Nike, Inc. v. Lululemon USA Inc.

Filing 55

ORDER REGARDING ELECTRONIC DISCOVERY The Court ORDERS as follows: 1. This Order supplements all other discovery rules and orders. It streamlines Electronically Stored Information ("ESI") production to promote a "just, speedy, and ine xpensive determination" of this action, as required by Federal Rule of Civil Procedure 1. 2. This Order may be modified for good cause. If the parties cannot resolve their disagreements regarding any such proposed modifications, the parties shall submit the matter to the Court. (And as further set forth herein.) SO STIPULATED AND AGREED. SO ORDERED. (Signed by Judge J. Paul Oetken on 5/19/2023) (jca)

UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
NIKE, INC.,
Plaintiff,
vs.
LULULEMON USA INC.
Defendant.

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Case No. 23-cv-771 (JPO)
ORDER REGARDING
ELECTRONIC DISCOVERY

The Court ORDERS as follows:
1.

This Order supplements all other discovery rules and orders. It streamlines

Electronically Stored Information (“ESI”) production to promote a “just, speedy, and
inexpensive determination” of this action, as required by Federal Rule of Civil Procedure 1.
2.

This Order may be modified for good cause. If the parties cannot resolve their

disagreements regarding any such proposed modifications, the parties shall submit the matter to
the Court.
3.

Costs will be shifted for disproportionate ESI production requests pursuant to

Federal Rule of Civil Procedure 26. Likewise, a party’s nonresponsive or dilatory discovery
tactics will be cost-shifting considerations.
4.

A party’s meaningful compliance with this Order and efforts to promote

efficiency and reduce costs will be considered in cost-shifting determinations.
5.

E-mail production requests shall only be propounded for specific issues, rather

than general discovery of a product or business.
6.

Production of ESI. ESI shall be produced in response to general production

requests served pursuant to Federal Rule 34 subject to the responding party’s objections and
privileges; provided, however, that email and real-time electronic communications (e.g., Slack,
WhatsApp, Microsoft Teams) shall not be produced in response to such general production

requests.
7.

Email Production. To obtain email, each party must propound specific “Email

Production Requests.”
a. E-mail production requests shall be phased to occur after the parties have
exchanged initial disclosures, a specific listing of likely e-mail custodians,
infringement contentions pursuant to L. Pat. R. 6, invalidity contentions
pursuant to L. Pat. R. 7, and preliminary information relevant to damages.
The exchange of this information shall occur at the time required under the
Federal Rules of Civil Procedure, Local Rules, or by order of the Court.
b. E-mail production requests shall identify the custodian, search terms, and
time frame. The parties shall cooperate to identify the proper custodians,
proper search terms and proper timeframe. The court may allow additional
e-mail discovery requests upon a showing of good cause.
c. Each requesting party shall limit its e-mail production requests to a total of
five custodians per producing party for all such requests. The parties may
jointly agree to modify this limit without the Court’s leave. The Court
shall consider contested requests for up to five additional custodians per
producing party, upon showing a distinct need based on the size,
complexity, and issues of this specific case.
d. Each requesting party shall limit its e-mail production requests to a total of
five search terms per custodian per party. The parties may jointly agree to
modify this limit without the Court’s leave. The Court shall consider
contested requests for up to five (5) additional search terms per custodian,
upon showing a distinct need based on the size, complexity, and issues of
this specific case. The search terms shall be narrowly tailored to particular
issues. Indiscriminate terms, such as the producing company’s name or its
product name, are inappropriate unless combined with narrowing search
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criteria that sufficiently reduce the risk of overproduction. A conjunctive
combination of multiple words or phrases (e.g., “computer” and “system”)
narrows the search and shall count as a single search term. A disjunctive
combination of multiple words or phrases (e.g., “computer” or “system”)
broadens the search, and thus each word or phrase shall count as a separate
search term unless they are variants of the same word or phrase. Use of
narrowing search criteria (e.g., “and,” “but not,” “w/x”) is encouraged to
limit the production and shall be considered when determining whether to
shift costs for disproportionate discovery.
e. The Parties reserve their right to object to proposed custodians and search
terms.
8.

All document production shall be in electronic format unless otherwise agreed to

in advance by the parties.
9.

Production Format: Documents and information stored by the producing party

in hard copy and ESI shall, to the extent that it is technically and/or practically feasible, be
produced electronically as follows:
a. General Document Image Format. Single-page group IV TIFFs in at least
300 dpi or JPEG for color, to the extent reasonably possible;
b. Each document produced in a single page image file format shall bear a
unique production number and shall be named with the production number
followed by the appropriate filed extension;
c. Searchable text files for each document bearing the name of the beginning
production number for each document (text of native files to be extracted
directly from native files where possible; OCR for paper documents);
d.

Database load files and cross reference files, e.g., Concordance defaultdeliminated file (meatadata) and an Opticon-deliminated file (image
reference files, and including (as available) the fields listed in subsection
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(g)
e. Native Files. Spreadsheets (e.g., MS Excel, Google Sheets) and delimited
text files (e.g. comma-separated value (.csv) files and tab-separated value
(.tsv) files) shall be produced in their native file format. TIFF or JPEG
images need not be produced for these formats of files unless the files
have been redacted, in which instance such files shall be produced in TIFF
with OCR Text Files. If producing in native format, each document shall
include a single unique production number for the document preceding the
native file name. A TIFF placeholder indicating that a document was
provided in native format should accompany the production. If a file has
been redacted, TIFF images and OCR text of the redacted document will
suffice in lieu of a native file and extracted text. If good cause exists to
request production of files in native format, other than those specifically
set forth in this provision, the party may request such production and
provide an explanation of the need for native file review, which request
shall not unreasonably be denied.
f. Confidentiality Designation. Each image will be stamped with the
appropriate confidentiality designations (if any) in accordance with the
Protective Order in this matter.
g. Metadata. In addition to single page images, productions shall include (1)
an ASCII delimited metadata file (.txt., .dat, or .csv) and (b) an image load
file that can be loaded into commercially acceptable production software
(e.g., Relativity). The following fields, if available, shall appear in and the
load file:
i. BEGBATES: Beginning Bates number as stamped on the
production image
ii. ENDBATES: Ending Bates number as stamped on the production
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image
iii. BEGATTACH: First production Bates number of the first
document in a family
iv. ENDATTACH: Last production Bates number of the last
document in a family
v. PAGE COUNT: the number of production images in the document
vi. CUSTODIAN: Individual from whom the documents originated
and all Individal(s) whose documents de-duplicated out (De-Duped
Custodian)
vii. AUTHOR: Any value populated in the Author field of the
document properties
viii. FILENAME: Filename of an electronic document
ix. DATECREATED: Date the document was created (format:
MM/DD/YYYY)
x. DATEMODIFIED: Date the document was last altered or saved
(format: MM/DD/YYYY)
xi. FILETYPE: the file type extension of the native file.
xii. For e-mails:
1. SUBJECT: Subject line of e-mail
2. DATESENT: Date e-mail was sent (format:
DD/MM/YYYY)
3. TO: All recipients in the “To” line of the e-mail
4. FROM: The name and e-mail address of the sender of the
e-mail
5. CC: All recipients in the “CC” line of the e-mail
6. BCC: All recipients in the “BCC” line of the e-mail
xiii. All other metadata need not be produced absent a specific request
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based upon specific facts and a showing of good cause, and further
subject to the producing party’s claim of undue burden or cost.
10.

Pursuant to Federal Rule of Evidence 502(d), the production of ESI that the

producing party asserts is privileged or work product protected is not a waiver in the pending
case or in any other federal or state proceeding.
11.
The mere production of ESI in a litigation as part of a mass production shall not
itself constitute a waiver for any purpose.
SO STIPULATED AND AGREED.
Dated: May 19, 2023

_/s/ Aaron P. Bowling_______________
Christopher J. Renk (admitted pro hac vice)
Michael J. Harris (admitted pro hac vice)
Aaron P. Bowling (admitted pro hac vice)
ARNOLD & PORTER KAYE SCHOLER LLP
70 W. Madison Street, Suite 4200
Chicago, IL 60602
Telephone: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
Michael J. Sebba (SBN 5398540)
ARNOLD & PORTER KAYE SCHOLER LLP
777 South Figueroa Street, 44th Floor
Los Angeles, CA 90017-5844
Telephone: [phone]
Email: [e-mail]
Bridgette C. Gershoni (admitted pro hac vice)
Michael J. Gershoni (admitted pro hac vice)
Kathleen P. Duffy (SBN 1040190)
Lindsey C. Staubach (admitted pro hac vice)
ARNOLD & PORTER KAYE SCHOLER LLP
601 Massachusetts Ave., NW
Washington, D.C. 20001
Telephone: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
[e-mail]
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Attorneys for Plaintiff Nike, Inc.
Dated: May 19, 2023

__/s/ Brandon G. Smith______________________
Ali S. Razai (admitted pro hac vice)
Brandon G. Smith (admitted pro hac vice)
Knobbe, Martens, Olson & Bear, LLP
2040 Main Street, Fourteenth Floor
Irvine, CA 92614
Telephone: [phone]
Email: [e-mail]
[e-mail]
Attorneys for Defendant lululemon usa inc.

SO ORDERED.

Dated: May 19, 2023

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