H-D USA LLC et al v. SunFrog LLC et al

Filing 70

PROTECTIVE ORDER signed by Judge J.P. Stadtmueller on 2/22/2018 GRANTING 69 Parties' Joint Request for Entry of Protective Order and SPECIFYING the terms as modified for confidential information produced or disclosed during this matter. See Order for further details. (cc: all counsel)(jm)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
H-D U.S.A., LLC and HARLEYDAVIDSON MOTOR COMPANY
GROUP, LLC,

v.

Case No. 17-CV-711-JPS

Plaintiffs,

SUNFROG, LLC d/b/a SUNFROG
SHIRTS and JOHN DOES,

PROTECTIVE ORDER

Defendants.
On February 21, 2018, the parties jointly requested entry of a
stipulated protective order and submitted a proposed draft of the order.
(Docket #69). The parties request that the Court enter such an order so that
they may avoid the public disclosure of confidential information and
documents. Id. at 1–2. Federal Rule of Civil Procedure Rule 26(c) allows for
an order “requiring that a trade secret or other confidential research,
development, or commercial information not be revealed or be revealed
only in a specified way.” Fed. R. Civ. P. 26(c)(1)(G); see also Civ. L. R. 26(e).
The Court sympathizes with the parties’ request and will grant it,
but, before doing so, must note the limits that apply to protective orders.
Protective orders are, in fact, an exception to the general rule that pretrial
discovery must occur in the public eye. Am. Tel. & Tel. Co. v. Grady, 594 F.2d
594, 596 (7th Cir. 1979); Citizens First Nat’l Bank of Princeton v. Cincinnati Ins.
Co., 178 F.3d 943, 945–46 (7th Cir. 1999). Litigation must be “conducted in
public to the maximum extent consistent with respecting trade

secrets. . .and other facts that should be held in confidence.” Hicklin Eng’r,
L.C. v. Bartell, 439 F.3d 346, 348 (7th Cir. 2006).
Nonetheless, the Court can enter a protective order if the parties
have shown good cause and that the order is narrowly tailored to serve that
cause. Fed. R. Civ. P. 26(c); Citizens First, 178 F.3d at 945; Jepson, Inc. v. Makita
Elec. Works, Ltd., 30 F.3d 854, 858 (7th Cir. 1994) (even when parties agree to
the entry of a protective order, they still must demonstrate the existence of
good cause). The Court can find that even broad, blanket orders are
narrowly tailored and permissible when it finds that two factors are
satisfied:
(1) that the parties will act in good faith in designating the
portions of the record that should be subject to the protective
order; and
(2) that the order explicitly allows the parties to the case and
other interested members of the public to challenge the
sealing of documents.
County Materials Corp. v. Allan Block Corp., 502 F.3d 730, 740 (7th Cir. 2006).
The parties have requested the protective order in this case in good
faith. The parties report that this trademark case will entail the disclosure
of confidential information, including trade secrets or other technical,
financial, or commercial information. (Docket #69 at 1–2). As a result, the
Court is satisfied that there exists a sufficient basis for the requested
protective order.
The

parties’

proposed

protective

order,

however,

appears

overbroad. It provides that, if the parties need to file documents containing
confidential information with the Court, they may do so by filing the
documents under seal. In other words, the parties wish to be able to seal—
in their entirety—any documents that contain sensitive information. This
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departs from the Court’s desire to ensure that every phase of the trial occurs
in the public eye to the maximum extent possible. See Hicklin Eng’r, 439 F.3d
at 348. While the Court understands that some documents will need to be
sealed entirely, others may contain only small amounts of confidential
information, and so redaction of that information may be more appropriate.
The Court, thus, has crafted its own protective order to enter in this
case. The Court’s protective order still allows the parties to file documents
under seal, but does not presume that every confidential document should
be filed under seal in its entirety. Rather, it contemplates that the parties
will use their judgment to determine the best way to protect confidential
information in submitted documents. The order also includes a provision
consistent with the Court’s and this district’s standard practice of allowing
any party and any interested members of the public to challenge the sealing
of documents.
Finally, the Court must note that it subscribes to the view that its
decision-making process must be transparent and as publicly accessible as
possible. Thus, the Court preemptively warns the parties that it will not
enter any decision under seal.
Because the parties’ proposed protective order adequately complies
with the standards set forth above (after the Court’s minor changes), the
Court will enter an order based on the parties’ proposed order.
Accordingly,
Pursuant to the joint request of the parties (Docket #69), the Court
finds that the exchange of sensitive information between the parties and/or
third parties other than in accordance with this Order may cause
unnecessary damage and injury to the parties and to others. The Court
further finds that the terms of this Order are fair and just and that good
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cause has been shown for entry of a protective order governing the
confidentiality of documents produced in discovery, answers to
interrogatories, answers to requests for admission, and deposition
testimony.
IT IS THEREFORE ORDERED that, pursuant to Civil Local Rule
26(e) and Federal Rule of Civil Procedure 26(c)(1)(D),
(A) DESIGNATION OF CONFIDENTIAL OR ATTORNEYS’
EYES ONLY INFORMATION. Designation of information under this
Order must be made by placing or affixing on the document or material, in
a manner that will not interfere with its legibility, the words
“CONFIDENTIAL” or “ATTORNEYS’ EYES ONLY.”
(1) One who produces information, documents, or other material
may designate them as “CONFIDENTIAL” when the person in good faith
believes they contain trade secrets or nonpublic confidential technical,
commercial, financial, personal, or business information.
(2) One who produces information, documents, or other material
may designate them as “ATTORNEYS’ EYES ONLY” when the person in
good faith believes that they contain particularly sensitive trade secrets or
other nonpublic confidential technical, commercial, financial, personal, or
business information that requires protection beyond that afforded by a
CONFIDENTIAL designation.
(3) Except for information, documents, or other materials produced
for inspection at the party’s facilities, the designation of confidential
information as CONFIDENTIAL or ATTORNEYS’ EYES ONLY must be
made prior to, or contemporaneously with, their production or disclosure.
In the event that information, documents or other materials are produced
for inspection at the party’s facilities, such information, documents, or other
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materials may be produced for inspection before being marked
confidential. Once specific information, documents, or other materials have
been designated for copying, any information, documents, or other
materials containing confidential information will then be marked
confidential after copying but before delivery to the party who inspected
and designated them. There will be no waiver of confidentiality by the
inspection of confidential information, documents, or other materials
before they are copied and marked confidential pursuant to this procedure.
(4) Portions of depositions of a party’s present and former officers,
directors, employees, agents, experts, and representatives will be deemed
confidential only if designated as such when the deposition is taken or
within 30 days of receipt of the deposition transcript.
(5) If a party inadvertently produces information, documents, or
other material containing CONFIDENTIAL or ATTORNEYS’ EYES ONLY
information without marking or labeling it as such, the information,
documents, or other material shall not lose its protected status through such
production and the parties shall take all steps reasonably required to assure
its continued confidentiality if the producing party provides written notice
to the receiving party within 10 days of the discovery of the inadvertent
production, identifying the information, document or other material in
question and of the corrected confidential designation.
(6) Inadvertent production of documents or information subject to
attorney-client privilege, work-product protection, or any other applicable
privilege shall not constitute a waiver of, nor a prejudice to, any claim that
such or related material is privileged or protected by the work-product
doctrine, or any other applicable privilege, provided that the producing
party notifies the receiving party in writing promptly after discovery of
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such inadvertent production and requests in writing that such
inadvertently produced material be destroyed. After receiving a written
request for destruction from the producing party, the receiving party shall
destroy the inadvertently produced documents and confirm in writing that
it has done so. No demonstration or proof of error, inadvertence, excusable
neglect, or absence of negligence shall be required of the designating party
in order for such party to avail itself of the provisions of this paragraph.
(7) Unless otherwise provided for in Paragraph (C)(2) of this Order,
infra, if a party intends to produce or reveal CONFIDENTIAL or
ATTORNEYS’ EYES ONLY material of another party during a trial, court
appearance, or hearing which is open to the public, the party intending to
produce or reveal such material shall provide notice and opportunity to
object, unless written consent from the producing party is previously
obtained.
(8) Nothing in this Order precludes the right of any party to seek its
modification by the Court in the future.
(B)

DISCLOSURE

AND

USE

OF

CONFIDENTIAL

INFORMATION. Information, documents, or other material designated as
CONFIDENTIAL or ATTORNEYS’ EYES ONLY under this Order must not
be used or disclosed by the parties or counsel for the parties or any persons
identified in subparagraphs (B)(1) and (2) below for any purposes
whatsoever other than preparing for and conducting the litigation in which
the information, documents, or other material were disclosed (including
appeals).
(1) CONFIDENTIAL INFORMATION. The parties and counsel for
the parties must not disclose or permit the disclosure of any information,
documents or other material designated as “CONFIDENTIAL” by any
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other party or third party under this Order, except that disclosures may be
made in the following circumstances:
(a) Disclosure may be made to employees of counsel for the parties
or who have direct functional responsibility for the preparation and trial of
the lawsuit. Any such employee to whom counsel for the parties makes a
disclosure must be advised of, and become subject to, the provisions of this
Order requiring that the information, documents, or other material be held
in confidence.
(b) Disclosure may be made only to employees of a party required in
good faith to provide assistance in the conduct of the litigation in which the
information was disclosed and who agree to be bound by the terms of this
Order.
(c) Disclosure may be made to court reporters engaged for
depositions and those persons, if any, specifically engaged for the limited
purpose of making copies of documents or other material. Before disclosure
to any such court reporter or person engaged in making copies, such
reporter or person must agree to be bound by the terms of this Order.
(d) Disclosure may be made to consultants, investigators, or experts
(collectively “experts”) employed by the parties or counsel for the parties
to assist in the preparation and trial of the lawsuit. Before disclosure to any
expert, the expert must be informed of and agree to be subject to the
provisions of this Order requiring that the information, documents, or other
material be held in confidence.
(e) Disclosure may be made to the Court and the Court’s staff.
(f) Disclosure may be made to persons already in lawful and
legitimate possession of such CONFIDENTIAL information.

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(g) Disclosure may be made to any mediator who is assigned or
retained by the parties for possible resolution of this action.
(2) ATTORNEYS’ EYES ONLY INFORMATION. The parties and
counsel for the parties must not disclose or permit the disclosure of any
information, documents, or other material designated as “ATTORNEYS’
EYES ONLY” by any other party or third party under this Order to any
other person or entity, except that disclosures may be made in the following
circumstances:
(a) Disclosure may be made to outside counsel and employees of
outside counsel for the parties who have direct functional responsibility for
the preparation and trial of the lawsuit. Any such employee to whom
counsel for the parties makes a disclosure must be advised of, and become
subject to, the provisions of this Order requiring that the information,
documents, or other material be held in confidence.
(b) Disclosure may be made to in-house counsel for the parties.
(c) Disclosure may be made to court reporters engaged for
depositions and those persons, if any, specifically engaged for the limited
purpose of making copies of documents or other material. Before disclosure
to any such court reporter or person engaged in making copies, such
reporter or person must agree to be bound by the terms of this Order.
(d) Disclosure may be made to consultants, investigators, or experts
(collectively “experts”) employed by the parties or counsel for the parties
to assist in the preparation and trial of the lawsuit. Before disclosure to any
expert, the expert must be informed of and agree to be subject to the
provisions of this Order requiring that the information, documents, or other
material be held in confidence.
(e) Disclosure may be made to the Court and the Court’s staff.
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(f) Disclosure may be made to persons already in lawful and
legitimate possession of such ATTORNEYS’ EYES ONLY information.
(g) Disclosure may be made to any mediator who is assigned or
retained by the parties for possible resolution of this action.
(3) Nothing in this Order shall prevent any party from disclosing its
own CONFIDENTIAL or ATTORNEYS’ EYES ONLY material in any
manner that it considers appropriate. Additionally, such material may be
shown or used during an examination, either at depositions or hearings, of
any officer, employee or retained expert of the party that produced the
CONFIDENTIAL or ATTORNEYS’ EYES ONLY material. Similarly,
CONFIDENTIAL and ATTORNEYS’ EYES ONLY material may also be
shown or used during an examination, either at depositions or hearings, of
any person who, from the face of the document, is an author, creator or
recipient of such material. Pages of transcribed deposition testimony or
exhibits to depositions that reveal CONFIDENTIAL or ATTORNEYS’ EYES
ONLY material must be placed in a separate confidential transcript
(whether print or electronic) by the court reporter and may not be disclosed
to anyone except as permitted under this Order.
(C) MAINTENANCE OF CONFIDENTIALITY. Except as provided
in subparagraph (B), counsel for the parties must keep all information,
documents, or other material designated as confidential that are received
under this Order secure within their exclusive possession and must place
such information, documents, or other material in a secure area.
(1) All copies, duplicates, extracts, summaries, or descriptions
(hereinafter referred to collectively as “copies”) of information, documents,
or other material designated as confidential under this Order, or any
portion

thereof,

must

be

immediately
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affixed

with

the

words

“CONFIDENTIAL” or “ATTORNEYS’ EYES ONLY” if not already
containing that designation.
(2) To the extent that any answers to interrogatories, transcripts of
depositions, responses to requests for admissions, or any other papers filed
or to be filed with the Court reveal or tend to reveal information claimed to
be confidential, the records and papers must be redacted only to the extent
necessary. If the parties seek to seal a document, either in part or in full,
they must file a motion to seal that document, together with a redacted copy
on the record. The parties shall act in good faith in designating records to
be filed, in whole or in part, under seal. If a Court filing contains
information, documents, or other materials that were designated
“CONFIDENTIAL” or “ATTORNEYS’ EYES ONLY” by a third party, the
party making the filing shall provide notice of the filing to the third party.
(D) CHALLENGES TO CONFIDENTIALITY DESIGNATION. A
party or any interested member of the public may challenge the designation
of confidentiality by motion. The movant must accompany such a motion
with the statement required by Civil L. R. 37. The designating party bears
the burden of proving that the information, documents, or other material at
issue are properly designated as confidential. The Court may award the
movant prevailing on any such motion actual attorney fees and costs
attributable to the motion.
(E)

CONCLUSION

OF

LITIGATION.

The

confidentiality

obligations imposed by this Order shall remain in effect during the course
of this litigation (including appeals) unless a disclosing party agrees
otherwise in writing or a court order otherwise directs. At the conclusion of
the litigation, a party may request that all information, documents, or other
material not filed with the Court or received into evidence and designated
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as CONFIDENTIAL or ATTORNEYS’ EYES ONLY under this Order must
be returned to the originating party or, if the parties so stipulate, destroyed,
unless otherwise agreed to by the parties in writing or as provided by law.
Notwithstanding the requirements of this paragraph, a party may retain a
complete set of all documents filed with the Court, subject to all other
restrictions of this Order.
Dated at Milwaukee, Wisconsin, this 22nd day of February, 2018.
BY THE COURT:

____________________________________
J. P. Stadtmueller
U.S. District Judge

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