RBM, Inc. v. Kia Motors America, Inc.

Filing 42

STIPULATED PROTECTIVE ORDER. The court finds good cause to enter the protective order submitted by the parties, but with modifications to paragraphs 6(c) and 7(b) to comply with the District of Kansas, Guideline for Agreed Protective Orders provision regarding application to non-parties. Signed by Magistrate Judge James P. O'Hara on 12/10/2012. (est)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
RBM, INC. d/b/a SHAWNEE MISSION KIA, )
)
v.
)
)
KIA MOTORS AMERICA, INC.,
)
)
v.
)
)
GROUP 1 AUTOMOTIVE, INC. and
)
GPI KS-SK, INC.
)

Case No. 12-cv-2175-EFM/JPO

JOINT STIPULATED PROTECTIVE ORDER
Upon Stipulation of the parties, and for good cause, the Court finds that a Protective
Order should be entered to protect confidential documents and commercial information which
may be made available to the Court or in the course of discovery in this case. The information
which may be made available to the Court or in the course of discovery includes but is not
limited to non-public business forecasts, reports, designs, plans, procedures, practices, policies,
communications, and analyses relating to automobile dealerships and franchises; customer and
personnel information; and information concerning trademarks, trade dress, and other intellectual
property relating to automobile dealerships and franchises. Releasing this information to the
parties' competitors, or permitting the parties to use this information for purposes other than this
lawsuit, poses a substantial risk of harming the parties' competitive position in the marketplace,
interfering with the parties' business operations, or invading the privacy rights of the parties'
customers and employees. Accordingly, is hereby ordered that the following principles and
procedures will govern any and all discovery:

1.

Definitions.
(a)

The term "action" means RBM, Inc. d/b/a/ Shawnee Mission Kia v. Kia

Motors America, Inc., No. 2:12-cv-02175-EFM-JPO, pending in the United States District Court
for the District of Kansas.
(b)

The term "administrative actions" means the proceedings relating to the

complaints filed by RBM, Inc. d/b/a Shawnee Mission Kia against Kia Motors America, Inc.
before the Kansas Department of Revenue, Division of Vehicles, including RBM, Inc. d/b/a
Shawnee Mission Kia v. Kia Motors America, Inc., OAH No. 12KR0001 DF.
(c)

The term "competitor(s)" means persons or entities endeavoring to engage

in the same or similar lines of business, provide the same or similar services, sell the same or
similar products, and/or operate in the same markets, as well as any persons or entities who are
actually engaged in any of these activities.
(d)

The term "Confidential Discovery Material" means any Discovery

Material that has been designated "Confidential" or "Confidential Attorneys Eyes Only."
(e)

The term "disclose" or "disclosure" means to show, give, make available,

or communicate in any fashion to any person any Discovery Material or any portion of
Discovery Material.
(f)

The term "Discovery Material" means all documents, depositions,

interrogatory responses, responses to requests for admissions, affidavits, exhibits, pleadings,
briefs, memoranda, transcripts, testimony, and any other information produced, given, submitted
to the Court, or exchanged by and among the parties and any non-parties to this litigation.
Discovery Material includes, but is not limited to, Confidential Discovery Material.

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(g)

The term "document" has the widest meaning accorded to it under the

Federal Rules of Civil Procedure and the case law construing it.
(h)

The term "party" means any party to this action.

(i)

The term "person" means any natural person, corporation, partnership,

sole proprietorship, group, association, organization, business entity, governmental body, or
agency.
(j)

The term "Producing Person" means any person who produces or supplies

any Discovery Material, and any person who generated, has rights in, or has an interest in any
Discovery Material.
(k)

The term "Protective Order" means this Joint Stipulated Protective Order.

This Protective Order governs the handling of all Discovery Material, whether such Discovery
Material was produced or submitted to the Court prior to or after the entry of this Protective
Order.
(l)

The term "Receiving Person" means any person to whom Discovery

Material is disclosed by a Producing Person in response to any discovery method.
2.

Description of "Confidential" and "Confidential Attorneys Eyes Only". A

Producing Person may designate as "Confidential" any Discovery Material that the Producing
Person believes in good faith to contain trade secrets, confidential or proprietary business or
commercial information, or other information of a personal or non-public nature (whether of the
Producing Person or a third party). Such Discovery Material may include but is not limited to
non-public business forecasts, reports, designs, plans, procedures, practices, policies,
communications, and analyses relating to automobile dealerships and franchises; customer and

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personnel information; and information concerning trademarks, trade dress, and other intellectual
property relating to automobile dealerships and franchises. Information that is the subject of a
non-disclosure or confidentiality agreement entered into by the Producing Person qualifies as
"Confidential." A Producing Person may designate as "Confidential Attorneys Eyes Only" any
Discovery Material that the Producing Person believes in good faith meets the criteria for being
designated as "Confidential," is extremely sensitive, and may jeopardize or compromise the
Producing Person's or third party interests if disclosed, even if the disclosure is limited by the
restrictions placed on "Confidential" Discovery Materials.
3.

No use for other purposes. All Confidential Discovery Material, and all

information contained therein, will be used only for the purpose of conducting this action,
including any appellate proceedings, and not for any other purpose. Confidential Discovery
Material will not be used for any other purpose, including without limitation any business or
commercial purpose, and including without limitation any communications with any person who
is not authorized to receive Confidential Discovery Material under this Protective Order.
Confidential Discovery Material may, however, be used in the administrative actions if a
protective order similar to this Protective Order is entered in the administrative actions to govern
and protect Confidential Discovery Material.
4.

Procedure for designation. Discovery Material may be designated as

"Confidential" or "Confidential Attorneys Eyes Only" as follows:
(a)

In the case of documents or other materials (apart from depositions or

other pretrial testimony), designation will be made by the Producing Person by including the
word(s) "Confidential" or "Confidential Attorneys Eyes Only" on each page containing any

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Confidential information, except that in the case of multi-page documents bound together by a
staple or other binding, the word(s) "Confidential" or "Confidential Attorneys Eyes Only" need
only be stamped on the first page of the document for the entire document to be treated as
Confidential Discovery Material. In the case of electronically stored or other information not
readily subject to page marking, designation will be made in writing by the Producing Person at
or around the time of the disclosure that such information is "Confidential" or "Confidential
Attorneys Eyes Only." In the event that any such information is thereafter printed out in hardcopy by the Receiving Person, the Receiving Person will affix on each page a label with the
"Confidential" or "Confidential Attorneys Eyes Only" designation made by the Producing
Person.
(b)

In the event a Producing Person elects to produce a large volume of

documents or information for inspection or review, to facilitate prompt discovery, no
designations of "Confidential" or "Confidential Attorneys Eyes Only" need be made in advance
of the inspection or review. Instead, all documents or information will be treated as
"Confidential Attorneys Eyes Only." Thereafter, upon selection of specified documents or
information by the Receiving Person for copying or production, the Producing Person will mark
the copies of such documents or information as "Confidential" or "Confidential Attorneys Eyes
Only" in accordance with this Protective Order.
(c)

Notwithstanding the foregoing, a failure to designate documents or

information at the time of production or disclosure as "Confidential" or "Confidential Attorneys
Eyes Only" does not constitute a waiver of such a claim. A Producing Person may designate
documents or information as "Confidential" or "Confidential Attorneys Eyes Only" before or

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after the documents or information have been produced by providing written notice of the
designation. Upon receipt of such notice, the Receiving Person will treat such documents or
information as "Confidential" or "Confidential Attorneys Eyes Only" as if they had been
initially so designated. The Receiving Person will make a reasonable, good-faith effort to ensure
that any analyses, memoranda, notes, or other materials containing such newly designated
information are treated as containing Confidential Discovery Material.
(d)

In the case of depositions or other testimony (including exhibits),

designation will be made by (1) a statement on the record by counsel for the Producing Person at
or around the time the testimony is provided; or (2) written notice sent by counsel for the
Producing Person to all parties within 30 days of receiving a copy of the transcript of such
testimony. To enable Producing Person to make designations, all deposition testimony in this
action will be treated as "Confidential" until the end of the 30th day after the parties and the
deponent receive a transcript of the deposition, unless the testimony is designated "Attorneys
Eyes Only" at the deposition. Whenever Confidential Discovery Material is to be discussed in a
deposition, the Producing Person may have excluded from the deposition (for the duration of the
discussion about the Confidential Discovery Material) any person who is not entitled under this
Protective Order to receive such Confidential Discovery Material.
5.

Procedure for designation disputes. If at any time a party objects to a

designation of documents or information as "Confidential" or "Confidential Attorneys Eyes
Only," the objecting party will make good faith, reasonable best efforts to confer about the
challenged designation. After such efforts to confer have been made, the objecting party may
move the Court to vacate or modify the designation of the documents or information as

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"Confidential" or "Confidential Attorneys Eyes Only." Documents or information designated as
"Confidential" or "Confidential Attorneys Eyes Only" will be treated as such by each Receiving
Person until the Court rules otherwise, including during the period in which any motion to vacate
or modify a designation is pending. Nothing in this paragraph is intended to shift the burden of
establishing the propriety of a "Confidential" or "Confidential Attorneys Eyes Only" designation.
6.

Authorized disclosure – Confidential. Discovery Material that has been

designated as "Confidential," or information derived therefrom, may be disclosed, summarized,
described, characterized, or otherwise communicated or made available only to the following
persons:
(a)

Persons named as plaintiffs or defendants in this action, along with their

respective employees, officers, and directors.
(b)

In-house and outside counsel for the parties in this action, and regular and

temporary employees and contractors of such counsel having actual need for access to assist in
the conduct of the litigation.
(c)

Experts or consultants retained by the parties or the parties' counsel solely

for the purpose of assisting in prosecuting or defending this action. Confidential Discovery
Material may be provided to and used by such experts or consultants only to the extent necessary
for the experts or consultants to prepare a written opinion, to prepare to testify, or to assist
counsel in the prosecution of this action. Such experts or consultants will be provided with an
agreement to abide by the terms of this Protective Order attached hereto as Exhibit A. Before
providing experts or consultants with confidential information, counsel shall obtain a signed
copy of Exhibit A, and shall retain a signed copy of the agreement in the appropriate file. The

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provisions of this paragraph also apply to any employees or support staff who, as part of their
employment with experts or consultants, assist in the prosecution or defense of this action.
Under no circumstances will an expert or consultant who is a competitor or an employee of a
competitor of a party, or who provides consulting, expert, or other advisory services to a
competitor of a party, be provided access to Confidential Discovery Material absent further order
of the Court.
(d)

Authors, drafters, addressees, and other persons who properly received the

Confidential Discovery Material prior to the commencement of this action.
(e)

Stenographers, videographers, or other court reporters engaged to

transcribe or record depositions.
(f)

The Court, court personnel, and members of any jury.

(g)

The presiding officer or administrative law judge in the administrative

actions, subject to the requirements and restrictions set forth above in Paragraph 3.
(h)

Any other person upon order of the Court or upon stipulation of the

Producing Person.
7.

Authorized disclosure – Confidential Attorneys Eyes Only. Discovery

Material that has been designated as "Confidential Attorneys Eyes Only," or information derived
therefrom, may be disclosed, summarized, described, characterized, or otherwise communicated
or made available only to the following persons:
(a)

In-house and outside counsel for the parties in this action, and regular and

temporary employees and contractors of such counsel having actual need for access to assist in
the conduct of the litigation.

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(b)

Experts or consultants retained by the parties or the parties' counsel solely

for the purpose of assisting in prosecuting or defending this action. Confidential Discovery
Material may be provided to and used by such experts or consultants only to the extent necessary
for the experts or consultants to prepare a written opinion, to prepare to testify, or to assist
counsel in the prosecution of this litigation. Such experts or consultants will be provided with an
agreement to abide by the terms of this Protective Order attached hereto as Exhibit A. Before
providing experts or consultants with confidential information, counsel shall obtain a signed
copy of Exhibit A, and shall retain a signed copy of the agreement in the appropriate file. The
provisions of this paragraph also apply to any employees or support staff who, as part of their
employment with experts or consultants, assist in the prosecution or defense of this litigation.
Under no circumstances will an expert or consultant who is a competitor or an employee of a
competitor of a party, or who provides consulting, expert, or other advisory services to a
competitor of a party, be provided access to Confidential Discovery Material absent further order
of the Court.
(c)

Authors, drafters, addressees, and other persons who properly received the

Confidential Discovery material prior to the commencement of this action.
(d)

Stenographers, videographers, or other court reporters engaged to

transcribe or record depositions.
(e)

The Court, court personnel, and members of any jury.

(f)

The presiding officer or administrative law judge in the administrative

actions, subject to the requirements and restrictions set forth above in Paragraph 3.

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(g)

Any other person upon order of the Court or upon stipulation of the

Producing Person.
8.

No unauthorized disclosure. No Receiving Person will reveal Confidential

Discovery Material, or the information contained therein, to anyone not entitled to receive such
Confidential Discovery Material under the terms of this Protective Order. In the event that
Confidential Discovery Material is disclosed by a Receiving Person to any person other than in
the manner authorized by this Protective Order, the Receiving Person responsible for the
disclosure will immediately inform the Producing Person of all pertinent facts relating to the
disclosure, including the name, address, and employer of each person to whom the disclosure
was made. The Receiving Person responsible for the disclosure will also make reasonable
efforts to prevent disclosure of Confidential Discovery Material by each unauthorized person
who receives such Confidential Discovery Material.
9.

Maintenance of Confidential Discovery Material. A Receiving Person will

maintain Confidential Discovery Material in a secure place that is reasonably inaccessible to
anyone other than those persons authorized under this Protective Order to receive such
Confidential Discovery Material.
10.

Producing Person's and independently-obtained material. Nothing in this

Protective Order will prevent a Producing Person from using or disclosing its own Confidential
Discovery Material for any purpose. Such use or disclosure will not affect any designation of
documents or information as "Confidential" or "Confidential Attorneys Eyes Only." Nothing in
this Protective Order will impose any restrictions on the use or disclosure by a Receiving Person

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of Confidential Discovery Material that was obtained lawfully by such Receiving Person
independently of the discovery proceedings in this action.
11.

Filing under seal. Each party agrees that any document(s) submitted to the Court

that quotes, refers to, attaches, or otherwise includes the contents of any Confidential Discovery
Material (including but not limited to a brief or a memorandum) shall be filed with a motion
seeking leave to file the document(s) under seal, in accordance with D. Kan. Rule 5.4.6. If
served upon all parties with full copies of the document(s) sought to be submitted under seal
attached, the date on which such a motion is filed shall also constitute the date of filing of the
attached document(s) for purposes of meeting any filing deadlines. All Confidential Discovery
Material filed with the Court will be kept under seal until further order of the Court.
12.

No waiver of privilege through inadvertent production. The inadvertent

production of any Discovery Material will be without prejudice to, will not constitute a waiver
of, and will not constitute estoppel as to any claim that such Discovery Material is protected by
the attorney-client privilege, the work product doctrine, or any other applicable privilege or
ground for withholding production. Upon written notice by the Producing Person of an
inadvertent production of Discovery Material containing privileged information, each Receiving
Person will make no further use of such Discovery Material, will have ten days to return the
Discovery Material and all copies thereof to the Producing Person, and will have ten days to
destroy or delete all records of the contents of such Discovery Material. A Receiving Person
returning such Discovery Material to a Producing Person may then move the Court for an order
compelling the production of the Discovery Material, but the motion will not assert as a ground
for entering such an order the fact or circumstance of the inadvertent production.

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13.

No admissions or prejudice to other rights. Entering into, agreeing to, and/or

producing or receiving Discovery Material, or otherwise complying with the terms of this
Protective Order, will not:
(a)

operate as an admission by any party that any particular Confidential

Discovery Material contains or reflects (or does not contain or reflect) trade secrets or any other
type of confidential information;
(b)

prejudice in any way the rights of the parties to object to discovery that the

parties believe to be otherwise improper, or operate as an admission by any party that the
restrictions and procedures set forth herein constitute adequate protection for any particular
information deemed by any party to be Confidential Discovery Material;
(c)

prejudice in any way the rights of any party to object to the relevance,

authenticity, use, or admissibility of any document, testimony, or other evidence subject to this
Protective Order;
(d)

prejudice in any way the rights of any party to seek a determination by the

Court whether any Discovery Material should be subject to the terms of this Protective Order, to
petition the Court to modify or amend this Protective Order, or to petition the Court for a further
or different protective order; or
(e)

prevent the parties from agreeing in writing to alter or waive the

provisions in or protections of this Protective Order with respect to any particular Discovery
Material, subject to any required approval from the Court.
14.

Other document subpoenas or demands. If any Receiving Person is

subpoenaed in another action or proceeding or is served with a document demand or compulsory

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process, including by a governmental agency, and such subpoena or document request seeks
Discovery Material which was designated as "Confidential" or "Confidential Attorneys Eyes
Only" by someone other than the Receiving Person, the Receiving Person will (a) within two
business days advise all counsel by hand, facsimile transmission, or electronic mail transmission
of the subpoena or demand by a written notice that includes a copy of the request; (b) object to
the production of such Confidential Discovery Material on the grounds of the existence of the
Protective Order, and otherwise cooperate to the extent necessary to permit the Producing Person
to seek to quash or modify the subpoena or demand; and (c) not disclose Confidential Discovery
Material until the Producing Person consents in writing or the Receiving Person is required by
Court order to disclose or produce such Confidential Discovery Material.
15.

Return or destruction of Confidential Discovery Material. Within 30 days

after receiving notice of the entry of an order, judgment, or decree finally disposing of all
litigation in which Confidential Discovery Material is permitted to be used, including the
exhaustion of all permissible appeals, all persons having received Confidential Discovery
Material will either make a good faith effort to return such Confidential Discovery Material and
all copies thereof to counsel for each Producing Person, or destroy all such Confidential
Discovery Material and certify that fact to counsel for each Producing Person within seven days
of destruction. Notwithstanding the foregoing, outside counsel for the parties will be entitled to
retain court papers, deposition and trial transcripts and exhibits, and attorney work product, all of
which may contain Confidential Discovery Material, provided that such outside counsel and the
employees of such outside counsel will not use or disclose any materials so retained except
pursuant to Court order or agreement with the party that produced the Confidential Discovery

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Material. All materials returned to the parties or their counsel by the Court likewise will be
disposed of in accordance with this paragraph.
16.

Trial. In the event that any Confidential Discovery Material is used in any public

hearing, trial, or other proceeding in this action, such material will not lose its status as
Confidential Discovery Material through such use. The parties will cooperate to attempt to reach
agreements, subject to the approval of the Court, regarding the use of Confidential Discovery
Material at any hearing, trial, or other proceeding that is open to the public.
17.

Appeal. In the event that any party appeals from any decision of the trial court in

this action, the parties will, if necessary, file a joint application to the appropriate appellate court
to maintain under seal the documents filed with the trial court which contain or disclose
Confidential Discovery Material. In the event that any party decides not to appeal, such party
may petition for continued sealing of documents filed with the trial court which contain or
disclose Confidential Discovery Material. The provisions of this paragraph may be waived only
with the written consent of the Producing Person.
18.

Remedies or sanctions for violation. In the event that any person violates or

threatens to violate the terms of this Protective Order, the aggrieved Producing Person may apply
to obtain injunctive relief against any such person, along with any other available remedies. All
persons bound by this Protective Order understand that a person who violates the Protective
Order may be subject to sanctions as the Court, on motion and after a hearing, deems just.
19.

Duration. The provisions of this Protective Order, absent written permission of

the Producing Person or further order of the Court, will continue to be binding throughout and

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after the conclusion of this action. Any party may seek leave to reopen the case to enforce the
Protective Order after the action is terminated.
20.

Binding effect. The parties agree to be bound by, and are entitled to rely upon,

the terms of this Protective Order once it has been signed by the parties' counsel, whether or not
the Protective Order has been signed or entered by the Court.
21.

Non-parties. The parties to this action agree that the production of any

Discovery Material by any non-party to the action will be subject to and governed by the terms
of this Protective Order, provided that the non-party agrees in writing to be bound by the terms
of the Protective Order. In addition, each party may designate as "Confidential" any Discovery
Material produced by a third party which relates to that party and which that party believes in
good faith to contain trade secrets, confidential or proprietary business or commercial
information, or other information of a personal or non-public nature.
22.

Headings. The headings in this Protective Order have been inserted for

convenience of reference only and do not in any way restrict the terms or language of the
Protective Order.
IT IS SO ORDERED.
Dated December 10, 2012, at Kansas City, Kansas.

s/ James P. O’Hara
James P. O’Hara
U. S. Magistrate Judge

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Case & Roberts, PC
/s/ Kevin D. Case
Kevin D. Case
Patric S. Linden
Two Pershing Square
2600 Grand Boulevard, Suite 300
Kansas City, MO 64108
Telephone: [phone]
Facsimile: 816-979-1501
[e-mail]
[e-mail]
Counsel for RBM, Inc.
Berkowitz Oliver Williams Shaw & Eisenbrandt
/s/ Kurt D. Williams
Kurt D. Williams
Tim J. Riemann
2600 Grand Boulevard, Suite 1200
Kansas City, MO 64108
Telephone: [phone]
Facsimile: 816-561-1888
[e-mail]
[e-mail]
John J. Sullivan
Hogan Lovells US LLP
875 Third Avenue
New York, NY 10022
Telephone: [phone]
Facsimile: 212-918-3100
[e-mail]
Counsel for Kia Motors America, Inc.
Stinson Morrison Hecker LLP
/s/ Daniel D. Crabtree
Daniel D. Crabtree
Russell J. Keller
1201 Walnut, Suite 2900
Kansas City, Missouri 64106
Telephone: [phone]
Facsimile: 816-412-1085

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[e-mail]
[e-mail]
Counsel for Group 1 Automotive, Inc. and GPI-SK-Inc.

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EXHIBIT A

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS

RBM, INC. d/b/a SHAWNEE MISSION KIA, )
)
v.
)
)
KIA MOTORS AMERICA, INC.,
)
)
v.
)
)
GROUP 1 AUTOMOTIVE, INC. and
)
GPI KS-SK, INC.
)

Case No. 12-cv-2175-EFM/JPO

I, _____________________________________, have read and understand the Joint Stipulated
Protective Order ("Protective Order") in this case. I agree to be fully bound by and to comply
with all of the terms of the Protective Order. I submit to the jurisdiction of the United States
District Court for the District of Kansas for purposes of enforcement of the Protective Order. I
understand that Confidential Discovery Material has been or will be provided to me pursuant to
the Protective Order. I agree to keep Confidential Discovery Material in confidence and not to
disclose it to any person who is not authorized to receive Confidential Discovery Material under
the Protective Order. I declare under penalty of perjury that the foregoing statements are true
and accurate.

Dated:

Signature:

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