Judge Rules on Discovery Dispute in Bitcoin Depot Trademark Lawsuit

News | May 17, 2024 By:

On Wednesday, May 1, 2024, the United States District Court for the Middle District of Florida issued an order on a discovery dispute between the parties in the trademark infringement lawsuit involving Byte Federal, Inc. and Lux Vending LLC, which does business as Bitcoin Depot.

Byte Federal had filed suit against Bitcoin Depot in January 2023alleging willful infringement of its federally registered “BYTEFEDERAL” trademark. In August 2023, Byte Federal amended its complaint to include The Cardamone Consulting Group and Huddled Masses as defendants, claiming they participated in the alleged infringement by providing advertising and marketing services to Bitcoin Depot.

Huddled Masses subsequently filed a motion to dismiss for lack of personal jurisdiction in Florida. Byte Federal was granted 60 days for jurisdictional discovery. As part of this discovery process, Byte Federal served its First Request for Production on Huddled Masses, seeking various documents. However, Huddled Masses took issue with some of the requests.

In its order, the Court addressed Huddled Masses’ objection that only jurisdictional discovery was permitted at this stage. While jurisdictional discovery is often limited initially, the Court found that Huddled Masses did not establish discovery must legally be confined in this way. The Court also rejected Huddled Masses’ argument that its discovery responses were timely, though it did not find waiver of objections was appropriate given the circumstances.

The order examined Byte Federal’s motion to compel responses to several specific requests. It denied Byte Federal’s motion regarding requests for communications between attorneys working on their clients’ joint defense, finding these subject to privilege. However, the Court concluded that in camera review is warranted for a joint defense agreement between Huddled Masses and Bitcoin Depot to assess the relevance and applicability of privilege claims.

The Court also denied motions to compel additional documentation regarding Huddled Masses’ Florida clients and marketing, finding declarations and statements provided sufficient. Overall, the ruling granted, in part and denied in part, Byte Federal’s motion to compel further discovery responses from Huddled Masses. Both sides’ requests for expenses were denied since each party prevailed on some issues.

Please contact BlockTribune for access to a copy of this filing.