Case 2:19-cv-10074-PA-RAO Document 62 Filed 08/13/20 Page 1 of 4 Page ID #:360

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES – GENERAL

Case No.: 2:19-cv-10074-PA-RAOx Date: August 13, 2020

Title: Gianni Versace S.r.l. v. Fashion Nova, Inc.

Present: The Honorable ROZELLA A. OLIVER, U.S. MAGISTRATE JUDGE

Donnamarie Luengo N/A

Deputy Clerk Court Reporter/Recorder

Attorneys Present for Plaintiff(s): Attorneys Present for Defendant(s):

N/A N/A

Proceedings: (In Chambers) MINUTE ORDER RE: DEPOSITION OF

DONATELLA VERSACE

Pending before the Court is a discovery dispute regarding the deposition of Donatella
Versace. The Court and the parties previously discussed this issue at an informal discovery
hearing. See Dkt. No. 52. At that time, the Court determined that it would be appropriate for the
parties to conduct the related Rule 30(b)(6) deposition(s) first, and Defendant could raise the
issue with the Court if necessary after the Rule 30(b)(6) deposition(s). Defendant has requested
the Court revisit the issue, and the parties have submitted letter briefing in support of their
positions.1 The Court finds the matter suitable for decision without oral argument. See Fed. R.
Civ. P. 78; L.R. 7-15. For the reasons set forth below, the Court DENIES Defendant Fashion
Nova, Inc.’s (“Defendant”) request to compel the deposition of Ms. Versace. However, the
Court will require Plaintiff Gianni Versace S.r.l. (“Plaintiff”) to provide interrogatory responses
to Defendant as to the information that Defendant contends was not answered during the recent
Rule 30(b)(6) deposition of Antonio Masciariello.

The Court considers it appropriate to apply the standard for apex depositions to this
dispute. Under the apex doctrine, when deciding whether to allow a party to take the deposition
of a high-level executive of another party, courts consider “(1) whether the deponent has unique
first-hand, non-repetitive knowledge of facts at issue in the case and (2) whether the party
seeking the deposition has exhausted other less intrusive discovery methods.” Affinity Labs of
Texas v. Apple, Inc., No. C 09-4436 CW JL, 2011 WL 1753982, at *15 (N.D. Cal. May 9, 2011)

1
The letter briefing was emailed to the Court and the emailed letter briefs and exhibits are
attached to this order.

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Case 2:19-cv-10074-PA-RAO Document 62 Filed 08/13/20 Page 2 of 4 Page ID #:361
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES – GENERAL

Case No.: 2:19-cv-10074-PA-RAOx Date: August 13, 2020

Title: Gianni Versace S.r.l. v. Fashion Nova, Inc.

(citing WebSideStory, Inc. v. NetRatings, Inc., No. 06-CV-408 WQH (AJB), 2007 WL 1120567,
at *2 (S.D. Cal. Apr. 6, 2007)). Although Ms. Versace may not be the top corporate executive of
Plaintiff, the Court finds that the concerns relating to apex depositions apply to some degree
given Plaintiff’s representations of Ms. Versace’s current and former role in the company.
Additionally, a case cited by Defendant, Apple Inc. v. Samsung Elecs. Co., 282 F.R.D. 259 (N.D.
Cal. 2012), suggested that the doctrine be applied on a “sliding scale,” with the protections of the
apex doctrine becoming more appropriate the closer a proposed witness is to the apex in a
corporation and the less directly relevant that person is to the evidence proffered in support of the
deposition. Id. at 263. The Court has taken into consideration the closeness of Ms. Versace to
the apex of Plaintiff’s corporate structure and the relevance of the testimony she may have to the
claims and defenses in this action and concludes that application of the apex doctrine is
appropriate.

With respect to the general issue of deposing creators or designers of trade dresses, the
Court finds persuasive Plaintiff’s assertion that Defendant has not cited to any caselaw to support
the contention that depositions of such creators or designers are common in intellectual property
litigation for purposes of supporting an invalidity defense. None of the cases cited by Defendant
ordered a deposition of a creator or designer of a trademark or trade dress, or discussed the
significance or relevance of testimony by a creator or designer of a trademark or trade dress to
functionality. See, e.g., Apple, 282 F.R.D. at 261-71 (compelling depositions of corporate
executives of the accused infringer in a patent case); In re Google Lit., No. C 08-03172 RMW
(PSG), 2011 WL 4985279 (N.D. Cal. Oct. 19, 2011) (ordering the deposition of the inventor of a
patent). The one case offered by the parties that discusses the relevance of deposition testimony
of the designer of a trade dress provides that the type of information a designer may possess
about the inspiration for a given design would likely be marginal to the issue of a trade dress
action, “such as what the design actually is (regardless of its source), and how it is presented to
and received by the public.” Amini Innovation Corp. v. McFerran Home Furnishings, Inc., 300
F.R.D. 406, 412 (C.D. Cal. 2014).

The Court also finds that the information Defendant contends it needs from Ms. Versace
that it could not obtain from Mr. Masciariello is not sufficiently relevant to the case to warrant
the deposition of Ms. Versace, or that Defendant has not shown the information is uniquely
within Ms. Versace’s knowledge. Defendant bases its arguments on relevance on the standard
for functionality of a trade dress set forth in Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d

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Case 2:19-cv-10074-PA-RAO Document 62 Filed 08/13/20 Page 3 of 4 Page ID #:362
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES – GENERAL

Case No.: 2:19-cv-10074-PA-RAOx Date: August 13, 2020

Title: Gianni Versace S.r.l. v. Fashion Nova, Inc.

1002, 1006 (9th Cir. 1998). In Disc Golf, the Ninth Circuit provided a list of four factors to
consider in determining whether a product feature is functional: “(1) whether the design yields a
utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts
the utilitarian advantages of the design, and (4) whether the particular design results from a
comparatively simple or inexpensive method of manufacture.” Id.

Defendant asserts that Mr. Masciariello had no knowledge and could not explain why
Ms. Versace chose to use a jungle print. It is not apparent to the Court why the subjective reason
Ms. Versace chose the specific print is relevant to functionality. Defendant asserts that this
testimony would be relevant to whether the print delivers any utilitarian advantage or whether
alternate designs are possible. However, the standard set forth in Disc Golf appears to be an
objective standard focused on the ultimate design rather than a subjective standard. Moreover, it
appears from the deposition excerpts provided to the Court that Mr. Masciariello did provide an
explanation for why Ms. Versace chose the jungle print. See, e.g., Masciariello Dep. Tr. 60:20-
61:10, 61:13-16. And Defendant has not presented excerpts of the deposition showing that Mr.
Masciariello was asked whether alternate designs were possible or considered by Ms. Versace.

Defendant also contends that Mr. Masciariello had no knowledge and could not testify on
the specific production process for the Jungle Trade Dress. For example, Defendant points out
that Mr. Masciariello could not answer questions about samples or prototypes, whether changes
were made in the production process, and whether there were differences between the original
design and the final version that was ultimately produced. Defendant asserts that this
information is relevant to three Disc Golf factors, that is, whether any changes resulted in
utilitarian advantages, whether the changes reflect alternative design choices, or whether any
changes were carried out based on cost considerations. Again, the Court finds that the
information Defendant contends Mr. Masciariello could not answer is not relevant to
functionality, or is of such limited relevance that a deposition of Ms. Versace would not be
justified. It is not apparent how asking Ms. Versace about prototypes or changes in the process
of manufacturing the dress would be relevant to whether the ultimate design yields a utilitarian
advantage or whether alternative designs are available for the trade dress. Additionally,
Defendant has not shown that Mr. Masciariello was asked whether the trade dress design resulted
from a comparatively simple or inexpensive method of manufacture, or whether there were cost
considerations in the particular design. Therefore, Defendant has not shown that Ms. Versace

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Case 2:19-cv-10074-PA-RAO Document 62 Filed 08/13/20 Page 4 of 4 Page ID #:363
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES – GENERAL

Case No.: 2:19-cv-10074-PA-RAOx Date: August 13, 2020

Title: Gianni Versace S.r.l. v. Fashion Nova, Inc.

would have unique knowledge that Mr. Masciariello could not testify to regarding the fourth
Disc Golf factor.

Finally, to the extent Mr. Masciariello was not adequately prepared to answer certain
questions at his deposition and the answers would be relevant to the claims and defenses in this
action, the Court finds that Plaintiff’s compromise of providing responses to the unanswered
questions in the form of interrogatory responses adequately addresses Defendant’s concerns.
Therefore, the Court directs Defendant to draft and serve no more than five interrogatories based
on questions from Mr. Masciariello’s deposition that Defendant contends Mr. Masciariello could
not adequately answer by the close of business on August 14, 2020. Plaintiff shall provide
responses by the close of business on August 17, 2020.2 The interrogatories will not count
towards the Rule 33 limit.

IT IS SO ORDERED.
Attachments: Defendant’s Letter Brief and Exhibit; Plaintiff’s Letter Brief and Exhibit.

:
Initials of Preparer dl

2
The parties may agree to a different schedule without prior leave of Court.

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