United States District Court, D. Maryland
LIFE TECHNOLOGIES CORPORATION a Delaware Corporation, Plaintiff.
LIFE TECHNOLOGIES CORPORATION, et al., Montgomery County, Maryland, Defendants.
REPORT AND RECOMMENDATIONS FOR MOTION FOR ORDER TO SHOW CAUSE WHY DR. KRISHNAMURTHY SHOULD NOT BE HELD IN CONTEMPT AND MOTION FOR ORDER HOLDING HIM IN CONTEMPT
WILLIAM CONNELLY, Magistrate Judge.
On July 6, 2012 the Honorable Roger W. Titus referred this case to the undersigned for the resolution of all discovery and related scheduling matters (ECF No. 63). Pending before the court is the Plaintiffs Motion for Order to Show Cause Why Dr. Krishnamurthy Should Not Be Held in Contempt and Motion for Order Holding Him in Contempt (ECF No. 134), Dr. Krishnamurthy's Response in Opposition (ECF No. 138), and the Plaintiffs Reply (ECF No. 139). Judge Titus orally instructed the undersigned to hold a hearing on the pending matter and submit a Report and Recommendations pursuant to 28 U.S.C. § 636(b)(l)(B). A hearing on this matter was held on May 16, 2014. The matter was taken under advisement for the preparation of a Report and Recommendations.
PROPOSED FINDINGS OF FACT
1. On December 16, 2010 the plaintiff, Life Technologies Corporation of Carlsbad, California sued the defendants, Life Technologies Corporation of Rockville, Maryland and DOES 1 to 5, for Declaratory Relief and an Injunction and for Federal Trademark Infringement and Unfair Competition under 15 U.S.C. § 1125(a)(1)(A). The plaintiff is a business engaged in the development, manufacture, distribution, marketing and sale of life science products for scientific research. The company has more than 50, 000 products used by more than 75, 000 customers around the world and its products are found in more than 90% of the research laboratories in the United States. The defendant corporation has offices in Rockville, Maryland and Vellore, India and provides research, development and information technology services to businesses. The plaintiff alleged that the defendants are using the plaintiffs LIFE TECHNOLOGIES® mark without authority and are engaged in trademark infringement and unfair competition. Equitable relief, an accounting of all profits derived from the trademark infringement and monetary damages were sought.
2. On March 15, 2012 Judge Titus granted the Plaintiffs Motion for Partial Summary Judgment (ECF No. 14), Plaintiff's Motion for Sanctions or Other Relief Pursuant to Rule 56(h) (ECF No. 21), and Plaintiffs Motion for Default Judgment (ECF No. 45). In an eleven page order, Judge Titus ruled that the Plaintiff owns all right, title and interest and has superior rights in and to the registered trademark LIFE TECHNOLOGIES®, enjoined the defendants from use of the mark, ruled that the defendants had engaged in trademark infringement and unfair competition and that the plaintiff is entitled to an accounting, monetary damages, treble damages, attorney fees and costs. The Plaintiff was granted leave to conduct additional discovery in support of an award of damages.
3. On November 6, 2012 the Plaintiff filed a Motion for Order to Show Cause Why Defendant and Dr. and Mrs. Krishnamurthy Should Not Be Held in Contempt, and Motion for Order Holding Them in Contempt and for Other Relief (ECF No. 78). The basis for the motion was that the Defendant and Dr. and Mrs. Krishnamurthy had not complied with the directions contained in the court's March 15, 2012 order. Following hearings on December 10 and 18, 2012, Judge Titus held Defendant Life Technologies Corporation and Dr. Krishnamurthy in contempt. An order to that effect was entered on December 20, 2012 (ECF No. 94).
4. During the first part of 2013 attempts to obtain written discovery and document production from Dr. Krishnamurthy were largely unsuccessful. Several motions to extend discovery were granted by the undersigned. On September 4, 2013 an in person discovery hearing was held which was followed by telephone discovery conferences on September 24, 27, October 8, 16, 23, 2013. During these conferences the undersigned worked to obtain social security numbers, email addresses, tax records and other information from Dr. Krishnamurthy to aid the Plaintiff in its use of third party subpoenas on banks, internet service providers and other businesses to obtain data required to support a monetary damage claim.
5. By order of October 23, 2013 the undersigned directed:
That Dr. Krishnamurthy is hereby ORDERED to compile a list of all e-mail addresses he is currently using and/or previously used. Dr. Krishnamurthy must affirm the list of e-mail addresses is the full, correct and absolute list of all e-mail addresses he presently or previously used. (ECF No. 116, Paragraph 2)
The period of time was for the years 2002 to the present. Dr. Krishnamurthy provided four e-mail addresses. Plaintiff through third party subpoenas uncovered approximately eleven or twelve personal e-mail accounts and at least that many additional e-mail accounts that appear to be related to either the Defendant or Dr. Krishnamurthy's related entities in India which have been used at various times by Dr. Krishnamurthy from 2002 to the present. To date, Dr. Krishnamurthy has not produced any emails.
6. On January 9, 2014 a telephone discovery conference was held. Plaintiff explained that it wished to subpoena internet service providers associated with Dr. Krishnamurthy to obtain copies of e-mails directly from the service provider, as Dr. Krishnamurthy had provided no emails. However, the internet service providers would not honor a Federal subpoena unless the e-mail account holder provides written consent pursuant to the Stored Wire Electronic Communications Act, 18 U.S.C. § 2701 et seq.
7. On January 9, 2014 the undersigned entered an order directing:
That for the reasons stated during the telephone conference, Interested Party, Krishnamurthy Govindaraj, is hereby ORDERED to sign and execute "consent and release forms" regarding various e-mail accounts within ten (10) days of Plaintiff's counsel providing the forms to Dr. Krishnamurthy's counsel. (ECF No. 122, Paragraph 3)
The court also directed Dr. Krishnamurthy to sign and execute IRS Form 4506T. On January 21, 2014 Dr. Krishnamurthy filed objections pursuant Fed.R.Civ.P. 72 objecting to the unspecified "nature of the" broad requests for e-mail production and moved for a Protective Order restricting from discovery emails from third party providers that are not relevant or reasonably calculated to lead to the discovery of admissible evidence (ECF No. 123 & 124). Plaintiff filed in opposition to the objections and motion for a protective order on February 8, 2014 (ECF No. 125) and ...