Aethra Sistemas Automotivos, S.A. v. AddisonMckee, Inc.

Filing 31

ORDER granting in part and denying in part 28 Motion to Compel. 1. Plaintiff shall change its proposed Protective Order (Doc. 29-6) before Monday, December 17, 2012; 2. The Court will review and enter its Order not later than Wednesday, December 19, 2012; 3. Defendant Addison shall complete its production not later than January 8, 2013. Signed by Magistrate Judge Stephanie K. Bowman on 12/14/12. (mee)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION

AETHRA SISTEMAS AUTOMOTIVE, S.A.,
Case No. 1:11-cv-846
Plaintiff,
Bertelsman, J.
Bowman, M.J.

v.
ADDISON MCKEE, INC.,
Defendants.

MEMORANDUM ORDER
On November 30, 2012, Plaintiff moved the Court to compel Defendant Addison
McKee, Inc. (“Addison”) to respond to its written discovery requests within fourteen
days. (Doc. 28). Pursuant the procedures of the undersigned magistrate judge, to
whom all pretrial proceedings and non-dispositive motions have been referred other
than motions in limine (Doc. 12), the Court conducted at telephonic hearing on the
motion on December 13, 2012.

During the conference, Defendant brought to the

Court’s attention the possibility of another, unrelated dispute, concerning Plaintiff’s
production of discovery materials. However, the Court declined to address that dispute
based upon the failure to demonstrate exhaustion of efforts to resolve the dispute extrajudicially.
Background
After the parties were unable to reach an informal agreement concerning the
production of discovery, Addison refused to make a more formal production of discovery
unless and until the parties could agree upon a protective order. More than two months

1

after the first draft of a protective order was proposed by Addison, the parties remain
unable to reach agreement on its terms. Plaintiff maintains that none of the documents
in this litigation should be designated confidential, while Addison argues vigorously that
some protection is both necessary and appropriate for its confidential business records.
Fortunately, the parties reached partial agreement prior to turning to this Court for
assistance, and Plaintiff has tendered the latest drafts of the proposed agreement as
exhibits to its motion, including a clean copy of Plaintiff’s proposal (Doc. 29-6, Exhibit F)
and a red-lined version with Defendant’s last revisions. (Doc. 29-7, Exhibit G). Having
reviewed the motion to compel and having heard oral argument, it is clear that just two
related issues remain: (1) the conformity of the draft protective order with Sixth Circuit
case law; and (2) the parties’ continuing disagreement over the scope of what should be
designated “confidential.”
Analysis
Under Sixth Circuit case law including Proctor & Gamble Co. v. Bankers Trust
Co., 78 F.3d 219, 227 (6th Cir. 1996), there is a strong presumption for public access to
all documents filed of record in litigation. In Bankers Trust, the Sixth Circuit was highly
critical of the district court’s decision to approve a broad stipulated protective order,
which provided that “parties and non-parties....could, in their discretion, designate
discovery material as ‘confidential’ and could have such material filed under seal if the
parties agreed that it reflected ‘trade secrets or other confidential research,
development or commercial information.”

The Sixth Circuit noted that the Agreed

Protective Order improperly permitted the “parties and not the court ...[to] determine

2

whether the particular documents met the requirements of Rule 26. The Sixth Circuit
explained:
The District Court cannot abdicate its responsibility to oversee the
discovery process and to determine whether filings should be made
available to the public. It certainly should not turn this function over to the
parties, as it did here...The protective order in this case allows the parties
to control public access to court papers, and it should be vacated or
substantially changed.
Id. at 227.
As in Bankers Trust, in this case the proposed protective order inappropriately
gives the parties complete discretion to file under seal discovery materials that only they
have designated as “confidential,” (see Doc. 29-7 at ¶5), without oversight by the Court.
That provision must be altered to conform to Sixth Circuit law, by permitting Court
review of any document designated as confidential by the parties that the parties intend
to use at trial and/or seek to file under seal.

Typically, this is accomplished by

changing the language to require the parties to file a motion seeking leave to file a
document under seal, and by simultaneously tendering the “confidential” information or
document to the Court in camera, either through manual delivery or through electronic
transmission to [e-mail], together with a proposed
order permitting the document to be filed under seal.
The second related issue is the parties’ continuing disagreement over the scope
of what may be designated as “confidential.”

Plaintiff objects to the very broad

language proposed by Addison, that in theory would permit Addison to designate nearly
all documents as confidential information.

Plaintiff seeks to limit the possible universe

of “confidential” documents to financial and design information (other than the design of
equipment or parts sold to Plaintiff), whereas Addison seeks to include “marketing,
3

sales, manufacturing, technical, licensing, research and development and design
information.”
While the Court appreciates the good faith representation of counsel that it will
not overuse the “confidential” designation, the breadth of the language proposed by
Addison exceeds the boundaries of what is permitted under Sixth Circuit case law. On
the other hand, the Court accepts counsel’s argument that some small number of
additional documents, beyond the financial and limited design information identified by
Plaintiff, may be entitled to protection.

Striking the balance that the parties have been

unable to reach, the Court will direct Plaintiff to add to its definition of “confidential” the
words “trade secrets.” Other than the changes noted herein, the protective order most
recently proposed by Plaintiff (Exhibit F) meets with the approval of this Court.
Accordingly, IT IS ORDERED:
Plaintiff’s motion to compel (Doc. 28) is GRANTED IN PART and DENIED IN
PART:
1. Plaintiff shall change its proposed Protective Order (Doc. 29-6) as stated
herein on or before Monday, December 17, 2012, and shall tender the Order in either
Wordperfect or Microsoft Word format to [e-mail], with
copies provided to all counsel of record;
2.

The Court will review and enter its Order not later than Wednesday,

December 19, 2012;
3.

Defendant Addison shall complete its production in conformity with the

Protective Order as soon as practicable, but not later than January 8, 2013.

4

s/ Stephanie K. Bowman
Stephanie K. Bowman
United States Magistrate Judge

5