Opinion
Case No. 2:03CV459TS
June 14, 2004
ORDER GRANTING MOTION FOR PROTECTIVE ORDER
This suit alleges common law unfair competition, federal trademark infringement, and false origin of source claims. This case is referred to the magistrate judge under 28 U.S.C. § 636(b)(1)(A).
Memorandum in Opposition to Defendant's Motion for a Protective Order (Plaintiff's Memorandum), docket no. 29, filed June 10, 2004, at 9. See also Memorandum in Support of HSN Improvements LLC Motion for Protective Order to Limit Discovery (Defendant's Memorandum), docket no. 23, filed May 21, 2004, at 4.
Docket no. 2, filed May 21, 2003, and docket no. 3, filed May 22, 2003.
Defendant moved for a protective order with respect to a Rule 30(b)(6)deposition. The court ordered that any opposition to the motion be filed by June 4, and that any reply be filed by June 9th. Subsequently, counsel stipulated to extend the time for filing the response to June 10th, and made no provision for reply. The court has carefully reviewed the papers filed by the parties.
Docket no. 22, filed May 21, 2004.
Docket no. 24, filed June 27, 2004.
Docket no. 25, filed June 1, 2004, and Order, docket no. 26, filed June 8, 2004.
The dispute centers around two paragraphs in the notice of deposition asking Defendant to designate representatives qualified to testify about:
Attached as Exhibit 1 to Defendant's Memorandum, docket no. 23, filed May 21, 2004.
1. [Defendant] HSN's business practices relating to the selection of products to sell and/or manufacture; and
2. Process for deciding whether HSN will sell someone else's product or make one of their own.
Defendant asks "that the Court limit discovery for [these] subjects . . . to those actions and activities relating to the [allegedly infringing products] sold by [it]. Defendant points out that it sells "thousands of products," which would make the proposed discovery burdensome. Defendant also asserts the area of inquiry is not relevant and that this information "would be of incredible value" to Plaintiff, if Plaintiff wanted to compete with Defendant.
Defendant's Memorandum at 12.
Id. at 9.
Id. at 8 and 9.
Plaintiff claims that Defendant admits "We tend to go after like the highest volume products to like enhance or make better what's on the market and then manufacture ourselves" and that this is "what's in our book." Plaintiff claims that these practices are probative on
Transcript of phone conversation attached as Exhibit C to Plaintiff's Memorandum, at 2 and 3.
Under Fed.R.Civ.P. 26(b)(1), Plaintiff is entitled to discover "any matter, not privileged, that is relevant to the claim or defense of any party," but subject to the limitations of Rule 26(b)(2) and (c).
The frequency or extent of use of the discovery methods otherwise permitted under these rules and by any local rule shall be limited by the court if it determines that: (i) the discovery sought is unreasonably cumulative or duplicative, or is obtainable from some other source that is more convenient, less burdensome, or less expensive; (ii) the party seeking discovery has had ample opportunity by discovery in the action to obtain the information sought; or (iii) the burden or expense of the proposed discovery outweighs its likely benefit, taking into account the needs of the case, the amount in controversy, the parties' resources, the importance of the issues at stake in the litigation, and the importance of the proposed discovery in resolving the issues.
Fed.R.Civ.P. 26(b)(2).
"[T]he court . . . may make any order which justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense. . . ." Fed.R.Civ.P. 26(c).
The two areas of inquiry listed in the notice of deposition are different. The first area is unquestionably broad and a complete inquiry of that entire subject would be burdensome. Therefore, it will be limited, as follows, to the products at issue in this litigation:
1. [Defendant] HSN's business practices relating to the selection of Brick Clip® and Brick Grip and similar products to sell and/or manufacture.
The second area of inquiry relates more closely to Defendant's allegedly wrongful practice of appropriating the manufacture of a successfully marketed product. This subject area will not be limited in scope, but protections will be imposed for the benefit of Defendant. The category of information is:
2. Process for deciding whether HSN will sell someone else's product or make one of their own. will not be limited in scope, but protections will be imposed for the benefit of Defendant. The category of information is:
2. Process for deciding whether HSN will sell someone else's product or make one of their own.
To the extent that Defendant has concerns about the "trade secret or other confidential research, development, or commercial information" that is delivered under this description, the parties shall agree on a method of treatment of such information as "CONFIDENTIAL — ATTORNEYS ONLY" under the Protective Order in this case, and pending such agreement, Defendant HSN may designate information about "the process for deciding whether HSN will sell someone else's product or make one of their own" as "CONFIDENTIAL — ATTORNEYS ONLY" which may only be shared with or shown to (a) outside counsel of record for the parties in this action, and the partners, associates, secretaries, paralegal assistants, and employees of such counsel to the extent reasonably necessary to render professional services in the action; (b) witnesses produced by HSN; and (c) court officials or staff involved in this litigation. Provisions of the Protective Order not inconsistent with this limitation on use shall apply to this category of information until counsel agree on an appropriate amendment to the Protective Order.
Docket no. 16, filed December 5, 2003.