Ziebart International Corporation v. Z Technologies Corporation

Filing 34

ORDER granting in part and denying in part 27 Motion to Compel--Signed by Magistrate Judge Anthony P. Patti. (MWil)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
ZIEBART
INTERNATIONAL
CORPORATION,
Plaintiff,

Case No. 5:15-cv-11745
Judge Judith E. Levy
Magistrate Judge Anthony P. Patti

v.
Z TECHNOLGIES
CORPORATION,
Defendant.
_________________________/
ORDER GRANTING IN PART AND DENYING IN PART
Z TECHNOLOGIES CORPORATION’S MOTION (DE 27) TO COMPEL
ZIEBART INTERNATIONAL CORPORATION TO PROVIDE
DISCOVERY REGARDING FORMULAS OTHER THAN FORMULA Q
Plaintiff Ziebart International Corporation (“Ziebart”) filed the instant
lawsuit against Defendant Z Technologies Corporation (“Z Technologies”) on May
15, 2015. The causes of action include (I) federal trademark infringement under 15
U.S.C. § 1114, (II) common law trademark infringement, (III) false designation of
origin or sponsorship, false advertising and trademark infringement under 15
U.S.C. § 1125(a), and (IV) breach of contract. (DE 1.)
On July 20, 2015, Defendant Z Technologies filed an answer, which
included counterclaims of (I) breach of contract against Ziebart, (II)
misappropriation of trade secrets against Ziebart, (III) misappropriation of trade

secrets against Pure Asphalt, (IV) declaratory judgment against Ziebart and Pure
Asphalt, and (V) cancellation of trademark registration against Ziebart. (DE 9 at
30-37.) Of particular import here are Paragraph 35 of Z Technologies’
counterclaims, which concerns formulas and other confidential and proprietary
information aside from Formula Q (DE 9 at 27), and Paragraph 17(b) of the
September 18, 2001 amended supply agreement, which concerns, among other
things, confidentiality and disclosure (DE 9-5 at 10).1
Currently before the Court is Z Technologies’ December 9, 2015 motion to
compel Ziebart to provide discovery regarding formulas other than Formula Q,
Ziebart’s response, Z Technologies’ reply and the parties’ joint statement of
unresolved issues. (DE 27, 28, 30, 32 and 33.).2 Counsel for each of the parties
appeared before me for an extensive oral argument on January 21, 2016.
For the reasons stated on the record, Z Technologies Corporation’s motion
to compel Ziebart International Corporation to provide discovery regarding
formulas other than Formula Q (DE 27) is GRANTED IN PART and DENIED
IN PART as follows:

1

Exhibit D to Defendant’s Answer (DE 9-5) has been placed under seal. (DE 11.)

2

Levy has referred this motion for hearing and determination (DE 29).
Plaintiff has filed a response (DE 30), Defendants have filed a reply (DE 32) and
the parties have provided a joint list of unresolved issues (DE 33).  

 Judge

2



Plaintiff Ziebart SHALL answer Z Technologies’ Requests for
Admission Nos. 2-22 & 25 in compliance with Fed. R. Civ. P.
36(a)(4).



Defendant Z Technologies’ motion is DENIED WITHOUT
PREJUDICE to the extent it sought further answers to
Interrogatories Nos. 2, 3, 4, 6 & 7.



Plaintiff Ziebart SHALL supplement its answer to a modified
version of Interrogatory No. 5, which is now limited in scope
to seeking information regarding disclosure of any formulas
and performance specifications (of those items transferred in
1996) to third parties from 2006 forward, including the identity
of any supplier(s) to which the disclosure was made.



Plaintiff Ziebart SHALL modify its answer to Interrogatory
No. 8 to clarify whether it applies to all formulas, rather than
limiting its answer to Formula Q only.



Defendant Z Technologies’ motion is DENIED WITHOUT
PREJUDICE to the extent it sought further responses to
Requests for Production Nos. 2 & 9-14.

Plaintiff Ziebart SHALL produce the information ordered above within twentyone (21) days of the date of this order or within twenty-one (21) days of the entry
of a protective order, whichever is later, the parties having mutually represented
that a stipulated protective order is very soon to be filed.
Fees and costs will not be awarded, neither party having fully prevailed and
unusual factual and legal issues having been necessarily considered by the Court.
Finally, the parties are encouraged to mutually agree upon a mediator in an
effort to resolve this matter.

3

IT IS SO ORDERED.

Dated: January 22, 2016

s/Anthony P. Patti
Anthony P. Patti
UNITED STATES MAGISTRATE JUDGE

I hereby certify that a copy of the foregoing document was sent to parties of record
on January 22, 2016, electronically and/or by U.S. Mail.
s/Michael Williams
Case Manager to the
Honorable Anthony P. Patti

4