John Frederick Dryer, et al., Plaintiffs, v. National Football League, Defendant Civil No. 09-2182 (PAM/AJB) Signed May 21, 2012 Counsel Aaron R. Fahrenkrog, Jeffrey Sullivan Gleason, Michael V. Ciresi, Thomas C. Mahlum, William Bornstein, Jan M. Conlin, Mathew R. Korte, Jeffrey S. Gleason, Robins Kaplan Miller & Ciresi LLP, Brian C. Gudmundson, Charles S. Zimmerman, J. Gordon Rudd, Jr., Zimmerman Reed, PLLP, Mark J. Feinberg, Shawn D. Stuckey, Zelle Hofmann Voelbel & Mason LLP, Minneapolis, MN, Mark D. Passin, Robins Kaplan Miller & Ciresi LLP, Los Angeles, CA, Daniel S. Mason, Zelle Hofmann Voelbel & Mason LLP, Michael P. Lehmann, Hausfeld LLP, San Francisco, CA, Daniel S. Ward, Thomas J. Ward, Ward & Ward, PLLC, James J. Pizzirusso, Michael D. Hausfeld, Hausfeld LLP, Washington, DC, Robert A. Stein, Bob Stein LLC, Minnetonka, MN, for Plaintiffs. Curley Culp, pro se. Ron Yary, pro se. Tom Mack, pro se. Dave Casper, pro se. Phil Villapiano, pro se. John Riggins, pro se. Mike Bass, pro se. Willie Buchanon, pro se. Joe Kapp, pro se. Roman Gabriel, pro se. Jon King, pro se. Jed Weaver, pro se. Michael Schaper, Bruce P. Keller, Debevoise & Plimpton, LLP, New York, NY, Aaron D. Van Oort, Daniel J. Connolly, David J. F. Gross, Eileen M. Hunter, Faegre Baker Daniels LLP, Minneapolis, MN, for Defendant. Boylan, Arthur J., United States Magistrate Judge ORDER ON PLAINTIFFS' MOTION TO COMPEL DISCOVERY *1 This matter is before the Court, United States Chief Magistrate Judge Arthur J. Boylan, on Plaintiffs' motion to compel discovery. (Docket No. 156.) A hearing was held on the motion on April 3, 2012 at the U.S. Courthouse, 300 South Fourth Street, Minneapolis, MN 55415. Plaintiffs move to compel the discovery of the email of five particular NFL employees. Plaintiffs also move for the production of documents, beyond the six-year limitation set by previous court order, from NFL-owned or affiliated media outlets and marketing/advertising divisions of the NFL related to retired NFL players. Lastly, Plaintiffs move to discover the unredacted versions of certain redacted documents already produced by Defendant. Based upon the record, memoranda, and oral arguments of counsel, IT IS HEREBY ORDERED that Plaintiffs' motion to compel the production of discovery (Docket No. 156) is GRANTED in part and DENIED in part as follows: 1. Plaintiffs' motion to compel production of Electronically Stored Information (“ESI”) in the custody of NFL Media Operations VP Glen Adamo is denied; 2. Plaintiffs' request to compel the production of ESI in the custody of NFL Films, Film Handling Lab Research Manager Daniel Haessler is denied; 3. Plaintiffs' request to compel the production of ESI in the custody of NFL Ventures Operations, Brand Creative VP Jaime Weston is denied; 4. Plaintiffs' request to compel the production of ESI in the custody of NFL Ventures & Operations, Entertainment Marketing and Promotions VP Tracy Perlman is denied; 5. Plaintiffs' request to compel the production of ESI in the custody of NFL Ventures & Operations, Chief Marketing Officer Mark Waller is granted; 6. Plaintiffs' request to compel the production of discovery pursuant to Plaintiffs' Request for Production of Documents Nos. 13 and 14 is granted; and 7. Plaintiffs' request to compel the Defendant to produce unredacted versions of redacted documents is denied. MEMORANDUM I. Background On August 20, 2009, Plaintiffs Dryer et al. (“Dryer”), a group of retired NFL players, filed a complaint against Defendant National Football League (“NFL”) under the Lanham Act. 15 U.S.C. § 1525. Subsequent actions were filed by other former NFL players, which have since been consolidated with this case. A consolidated amended complaint, filed on November 15, 2011, alleges the NFL's improper use of players' identities by the NFL. (Docket No. 142.) The Plaintiffs accuse the NFL of exploiting retired players' identities in films, highlight reels and memorabilia to market the league's history without compensating the players. On March 14, 2012, Plaintiffs filed a motion to compel production of discovery. (Docket No. 156.) There are three issues raised in this motion: (1) Is it unduly burdensome to compel the Defendant to produce the Electronically Stored Information (“ESI”) of five additional custodians? (2) Are the Plaintiffs entitled to Request Nos. 13 and 14 pursuant to Magistrate Judge Susan Richard Nelson's[1]six-year discovery limitation? *2 (3) Has the Defendant properly redacted documents? On the first issue the Plaintiffs argue that the Defendant has omitted four custodians from Plaintiffs' narrowly tailored proposed list of custodians who should be subject to discovery of ESI, and drastically limited the production from a fifth custodian. (Docket No. 158). Defendant objects on grounds that it has already produced hundreds of thousands of documents, and the relevancy of the requested production is minimal, particularly in light of the burden to the Defendant. (Docket No. 161). On the second issue the Plaintiffs allege that they are entitled to more discovery based on the information requested in Request No. 13 (documents related to the use of the name, likeness, or any other indicia of identity of any retired NFL players on any NFL-owned or affiliated media channel, including but not limited to television networks and Internet websites) and Request No. 14 (documents related to any marketing, advertising, promotional, branding, or similar effort that in any way involves the name, likeness, or other indicia of identity of any retired NFL player). Defendant contends that Judge Nelson's six-year exception expressly considered some requests previously made by the Plaintiffs within the exception. Further, the Defendant insists that if Judge Nelson had wanted Request Nos. 13 and 14 to be within the six-year exception, she would have so ordered. On the third issue the Plaintiffs allege that much of the redacted discovery produced so far by the Defendant is unnecessarily redacted. Defendant asserts that the redactions are done according to previous negotiations agreed upon by the parties. The NFL contends that redactions include privileged or work product protected material, personal identifying information, and financial information and the documents remain sufficient to show the amount of profit from the NFL Films for the six year limitation period as permitted by the Court. II. Legal Standard The Federal Rules of Civil Procedure provides boundaries to the discovery process in lawsuits. Fed. R. Civ. P. 26. Unless otherwise limited by court order, parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense—including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter. Fed. R. Civ. P. 26(b)(1). For good cause, the court may order discovery of any matter relevant to the subject matter involved in the action. Id. Relevant information need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence. Id. All discovery is subject to the limitations imposed by Rule 26(b)(2)(C). Id. On motion or on its own, the court must limit the frequency or extent of discovery otherwise allowed by these rules or by local rule if it determines that: *3 (i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive; or (ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or (iii) the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in controversy, the parties' resources, the importance of the issues at stake in the action, and the importance of the discovery in resolving the issues. Fed. R. Civ. P. 26(b)(2)(C)(i-iii). Rule 26(b) of the Federal Rules of Civil Procedure is widely recognized as a discovery rule which is liberal in scope and interpretation, extending to those matters which are relevant and reasonably calculated to lead to the discovery of admissible evidence. Hofer v. Mack Trucks, Inc., 981 F.2d 377, 380 (8th Cir. 1992) (citing Kramer v. Boeing Co., 126 F.R.D. 690, 692 (D. Minn. 1989)). While the standard of relevance in the context of discovery is broader than in the context of admissibility, this often intoned legal tenet should not be misapplied so as to allow fishing expeditions in discovery. Hofer, 981 F.2d at 380 (8th Cir. 1992). III. Discussion A. ESI Custodians. It is not possible to precisely define in a rule the different types of technological features that may affect the burdens and costs of accessing electronically stored information. Fed. R. Civ. P. 26(b)(2) Advisory Committee notes on 2006 Amendments. Rule 26 is designed to regulate discovery from sources that are accessible only by incurring substantial burdens or costs. Id. Plaintiffs argue that the five designated custodians possess relevant, discoverable information that the Defendant should produce in full because there is no burden to the Defendant. Defendant argues that the Plaintiffs have not justified their request for full production from the five custodians. Defendant contends that the request is unwarranted because the parties have already agreed to Defendant producing ESI for 18 custodians, and the burden or expense of the proposed discovery outweighs its likely benefit. Defendant argues that much of the discovery being sought is available through other sources that have produced ESI. Also, the burden outweighs the likely benefit because according to sample discovery, less than five percent of reviewed material has proven to be at all relevant. Considering the minimal success in finding relevant documents, and the cost to obtain the information that could almost certainly be obtained through discovery the Defendant has already produced, the Court grants in part and denies in part the Plaintiffs' motion to compel the production of ESI discovery of the 5 additional custodians. Each custodian presents a different set of circumstances. 1. Glen Adamo. The Plaintiffs allege that ESI in the custody of Mr. Adamo is relevant because his name is listed on hundreds of documents found in Defendant's “paper” production, many of which are related to licensing and other issues central to this litigation. Plaintiffs further claim that the Defendant has conceded Mr. Adamo possesses relevant, responsive ESI materials. *4 Defendant argues that while the production of Mr. Adamo's ESI may be relevant, it is unduly burdensome. The NFL contends that the requested production by Mr. Adamo will be merely cumulative and duplicative of information the Plaintiffs already have because some of Mr. Adamo's superiors, namely Steve Bornstein (Executive Vice President and Chief Executive Officer of the NFL Network) and Howard Katz (Broadcasting and NFL Films Senior Vice President), and subordinates, namely Bill Driber (Executive in Charge of Production Operations), have been deposed, and their ESI produced. Further, the burden of production will outweigh its likely benefit because Mr. Adamo is on the technical side of media operations, and he is in charge of people who actually maintain the technical systems. The Court finds that the Plaintiffs already have alternative sources for the information that Mr. Adamo's ESI would likely supply, they have had ample time to examine that information, and that the burden of producing Mr. Adamo's ESI outweighs the benefit from the discovery. Defendant shall not be required to produce the ESI of Mr. Adamo. 2. Daniel Haessler. The Plaintiffs argue that Mr. Haessler is a uniquely appropriate subject of discovery because he is the research manager of the NFL Films editing lab of the NFL Media Services department; he has a special knowledge of NFL Films; and he was present at the restricted play policy meeting. Plaintiffs claim that in a deposition, NFL Films Media Head Logger, Glen Kolanko, testified that he himself was unfamiliar with several areas [related to NFL Films Handling Lab], and repeatedly named Mr. Haessler as the person with knowledge of specific topics important to this litigation including the digitization, storage, and retrieval of retired player footage. Defendant asserts that the ESI that Mr. Haessler would provide is duplicative of information that the Plaintiffs already possess because the Plaintiffs already have discovery related to two of Mr. Haessler's direct supervisors, Jeremy Swarbrick (Media Services Director) and Glen Kolanko. Additionally, the Defendant has produced the ESI of Mr. Swarbrick's supervisor, Bill Driber. Defendant further alleges that Mr. Haessler merely retrieves video footage that he is asked to find by the above mentioned custodians. Thus, Defendant argues that the ESI in the custody of Mr. Haesller is duplicative, the Plaintiffs have had ample time to review from other sources, and therefore the burden of production outweighs any likely benefit. As with Mr. Adamo, compelling the Defendant to produce the ESI of Mr. Haessler is unduly burdensome and cumulative. The Plaintiffs already possess discovery from Mr. Haessler's supervisors and the likely benefit of more ESI is outweighed by the substantial financial burden placed on the Defendant. The Court will not compel the discovery of ESI in the custody of Mr. Haessler. 3. Jaime Weston. The Plaintiffs are arguing that the Defendant should produce the ESI in the custody of Ms. Weston for a variety of reasons based on Ms. Weston's title; because she was involved in discussions on whether to use NFL footage showing violent hits for commercial purposes; because she was involved in discussions regarding using retired player' identities “from all decades” for NFL initiatives; she was involved in marketing initiatives with NFL Films; and has been involved in efforts to sanitize NFL Films footage of controversial images. Plaintiffs also allege that the Defendant has not produced enough documents to truly know whether or not Ms. Weston might have relevant information. The Defendant contends that Ms. Weston is not involved in the NFL Films wing of the NFL and works almost exclusively with current and future NFL seasons. For example, one of her job tasks is to work in logo and uniform design. Defendant also argues that none of the Plaintiffs' three exhibits that include Ms. Weston are relevant to this litigation. The documents involve live player appearances, restricted plays, and a presentation about the NFL brand. Defendant claims that none of the above indicate that Ms. Weston works with NFL Films whatsoever. *5 This Court finds that the burden of producing the ESI of Ms. Weston outweighs the likely benefit from the production. There is minimal likelihood that producing Ms. Weston's ESI will lead to discovery of admissible evidence in this case. Therefore, the Defendant is not compelled to produce the ESI of Ms. Weston. 4. Tracy Perlman. The Plaintiffs claim that the Defendant halted the production of Ms. Perlman's ESI for no good reason. Plaintiffs insist Ms. Perlman is actively involved with promotion of the NFL through appearances by celebrities and former players, and therefore has relevant ESI. Further, Plaintiffs cite an interview where Ms. Perlman claims that she works with NFL videos. The Defendant argues that the likely benefit of production of Ms. Perlman's documents was substantially outweighed by the burden of production. Of the tens of thousands of Ms. Perlman's documents that were produced by the Defendant, only two percent proved to be relevant. Additionally, the Defendant pointed out the Plaintiffs have identified only four documents of Ms. Perlman's that are somewhat relevant to the issues of the case. Defendant has stipulated that it costs hundreds of thousands of dollars to produce this discovery and have offered that if Plaintiffs pay for the discovery costs, they would provide the materials. In light of the heavy economic burden in producing Ms. Perlman's ESI, and the unlikelihood that significant relevant documents will be found, the Court will not compel the Defendant to produce the ESI of Ms. Perlman. 5. Mark Waller. The Plaintiffs argue that Mr. Waller is involved in the use of “historical” concepts to promote the NFL draft, the licensing of NFL Films archive footage to commercial sponsors, the NFL's branding and marketing initiatives, and discussions regarding the use of retired players “from all decades” for NFL initiatives. Also, as his position as Chief Marketing Officer of NFL Ventures and Business Operations allows Mr. Waller access to highly relevant information. The Defendant argues that Mr. Waller is not involved in the NFL Films wing of the NFL and therefore he does not possess relevant, discoverable information. To the contrary, Mr. Waller's job is to market the NFL as a whole. Defendant also alleges that his office location, New York, rather than New Jersey, where NFL Films is located, means he does not possess relevant information in regard to this litigation. The Defendant also contends that his position is focused on current and future NFL seasons, not retired players. Lastly, the Defendant insists that if Mr. Waller possessed any relevant information, the Plaintiffs would already have discovered it through other sources such as Alicia Rankin (Consumer Insights Director) and Rob Stecklow (Advertising and Media Director), both of whom report directly to Mr. Waller. The Court will compel the further production of Mr. Waller's ESI because the burden of production does not outweigh the substantial benefit. The Court has determined to not compel production by Ms. Weston and Ms. Perlman. However, because both of them report to Mr. Waller, relevant information that they may possess would most likely be discoverable through Mr. Waller's ESI. Mr. Waller is in charge of marketing of the NFL as a business. If NFL Films was used as part of a marketing strategy, the ESI of Mr. Waller is a reasonably likely place to find it. Producing the ESI of Ms. Weston and Ms. Perlman would be merely duplicative and cumulative if Mr. Waller's ESI is produced. *6 Lastly, a party's identification of sources of electronically stored information as not reasonably accessible does not relieve the party of its common-law or statutory duties to preserve evidence. Fed. R. Civ. P. 26(b)(2) Advisory Committee notes on 2006 Amendments. This order does not mean that the Plaintiffs are barred from discovering this information. Should the parties come to an agreement, such as the Plaintiffs assisting in the costs of production, then perhaps the burden would not be so great for the Defendant to produce the desired discovery. B. Plaintiffs' Request Nos. 13 and 14. In her October 25, 2010 Order (Docket No. 65), then Magistrate Judge Nelson reiterated what Judge Magnuson directed at the Pretial Scheduling Conference: that discovery shall first focus on the merits of the claim of the named Plaintiffs and on issues of class certification. In the Order, Judge Nelson ruled on the production of documents relating to the use of players' identities (Request Nos. 13 and 14). She went on to say that a six-year limitations period would apply generally, but would not apply to any “particular request” where she noted it would not. Judge Nelson further stated: Given that retired players' identities have presumably been used prior to the time frame encompassed by the six-year statute of limitations, Defendant's random sampling shall extend beyond that six-year limit. This sampling will not preclude a later, more complete production, if necessary, but should lessen Defendant's concerns regarding relevance and burden while providing Plaintiffs with a statistically significant sample to use, if necessary, for class certification purposes. Judge Nelson identified two categories of documents sought by those requests: (1) documents showing actual uses of the former players' identities on the NFL Network and NFL.com and, (2) documents showing the NFL's intent to generate revenue by utilizing retired players' identities on these channels. Plaintiffs allege that Judge Nelson specifically said that no six-year limitations period applies with respect to Request Nos. 13 and 14. Defendant contends that because Judge Nelson did not specifically note that the discovery in this request would extend beyond the six-year limitation, the documents demonstrating intent are not discoverable beyond the six-year limitation period. Here, Judge Nelson expressly states that Defendant's random sampling of production for these documents shall extend beyond the six-year limitations period. As a result, the Court is not persuaded by the Defendant's argument that Judge Nelson did not specifically authorize the discovery related to Request Nos. 13 and 14. Therefore, the Court will compel the production of discovery in regard to Request Nos. 13 and 14. C. Redacted Documents. Plaintiffs contend that numerous documents produced by Defendant were improperly redacted. In particular, Plaintiffs allege that the Defendant has redacted entire pages of information, thus removing them from their context and leaving the Plaintiff guessing as to what the documents may have contained. Additionally, Plaintiffs deny Defendant's claim that they are in search of damages discovery. Defendant asserts that the documents at issue contain financial information that was properly redacted on the basis of Judge Nelson's prior order denying damages discovery, as well as the bifurcation of discovery whereby sensitive information that is not pertinent to the immediate pending issue in the case, i.e. class certification, is not presently discoverable. Defendant also resists disclosure of certain redactions because they may be pertinent to a separate action involving Plaintiffs' counsel and the NFL. *7 Plaintiffs direct the the court to its statement in Bartholomew v. Avalon Capital Group, Inc., 278 F.R.D. 441, 451 (D. Minn. 2011) that redaction is generally an inappropriate tool for excluding alleged irrelevant information from documents that are otherwise responsive to a discovery request because redacted material may provide context and disclosures are subject to a protective order. However, in this case, the first phase of discovery has been expressly limited to class certification matters. It is anticipated that discovery disclosures are made in accordance with the rules of procedure and professional responsibility, and that relevant information will not be redacted, absent proper justification. Defendant is not required to produce information on damages, and unless otherwise demonstrated, there is no reason to conclude that Defendant has thus far redacted relevant information from documents pertinent to class certification. Therefore, the Court orders that the Defendant is not compelled to unredact documents that have been redacted because the information represents damages discovery or is otherwise not relevant to class certification. Nonetheless, redactions of relevant information based upon attorney-client privilege or work product grounds should be identified in a privilege log. IV. Conclusion The Court finds that the burden of production for the Defendant to produce ESI of four of the five custodians outweighs the likely benefit. However, the Court also finds that the likely benefit of production of the ESI of Mark Waller outweighs the burden of production, and therefore will compel the Defendant to produce his ESI. The discovery shall be done according to the parties' previous search term agreement of the agreed-upon custodians. The Court also finds that Request Nos. 13 and 14 are not within the six-year limitation articulated by Judge Nelson in her October 25, 2010 Order. Finally, the Court finds that the Defendant has thus far has not improperly redacted its documents and therefore denies the Plaintiffs' request to compel discovery in this regard. Footnotes [1] Order dated October 25, 2010 (Docket No. 65), issued by Magistrate Judge Nelson. Judge Nelson was subsequently elevated to the District Court bench.