The Gerffert Company, Inc. et al v. Dean et al

Filing 180

MEMORANDUM AND ORDER re: 165 169 173 175 See attached Order. So Ordered by Magistrate Judge Cheryl L. Pollak on 6/6/2012. (Caggiano, Diana)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK

--------------------------------------------------------J{
THE GERFFERT COMPANY_ INC., et aI.,
Plaintiffs,

MEMORANDUM
AND ORDER

- against_
09 CY 266 (MKB)
JAMES DEAN, et aI.,
l)efendant.

---------------------------- ___________________________ -J{
On 1anuary 22, 2009, plaintiffs, The Gerffert Company, Inc. and Stephen Panigel
(together, "Gerffert" or "plaintiffs"), filed this action against defendants James Dean, Dolores
King, William J. IIirten Co. LLC ("Hinen"), HMH Religious Manufacturing Co., Inc., Andrea
Bondla, Mario Bonella, Gianfranco BoneHa, Fratdli Bondla, s.d., and "John Doe" and "Jane
Doe," d/b/a Fratelli Bondla, s.r.1. ("Fratelli Bonella'l (together, "defendants"), seeking damages
based on defendants' alleged breach ofan agreement granting Gerffert the exclusive right to
market and distribute the "Bonella Line" of religious artwork in the United States.

A. Plaintiffs' Discovery Requests
On Man:h 26, 2012, plaintifts submitted a letter seeking pennission to tile a motion to
compel defendants Hirten, Fratelll Bonclla, srI., and Andrea Bonella (the "Bonella" defendants)
to produce responses to certain discovery requests that plaintiffs contend were not adequately
responded to and to negotiate a prote<:tive order. (Pis.' 3/26/12 Ltr.' at I).

'Citations to "Pis.' 3/26/12 Ltr." refer to plaintiffs' leller to the Court, dated Man:h 26,
2012.
I

With respect to plaintiffs' interrogatories dated January 28, 20 I 0, plaintiffs contend that
defendants' April 12,2010 responses were "wholly incomplete," ilih at 2). First, plaintiffs
complain that they were only signed by counsel instead of complying with the mandate of Fed. R.
eiv. P. 33(b), which requires either the party or, if a corporate entity, an officer or agent of that
entity to verity the responses to interrogatories. 00
Plaintiffs also complain that defendants "arbitrarily stopped responding" to plaintiffs'
interrogatories at a certain point,' claiming that plaintiffs had exceeded the maximum number of
interrogatories allowed by the Federal Rules. ilih at 3). Plaintiffs argue that, contrary to
defendants' contention that these interrogatories contain discrete subparts, each of their
interrogatories addresses "a single, uniform fact." (lQJ However, in listing the interrogatories to
which defendants have failed to respond sufficiently, it becomes clear that plaintiffs propounded
more than the 25 permitted by the Rules. (See id. (noting that Bieten failed to respond to
Interrogatories 1, 3, 4, 5, 6, 8, 10-32; that Fratelli Bonella failed to respond to Interrogatories 2,
4,5,8-10, 12, 13, 15-19,22-33; and that Andrea BoneHa failed to respond to Interrogatories 5, 6,
11-35». Plaintiffs also complain that defendants have raised "baseless, inapplicable stock
objections." ilihl
Plaintiffs also complain that defendants failed to provide adequate responses to plaintiffs'
document requests. (lQJ Specifically, Hirten refused to provide documents responsive to Nos. 2,
3,7,9-12, 14-21,23-32, 34-39; Fratelli Bnnell refused to provide documents responsive to Nos.
7, 10, 14, 16, 17, 19-27,29-34; and Andrea Bnnella refused to produee documents responsive to

'It appears as if the BoneHa defendants stopped answering at Interrogatory No. II and 22,
respectively, and HiMen stopped at 15. (Pis.' 3126/12 Ltc. at 3 (citing £xs. H, 0, and Ill.

2

Nos. 3, 7, 13, 16-23,25, 27-31, and 33. (14, at 4). Among tbe obje<:tions raised by Hinen are
work product, attorney-client privilege and joint defense privilege.

ilil at 5). 11 is unclear

whether a privilege log, as required by Federal Rule ofCivi1 Procedure 26(a), bas been provided.
Finally, plaintiffs complain that even where there bas been no objection to producing documents,
defendants have not produced a "single" document \0 plaintiffs. (ld.)
In response, defendants contend that plaintiffs have "refused to meet and confer in good
faith," filing their pre-motion conference letter requesting pennission to move to compel less

than two business days after they sent defendants their first meet-and-confer letter, thus giving
defendants no time to respond. (Defs.' 4/6112 Ltr.' at I). Defendants furtber contend that the
"amount and scope of the irrelevant details demanded and documents requested" further
demonstrate thaI the discovery propounded by plaintiffs was designed to harass defendants and
create an undue burden. (14, al 2). Not only do defendants point to the number of interrogatories
contained in plaintiffs' request, but tbey also challenge the relevance of some interrogatory
requests, specifically the request for defendant Bonella's Facebook, MySpace and Twitter
passwords (id. at 3), and some document requests, including telephone records of defendant
reflecting any telephonic communications relating to any fact or issue raised in the pleadings•..
" (14,)

Finally, defendants dispute tbe assertion that they bave failed to produce "'a single
document to Plaintiffs.'" (Defs.' 4116112 Ltr.' at I (quoting Pis.' 3126112 Ltr. at 5)). Defendants

'Citations to "Defs.' 416112 Ltr." refer 10 defendants' letter to the Court, dated April 6,
2012.
'Citations to "Defs.' 4116/12 Ltr." refer to defendants' letter to tbe Court, dated April 16,

2012.
3

contend that responsive documents were produced to plaintiffs' former counsel, Mr, Magnotli, in
June 2010.

M) Defendants offer to re-produce these documents if plaintiffs' new counsel is

unable to locate them. OliJ
Having reviewed the parties' papers, the Court ORDERS as follows:
The parties shall meet and confer regarding the discovery disputes on or before June 12,
2012. Before meeting, plaintiffs are Ordered to select 25 interrogatories (including subparts) and
notify defendants that they seek responses to these interrogatories. If, after the meet and confer,
there remain any unresolved issues, the plaintiff is 10 detail in a letter any remaining deficiencies
in defendants' discovery responses by June 15,2012; defendants' response is due June 19, 2012.
To the extent that defendants are claiming a privilege with respe<:t to any of the
documents sought, they shall prepare and serve a privilege log in accordance with the Rule 26(a)
of the Federal Rules of Civil Procedure, on or before June 12,2012.

B. Defendants' Discovery Requests
By letter dated Mar<:h 30, 2012, defendant Hirten seeks permission to file a motion to
eompel plaintiffs to provide responses to Hirten's discovery requests. (Hirten 3/30/12 Ltr.' at I).
Defendant Hirten first contends thaI despite its efforts to meet and confer, "Plaintiffs. , . refused
to cooperate with Hirten's efforts to resolve even one of the outstanding discovery issues without
the Court's involvement."

CliL (emphasis in original)). ThUll, despite an agreement to make

documents available after the parties' March 6, 2012 meet and confer, plaintiffs failed to serve

'Citations to "Hirten 3/30/12 Llr." refer to defendant Hirten's letter to the Court, dated
March 30, 2012.
4

docwnents that they had previously agreed to produce. til!. at 1-2). When Hirten sent a follow_
~

_ _ _ D,mI2, _ _ _ _ _

ffi_._~~_

further. tilL at 2 (citing Ex. D».

I. Defendants'Interrogatories
With respect to plaintiffs' responses to interrogatories, Hirten asserts that it served six
interrogatories, asking plaintiffs: (I) to identifY the intellectual property rights that they claim
have been infringed (Inter. No. I); (2) to set forth the terms of any agreement between plaintiffs
and defendants (Inter. No.2); (3) to identifY the defendants' actions that constituted a breach of
any agreement (Inter. No.4); and (4) to list the "total revenue attributable to sales of artwork
from Fratelli Bonella" (Inter. No.6). In responding, plaintiffs either referred to "documents
produced herewith" or, in response to Interrogatory No.6, noted simply "70·75% ofGerf'fert's
sales," without providing revenue numbers. (Id. at 2).
In response, plaintiffs contend that it is entirely proper to respond to interrogatories by
reference to responsive documents. (pIs.' 4/16112 Compel LtT." at I). Furthermore, they claim
that they offered to supplement their responses if defendants gave responses to plaintiffs'
discovery; "defendants declined this exchange." (hlJ
Hirten responds by stating that plaintiffs have failed to clarify the information sought in
their ov,n discovery requests and maintain their position that defendants should be required to
respond to what defendants characterize as "75_interrogatory subparts," which are otherwise

'Citations to "PIs.' 4116112 Compel Llr." refer to plaintiffs' letter to the Court in response
to defendant Hirten's March 30, 2012 letter, dated April 16,2012.

5

improper. (Hirten·s 4/17/12 Ltr.' at 2).
In this instance, given that the parties have attempted to meet and confer without success,
plaintiffs are Ordered to supplement their responses to Hirten's Interrogatories Nos. 1,2,4, and
6. Although referencing responsive docwnents is permitted by the Federal Rules, to simply state
"see documents produced herewith" without a reference to Bates nwnbcrs or other description
identifYing the documents responsive to each request is insufficient where there are over 3,000
pages that have been produced. Accordingly, the plaintiffs are ORDERED to provide written
responses to each of these Interrogatories, along with references to relevant docwnents by Bates
no. or other reasonable designation on or before June 15, 2012.

2. l)efen4ant's Requests for Admissions
l)efendant Hirten served its First Set of Requests for Admission Propounded 10 Plaintiffs
Stephen Panigel and the GerfTert Company, Inc. on January 29, 2010. In their responses dated
April 20, 2010, plaintiffs refuse to either admit or deny any of the 17 requests. (Hirten 3130112
Ltr. at 3 (citing Ex. 1».
Plaintiffs are ORDERED to respond to Request Nos. 1-17 on or before 1une 15,2012.

3. Defendant's Request for Production ofDocwnents
Defendant Hirten complains that although plaintiffs responded to its First Request for
Production ofDocwnents, Hirten has requested that plaintiffs confirm that they have produced

'Citations to "Hirten's 4/17/12 LtT." refer to defendant Hirten's letter to the Court, dated
April 17,2012.

6

all responsive documents except for the documents relating to personal jurisdiction. till at 3).
Plaintiffs have refused to indicate if any documents have been withheld and. if so, why. (hlJ
In response, plaintiffs argue that they have no obligation to certify to defendants that all
responsive documents have been produced. (Pis.' 4/16/12 Compel LIT. at I). Plaintiffs have
failed to explain why they have not produced the documents relating to personal jurisdiction.
Accordingly, plaintiffs are ORDERED to proved an affidavit mm someone with
authority and knowledge either confirming that all responsive documents have been produced or
if not, provide a privilege log pursuant to Federal Rule ofeivil Procedure 26(a), justitying why
certain documents have been withheld. Plaintiffs are Ordered to provide this affidavit on or
before June 15,2012.
With respect to the documents relating to personal jurisdiction, plaintiffs are ORDERED
to produce those documents on or before June 15,2012.

C. The Protective Order
Finally, the parties note that they are still unable to reach agreement on the terms of the
protective order which the parties have been negotiating for several years. (Pis.' 3126/12 Ltr. at
1-2; Oefs.' 4/6/12 Llr. at 2). According to defendants, plaintiffs' new anomeys have sent an
entirely new version of the protective order which defendants describe as "internally
inconsistent" and as failing to resolve the issues previously identified. (Oefs.' 4/6/12 LIT. at 2).
Thus, to the extent that plaintiffs accuse defendants of dilatory tactics, defendants take the
position that before they produce documents, they want assurances that plaintiffs will not misuse
their information. (MJ

7

In reviewing the parties' submissions, it appears that there are three main areas of dispute:
(I) the definition of "confidential;" (2) the definition and scope of "Attorneys' Eyes Only"

documents; and (3) the conditions under which "Qualified Individuals" may receive "Attorneys'
Eyes Only" documents. (PIs.' 41!6/12 LIT.' at I J.

I. "Confidential" Documents
According to plaintiffs, the parties agree in Paragraph I of the Proposed Stipulated
Protective Order (the "Proposed Order") that confidential infonnation covers "any discovery
material which the producing or responding party reasonably believes contains Or discloses
proprietary infonnation, confidential customer infonnation, persona! or confidential employee
infonnation or other similar sensitive information of a non-public nature."

&l at 2). Plaintiffs

complain that defendants have proposed adding some additional language that plaintiffs believe
would be inconsistent with the above-quoted definition. 00
In response, defendants disagree that the language is inconsistent, but nevertheless have
agreed to delete the suggested language. (Defs.' 4/16112 Llr. at 2). Thus, that language will not
be included in the final Order.

2. Definition and Scope of"Auomeys' EYGs Only" Docwuents
The parties have not been able to agree on the scope or definition of "Attorneys' Eyes
Only" documents. Plaintiffs have proposed designating materials "Attorneys Eyes Only" if''the

'Citations to "PIs.' 41!61l2 LIT." refer to plaintiffs' letter to the Court, dated April 16,
2012.

8

designating party reasonably believes that the materials are extremely sensitive and disclosure to
the opposing party would result in significant competitive injury to its business." (P[s.' 4/16/12
Ltr. at 2). Defendants have proposed instead substituting "serious hann that could not be avoided
by less restrictive means," in lieu of "significant competitive injury to its business." (Defs.'
4/16/12 Llr., Ex. 2). In addition, defendants have included a lengthy list of types of information

that would potentially fall within this category.

C!!!J Plaintiffs counter v,ith the argument that

the language is "[ess restrictive" than the description of "Cnnfidential" infonnation that the
parties have agreed upon and that the enumeration in defendants' list actually "expends [sic]
upon the already-broad definition in the preceding sentence." (PIs.' 4/16/12 Ltr. at 3).
Although the Court disagrees with plaintiffs' suggestion that the language proposed by
defendants somehow broadens the categories of documents covered by this section, the Court
notes that the purpose of"Attomeys' Eyes Only" designations is generally to protect one party
from injury - usual[y injury to the party's business - that might occur if the infonnation is
revealed to the party's competitor. Other categories ofparticu[arly sensitive information may
relate to an individual's health or mental status. In this instance, since the main harm
contemplated is one of harm to the parties' respective competing businesses, the Court proposes
that the parties compromise on language that contains a few specific examples of the type of
information to be covered, with the understanding that the list is not all inclusive:
The designating party may designate any Confidential document,
thing, material, testimony or other information derived therefrom
as "Attorneys' Eyes Only" if the designating party can show good
cause" that the materials contain extremely sensitive trade secrets

'See Cwnber[and Packing Com. v. MonS!ll1to Co., 184 F.R.D. 504 (E.D.N.Y. 1999)
(discussing standards for designation of docwnents as pmtected).
9

or commercial infonnation, such as pricing, product development,
profits, and future marketing strategies, that if disclosed to the
opposing side could result in serious competitive or other harm,
that cannot be avoided by less restrictive means.

3. "Attorneys Eyes Only" Docllinents and "Qualified Indjviduals"
Finally, the parties cannot agree on the conditions under which "Attorneys' Eyes Only"
information may be disclosed to experts or consultants. (PIs.' 4fl6/12 Ltr. at 4). Defendants
want a notice provision contained in the protective order that would require notice 10 be given
prior to a party's disclosure of "Attorneys' Eyes Only" materials 10 an expert, so that the
designating party may detennine if the individual being provided the materials is someone who
may be otherwise prohibited from gaining access to confidential infonnation or who may have a
potential conflict of interest. (Defs.' 4/16fl2 LtT. at 2-3). Plaintiffs object to having to give prior
nOlice, claiming that it provides Ihe other party with the status of its preparation of the case and
runs afoul of the attorney-work product doctrine. (Pis.' 4/16/12 Llr. at 4).
Given the problems in this case that have already occurred with respect to confidences
and secrets, the Court finds that a simple notice stating that "Attnrneys' Eyes Only" infonnatinn
may be given to a specific expert does not reveal much in the way of case preparation and may be
avoided by not disclosing "Attorneys' Eyes Only" infonnation to a particular expert iflhe desire
is 10 simply consult with a non-testifYing expert or consultant. The Stipulation currently contains
a provision requiring any experts or consultants who review even Confidential infonnation to
execute an agreement to be bound by the terms and conditions of the Stipulation. ThlL~, simply
providing advance notice tbat this type of highly sensitive and confidential infonnation is being

10

provided to a specific expert or consultant seems appropriate under the circumstances.

SO ORDERED.
Dated: Brooklyn, New York
J~,_,2012
6

/s/ CHERYL POLLAK
Cheryl L. Pollak
United States Magistrate Judge
Eastern District of New York

II