United States District Court, N.D. Indiana, Hammond Division
OPINION AND ORDER
E. MARTIN MAGISTRATE JUDGE
matter is before the Court on a Motion to Compel Pontoon
Boat, LLC's Responses to Requests for Production 6 and 12
[DE 52], filed October 18, 2018. Plaintiff The Art of Design
seeks an order compelling Defendant Pontoon Boat to produce
unredacted invoices for the sales of boats bearing
Plaintiff's allegedly copyright-protected images.
Defendant filed a response on October 31, 2018, and Plaintiff
replied on November 14, 2018.
creates artwork that can be used in boat design, and
Defendant sells boats. Plaintiff alleges that Defendant sold
boats that incorporated Plaintiff's “Shatter
Graphic” design, or substantially similar designs,
without Plaintiff's authorization. Plaintiff sued under
the Copyright Act, which provides that “[t]he copyright
owner is entitled to recover the actual damages . . . and any
profits of the infringer that are attributable to the
infringement. . . . [T]he infringer is required to prove his
or her deductible expenses and the elements of profit
attributable to factors other than the copyrighted
work.” 17 U.S.C. § 504(b). Plaintiff asked
Defendant for records of the sales of the disputed boats, and
documents supporting any claim that Defendant's profit
from the boats was not attributable to the designs. Defendant
produced heavily redacted invoices, revealing the
“line-item” price Defendant charged customers for
the particular designs, but not the price of the rest of the
boat. Plaintiff argues the redacted information is necessary,
because Defendant “bundled” the design with the
boat, and therefore Defendant's profit from the design
cannot be ascertained from the line-item price of the design.
Defendant argues that the redacted invoices, showing what
customers were charged for the designs, demonstrate the
profit from the designs, and what the rest of the boat costs
Rule of Civil Procedure 26(b)(1) permits discovery
“regarding any nonprivileged matter that is relevant to
any party's claim or defense.” Fed.R.Civ.P.
26(b)(1). Relevance is “construed broadly to encompass
any matter that bears on, or that reasonably could lead to
other matter that could bear on, any issue that is or may be
in the case.” Oppenheimer Fund, Inc. v.
Sanders, 437 U.S. 340, 351 (1978) (citing Hickman v.
Taylor, 329 U.S. 495, 501 (1947)). A party objecting to
the discovery request bears the burden of “show[ing]
why [that] particular discovery request is improper.”
McGrath v. Everest Nat. Ins. Co., 625 F.Supp.2d 660,
670 (N.D. Ind. 2008). The Court has broad discretion when
deciding discovery matters. Thermal Design, Inc. v. Am.
Soc'y of Heating, Refrigerating & Air-Conditioning
Eng'rs, Inc., 755 F.3d 832, 837 (7th Cir. 2014);
Rennie v. Dalton, 3 F.3d 1100, 1110 (7th Cir.
prove damages in a copyright case, the copyright owner must
prove the “infringer's gross revenue, ” and
the infringer must prove “the elements of profit
attributable to factors other than the copyrighted
work.” 17 U.S.C. § 504(b). Plaintiff argues that
the sale of the boat itself constitutes the “gross
revenue, ” and Defendant must show how much profit from
the sale of the boat is attributable to factors other than
the design. Defendant argues that the price it charged
customers for the design, not the boat itself, is the
“gross revenue, ” and therefore the price of the
boat itself is irrelevant. As the non-movant, it is
Defendant's burden to show that Plaintiff's
interpretation is “improper.” McGrath,
625 F.Supp. at 670.
has not met that burden. Defendant cites Bell v.
Taylor, 827 F.3d 699 (7th Cir. 2016), to argue that any
profits beyond the line item price are “indirect
profits, ” for which there is not enough of a
“causal nexus” with the alleged infringement to
compel discovery. In Bell, the plaintiff sued
computer, real estate, and insurance businesses that
displayed a copyrighted photo of a city skyline on their
websites. Id. at 703. The plaintiff sought the
defendants' tax returns, to determine whether the
businesses overall had made or lost money during the time the
photos were online. Id. The district court denied
the plaintiff's motion to compel, finding that any
connection between the photo and the defendants' profits
was “pure speculation, ” and the Seventh Circuit
Court of Appeals affirmed. Id. at 710-711; Bell
v. Taylor, No. 1:13-CV-00798-TWP, 2014 WL 2581175, at *1
(S.D. Ind. June 9, 2014). In this case, Plaintiff seeks
information regarding the revenue gained from particular
items bearing the allegedly infringing design. The connection
between the design and the boat is far from
“speculation”: the design is painted on the boat.
argues that additional discovery is not appropriate unless
Plaintiff provides argument “to demonstrate how the
[requested information] would allow him to develop a causal
nexus” between the design and the profit from the sale
of the boat. Bell, 827 F.3d at 710. Plaintiff
provides that argument - it argues that the infringing design
was “bundled” and sold together with the boat.
The Seventh Circuit has recognized that “tracing the
profits to another product” can be necessary to provide
an accurate measure of damages when the products are bundled.
See Bucklew v. Hawkins, Ash, Baptie & Co., LLP,
329 F.3d 923, 933 (7th Cir. 2003) (“Suppose a defendant
had copied a copyrighted book verbatim and he then offered to
sell copies of the book for nothing to anyone who would pay
him $25 for a bookmark that had cost him 10 cents and had a
market value of 50 cents. To hold in such a case that the
defendant's profits from infringement were zero would
approve a formula for evading copyright law.”).
offers evidence that the design was linked with the boat as
part of a broader marketing strategy for the boat. Plaintiff
cites to narration in a marketing video produced by
Defendant: “What this boat [bearing the disputed image]
represents is the future of our business. This is the visual
direction that we're taking our business. . . . We
already have the sexiest boat in the pontoon industry . . .
we gave it a Dean Loucks paint job.” Moreover, in
considering a discovery motion, the Court does not need to
find that Defendant bundled the design and the boat, or that
Defendant may have gained additional profit from the design
beyond the line-item prices provided by Defendant. Discovery
is “construed broadly to encompass any matter that
bears on . . . any issue that is or may be in the
case.” Oppenheimer, 437 U.S. at 351. For that
reason, and given that Plaintiff's requests relate to the
sale of boats that bore the disputed design, the Court finds
that Defendant has not met its burden to show that the
request is irrelevant or improper.
reasons described above, the Court hereby
GRANTS the Motion to Compel Pontoon Boat,
LLC's Responses to Requests for Production 6 and 12 [DE
52]. Because the motion to compel is granted, “the
court must, after giving an opportunity to be heard, require
the party . . . whose conduct necessitated the motion . . .
to pay the movant's reasonable expenses incurred in
making the motion, including attorney's fees.”
Fed.R.Civ.P. 37(a)(5)(A). Accordingly, the Court
ORDERS Plaintiff to file, on or before
December 20, 2018, an itemization
of its costs and fees incurred in making the motion to
compel, with Defendants to respond on or before
January 3, 2019, and Plaintiff to
file a reply, if any, on or before January 10,
 According to the First Amended
Complaint, Dean Loucks was the original author of the
disputed image, and assigned his rights in the ...