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Annie Sloan Interiors, Ltd. v. Jolie Design & Decor, Inc.

United States District Court, E.D. Louisiana

December 18, 2018

ANNIE SLOAN INTERIORS, LTD.
v.
JOLIE DESIGN & DÉCOR, INC., AND JOLIE HOME, LLC

         SECTION: “S” (1)

          MARY ANN VIAL LEMMON, JUDGE.

          ORDER AND REASONS

          JANIS VAN MEERVELD, UNITED STATES MAGISTRATE JUDGE.

         Before 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.

         Background

         ASI 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.

         By June 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.

         On 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.

         Trial 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.

         At 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.

         JHL 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.

         JHL has 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.

         Law and Analysis

         1. Scope of Discovery and Standard for ...


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