KONOWITZ & GREENBERG

Attorneys at Law

110 CEDAR STREET - SUITE 250

WELLESLEY HILLS, MA 02481-3527

STEVEN S. KONOWITZ

KAREN K. GREENBERG

____________

MICHAEL K. TERRY

ARLENE L. KASARJIAN

TELEPHONE: (781) 237-0033

FACSIMILE:   (781) 235-2755

EMAIL:  mkt@kongreen.com

June 21, 2002

Honorable Theodore H. Katz

Chief Magistrate Judge

United States District Court

500 Pearl Street, Room 1660

New York, NY 1007-1312

Re:   Starbucks Corp., et al.

Vs.   Wolfe's Borough Coffee, Inc.

        No. 01-CV-5981(LTS)(THK)

Dear Judge Katz:

This office represents Wolfe's Borough Coffee, Inc., the defendant named in the above- captioned action. As you know. Judge Swain has referred discovery issues to your attention. I offer this letter in response to that of Barbra S. Levy, dated June 20.

There are several discovery-related matters that need to be addressed, two of which are addressed in the referenced June 20 letter. First, concerning Attorney Levy's assertion that plaintiffs require confirmation that all responsive documents have been produced, allow this letter to serve as such confirmation that all documents known to the defendant to be responsive to discovery requests have been produced.  Notwithstanding Attorney Levy's assertion, the defendant has never "refused to respond" to such a request for confirmation. The plaintiffs' first request for written confirmation thereof was received by counsel, via voicemail, on or about June 10 2002.

Secondly, the plaintiffs have asked the defendant to admit, pursuant to Requests for Admissions, that the Starbucks  mark is "famous" within the meaning of the Federal Trademark Dilution Act and that said mark achieved such status prior to the defendant's use of the "Charbucks" mark. The defendant restates its objection that such an inquiry seeks a pure legal conclusion, and is thus not properly the subject of a request under Federal Rule 36, which is limited in scope to factual/evidentiary matters which may be inquired into under Rule 26(b)(l).  Rule 36 does not authorize a request that requires a pure legal conclusion. Playboy Enterprises, Inc. v. Welles, 60 F.Supp.2d 1050 (S.D.Cal.1999). The question of whether or not the Starbucks mark is "famous" is one of the ultimate questions of this case and is properly left to the court for determination.  Moreover, even if the court were to deem the defendant's objections unjustified, Rule 36 provides that the court should then order that the request be answered, not deemed admitted, as suggested by Attorney Levy.

There are other matters not included in Attorney Levy's letter that also require resolution.  Judge Swain's initial scheduling order provided that discovery would be completed by April 5, 2002 and that expert discovery would be completed by June 7, 2002. However, two matters, initiated by the plaintiffs, delayed progress in this case: (1) the attempted mediation, insisted upon by the plaintiffs, seeming to indicate a willingness to settle, proved to be a waste of time, when after weeks of delay the plaintiffs offered no serious compromise; and (2) the plaintiffs' campaign to undermine the defendant's insurance coverage and thereby its ability to defend itself.  Pending now before Judge Swain is a motion to amend, which if allowed, will result in the defendant's carrier withdrawing coverage, thereby ending the defendant's ability to defend itself.  The plaintiffs' cynical strategy has already succeeded in hampering the defendant's efforts, in that it has not been able to retain its own expert, due to the pending motion to amend.  In light of these developments, defense counsel requested in March that the plaintiffs agree to an extension of the discovery schedule. This request was denied.  The defendant thereupon served its own discovery requests upon the plaintiffs on or about March 28.  The plaintiffs objected to said requests in their entirety as untimely, providing no no responsive documents and refusing to provide a deponent in response to defendant's 30(b)(6) deposition notice.  Accordingly, the defendant seeks to bring a motion requesting that the court overrule the plaintiffs' objections and order the plaintiffs to provide the discovery sought.  The defendant further seeks a stay of the Pre-trial Scheduling Order, until such time as the court decides the pending Motion to Amend, whereupon the defendant would ask that a new scheduling order issue.

I will gladly make myself available for a telephone conference to discuss all of the above at a time convenient to the court and plaintiffs' counsel.  Thank you for your attention.

MKT/prs
cc:

The Hon. Laura Taylor Swain

Barbra S. Levy, Esq

John C. Rawls, Esq.

James 0. Clark