membership in swingers club not (yet) disclosed in Lanham Act case

Edmondson v. Velvet Lifestyles, LLC, No. 15-24442-CIV, 2016 WL 5682591 (S.D. Fla. Oct. 3, 2016)

I don't get to blog discovery disputes often; that this one is unresolved is frustrating, but the court asks useful questions.  “May Plaintiffs pursuing a false advertising Lanham Act claim obtain in discovery the member list and email distribution list from a ‘unique’ and ‘private’ clothing-optional swingers’ club for ‘men and women who enjoy nudity and sexual activity’ and who are directed to practice ‘safer sex’ at the club …?”  Maybe!

Plaintiffs are 32 professional models who alleged that defendants “pirated and altered their images to advertise their swinger’s club business interests on websites and social media accounts,” and put their images/altered images “next to, or in very close proximity to, photos of explicit, hardcore pornography which are too obscene and offensive to include as exhibits to a publicly-filed complaint.”  Plaintiffs sought information about defendants’ membership and email distribution lists.  Defendants sought a protective order, arguing that their members’ associational rights and their own trade secrets would be threatened by disclosure.  The court sought more information before ruling.

The parties disagreed about whether inquiries using the lists would provide useful or even vital information.  Ordinarily, you could survey likely swinger club customers, rather than existing customers, though a large enough sample might be hard to get even with an internet survey.  However, plaintiffs sought “relevant sociographic and demographic evidence” from the lists so that a representative sample could be constructed. They also argued that courts routinely permit discovery of customer lists for these purposes; they sought to reach out to customers via targeted email to see if they were confused; customers who didn’t want to testify could seek protective orders. They also offered to sign a confidentiality agreement to prevent misuse of the information.

The court considered their request less pressing because it furthered “a private agenda, not public-type goals” such as a criminal investigation.

The judge was also uncertain about the strength of defendants’ asserted interests.  The club at issue did have a strict confidentiality agreement, but half of the club’s members were “not shy” about their association with the club; some club members “voluntarily chose to self-disclose their affiliation and membership by being prominently featured on the Club’s website.”  Nor did the club promise its members confidentiality—it just made them promise confidentiality to each other.

Was this information even within the permissible scope of discovery? The rules allow discovery of “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.”  Proportionality requires an assessment of the marginal utility of the discovery sought, and thus is highly related to relevance.  Since actual confusion is powerful evidence of likely confusion, I would have thought that the baseline marginal utility was pretty high.

So, would the requested lists be important in determining damages (etc.) for the Lanham Act claim?  Mere speculation as to the information’s utility won’t suffice.  The judge hearing the case initially dismissed the Lanham Act claim sua sponte, though she offered them the opportunity to refile.  They did, but they were thus on notice that their claim was dubious, so the court also considered “whether the requested discovery would be relevant if the sole claim is subject to significant challenge.”

In theory, using targeted email surveys based on the list would be a good idea, but the judge was dubious about the practical utility thereof.  Respondents would be providing “relevant demographic and sociographic characteristics” “in response to unsolicited emails from a large law firm representing Plaintiffs who filed a lawsuit against the club they attend to pursue their unusual, arguably-provocative, lifestyle.”  But, the court asked, why would anyone respond?

If the poll recipients understand that they are not obligated to respond and further realize that responding might cause them to be served with a deposition subpoena, then would they likely complete and return the survey? What percentage response rate would an expert need to receive to reach any meaningful conclusion about customer confusion? Would members be likely to even remember whether they saw a photograph of a model on a website before attending the Club? Would receiving a simple online poll request generate anxiety or concern among the club members or email recipients?

To proceed, plaintiffs would have to provide more information, but defendants would have to disclose the number of members, the number of people on its email marketing list, and other details about the list.  Plaintiffs, if they wished to proceed, would have to provide more details from a survey expert showing that a survey would be likely to work in this context.