The opinion of the court was delivered by: RONALD GUZMAN, District Judge
MEMORANDUM OPINION AND ORDER
Ocean Atlantic Woodland Corporation ("Ocean Atlantic") has sued DRH
Cambridge Homes, Inc. ("Cambridge"), Cowhey, Gundmundson, Leder, Ltd
("Cowhey"), and Pugsley & LaHaie, Ltd ("Pugsley") (collectively
"defendants") alleging copyright infringement, unfair competition and
deceptive trade practices, false designation of origin, conversion and
unjust enrichment. This Court referred all discovery matters to
Magistrate Judge Bobrick. Defendants filed a joint motion for protective
order, bifurcation of discovery, and for other relief. Magistrate Judge
Bobrick denied the motion to bifurcate and granted in part and denied in
part defendants' joint motion for protective order and Ocean Atlantic's
motions to compel. Ocean Atlantic timely filed objections to Magistrate
Judge Bobrick's Memorandum Order. Presently pending before this Court are
Ocean Atlantic's objections to Magistrate Judge Bobrick's order, which
include: (1) objections to the discovery rulings limiting the scope of
potential damages; (2) objections to the denial of production of all
documents used by defendants in responding to Ocean Atlantic's
interrogatories; (3) objections to the denial of production of documents
relating to the existence of other possible design plans considered by
Cambridge for the development site; (4) objections to the denial of the
identities and communications concerning Cambridge's customers and
potential customers for the developments site. For the reasons provided in
this Memorandum Opinion and Order the Court stays Ocean Atlantic's
objections to Magistrate Judge Bobrick's Memorandum Order relating to
damages until after resolution of the issue of liability, rejects Ocean
Atlantic's remaining objections to the Memorandum Order, and sua sponte
orders bifurcation of discovery.
The factual background of this case has been described by this Court in
detail in Ocean Atl Woodland Corp. v. DRH Cambridge Homes, Inc., No. 02 C
2523, 2003 WL 1720073, at * 1 (N.D. Ill. Mar. 31, 2003). Therefore, the
facts here will be limited to those necessary to understand the basis of
On April 9, 2002 Ocean Atlantic acquired copyright ownership in two
development plans for the Liberty Grove development in the Village of
Plainfield. These development plans were previously incorporated into the
annexation agreement for the Liberty Grove development by the Village of
Plainfield, Ocean Atlantic lost its right to develop the land under the
development plans when it attempted to close on the sale of the land
late. See Elda Arnhold & Byzantio, L.L.C. v. Ocean Atl Woodland
Corp., 284 F.3d 693, 710 (7th Cir. 2002). Ocean Atlantic now asserts
copyright infringement of the development plans by the defendants in
their development of Liberty Grove.
Before Magistrate Judge Bobrick were defendants' motion for a
protective order and Ocean Atlantic's motion to compel answers to
interrogatories and production of documents. At
issue here are Ocean Atlantic's objections to Magistrate Judge Bobrick's
Memorandum Order granting in part and denying in part the motion for
protective order and the motion to compel answers.
I. Bifurcation of Discovery
On November 26, 2002, the defendants filed a motion pursuant to Rule
42(b) requesting the court to bifurcate liability and damages discovery.
The defendants requested that the Court decline to allow the parties to
enter into damages discovery until liability issues were determined.
(Defs.' Joint Mot, Protective Order, Bifurcation Disc. Other Relief
("Defs.' Joint Mot.") at 6.) On December 20, 2002 the defendants' motion
relating to bifurcation of discovery was denied. This Court now
reconsiders sua sponte the December 20, 2002 ruling denying bifurcation
of discovery and grants bifurcation of discovery.
Whether to bifurcate discovery is a matter committed to the discretion
of the trial court. Moriarty v. LSC Ill. Corp., No. 98 C 7997, 1999 WL
1270711, at *7 (N.D. Ill. Dec. 29, 1999); see generally Sattar v.
Motorola, Inc., 138 F.3d 1164, 1171 (7th Cir. 1998) ("district courts
have broad discretion in matters related to discovery"); Priority
Records, Inc. v. Bridgeport Music, Inc., 907 F. Supp. 725, 734 (S.D.N.Y.
1995) (recognizing that district judge has discretion to bifurcate
discovery); Am. Nurses Ass'n. v. State of Ill., No. 84 C 4451, 1986 WL
10382, at *2 (N.D. Ill. Sept. 12, 1986) ("the decision to bifurcate
discovery is within the discretion of the district court and depends on
the circumstances of the individual case"). In accordance with the broad
language of Rule 42(b), the district court is vested with discretion in
determining whether to try issues separately, Keyes Fibre Co. v.
Packaging Corp. of Am., 763 F. Supp. 374, 375 (N.D. Ill. 1991) (internal
citations omitted). Rule 42 specifies the factors to be weighed when
considering whether or not to bifurcate: convenience, the avoidance
of prejudice, expedition and economy. Fed.R.Civ.P. 42(b).
The Court has the inherent power to control its docket. Separating the
issues of liability and damages for the purposes of discovery will avoid
unnecessary time and expense and further the interest of expedition by
expediting the decision on liability. A verdict of no liability for
infringement would render discovery on the damages issue unnecessary. In
the instant case, this Court has already found, with regard to the
preliminary injunction, that, "[t]he record in this case . . . presents
substantial issues which bear on Ocean Atlantic's likelihood of proving
infringement. . . ." Ocean All. Woodland Corp. v. DRH Cambridge Homes,
Inc., No. 02 C 2523, 2003 WL 22225594, at *2 (N.D. Ill. Sept. 24, 2003).
Thus, should plaintiff fail to establish liability in this case, the
savings in time and costs with regard to discovery and discovery
management would benefit both the parties and the Court.
It is clear, based on the breadth of the discovery requests, that the
defendants would expend substantial amounts of time and resources
responding to the discovery requests on damages. Continuation of
discovery on the issue of damages would necessitate considerable
operating costs in hiring accountants, researching, and calculating at a
time when the development site is not even complete. Because, as noted
above, the distinct possibility exists that the issue of damages will
never be reached, bifurcating discovery as to liability from that of
damages will serve the goals of convenience, expedition and economy.
Moreover, evidence necessary to establish liability will nominally, if at
all, overlap with evidence relating to damages and therefore the risk of
duplication and delay is minimal.
Accordingly, the discovery of this case will be bifurcated into two
phases. In the first, all discovery on liability will be completed. The
defendants have already notified this Court that
they will seek summary judgment as soon as discovery is complete.