Dmarcian, Inc. v. DMARC Advisor BV

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
ASHEVILLE DIVISION
CIVIL CASE NO. 1:21-cv-00067-MR
DMARCIAN, INC., 	)
)
Plaintiff, 	)
)
vs. 	) 	O R D E R
)
DMARC ADVISOR BV, 	)
f/k/a dmarcian Europe BV, 	)
)
Defendant. 	)
________________________________ )
THIS MATTER 	is before the Court on the Defendant’s Motion to
Compel [Doc. 225].
I. 	BACKGROUND
On April 30, 2023, the Defendant DMARC Advisor served the Plaintiff
dmarcian, Inc. with the Defendant’s Third Set of Requests for Production
(“Requests for Production”). 	[Doc. 226-1]. 	On May 4, 2023, the Defendant
served its First Set of Interrogatories (the “Interrogatories”). [Doc. 221-1].
The Plaintiff requested, and the Defendant agreed to, extensions of
both response deadlines until June 13, 2023. 	[See Doc. 226-2 at 3]. 	The
Plaintiff then requested another extension of the interrogatory response
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deadline, and the Defendant stipulated that those responses would be due
on June 16. [See id. at 2].
On June 13, 2023, the Plaintiff served its Response to the Defendant’s
Requests for Production. 	[Doc. 226-3]. 	However, the Plaintiff did not
produce any documents in response to those Requests at that time. 	On
June 	16, 	2023, 	the 	Plaintiff 	served 	its 	Response 	to 	the 	Defendant’s
Interrogatories. [Doc. 221-2]. Thereafter, the Defendant identified a number
of deficiencies in the Plaintiff’s interrogatories responses. 	[Doc. 221-3].
While the parties met and conferred for several weeks over these discovery
requests, they were not able to come to a resolution of their disputes.
The Defendant filed the present Motion to Compel on July 24, 2023.
[Doc. 227]. 	In its Response filed on August 8, 2023, the Plaintiff indicated
that it intended to produce further documents and provide supplemental
interrogatory responses by the end of August. 	[Doc. 236]. 	The Plaintiff
served its Supplemental Response on August 30, 2023. 	[Doc. 265-1]. 	In
light of the Plaintiff’s supplementation of its discovery responses, the Court
ordered the parties to file supplemental briefs regarding the status of their
discovery disputes. [Doc. 257]. The parties complied with the Court’s Order
and filed their supplemental briefs on October 4, 2023. [Docs. 266, 268].
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II. 	STANDARD OF REVIEW
Rule 26 of the Federal Rules of Civil Procedure provides, in pertinent
part, as follows:
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).
Under Rule 37 of the Federal Rules of Civil Procedure, “a party may
move for an order compelling disclosure or discovery.” 	Fed. R. Civ. P.
37(a)(1). “[T]he party or person resisting discovery, not the party moving to
compel discovery, bears the burden of persuasion.” 	Kinetic Concepts, Inc.
v. ConvaTec Inc., 268 F.R.D. 226, 243 (M.D.N.C. 2010). 	The decision to
grant or deny a motion to compel is generally an issue within the broad
discretion of the trial court. 	See Lone Star Steakhouse & Saloon, Inc. v.
Alpha of Va., Inc., 43 F.3d 922, 929 (4th Cir. 1995).
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III. 	DISCUSSION
A. 	Responses to Interrogatories
The Defendant contends that the Plaintiff’s supplemental responses
did not address the deficiencies previously identified by the Defendant in its
Motion to Compel. 	Specifically, the Defendant argues that the Plaintiff’s
responses to Interrogatory Nos. 1, 3, 4, and 6-9 are still deficient and that
the Court should compel the Plaintiff to make full and complete responses to
these interrogatories. 	[Doc. 268]. 	The Court will address each of these
interrogatories in turn.
Interrogatory No. 1: 	The Defendant’s first interrogatory asks “when
(date) and where (city and country)” the Plaintiff contends that the parties’
alleged contract was formed. [Doc. 222-1 at 3]. In its original response, the
Plaintiff provided a lengthy narration of the various communications and
interactions between Tim Draegen (on behalf of the Plaintiff) and Martijn
Groeneweg (on behalf of the Defendant) from 2105 through 2016. 	In its
supplemental response, the Plaintiff further stated, in pertinent part, as
follows:
The last act required to form the primary contract of
cooperation took place in November 2105 based on
Tim Draegen’s communications from North Carolina,
as did the later written memorialization of the terms
which took place over a period of time as to various
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aspects of the parties’ relationship. 	As to those
written 	communications, 	the 	answer 	to 	this
interrogatory 	may 	be 	determined 	by 	examining,
auditing, compiling, abstracting, or summarizing a
party’s 	business 	records 	(including 	electronically
stored information), and the burden of deriving or
ascertaining 	the 	answer 	will 	be 	substantially 	the
same for either party; accordingly, pursuant to Rule
33(d), 	and 	in 	addition 	to 	the 	documents 	and
information 	already 	produced 	and 	cited 	in 	Court
proceedings, 	Plaintiff[’s] 	production 	of 	documents
from 	which 	this 	response 	may 	be 	ascertained
includes electronic communications between Plaintiff
and Mr. Groeneweg, primarily exchanged in 2015
and 2016.
[Doc. 265-1 at 3].
The Defendant contends that this supplemental response is deficient
in that it fails to identify either the written 2015 communication that forms the
allegedly breached Contract or the city from which such communication was
sent. [Doc. 268 at 2].
A party served with an interrogatory may, in lieu of a written response,
produce 	the 	party’s 	business 	records 	“if 	the 	burden 	of 	deriving 	or
ascertaining the answer will be substantially the same for either party.” Fed.
R. Civ. P. 33(d). In so doing, the responding party must specify[ ] the records
that must be reviewed, in sufficient detail to enable the interrogating party to
locate and identify them as readily as the responding party could.” 	Fed. R.
Civ. P. 33(d)(1).
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Here, the Plaintiff’s response 	affirmatively states that the last act
forming the contract took place in North Carolina. 	The Defendant does not
explain why the identification of the particular city in North Carolina from
which this communication originated is necessary or relevant to any claims
or defenses in this action.
The 	Plaintiff 	also 	asserts 	that 	the 	answer 	to 	the 	Defendant’s
interrogatory 	may 	be 	readily 	determined 	from 	an 	examination 	of 	the
documents produced, particularly the electronic communications between
Draegen and Groeneweg. 	The Defendant does not contend that these
communications have not been produced to date or that the answer to its
interrogatory is not readily ascertainable from the records that already have
been produced. 	Further, it appears that the burden of ascertaining the
answer from these documents would be substantially the same for either
party. 	See Fed. R. Civ. P. 33(d). 	For these reasons, the Court concludes
that the Plaintiff’s response, as supplemented, 	to Interrogatory No. 1 is
sufficient. 	The Defendant’s motion to compel a further response to this
interrogatory is therefore denied.
Interrogatory No. 3: 	The Defendant’s third interrogatory asks the
Plaintiff to identify all differences between the allegedly infringed “dmarcian
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Code as it existed on February 9, 2012” and later copies of that Code. [Doc.
221-1 at 3].
In its supplemental response, the Plaintiff refers to the report of its
expert, Dr. John Levine for a discussion of the differences between the
Plaintiff’s code as of February 9, 2012 and June 18, 2012. [Doc. 265-1 at 6].
The Plaintiff further notes that the differences between the June 18, 2012
version of the code and the updated code that was copyrighted may be
ascertained through an examination of the change logs or commit logs
housed in the GIT repository from the source code that the Plaintiff already
has made available for inspection by the Defendant. 	[Id.]. 	While the
Defendant argues that the Plaintiff should be required to give a more direct
answer, the Court finds that the Plaintiff’s response, as supplemented,
adequately answers the interrogatory posed. 	The Defendant’s motion to
compel a further response as to this interrogatory is therefore denied.
Interrogatory No. 4: 	The Defendant’s fourth interrogatory asks the
Plaintiff to identify, for the 2021 work that was copyrighted, “all previously
published code, previously registered code, code in the public domain, and
copyrightable code owned by any person or entity other than” the Plaintiff.
[Doc. 221-1 at 4]. In its supplemental response, the Plaintiff asserts that “the
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underlying source Code that operated the customer facing, public SaaS
platform was never published.” 	[Doc. 265-1 at 7].
The Defendant argues that it cannot be determined from the Plaintiff’s
response “what code [the Plaintiff] contends was previously published,
previously registered, in the public domain, or owned by any person or entity
other than [the Plaintiff].” [Doc. 268 at 4]. 	However, a plain reading of the
Plaintiff’s response yields that the Plaintiff is taking the position that none of
the code was ever published and therefore was never registered, in the
public 	domain 	or 	owned 	by 	another 	entity. 	The 	Plaintiff’s 	response
sufficiently answers the interrogatory posed and therefore, the Defendant’s
motion to compel is denied with respect to this interrogatory.
Interrogatory Nos. 6-9: 	Interrogatory Nos. 6 through 9 relate to the
Defendant’s alleged interference with contracts in the United States and the
customer confusion. 	[Doc. 221-1 at 4-5]. 	In response, the Plaintiff states
that the answers to these interrogatories are readily ascertainable from the
documents that the Plaintiff has produced as well as the Defendant’s own
business records. 	[Doc. 265-1 at 8-11]. 	The Plaintiff did not supplement
these responses.
The 	Defendant 	contends 	that 	the 	Plaintiff’s 	responses 	are 	“non-
responsive boilerplate” and that further and more complete responses
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should be compelled. [Doc. 227 at 10]. The Defendant, however, does not
contend that the answers it seeks are not readily ascertainable form the
documents provided by the Plaintiff or the documents within the Defendant’s
own control. 	The Defendant’s motion to compel further responses to these
interrogatories are therefore denied.
B. 	Requests for Production
The Defendant argues that the Plaintiff’s document production remains
incomplete and that this Court should compel the Plaintiff to make a complete
production in response to all of the Defendant’s requests. [Doc. 268 at 4].
The Defendant, however, offers only two examples of deficiencies in
the Plaintiff’s production. 	First, the Defendant argues that, in response to
Request 	for 	Production 	No. 	92, 	the 	Plaintiff 	has 	produced 	only 	five
documents that reference Clarizen, one of the Plaintiff’s U.S. customers, and
that four of those documents are merely copies of this Court’s Order and
Preliminary Injunction. The Defendant contends that this meager production
is inconsistent with the Plaintiff’s focus throughout this litigation on the
Defendant’s alleged theft of Clarizen as a customer, as well as other
evidence in the record that indicates that such additional documents may
exist, such as evidence that the Plaintiff prepared a quotation for Clarizen in
August 2018. 	[Id. at 4, 5 n.2]. 	The Plaintiff makes no specific response to
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the Defendant’s contention regarding the production of documents related to
Clarizen. [See Doc. 266].
To the extent that any documents 	responsive to the Defendant’s
Request for Production No. 92 remain in the Plaintiff’s possession or control
and have yet to be produced, the Plaintiff will be directed to provide the
Defendant with such documents within fourteen (14) days of the entry of this
Order.
The Defendant’s second example of the deficiency in the Plaintiff’s
production is that the Plaintiff has not yet produced a copy of the correction
that it filed with the U.S. Copyright Office in October 2023, despite the
Defendant’s request for any documents related to the Plaintiff’s copyright
registration. 	[Doc. 268 at 5]. 	Notably, the Defendant’s request for “[a]ll
document submitted to or received from the U.S. Copyright Office related to”
the Plaintiff’s copyright was set forth in the Defendant’s First Set of Requests
for Production, which was not the subject of the Defendant’s Motion to
Compel. 1 Accordingly, the Defendant’s motion to compel is denied with
respect to this particular request.
1 The Defendant also appears to argue that the correction should have been produced in
response to one of its requests set forth in its Third Set of Requests for Production. [Doc.
268 	at 	5]. 	However, 	the 	specific 	request 	cited 	asks 	only 	for 	“documents 	and
communications supporting or otherwise relevant to the allegation that ‘Defendant has
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C. 	Request for Fees
The Defendant requests an award of fees related to the filing of the
motion to compel. [Doc. 227 at 10-11].
Rule 37 of the Federal Rules of Civil Procedure provides, in pertinent
part, as follows:
If 	the 	motion 	[to 	compel] 	is 	granted—or 	if 	the
disclosure or requested discovery is provided after
the motion was filed—the court must, after giving an
opportunity to be heard, require the party . . . whose
conduct 	necessitated 	the 	motion, 	the 	party 	or
attorney advising that conduct, or both to pay the
movant's reasonable expenses incurred in making
the motion, including attorney's fees. But the court
must not order this payment if:
(i) the movant filed the motion before attempting in
good 	faith 	to 	obtain 	the 	disclosure 	or 	discovery
without court action;
(ii) the opposing party's nondisclosure, response, or
objection was substantially justified; or
(iii) other circumstances make an award of expenses
unjust.
Fed. R. Civ. P. 37(a)(5)(A).
solicited third parties to purchase Plaintiff’s copyrighted software.’” [Doc. 226-1 at 9]. The
Defendant offers no explanation as to how the correction submitted by the Plaintiff to the
Copyright Office would be relevant to this particular request.
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As noted above, the Defendant’s motion to compel has been granted
only to the extent that the Plaintiff is being compelled to produce any
documents that have not already been produced with respect to Clarizen. In
all other respects, the motion to compel has been denied. 	Under these
circumstances, the Court determines in its discretion that an award of fees
would be unjust. Accordingly, the Defendant’s request for an award of fees
is denied.
O R D E R
IT 	IS, 	THEREFORE, 	ORDERED 	that 	the 	Defendant’s 	Motion 	to
Compel [Doc. 225] is GRANTED IN PART and DENIED IN PART as stated
in this Order.
IT IS FURTHER ORDERED that, within fourteen (14) days of the entry
of this Order, the Plaintiff shall produce any documents responsive to the
Defendant’s Request for Production No. 92 which remain in the Plaintiff’s
possession or control and have yet to be produced.
IT IS FURTHER ORDERED that the Defendant’s request for an award
of fees incurred in prosecuting this motion [Doc. 225] is DENIED.
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IT IS SO ORDERED.
Signed: February 7, 2024
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