United States District Court, Southern District of Indiana, Indianapolis Division
ORDER ON PLAINTIFF’S MOTION FOR PROTECTIVE ORDER
Debra McVicker Lynch United States Magistrate Judge
This matter is before the court on a motion for protective order by plaintiff American Petroleum Institute (“API”) that addresses discovery disputes related to an upcoming hearing on API’s motion for preliminary injunction. (Dkt. 52). The hearing is set for April 10, 2014. This order on the parties’ discovery disputes is confined to the preliminary injunction context.
The court first describes the nature of the claims in this litigation and the preliminary injunctive relief sought by API. It will then provide a ruling on each discovery dispute.
Nature of the Claims and Preliminary Injunctive Relief
Plaintiff American Petroleum Institute (“API”) is a trade association for the petroleum and natural gas industry. (Complaint, ¶ 5). For many years, it has published engine oil standards for passenger vehicle engines and heavy-duty diesel engines. (Id., ¶ 11). It also operates a program under which it permits engine oil marketers whose products are properly tested and certified to claim that their oils meet certain API performance standards and to affix certain trademarks to their engine oil products. (See Id . at ¶¶ 12-17). The marks include (a) marks with a starburst design and that bear the words “American Petroleum Institute” and “Certified, ” id. ¶¶ 18-21, and (b) marks with a donut design designating engine oils certified for certain motor vehicles, id., ¶¶ 22-25.
Defendants Bullseye Automotive Products, Inc. and Bullseye Lubricants, Inc. are the same company and defendant Carlos Silva is its president. (Id., ¶¶ 6-7). The court refers to them collectively as “Bullseye.” API alleges that Bullseye produces or markets or sells motor engine oil and has affixed labels to its motor oils to make it appear that the oils have been certified by API even though the oils do not meet API’s standards. API has sued Bullseye for trademark infringement, trademark counterfeiting, trademark dilution, false advertising, and unfair competition under the Lanham Act. It also brings Indiana state law claims.
API seeks a preliminary injunction that (a) enjoins Bullseye from using labeling on its products that infringe API’s marks, are confusingly similar to API’s marks, or otherwise suggest that Bullseye’s products meet API’s standards and (b) prohibits Bullseye “temporarily” from producing any engine oil “until it has shown that the engine oils can be accurately labeled as safe for use in automobiles that are currently on the nation’s roads.” (See Motion for Preliminary Injunction, Dkt. 20).
One defense Bullseye intends to raise at the preliminary injunction hearing is that API has misused its trademarks in violation of the antitrust laws, and that such misuse should prevent API from enforcing its marks. Bullseye contends that this defense is available under Section 33(b)(7) of the Lanham Act, 15 U.S.C. § 1115(b)(7). Bullseye’s theory is that API has used, and is using, its trademark rights to coerce some manufacturers and sellers of motor oils to agree to cease business and that API’s exclusion of sellers from the market constitutes a per se violation of the antitrust laws. API counters that Bullseye did not raise this defense in its answer and that, in any event, 15 U.S.C. § 1115(b)(7) does not in fact strip a trademark owner of his trademark. API also argues that Bullseye’s antitrust defense is without merit as a matter of law.
The court does not now resolve this legal issue. It does take into account, however, that Bullseye did not clearly in its answer alert API to an antitrust defense. Bullseye’s later answers to interrogatories described alleged misconduct by API in prior trademark enforcement actions to extract agreements from engine oil manufacturers to stop selling their oil, but Bullseye also did not clearly indicate there an antitrust defense to infringement. Because of the relatively late-breaking disclosure of an antitrust defense, the court will limit the discovery that must be provided before the preliminary injunction hearing. The court does not foreclose the possibility that API could be required to provide additional discovery after the preliminary injunction issues are decided.
API’s motion for protective order concerns four issues: (1) API’s intention to present some evidence via affidavits at the preliminary injunction hearing; (2) Bullseye’s intention to call API’s lawyers as witnesses at the preliminary injunction hearing or seek their depositions in advance of the hearing; (3) Bullseye’s discovery requests regarding API’s assertion of trademark rights against other alleged infringers; and (4) documents about a man named Randy Wegner.
Evidence by Affidavit
API seeks a ruling that it may use affidavits at the preliminary injunction hearing to present testimony by certain persons regarding their purchases of engine oils marketed and sold by Bullseye. The court GRANTS that request. See Fed. R. Civ. P.43(c). However, API must serve copies of the affidavits on Bullseye in ...