The Kayo Corp. v. Fila U.S.A., Inc.

Filing 98

CONFIDENTIALITY STIPULATION AND PROTECTIVE ORDER...regarding procedures to be followed that shall govern the handling of confidential material...So Ordered. (Signed by Judge Alvin K. Hellerstein on 11/17/21) (yv)

Case 1:18-cv-03981-AKH Document 98 Filed 11/17/21 Page 1 of 9

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YOI
THE KAYp CORP.,

Case No. 18-cv-03981-AKA-I
Plaintiff,

-against-

CONFIDENTIALITY
STIPULATIQN AND
PROTECTIVE QRDER

FILA U.S.A., INC.,
Defendant.

This Confidentiality Stipulation and Protective Order(this "Stipulation"), dated November
12,2p21, is made by and between Plaintiff, The Kayo Corp.("Kavo")and Defendant, Fila U.S.A.,
Inc.("Fila", together with Kayo,the "Parties").
WHEREAS, Kayo and Fila are parties tp a License Agreement dated June 15, 2015 in
which Kayo is licensee and Fila is licensor(the "Agreement");
WHEREAS, on May 3, 2Q18, Kayo commenced the above-captioned action (the
"
Liti ~ation") against Fila in which the Amended Complaint seeks damages for Fila's alleged
breach of contract; unjust enrichment; unfair competition; and an accounting. In response, Fila
alleges several counterclaims including fraudulent inducement; breach of contract; and breach of
the covenant of good faith &fair dealing;
WHEREAS,in light ofthe nature ofthe claims and defenses asserted by the Parties in this
Litigation, discovery necessarily will focus on areas of the Parties' businesses of a sensitive and
proprietary nature, the disclosure of which may pose a substantial risk of causing harm to the
Parties' competitive positions if publicly disclosed;
WHEREAS,in accordance with Rule 26(c) of the Federal Rules of Civil Procedure, the
Parties have reached an agreement pn a procedure for controlling disclosure of such information
produced during discovery as set forth herein;

FG: I ]824756.1

Case 1:18-cv-03981-AKH Document 98 Filed 11/17/21 Page 2 of 9

NOW THEREFORE,in consideration for the terms and conditions herein, the Parties agree
as follows:
This Stipulation shall govern the production and use of all documents, deposition
testimony (including all transcription and video-taped recordings of testimony), deposition
exhibits, answers to interrogatories and requests for admission, and other written, recorded or
graphic discovery materials between the Parties in the Litigation ("Discovery Material"; a Party
that produces Discovery Material, a "Producin~artv"; and a Party that receives Discovery
Material, a "Receiving Party")
2
.

"Confidential Information" as used in this Stipulation shall mean any and all

Discovery Material that the Producing Party indicates is being provided to the Receiving Party
under this Stipulation and designated as "Confidential," provided, however that, notwithstanding
anything herein to the contrary, "Confidential Information" as used in this Stipulation shall not
include such portions thereof which: (a) presently are or hereafter became available to the
Receiving Party on anon-confidential basis from the Producing Party; or(b)the Producing Party
acknowledges has become available to the public other than as a result of a disclosure by a
Receiving Party in violation of this Stipulation, such acknowledgment not to be unreasonably
withheld. At any time prior to trial in this Litigation, any Discovery Material inadvertently
produced without a confidentiality designation, subsequently may be designated by the Froducing
Party as Confidential Information by so informing the Receiving Party, in writing.
3.

"Attorneys' Eyes Only" as used in this Stipulation means and applies to highly

sensitive personnel, financial or proprietary information, the disclosure of which the producing
party believes would cause harm to the producing party's business operations, employees,or other
interests if disclosed to another party. It is understood that the "Attorneys' Eyes Only" designation
is to be used in good faith and to protect the information that meets the above defined criteria. Any
2

Case 1:18-cv-03981-AKH Document 98 Filed 11/17/21 Page 3 of 9

party may designate Confidential Information to be Attorneys' Eyes Only information. Access to
Attorneys' Eyes Only information shall be limited to (i) counsel for the Parties and their associated
attorneys, paralegals and other professional personnel (including support staff who are directly
assisting such counsel in the preparation of this action for trial and who have been advised by
counsel of their obligations; (ii) any expert witness or consultants retained by the parties or their
counsel in connection with this action; and (iii) personnel associated with the Court.
4.

The Receiving Party will afford confidential treatment to the Confidential

Information, and will not disclose the Confidential Information to any other party, but may disclose
such information to:
a.

its employees and the attorneys of record in this Litigation, upon their
acknowledgment of receipt and acceptance of the terms of this Stipulation;

b.

as to any document, its author, its addressee, and any other person indicated
on the face of the document as having received a copy;

c.

any witness called to testify at deposition or any witness whom counsel for
a party in good faith believes may be called to testify at trial or deposition
in this action, provided such person has first executed the declaration
attached as Exhibit A in accordance with paragraph 4;

d.

agents, consultants, and retained experts of the Receiving Party upon their
acknowledgment of receipt and acceptance of the terms of this Stipulation,
and who have executed the declaration attached as Exhibit A in accordance
with paragraph 4, and the employees of such agents and consultants;

e.

stenographers engaged to transcribe depositions conducted in this
Litigation;

3

Case 1:18-cv-03981-AKH Document 98 Filed 11/17/21 Page 4 of 9

f.

persons necessary to comply with applicable law or the valid order of a court
of competent jurisdiction; provided, however, that in the event of a
disclosure compelled by law or court order, the Receiving Party will notify
the Producing Party as promptly as practicable (if at all possible, prior to
making such disclosure) and shall seek a protective order or confidential
treatment ofthe Confidential Information; and

g.

5.

the Court and its support personnel.

Persons proposed under paragraph 3(c) or 3(d)shall be identified, in writing, to the

Producing Party's counsel two business days in advance of any disclosure of Confidential
Information to such person. Ifthe Receiving Party proposes disclosure to a person under paragraph
3 or 3(d), such Receiving Party shall provide to the Producing Party, upon request, a copy of
(c)
the declaration attached as Exhibit A executed by such person. Under no circumstances shall any
person referenced in paragraph 3(c) or 3(d) be allowed to review any Confidential Information
unless such person has executed a copy ofthe form attached as Exhibit A.
6
.

The Receiving Party shall not use any Confidential Information for any purpose

other than in connection with this Litigation.
7
.

The Receiving Party shall use all best efforts to prevent the disclosure of

Confidential Information to any unallowable third party.
8.

All Confidential Information furnished to a Receiving Party by a Producing Party

shall remain in the property of the Receiving Party and shall be destroyed or returned to the
Producing Party within ten business days offinal adjudication ofthis Litigation, together with any
copies thereof. The Parties shall make reasonable efforts so that all experts and consultants they
have retained abide by this provision.

4

Case 1:18-cv-03981-AKH Document 98 Filed 11/17/21 Page 5 of 9

9.

The Parties acknowledge that unauthorized disclosure of Confidential Information

will diminish the value of the proprietary interests that are the subject of this Stipulation. If a
Receiving Party breaches its obligations hereunder, the Producing Party shall be entitled to seek
equitable relief to protect its interests therein including, without limitation, injunctive relief, in
addition to any and all other rights and remedies available at law or equity.
10.

All. Confidential Information filed with the Court, and all portions of pleadings,

motions, or other papers filed with the Court that disclose such Confidential Information, shall be
f
iled under seal with the Clerk of Court in the manner provided by the Court's "Sealed Records
Filing Instructions" (available on the Court's website) and in accordance with Rule 4 of Judge
Hellerstein's rules(upon the filing of a motion to request that documents be sealed). As provided
in Judge Hellerstein's rules, the sealing of documents will be subject to ongoing review and
reexamination by the Court and the Parties will use their reasonable efforts to minimize the filing.
of Discovery Material under seal.
1 1.

Any Party who either objects to any designation of confidentiality, or who requests

further limits on disclosure, may at any time prior to the trial in this Litigation serve upon counsel
or
f the other Party a written notice stating with particularity the grounds ofthe objection or request.
If the Parties cannot reach a prompt agreement respecting the objection, then they can seek the
Court's involvement. Notwithstanding any challenge to the designation of Discovery Material as
"
Confidential Information," all Discovery Material designated as such must be treated as such and
as subject to this Stipulation until one ofthe following occurs:(a)the designating Party withdraws
its confidentiality designation in writing; or(b)the Court decides the Discovery Material at issue
is not subject to protection as confidential.

5

Case 1:18-cv-03981-AKH Document 98 Filed 11/17/21 Page 6 of 9

12.

Neither Party shall be obligated to challenge the propriety of a confidentiality

designation, and failure to do so shall not constitute an admission that any Discovery Material is
in fact Confidential Information.
13.

Nothing in this Stipulation shall prevent disclosure of Confidential Information

beyond the terms of this Stipulation if the Producing Party consents to such disclosure, in writing,
or if the Court orders such disclosure.
14.

If any party wishes to use information or documents designated as Confidential

Information or Attorneys' Eyes Only during any trial of this action, the parties will in advance
confer in good faith to agree upon a method to protect such Confidential Information during such
proceedings; if they are unable to agree upon a method to protect such Confidential Information,
any party may apply to the Court for a mechanism to maintain the confidentiality of discovery
material designated as Confidential Information.
15.

A deposition transcript, or any part thereof, may be designated by any Party

requesting confidential treatment either on the record or by written communication mailed within
f business days after receipt by the parties of the transcript. All parties shall treat a deposition
ive
transcript as Confidential Information during the five business days after receipt by the parties of
the transcript. If Confidential Information or Attorneys' Eyes Only treatment of a transcript is
requested on the record, the court reporter shall be instructed to mark the face of the transcript
containing the designated testimony with the designation "Confidential Information" or
"
Attorneys' Eyes Only" and shall provide an index listing those parts which have been so
designated. Copies of all exhibits designated under this Order shall be separately marked as
"
Confidential Information" or "Attorneys' Eyes Only."

C

Case 1:18-cv-03981-AKH Document 98 Filed 11/17/21 Page 7 of 9

16.

Nothing in this Order shall be deemed a waiver of any right any Party might

otherwise have under the Federal Rules of Civil Procedure, the Federal Rules of Evidence, the
attorney-client privilege, the work product doctrine, or any other applicable privilege or protection.
17.

Notwithstanding the foregoing, in the event the Receiving Party or its

representatives receives a subpoena, order or other legal mandate seeking the disclosure of
Confidential Information, the Receiving Party (or its representatives) shall give to the Producing
Party written notice of same within 48 hours of receiving same, and in no event shall turn over
such Confidential Information to anyone without giving the Producing Party at least 10 days
advance notice of same, so it can make an application for a protective order or related relief The
Receiving Party and its representatives agree to stipulate to and otherwise cooperate with the
Producing Party's request for such relief.
18.

This Stipulation shall be construed in accordance with the laws ofthe State of New

York, without giving effect to principles of conflict of laws.
19.

This Stipulation is the complete and exclusive statement of the agreement among

the Parties, and supersedes all prior written and oral communications and agreements, relating to
the subject matter hereof.
20.

In the event of invalidity of any provision of this Stipulation, the Parties agree that

such invalidity shall not affect the validity ofthe remaining portions ofthis Stipulation, and further
agree to substitute for the invalid provision a valid provision which most closely resembles the
intent and economic effect of the invalid provision.
21.

This Stipulation may be signed in counterparts and by facsimile.

22.

This Stipulation shall survive termination of the Litigation.

23.

The Court will retain jurisdiction over the terms and conditions of this Stipulation

only for the pendency of the Litigation.
7

Case 1:18-cv-03981-AKH Document 98 Filed 11/17/21 Page 8 of 9

24.

This Stipulation does not bind the Court or any of its personnel.

Dated: November 12, 2021
FOSTER GARVEY P.C.

ARENT FOX LLP

/s/Katie Heilman
Andrew J. Gd~`./
Kara M. Stege
100 Wall Street, 20th Floor
New York, New York 10005
(
212)965-4534
[e-mail]
(
212)965-4536
[e-mail]

Katie Heilman
1717 K Street, NW
Washington, DC 20006-5344
Tel: [phone]
[e-mail]
David Yearwood
1301 Avenue ofthe Americas, 42 Floor
New York, New York 10019
Tel: [phone]
[e-mail]

Attorneysfor Plaintiff The Kayo Corp.

Attorneysfor Defendant Fila U.S.A., Inc.

SO ORDERED.

/s/ Alvin K. Hellerstein
ALVIN K. HELLERSTEIN
United States District Judge
Dated: November 17,2021
New York, New York

8

Case 1:18-cv-03981-AKH Document 98 Filed 11/17/21 Page 9 of 9

EXHIBIT A
DECLARATION OF COMPLIANCE WITH CONFIDENTIALITY AGREEMENT
I,
1.

declare as follows:
I have read and understand the contents of the Confidentiality Stipulation and

Protective Order, dated November _,2021 (the "Stipulation") by and between The Kayo Corp.
and Fila U.S.A. Inc.
2
.

I am executing this Declaration and agreeing to observe the conditions provided in

the Stipulation prior to any disclosure to me of documents, things and/or any other information
containing, in whole or in part, information governed by the Stipulation.
3
.

I expressly agree that:(a)I have read and shall be fully bound by the terms of the

Stipulation;(b) all documents, things and information which are disclosed to me pursuant to the
Stipulation shall be maintained in strict confidence, and I shall not disclose or use the original or
any copy of, or the subject matter of any ofthe documents, things or the information they contain,
except in accordance with the Stipulation; and (c) I shall not use any of the documents, things
and/or any information governed by the Stipulation other than in connection with the Litigation
( defined in the Stipulation).
as
4
.

I declare under penalty of perjury that the foregoing is true and correct.

Dated:
Signature

FG:11824756.1