REDACTED1

ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFFS' MOTION TO COMPEL

DOCKET NO. 43

VERONICA L. DUFFY, Magistrate Judge.

INTRODUCTION

This matter is pending before the court on the complaint of Copperhead Agricultural Products, LLC, and Copperhead Concave LLC, (collectively "Copperhead"), both South Dakota entities. See Docket No. 1. Copperhead sues defendants KB Ag Corporation, LLC, and its principals Kimber Mitchell and Brian Robertson (collectively "KB Ag"), for trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a) and (d) and various state law claims. Id. Jurisdiction is premised on the presence of a federal question, 28 U.S.C. § 1331; supplemental jurisdiction, 28 U.S.C. § 1367; and diversity jurisdiction, 28 U.S.C. § 1332. Now pending is Copperhead's motion to compel certain discovery, Docket No. 43, which the district court, the Honorable Lawrence L. Piersol, referred to this magistrate judge for determination pursuant to 28 U.S.C. § 636(b)(1)(A). See Docket No. 47.

FACTS

The district court recently issued an opinion in this matter setting forth the facts and procedural history of this case in great detail. See Docket No. 78 at pp. 1-16. That description is incorporated herein by reference. What follows is a shortened version of facts relevant to this motion. This action is one of four pending actions in different venues with overlapping claims, all of which stem from a personal relationship between Carolyn Estes and Don Estes, formerly husband and wife, and a product invented by Don.

Carolyn owned CW Welding, an Indiana company. Don invented the product known as the RPR Concave, also known variously as Estes RPR Concaves or Estes Performance Concaves. Concaves are devices fitted on combines which do the initial work of separating the grain from the chaff during harvesting. See, e.g. https://www.youtube.com/watch?v+bQrMCh2Gb0M, last checked December 11, 2019.

Don allowed his wife, Carolyn, to use Don's name in advertisements for the RPR Concaves and Don promoted CM Welding products. Defendants herein, Mitchell and Robertson, were also involved in the sale and marketing of RPR Concaves for CM Welding at trade shows, in media and video reports, and other events associated with CM Welding. Carolyn was Mitchell's legal guardian and grandmother. Robertson is Mitchell's fiancé.

Then Carolyn and Don filed for divorce and things became complicated. On August 20, 2018, a civil action was filed in Indiana state court by CM Welding, Inc., against Don, Copperhead, Steven William Greeno, and CSM Corp. See Docket No. 67 at p. 7. [REDACTED/]. See Docket No. 59-1 (sealed). [REDACTED/]. Id. [REDACTED/]. Id. [REDACTED/]. See Docket No. 59-2 (sealed). Counsel for Copperhead represents to the court that the stay in the Indiana state court action has now been lifted.

[REDACTED/]. See Docket No. 59-3 (sealed). [REDACTED/]. Id. On September 10, 2019, the USPTO registered the mark "RPR" in association with agricultural harvester machinery. Docket No. 74. The registration is on the Principal Register in favor of CM Welding. Id., Docket No. 74-1. However, the application for the mark "RPR Concaves" remains pending and subject to opposition before the USPTO.2 Id.

There is also litigation pending in the Southern District of Texas in which claims are made collectively against Don Estes, CSM Corporation and Copperhead Concave Systems, and CM Welding, Inc., seeking to declare Don Estes' patents unenforceable and invalid. Docket No. 63, 63-9.

This action in the District of South Dakota was filed by Copperhead on September 27, 2018. See Docket No. 1. In lieu of an answer to the complaint herein, defendants filed a motion to dismiss under FED. R. CIV. P. 12(b) for failure to state a claim and for lack of personal jurisdiction. See Docket Nos. 14 & 42.3 Because no answer was filed, the parties were not ordered to hold the Rule 26(f) meeting where deadlines for stages of the litigation and discovery plans are discussed and agreed upon. Had that planning meeting taken place, the parties' agreement would have been incorporated into a Rule 16 scheduling order issued subsequent to the meeting by the district court. Also because the initial planning meeting did not take place, the parties did not exchange the initial voluntary discovery which parties are required to provide each other under FED. R. CIV. P. 26.

On February 8, 2019, Copperhead filed a motion for permission from the court to conduct expedited discovery for purposes of (1) responding to KB Ag's motion to dismiss for lack of personal jurisdiction and (2) supporting a motion for preliminary injunctive relief which Copperhead also planned to file.4 See Docket No. 23. Copperhead supplied the district court with a copy of the written discovery requests (interrogatories and requests for production of documents) it proposed serving on defendants. See Docket No. 23-1.

In its brief in support of the motion to conduct discovery, Copperhead explained it wanted to develop information relating to the nature of Carolyn's relationship with defendants and whether Carolyn or CM Welding authorized, assigned or otherwise purported to transfer intellectual property rights to defendants relating to the RPR Concaves. See Docket No. 24 at pp. 6-8.

Copperhead did not inform the district court in its request for expedited discovery that the Indiana state court had stayed discovery in that action some four months earlier in November, 2018, nor was any mention made of the USPTO action or the then-pending motion to stay in that tribunal in favor of the Indiana action. Id. The district court approved the proposed discovery and granted Copperhead permission to conduct expedited discovery as indicated in the proposed document. See Docket No. 33. The court notes that the two purposes proposed by Copperhead for conducting the discovery—to respond to personal jurisdiction defenses and to support a preliminary injunction motion—are now moot, both of those issues having been decided by the district court.

Copperhead served defendants with its written discovery requests. Defendants provided some documents, but not all, and not all electronic documents were provided in the format desired by Copperhead. This motion to compel ensued. The parties engaged in good faith efforts to resolve their differences before Copperhead filed the instant motion. Their unresolved disputes are described in more detail below.

A motion to stay was filed by defendants after Copperhead filed the instant motion to compel. Accordingly, this court held the motion to compel in abeyance pending the district court's ruling on the motion to stay. After the district court denied the motion to stay, this court requested counsel for Copperhead to provide the court with an "executive summary" of the discovery disputes still extant. Prior to doing so, the parties' counsels met again on November 11, 2019, to attempt to resolve their dispute. The court was informed that no issues were resolved at that conference. Accordingly, the court requested that the previously-asked-for executive summary be filed. It was, and defendants responded to the same. Those informal responses are filed herewith as an appendix to this opinion.

DISCUSSION

A. Scope of Discovery

Federal Rule of Civil Procedure 26(b)(1) sets forth the scope of discovery in civil cases pending in federal court:

See FED. R. CIV. P. 26(b)(1). Rule 26 contains specific limitations relative to electronic discovery and other objections to providing discovery:

See FED. R. CIV. P. 26(b)(2)(B) and (C). A party claiming a privilege as to requested discovery has the burden of proving the basis for the application of the privilege:

See FED. R. CIV. P. 26(b)(5)(A). If a party fails to respond to a proper request for discovery, or if an evasive or incomplete response is made, the party requesting the discovery is entitled to move for a motion compelling disclosure after having made a good faith effort to resolve the dispute by conferring first with the other party. See FED. R. CIV. P. 37(a).

The scope of discovery under Rule 26(b) is extremely broad. See 8 Charles A. Wright & Arthur R. Miller, Federal Practice & Procedure § 2007, 36-37 (1970) (hereinafter "Wright & Miller"). The reason for the broad scope of discovery is that "[m]utual knowledge of all the relevant facts gathered by both parties is essential to proper litigation. To that end, either party may compel the other to disgorge whatever facts he has in his possession." 8 Wright & Miller, § 2007, 39 (quoting Hickman v. Taylor, 329 U.S. 495, 507-08, 67 S.Ct. 385, 392, 91 L. Ed. 2d 451 (1947)). The Federal Rules distinguish between discoverability and admissibility of evidence. FED. R. CIV. P. 26(b)(1), 32, and 33(a)(2). Therefore, the rules of evidence assume the task of keeping out incompetent, unreliable, or prejudicial evidence at trial. These considerations are not inherent barriers to discovery, however.

The advisory committee's note to the 2000 amendments to Rule 26(b)(1) provide guidance on how courts should define the scope of discovery in a particular case:

See FED. R. CIV. P. 26(b)(1) advisory committee's note.

The same advisory committee's note further clarifies that information is discoverable only if it is relevant to the claims or defenses of the case or, upon a showing of good cause, to the subject matter of the case. Id. "Relevancy is to be broadly construed for discovery issues and is not limited to the precise issues set out in the pleadings. Relevancy ... encompass[es] `any matter that could bear on, or that reasonably could lead to other matter that could bear on, any issue that is or may be in the case.'" E.E.O.C. v. Woodmen of the World Life Ins. Society, 2007 WL 1217919 at *1 (D. Neb. Mar. 15, 2007) (quoting Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)). The party seeking discovery must make a "threshold showing of relevance before production of information, which does not reasonably bear on the issues in the case, is required." Id. (citing Hofer v. Mack Trucks, Inc., 981 F.2d 377, 380 (8th Cir. 1993)). "Mere speculation that information might be useful will not suffice; litigants seeking to compel discovery must describe with a reasonable degree of specificity, the information they hope to obtain and its importance to their case." Id. (citing Cervantes v. Time, Inc., 464 F.2d 986, 994 (8th Cir. 1972)).

Discoverable information itself need not be admissible at trial; rather, "discovery of such material is permitted if reasonably calculated to lead to the discovery of admissible evidence." See FED. R. CIV. P. 26(b)(1) advisory committee's note. Additionally, Rule 26(b)(2) requires the court to limit discovery if it determines, for example, that the discovery sought is unreasonably cumulative or duplicative or that "the burden or expense of the proposed discovery outweighs its likely benefit..." See FED. R. CIV. P. 26(b)(2)(C); see also Roberts v. Shawnee Mission Ford, Inc., 352 F.3d 358, 361 (8th Cir. 2003) ("The rule vests the district court with discretion to limit discovery if it determines, inter alia, the burden or expense of the proposed discovery outweighs its likely benefit."); Continental Illinois Nat'l Bank & Trust Co. of Chicago v. Caton, 136 F.R.D. 682, 684-85 (D. Kan. 1991) ("All discovery requests are a burden on the party who must respond thereto. Unless the task of producing or answering is unusual, undue or extraordinary, the general rule requires the entity answering or producing the documents to bear that burden.").

Once the requesting party has made a threshold showing of relevance, the burden shifts to the party resisting discovery to show specific facts demonstrating that the discovery is not relevant, or how it is overly broad, burdensome, or oppressive. Penford Corp. v. National Union Fire Ins. Co., 265 F.R.D. 430, 433 (N.D. Iowa 2009); St. Paul Reinsurance Co. v. Commercial Financial Corp., 198 F.R.D. 508, 511 (N.D. Iowa 2000). The articulation of mere conclusory objections that something is "overly broad, burdensome, or oppressive," is insufficient to carry the resisting party's burden—that party must make a specific showing of reasons why the relevant discovery should not be had. Cincinnati Ins. Co. v. Fine Home Managers, Inc., 2010 WL 2990118, *1 (E.D. Mo. 2010); Burns v. Imagine Films Entertainment, Inc., 164 F.R.D. 589, 593 (W.D.N.Y. 1996).

Several courts have determined that where the discovery requests are relevant, the fact that answering them will be burdensome and expensive is not in itself a reason for a court's refusing to order discovery which is otherwise appropriate. See In re Folding Carton Antitrust Litigation, 83 F.R.D. 260, 265 (N.D. Ill. 1979) (stating that "[b]ecause the interrogatories themselves are relevant, the fact that answers to them will be burdensome and expensive `is not in itself a reason for refusing to order discovery which is otherwise appropriate'"); Alexander v. Parsons, 75 F.R.D. 536, 539 (W.D. Mich. 1977) (stating that "the mere fact discovery is burdensome ... is not a sufficient objection to such discovery, providing the information sought is relevant or may lead to the discovery of admissible evidence"); and Burns, 164 F.R.D. at 593 (determining that the fact that answering interrogatories will require the objecting party to expend considerable time, effort, and expense consulting, reviewing, and analyzing huge volumes of documents and information is an insufficient basis for an objection). Moreover, if discovery requests are relevant, the fact that they involve work, which may be time consuming, is not sufficient to render them objectionable. See United States v. Nysco Labs., Inc., 26 F.R.D. 159, 161-62 (E.D.N.Y. 1960) and Rogers v. Tri-State Materials Corp., 51 F.R.D. 234, 245 (N.D. W. Va. 1970) (stating that "[i]nterrogatories, otherwise relevant, are not objectionable and oppressive simply on grounds [that] they may cause the answering party work, research and expense").

Rule 34 allows one party to serve on another party a request to produce and permit the requesting party to inspect or copy any designated documents or electronically stored information ("ESI"). FED. R. CIV. P. 34(a)(1)(A). Objections to requests under Rule 34 must be stated with specificity and must identify whether there are any documents being withheld pursuant to the objection. FED. R. CIV. P. 34(b)(2)(B) & (C). Rule 34 also sets forth the manner for responding to a request for ESI:

See FED. R. CIV. P. 34(b)(2)(D) and (E).

The advisory committee notes to the 2006 amendment to Rule 34 indicate that, where a requesting party has specified the form it wishes production of ESI in, a responding party should not simply produce requested ESI in a form of the responder's own choice. See FED. R. CIV. P. 34 advisory committee's note to 2006 amendment. Instead, if the responding party objects to the form the requesting party specified, the responding party must state before producing the ESI that it objects and stating what form the responding party intends to produce the ESI in. Id. Otherwise, the responding party runs the risk it may have to produce ESI twice, once in the form its prefers and a second time in another form mutually agreeable to both parties. Id. The requirement of stating the form of production of ESI ahead of actual production is intended to allow the parties to discuss the form of production and settle on an appropriate form that serves the interests of both parties, thus saving time and effort. Id.

If the parties cannot agree on a form for producing ESI and a motion to compel ensues, the court is not limited to ordering production in the form specified by either party. Id. The responding party may produce ESI in either its form in which it is ordinarily maintained ("native format"), or in a form that is reasonably usable. Id. The rule does not require production in native format as long as it is produced in a reasonably usable form. Id.

B. Mootness

Defendants suggest that Copperhead's motion to compel is now moot because Copperhead's proffered reasons for obtaining this discovery—to support a preliminary injunction motion and to respond to defendants' motion to dismiss on personal jurisdiction—are now moot, the district court having ruled on its request for preliminary injunctive relief and on defendants' motion to dismiss for lack of personal jurisdiction. The court finds this does not moot the motion to compel. There is nothing in the rules of civil procedure which provide an automatic stay on discovery when a Rule 12(b) motion to dismiss is pending. Defendants asked for and were refused a stay from the district court. Also, Copperhead sought and obtained the district court's specific permission to engage in this discovery.

Defendants also state that they plan to file an answer within the next 30 days even though their Rule 12(b)(6) motion to dismiss remains pending. Defendants suggest the court delay ruling on Copperhead's motion to compel until after the answer has been filed and after the parties have completed their Rule 26(f) planning meeting. Defendants suggest many of the issues in the motion to compel might be resolved at the Rule 26(f) planning meeting.

The court declines to accept this further "carrot"—the promise of a possible compromise of the dispute. Although it would be desirable and preferable for the parties to work out this dispute themselves, the parties have conferred repeatedly over these issues, including most recently on November 11, 2019.5 None of those conferences have narrowed or eliminated any of the discovery disputes. If the court accepted defendants' invitation to further delay ruling on Copperhead's motion, the motion would be approaching one year old before it was ruled on. The court already held this motion in abeyance while the district court ruled on the motion for stay, and then again when the parties indicated they wanted to confer on November 11. The court is not confident that further delay will result in any compromise and, at a certain point, motions need to be decided. This motion to compel has reached that point. Accordingly the issues are considered on their merits by the court.

C. Production of ESI in Native Format vs. Searchable PDF

Rule 34 allows the requesting party to specify the format in which it wishes to receive ESI. Copperhead served KB Ag with requests for the production of documents pursuant to Rule 34 that included five and one-half pages of single-spaced, detailed instructions for producing ESI, including a "requirement" that even hard copy documents be scanned and rendered into electronic format. See Docket No. 23-1 at pp. 5-10.

Copperhead instructs that if documents being produced must be redacted, KB Ag may produce such ESI in "image format." Id. at p. 6, ¶3.b.6 Although Copperhead's definition of "image format" does not include PDF, PDF is commonly understood to be one of several forms of "image" formats. The Sedona Principles: Best Practice Recommendations & Principles for Addressing Electronic Document Production, Commt. 12b, p. 190 (2d ed. 2007) (hereinafter "Sedona Principles"). Copperhead further instructs that if KB Ag's total ESI production for the entire case is less than 1,000 files, it may elect to produce ESI in either native format or image format. Id.

Copperhead instructs KB Ag to provide all ESI "with accompanying delimited dat/metadata load files in Concordance format." See Docket No. 23-1 at p. 8, ¶6.a. Copperhead then lists the specific information it wants to have included in these load files. Id. at ¶¶6.c, 6.d & 6.e. Thus, according to the requirements of Rule 34, Copperhead specified the format it wanted KB Ag to produce ESI in. KB Ag objects to providing the metadata and instead produced ESI in PDF format. Whether KB Ag chose an appropriate format cannot be determined based on the record before the court—Copperhead's instructions are dependent on how many ESI files will be produced during the course of this litigation. But it is clear that Copperhead requested metadata in a "load file" for all ESI.

The parties' dispute regarding production of ESI in native format or PDF format centers around "metadata"—native format preserves metadata and PDF does not. Metadata is "data about data." It is information about a particular electronic file which describes how, when and by whom it was collected, created, accessed, or modified and how it is formatted, including data demographics such as size, location, storage requirements and media information. Sedona Principles, Commt. 12a, pp. 185-86 (2d ed. 2007). Metadata includes the contextual, processing, and use information needed to identify and certify the scope, authenticity, and integrity of active or archival electronic information or records. Id. Such information can include the file name, file location, file format, file type, file size, creation date, date of last modification, date of last access, date of last metadata modification, and who is allowed to read, write, and run the file. Id.

Metadata is hidden and not readily visible. Id. at Commt. 12a, p. 185. Therefore, the potential for inadvertent disclosure of confidential or privileged information is present when ESI is produced with metadata intact. Id. at Commt. 6f, p. 126. Metadata is available in a document in its native format; it usually requires an affirmative act of conversion to eliminate metadata. Converting a native document to PDF, for example, scrubs the document of all metadata. Metadata may be crucial in a given case, or it may be completely irrelevant—it depends on the needs of the case. Id. at Commt. 12a, p. 186. That is why the parties (who are in the best position to know the needs of their case) are required, under Rule 26, to determine the format for production of ESI at the inception of a federal case—a step omitted in this case due to the defendants' early Rule 12 motions. Id.

Rule 34 does not specifically address whether metadata must be produced in the usual case. It requires production of ESI in the format specified by the requesting party or, if none is specified, then either its native format "or" any format that is reasonably usable. The Rule contemplates that the responding party may object to the format specified by the requesting party, but gives no guidance as to how the court must resolve such disputes. The PDF format used by the KB Ag defendants in producing its ESI is searchable, so KB Ag argues it is "reasonably usable." Copperhead relies on its original request for metadata and argues KB Ag has not shown special circumstances to avoid producing metadata.

There are two cases addressing production of ESI in native format versus PDF format in this district. In Diesel Machinery, Inc. v. The Manitowoc Crane, Inc., 2011 WL 677458, *1 (D.S.D. Feb. 16, 2011), the parties had met and conferred at the Rule 26(f) conference and agreed on producing ESI in native format. Thereafter, defendant alleged the parties had agreed to defendant producing documents in PDF format in lieu of native format, even though plaintiff's discovery requests had specified production in native format. Id. at *1-2. Defendants produced the documents in PDF format. Id. Plaintiff alleged that the parties agreed to an initial production in PDF format in order to expedite depositions, but that plaintiff never waived its right to eventually receive the same documents in native format. Id. A motion to compel by plaintiff ensued and the district court denied the motion as to production in native format. Id. at *1, 4.

First, the court appeared to resolve the credibility of each parties' version of the discussions regarding production in PDF format. Id. at *2-4. The court noted it was "unlikely [defendant] would have ... devoted the time and expense to redact and produce to [plaintiff] documents in PDF absent" an agreement that it could satisfy its production obligations by producing ESI in PDF format. Id. at *3. Defendant, the court noted, did both. Id. The court noted that by accepting the PDF documents, plaintiff had "ample opportunity to obtain and review discovery of the information contained" in that ESI. Id.

Finally, the court noted that the main difference between production of ESI in native as opposed to PDF format was the production of metadata. Id. Plaintiff had not shown a special need for metadata. Id. Defendant had, on the other hand, demonstrated that it had already devoted approximately 1,000 hours to its document production, which required extensive redactions, and it would have to spend several thousands of additional dollars to re-produce the same documents in native format. Id. Under these circumstances, the court found plaintiff's request for metadata unreasonably cumulative and duplicative. Id. The court noted defendant did not object to producing in native format ahead of its actual production of ESI because it believed the parties had mutually agreed that the ESI could be produced in PDF format. Id.

The Diesel Machinery, Inc. ("DMI") case is not strictly controlling in Copperhead's case. Here, no Rule 26(f) agreement was entered into between the parties whereas there was such an agreement in the DMI case. Also, here there was no ostensible agreement between the parties to production of ESI in PDF format—Copperhead and the KB Ag defendants have disagreed from the beginning about the proper format. In DMI the defendant's failure to object to the format prior to producing ESI was excused because the defendant believed the parties had an agreement to producing ESI in PDF format.

Here, KB Ag did not notify Copperhead of their objections to producing in native format prior to actually producing ESI.7 As the advisory committee notes demonstrate, a defendant who does so takes upon itself the risk of having to re-produce the ESI in the proper format. Finally, the defendant in DMI supported its argument about undue burden by telling the court the number of man hours already expended in producing documents in PDF format and the amount of expense it would incur if it were required to reproduce the same ESI in native format. Here, the KB Ag defendants only make generalized allegations of "undue burden."

The other case from this district is Stormo v. City of Sioux Falls, 2016 WL 697116 (D.S.D. Feb. 19, 2016), which the court also finds distinguishable. In that case, the court denied the pro se plaintiff's motion to compel metadata because he offered no explanation for why he believed the city might have altered documents produced or why metadata would be relevant to his claims. Id. at *2. The Stormo case involved protracted litigation by a pro se plaintiff unaware of the rules of procedure or the law. In a district where civil cases rarely drag on beyond the three-year mark, the Stormo litigation was already in its fourth year at the time the decision cited above was issued. By the time the district court ruled on Mr. Stormo's motion to compel in the above-cited case, there had been nine motions to compel filed, five motions for protective orders, two motions to amend the complaint, two motions for sanctions, a motion for summary judgment and a motion to modify the court's order ruling on the summary judgment motion—and a trial date was not even imminent at this point. This court views in context the Stormo court's order denying Mr. Stormo access to the metadata in the ESI produced by the city because he had not shown a special need for it. Although that was indisputably the correct decision in that case at that time, it does not necessarily stand for the proposition that metadata is unavailable in this district unless the party seeking it has shown extraordinary circumstances justifying its receipt.

Decisions from other jurisdictions tend to establish the rule that a party must show special need for metadata before being entitled to it. The court in Mitchell v. Reliable Security, LLC, 2016 WL 3093040 *1-2 (N.D. Ga. May 24, 2016), required defendant to produce ESI in native format despite defendant's assertion it would cost it $3,000 more to process and produce the ESI in native format than it would in PDF format. The plaintiff pointed out that emails and Excel spreadsheets relevant to her pregnancy discrimination claim were susceptible to post hoc manipulation. Id. at *1. In part, the court ruled as it did because defendant never explained why producing ESI in native format would cost more than converting to PDF format. Id. at *2. The court also found the public interest in allowing a civil rights plaintiff to have access to relevant information far outweighed the ostensible $3,000 cost. Id. This case is commercial in nature with relatively well-matched corporations on opposing sides. There is no public interest factor in this case as there would be in a civil rights lawsuit.

The opposite result was reached in Wyeth v. Impax Laboratories, Inc., 248 F.R.D. 169, 171 (D. Del. 2006). The plaintiff was denied access to metadata because local rule established a presumption against receipt of metadata in ESI and because the plaintiff had not articulated a particularized need for metadata in its motion to compel. Id.

In Davenport v. Charter Communications, LLC, 2015 WL 1286372 at *2-3 (E.D. Mo. Mar. 20, 2015), the plaintiff's failed to designate a format for production of ESI in their discovery requests and defendants produced the ESI in PDF searchable format. Plaintiff's sought metadata only after the ESI was produced, articulating a specific reason in support of the request. Id. The court noted that other courts had routinely found searchable PDF format to be a "reasonably usable form" where the requesting party had not specified some other format. Id. at *3. See also Rahman v. The Smith & Wollensky Restaurant Group, Inc., 2009 WL 773344 at *4 (S.D.N.Y. Mar. 18, 2009) (PDF format is "reasonably usable" where requesting party did not otherwise specify a format).

The Davenport plaintiffs' stated reason for requesting native format was that they wanted to be able to sort and categorize the data; plaintiffs did not dispute the veracity of the data nor did they assert that certain data was cut off or truncated due to the PDF format. Davenport, 2015 WL 1286372 at *3. The court found plaintiffs' stated desire to be able to sort and categorize the data did not constitute "good cause" entitling them to re-production of documents in native format. Id. at **3-4.

In ADT Security Serv., Inc. v. Swenson, 2009 WL 10690407 at *1-2 (D. Minn. July 23, 2009), the court denied a discovery request for emails in their native format with metadata intact. Although the requesting parties stated they wanted to see the metadata in order to determine if ADT had tampered with the emails, the requesters had no concrete facts upon which to conclude ADT had tampered with the ESI. Id. The court refused to require production of metadata based on mere speculation of possible wrongdoing. Id.

Several cases have noted an emerging presumption against requiring the production of metadata. ADT Security Serv., Inc., 2009 WL 10690407 at *2; Wyeth, 248 F.R.D. at 171; Williams v. Sprint/United Mgmt. Co., 230 F.R.D. 640, 645-47 (D. Kan. 2005). Some districts have local rules establishing a presumption against receipt of metadata. See Wyeth, 248 F.R.D. at 171 (noting local D. Del. rule establishing a presumption against receiving metadata without a showing of a particularized need for it). The District of South Dakota does not have a local rule addressing metadata. The Sedona Principles state that requesting parties should not demand production of ESI with metadata if there is no practical use for it or if it does not materially aid in the discovery process. See 19 Sedona Conf. J., The Sedona Principles, Third Edition: Best Practices, Recommendations & Principles for Addressing Electronic Document Production, p. 173 (3d ed. 2018) (hereinafter "Sedona Third").

Neither side has shown particularly cogent facts in favor of their position. Copperhead has given the court no reason to suspect defendants have made post hoc modifications to ESI produced. Defendants have not persuasively shown that it would be unduly burdensome for them to re-produce ESI in native format. It really comes down to which party has the burden to show special circumstances.

Defendants argue, based on Stormo, that the burden is on Copperhead to show persuasive reasons why it should be given metadata. Copperhead argues that metadata is to be produced in the ordinary course unless defendants come forward with persuasive reasons why it should not be produced. There is no established presumption in this circuit regarding who has the burden to demonstrate reasons for their position; the importance and need for metadata depends on the needs of each case, whether the requesting party specified a particular format in the discovery requests, and whether there are concrete and specific facts demonstrating a need for metadata.

At this point, the court will not order defendants to re-produce their ESI in native format. The court will, however, order that defendants preserve all metadata with regard to their ESI. Later, if Copperhead can show persuasive reasons and particular facts showing a need for metadata as to particular production in this case, it can renew its request with the support of additional facts.

D. Individual Discovery Requests

1. Signatures on Interrogatories

Defendants answered interrogatories only on behalf of KB Ag, even though Copperhead directed the interrogatories to all defendants and, by the time KB Ag signed the interrogatories, individual defendants Kimber Mitchell and Brian Robertson had been served and their lawyer had filed a notice of appearance. Copperhead objects to this and asserts the individual defendants should file responses joining in the answers given by KB Ag or should file their own individual responses to the interrogatories under oath. The court agrees with Copperhead. Defendants are ordered to provided separate answers to these interrogatories signed under oath by each of the three defendants, or to provide responses from the individual defendants joining in the responses of KB Ag.

2. Interrogatory Nos. 4 & 6

In interrogatory no. 4 Copperhead asks defendants to identify in this interrogatory all advertising purchased by you or on your behalf. Interrogatory no. 6 asks defendants to identify any website, software, social media account or other digital platform used to market KB Ag or its products that was identified in interrogatory no. 4.

Defendants responded no advertising was purchased in 2017, but answered the interrogatory in detail with regard to 2018 and 2019. Copperhead asserts the answer is incomplete as defendants should have also identified any advertising purchased by CM Welding or Carolyn Mitchell Estes on behalf of KB Ag. Copperhead asserts if KB Ag used an internal software application to advertise, this information should be provided in response to these interrogatories.

But Copperhead has not given the court any basis to believe such advertising or digital information exists other than what defendant KB Ag has disclosed. The court points out that responses to discovery requests are continuing in nature and defendants are under a duty to supplement their responses at a later date if information comes to light that would cause them to add, modify or otherwise amend their original answer.

3. Interrogatory No. 7

This interrogatory asks defendants to identify any person who has furnished any testimonial or product review related to defendants' answer to interrogatory no. 2. Defendants responded to the interrogatory by stating that there are no such persons. Defendants state that the "blurbs" at the bottom of its website are paraphrases of statements farmers and other clients told KB Ag at trade shows. KB Ag states it did not record the names or dates these various statements were made.

In a supplemental answer, defendants suggest there may be additional information, but that it is not being produced due to the stay of the Indiana state court action and "shop rights." The objection based on the stay is now moot as the Indiana court has lifted the stay. If there is additional information responsive to interrogatory no. 7, defendants are hereby ordered to provide a supplemental response disclosing that information to Copperhead within 30 days. Alternatively, if defendants are claiming privilege, defendants are directed to provide a privilege log in compliance with FED. R. CIV. P. 26(b)(5) within 30 days.

4. Interrogatory No. 8

This interrogatory asks defendants to state any transfer, assignment, license, authorization, or other agreement between CM Welding, Inc. and KB Ag or any of their principals related to designs, plans, product specifications, customer lists, dealer lists, intellectual property, trademarks, trade dress, websites, domain names, software or web applications, or other proprietary information.

Defendants' response is three-fold. First, they interpose an objection that the interrogatory is irrelevant, overly broad and unduly burdensome. Second, they assert the interrogatory requests confidential or otherwise privileged information. Third, defendants refer Copperhead to the Market Affiliate Agreement which was already produced and sets forth "all proprietary information" shared between KB Ag and CM Welding. As to others aside from CM Welding, defendants state "at one point in time, Don Estes provided plans or drawings for the RPR Concave for the purpose of seeing if KB Ag's ... manufacturer could produce RPR Concaves." For this last answer, defendants refer Copperhead to Kimber Mitchell's deposition testimony for more detail.

Copperhead asserts defendant's objection should be overruled as boilerplate. The court agrees. Defendants have not supported the objection in briefing to the court.

Copperhead asserts the objection on grounds of confidentiality or other privilege fails to identify whether any information has been withheld. The court agrees. The court also notes there is a protective order that has been entered in this case in the event confidential information is requested. See Docket No. 36. Defendants are ordered to immediately file a supplemental response to interrogatory no. 8 indicating whether they have withheld information or not. If they have, defendants must explain why the existing protective order does not provide sufficient protection for the production of the information. If defendants are relying on privilege, defendants must file a privilege log complying with Rule 26(b)(5).

5. Interrogatory No. 10

This interrogatory asks defendants to describe any monetary or nonmonetary consideration "that KB Ag ... or its principals have received from or provided to Carolyn Estes or CM Welding, Inc." from January 1, 2014, to the present. Defendants responded with the same objection as to interrogatory no. 8 and the same statement about potential confidential or privileged information. This court's response is the same. The boilerplate objection is overruled. If defendants are withholding any information, they must identify what is being withheld, explain why the protection order already entered is insufficient, and provide a privilege log pursuant to Rule 26(b)(5) if they are asserting a privilege.

Defendants also provided detailed answers explaining monetary exchanges between Estes/CM Welding and KB Ag for the years 2017 to the present. Copperhead objects that no information was provided for the years 2014-16. Copperhead also objects that defendants have given insufficient particularity.

As to particularity, defendants specified exact dates and exact amounts for the monetary transfers except for Carolyn's payment to KB Ag for the use of KB's domain name and online advertising. No dollar figure is attached to this statement. The court orders defendants to supplement their answer stating how much was paid for these items.

As to the objection that no information was provided for 2014-16, Copperhead's own complaint alleges that KB first came into existence in September, 2017. See Docket No. 1 at p. 4, ¶20. Interrogatory no. 10 asks for information regarding monetary and non-monetary transfers "that KB Ag or its principals have received." KB Ag could not have received any transfers prior to September, 2017, because it did not exist prior to that date. Similarly, because KB Ag did not exist, neither were there any such persons prior to that date who could be identified as "principals of KB Ag." The court will not require defendants to provide non-existent information. If what Copperhead really wanted was information about transfers between Carolyn/CM Welding and the individual defendants prior to September, 2017, it could have asked that question. But, as the court reads interrogatory no. 10, that is not the question that was asked.

6. Objections to Requests for the Production of Documents

For many of Copperhead's requests for production (RFP) of documents, defendants asserted objections, but then produced some documents, lending uncertainty as to whether any documents have been withheld. The Rules of Civil Procedure were recently amended to address this particularly common evil.

Rule 34 now reads "[a]n objection must state whether any responsive materials are being withheld on the basis of that objection. An objection to part of a request must specify the part and permit inspection of the rest." See FED. R. CIV. P. 34(b)(2)(C). Accordingly, the court hereby orders defendants to provide supplemental responses to each and every RFP to which an objection was interposed and to state, in compliance with Rule 34(b)(2)(C), whether any document is being withheld pursuant to the objection. If so, specify what the particular objection is for that document. If a RFP is objected to on the basis of confidentiality, defendants must explain why the existing protective order in this case is insufficient to address any confidentiality concerns. Finally, if any document is withheld pursuant to a claim of privilege, defendants must file a privilege log in accordance with Rule 26(b)(5).

7. RFP No. 1

Defendants assert boilerplate objections that the RFP is irrelevant, overly broad and unduly burdensome. The court overrules these objections. Defendants also object on the basis that the RFP calls for documents covered by the stay of the Indiana state court action. Defendants assert they are going to seek a stay of this action. Both of those stays or potential stays have now been resolved. There is no stay in either action. The court overrules defendants' objection based on the stays. Defendants should immediately produce any responsive document to RFP no. 1 that is not privileged.

8. RFP Nos. 5, 6 & 9

Defendants interpose the same objections as were interposed with regard to RFP no. 1. The court similarly overrules those objections with regard to RFP nos. 5, 6 & 9. Defendants should immediately produce any responsive document to RFP nos. 5, 6, & 9 that is not privileged.

9. RFP No. 14

Defendants interpose the same objections as were interposed with regard to RFP no. 1. The court similarly overrules those objections with regard to RFP no. 14. Defendant also incorporate by reference the objections that were interposed as to RFP no. 12.8 In their response to RFP no. 12, defendants assert that other forums (Indiana state court and the USPTO) are exclusive forums for deciding who has the right to the intellectual property at issue herein. Those are matters for the district court to determine a motion to dismiss or a motion for a change of venue. They are not objections to discovery. The district court denied defendants' motion for stay. No motion for change of venue has been filed. Accordingly, the court overrules the objection.

CONCLUSION

Based on the foregoing facts, law and analysis, the court hereby

ORDERS that Copperhead's motion to compel [Docket No. 43] is granted in part and denied in part as described more fully in the body of this opinion. Defendants shall file any supplemental discovery responses ordered in this opinion within 30 days of this opinion. Likewise, if defendants are asserting privilege, they must serve a privilege log that complies with FED. R. CIV. P. 26(b)(5) on Copperhead within 30 days. Finally, to the extent defendants continue to resist any discovery request on the basis of confidentiality, defendants must file a supplemental response within 30 days explaining why the protective order already on file in this case is not sufficient to protect their confidentiality interests.

NOTICE OF RIGHT TO APPEAL

Pursuant to 28 U.S.C. § 636(b)(1)(A), any party may seek reconsideration of this order before the district court upon a showing that the order is clearly erroneous or contrary to law. The parties have fourteen (14) days after service of this order to file written objections pursuant to 28 U.S.C. § 636(b)(1)(A), unless an extension of time for good cause is obtained. See FED. R. CIV. P. 72(a); 28 U.S.C. § 636(b)(1)(A). Failure to file timely objections will result in the waiver of the right to appeal questions of fact. Id. Objections must be timely and specific in order to require review by the district court. Thompson v. Nix, 897 F.2d 356 (8th Cir. 1990); Nash v. Black, 781 F.2d 665 (8th Cir. 1986).

CADWELL SANFORD DEIBERT & GARRY LLP LAWYERS

December 5, 2019

Via E-mail and Mail

Re: Copperhead Agricultural Products, LLC, a South Dakota Limited Liability Company, and Copperhead Concave, LLC, a South Dakota Limited Liability Company v. KB Ag Corporation, LLC, Kimber Mitchell and Brian Robertson; Civ. 18-4127

Dear Judge Duffy:

Attached is an executive summary of what Plaintiffs believe remains in dispute. With one exception, I do not refer to ongoing disputes regarding the propriety of objections or their effect, as I believe that issue is thoroughly briefed. I believe that comment on the status of the objection is relevant, as it was made in reference to and in reliance on a stay of discovery in another action to which Defendants are not party, which stay has been lifted.

With respect to INTERROGATORY 1 and INTERROGATORY 2, Plaintiffs submit that the response provided is incomplete and partial. At a minimum, individual Defendants Mitchell and Robertson should either join each response or provide separate responses to each interrogatory, respectively.

Dispute regarding INTERROGATORY 4: Plaintiffs submit that the response provided is incomplete and partial. The Interrogatory speaks in terms of advertising purchased "by you or on your behalf," and the initial response regarding 2017 is limited to KB AG and only KB Ag's activities in that year. If CM Welding, KB Ag's director, Carolyn Mitchell Estes, or any other party purchased advertising that is responsive to the call of the question, it should be identified. The supplemental response denies that Defendants have knowledge of this information, yet KB Ag's director, Carolyn Mitchell Estes, surely has access to it and therefore KB Ag does as well. The objection made in supplemental responses — that information is beyond the scope of discovery — is untimely and facially defective. Finally, individual Defendants Mitchell and Robertson should either join the response or each provide separate responses, respectively.

The remainder of the original response is likewise incomplete. Defendants state: "KB Ag. Corp, LLC's website and the code used to publish such website is property of CM Welding. As such, KB Ag. Corp, LLC has requested a copy of the code from CM Welding and once it is received, the code will be produced as `Attorneys' Eyes Only.'" No code or related website ESI has been produced (for that matter, it is unclear on what basis the underlying code would qualify for heightened AEO protection).

Dispute regarding INTERROGATORY 6: The Interrogatory states: "Identify any website, software application, social media account, or other digital platform used by KB Ag Corp. to market its company or any of the products identified in response to Interrogatory 2." Plaintiffs submit that the response provided is incomplete and partial. Plaintiff has not identified paid advertising on websites other than those listed in response to Interrogatory 4. To the extent that Defendants use a software application internally in the course of marketing its products, any such application should be identified and all responsive information and documents in Defendants' possession should be produced.

Dispute regarding INTERROGATORY 7: Plaintiffs submit that the response provided is incomplete and partial. In a supplemental response, KB Ag denies that it has access to the names of the quoted individuals but makes no reference to whether individual defendants have such access. Further, in the course for offering supplemental information, KB Ag appears to withhold additional discoverable information on an untimely objection concerning putative "shop rights" that is unpersuasive on its own terms.

Dispute regarding INTERROGATORY 8: Plaintiffs submit that the response provided is incomplete and partial. The stated objection is boilerplate and is facially defective, and KB Ag fails to identify whether any information has been withheld based on the objection. Further, the response fails on its face to address the range of highly relevant topics that are identified in the Interrogatory. To the extent that documentation relating to "plans" or "drawings" exists, it is responsive and should be produced. Likewise, the vague reference as to when this exchange with Don Estes occurred and under what circumstances is insufficient and incomplete. Finally, individual Defendants Mitchell and Robertson should either join the response or each provide separate responses, respectively.

Dispute regarding INTERROGATORY 10: Plaintiffs submit that the response provided is incomplete and partial. No information is provided from years 2014, 2015, and 2016. The information provided appears limited to monetary consideration, whereas the call of the question would clearly encompass other consideration for value and other responses suggest that CM Welding and Carolyn Mitchell Estes provided such consideration. Mitchell's deposition testimony regarding compensation she received as an employee prior to 2017 does not provide an adequate or reliable response to the call of the question. The consideration CM Welding provided in the form of paying for a domain name and paying for online advertising is referenced, but not described with requisite particularity. Finally, the information provided does not address monetary or non-monetary consideration that the individual defendants may have received from or provided to Carolyn Estes or CM Welding Inc.

Turning to the responses and production that was provided in relation Plaintiff's Request for Production, each individual Defendant should produce a response demonstrating they he or she searched for and produced responsive information. Likewise, all Defendants should identify any information or document that has been withheld on the basis of any objection. Clarity on this point is significant given the number of objections, the cross-reference to objections from the interrogatories and to other RFPs, and the scope of some of the discoverable information that would be kept from Plaintiffs on the basis of the stated objections.

RFP 1: The reference to the stay of discovery in Indiana is no longer of any relevance. Defendants maintain that they "have not sought and will not seek production of any evidence not in the possession of Defendants but held by CM Welding pending resolution of those issues." Because the issues have been resolved, Defendants should be compelled to supplement their production in a timely and comprehensive fashion. Defendants invoke the objections raised to this RFP in their response to other RFPs, and they should be compelled to supplement their production in a timely and comprehensive fashion with respect to that information as well.

RFP 5: Defendants have produced no description of any such communications or documents that relate to the formation of the business, initial capital contribution, governance, or internal affairs. Defendant KB Ag has produced certain information relating to its financial position in response to other RFPs, though Plaintiffs have challenged the form and extent of such information as incomplete and partial (e.g., account statements that do not demonstrate identity of parties paying into KB Ag account or receiving funds from that account). Plaintiffs submit that these arguments apply with equal force here.

RFP 6: The response purports to incorporate the boilerplate objection raised in response to Interrogatory 7, but fails to identify whether any otherwise responsive documents have been withheld on the basis of that objection. The response is limited to KB Ag LLC, and is incomplete and partial. Mitchell is an officer of CM Welding Inc., and Robertson is purportedly the inventor of the XPR concave system. Plaintiff submits that both possess or have access to responsive information, and both individual defendants should be compelled to produce responsive information in their possession, custody, or control.

RFP 9: The response purports to incorporate the boilerplate objection raised in response to RFP #1, but fails to identify whether any otherwise responsive documents have been withheld on the basis of that objection. Further, the Indiana issues have been resolved and the responsive information should be produced immediately. KB Ag has not produced the website code to which its supplemental response refers. Further, the materials produced relate to marketing and advertisements, but (as Plaintiffs understand the production) not materials and things that relate to sales of the identified products themselves. Responsive things and documents relating to sales should be included. This would include but not be limited to invoices, payments, purchase orders, contracts, sales reports or data from which such reports could be produced, or communications that solicit or consummate sales, etc.

RFP 14: The information produced is incomplete and partial. No documents or ESI from Defendants Mitchell and Robinson have been produced, including text messages and other communications from Defendants' personal cell phones.

If the foregoing prompts further questions from the Court, I am happy to respond, in writing or via a teleconference.

December 6, 2019

Re: Copperhead Agricultural Products, LLC, a South Dakota Limited Liability Company, and Copperhead Concave, LLC, a South Dakota Limited Liability Company v. KB Ag Corporation, LLC, Kimber Mitchell and Brian Robertson; Civ. 18-4127

Dear Judge Duffy:

Pursuant to the Court's request made October 2, 2019, Plaintiffs' counsel has presented the Court with a letter setting forth each discovery request about which there is still a dispute as to a pending Motion to Compel. We realize that your October 2, 2019, request indicates that you may call on other counsel to respond following Mr. Hagen's submission. We are submitting this letter in an effort to avoid unnecessary work for the Court and in the hope we can streamline the entire case going forward. This unsolicited response does require some background for context and explanation.

The Motion to Compel was referred to Your Honor in an unusual procedural posture as set forth below:

1. The matter initially proceeded against only KB Ag Corp., LLC, as the individual defendants were not served at the time of the order, Doc. 33, which allowed expedited discovery;

2. The discovery at issue in the Motion to Compel was expedited to allow Plaintiffs to pursue the Motion for Preliminary Injunction;

3. The Plaintiffs sought preliminary injunctive relief while the Motion to Compel was pending;

4. Preliminary injunctive relief was denied, in part based on rulings that claims were not likely to succeed on the merits;

5. The individual defendants admitted service and joined the lawsuit, including joining in the motions made by KB Ag Corp., LLC prior to the Court's ruling on the preliminary injunction;

6. The motions to dismiss all defendants for lack of personal jurisdiction and, alternatively, for stay of this action pending resolution of the related Indiana state court proceedings involving some of the same issues or ownership issues at the heart of Plaintiffs' licensing rights, were denied in the same Memorandum Opinion and Order which denied injunctive relief, Doc. 78;

7. Following the denial of injunctive relief and stay, the parties undertook settlement discussions and voluntarily agreed to hold matters in abeyance during those discussions; and

8. Although the discussions did not result in a settlement, the negotiations ended only recently, and this did not allow time for discussion of how the matter might move forward if settlement was not reached. Meanwhile, a stay on matters in the Indiana case has been lifted and Plaintiffs will be litigating certain issues in both that case and matters herein.

Defendants have not yet filed an Answer and Counterclaim. They intend to do so, now that personal jurisdiction has been decided, without waiving its objection thereto, and while still pursuing the pending Motion to Dismiss. That motion was to be decided in the near future as indicated in Doc. 78. A supplemental Motion to Dismiss certain claims will also be made in accordance with that decision. We see no reason why the parties should not complete the Rule 26(f) Conference and provide the Court with a scheduling order report and get deadlines in place while those matters are being addressed. Plaintiffs have controlled the case thus far, and Defendants are in need of initial disclosures and pursuit of discovery for themselves in addressing counterclaims and further defending the claims against them.

This appears to be a situation in which the Motion to Compel is either moot or may have issues that will be resolved by "re-set" of the case. Several steps addressed above which would otherwise have occurred are lacking in this circumstance. Your Honor did not request or require that Plaintiffs consider any further "meet and confer" attempts, nor did the Court direct the parties to consider the effect of Judge Piersol's rulings in Doc. 78, in which the Motion for Preliminary Injunction was denied and legal issues (inter alia, standing on Lanham Act and Cyberpiracy claims, and other issues) were addressed. However, it appears that such action is appropriate. Having denied injunctive relief based on those rulings, the discovery requests could be moot in their entirety. Enclosed with this letter are orders from other cases in which expedited discovery for preliminary injunctive relief has resulted in such discovery disputes being denied further action as moot. That determination may not be necessary if the parties are able to resolve their issues.

Since the filing of the Motion to Compel, this case has clearly changed. It appears the matter will most expeditiously proceed if the parties were allowed 30 days or so for filing of the Answer and Counterclaim, additional motions to dismiss certain claims, and the appropriate Rule 26(f) Conference and scheduling order report, while at the same time completing a "meet and confer" on remaining issues which, if not already moot, will likely resolve the majority of the issues presented in the Motion to Compel. This would include addressing the effect of the rulings in Judge Piersol's Memorandum Opinion and Order, Doc. 78, of September 25, on such discovery requests. Should the Court make its ruling on the Motion to Dismiss (as indicated in the last page of Doc. 78) in the meantime, that ruling will further expedite the process and may otherwise make the Motion to Compel moot. Likewise, the Indiana case now moving forward may eliminate or reduce issues of conflict with procedural and other aspects of that case.

For these reasons, we respectfully request that the Motion to Compel continue to be held in abeyance for a short period to allow the matter to proceed as set forth above. A period of thoughtful reflection and analysis seems appropriate here. We would report back to the Court with any remaining issues to ne decided under the Motion to Compel.

Both Mr. Hagen and I have had extremely busy practices lately and we have not had the opportunity to discuss this proposal, so this is his first exposure to it. Should this request be one that must be presented in the form of a motion or other practice, we will do so, and apologize for any inconvenience in corresponding directly with the Court. If this letter should be filed with the Court, we are happy to do so.

Please advise on how you would like the parties to proceed in this unusual circumstance. Thank you in advance for your assistance.

2012 WL 13013028

Only the Westlaw citation is currently available. United States District Court, C.D. California.

CBS BROADCASTING INC.

v.

AMERICAN BROADCASTING COMPANIES, INC., et al.

CV 12-4073-GAF (JEMx)

Filed 06/26/2012

Attorneys and Law Firms

Blaine H. Evanson, Michael W. Seitz, Scott A. Edelmand, Theano Evangelis Kapur, Gibson Dunn and Crutcher LLP, Los Angeles, CA, for CBS Broadcasting Inc.

Jonathan E. Altman, Carolyn H. Luedtke, Glenn D. Pomerantz, Peter E. Gratzinger, Munger Tolles and Olson LLP, Los Angeles, CA, for American Broadcasting Companies, Inc., et al.

Proceedings: (IN CHAMBERS) ORDER RE PLAINTIFF CBS BROADCASTING INC.'S MOTION AND JOINT STIPULATION REGARDING ADDITIONAL DISCOVERY SOUGHT BY CBS (Docket Nos. 65, 108)

John E. McDermott, United States Magistrate Judge

*1 CBS Broadcasting, Inc.'s Motion to Compel Discovery on an Expedited Basis is DENIED.

On May 10, 2012, CBS filed suit to enjoin the broadcast of The Glass House reality TV show of American Broadcasting Companies, Inc. ("ABC"), which was set to air on June 18, 2012. CBS alleged The Glass House is derived from and based on CBS's long time reality show Big Brother. CBS asserted claims for copyright infringement, trade secret misappropriation, unfair competition, breach of contract, inducing breach of contract, breach of fiduciary duty, inducing breach of fiduciary duty, conversion, conspiracy, and aiding and abetting.

To aid an intended, but as of then unfiled, motion for preliminary injunction, CBS sought expedited discovery before the Rule 26(f) conference. On June 1, 2012, this Court held a telephonic hearing on CBS's ex parte application for an expedited discovery schedule. Defendant agreed to produce the most recent documents to show the anticipated elements of The Glass House. Defendant also agreed to a deposition of Executive Producer Kenneth Rosen on June 3, limited to copyright issues. This Court declined to rule on the trade secret discovery issues on an ex parte basis and ordered the parties to agree on a schedule for briefing CBS's motion to compel responses to four document requests. The parties agreed to a briefing schedule to be completed by June 15. The Court specifically inquired of CBS whether it was prepared to stand on its 14 trade secret disclosures for purposes of its motion. Significantly, CBS committed that it was.

Based on the Rosen deposition and the material turned over by ABC, CBS did not wait for a ruling on its document requests, but filed an application for a temporary restraining order on June 7 with the District Judge. A TRO hearing was held on June 15, 2012. Judge Feess's tentative ruling was to deny the TRO. On June 21, Judge Feess issued a formal order denying CBS's TRO application. The Court ruled that success on the merits at trial was unlikely. Order at 2. The Court found CBS is unlikely to prove that The Glass House misappropriated protectable elements of Big Brother under the copyright substantial similarity test. Order at 2. It also found that "Big Brother's alleged trade secrets were either already known in the business (banks of monitors in multi-camera productions), were readily capable of "reverse engineering" based on information disclosed in the public domain (e.g., camera angles), or were not adequately protected as trade secrets (e.g., tours of the master Control Room)." Order at 2. The District Court ruled that CBS failed to prove it would suffer immediate and irreparable injury and that the balance of the equities favored ABC. Order at 2. The District Court also denied CBS's request for an OSC for a preliminary injunction. Order at 16.

In view of the District Court's ruling, there is no basis for expedited discovery. The District Court had before it everything that is before this Court on the pending discovery motion, including CBS's expert report of Jeffrey Rovin purporting to show infringement based on Rosen's deposition testimony. At the June 15, 2012, TRO hearing, CBS sought a TRO to allow time for expedited discovery (see Tr. 26:22-27:1, 48:9-14) and also sought an OSC so CBS can return to the Court on a fuller record for a preliminary injunction. (Tr. 48:15-18.) The Court denied the TRO and the OSC request. Order at 16. CBS, of course, is entitled to pursue discovery in the ordinary course to bolster its claims but in view of the District Court's TRO Order there is no justification for doing so on an expedited basis. The District Court said at the June 15 hearing that the TRO denial was without prejudice to a later motion for preliminary injunction based on further discovery (Tr. 9:1-11), but neither this statement nor the Order are endorsements of expedited discovery.

*2 CBS's Motion to Compel, moreover, was directed at trade secret discovery. CBS, however, is not entitled to trade secret discovery under California Code of Civil Procedure Section 2019.210 until it identifies its alleged trade secrets with "reasonable particularity." Trade secrets are defined as "information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (1) derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and (2) [i]s the result of efforts that are reasonable under the circumstances to maintain its secrecy." Cal. Civ. Code § 3426.1(d). In a claim for trade secret misappropriation, the plaintiff must demonstrate: (1) ownership of a trade secret, (2) that the defendant acquired disclosed or used plaintiff's trade secret through improper means, and (3) that the defendant's actions damaged the plaintiff. Cal. Civil Code § 3426.1(b); Sargent Fletcher, Inc. v. Able Corp., 110 Cal.App.4th 1658, 1665 (2003).

CBS has made repeated attempts to satisfy Section 2019.210, culminating in its 14 alleged trade secrets that not only serve as the basis for this motion but also were the basis of its TRO application. The District Court in its Order stated that "[o]n the basis of the record currently before it, the Court entertains serious doubt as to CBS's ability to demonstrate either [1] that the purported trade secrets listed qualify for protection; or [2] that Defendants are actively misappropriating any such secrets." Order at 13. More specifically, the District Court ruled that, as to two CBS Big Brother documents consulted by ABC (Trade Secret No. 1), "at least at this stage of the litigation, CBS has not offered anything resembling an adequate explanation as to how the material contained in either of these documents constitute trade secrets." Order at 13. As to remaining filming, editing and production techniques claimed as trade secrets (Trade Secrets 2-14), "The Court has no basis on which to find either ownership or misappropriation." Order at 14. The District Court also noted that these techniques are commonplace in the industry, and CBS bears the burden to demonstrate their uniqueness. Order at 14. Again, in its initial summary, the District Court found that the evidence before it indicates that CBS's alleged trade secrets either were already known in the business, were readily capable of reverse engineering, and were not adequately protected as trade secrets. Order at 2. These rulings both reject CBS's proffered trade secret designations, and even if those designations could be said to meet Section 2019.210, CBS has not established the ownership and misappropriation elements of Cal. Civ. Code § 3426.1. and further did not establish irreparable injury to warrant injunctive relief, making expedited discovery inappropriate. CBS may wish to sharpen its trade secret disclosure now that it has the benefit of the District Court's Order. However, CBS's next attempt must be its last. See Art of Living Foundation v. Does 1-10, 2012 WL 1565281, at *23 (N.D. Cal. May 1, 2012).

CBS argues that responses to its four document requests should be compelled based on other claims (conversion and unfair competition), but these claims are factually dependent on the same misappropriation allegations and thus also subject to Section 2019.210. Advanced Modular Sputtering, Inc. v. Superior Court, 132 Cal.App.4th 826, 835 (2005). Indeed, the claims may be preempted. K.C. Multimedia, Inc. v. Bank of America Technology & Operations, Inc., 171 Cal.App.4th 939, 958 (2009). In any event, these claims do not warrant expedited discovery in view of the District Court's Order that CBS cannot show irreparable injury from the alleged misappropriation.

This Court also need not address CBS's spoliation argument. The District Court specifically addressed that issue by issuing a preservation order. Order at 16. ABC claims the deleted emails can be recovered, and presumably CBS will be able to obtain them through regular discovery.

*3 CBS also inserted into its Motion to Compel a new dispute about questions Mr. Rosen did not answer at his deposition based on advice of counsel. As there was no meet and confer as required by Local Rule 37-1, this issue is not properly before the Court. Additionally, in an effort to resolve the dispute, ABC has offered to provide a verified written interrogatory from Mr. Rosen stating the date on which Mr. Friedman transmitted the typed-up Guest Manual to in-house counsel and how Mr. Rosen used the manual, if at all, on The Glass House. The Court will not order ABC to do so at this point because CBS is not entitled to expedited discovery. Nonetheless, the Court suggests that ABC do so, and if that does not resolve the dispute, then CBS can present a regularly scheduled motion to compel after meeting and conferring, subsequent to the Rule 26(f) scheduling conference.

All Citations

Not Reported in Fed. Supp., 2012 WL 13013028

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA

ORDER

AND NOW, this 15th day of December 2017, upon considering Plaintiffs' Motion to compel (ECF Doc. No. 28), Defendants' Response (ECF Doc. No. 29), mindful we granted Plaintiffs' motion for expedited discovery necessary for their preliminary injunction request in our November 14, 2017 Order (ECF Doc. No. 19) resulting in discovery presently limited (upon Plaintiffs' request) to adducing evidence necessary for the Plaintiffs to establish imminent irreparable harm caused by Defendants' ongoing representations but Plaintiffs presently fail to establish good cause to review Defendants' advertising or referral relationships before August 1, 2017 in the Plaintiffs' selected context of a preliminary injunction motion, it is ORDERED Plaintiffs' Motion (ECF Doc. No. 28) is DENIED without prejudice to seek more fulsome discovery of conduct before August 1, 2017 as we prepare for trial.1