Cobra Engineering Inc v. H-D USA LLC et al

Filing 56

PROTECTIVE ORDER signed by Judge J.P. Stadtmueller on 7/2/2018 GRANTING 53 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
COBRA ENGINEERING INC.,
Plaintiff,
v.
H-D USA LLC, HARLEY-DAVIDSON
INC., and JOHN DOES,

Case No. 18-CV-71-JPS-JPS

PROTECTIVE
ORDER

Defendants.
On June 21, 2018, the parties filed a stipulation for entry of a
protective order. (Docket #53). The parties request that the Court enter a
protective order so that they may avoid the public disclosure of confidential
information and documents. Id. 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), Civil 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); Fed. R. Civ. P. 26(c); see also 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 also that the order is narrowly tailored to
serving that cause. Fed. R. Civ. P. 26(c); see, e.g., Citizens First Nat’l Bank of
Princeton, 178 F.3d at 945, Jepson, Inc. v. Makita Elec. Works, Ltd., 30 F.3d 854,
858 (7th Cir. 1994) (holding that, even when parties agree to the entry of a
protective order, they still must show the existence of good cause). The
Court can even find that broad, blanket orders—such as the one in this
case—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)
(citing Citizens First Nat’l Bank of Princeton, 178 F.3d at 945). The parties have
requested the protective order in this case in good faith; they seek the order
so that they might freely exchange sensitive information. (Docket #53 at 1–
2). This includes technical, financial, and commercial information from the
parties themselves and third parties. Id. at 2. The Court thus finds that there
is good cause to issue the requested protective order.
The only change required to comply with the above-cited precedent
is to Paragraph (D). The Court must permit interested members of the
public to challenge confidentiality designations. Finally, the Court must
note that, while it finds the parties’ proposed order to be permissible and
will, therefore, enter it, the Court subscribes to the view that the Court’s
decision-making process must be transparent and as publicly accessible as
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possible. Thus, the Court preemptively warns the parties that it will not
enter any decision under seal.
Accordingly,
IT IS ORDERED that based on the parties’ stipulation, (Docket #53),
and the representations set forth therein, the Court finds that exchange of
sensitive information between or among the parties and/or third parties
other than in accordance with this Order may cause unnecessary damage
and injury to the parties or to others. The Court further finds that the terms
of this Order are fair and just and that good 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; and
IT IS THEREFORE ORDERED that, pursuant to Fed. R. Civ. P. 26(c)
and Civil L. R. 26(e):
(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
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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 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
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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 immunity, or any
other applicable privilege or immunity 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 immunity, or any other
applicable privilege or immunity, provided that the producing party
notifies the receiving party in writing promptly after discovery of
such inadvertent production, at which point the receiving party’s
treatment of such material shall be in accordance with Federal Rule
of Civil Procedure 26(b)(5)(B). 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 A(6). However, nothing
herein restricts the right of the receiving party to challenge the
producing party’s claim of privilege if appropriate within a
reasonable time after receiving notice of the inadvertent or mistaken
disclosure.

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(7)

Unless otherwise governed by Paragraph C(2) of this

Order (filing under seal), 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 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 who have direct functional
responsibility for the preparation and trial of the lawsuit. Any
such employee to whom counsel for the parties makes a
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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 a single, designated

in-house counsel for each of the parties who shall be
identified by name, who is not involved in competitive
decision making, and will sign an undertaking indicating his
or her acceptance of the terms of this Order. Such in-house
counsel shall not disclose any ATTORNEYS’ EYES ONLY
information to any other employee of the party. Nothing in
this Paragraph 2(b) precludes the designating Party from
replacing or substituting its designated in-house counsel with
new designated in-house counsel if during the course of this
litigation (including appeals) the currently designated inPage 8 of 12

house counsel is no longer employed by the designating
Party.
(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)
independent

Disclosure

may

consultants,

be

made

investigators,

to
or

unrelated,
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 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
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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 disc1osed 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
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
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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 utilizing the procedures set forth in General L. R.
79(d), 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 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
party 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, all information, documents, or other material not filed with
the Court or received into evidence and designated as CONFIDENTIAL or
ATTORNEYS’ EYES ONLY under this Order must be either returned to the
originating party or destroyed, unless otherwise agreed to by the parties in
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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 2nd day of July, 2018.
BY THE COURT:

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

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