United States District Court, E.D. Louisiana
ANNIE SLOAN INTERIORS, LTD.
JOLIE DESIGN & DÉCOR, INC., AND JOLIE HOME, LLC
ANN VIAL LEMMON, JUDGE.
ORDER AND REASONS
VAN MEERVELD, UNITED STATES MAGISTRATE JUDGE.
the Court is the Motion to Quash Subpoena filed by defendants
Jolie Design & Décor, Inc. (“JDD”),
Jolie Home, LLC (“JHL”), and Lisa Rickert. (Rec.
Doc. 293). The subpoena at issue was served by plaintiff
Annie Sloan Interiors, Inc. (“ASI”) on non-party
CounterTake, LLC. Because the subpoena seeks relevant
documents that will not be burdensome for CounterTake to
produce and because the confidentiality concerns raised by
the Defendants can be addressed by use of the attorneys'
eyes only designation procedure provided for by the
Protective Order in this case, the Motion to Quash is DENIED.
CounterTake shall produce the requested documents, provided
that Defendants may impose confidentiality designations
pursuant to the Protective Order and may redact pricing
information from the invoices and purchase orders produced.
The documents shall be produced to ASI within ten days. Oral
argument set for December 19, 2018, is CANCELLED.
designs and manufactures paints and associated products under
the trademarks ANNIE SLOAN® and CHALK PAINT®.
Beginning in 2010, JDD, a company founded by Lisa Rickert,
served as ASI's exclusive distributor of CHALK PAINT®
in the United States. That relationship deteriorated over
time. ASI filed this lawsuit in November 2017, seeking, among
other things, a declaration that the distributorship
agreement between ASI and JDD was terminable upon reasonable
notice. Following the District Court's May 4, 2018,
summary judgment ruling agreeing with ASI's
interpretation of the agreement, ASI notified JDD that the
distributorship agreement would be terminated on November 5,
2018, Ms. Rickert had formed the new entity, defendant JHL.
ASI began to suspect that JDD and Jolie Home were competing
or preparing to compete directly with ASI. They believed that
Ms. Rickert was recruiting stockists to represent competing
paint products and that JDD has stopped using the ANNIE
SLOAN® mark in conjunction with the CHALK PAINT® mark
on social media. On July 24, 2018, ASI filed a Motion for
Preliminary Injunction, asking the court to issue an order
prohibiting the Defendants from engaging in a list of
activities in violation of the distributorship agreement and
ASI's trademark rights and preventing JDD from sharing
ASI's business relationships and confidential information
with JHL and other competitors.
October 12, 2018, the District Court granted ASI's motion
and issued a preliminary injunction. In summary, the court
ordered the Defendants to cease advertising JHL's
products with materials that represent ASI products as JHL
products; to warehouse any inventory of ASI products that had
been labeled with JHL labels; to cease using labels for
JHL's products stating or implying that JHL has been
selling paint prior to November 5, 2018, or that JHL has been
selling the same formula or the exact same product since any
date prior to November 5, 2018; to cease using or creating
advertising or labels for JHL's products using ASI's
trademarks or trade dress; to store all advertising materials
implicated by the order pending ruling on the merits of the
case; to issue notice to stockists, suppliers, and public
relations firms that Defendants have been enjoined from using
advertising materials as described in the court's order;
and to cancel or transfer to ASI any domain names
incorporating ASI's trademarks.
is set to begin June 10, 2019, and the discovery deadline is
March 12, 2019. Defendants have recently filed a motion to
continue the trial date or stay the proceedings (other than
those necessary to enforce the Court's outstanding
orders) pending their appeal of the preliminary injunction.
issue now is a subpoena served by ASI on CounterTake, a
company that assisted JHL in August 2018 with creating a
brand video, video tutorials, and cut down versions of both
to use in advertisements. In summary, the subpoena seeks: (1)
communications between CounterTake and the Defendants or
their affiliates (the “Entities”) pertaining to
video or photographic content created for those entities or
to the court's preliminary injunction order; (2)
documents or communications exchanged with the Entities
including the phrases “chalk paint, ”
“chalkpaint, ” “Annie Sloan, ”
“Jolie Décor, ” “JDD, ”
“Jolie Home, ” or “joliehome;” (3)
invoices and purchase orders exchanged with the Entities; and
(4) all video and/or photographic content created for the
referenced Entities that display any paint products and/or
painting techniques as well as all communications with the
Entities that shares or discusses such content.
admits that some of the footage shot by CounterTake displays
the Jolie label that has been enjoined by the court and
furniture painted with paint from ASI branded cans.
Apparently, the majority of this footage was not salvageable
following the preliminary injunction, and JHL hired
CounterTake to re-shoot all video tutorials and digitally
create the furniture and product used in the brand film. JHL
asserts that the new footage does not contain any enjoined
materials and that no footage has been released to date.
moved to quash the subpoena, arguing that the requested
information would reveal trade secrets that would give ASI a
competitive advantage. It also argues that the material
sought is moot due to the preliminary injunction or premature
because it concerns unreleased materials.
Scope of Discovery and Standard for ...