United States District Court, D. Maryland
LIPTON HOLLANDER, UNITED STATES DISTRICT JUDGE
Memorandum addresses the Objection filed by Sandler Systems,
Inc. (“SSI” or “Sandler”), defendant
and counter-plaintiff, as to discovery rulings made by U.S.
Magistrate Judge Mark Coulson. The facts set forth below are
limited to those pertinent to the Objection.
seven and a half years ago, Topline Solutions, Inc.
(“Topline, Inc.”), plaintiff, sued Sandler for,
inter alia, breach of two contracts. In August 2016,
SSI moved for leave to file a counterclaim against Topline,
Inc. and a third party complaint against Steven Kraner, the
president, founder, and sole shareholder of Topline, Inc. ECF
253 (“Motion for Leave to File”); ECF 312, ¶
17. I shall refer to Topline, Inc. and Kraner collectively as
hearing held on November 30, 2016, Judge Motz granted the
Motion for Leave to File. See ECF 297. The
Counterclaim was docketed on December 1, 2016, at ECF 298. A
few days later, on December 12, 2016, SSI filed an amended
counterclaim and third party complaint. ECF 312
underlying lawsuit is rooted in events that begin in 1991,
when Kraner purchased an SSI franchise. ECF 89-38, ¶ 4
(Kraner Declaration, 11/18/11). Thereafter, Kraner informally
began to modify SSI's intellectual property, in an
attempt to adapt those materials to the high- tech market.
See ECF 89-38, ¶¶ 6-15. Kraner's
alterations were not formally authorized by SSI and
constituted a breach of the franchise agreement with SSI.
Id. ¶¶ 33-34. In 2004, Kraner assigned to
Topline, Inc. his rights and duties under his first franchise
agreement with SSI. ECF 312, ¶ 18. In 2005, after SSI
learned of Kraner's modifications, the parties entered
into the High Tech Bootcamp Agreement (“HTBCA” or
“AMR”). ECF 312, ¶¶ 35-41; see
ECF 312-7 (HTBCA).
purpose of the HTBCA was to “confirm in writing [the
parties'] agreement with respect to the production and
ownership” of SSI's intellectual property and
“to provide for the payment of the production fee by .
. . Topline [, Inc.] to SSI . . . .” ECF 312,
¶¶ 35, 38; see ECF 312-7, ¶ B. The
HTBCA essentially provides, in pertinent part, that neither
Topline, Inc. nor Kraner could register SSI's
intellectual property with the United States Copyright
Office, and that Topline, Inc. and Kraner relinquished any
right independently to produce or reproduce SSI's
intellectual property, or any variation thereof. See
ECF 312-7, ¶ 4-4.2.
claims that, on or about May 13, 2016, it became aware of
Topline's registration of a “work” with the
Copyright Office, over 450 pages in length, called
Building Your Sales Factory. ECF 312, ¶ 45;
see ECF 312-11 (paper format only). SSI received a
certified copy of Building Your Sales Factory from
the Copyright Office on or about August 10, 2016.
Id. ¶ 50. According to SSI, the certified copy
of Building Your Sales Factory included numerous
pages of SSI's intellectual property, which it claims
that it never provided to Topline. Id. ¶ 51.
SSI also avers that Topline's copyright application was
made without its consent, in violation of the HTBCA.
Id. ¶¶ 52, 57. On this basis, SSI filed
the Motion for Leave to File.
asserts four counts in its Amended Counterclaim: breach of
the HTBCA (Count I); breach of the franchise agreement (Count
II); copyright infringement (Count III); and fraud (Count
IV). See ECF 312, ¶¶ 54-80. Building
Your Sales Factory is central to the Amended
Counterclaim. See ECF 312, ¶¶ 54-80.
Court held a telephone scheduling conference with counsel on
December 8, 2016, to address the impact of the filing of a
counterclaim and third-party complaint. See docket.
And, on December 9, 2016, the Court issued an Order governing
the schedule. ECF 311. And, with respect to discovery, ECF
311 provided, in pertinent part, id.:
“Additional discovery, limited to the counterclaim
and third party complaint, shall be completed by April
10, 2017.” (Emphasis added).
February 3, 2017, SSI filed correspondence with Judge
Coulson, to whom the many discovery disputes have been
assigned (see docket, Aug. 18, 2014),  informing him of
a dispute between the parties regarding interrogatories and a
request for document production that SSI propounded on
December 19, 2016. ECF 329. In particular, SSI informed Judge
Coulson that Topline objected to nine of SSI's fifteen
interrogatories and eleven of SSI's thirteen document
requests. ECF 329 at 1-2. According to SSI, id. at
2: “What little information [Topline] provided in
response to the six interrogatories they purported to answer
was de minimis and incomplete because Topline,
[Inc.] and Mr. Kraner have adopted an unreasonably narrow
interpretation of the allegations made against them.”
many other things, SSI requested from Topline, ECF 329-3 at
5. “Documents sufficient to identify any and all orders
for training or other materials or documents you received
from 2005 to the present”;
6. “All documents concerning sales training programs,
manuals, workbooks, videos, audios, powerpoints, or other
materials or documents you created, in whole or in part, from
2005 to the present”; and
7. “Documents sufficient to identify any and all fees
you charged any and all clients or customers from 2005 ...