Illinois Agricultural Association v. Rural Media Group, Inc. et al

Filing 60

ORDER denying 54 Motion to Quash and 54 Motion for Protective Order. See written order. Entered by Magistrate Judge Jonathan E. Hawley on 4/7/14. (WW, ilcd)

E-FILED

Monday, 07 April, 2014 04:13:07 PM
Clerk, U.S. District Court, ILCD

IN THE UNITED STATES DISTRIC COURT
CENTRAL DITRICT OF ILLINOIS
PEORIADIVISION
ILLINOIS AGRICULTURAL
ASSOCIATION
Plaintiff
Case No. 13-1220
v.
RURAL MEDIA GROUP, INC. and
SIRIUS XM RADIO INC.
Defendants.
ORDER
Now before the Court is the Plaintiff Illinois Agricultural Association’s
Motion to Quash Deposition Subpoena and for Protective Order (Doc. 54). For the
reasons stated herein, the Motion is DENIED.
In this lawsuit, the Plaintiff alleges willful and intentional violations of its
trademarks protected under federal and state law by the Defendant, Rural Media
Group, Inc. (RMG). The Defendant argues that the Plaintiff acted unreasonably and
failed to mitigate its damages by immediately commencing this litigation without
first contacting RMG about the dispute over its alleged infringement of IAA’s
trademarks. The Defendant also states that key issues have emerged in this case
relating to the Plaintiff’s conduct in its discussions with RMG in March, April, and
May of 2013 regarding the decisions to initiate this lawsuit and to prosecute it to its
fullest extent despite RMG’s instant cooperation and stated desire to promptly
resolve the suit. The Plaintiff seeks to quash a subpoena for the deposition of IAA’s
1

former president, Philip Nelson, whom the Defendant argues was involved during
each material step of discussions between IAA and RMG that occurred in March,
April, and May of 2013.
The Plaintiff seeks an order quashing Nelson’s deposition subpoena pursuant
to Federal Rule of Civil Procedure 45(d)(3) which provides, among other things, that
the Court must quash a subpoena that “requires disclosure of privileged or other
protected matter . . . or subjects a person to undue burden.” Federal Rule of Civil
Procedure 26(b)(2) simultaneously provides for limitations on the extent of
discovery where the discovery sought is unreasonably cumulative or duplicative or
can be obtained from some other more convenient source, the party seeking the
information had ample opportunity to obtain it during the action, or the burden or
expense of the sought after discovery outweighs its benefit. FRCP 26(b)(2)(C)(i) ,(ii),
(iii).
As for the Plaintiff’s privilege argument, the Court is not convinced that on
that basis, the Defendant should not be allowed to depose Nelson. In Hunt Int’l
Resources Corp. v Binstein, the district court explained that rather than preclude an
attorney’s deposition entirely based upon attorney-client privilege, “the better
procedure . . . would be to allow [the attorney’s] deposition to proceed and for any
claims of privilege to be resolved during the course of his examination.” 98 FRD
689, 691 (ND Ill 1983). The Seventh Circuit has looked upon the rationale in Hunt
and other cases in accord with that rationale with favor. See NLRB v Modern Drop
2

Forge Co., 108 F.3d 1379, at *3 (collecting cases). Accordingly, this Court finds that
the Plaintiff is not entitled to entirely preclude Nelson’s deposition based upon
privilege.1
The Plaintiff’s contention that Nelson’s deposition subpoena should be
quashed and a protective order entered based upon expense, burden, and
cumulativeness fares no better. While the Plaintiff argues the expense of taking
Nelson’s deposition to be too great, it does not explain why that would be so. The
Defendant points out that Nelson resides in Illinois and that IAA has litigation
counsel in Peoria, Illinois. Notably, Nelson is IAA’s former president. Moreover,
while the Plaintiff says that Nelson does not have any unique or superior
knowledge of any material facts, the documents submitted by Defendants at least
suggest otherwise. The statements Nelson made in his Affidavit attached to the
Plaintiff’s Memorandum in Support of its Motion to Quash (Doc. 55-1 at p. 1) do not
definitively provide that he does not have information on the issues for which the
Defendant seeks to depose him.
The documents submitted by the Defendant indicate that Nelson’s deposition
is not sought to harass a high level executive (a former one, at that) without any
personal knowledge of the matters at issue here. See Berning v UAW Local 2209, 242

Without a copy of the transcript from Chris Magnuson’s deposition which apparently indicates IAA’s
counsel’s stipulation to waiver of the attorney-client privilege on the record with respect at least to
communications and advice from its Assistant General Counsel, Andrew Bender, the Court will not address
the Defendant’s position in its Response to the Motion to Quash that such as waiver was made. See (Doc. 58 at
p. 7).
1

3

FRD 510, 514 (ND Ind 2007) (protective order warranted precluding the deposition
of the International UAW’s president, who oversaw more than 600 employees and
who specifically identified some responsibilities he had at the time his deposition
was sought, where his position made him vulnerable to unwarranted harassment);
Meharg v I-Flow Corp., 2009 WL 1404603, at *3 (SD Ind May 15, 2009) (considering the
totality of the circumstances and concluding that the defendant’s president and CEO
could be deposed even though deposing him was possibly more burdensome
because of his position).
Here, the totality of the circumstances does not necessitate that the Motion to
Quash and for Protective Order be granted. See Patterson v Avery Dennison Corp., 281
F3d 676, 681 (7th Cir 2002) (explaining that a district court should consider the
totality of the circumstances before restricting discovery in a particular case).
Nevertheless, the parties may contact the Court to schedule a conference call to
promptly resolve any disputes concerning the extent of questions asked of Nelson
during his deposition.

The Motion to Quash Deposition Subpoena and for

Protective Order (Doc. 54) is DENIED.
Entered on April 7, 2014.

s/Jonathan E. Hawley
U.S. MAGISTRATE JUDGE

4