# Multi-State Partnership for Prevention, LLC v. Kennedy

> District Court, E.D. New York · August 12, 2024

URL: https://www.frixlaw.com/law-library/cases/10659167

## Case

- **Court:** District Court, E.D. New York
- **Decided:** August 12, 2024
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10659167

## How later opinions describe it (automated extraction)

- finding sustained communication itemizing the issues with particularity and explaining why those issues were disputed evinces a good-faith attempt to meet and confer

## Opinion text

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
--------------------------------------------------------------------X
MULTI-STATE PARTNERSHIP FOR
PREVENTION, LLC

Plaintiff,

MEMORANDUM
AND ORDER
-against- 24-CV-00013 (JMW)

SAMUEL KENNEDY et al.,

Defendants.
--------------------------------------------------------------------X

A P P E A R A N C E S:

Howard A Newman, Esq.
Newman Law Offices
1717 K Street NW Suite 900
Washington, DC 20006
Attorney for Plaintiff

Kathleen Rose Fitzpatrick, Esq.
KRF Legal
249 Smith St, #118
Brooklyn, NY 11231

-and-

Peter Brown, Esq.
Peter Brown & Associates PLLC
260 Madison Avenue, Ste 16th Floor
New York, NY 10016
Attorneys for Defendants

WICKS, Magistrate Judge:
What does it mean to “meet and confer” to address discovery disputes prior to the filing a
discovery motion? This seemingly simple mandate appears difficult in application.
1
Plaintiff, Multi-State Partnership for Prevention, LLC (“Plaintiff”) originally commenced
this declaratory judgment action on March 13, 2023 against Defendants Samuel Kennedy,
Kennedy Technology MK, and Kennedy Technology LLC (collectively, “Defendants”) for
copyright non-infringement, trademark infringement, breach of contract, defamation and tortious
interference in the United States District Court for the District of Maryland, arising out of

Plaintiff's development of computer software program, PrepMod, developed in the early stages of
the COVID-19 pandemic. (ECF Nos. 1, 22.) Plaintiff filed a First Amended Complaint (“FAC”),
on July 27, 2023, asserting invalidity of copyright, non-infringement of copyright, breach of
contract, tortious interference of contractual relations, defamation, and trademark infringement
against Defendants. (ECF No. 22.) Plaintiff’s FAC specifically alleges:

On March 10, 2020, Plaintiff met with Defendants electronically, and Plaintiff gave
Defendants access to the code to companion software MSPP created in 2017 known as
ReadiConsent and ClinicWizard, as well as a prototype of PrepMod. (ECF No. 22 at ¶ 12–
13.) Three days later, on March 12, 2020, MSPP provided Defendants a list of
“enhancements” to the code “to fortify it so that it could accommodate the anticipated
demand produced by COVID.” (Id. at ¶ 14.) On March 26, 2020, the parties met again
electronically and came to an oral agreement regarding the terms of a contract. (Id. at ¶
17.) Although a written contract was requested, Defendants never sent Plaintiff a contract.
(Id. at ¶ 18–19, 23.)

Beginning in March 2020, Defendants worked with Plaintiff’s developers on the
development of code using GitHub, a third-party, secure platform and cloud-based service
for software development in which developers store and edit code resulting in time-
stamped files and software. (Id. at ¶ 20–21.) Between April and August 2020, Defendants
delivered code and software to MSPP without imposing any limitations on its use. (Id. at
¶ 34.) In May and June 2020, Kennedy represented to multiple third parties, as well as to
Plaintiff, that Plaintiff owned the copyright to any work that Defendants had created. (Id.
at ¶ 25.) On August 16, 2020, Defendants gave Plaintiff a final copy of the work they had
completed via GitHub. (Id. at ¶ 29.) Plaintiff received and paid multiple invoices for the
work. (Id. at ¶ 24, 28, 30.)

On August 19, 2020, Defendants decided to withdraw from the project but stated that they
would continue working during a transition. (Id. at ¶ 31.) The next day, however,
Defendants “quit without any transition,” and “the software that they had created was not
2
functional.” (Id. at ¶ 32.) Plaintiff was thereafter “forced to engage other software
developers to remedy the non-functional software.” (Id. at ¶ 33.) On August 23, 2020,
Kennedy sent an unexecuted assignment of copyright to MSPP. (Id. at ¶ 35.) Plainitff
obtained trademark registration, U.S. Patent and Trademark Office No. 6461613, of and
for “PrepMod.” (Id. at ¶ 38.) Claiming a first publication on April 1, 2020, the U.S.
Copyright Office awarded to Kenedi Tehnolodjis DOOEL uvoz-izvoz Struga, a copyright
claimant, a copyright registration for a computer program entitled “PrepMod” from a
deposited work, Registration No. TX 9-113-201, effective April 23, 2022. (Id. at ¶ 39.)

On October 13, 2022, Kennedy claimed ownership of PrepMod and sent a cease-and-
desist letter to the Philadelphia Department of Health (ECF No. 1-3), which was engaged
in a contractual relationship with MSPP. (ECF No. 22 ¶ 40.) That day and the following
day, Kennedy submitted four other letters to two state departments of health, a county
department of health, and a health system, none of which were in Maryland. (ECF No.
14-2 ¶ 17.) The letters claimed that Defendants had developed a software application as
requested, Plaintiff had severed all business relations with Defendants, Plaintiff had
acquired no intellectual property rights to PrepMod, and Plaintiff and its licensees were
engaging in copyright infringement. (ECF No. 22 ¶ 41.)

(ECF No. 34) (modified and cleaned up) (summarizing the allegations in Plaintiff’s FAC).

On January 2, 2024, the case was transferred from the District of Maryland to the Eastern
District, and on February 8, 2024, the parties consented to the undersigned’s jurisdiction for all
purposes. (See Electronic Order dated January 2, 2024; ECF Nos. 44, 45.) On February 9, 2024,
Plaintiff's FAC was dismissed by the undersigned in its entirety pursuant to Federal Rule of Civil
Procedure (“FRCP”) 41(a)(1)(A)(ii) as against defendant Kennedy Technology, LLC, and the
following causes of action set forth in Plaintiff's FAC were dismissed pursuant to FRCP
41(a)(1)(A)(ii) as against Defendants Samuel Kennedy and Kennedy Technology MK: (i)
Plaintiff's cause of action for tortious interference (Count IV); (ii) Plaintiff's cause of action for
defamation (Count V); and (iii) Plaintiff's cause of action for trademark infringement (Count VI).
(See Electronic Order dated February 9, 2024.)
On March 1, 2024, Defendants Samuel Kennedy and Kennedy Technology MK filed an
Answer to the FAC, asserting counterclaims against Plaintiff for copyright infringement and
3
breach of contract, alleging that: (i) Defendants hold the exclusive right pursuant to the Copyright
Act to distribute, license and create derivative works of the PrepMod software, and that Plaintiff
knowingly and willfully infringed Mr. Kennedy’s exclusive right in the PrepMod software by
licensing it – or a derivative of it – to five institutions without authorization from Mr. Kennedy;
and (ii) Plaintiff breached its agreement with Defendants to pay Mr. Kennedy a weekly rate $7,500

to create the PrepMod software. (ECF No. 48.) The parties are currently in the midst of fact
discovery. (See Electronic Order dated June 4, 2024.) Now, before the Court are three letter
motions:
1. Plaintiff’s Motion for a Protective Order (ECF No. 53);

2. Plaintiff’s Supplemental Motion for a Protective Order (ECF No. 55); and

3. Plaintiff’s Motion to Compel (ECF No. 57).

All three motions are opposed. (See ECF Nos. 56, 58.) For the reasons set forth below, Plaintiff’s
Motion for a Protective Order and Supplemental Motion (ECF Nos. 53, 55) are DENIED, and
Plaintiff’s Motion to Compel is DENIED, without prejudice and with leave to renew.
DISCUSSION

I. Plaintiff’s Motion for a Protective Order

A. The Parties’ Contentions

On June 4, 2024, Plaintiff advised the Court that it served a proposed Rule 11 Motion upon
Defendants on May 15, 2024 claiming that Defendant’s counterclaim for copyright infringement
is frivolous. (ECF No. 53.) Plaintiff’s proposed Rule 11 Motion states, in relevant part:
On March 26, 2020, a software developer, Defendant Kennedy, entered into an agreement
with [Plaintiff] for the expeditious and timely updating of its software code, i.e., the
intellectual property that would create PrepMod. PrepMod is a computer software program
developed to automate key aspects of delivering mass vaccination in response to COVID-
19. The engagement, during the pandemic, was to be, at most, an approximately eight-
4
week project (consisting of a First and Second Stage) that would end by approximately
June 1, 2020. Defendants dispute this account. Almost three months later, on August 20,
2020, the day after [Plaintiff] had paid an invoice, Kennedy quit without producing a
functional software and without helping to transition to other developers as he had
promised in writing only the day prior. Defendants somehow dispute the previous as well.

What is not in dispute is that that there was an agreement between at least Kennedy and
[Plaintiff] that was not memorialized to a writing for the authoring of software code. It is
also not in dispute that at no time prior to the cessation of the relationship between the
Parties, i.e., August 19, 2020, did Kennedy ever proscribe use of the IP—predicated on full
or any payment for that matter—or even raise the issue of [Plaintiff’s] use at all. Indeed,
prior to August 19, 2020, Kennedy had represented in writing to [Plaintiff] that it owned
the IP, that he could, at any time, readily sign any assignment agreement memorializing
the de facto assignment, and without objection, [Plaintiff] had informed him that it had
already sold a license and that he immediately needed to produce a functional software,
which, again, never occurred.

After [Plaintiff] learned from one of its licensees in or after February, 2023, that Kennedy
had sent cease and desist letters replete with misrepresentations—Defendants had not
contacted [Plaintiff] prior to that point—[Plaintiff] expeditiously filed a federal suit against
Defendants. After multiple written and oral communications, on May 1, 2023, Defendants
received from [Plaintiff] a prejudicial detailed legal analysis showing conclusively that it
could not be in dispute that “at the very least, Defendants had conveyed to [Plaintiff] an
implied, unlimited and irrevocable license to the [IP].” Indeed, [Plaintiff] showed that it,
according to Kennedy, already owned the IP. Importantly, undergirded by the universe of
emails that [Plaintiff] supplied to Defendants, [Plaintiff] also conclusively showed that
material, dispositive facts were in [Plaintiff’s] favor. Again, somehow Defendants dispute
the previous. Defendants also dispute that at the time the Parties’ relationship ceased,
[Plaintiff] had agreed in writing to place into escrow the full amount that Kennedy had
claimed was in dispute to allow a third party to decide the dispute, including Kennedy’s
breach of contract.

Thus, what is in reasonable dispute in this matter are the monetary terms of the Parties’
agreement and which party(-ies) breached the contract. What is also in reasonable dispute
is whether [Plaintiff] has an implied license or whether [Plaintiff] already owns the
copyright to the IP, which its registration, as [Plaintiff] has alleged, was procured through
fraud. What is not or should not be in dispute is that Defendants do not have even a
colorable counterclaim for copyright infringement. Indeed, such is frivolous since there
can be no infringement. It also means that anything deriving from the frivolous
counterclaim, including Defendants’ discovery requests, [is] also frivolous. Defendants
have known of this frivolity since at least May 1, 2023.

(ECF No. 53 at 1-3) (internal citations omitted) (cleaned up).
5
The Rule 11 motion was not filed. However, Plaintiff ultimately seeks a protective order
from this Court “for all discovery propounded by Defendants that arise or concern their
counterclaim for copyright infringement until this Court has ruled on [Plaintiff’s] prospective: (i)
Rule 11 motion, unless Defendants dismiss said counterclaim prior to the expiration of the safe
harbor period; and/or (ii) Rule 56 motion for partial summary judgment on at least [Plaintiff’s]

claim for non-infringement of copyright, Count II of the Verified FAC.” (Id. at 3) (emphasis
added).
On June 6, 2024, the undersigned denied Plaintiff’s Motion for a Protective Order without
prejudice and with leave to renew in light of the parties’ failure to “meaningful effort to meet and
confer prior” to Plaintiff’s filing of the Motion. (See Electronic Order dated June 6, 2024.) On June
18, 2024, the parties appeared for a Status Conference before the undersigned (the “June 18
Conference”), and the Court subsequently renewed Plaintiff’s Motion for a Protective Order (ECF
No. 53) and held all discovery dates and deadlines in abeyance pending the outcome of the Motion.
(ECF No. 54.) The undersigned further noted that “[w]ith the exception of the subject of the motion

for a protective order filed at ECF No. 23, discovery is not stayed and shall proceed; only deadlines
are held in abeyance until the Court decides the motion at which time new deadlines will be set.”
(Id.) On June 28, 2024, Plaintiff filed a Supplemental Motion for a Protective Order. (ECF No.
55.) Plaintiff advised that during the June 18 Conference, Plaintiff “amplified its desire as stated
in [its] Motion [for a Protective Order] that [it] intended to use Defendants’ responses to discovery
in a prospective Rule 11 motion and a Rule 56 motion for partial summary judgment[,] [and]
[u]nfortunately, in objecting to every single interrogatory, request for admission, and request for
production, [Plaintiff] has already requested a Rule 37 conference occur with another conference

6
already set for July 3, 2024, to identify a briefing schedule for said Rule 56 motion.” (ECF No.
55.)
On July 1, 2024, Defendants filed their Response in Opposition to Plaintiff’s Motion for
Protective Order and Supplement. (ECF No. 56.) Defendants contend the FAC at Count I seeks to
invalidate Defendant Mr. Kennedy’s copyright and Count II seeks a finding of non-infringement

of that copyright, and, in moving for protective order, Plaintiff “asks this Court to protect it from
disclosing any of its actions regarding the copyrighted software, including any licenses issued and
revenues received from infringing Kennedy’s copyright.” (Id. at 1.) Defendants assert the licenses
were issued even though Plaintiff paid for less than half the services rendered by Mr. Kennedy,
and Plaintiff’s refusal to honor its agreements with Mr. Kennedy resulted in this litigation. (Id.)
Defendants have reason to believe that the software in dispute has been licensed to at least two
dozen government and private entities, and that Plaintiff has earned well over a million dollars in
licensing fees. (Id.) Defendants argue that Plaintiff has not offered any reason it needs protection
of this Court, “except for a legal conclusion that it could repeatedly license and profit from Mr.

Kennedy’s work without payment based on a misplaced reading of the applicable copyright law.”
(Id.) Defendants maintain Plaintiff’s Motion for a Protective Order “is only the latest legal
maneuver by [Plaintiff] to conceal both its actions and resulting ill-gotten gains, as [Plaintiff’s]
counsel has repeatedly threatened Rule 11 sanctions to discourage the prosecution of Mr.
Kennedy’s counterclaim.” (Id.)
Defendants further contend that Plaintiff’s Motion “falls far short of the heavy burden Rule
26(c) places on parties seeking protective orders” as it makes “no mention of good cause and
includes no substantiated facts, relying instead on conclusory assertions that Mr. Kennedy’s
copyright infringement counterclaim is frivolous.” (Id. at 2.) Defendants note that Plaintiff does
7
not dispute that Mr. Kennedy currently holds the copyright at issue, but asks this Court to
“prematurely find—without any admissible evidence—that [Plaintiff] has an implied license to
use Mr. Kennedy’s copyright.” (Id.) Defendants further note that Plaintiff has not moved to dismiss
this counterclaim, nor has it followed through on its threats to move for Rule 11 sanctions against
Defendants, which have been threatened since before Defendants formally appeared in this

litigation. (Id.) Defendants maintain that Plaintiff “appears to seek a blanket protective order
staying any discovery request it deems related to Mr. Kennedy’s counterclaim” but Plaintiff’s
Motion does not identify any specific discovery requests, nor does it explain how—even if Mr.
Kennedy’s counterclaim is ultimately unsuccessful—responding to those requests would cause
Plaintiff’s ‘annoyance, embarrassment, oppression, or undue burden or expense.’” (Id.) (quoting
Fed. R. Civ. P. 26(c)). Finally, Defendants explain that: (i) an implied license is a defense to
copyright infringement and cannot be used to circumvent a copyright infringement action; and (ii)
“whether a nonexclusive implied license exists when the author has not been paid is a fact intensive
inquiry . . [c]ourts must look to the totality of the circumstances regarding intent when no written

contract exists.” (Id. at 3.) Mr. Kennedy believes that after discovery on his counterclaim, the
totality of the circumstances here will support a finding that Plaintiff infringed Mr. Kennedy’s
copyright and it never had a non-exclusive implied license. (Id.)
B. Analysis
Parties seeking cover from discovery may avail themselves of a motion for a protective
order which, in effect, is the flip side of a motion to compel. Rule 26(c) affords protection for
abusive or embarrassing discovery, providing that “[a] party or any person from whom discovery
is sought may move for a protective order in the court where the action is pending . . . The court
may, for good cause, issue an order to protect a party or person from annoyance, embarrassment,
8
oppression, or undue burden or expense. . . .” Fed. R. Civ. P. 26(c)(1); see Gordon v. Target Corp.,
318 F.R.D. 242, 246 (E.D.N.Y. 2016) (“[T]he touchstone for determining whether to issue a
protective order under Rule 26(c) lies, in the first instance, on a party’s ability to establish good
cause”). The burden is on the party seeking issuance of the order to show “good cause” through
“particular and specific facts” as opposed to “conclusory assertions.” Rofail v. United States, 227

F.R.D. 53, 54–55 (E.D.N.Y. 2005). “If the movant establishes good cause for protection, the court
may balance the countervailing interests to determine whether to exercise discretion and grant the
order.” Id. at 55. “Because of the interest in broad discovery, the party opposing the discovery of
relevant information, whether through a privilege or protective order, bears the burden of showing
that based on the balance of interests the information should not be disclosed.” Fowler-
Washington v. City of New York, No. 19-CV-6590 (KAM) (JO), 2020 WL 5893817, at *3
(E.D.N.Y. Oct. 5, 2020) (internal quotation and citation omitted).
Plaintiff’s Motion for a Protective Order seeks to avoid production of all discovery
demands propounded by Defendants that arise or concern their counterclaim for copyright

infringement until this Court has ruled on Plaintiff’s prospective Rule 11 motion and/or Rule 56
motion for partial summary judgment. Preliminarily, the undersigned notes that Plaintiffs had the
opportunity to move for dismissal of Defendant’s copyright infringement counterclaim and test its
legal position, but did not do so, and Plaintiff has neither filed a Rule 11 Motion nor a Motion for
Summary Judgment to date. Nevertheless, the “issue for this [M]otion for a [P]rotective Order is
whether [all discovery related to Defendant’s counterclaim for copyright infringement] [is]
essential for [Defendants] to respond to [Plaintiff’s anticipated] summary judgment [and/or Rule
11] motion[s] to warrant denial of the [M]otion for the [P]rotective Order.” Covell v. Chiari &
Ilecki, LLP, No. 12CV660A, 2013 WL 3539192, at *5 (W.D.N.Y. July 11, 2013) (“Covell”)
9
(exploring the intersection of a Rule 11 Motion, a Motion for Summary Judgment, and a Motion
for a Protective Order). Here, Defendants have more than adequately shown that discovery is not
only appropriate but necessary with respect to their copyright infringement counterclaim to show:
(i) that the claim is not frivolous; and/or (ii) to defend against Plaintiff’s anticipated motion for
summary judgment on the non-infringement claim.

Essentially, Defendants need the discovery to respond to either anticipated Motion. See
ECF No. 56 at 3 (“Mr. Kennedy believes that after discovery on his counterclaim, the totality of
the circumstances here will support a finding that Plaintiff infringed Mr. Kennedy’s copyright and
it never had a non-exclusive implied license.”). By contrast, the undersigned finds Plaintiff failed
to show good cause as to why discovery on a pending counterclaim should be stayed. In fact,
Plaintiffs concede that it is disputed between the parties “whether [Plaintiff] has an implied license
or whether [Plaintiff] already owns the copyright to the IP, which its registration, as [Plaintiff] has
alleged, was procured through fraud” such that the undersigned finds the discovery Defendants are
seeking to be directly material and relevant to their counterclaim, and not otherwise “abusive or

embarrassing” discovery, under FRCP 26(c)(1). Accordingly, the Court finds Plaintiff’s Motion
for Protective Order should be denied, with prejudice and without leave to renew, for lack of good
cause shown.
II. Plaintiff’s Motion to Compel
A. The Parties’ Contentions
On July 16, 2024, Plaintiff filed a Motion to Compel seeking “an appropriate order and
sanctions as a result of Defendants’ discovery violations, including refusing to meet and confer,
providing evasive and non-answers [to Plaintiff’s interrogatories, requests for production, and
requests for admission], and a total lack of production of documents.” (ECF No. 57.) Plaintiff
10
claims Defendants had responded to its First Set of Discovery on June 25, 2024, and they
responded to a Second Set on July 5, 2024. (Id.) However, Plaintiff contends Defendants “never
produced any documents since they, without citation, have represented that this Court stayed their
obligation despite this Court’s clear instruction otherwise during” the June 18 Conference. (Id.)
Plaintiff further claims Defendants have willfully and intentionally refused to meet and confer with

Plaintiff concerning discovery. (Id.) Ultimately, Plaintiff’s Motion makes six (6) requests:
[First], this Court should find that Defendants willfully refused to meet and confer with
Defendants (by canceling an agreed conference date and refusing to provide follow-up
dates). [Second,] this Court may easily conclude that Defendants intentionally violated
these discovery obligations. [Third], this Court should also easily come to the same
conclusion for Defendants’ lack of production of documents as Defendants disobeyed this
Court’s clear order that discovery “shall proceed” unless subject to the Motion.
Defendants’ discovery responses were not subject to the Motion. Notably, only after
[Plaintiff] issued an ultimatum did Defendants first cite a different rationale for their non-
production. To be sure, [Plaintiff] is not blind to the circumstances of foreign-based
litigants. However, Defendants in also refusing to substantively answer certain
interrogatories, instead directed [Plaintiff] to Defendants’ non-production! It is impossible
to note that Defendants had an objection to every single interrogatory, request for
admission, and request for production.

[Fourth, this Court] should order, inter alia, Defendants to: 1) immediately answer
interrogatories 4, 7-10 fully, and if there is a citation to documents, only as a
supplementation; 2) produce documents; and (3) promptly thereafter meet and confer with
[Plaintiff] to (a) set a briefing schedule for a partial Rule 56 motion; and (b) to review
Defendants’ responses to at least [Plaintiff]’s (i) interrogatories 2, 4, 6-11, and 15-16; (ii)
requests for admissions from the First Set, 1-8, 13-24; 26-32, 36-37, and 39, and from the
Second Set, 1-16; and (iii) requests for the production of documents from the First Set, 3-
5, 8-11, 13-17, 19, 24-25, and 28-35, and the Second Set, 2-3. [Fifth, this Court should]
issue appropriate sanctions under the circumstances and without further comment by
[Plaintiff]. [Sixth, this Court should] emphasize one conclusion: Defendants’ actions have
and are materially prejudicing Plaintiff since it wishes to promptly bring a partial Rule 56
motion so that this Court may easily conclude that [Plaintiff], at the least, has an implied,
unlimited and irrevocable license to certain intellectual property.

(Id. at 3.) (internal citations omitted) (cleaned up).

On July 23, 2024, Defendants filed their Response in Opposition to Plaintiff’s Motion to
Compel. (ECF No. 58.) Defendants report the parties agreed to serve their first written discovery
11
requests on April 19, 2024, three months ago, and Defendants complied with that deadline. (Id.)
Defendants further report that Plaintiff served additional requests three days late, on April 22,
2024, and, exactly one week after service of Defendants’ discovery requests, on April 26, 2024,
Plaintiff’s counsel announced it would be moving for sanctions under Rule 11, on the basis that
Mr. Kennedy’s copyright infringement claim is frivolous, and that it would not be responding to

any of Defendants’ discovery demands pertaining to that counterclaim. (Id.) Plaintiff subsequently
served its survey Rule 11 motion nearly three weeks later, on May 15, 2024, only after Defendants’
counsel inquired, and Defendants swiftly sought [Plaintiff]’s consent to stay, and later to extend,
the deadline to exchange written discovery responses until after the June 18 Conference, because
they understood the threat of a Rule 11 motion as a pretext to withhold discovery “and foresaw the
chaos [Plaintiff] was trying to sow.” (Id.) On June 4, 2024, Plaintiff requested a conference with
Defendants to discuss yet another protective order and also served additional discovery requests,
before even receiving written responses to Plaintiff’s first discovery requests. (Id.) Defendants
counsel conferenced with Plaintiff’s counsel, at Plaintiff’s request, on June 13, 2024, ahead of the

June 18 conference. (Id.) On June 19, 2024, Plaintiff demanded defendants confer to set a briefing
schedule for a summary judgment motion and “refused to grant a short extension” for Defendants
to respond to its second set of discovery demands unless they agreed. (Id.)
Defendants further contend they have not engaged in willful discovery violations, and
Plaintiff’s Motion to Compel—filed three weeks after Defendants served responses to Plaintiff’s
first discovery requests and 11 days after Defendants served responses to Plaintiff’s second
discovery requests—is premature. (Id. at 2.) Defendants argue they have accommodated Plaintiff’s
multiple requests for long extensions and worked in good faith to resolve disputes. (Id.) Defendants

12
claim they have complied with the June 25, 2024, and July 5, 2024, deadlines to serve written
discovery responses and also “justifiably requested holding only one Rule 37 conference to
address all parties’ written discovery responses.” (Id.) Defendants maintain the parties initially
contemplated document production would occur after exchange of written responses and Plaintiff
demanded production only 11 days after receiving Defendants’ second discovery responses, and

filed its Motion to Compel less than one week after defendants explained they will be producing
documents. (Id.) Defendants contend the deadline to produce documents is currently held in
abeyance because Plaintiff’s Motion for a Protective Order is pending, and Defendants are
otherwise “diligently working to produce documents and hope to begin their rolling production”
before the August 13, 2024 Status Conference scheduled before the undersigned. (Id.) Defendants
further maintain that Plaintiff does not explain why Defendants’ specific objections to particular
discovery requests were improper:
For example, [Plaintiff] asks this Court to order [D]efendants to “immediately answer
interrogatories 4, 7-10 fully, and if there is a citation to documents, only as a
supplementation,” but does not identify which [D]efendant’s interrogatory responses were
deficient. Kennedy’s responses to those interrogatories referred to “documents it will
produce on a rolling basis pursuant to MSPP’s first request for production.” [Defendants
fully objected to Interrogatory 9, answered Interrogatory 8, and similarly referred to
documents it will produce. [Plaintiff]’s contention that [D]efendants must specifically
respond to these interrogatories rather than producing documents is misplaced. Rule 33
allows a party to produce business records when “the answer to an interrogatory may be
determined by examining, auditing, compiling, abstracting, or summarizing a party’s
business records . . ., and . . . the burden of deriving or ascertaining the answer will be
substantially the same for either party.” Fed. R. Civ. P. 33(d).

(Id. at 2-3.) (cleaned up) (internal citations omitted).

Defendants further argue Plaintiff also has no basis to compel a summary judgment motion
now because discovery is incomplete, and this Court “should not allow [Plaintiff] to use a
temporary stay of its obligation to respond to [D]efendants’ discovery requests to force a premature
13
summary judgment motion.” (Id. at 3.) Defendants claim that Plaintiff has refused to answer 18 of
Defendants’ 21 interrogatories and 10 of Defendants’ 30 requests for production, and also has not
confirmed it produced all documents, as none of its written responses identify specific documents
or bates numbers. (Id.) Defendants request that once this Court decides Plaintiff’s pending Motion
for a Protective Order, it set deadlines for Plaintiff to revise its discovery responses, and for the

parties to subsequently meet and confer on all parties’ discovery responses. (Id.) Defendants
further request this Court issue an Order requiring pre-motion conferences for any other motions,
to avoid additional chaos and delay. (Id.)
B. Analysis
Pursuant to Fed. R. Civ. P. 26:
Parties may obtain discovery regarding 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.
Fed. R. Civ. P. 26(b)(1).
Information “is relevant if: ‘(a) it has any tendency to make a fact more or less probable
than it would be without the evidence; and (b) the fact is of consequence in determining the
action.’” Vaigasi v. Solow Mgmt. Corp., No. 11-CV-5088, 2016 WL 616386, at *11 (S.D.N.Y.
Feb. 16, 2016) (quoting Fed. R. Evid. 401). Moreover, “[t]he party seeking the discovery must
make a prima facie showing that the discovery sought is more than merely a fishing expedition.”
Evans v. Calise, No. 92-CV-8430, 1994 WL 185696, at *1 (S.D.N.Y. May 12, 1994); see also
Mandell v. The Maxon Co., Inc., No. 06-CV-460, 2007 WL 3022552, at *1 (S.D.N.Y. Oct. 16,
2007) (“[T]he party seeking discovery bears the burden of initially showing relevance.”). To that
14
end, the discovery sought by the parties must be, as stated by Rule 26, proportional to the needs of
the case, taking into consideration such aspects as the importance of the issues, the amount in
controversy, the parties’ resources and access to the information sought, and the importance of the
information sought to the asserted claims or defenses. Sibley v. Choice Hotels Int’l, No. 14-CV-
634 (JS) (AYS), 2015 WL 9413101, at *2–3 (E.D.N.Y. Dec. 22, 2015).

“Rule 26 has defined the scope of discovery to consist of information that is relevant to the
parties’ ‘claims and defenses.’” Pothen v. Stony Brook Univ., No. 13-CV-6170 (JFB) (AYS), 2017
WL 1025856, at *2 (E.D.N.Y. Mar. 15, 2017). “Thus, the discretionary authority to allow
discovery of ‘any matter relevant to the subject matter involved in the action’ has been eliminated,”
and permissible discovery under Rule 26 must be relevant “to any party’s claim or defense,” and
that means “proportional to the needs of the case.” Id. at *3 (citing Fed. R. Civ. P. 26(b)(1)).
Proportionality goes “hand-in-hand” with relevance. New Falls Corp. v. Soni, No. 16-CV-6805
(ADS) (AKT), 2020 WL 2836787, at *2 (E.D.N.Y. May 29, 2020). That is, the more relevant the
information sought is, the less likely the Court would find the subject discovery disproportionate.

Id. It is beyond doubt that “[m]otions to compel are left to the court’s sound discretion.” Mirra v.
Jordan, No. 13-CV-5519, 2016 WL 889683, at *2 (S.D.N.Y. Feb. 23, 2016); see also Liberty Mut.
Ins. Co. v. Kohler Co., No. 08-CV-867, 2010 WL 1930270, at *2 (E.D.N.Y. May 11, 2010) (“[A]
motion to compel is entrusted to the sound discretion of the district court.”).
As the parties are aware, the Federal Rules of Civil Procedure, the Local Civil Rules of
this Court, and the undersigned’s Individual Practice Rules concomitantly require that parties
meet and confer in a good faith attempt to resolve discovery disputes before formally initiating
motion practice or raising disputes with the Court. See Individual Practice Rule 3.A; Local Civil
Rules 26.4, 37.3(a); Fed R. Civ. P. 37(a). This requires the parties to:
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Meet, in person or by telephone, and make a genuine effort to resolve the dispute by
determining: (i) what the requesting party is actually seeking; (ii) what the discovering
party is reasonably capable of producing that is responsive to the request; and (iii) what
specific genuine issues, if any, cannot be resolved without judicial intervention.

Excess Ins. Co. v. Rochdale Ins. Co., No. 05-CV-10174, 2007 WL 2900217, at *12 (S.D.N.Y. Oct.
4, 2007) (emphasis added) (explaining the meet and confer requirement). This command is
repeatedly reaffirmed – perhaps because the meet and confer requirement obviates unnecessary
judicial handholding and encourages parties to raise only genuine disputes that could not otherwise
be resolved with good faith and civility. See Excess Ins. Co. v. Rochdale Ins. Co., No. 05-CV-
10174, 2007 WL 2900217, at *1 (S.D.N.Y. Oct. 4, 2007) (“The purpose of the meet and confer
requirement is to resolve discovery matters without the court’s intervention to the greatest extent
possible. Only those matters that remain unresolved after serious attempts to reach agreement
should be the subject of a [discovery motion].”); see also Ross v. Citifinancial, Inc., 203 F.R.D.
239, 240 (S.D. Miss. 2001) (the meet and confer “prerequisite is not an empty formality” and
“cannot be satisfied by including with the motion copies of correspondence that discuss the
discovery at issue”).
It is apparent from the instant application that the parties have not made a meaningful effort
to meet and confer prior to raising this dispute with the Court. Meet and confers should not be
treated as a mere “drive-by.” Perfunctory email correspondence for example simply does not
suffice. See, e.g., ECF Nos. 57 at 2.1 The Court additionally notes the parties had an opportunity

1 The parties are reminded – once again (see Electronic Order dated June 6, 2024) – that to “‘[c]onfer’
means to meet, in person or by telephone, and make a genuine effort to resolve the dispute by determining
... (a) what the requesting party is actually seeking, (b) what the discovering party is reasonably capable of
producing that is responsive to the request, and (c) what specific genuine issues, if any, cannot be resolved
without judicial intervention.” Big Apple Pyrotechnics v. Sparktacular Inc., No. 05 Civ. 9994, 2006 WL
587331, at *1 (S.D.N.Y. Mar. 8, 2006); see also Deckon v. Chidebere, No. 93 Civ. 7845, 1994 WL 494885,
at *5 (S.D.N.Y. Sept. 9, 1994). The movant must provide evidence of its good faith efforts; a mere
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to discuss any outstanding discovery disputes or issues at the June 18 Status Conference before
the undersigned, and yet apparently chose not to do so. (ECF No. 54.) Accordingly, the parties are
hereby directed to, on or before August 23, 2024, meet and confer by person or by telephone, and
make a genuine effort to resolve the dispute by determining the factors above. If genuine disputes
remain after the parties have met and conferred, Plaintiff’s counsel may renew its Motion.2

conclusory statement where the movant asserts he has fulfilled this requirement is insufficient. See
Prescient Partners, L.P. v. Fieldcrest Cannon, Inc., No. 96 Civ. 7590, 1998 WL 67672, at *2 (S.D.N.Y.
Feb. 18, 1998) (citing U.S. Bankcorp Equip. Fin., Inc. v. Babylon Transit, Inc. 270 F.R.D. 136, 140,
(E.D.N.Y. 2010)); Harris v. Target Corporation, No. CA 17-0569-CG-MU, 2018 WL 6220109, at *1 (S.D.
Ala. Aug. 30, 2018) (“Simply corresponding with opposing counsel is not considered a good-faith attempt
to confer or have a conference to resolve discovery disputes.”); Antonis v. Elecs. for Imaging, Inc., No.
CIV. 07-CV-163JL, 2008 WL 169955, at *1 (D.N.H. Jan. 16, 2008) (holding a serial reiteration of demands
over email “probably does not meet the requirement that the parties confer in good faith about discovery
issues before invoking judicial remedies.”); C.f. Kirschenman v. Auto-Owners Ins., 280 F.R.D. 474, 479
(D.S.D. 2012) (finding sustained communication itemizing the issues with particularity and explaining why
those issues were disputed evinces a good-faith attempt to meet and confer). Plaintiff’s Counsel is further
cautioned that “[n]o motion to compel will be considered by the Court unless the meet and confer
requirement of Rule 37(a)(1) is met[,]” and is directed to refrain from making any further discovery motions
without complying with this requirement. McLain v. Daniel N. Gordon, PC, No. C09-5362BHS, 2010 WL
11685123, at *1 (W.D. Wash. June 29, 2010); Velazquez-Perez v. Devs. Diversified Realty Corp., 272
F.R.D. 310, 312 (D.P.R. 2011) (“The only thing that can be drawn from these communications is plaintiff's
unwillingness to solve the dispute by threatening the defendant with filing a motion to compel if the
documents requested were not produced.”). “As a party to this lawsuit—indeed, the one who initiated it”
the undersigned notes that “Plaintiff ha[s] an affirmative obligation to move the litigation forward and to
engage in the meet-and-confer process in good faith with Defendants[.]” Nasreen v. Capitol Petroleum
Grp., LLC, 340 F.R.D. 489, 495 (D.D.C. 2022).

2 The Court further cautions both Counsel for Plaintiff and Counsel for Defendants to refrain from ad
hominem attacks in papers and threats of motion practice against one another. See Van Gundy v. Atlas Rare
Coins, Inc., No. 23CV2072NJCJMW, 2023 WL 8622844, at *3 (E.D.N.Y. Dec. 13, 2023). “Most of us say
things in our heads that we wouldn’t say out loud. And most of us say things out loud that we wouldn’t say
in a court filing. But not everyone is blessed with the same filter or with the same willingness to use the
brake pedal.” Porch v. Univ. of Illinois at Chicago, No. 21-cv-3848, 2023 U.S. Dist. LEXIS 39619 (N.D.
III. Mar. 9, 2023). Such an approach of using ad hominem attacks is not only beyond acceptable advocacy
in this Court’s eyes, but in fact fails to advance the parties’ position or persuade the court in any way.
Indeed, the personal attacks undermine the mudslinger’s credibility in this Court’s view.

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CONCLUSION

For the reasons stated herein, Plaintiff’s Motion for a Protective Order (ECF No. 53) and
Supplemental Motion (ECF No. 55) are DENIED. Plaintiff’s Motion to Compel (ECF No. 57) is
DENIED, without prejudice and with leave to renew. The parties are directed to meet and confer
on the issue of outstanding discovery responses by August 23, 2024. If issues remain following
the meet and confer, Plaintiff may renew its Motion. To the extent Plaintiff seeks sanctions against
Defendants, Plaintiff is directed to make a formal motion in accordance with the undersigned’s
Individual Rules. Plaintiff is further advised that summary judgment motion practice may only be
commenced upon completion of discovery. See e.g., Hellstrom v. U.S. Dep’t of Veterans Affairs,
201 F.3d 94, 97 (2d Cir. 2000) (quoting Berger v. U.S., 87 F.3d 60, 65 (2d Cir. 1996) (alteration
in original) (“[S]ummary judgment should only be granted ‘if after discovery, the nonmoving party
has failed to make a sufficient showing on an essential element of [its] case with respect to which
[it] has the burden of proof.’”). The end date for all fact discovery, September 20, 2024, otherwise
remains in place. (ECF No. 50; Electronic Order dated April 9, 2024.) The parties are further

directed to file a Joint Status Report on or before September 6, 2024, advising the Court on the
status of discovery and what items remain. Following review of the September 6 Status Report,
the undersigned will set remaining dates and deadlines in this case.
In light of this disposition, the status conference previously scheduled for August 13, 2024
is hereby cancelled.

Dated: Central Islip, New York
August 12, 2024
S O O R D E R E D:

/S/James M. Wicks
JAMES M. WICKS
United States Magistrate Judge
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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10659167. Public record. Not legal advice.