Jaguar Land Rover Limited v. Bombardier Recreational Products, Inc.

Filing 72

OPINION AND ORDER GRANTING PLAINTIFF'S MOTION FOR PROTECTIVE ORDER [#50]. Signed by District Judge Gershwin A. Drain. (TBan)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
JAGUAR LAND ROVER LIMITED,
Plaintiff,
Case No. 16-cv-13386
v.
UNITED STATES DISTRICT COURT JUDGE
GERSHWIN A. DRAIN

BOMBARDIER RECREATIONAL
PRODUCTS, INC.,
Defendant.
______________________________/

OPINION AND ORDER GRANTING PLAINTIFF’S MOTION FOR
PROTECTIVE ORDER [#50]
I. INTRODUCTION
Presently before the Court is Plaintiff’s Motion for Protective Order. Dkt.
No. 50. Plaintiff requests a protective order to prevent Defendant from taking the
deposition of Plaintiff’s General Counsel. For the reasons stated below, this Court
will grant Plaintiff’s Motion.
II. FACTUAL BACKGROUND
Plaintiff, Jaguar Land Rover Limited, filed the present complaint on
September 6, 2016 against Defendant Bombardier Recreational Products. Dkt. No.
1. In its complaint, Plaintiff alleged trademark infringement, unfair competition,
and a violation of the Michigan Consumer Protection Act. Id. at pg. 2 (Pg. ID 2).
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On March 3, 2018, Plaintiff filed its Motion for Protective Order. Dkt. No. 50.
Plaintiff requests that this Court prohibit Defendant from taking the deposition of
its General Counsel, Anna-Lisa Corrales. Defendant filed a response on March 19,
2018 opposing the Motion. Dkt. No. 54. On April 30, 2018, Plaintiff filed its reply
under seal. Dkt. No. 69.
III. LEGAL STANDARD
Federal Rule of Civil Procedure 26(c)(1) allows a party to move for a
protective order to prevent a deposition. A court may grant a protective order for
good cause. See id. In addition, the Sixth Circuit has adopted more stringent
requirements under the Shelton 1 test for requests to depose opposing counsel.
Discovery from opposing counsel is only allowed when: (1) no other means exist
to obtain the information ...; (2) the information sought is relevant and
nonprivileged; and (3) the information is crucial to the preparation of the case.”
Nationwide Mut. Ins. Co. v. Home Ins. Co., 278 F.3d 621, 628 (6th Cir. 2002).
IV. DISCUSSION
1. Applicability of Shelton
Defendant contends that Shelton is not applicable to this case because Ms.
Corrales is not litigating this case and Plaintiff’s litigation strategy will not be

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Shelton v. Am. Motors Corp., 805 F.2d 1323 (8th Cir. 1986).
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exposed. Dkt. No. 54, pg. 15 (Pg. ID 1106). Plaintiff asserts that the Shelton rule is
applicable because Ms. Corrales is litigation counsel, as she oversees all litigation
for Plaintiff. Dkt. No. 62, pg. 7 (pg. ID 1265). Additionally, Ms. Corrales has been
involved in strategic decisions regarding the enforcement of the trademark in issue
for many years. Id.
In Shelton, the Eighth Circuit considered the applicability of the Shelton rule to
deposing the supervising in-house counsel of American Motors Company. Shelton,
805 F.2d at 1326–27. The court held that deposing opposing counsel must meet the
Shelton standards. Id.
The Shelton opinion itself suggests that the applicability of the rule extends
beyond trial counsel. The Shelton court considered the application of the Shelton
rule to a company’s supervising in-house counsel, and not trial counsel. Further, in
this case, Ms. Corrales is properly categorized as litigation counsel because she
oversees all litigation for Plaintiff. The cases cited by Defendant to argue that
Shelton is not applicable are factually distinct from this case, as analyzed in
Plaintiff’s reply brief. See Dkt. No. 62, pgs. 6, 7 (Pg. ID 1265, 1266). Therefore,
this Court holds that the Shelton test is applicable to this case, and will proceed to
analyze under Shelton.

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2. Shelton Applied
Prong one of the Shelton test requires that there are no other means to obtain the
information sought by the counsel the party wishes to depose. Nationwide Mut. Ins.
Co., 278 F.3d at 628. Prong two of the Shelton test requires that the information
sought is relevant and not privileged. Id. Defendant states that it seeks information
from Corrales about her process of preparing the trademark registration renewal,
also known as the trademark prosecution process. Dkt. No. 54, pg. 14 (Pg. ID
1105). Defendant asserts that Corrales is the only witness who can testify about the
preparation of the trademark registration renewal. Id. Plaintiff contends that the
information about the process is privileged, and therefore violates prong two of the
Shelton test. Dkt. No. 62, pg. 5 (Pg. ID 1263).
In general, the “prosecution of [an] application for registration of a trademark
[is] within the scope of privilege.” L.M. Brownlee, IP Due Diligence in Corp.
Transactions § 1:5 n.4 (April 2018 Update). Communication regarding patents that
is of a legal nature is privileged, no matter if the attorney is outside counsel, inhouse counsel, or a member of the Patent Department. Id. at § 1:5. Here, Defendant
seeks information about Plaintiff’s trademark prosecution strategy, which is
privileged information. Additionally, Plaintiff’s trademark prosecution strategy
was supervised by attorneys. Dkt. No. 62, pg. 5 (Pg. Id 1263). Correspondence
regarding the trademark prosecution is listed on Plaintiff’s privilege log. Dkt. No.
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62-5, pg. 4 (Pg. ID 4). This lends support to the argument that Plaintiff’s trademark
prosecution process is privileged—attorneys were substantially involved in the
process of securing the patent, which is a legal process. Even if the information
Defendant seeks is not privileged, Defendants likely could not pass the Shelton
test. Plaintiff asserts that multiple attorneys supervised the patent prosecution
process. Dkt. No. 62, pg. 5 (Pg. ID 1263). Therefore, information about the patent
prosecution process could likely be obtained by some other means and prong one
of the test is not satisfied. In conclusion, this Court holds that the information
sought by Defendants is privileged and cannot pass the Shelton test.
V. CONCLUSION
For the reasons discussed herein, the Court will grant Plaintiff’s Motion.
IT IS SO ORDERED.

Dated:

May 18, 2018
s/Gershwin A. Drain
HON. GERSHWIN A. DRAIN
United States District Court Judge

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