UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

STARBUCKS CORPORATION, a Washington corporation; and STARBUCKS U.S. BRANDS, INC., a California corporation,

Plaintiffs,

v.

 

WOLFE'S BOROUGH COFFEE, INC., a New Hampshire corporation d/b/a BLACK BEAR MICRO ROASTERY,

Defendant.

 

No. Ol-CV-5981 (LTS)(THK)

 

 

PLAINTIFFS' AMENDED FIRST REQUEST TO DEFENDANT

FOR THE PRODUCTION OF DOCUMENTS

Plaintiffs Starbucks Corporation and Starbucks U.S. Brands Corporation (named herein as "Starbucks U.S. Brands, Inc.") ("Plaintiffs"), by their attorneys, Jones, Day, Reavis & Pogue, hereby request, pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure and Rules 26-37 of the Local Civil Rules of the United States District Court for the Southern District of New York, that Defendant Wolfe's Borough Coffee, Inc., d/b/a Black Bear Micro Roastery ("Black Bear"), within thirty (30) days of the date of service hereof, produce for inspection and copying the documents described below. The documents are to be produced by arrangement with and at the offices of Defendants' counsel, Jones, Day, Reavis & Pogue, 599 Lexington Avenue, New York, New York 10022.

               The following definitions and instructions shall apply to each and every part of this Request for Production of Documents (the "Request"), as if fully set forth therein:

 

DEFINITIONS

1.       "Plaintiffs" shall mean Starbucks Corporation and Starbucks U.S. Brands Corporation and any of their officers, directors, employees, agents and representatives and all persons acting or purporting to act on their behalf.

2.      "Starbucks" shall mean Starbucks Corporation and any of its officers, directors, employees, agents and representatives and all persons acting or purporting to act on its behalf.

3.       "U.S. Brands" shall mean Starbucks U.S. Brands Corporation and any of its officers, directors, employees, agents and representatives and all persons acting or purporting to act on its behalf.

4.       "Black Bear" shall mean Wolfe's Borough Coffee, Inc. d/b/a Black Bear Micro Roastery and any of its officers, directors, employees, agents and representatives and all persons acting or purporting to act on its behalf.

5.       "You" and "your" shall mean Black Bear and any of its officers, directors,

employees, agents and representatives and all persons acting or purporting to act on its behalf.

6.      The "Starbucks Mark" shall mean the name and trademark "Starbucks."

7.      "Complaint" shall mean the Complaint in this action dated July 2,2001.

8.       "Communication" shall mean the transmittal of information (in the form of facts, ideas, inquiries or otherwise).

 9.      "Document" and "documents" are used in the broadest permissible sense under the Federal Rules of Civil Procedure and shall include, without limitation, tangible things  and all written, typewritten, recorded (including audio or videotape or both), graphic,  photographic (including negatives), facsimile transmissions, or computerized materials in whatever form, including copies, drafts, and reproductions thereof to which you have or have had access and every copy of such document which contains any commentary or notation not appearing in the original.

10.     "Person" shall mean any natural person or any business, legal or governmental entity or association.

11.     "Entity" shall mean any company, corporation, partnership, union, joint venture, sole proprietorship, association, government agency, organization or any other similar type of group through which business is conducted, or any director, officer, employee or agent thereof.

12.     "Concerning" shall mean relating to, referring to, describing, evidencing or constituting.

13.     "Relate to" and "relating to" shall mean and include any information concerning, comprising, identifying, summarizing, evidencing, containing, discussing, mentioning, describing, reflecting, comparing, analyzing, memorializing or pertaining in any  way to the subject matter of the discovery request in which such term is used.

14.     "All" and "each" shall be construed as all and each.

15.     "And" and "or" shall be construed either disjunctively or conjunctively as  necessary to bring within the scope of the discovery request all responses that might otherwise be  construed to be outside of its scope.

16.     Singular forms of any noun or pronoun shall embrace and be read to  include the plural as the context may make appropriate.

17.     Masculine forms of any noun or pronoun shall embrace and be read to  include the feminine or neuter, as the context may make appropriate.

 

INSTRUCTIONS

1.        Whenever a request calls for information which is not available to Black Bear in the form requested, but is available in another form or can be obtained, at least in part, from other data in Black Bear's possession, so state and either supply the information requested in the form in which it is available or supply the data from which the information requested can be obtained.

2.       This Request is continuing in nature. Black Bear shall supplement its responses to this Request, as and when additional responsive documents become known or available to Black Bear, or when so requested by Plaintiffs prior to trial.

3.       Black Bear shall produce all documents in its possession, custody or control, including documents in the possession, custody or control of Black Bear and its organizers and owners, their subsidiaries and affiliates, and their officers, directors, employees, agents, representatives, successors, assigns and attorneys and all persons acting or purporting to act on behalf of Black Bear or who are in possession of or who may have obtained information for or on behalf of Black Bear in regard to the subject matter of this case.

4.       Black Bear shall produce responsive documents as they are kept in the usual course of business, or organize and label them to correspond with the categories in this Request, pursuant to Rule 34(b) of the Federal Rules of Civil Procedure. Documents shall be produced in a manner that permits the source of the documents to be easily ascertained.

5.       Where a claim of privilege is asserted in objecting to any document request or subpart thereof, Black Bear shall comply with Rule 26.2 of the Local Civil Rules of  the United States District Court for the Southern District of New York, and assert the privilege in  the following manner:

                       (a)     The attorney asserting the privilege shall, in the objection to the document demand, or subpart thereof, identify the nature of the privilege (including work product) which is being claimed or defense governed by state law, indicate the state's privilege rule being invoked; and

                       (b)     The following information shall be provided in the objection, unless divulgence of such information would cause disclosure of the allegedly privileged information:

                               (i)       the type of document;

                               (ii)      general subject matter of the document;

                               (hi)    date of the document;

                               (iv)    such other information as is sufficient to identify the document for a subpoena duces tecum. including, where appropriate, the author of the document, the addressee of the document, and, where not apparent, the relationship of the author and addressee to each other.

6.       Each document request, and each subpart thereof, shall be separately set forth and accorded a separate answer. Each response shall first set forth verbatim the document request to which it is responsive, followed by Black Bear's response.

7.       No part of a document request shall be left unanswered merely because an objection is interposed to another part of the document request.

8.       If Black Bear objects to any document request or subpart thereof, the objection shall state with specificity all grounds. Any ground not stated shall be waived.

9.       If Black Bear is unable to answer any document request, the reasons for Black Bear's inability to answer shall be separately stated in detail for each document request.

10.     Failure to provide information in response to these document requests will be deemed a waiver of Black Bear's right to produce such evidence at trial. Plaintiffs reserve the right to move to preclude the introduction of any evidence not produced in response to this Request.

11.     In the event that Black Bear is not in possession of any document requested. Black Bear shall take all appropriate steps to aid in the recovery of the document from other sources, including but not limited to providing identifying information and providing authorizations, waivers or releases, where required.

 

REQUESTS FOR PRODUCTION

1.       All documents mentioned in Black Bear's responses to Plaintiff's First Set of Interrogatories to Defendant.

2.       All documents requested or required to be identified by Black Bear in response to Plaintiffs First Set of Interrogatories to Defendant.

3.       Documents sufficient to establish Black Bear's date and state of incorporation.

4.       All documents that mention, discuss, evidence, refer to or relate to the date(s) of Black Bear's use of the "Charbucks" name, including, but not limited to, on or in connection with Black Bear's manufacture and sale of coffee products under the "Charbucks" name.

5.       All documents that mention, discuss, describe, refer to or relate to Black Bear's decision to use the "Charbucks" name.

6.       All documents that mention, discuss or constitute advertisements or promotional materials, in any medium, in which Black Bear has used the "Charbucks" name.

7.       One exemplar of every item, including, but not limited to, stationery, envelopes, labels, tags, stickers, containers, packages or products ever used or sold by Black Bear, that bears the "Charbucks" name.

8.       All documents that mention, discuss, refer to or relate to Black Bear's marketing, promotion, advertising, and offering of goods and services under the "Charbucks" name, including, but not limited to, marketing plans, advertising plans, strategic business plans, and market research.

9.       All documents that mention, discuss, constitute, refer to or relate to any trademark searches or investigations concerning the term "Starbucks" conducted by or on behalf of Black Bear at any time.

10.     All documents that mention, discuss, constitute, refer to or relate to any research, reports, surveys or studies conducted by or on behalf of Black Bear relating to consumer or customer perception of any mark or name that includes the term "Starbucks."

11.     All documents that mention, discuss, refer to or relate to actual consumer confusion or the likelihood of confusion stemming from Black Bear's use of the "Charbucks" name.

12.     All documents that mention, discuss, constitute, refer to or relate to any agreement(s) between Black Bear and third parties concerning use of the "Charbucks" name, including, but not limited to, license agreements, consent agreements, coexistence agreements, and settlement agreements.

13.     All documents that mention, discuss, refer to or relate to Starbucks.

14.     All documents that mention, discuss, refer to or relate to the Starbucks Mark.

15.     All documents that mention, discuss, describe, refer to or relate to the circumstances under which Black Bear first learned of the existence of Starbucks.

16.     All documents that mention, discuss, describe, refer to or relate to the circumstances under which Black Bear first learned of the existence of the Starbucks Mark.

17.     All documents that mention, discuss, constitute refer to or relate to any comments, inquiries, questions, correspondence, or statements from any person regarding Starbucks, the Starbucks Mark, or any of Starbucks' goods or services.

.

 

Dated: New York, New York

       February 4, 2002

 

JONES, DAY, REAVIS & POGUE

By:

   Bonnie L. Hemenway (BH-2246)

   Barbra S. Levy (BL-3306)

599 Lexington Avenue

New York, New York 10022

(212) 326-3939

 

 

Of Counsel:

John C. Rawls

JONES, DAY, REAVIS & POGUE

555 West Fifth Street, Suite 4600

Los Angeles, California 90013

(213) 489-3939


CERTIFICATE OF SERVICE

              

BONNIE L. HEMENWAY, declares, pursuant to 28 U.S.C. Section 1746, as follows:

               1.        I am an attorney in the firm of Jones, Day, Reavis & Pogue, counsel for Plaintiffs Starbucks Corporation and Starbucks U.S. Brands Corporation (named herein as "Starbucks U.S. Brands, Inc.").

               2.       On February 4, 2002, I caused service of true copies of the within Plaintiffs' First Set of Interrogatories to Defendant to be made, by first-class mail, upon:

Michael K. Terry, Esq.

Konowitz & Greenberg

110 Cedar Street, Suite 250

Wellesley Hills, Massachusetts 02481-9527

 

Mark S. Kaufman, Esq.

The Law Offices of Mark S. Kaufman

36 West 44th Street, Suite 900

New York, New York 10036

 

 

Attorneys for Defendant Wolfe's

Borough Coffee, Inc., d/b/a Black

Bear Micro Roastery

 

3.              I declare under penalty of perjury that the foregoing is true and correct.

 

Dated: New York, New York

February 4, 2002

BONNIE HEMENWAY