HUBBELL INDUSTRIAL CONTROLS, INC. and HUBBELL INC., Plaintiffs,
ELECTRO POWER SYSTEMS OF UTAH, INC. and ROY EDWARD VINCENT, JR., Defendants.
MEMORANDUM OPINION AND ORDER
AMY J. ST. EVE, District Judge.
Before the Court are Defendant Electro Power Systems of Utah, Inc.'s ("Electro Power") two motions to compel further discovery responses from Plaintiffs Hubbell Industrial Controls, Inc. and Hubbell Inc. (collectively, "Hubbell"). Electro Power moves to compel Hubbell to (1) provide further responses to two interrogatories seeking identification of Hubbell's alleged trade dress configurations ( see R. 29) and (2) produce unredacted attorney billing records to support Hubbell's damages theory ( see R. 31). For the following reasons, the Court grants in part and denies in part Electro Power's motion to compel further responses to its trade dress interrogatories (R. 29) and denies Electro Power's motion to compel Hubbell to produce unredacted attorney billing records (R. 31) in its entirety.
On October 26, 2013, Hubbell filed this suit against Electro Power, alleging that Electro Power unlawfully attempted to reproduce component parts for Hubbell's braking contactors and misled customers into believing that Electro Power's contactors were genuine Hubbell products. (R. 1, Compl. ¶ 1.) In the operative complaint, Hubbell asserts claims for trademark and trade dress infringement, unfair competition and violation of the Uniform Deceptive Trade Practices Act and the Illinois Consumer Fraud Act. (R. 26, Am. Compl. ¶¶ 26-90.) Hubbell seeks compensatory, treble and punitive damages and to enjoin Electro Power from the continued reproduction, sale and distribution of the allegedly infringing contactors. ( Id. ¶¶ 1, 93.) Hubbell seeks approximately $3 million for legal fees and expenses that Hubbell spent defending against a products liability lawsuit that arose out of the failure of two Electro Power contactors mistaken for Hubbell contactors. (R. 29 at Ex. 2, pp. 4, 16.)
Electro Power issued interrogatories and requests for production of documents to Hubbell on March 21, 2013. ( Id. at 2.) On May 24, 2013, Hubbell served its initial interrogatory responses and written responses to Electro Power's requests for production. ( Id. at Ex. 1; R. 31 at 2.) On July 19, 2013, Hubbell issued supplemental interrogatory responses. (R. 29 at Ex. 2.) Hubbell produced documents responsive to Electro Power's requests on June 4, July 19 and August 12, 2013. (R. 31 at 3.) At issue here are Hubbell's responses to two interrogatories requesting information on Hubbell's alleged trade dress configurations (R. 29) and Hubbell's refusal to produce unredacted attorney billing records related to the Acrelormittal products liability litigation to support its claim for damages (R. 31).
I. Trade Dress Interrogatories
In Interrogatory No. 11, Electro Power requested that Hubbell "describe with particularity the exact elements of the alleged protectable trade dress of Hubbell's alleged trade dress configurations." (R. 29 at Ex. 1, p. 7.) In Hubbell's initial response, it objected to the interrogatory to the extent it called for a legal conclusion and stated, subject to its objection:
[T]he facts evidencing the protectable features of Hubbell's trade dress include, but are not limited to, the specific facts related to the following elements of Hubbell's 5210 contacts, operating coils, and blowout boils (collectively, the "Products"): the color of the Products, their individual components, and packaging: the shape, size and organization of components in the Hubbell 5210 contractors; and the text used on the Products and packaging, including the font, size, color, and specific part numbers of the Products.
( Id. at Ex. 1, pp. 7-8.)
Hubbell supplemented its response on July 19, 2013, further stating:
... [T]he elements of Hubbell's protectable trade dress configurations for the Hubbell 5210 contactors at issue in this case include, but are not limited to, the following: the armature assembly; the stator assembly; the arc shield assembly; the curve and "seesaw" shape of the armature; the shape of the pivot pins with spring clips; the aluminum side plates on the armature; the overall footprint of the contactor; the dark blue operating coils; blue spring; the nameplate that includes the type and size of contactor, volts, amps, contactor part number, serial number, CSA logo, and Hubbell name; and the overall orientation of the individual contactor parts on the contactor base.
... [T]he elements of Hubbell's protectable trade dress configurations for Hubbell's blowout coils at issue in this case include, but are not limited to, the following: the trapezoidal shape of the bar; the rounded corners of the bar; the use of ETP copper and appearance it gives; and the footprint of the Hubbell blowout coil that makes it compatible with Hubbell contactors.
... [T]he elements of Hubbell's protectable trade dress configurations for the Hubbell's operating coils at issue in this case include, but are not limited to, the following: the dark blue color of the operating coil; the part number of the operating coil; the presence of a date code on the operating coil; the anti-rotation feature; the location of the anti-rotation feature; and the footprint of the Hubbell operating coil that makes it compatible with Hubbell contactors.
( Id. at Ex. 2, pp. 9-10.) Hubbell stated in its response brief that it intends to supplement its trade dress definition again "to include [Hubbell's] trademark and the overall appearance of its contactor, ...