In-N-Out Burgers v. Smashburger IP Holder LLC et al

Filing 39

STIPULATED PROTECTIVE ORDER by Magistrate Judge Douglas F. McCormick re Stipulation for Protective Order 37 (twdb)

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CAROLYN S. TOTO (SBN 233825)
[e-mail]
JEFFREY D. WEXLER (SBN 132256)
[e-mail]
SARKIS A. KHACHATRYAN (SBN 293991)
[e-mail]
PILLSBURY WINTHROP SHAW PITTMAN LLP
725 South Figueroa Street, Suite 2800
Los Angeles, CA 90017-5406
Telephone: [phone]
Facsimile No.: [phone]
Attorneys for Plaintiff
In-N-Out Burgers

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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SOUTHERN DIVISION

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IN-N-OUT BURGERS, a California
corporation,
Plaintiff,

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SMASHBURGER IP HOLDER LLC, a
Delaware limited liability company; and
SMASHBURGER FRANCHISING
LLC, a Delaware limited liability
company,

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Judge:
Hon. Josephine L. Staton
Magistrate: Hon. Douglas F. McCormick
Discovery Document: Referred to
Magistrate Judge Douglas F. McCormick

Defendants.

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STIPULATED PROTECTIVE ORDER

v.

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Case No. 8:17-cv-1474-JLS-DFM

SMASHBURGER IP HOLDER LLC,
and SMASHBURGER FRANCHISING
LLC,
Counterclaimants,

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v.

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IN-N-OUT BURGERS,
Counterdefendant.

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Good Cause Statement:

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Both sides in this case are involved in restaurants that sell, among other things,

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hamburgers, cheeseburgers, and fries. In this lawsuit, Plaintiff In-N-Out Burgers

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(“Plaintiff”) claims rights to various trademarks used for hamburgers and

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cheeseburgers, including DOUBLE-DOUBLE, and further claims that Defendants

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Smashburger IP Holder LLC and Smashburger Franchising LLC (collectively, with

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Plaintiff, the “Parties”) are committing, among other things, trademark infringement

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and trademark dilution by marketing and selling a hamburger called the Triple

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Double, or Smashburger Triple Double. Defendants deny these claims.

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The Parties expect that discovery in this case will include commercially

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sensitive information, such as sales figures, expenses, pricing, marketing plans, and

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future commercial plans. The Parties believe they would be harmed if this

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information was publicly disclosed. Further, for the most sensitive information, the

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Parties do not want each other access to such information, as it could give them a

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competitive advantage.

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Thus, and based on the request of the Parties, and good cause being found, the
Court ORDERS as follows:
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Any party to this litigation or any third party shall have the right to

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designate as “Confidential Material” and subject to this Order any information,

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document, or thing, or portion of any document or thing, that (a) contains

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competitively sensitive technical, marketing, financial, sales or other confidential

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business information, (b) contains private or confidential personal information,

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(c) contains information received in confidence from third parties, or (d) the

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producing party otherwise believes in good faith to be entitled to protection under

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Fed. R. Civ. P. 26(c)(1)(G) (“Confidential Material”). Any party or third party

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covered by this Order that produces or discloses any Confidential Material shall

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mark it with the following or a substantially similar legend: “CONFIDENTIAL.”

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2.

Any party to this litigation or any third party shall have the right to

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designate as “Attorneys’ Eyes Only Material” and subject to this Order any

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information, document, or thing, or portion of any document or thing, that the

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designating party reasonably believes is among that considered to be most sensitive

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by the party, including but not limited to trade secrets, pricing information, future

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marketing plans, and other highly sensitive business or personal information, the

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disclosure of which is highly likely to cause significant harm to an individual or to

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the business or competitive position of the designating party. Any party to this

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litigation or third party covered by this Order that produces or discloses any

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Attorneys’ Eyes Only Material shall mark the same with the following, or a

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substantially similar, legend: “HIGHLY CONFIDENTIAL - ATTORNEYS’ EYES

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ONLY.”

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3.

Any Confidential Material or Attorneys’ Eyes Only Material produced

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in a non-paper medium (e.g., videotape, audiotape, computer disc) may be so

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designated by labeling the outside of such non-paper medium, as appropriate, with

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the following, or a substantially similar, legend: “CONFIDENTIAL” or “HIGHLY

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CONFIDENTIAL - ATTORNEYS’ EYES ONLY.” In the event a receiving party

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generates any electronic copy, hard copy, transcription, or printout from any such

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designated non-paper medium, that party, and all persons subject to this Order, must

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treat each copy as the original was designated and label it in a manner consistent

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with this Order.

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4.

All designations of Confidential Material and Attorneys’ Eyes Only

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Material shall be made in good faith and in accordance with Fed. R. Civ. P.

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26(c)(1)(G). The parties will use reasonable care to avoid designating as

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Confidential Material or Attorneys’ Eyes Only Material documents or information

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that does not need to be designated as such. To the extent possible or reasonably

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practicable, the designating party must designate for protection only those parts of

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[PROPOSED] STIPULATED PROTECTIVE ORDER
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material, documents, items, or oral or written communications that qualify so that

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other portions of the material, documents, items, or communications for which

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protection is not warranted are not swept unjustifiably within the ambit of this Order.

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Mass, indiscriminate, or routinized designations are prohibited. Designations that

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are shown to be clearly unjustified or that have been made for an improper purpose

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(e.g., to unnecessarily encumber the case development process or to impose

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unnecessary expenses and burdens on other parties) may expose the designating

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party to sanctions. If it comes to a designating party’s attention that information or

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items that it designated for protection do not qualify for protection, that designating

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party must promptly notice all other parties that it is withdrawing the inapplicable

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designation.

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5.

All Confidential Material and Attorneys’ Eyes Only Material shall be

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used by the receiving party solely for purposes of the prosecution or defense of this

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action, shall not be used by the receiving party for any business, commercial,

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competitive, personal or other purpose, and shall not be disclosed by the receiving

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party to anyone other than the persons set forth in paragraphs 6 and 7, unless and

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until the restrictions under this Order are removed either by written agreement of

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counsel or Court Order. Counsel may, however, give advice and opinions to his or

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her client solely relating to this action based on an evaluation of Attorneys’ Eyes

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Only Material, provided that such advice and opinions shall not reveal the content of

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such Attorneys’ Eyes Only Material except by prior written agreement of counsel or

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Court Order.

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6.

Confidential Material and the contents of Confidential Material may be

disclosed only to the following individuals under the following conditions:

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a.

Outside counsel retained by the parties for this case;

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b.

Outside (non-party-affiliated) experts or consultants

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retained by outside counsel for purposes reasonably related to the scope

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of an expert’s work in this case, provided they have signed an

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Agreement to be Bound by Protective Order in the form attached hereto

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as Exhibit A;

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c.

Secretarial, paralegal, clerical, duplicating and data-

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processing personnel working under the direct supervision of outside

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counsel, in-house counsel, outside experts, or outside consultants

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described in paragraphs 6.a and 6.b;

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d.

The Court, court reporters, and court personnel;

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e.

Any witness who is shown or examined about any

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Confidential Material, if it appears that the witness originated, authored

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or received a copy of it, was involved in the specific subject matter

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described therein, or is employed by the party who produced the

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Confidential Material, or if the producing party consents to such

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disclosure;

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f.

Vendors retained by or for the parties to assist with respect

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to pretrial discovery, trial, or hearings, including but not limited to court

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reporters, litigation support personnel, jury consultants, mock jurors

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who sign Exhibit A, persons preparing demonstrative and audiovisual

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aids for use in court, in depositions, or mock jury sessions, as well as

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their staff, stenographic, and clerical employees whose duties and

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responsibilities require access to such materials;

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g.

The Parties, and their related entities, as well as their in-

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house attorneys, executives, officers, directors, managers, and

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employees with whom outside counsel of record find it necessary to

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consult, in the discretion of such counsel and in good faith, in preparing

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the action for trial or settlement and who have been made aware of this

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Order and have agreed to abide by its terms; and

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h.
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As ordered by the Court or agreed to by the Parties.

Material designated as Attorneys’ Eyes Only Material may be disclosed

only to the people listed above in paragraphs 6(a)-(f), and (h).
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Confidential Material and Attorneys’ Eyes Only Material shall be used

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only by individuals permitted access to it under paragraphs 6 or 7. Confidential

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Material and Attorneys’ Eyes Only Material, copies thereof, and the information

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contained therein, shall not be disclosed in any manner to any other individual until

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and unless (a) outside counsel for the party asserting confidentiality consents to the

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disclosure or waives the claim of confidentiality, or (b) the Court orders the

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disclosure.
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With respect to depositions during which there has been a general

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designation of testimony as Confidential Material or Attorneys’ Eyes Only Material,

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the party or third party designating the testimony as Confidential Material or

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Attorneys’ Eyes Only Material shall have until twenty-one (21) days after receipt of

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the deposition transcript within which to inform all parties the specific portions of

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the transcript that are to be designated as Confidential Material or Attorneys’ Eyes

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Only Material, which period may be extended by agreement of the parties. Failure to

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make a specific designation during this period will be construed as the withdrawing

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of the general confidentiality designation. During the 21-day period, the entire

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deposition will be treated pursuant to the general designation, unless otherwise

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agreed to by the party or third party making the general designation. This paragraph

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shall not apply if only specific portions of the deposition transcript were designated

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in the first instance.

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10.

Each person who signs the Agreement to be Bound by Protective Order

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attached hereto as Exhibit A shall be subject to the jurisdiction of this Court for

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purposes of any proceedings relating to compliance with or violation of this Order.

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11.

The recipient of any Confidential Material or Attorneys’ Eyes Only

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Material subject to this Order shall maintain that material in a secure location and

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exercise at all times due and proper care to ensure the continued confidentiality of

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the material.

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12.

A party shall not be obligated to challenge the propriety of a

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Confidential Material or Attorneys’ Eyes Only Material designation at the time

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made, and failure to do so shall not preclude a subsequent challenge thereto at any

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time during this litigation. If counsel for a party receiving documents or information

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in discovery in this case objects to the designation of any of them as Confidential

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Material or Attorneys’ Eyes Only Material, the following procedures shall apply:

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a.

Counsel for the objecting party shall serve on the

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designating party or third party a written objection to such designation,

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which shall describe with particularity the documents or information in

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question and state the grounds for objection. Counsel for the

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designating party or third party shall respond in writing to the objection

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within ten (10) days (or such later date as may be agreed to by counsel),

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and state with particularity the grounds for asserting that the document

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or information is Confidential Material or Attorneys’ Eyes Only

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Material. If no timely written response is made to the objection, the

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challenged designation will be deemed withdrawn. If the designating

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party or third party makes a timely response to such objection asserting

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the propriety of the designation, and the objecting party wishes to

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maintain its objection, the parties shall then follow Local Rule 37-1, or

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any alternate discovery resolution procedures put in place by the Court,

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to resolve the dispute. Pending resolution of the dispute, the document

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or information that is the subject of the filing shall be treated as

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originally designated.

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13.

Documents containing Confidential Material or Attorneys’ Eyes Only

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Material shall not be filed with the Court except as necessary. Any such filings will

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be made in good faith and not solely for an improper purpose such as harming,

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harassing or embarrassing another party. All requests to seal documents filed with

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the Court shall comply with Local Rule 79-5.1 and the Court’s procedures.

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If the need arises during a hearing to disclose publicly Confidential

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Material or Attorneys’ Eyes Only Material, the party seeking to make such

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disclosure shall attempt to provide the other party prior notice, if feasible, to discuss

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how best to handle the disclosure.

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This Order does not govern trial. Prior to the trial, the parties shall meet

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and confer to discuss how to handle Confidential Material and Attorneys’ Eyes Only

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Material, and may seek additional relief from the Court.

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The inadvertent disclosure of Confidential Material or Attorneys’ Eyes

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Only Material, regardless of whether it was so designated at the time of disclosure,

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shall not be deemed a waiver of confidentiality, either as to the specific material

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disclosed or as to any other material or information concerning the same or related

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subject matter. The inadvertent disclosure may be rectified by written notification,

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to counsel for all parties to whom the material was disclosed and within a reasonable

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time after disclosure, that the material should have been designated as Confidential

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Material or Attorneys’ Eyes Only Material. The written notification shall constitute

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a designation of the material as Confidential Material or Attorneys’ Eyes Only

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Material under this Order.

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When the inadvertent disclosure of any information, document or thing

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subject to attorney-client, another privilege, or work-product immunity, is discovered

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by the producing party and brought to the attention of the receiving party, the

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receiving party’s treatment of such material shall be in accordance with Fed. R. Civ.

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P. 26(b)(5)(B). When the receiving party discovers what appears to be the

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inadvertent disclosure by the producing party of any information, document or thing

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subject to attorney-client, another privilege, or work-product immunity, the receiving

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party shall bring such disclosure to the attention of the producing party. Any

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inadvertent disclosure of any information, document or thing subject to attorney-

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client, another privilege, or work-product immunity shall not by itself constitute a

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waiver by the producing party of any claims of privilege or work-product immunity.

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Nothing herein, however, herein restricts the right of the receiving party to challenge

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the producing party’s claim of privilege with the Court.

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18.

In the event any receiving party having possession, custody or control of

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any Confidential Material or Attorneys’ Eyes Only Material receives a subpoena,

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request for production of documents, or other process or order (the “Request”) to

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produce such material in another, unrelated legal proceeding, the receiving party

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shall (1) give notice of the Request to counsel for the disclosing party or third party

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that designated the material as Confidential Material or Attorneys’ Eyes Only

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Material, (2) provide a copy of the Request to counsel for the disclosing party or

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third party, and (3) cooperate in all reasonable efforts of the disclosing party or third

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party to oppose production of the material sought by the Request. The disclosing

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party or third party making the designation as Confidential Material or Attorneys’

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Eyes Only Material shall have the burden of defending against the Request. The

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party receiving the Request shall be entitled to comply with it except to the extent the

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disclosing party or third party making the Confidential Material or Attorneys’ Eyes

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Only Material designation obtains an order modifying or quashing the Request.

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19.

The parties agree that they do not need to place on a privilege log any

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document covered by the attorney-client privilege, and/or the attorney work product

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doctrine, so long as the document (a) was prepared by outside counsel for a Party

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and was not disclosed to any third party, (b) constitutes a communication between a

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Party and its outside counsel or its in-house counsel and was not disclosed to any

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third party, or (c) constitutes a communication between a Party’s outside or in-house

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counsel and an expert or consultant retained for this litigation. For clarification,

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communications between non-attorneys where the in-house counsel is merely copied

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on the communication should be identified on the privilege log notwithstanding

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subsection (b).

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20.

Nothing in this Order shall preclude any parties, third parties or their

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attorneys from disclosing or using any material or documents from the party’s or

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third party’s own files which the party or third party itself has designated as

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Confidential Material or Attorneys’ Eyes Only Material. No information that is in

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the public domain, or which is already rightfully known by the receiving party, shall

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be subject to this Order.

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21.

This Order shall not deprive any party of its right to object to discovery

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by any other party or on any otherwise permissible ground. This Order is being

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entered without prejudice to the right of any party to move the Court for

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modification or for relief from any of its terms.

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22.

This Order shall survive the termination of this action and shall remain

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in full force and effect unless modified by Court Order or the written stipulation of

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the parties filed with the Court.

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23.

Within sixty (60) days of the termination of litigation between the

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parties, including conclusion of all appeals and the expiration of time to appeal or

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seek further review, each party or other person or entity subject to the terms hereof

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shall, if the producing party or third party so requests, (a) assemble and return to the

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producing party or third party or destroy all original and unmarked copies of

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documents and things containing Confidential Material and Attorneys’ Eyes Only

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Material, and (b) destroy all copies of Confidential Material and Attorneys’ Eyes

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Only Material that contain or constitute attorney work product as well as excerpts,

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summaries and digests revealing Confidential Material and Attorneys’ Eyes Only

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Material; provided, however, that outside counsel may retain one copy of all

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transcripts and pleadings, and any exhibits thereto, as well as electronic copies,

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subject to the provisions of this Order.

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Good cause being found, IT IS SO ORDERED.

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Dated: January 31, 2018
Hon. Douglas F. McCormick
United States Magistrate Judge

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[PROPOSED] STIPULATED PROTECTIVE ORDER
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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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SOUTHERN DIVISION

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)
)
)
)
Plaintiff,
)
)
vs.
)
)
SMASHBURGER IP HOLDER LLC, )
a Delaware limited liability company; )
and SMASHBURGER
)
FRANCHISING LLC,
)
a Delaware limited liability company, )
)
Defendants. )
)
)
IN-N-OUT BURGERS, a California
corporation,

Case No. 8:17-cv-1474-JLS-DFM
AGREEMENT TO BE BOUND BY
PROTECTIVE ORDER

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I,

, declare that:

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My address is

.

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My present employer is

and the address of my present employment is

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.

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[PROPOSED] STIPULATED PROTECTIVE ORDER
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3.

My present occupation or job description is

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.

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4.

I have carefully read and understood the provisions of the Protective

Order the Court has entered in this case, and I will comply with all of its provisions.

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5.

I will hold in confidence and not disclose to anyone not authorized by

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the Protective Order any Confidential Material or Attorneys’ Eyes Only Material

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disclosed to me, or any summaries, abstracts, indices, descriptions, discussions, or

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other documents or communications containing or describing Confidential Material

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or Attorneys’ Eyes Only Material disclosed to me.

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6.

Material disclosed to me solely for purposes of this case.

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I will limit use of Confidential Material and Attorneys’ Eyes Only

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I agree to subject myself to the jurisdiction of this Court for the purpose

of any proceedings relating to compliance with or violation of the Protective Order.

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8.

Within sixty (60) days of the final conclusion of the case, I will return

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all Confidential Material and Attorneys’ Eyes Only Material and summaries,

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abstracts, and indices thereof which come into my possession, and documents or

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things which I have prepared relating thereto, to outside counsel for the party who

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disclosed the Confidential Material or Attorneys’ Eyes Only Material to me.

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

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IT IS SO ORDERED.

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Date:

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[Name]

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