United States District Court, N.D. Indiana, Hammond Division
OPINION AND ORDER
R. CHERRY MAGISTRATE JUDGE.
matter is before the Court on a Defendants' Motion to
Compel the Depositions of Scott Colosi and Chris Jacobsen [DE
159] filed by Defendants on February 16, 2017. Plaintiffs
Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC filed
a response on March 7, 2017, and Plaintiffs filed a reply on
March 13, 2017.
their Second Amended Complaint, Plaintiffs allege that
Defendants infringed on Plaintiffs' intellectual property
rights, including trade dress, trademark, and copyright
requested depositions of Texas Roadhouse President Scott
Colosi and Chief Marketing Officer Chris Jacobsen. Plaintiffs
refused to make Colosi and Jacobsen available for
depositions. As a result, Defendants filed the instant
Rule of Civil Procedure 26(b)(1) defines the scope of
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). District courts have broad
discretion in matters relating to discovery. Patterson v.
Avery Dennison Corp., 281 F.3d 676, 681 (7th Cir. 2002).
Federal Rule of Civil Procedure 30(a) provides that "[a]
party may, by oral questions, depose any person, including a
party, without leave of court except as provided in Rule
30(a)(2)." Fed.R.Civ.P. 30(a)(1). No party has indicated
that any of the exceptions of Rule 30(a)(2) apply in this
light of the potential cost and burden in deposing
high-ranking executives, it is appropriate in some
circumstances to restrict efforts to depose senior
executives. See Patterson v. Amery Dennison Corp.,
281 F.3d 676, 681-82 (7th Cir.2002). In determining whether
to compel such a deposition, courts often focus on whether
the senior executive possesses unique, specialized, or
personal knowledge relevant to the litigation. See e.g.,
id.; In re Pradaxa Prods. Liab. Litig., No.
3:12-md-02385, 2014 WL 257566, at *2 (S.D. Ill. Jan 23,
present evidence that Colosi publicly stated in a review that
a particular construction company knows the needs of Texas
Roadhouse. Many of the trade dress elements at the heart of
this case are construction matters at issue in this review.
By publicly stating that this company knows Plaintiffs'
needs, Colosi is implying that he also knows these needs
because this knowledge is a logical part of being able to
judge others' knowledge of the same. Defendants also
present a declaration made under penalty of perjury by Colosi
in a different proceeding, but that declaration is made based
on personal knowledge and on review of company
Jacobsen, Defendants only argue that Jacobsen oversees a
large marketing organization and that he is therefore
uniquely qualified to discuss Plaintiffs' marketing
efforts related to protecting the Texas Roadhouse brand.
Defendants assume that Jacobsen must know something relevant,
but they have not provided any evidence to suggest that this
is the case.
argue that the depositions would be "a costly waste of
time, " (Resp. at 7, ECF No. 178), and impose an undue
burden on Plaintiffs' business. Plaintiffs disclosed
neither Colosi nor Jacobsen as persons with knowledge of the
relevant facts and issues in the case. Plaintiffs have
submitted affidavits from Colosi and Jacobsen stating that
neither executive has unique or personal knowledge about the
facts underlying the claims and defenses in this lawsuit.
Further, Jacobsen, in his affidavit, identifies two employees
who are able to testify about relevant marketing matters in
this case. However, Plaintiffs chose to initiate this
lawsuit, so the financially and emotionally taxing
undertaking of litigating in federal court is of their own
making. See Modern Fence Techs., Inc. v. Qualipac Home
Improvement Corp., No. 08-C-0543, 2011 WL 2532486, at
*10 (E.D. Wis. June 24, 2011).
amount in controversy in this case is not specifically noted
by either party in the briefing, but this case involves two
national restaurant chains.
deposition of Colosi is proportional to the needs of the
case, considering the importance of the trade dress elements
to this case, the amount in controversy, Defendants'
showing that Colosi has personal knowledge relevant to this
matter, and no other specific individuals being identified as
having this knowledge.
deposition of Jacobsen is not proportional to the needs of
the case. Though marketing matters regarding the trade dress
elements is important to the resolution of this case, the
importance of the deposition in resolving this matter is low
in light of the evidence showing that Jacobsen has no unique
or personal knowledge of the matter. The burden on Plaintiffs
to produce Jacobsen would be unduly great, and Jacobsen has
identified others who can testify on the issue, so there is
another avenue by which Defendants can gain access to this
information. To the extent Defendants seek the business
reasoning behind Plaintiffs' protection of their ...