other party a request within the scope of Rule 26(b) to produce and permit 

inspection and copying of any designated documents or electronically stored information (“ESI”) 

 

1

Except when expressly noted, the Court refers to Plaintiffs adidas America, Inc., adidas 

AG, and adidas International Marketing B.V. collectively as “adidas.” Similarly, except when 

expressly noted, the Court refers to Plaintiffs Reebok International Ltd. and Reebok International 

Limited collectively as “Reebok.”

2

The Court refers to TRB and the Licensee Defendants collectively as “Defendants.”

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PAGE 3 – OPINION AND ORDER

in the responding party’s possession, custody, or control. Rule 34(b)(2)(A) provides that the 

party to whom the request is directed must respond in writing within 30 days after being served. 

In addition, Rule 34(b)(2)(B) and (C) state:

(B) Responding to Each Item. For each item or category, the 

response must either state that inspection and related activities will 

be permitted as requested or state with specificity the grounds for 

objecting to the request, including the reasons. The responding 

party may state that it will produce copies of documents or of 

electronically stored information instead of permitting 

inspection. . . .

(C) Objections. An objection must state whether any responsive 

materials are being withheld on the basis of that objection. An 

objection to part of a request must specify the part and permit 

inspection of the rest.

Fed. R. Civ. P. 34(b)(2)(B), (C).

Federal Rule of Civil Procedure 37(a) allows a party to move for an order compelling 

disclosure or discovery. In addition, Rule 37(a)(5) provides:

(5) Payment of Expenses; Protective Orders.

 (A) If the Motion Is Granted (or Disclosure or Discovery Is 

Provided After Filing). If the motion is granted—or if the 

disclosure or requested discovery is provided after the motion was 

filed—the court must, after giving an opportunity to be heard, 

require the party or deponent whose conduct necessitated the 

motion, the party or attorney advising that conduct, or both to pay 

the movant’s reasonable expenses incurred in making the motion, 

including attorney’s fees. But the court must not order this 

payment if:

 (i) the movant filed the motion before attempting in good 

faith to obtain the disclosure or discovery without court action;

 (ii) the opposing party’s nondisclosure, response, or 

objection was substantially justified; or

 (iii) other circumstances make an award of expenses unjust.

Fed. R. Civ. P. 37(a)(5).

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BACKGROUND

A. The Lawsuit

On November 10, 2015, five adidas-related corporate entities commenced this lawsuit. 

Two of the plaintiffs are United States corporations, and three of the plaintiffs are European

business entities organized under the laws of Germany, the Netherlands, and England. Plaintiff 

adidas America, Inc. (“adidas America”) is a Delaware corporation with its principal place of 

business in Portland, Oregon. Plaintiff adidas AG is a joint stock company organized and 

existing under the laws of Germany with its principal place of business in Germany. Plaintiff 

adidas International Marketing B.V. is organized under the laws of the Netherlands with its 

principal place of business in the Netherlands. Plaintiff Reebok International Ltd. (“Reebok 

USA”) is a Massachusetts corporation with its principal place of business in Canton, 

Massachusetts. Plaintiff Reebook International Limited (“Reebok UK”) is a corporation 

organized and existing under the laws of England.

The adidas-named entities manufacture, market, advertise, promote, distribute, and sell

footwear and apparel bearing the Three-Stripe trademark (the “Three-Stripe Mark”). The 

adidas-named entities also use a triangular logo that incorporates the Three-Stripe Mark (the 

“Badge of Sport Mark”). Plaintiff adidas AG is the owner of United States trademark 

registrations for several iterations of its Three-Stripe Mark. Plaintiff adidas International 

Marketing B.V. is the owner of trademark registrations for the Badge of Sport mark.

The Reebok-named entities manufacture, market, advertise, promote, distribute, and sell 

footwear and apparel under the REEBOK trademark and the RBK trademark (the “RBK Mark”).

Plaintiff Reebok UK is the owner of the REEBOK and RBK marks. Plaintiff Reebok USA 

advertises and distributes all REEBOK-branded and RBK-branded products in the United States.

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Plaintiff adidas AG wholly owns Plaintiff Reebok USA, and Plaintiff Reebok USA wholly owns 

Reebok UK.

Defendant TRB owns all rights, interest, and title in and to the RBX trademark (the 

“RBX Mark”). TRB licenses the use of the RBX Mark to others, including the Licensee 

Defendants, in accordance with the terms of several license agreements. Plaintiffs allege, among 

other things, that the RBX Mark infringes the Badge of Sport Mark and the RBK Mark.

B. Plaintiffs’ Requests for Production and Defendants’ Responses

On January 15, 2016, Plaintiffs served their first set of document requests on Defendant 

TRB. Plaintiffs’ first request was 23 pages in length and contained 90 separate requests. 

ECF 132-2. On May 18, 2016, Plaintiffs served their second set of document requests on TRB. 

Plaintiffs’ second request was 10 pages in length and contained an additional 34 requests, 

resulting in a total of 124 separate requests for production. ECF 132-3. TRB’s responses and 

objections to Plaintiffs’ First Request was 55 pages in length. ECF 132-5. TRB’s responses and 

objections to Plaintiffs’ Second Request was 25 pages in length. ECF 132-6. TRB’s second 

amended responses and objections to Plaintiffs’ First Request was 119 pages in length. 

ECF 132-7. In response to Plaintiffs’ discovery requests and before Plaintiffs filed their Motion 

to Compel, TRB produced documents to Plaintiffs on: (i) May 20, 2016; (ii) June 9, 2016; (iii) 

July 7, 2016; (iv) August 16, 2016; (v) August 17, 2016; (vi) August 18, 2016; and (vii) October 

6, 2016. ECF 132 ¶ 6. In addition, after Plaintiffs filed their Motion to Compel, Defendants made 

several additional “supplemental productions.” See ECF `142.

Plaintiffs also served documents requests on the Licensee Defendants. According to 

Plaintiffs’ Motion to Compel, “all the Defendants together have produced a mere 9,500 

documents, approximately 7,000 of which are merely pictures of RBX-branded products.” 

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ECF 131 at 3. In their Motion to Compel, Plaintiffs express skepticism that all responsive 

documents have been produced to Plaintiffs by TRB and the Licensee Defendants.

In addition to document requests, Plaintiffs served 19 interrogatories on TRB. 

ECF 132-1. In TRB’s second amended responses and objections to Plaintiffs’ first set of 

interrogatories, TRB stated that, pursuant to Fed. R. Civ. P. 33(d), it will produce to Plaintiffs 

documents in lieu of providing interrogatory answers in response to Plaintiffs’ Interrogatory Nos. 

4, 8, and 10. ECF 132-7. According to Plaintiffs, however, TRB has not yet done so. ECF 131 

at 5 n.4.

Plaintiffs also inform the Court that on September 29, 2016, Plaintiffs took a deposition 

pursuant to Fed. R. Civ. P. 30(b)(6) of TRB’s corporate designee regarding its document 

collection and production. TRB’s designee was Mr. Jeffrey Tebele, who works for an outside 

information technology vender retained by TRB. Mr. Tebele testified that in the latter part of 

2015 or the early part of 2016, at the direction of Defendants’ litigation counsel, Mr. Tebele 

collected documents and emails from ten document custodians. ECF 132-22 at 2, 11-12

(Tr. 30:7-18, 40:22-41:14). According to Mr. Tebele at the Rule 30(b)(6) deposition, he turned 

over to Defendants’ counsel everything that he collected. See, e.g., id. at 22 (Tr. 109:7-25).

According to Plaintiffs, 

TRB, [Licensee Defendant] Cutie Pie Baby, and [Licensee

Defendant] RBX.com collected and handed over to TRB’s 

attorneys entire categories of documents which Defendants had not 

produced, including: TRB’s comprehensive financial records, 

costs, profits information, and royalty reports (id., Ex. V at 36:7-

37:7; 40:7-12; 41:4-14); communications between TRB and the 

Licensee Defendants (id. at 31:21-24; 34:2-11); communications 

between Defendants and their customers (id. at 66:24-67:7); 

communications between TRB and its advertising or web-design 

personnel and agency (id. at 68:9-16); communications regarding 

product designs; presentations to or from the Licensee Defendants 

or customers (id. at 33:7-11; 70:7-71:11); and instructions to the 

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Licensee Defendants regarding their use of the RBX mark and/or 

the RBX logo (id. at 71:20-72:17).

ECF 131 at 8 (footnotes omitted). Plaintiffs also state: 

Despite Mr. Tebele’s testimony that TRB maintains a 

comprehensive financial database (id., Ex. V at 35:13-41:19), no 

comprehensive reports have been produced. Id. ¶ 29. Similarly, 

despite Mr. Tebele’s testimony that TRB emails “regularly” with 

the Licensee Defendants (id., Ex. V at 34:1-12), only a smattering 

of emails between TRB and the Licensee Defendants have been 

produced. Id. ¶ 29. For example, Defendants have produced no 

correspondence regarding product approval, use of the marks at

issue, advertising plans, or similar basic licensor-licensee 

communications. Id.

ECF 131 at 9.

In response, TRB asserts: (1) Plaintiffs’ motion concerns 44 separate requests for 

production and is only directed at TRB, not at the responses by any of the Licensee Defendants; 

(2) no responsive documents exist in TRB’s possession, custody, or control for 11 of Plaintiffs’ 

44 requests; and (3) 16 of Plaintiffs’ requests merely require the production of documents 

sufficient to identify certain items or representative examples of certain items. ECF 138 at 3. 

TRB also explains that Mr. Tebele’s role was “limited to collecting all of the documents 

possessed by custodians at TRB as well as others who were not TRB employees but were 

involved in TRB’s business.” Id. at 4 (footnote omitted) (emphasis in original). TRB adds that 

neither Mr. Tebele nor TRB “ran any search terms against those documents” and that Mr. Tebele 

“collected approximately 300 gigabytes of data from TRB.” Id. 

TRB further argues that Plaintiffs’ motion fails to identify any discovery violation by any 

Defendant Licensee, that responsive documents have already been produced to Plaintiffs, that 

other responsive documents have already been produced by the Defendant Licensees and 

Plaintiffs agreed that TRB need not produce duplicate documents, that TRB does not have any 

documents responsive to certain requests, that certain requests are overbroad and not 

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proportional to the needs of the case and are the subject of TRB’s timely objections, and that 

certain cost and other financial information sought by Plaintiffs would be unduly burdensome for 

TRB to generate at this time. Id. at 6-9. 

Concerning this final point, TRB specifically refers to Plaintiffs’ Requests for Production 

(“RFP”) Nos. 103, 104, and 105. Those requests seek:

103. Documents sufficient to identify all costs or expenses –

whether fixed or variable – incurred by TRB (or any business unit 

of TRB) in connection with the Disputed Products, including profit 

and loss statements.

104. Documents sufficient to identify the profit margin realized by 

TRB (or any business unit of TRB) in connection with the 

Disputed Products, including contribution margin statements.

105. Documents sufficient to identify the net profits earned or the 

net losses suffered by TRB (or any business unit of TRB) in 

connection with the Disputed Products, including income 

statements.

ECF 132-3 at 6. In response to Plaintiffs’ discussion of these three RFPs, TRM asserts: “As 

RFPs 103, 104, and 105 are more properly directed to financial or economic experts, TRB 

submits that it has no obligation to respond to them at this time.” ECF 138 at 9.

In addition, in reply to TRB more general comments in its response, Plaintiffs also state:

in recent depositions, numerous Licensee Defendants confirmed 

that TRB exchanged emails with them related to license 

agreements, royalties, product designs, sales, marketing, 

packaging, and quality control, and some Licensee Defendants also 

testified to using a cloud storage portal (Box.com) to communicate 

with TRB—but these emails have not been produced by any of the 

Defendants.

ECF 141 at 3. Plaintiffs add that their motion was directed against all Defendants, id. at 4, and 

that Mr. Tebele, during his Rule 30(b)(6) deposition, confirmed:

(1) TRB communicates with its customers, web-design personnel 

and agencies, and the Licensee Defendants via email, (2) TRB 

communicates with the Licensee Defendants through its cloud 

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storage portal (Box.com), and (3) that Mr. Tebele collected “all of 

the documents possessed by custodians at TRB” more than six 

months before TRB produced any documents to Plaintiffs.

Id. at 5 (footnotes omitted). Plaintiffs also assert that TRB has collected royalties based on 

hundreds of millions of dollars in sales of RBX-labeled products made by the Licensee 

Defendants and that TRB requires most of its licensees to “(1) send designs to TRB for approval, 

(2) submit products for quality testing, (3) invest in marketing and advertising of the RBX mark, 

and (4) make royalty payments.” Id. Finally, in their Sur-Reply, TRB reiterates that the discovery 

provided by the Licensee Defendants are not properly at issue in Plaintiffs’ pending Motion to 

Compel, that TRB itself is a small enterprise and never had more than five full-time employees

at any given time, and that Defendants’ counsel ran search terms and keywords on the gathered 

ESI that were designed to identify responsive documents. ECF 144.

DISCUSSION

A. Whether the Licensee Defendants Are Included in Plaintiffs’ Motion to Compel

Plaintiffs maintain that both TRB and the 14 separate Licensee Defendants are all part of 

Plaintiffs’ Motion to Compel. Plaintiffs, however, do not specifically identify which Licensee 

Defendants are not in compliance with which specific requests for production. Given the current 

state of the motion papers and responses, the Court is unable fairly and meaningfully to rule on 

Plaintiffs’ Motion to Compel with regard to any specific Defendant Licensee. The Court, 

therefore, construes Plaintiffs’ Motion to Compel to be only against TRB. Because Mr. Tebele, 

however, has already gathered extensive ESI that is now actually or constructively in the 

custody, possession, or control of TRB, this Opinion and Order will apply to the entirety of 

whatever Mr. Tebele has collected, regardless of its source. In addition, after Plaintiffs 

meaningfully hold a further in-person or telephonic discovery conference, Plaintiffs have leave 

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to file, if necessary, separate motions to compel directed against any of the individual Licensee 

Defendants.

B. TRB’s Responses to Plaintiffs’ RFP Nos. 103, 104, and 105

There is nothing premature about Plaintiffs’ RFP Nos. 103, 104, and 105, and Plaintiffs

need not wait to receive the requested information or direct their requests only to Defendants’ 

financial or economic experts. Indeed, part of the purpose of civil discovery is to allow Plaintiffs 

to gather this sort of information so that Plaintiffs may provide the data to their own financial or 

economic experts. Responsive information, therefore, must be produced. If, however, Defendants 

continue to assert that they are technologically or financially unable to generate the specific 

information that Plaintiffs seek, then Defendants must allow Plaintiffs or their experts, pursuant 

to the “attorneys’ eyes only” terms of the Stipulated Protective Order (ECF 98) if Defendants so 

request, to have sufficient access to Defendants’ financial data in electronic format so that 

Plaintiffs or their outside experts may perform the requested analyses themselves. TRB shall 

comply with this direction within two weeks from the date of this Opinion and Order.

C. Plaintiffs’ Interrogatory Nos. 4, 8, and 10

TRB shall either answer Interrogatory Nos. 4, 8, and 10 or shall provide documents from 

which the answers may be determined. TRB shall comply with this direction within two weeks 

from the date of this Opinion and Order.

D. Remaining Requests for Production

In response to many of Plaintiffs’ other requests for production, TRB objects that those 

requests are overbroad and not proportional to the needs of the case. It does not appear, however, 

that TRB has fully complied with its obligations under Rule 34(b)(2)(C). It must do so within 

two weeks from the date of this Opinion and Order.

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Further, the Court is concerned about the rising expense of discovery in this case and 

related issues of proportionality (for all parties). Therefore, the Court directs the parties to hold a 

meaningful additional discovery conference either in person or over the telephone within two 

weeks from the date of this Opinion and Order.3 At this conference, the parties must discuss, at 

the minimum, how Plaintiffs reasonably may become satisfied that TRB has engaged in or 

promptly will perform reasonable steps to gather, identify, and produce responsive documents. 

The Court is considering several options, but would prefer the parties to discuss these issues and 

options with each other before the Court makes any further rulings.

One option under consideration by the Court is to direct TRB to provide Plaintiffs with 

the search terms, keywords, and related ESI parameters that TRB already has used and, if 

appropriate, to perform additional searches of the already-gathered ESI with any further terms, 

keywords, or parameters that Plaintiffs may designate. On the one hand, this may assist Plaintiffs 

in ensuring that they have appropriately obtained responsive documents. On the other hand, this 

approach contains the potential for mischief in that it may be abused by Plaintiffs in order to 

increase TRB’s discovery costs without resulting in any meaningful and proportional discovery 

benefit for Plaintiffs.

Another option under consideration by the Court is simply to require TRB to make 

available to Plaintiffs for their own searching the entirety of the ESI that Mr. Tebele has already 

gathered (approximately 300 gigabytes), in a suitable electronic and searchable format, 

excluding only attorney-client privileged material and attorney work product. In light of TRB’s 

relatively small enterprise size and the ability of Defendants’ counsel to run search terms and 

keywords, locating and segregating attorney-client privilege material and attorney work product

 

3 Merely exchanging emails is insufficient compliance with this direction.

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and then excluding that material from production might not be particularly demanding, 

expensive, or burdensome for TRB. This option also should at least be evaluated by the parties. 

Further, under this option, the Court would direct that any inadvertently produced privileged or 

work product material could not be used, must be returned, and would not result in any subject 

matter waiver. Also, because what would be produced will likely include competitively sensitive 

information, Defendants may provide, under this option, the entirety of this ESI production 

subject to the “Attorneys’ Eyes Only” designation described in the parties’ First Amended 

Stipulated Protective Order (ECF 98). This will further reduce the burden and costs to TRB of 

having to review all of the additional material to be produced. Under this approach, Plaintiffs 

may then request that specific items be appropriately re-designated after Plaintiffs have reviewed 

what they receive and have determined which items, if any, they reasonably need to have 

re-designated.

Both of these approaches seem potentially reasonable to the Court in light of the 

discovery history between the parties in this case. There also may be other reasonable 

approaches. Thus, before the Court enters any other rulings on the pending Motion to Compel, 

the parties are directed meaningfully to confer further. If still needed, after such a conference has 

been held, Plaintiffs have leave to request the Court to enter a further Order on the pending 

motion.

E. The Parties’ Cross-Requests for Attorney’s Fees and Expenses

Plaintiffs have requested their reasonable attorney’s fees and expenses incurred in 

bringing its Motion to Compel, and TRB has requested its reasonable attorney’s fees and 

expenses incurred in opposing that motion. The Court denies both requests at this time, with 

leave to renew if future developments in the parties’ respective discovery conduct so warrant.

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CONCLUSION

Plaintiffs’ Motion to Compel Production of Documents (ECF 131) is GRANTED IN 

PART AND DEFERRED IN PART. Plaintiffs’ request for an award of attorney’s fees and 

expenses and TRB’s cross-request for an award of attorney’s fees and expenses are denied 

without prejudice and with leave to renew if later warranted. Within two weeks from the date of 

this Opinion and Order, the discovery directed shall be provided and the parties shall conduct an 

additional discovery conference as directed in this Opinion and Order.

IT IS SO ORDERED.

DATED this 28th day of November, 2016.

/s/ Michael H. Simon

Michael H. Simon

United States District Judge

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