Speare Tools Inc v. Klein Tools Inc

Filing 107

ORDER DISMISSING CASE signed by Judge Rudolph T. Randa on 11/18/2014 GRANTING 67 Defendant's MOTION for Summary Judgment. 78 Defendant's MOTION to Exclude Expert Testimony DENIED as moot. 87 Plaintiff's MOTION for Leave to File < i>Sur-Reply GRANTED. 77 Plaintiff's MOTION to Seal Document DENIED. 72 Defendant's MOTION to Seal Document DENIED. 97 Defendant's Unopposed MOTION to Seal Document GRANTED. 93 Defendant's MOTION for Attorney Fees GRANTED-IN-PART and DENIED-IN-PART, Klein Tools awarded $7,718.95 in attorney's fees. (cc: all counsel)(cb)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
SPEARE TOOLS, Inc.,
Plaintiff,
-vs-

Case No. 13-C-324

KLEIN TOOLS, Inc.,
Defendant.
DECISION AND ORDER
Speare Tools alleges that Klein Tools infringed unregistered product
packaging trade dress for Speare’s adjustable hole saw in violation of Lanham
Act § 43(a), 15 U.S.C. § 1125(a). Klein Tools moves for summary judgment.
For the reasons that follow, this motion is granted.
I.

Background
Speare Tools is a Wisconsin corporation with its principal place of

business in Williams Bay, Wisconsin. Speare Tools was founded by Bill Speare
in 1996. After experimenting with several different prototypes, Speare
designed and developed an adjustable hole saw called the Quick Cutter®,
which can be used to cut circular holes in drywall and ceiling tiles for
speakers, recessed (or “can”) lighting, or HVAC duct and register installation.
Speare gained notoriety for his saw at the 1997 National Hardware
Show, where he won the Retailer Choice award for best new product as an

attachment to a power tool. By 2003, Speare’s saw was sold in all Lowes,
Home Depot, Menards and numerous independent electrical stores around the
country and in various countries in the world. From 2000-2008, Greenlee
Textron, a Home Depot supplier, private-labeled Speare’s hole saw under the
Greenlee Textron brand name.
Prior to 2006, Speare Tools used a variety of packaging types for its
adjustable hole saw, including packaging which consisted of a skin board and
blister-type packaging, and also a clamshell package with a front plastic cover
in a hinged design. In 2006, Speare decided that he wanted to change his
packaging to freshen the look. At the time, most of the hole saws in the
market were housed in a rectangular plastic package. Speare wanted to create
something more eye-catching to shoppers and conceived of the idea of recessed
packaging. Speare tried various designs and settled on the following:

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ECF No. 16-4, Exhibit D, front, back, and side views.
In 2008, Home Depot replaced Greenlee Textron with Klein Tools.
From 2008 to 2012, Klein Tools purchased more than 170,000 adjustable hole
saws and packaging from Speare Tools under a private label arrangement. In
2011, Klein Tools began working with a Chinese vendor to replace Speare
Tools, and in August 2012, Klein Tools stopped purchasing from Speare Tools.
Klein Tools continues to use the latest iteration of Speare’s packaging, which
Speare Tools alleges is an infringement upon its trade dress.

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II.

Analysis
Summary judgment should be granted if “the movant shows that there

is no genuine dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed. R. Civ. P. 56(a). The plain language of the
rule “mandates the entry of summary judgment, after adequate time for
discovery and upon motion, against a party who fails to make a showing
sufficient to establish the existence of an element essential to that party's
case, and on which that party will bear the burden of proof at trial.” Celotex
Corp. v. Catrett, 477 U.S. 317, 322 (1986). The Court must accept as true the
evidence of the nonmovant and draw all justifiable inferences in his favor.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). A party resisting
summary judgment must present evidence “demonstrating that there is a
genuine issue for trial.” Wheeler v. Lawson, 539 F.3d 629, 634 (7th Cir. 2008).
Section 43(a) of the Lanham Act establishes a cause of action against
any person who “on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or any
combination thereof” which is likely to cause confusion as to the origin of
goods. 15 U.S.C. § 1125(a)(1) (emphasis added). The phrase “word, term,
name, symbol, or device, or any combination thereof” includes “distinctive
aspects of a product’s appearance, commonly known as trade dress.” Bretford
Mfg., Inc. v. Smith Sys. Mfg. Corp., 419 F.3d 576, 579 (7th Cir. 2005). Trade

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dress is generally divided into two categories: “product configuration, which
relates to the design of a product, . . . and product packaging.” Fun-Damental
Too v. Gemmy Indus. Corp., 111 F.3d 993, 996 (2d Cir. 1997). Speare Tools’
claim falls into the latter category, claiming trade dress protection for the
insert card and plastic material that houses the adjustable hole saw and dust
shields. In response to an interrogatory, Speare Tools described its asserted
trade dress as follows:
A clear plastic disk nested with a plastic circular outer disk,
wherein the inner circular disk has a raised plastic portion
outlining the displayed hole saw when offered for sale. The
inner circular disk also has a raised portion for a hex key or
any adjustment tool. The trade dress also includes a circular
cardboard insert between the two plastic circular disks
showing from the front of the package an illustration of how
the tool is used.
Thus, Speare Tools is not asserting trade dress rights in the adjustable hole
saw, the inner or outer dust shields, the hex key, or non-identified features of
the insert card or blister portion.
In order to prevail on a claim of trade dress infringement, a plaintiff
must show (1) that its trade dress is either inherently distinctive or has
acquired secondary meaning, and (2) that the similarity of the defendant’s
trade dress causes a likelihood of confusion as to the source or affiliation of the
products. Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 291 (7th Cir.
1998). “Secondary meaning” is acquired when “in the minds of the public, the

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primary significance of a product feature . . . is to identify the source of the
product rather than the product itself.” Qualitix Co. v. Jacobson Prods. Co.,
514 U.S. 159, 163 (1995); see also Jay Franco & Sons, Inc. v. Franek, 615 F.3d
855, 857 (7th Cir. 2010) (“to be valid a product-design mark must have
acquired a ‘secondary meaning’ – a link in the minds of consumers between
the marked item and its source”). In this manner, trademark law is “designed
to reduce the costs customers incur in learning who makes the product, and
this also helps sellers obtain rewards from producing goods of consistent
quality, for consumers will find it easier to find and buy goods with which they
have been satisfied in the past.” Bretford, 419 F.3d at 579.
The person asserting protection for unregistered trade dress bears the
burden of proving that “the matter sought to be protected is not functional.” §
1125(a)(3).1 This burden “gives force to the well-established rule that trade
dress protection may not be claimed for product features that are functional.”
Traffix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001). The
“functionality doctrine” prevents trademark law, which “seeks to promote
competition by protecting a firm’s reputation, from instead inhibiting
legitimate competition by allowing a producer to control a useful product

Despite this clear statutory language, the Seventh Circuit holds that
“functionality is an affirmative defense and so the burden of proof rests on the
defendant,” even for unregistered trade dress. Publ’n Int’l, Ltd. v. Landoll, Inc., 164
F.3d 337, 339-340 (7th Cir. 1998). This nuance is not relevant for purposes of the
Court’s analysis.
1

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feature. It is the province of patent law, not trademark law, to encourage
invention by granting inventors a monopoly over new products designs or
functions for a limited time, after which competitors are free to use the
innovation.” Qualitex, 514 U.S. at 164; see also Franek, 615 F.3d at 857
(“patent law alone protects useful designs from mimicry; the functionality
doctrine polices the division of responsibilities between patent and trademark
by invalidating marks on useful designs”); Specialized Seating, Inc. v.
Greenwich Indus., L.P., 616 F.3d 722, 727 (7th Cir. 2010) (“A novel or
distinctive selection of attributes . . . can be protected for a time by a utility
patent or a design patent, but it cannot be protected forever as one producer’s
trade dress. When the patent expires, other firms are free to copy the design
to the last detail in order to increase competition and drive down the price
that consumers pay”).
A design is functional if it is “essential to the use or purpose of the
article or if it affects the cost or quality of the article.” TrafFix, 532 U.S. at 32.
Courts look at several factors to determine whether a design is functional,
including: (1) the existence of a utility patent, expired or unexpired, that
involves or describes the functionality of an item’s design element; (2) the
utilitarian properties of the item’s unpatented design elements; (3) advertising
of the item that touts the utilitarian advantages of the item’s design elements;
(4) the dearth of, or difficulty in creating, alternative designs for the item’s

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purpose; and (5) the effect of the design feature on an item’s quality or cost.
Georgia-Pacific Consumer Prods. LP v. Kimberly-Clark Corp., 647 F.3d 723,
727-28 (7th Cir. 2011). In short, a design that “produces a benefit other than
source identification is functional.” Franek at 857. Functionality can be
determined at the summary judgment stage in appropriate cases. KimberlyClark at 727; Landoll, 164 F.3d at 340 (“a grant of summary judgment on the
basis . . . that the plaintiff’s trade dress . . . rests on functional features of the
dress is proper only if no reasonable trier of fact could conclude otherwise”).
Speare Tools argues that since there are so many ways to package a
product, rarely would packaging be functional, that is, rarely would a
company need to copy its competitor’s package. This is the so-called
“competitive necessity” aspect of trade dress infringement. “For purposes of a
defense to trade dress infringement, ‘functional’ means not simply that the
feature serves a function, but that the feature is necessary to afford a
competitor the means to compete effectively.” Schwinn Bicycle Co. v. Ross
Bicycle, Inc., 870 F.2d 1176, 1188 (7th Cir. 1989) (emphasis in original). Thus,
a particular trade dress is “functional” if it is “something that the other
producers of the product in question would have to have as part of the product
in order to be able to compete effectively in the market.” Abbott Labs v. Mead
Johnson & Co., 971 F.2d 6, 21 (7th Cir. 1992). “Determining that a particular
feature is advantageous, or concluding that the feature makes it ‘easier’ to do

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certain things, does not necessarily render it ‘functional’ as the term is
employed under § 43(a)(1).” Id.
Accepting this argument would lead the Court down an incorrect path.
In TrafFix, the Supreme Court clarified that it is not necessary to analyze
“competitive necessity” if, as noted above, the design feature is “essential to
the use of purpose of the device or when it affects the cost or quality of the
device.” The Court explained:
Expanding upon the meaning of this phrase, we have observed
that a functional feature is one ‘the exclusive use of [which]
would put competitors at a significant non-reputation-related
disadvantage. [Qualitex,] 514 U.S., at 165 (quoting Inwood
Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 850, n.10 (1982)).
The Court of Appeals in the instant case seemed to interpret
this language to mean that a necessary test for functionality is
‘whether the particular product configuration is a competitive
necessity.’ . . . This was incorrect as a comprehensive
definition. As we explained in Qualitex, supra, and Inwood,
supra, a feature is also functional when it is essential to the
use or purpose of the device or when it affects the cost or
quality of the device. The Qualitex decision did not purport to
displace this traditional rule. Instead, it quoted the rule as
Inwood had set it forth. It is proper to inquire into a
‘significant non-reputation-related disadvantage’ in cases of
esthetic functionality, the question involved in Qualitex.
Where the design is functional under the Inwood formulation
there is no need to proceed further to consider if there is a
competitive necessity for the feature.
532 U.S. at 32-33 (emphasis added). This is not a case involving “aesthetic
functionality.” “In Qualitex, . . . esthetic functionality was the central
question, there having been no indication that the green-gold color of the

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laundry press pad had any bearing on the use or purpose of the product or its
cost or quality.” Id. at 33. Therefore, as explained and clarified in TrafFix, the
Court need not analyze “competitive necessity” if Speare Tools’ packaging is
“essential to the use or purpose of the device or when it affects the cost or
quality of the device.” See also, Eco Mfg. LLC v. Honeywell Int’l, Inc., 357 F.3d
649, 654-55 (7th Cir. 2003) (“TrafFix rejected an equation of functionality with
necessity; it is enough that the design be useful”).
Speare Tools also argues that the TrafFix framework does not apply to
a claim involving product packaging, as opposed to product configuration. The
Court is not persuaded that this is a relevant distinction, and the Court is
unaware of any case refusing to apply the basic test of functionality to a claim
of product packaging trade dress infringement. See, e.g., Malaco Leaf, AB v.
Promotion in Motion, Inc., 287 F. Supp. 2d 355, 373 (S.D.N.Y. 2003) (“use of . .
. a common type of functional packaging [such as cellophane, however,] cannot
give rise to a suit for trademark or unfair competition”) (citing 1 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition, §§ 7:63, 8:20
(4th ed. 2003)). While it is and should be “more difficult to claim production
configuration trade dress than other forms of trade dress,” Leatherman Tool
Group v. Copper Indus., 199 F.3d 1009, 1013 (9th Cir. 1999), this does not
mean that the Court should begin its analysis with “competitive necessity,”

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contrary to the direction in TrafFix.2
In this respect, Speare Tools confuses the relevant inquiry, once again,
by arguing that its trade dress is not “essential” to the use or purpose of the
tool. That much is obvious; of course clear plastic packaging has no bearing on
the ultimate use or purpose of Speare Tools’ adjustable hole saw.3 That said,
the use of clear plastic packaging is functional in the sense that it “serves a
utilitarian advantage” by “permit[ting] the purchaser to view the product.”
Seirus Innovative Accessories, Inc. v. Gordini U.S.A., Inc., 849 F. Supp. 2d 963,
987 (S.D. Cal. 2012); Original Appalachian Artworks, Inc. v. Blue Box Factory
(USA), 577 F. Supp. 625, 631 (S.D.N.Y. 1983) (the “plastic front window on
which the dolls are sold” cannot be protected as trade dress because it is “a
commonly used, functional device for displaying dolls”); Storck USA, L.P. v.
Farley Candy Co., Inc., 821 F. Supp. 524, 529 (N.D. Ill. 1993) (“transparent

As the court observed in Leatherman, circuits were split, at least in 1999, as to
“whether product configuration cases are different conceptually from ordinary
trademark or trade dress cases.” 199 F.3d at 1013, n.6. The “focus of the split, however,
is what it takes for a trade dress to be ‘inherently distinctive’ and whether the
traditional categories of generic, descriptive, suggestive, arbitrary, and fanciful can be
applied meaningfully in product configuration cases.” Id. Thus, the distinction between
“ordinary trade dress cases” (i.e., product packaging cases) and product configuration
cases is not relevant for purposes of the Court’s functionality analysis.
2

In this sense, the Court agrees that the formulation of the test is somewhat
confusing. Courts that find a particular type of packaging to be functional – i.e., clear
plastic packaging that allows a consumer to see the product at the point of purchase –
seem to focus on the use of packaging in stores to sell the product, not whether the
package has any bearing on the actual use of the product once it is bought. Compare,
Sherwin-Williams Co. v. JP Int’l Hardware Co., 988 F. Supp. 2d 815, 817-18 (N.D. Ohio
2013) (use of a “distinctive yellow and brown packaging, known as a ‘brush keeper,’” is
not “essential to the use or purpose” of a paint brush).
3

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plastic window[s]” are “clearly functional to display the individually wrapped
candy pieces inside the respective packages”).
Indeed, Speare Tools’ packaging is virtually indistinguishable from the
“common type of functional packaging” discussed in McCarthy’s treatise,
supra. Professor McCarthy writes:
The use of ordinary packaging such as transparent cellophane
is functional and free for all to use. For example, a molded
plastic package for sliced luncheon meats was held functional
in that the raised platform held a specified amount of meat
and ribs or grooves strengthened the package and aided in the
packaging process. Similarly, transparent packaging used to
encase an electrical rotary dimmer switch was, on the reversal
of a preliminary injunction, found functional. The package is
transparent so that viewers can see it; the recesses are shaped
to fit snugly around the product; the rounded corners are the
result of the molding process; and the rim holds the package
tightly closed.
1 McCarthy § 7:87 (citing Dixie Vortex Co. v. Lily-Tulip Cup Corp., 19 F. Supp.
511 (E.D.N.Y. 1937); In re Oscar Mayer & Co., 189 U.S.P.Q. 295 (T.T.A.B.
1975); Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234 (Fed. Cir.
1986)). Similarly here, the blister portion of Speare’s clamshell package is
transparent so that purchasers can see the product and read the insert card
when the packaging is displayed in stores. Moreover, like the clear plastic
packaging that “fit snugly” around the electrical rotary dimmer switch
discussed by Professor McCarthy (citing Power Controls), the blister portion of
Speare’s packaging, including the clear plastic disk and raised portions, fits

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snugly around the insert card, hole saw, hex key, and dust shields to “hold[]
the package tightly closed.” Id.
Speare’s packaging is also functional because it “affects the cost or
quality of” the packaging – and therefore the device. ECF No. 70, Declaration
of Tim Duitsman, Klein Tools’ Senior Vice President of Product Development
and Quality, ¶ 6 (“The clear plastic packaging of Speare’s packaging reduces
packaging material and, hence, expense by, for example, utilizing a round
shape and conforming to the shape and size of the hole saw, hex key, and dust
shields”). Speare responds that his “trade dress packaging would cost the
same whether it was in rectangular, square or circular shape since [his]
packaging is made by manufacturing them in four-up fashion as four squares
side-by-side.” ECF No. 74, Speare Declaration, ¶ 22. However, Speare goes on
to explain that the square package is “‘stamped’ wherein the corners are cut
out to form the circular package. The removed corners become waste and are
thrown out.” Id. Thus, the circular packaging, by necessity, weighs less than
other shapes, and Speare concedes that shipping costs are a function of
weight. ECF No. 82, Klein’s Response to Speare’s Statement of Additional
Facts, ¶ 92.
The foregoing analysis does not change upon consideration of the insert
card. The insert card has several useful properties, including written and
pictorial instructions on how to use the product. Moreover, the card’s circular

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shape conforms to the plastic packaging that surrounds it. Speare Tools
cannot trademark a circle. “A circle is the kind of basic design that a producer
. . . adopts because alternatives are scarce and some consumers want the
shape regardless of who manufactures it. There are only so many geometric
shapes; few are both attractive and simple enough to fabricate cheaply.”
Franek at 861.
Nor can Speare Tools gain protection based upon the overall
appearance of its packaging. On the whole, the asserted features make the
product (1) cheaper to produce (because of the use of minimal packaging); (2)
stronger (because of the stepped sides on the blister package); (3) more
appealing to consumers (by reducing cost, revealing the parts of the product at
the point of sale, and including photos and instructions showing how the
product is used); and (4) more appealing to retailers (because of the added
strength, lower cost, nesting capability of the blister packages, and the use of
information provided to consumers at the point of sale). All of these features
are functional, and none were added to “produce a distinctive appearance that
would help consumers identify the product’s source.” Specialized Seating, 616
F.3d at 728. Where the whole is “nothing other than the assemblage of
functional parts, and where even the arrangement and combination of the
parts is designed to result in superior performance, it is semantic trickery to
say there is still some sort of separate ‘overall appearance’ which is non-

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functional.” Leatherman, 199 F.3d at 1013.
Finally, many of the features in Speare Tools’ alleged trade dress are
described and claimed in third-party utility patents. For example, U.S. Patent
No. 5,730,290 describes and claims nesting of packaged plungers for easy
stacking, storage, shipping, and display; U.S. Patent No. 4,467,994 describes
and claims a mold with circumferential ridges to help make a hollow product
rigid; U.S. Patent No. 3,009,603 describes and claims a flower pot with
“stepped portions” that facilitate grip and rigidity and prevent deformation of
sidewalls; and U.S. Patent No. 4,082,184 describes and claims a container
“with sidewalls that are formed by a plurality of concentric sections . . .
stepped inwardly” to “not only provide nesting seats, but form stiffening rings
to oppose bulging of the sides of the plastic containers under load.” ECF No.
69-1, Klein Tools’ Statement of Facts, ¶¶ 54-64. A utility patent is “strong
evidence that the features therein are functional. If trade dress protection is
sought for those features the strong evidence based on the previous patent
adds great weight to the statutory presumption that features are deemed
functional until proved otherwise by the party seeking trade dress protection.”
TrafFix at 30; see also Franek at 857 (“Utility patents serve as excellent cheat
sheets because any design claimed in a patent is supposed to be useful”).
Speare Tools also pled a claim for trade dress infringement and unfair
competition under Wisconsin common law. Since its trade dress is functional,

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Speare Tools cannot succeed on its state law claims. See, e.g., OgoSport, LLC
v. Maranda Enters., LLC, Case No. 10-C-155, 2012 WL 683111 (E.D. Wis.
Mar. 2, 2012); Rizzo v. South Bend Sporting Goods, 2009 WL 2495461, at *2
(W.D. Wis. Aug. 12, 2009) (in a common law trade dress claim, the plaintiff’s
trade dress must be “primarily non-functional”). Summary judgment is
granted as to all counts.
III.

Miscellaneous motions
Also before the Court are a number of miscellaneous motions that can

be addressed herein.
1.

Klein Tools moves to exclude expert testimony. Since Klein is

entitled to summary judgment as to liability, this motion is denied as moot.
2.

Klein Tools moves to seal portions of Exhibit C to the Declaration

of James Lovsin, ECF No. 71-3. Klein asks the Court redact the amounts
listed for quantity, sales, and credits because such amounts are not publically
available and would competitively harm Klein or Speare if it was disclosed.
Similarly, Speare Tools moves to seal portions of Exhibit B (ECF No. 76-28)
and Exhibits E (75-5), F (75-6), G (75-7), H (75-8) and P (75-16) to the
Declaration of Mark Grossman. Exhibit B is an internal client email which
contains the name of Klein’s supplier; Exhibits E, F, G, H and P are deposition
testimony excerpts that refer to internal emails that could have an effect on
Klein’s business reputation.

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The Seventh Circuit has been very clear in explaining that a party
asking for secrecy in federal court filings “must explain how disclosure would
cause harm and why the harm predicted warrants secrecy.” Marine Travelift,
Inc. v. Marine Lift Sys., Inc., 2013 WL 4087555, at *1 (E.D. Wis. Aug. 13,
2013) (discussing Baxter Int’l, Inc. v. Abbot Labs., 297 F.3d 544 (7th Cir.
2002)). “Beyond asserting that the document must be kept confidential
because we say so, this contends only that disclosure ‘could . . . harm [the
litigant’s] competitive position.’ How? Not explained. Why is this sort of harm
(whatever it may be) a legal justification for secrecy in litigation? Not
explained.” Baxter at 547. Both motions fail in this regard and are denied.
3.

Klein Tools moves to seal portions of Exhibit BB to the Second

Declaration of James Lovsin. Both parties agree that the full names of survey
participants listed at DRG0014-DRG0023 in Exhibit BB should be redacted to
protect their privacy. Such information is simply not important to the instant
litigation, i.e., it did not “influence or underpin” the Court’s disposition of this
case. Baxter at 545. Therefore, this motion is granted.
4.

Speare Tools moves for leave to file a sur-reply brief in opposition

to Klein Tools’ motion for summary judgment. Having considered the
arguments therein, this motion is granted.
5.

Finally, Klein Tools moves for attorneys’ fees under Federal Rule

of Civil Procedure 37(a)(5)(A). This motion relates to the Court’s July 15 Order

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addressing certain discovery motions. Regarding a motion to compel filed by
Klein Tools, the Court wrote:
In response, Speare argues that Klein never should have filed
this motion because Speare agreed to supplement its
responses (the responses have since been supplemented). Even
if Speare promised to correct its responses – a contention that
Klein disputes – Klein had little choice but to file this motion
because the discovery deadline was about to expire, and
Speare refused to stipulate to an extension. For similar
reasons, the Court disagrees with Speare’s contention that
Klein did not confer in good faith prior to filing this motion.
At this point, it seems silly that Speare even bothered to
oppose this motion, but Speare also demands fees and
expenses, citing Fed. R. Civ. P. 37(a)(5)(A). This provision is
inapplicable on its face because it only applies when a motion
to compel is granted or, as happened here, ‘the disclosure or
requested discovery is provided after the motion was filed.’ Id.
Klein, not Speare, may be entitled to such an award. Klein’s
request for leave to file a petition for expenses under Rule
37(a)(5)(A) is granted.
ECF No. 65, at 1-2.
Accordingly, Klein Tools moves for fees under Rule 37(a)(5)(A), which
was amended in 1993 to reach the scenario at issue here: “where information
that should have been produced without a motion to compel is produced after
the motion is filed but before it is brought on for hearing.” Advisory
Committee Notes, 1993 Amendments, ¶ 7. That said, the rule also provides
that fees must not be awarded if (i) the movant filed the motion before
attempting in good faith to obtain the disclosure or discovery without court
action (the Court already rejected Speare Tools’ argument that Klein did not

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confer in good faith); (ii) the opposing party’s nondisclosure, response, or
objection was substantially justified (Speare cannot say that its objection was
substantially justified because it had no substantive objection); and (iii) other
circumstances make an award of expenses unjust.
Speare Tools hangs its hat on the last exception. Speare’s primary
complaint is that Klein waited until the final four days of discovery at the end
of February to send a letter informing Speare’s counsel of a potential discovery
issue. The Court previously chided Speare Tools for refusing to stipulate to an
extension of the discovery deadline, but Klein must share some of the blame
because its demand for supplementation related to discovery responses made
by Speare months earlier in November of 2013. Klein waited until just before
the discovery deadline to demand supplementation, and when Speare couldn’t
supplement in time, Klein moved to compel because it was bumping up
against the discovery deadline.
Accordingly, the Court finds that Klein should not be entitled to fees
that are related to initially filing the motion to compel. ECF No. 94,
Declaration of James Lovsin, ¶ 10 (2/28/14 ERM 1.2 hours, 2/28/14 JLL 8.3
hours). However, the Court still adheres to the belief that Speare never should
have opposed the motion in the first instance.4 Therefore, Klein’s motion is

Speare Tools’ assertion that it “had no choice” but to oppose the motion is
nonsensical.
4

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granted for the balance of the requested award.
NOW, THEREFORE, BASED ON THE FOREGOING, IT IS
HEREBY ORDERED THAT:
1.

Klein Tools’ motion to exclude expert testimony [ECF No. 78] is

DENIED as moot;
2.

Speare Tools’ motion for leave to file a sur-reply brief [ECF No.

87] is GRANTED;
3.

Speare Tools’ motion to seal [ECF No. 77] is DENIED;

4.

Klein Tools’ motion to seal [ECF No. 72] is DENIED;

5.

Klein Tools’ unopposed motion to seal [ECF No. 97] is

GRANTED;
6.

Klein Tools’ motion for attorneys’ fees [ECF No. 93] is

GRANTED-IN-PART and DENIED-IN-PART, such that Klein Tools is
awarded $7,718.95 in attorneys’ fees; and
7.

Klein Tools’ motion for summary judgment [ECF No. 67] is

GRANTED. The Clerk of Court is directed to enter judgment accordingly.
Dated at Milwaukee, Wisconsin, this 18th day of November, 2014.

BY THE COURT:
__________________________
HON. RUDOLPH T. RANDA
U.S. District Judge
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