CDOC, INC. and BANKERS LIFE AND CASUALTY CO. Plaintiffs, v. GRADIENT INS. BROKERAGE, INC. d/b/a GRADIENT ANNUUITY BROKERAGE; and AMERICAN SENIOR BENEFITS, LLC, Defendants No. 20 C 1396 United States District Court, N.D. Illinois, Eastern Division Signed January 05, 2021 Counsel David K. Haase, Littler Mendelson, P.C., Chicago, IL, Christina D. Frangiosa, Pro Hac Vice, Elizabeth S. Gallard, Pro Hac Vice, Eckert Seamans Cherin & Mellott, LLC, Philadelphia, PA, Michael A. Moffatt, Pro Hac Vice, Littler Mendelson, P.C., Indianapolis, IN, for Plaintiffs. Adam J. Reis, Lisa M. Holubar, Irwin IP LLC, Chicago, IL, Matthew C. Murphy, Pro Hac Vice, Stanley E. Siegel, Jr., Pro Hac Vice, Nilan Johnson Lewis PA, Minneapolis, MN, for Defendant Gradient Insurance Brokerage, Inc. Jami A. Gekas, Joshua Lamar Harris, Michael C. Kasdin, Foley & Lardner LLP, Chicago, IL, for Defendant American Senior Benefits, LLC. Valdez, Maria, United States Magistrate Judge ORDER *1 This matter is before the Court on Plaintiffs' Motion to Compel Document Production and Complete Written Discovery Responses of Defendant American Senior Benefits, LLC [Doc. No. 72]. For the reasons that follow, Plaintiffs' motion is granted in part and denied in part. BACKGROUND Plaintiffs' amended complaint claims trademark infringement, unfair competition and false advertising pursuant to the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), violations of Illinois' Deceptive Trade Practices Act pursuant to 815 ILCS § 510 et seq., and civil conspiracy in relation to Defendants' alleged wrongful use of Bankers Life marks. Defendant American Senior Benefits, LLC (“ASB”) had a meeting with its regional sales managers (“RSMs”) in February 2020. According to Plaintiffs, Defendant Gradient made a presentation to ASB at the meeting and falsely held itself out as having authority to sell Bankers Life products. Plaintiffs further believe that at the meeting, Defendants announced that they had formed a business relationship by which Gradient would act as a field marketing organization for ASB. The complaint states that Gradient's presentation to the RSMs falsely informed them that ASB agents would be authorized to sell Bankers Life products and services. At some point after the meeting, Bankers Life learned about Defendants' purported authority to sell its products and contacted Defendants. ASB stated that the inclusion of Bankers Life was unintentional and advised Plaintiffs that it had contacted the RSM attendees of the February meeting, telling them not to use the Bankers Life mark or indicate to any current or prospective customers that they could sell Bankers Life products. However, Plaintiffs allege that Defendants wrongfully continued to hold themselves out as able to sell Bankers Life policies despite knowing that Bankers Life has not authorized Gradient or ASB to sell its products. ASB served its responses pursuant to the Mandatory Initial Discovery Pilot Project (“MIDP”)[1] on July 17, 2020. MIDP disclosures relevant to the present dispute include the following: (1) State the names and, if known, the addresses and telephone numbers of all persons who you believe are likely to have discoverable information relevant to any party's claims or defenses, and provide a fair description of the nature of the information each such person is believed to possess. (Am. MIDP Standing Order ¶ B.1.) Case: 1:20-cv-01396 Document #: 78 Filed: 01/05/21 Page 3 of 9 PageID #:518 ASB's supplemental response listed the names of several ASB and Gradient employees with knowledge of facts surrounding the February 2020 meeting, a recruiting email from an ASB employee referencing Bankers Life, and the inclusion of the Bankers Life logo in the Gradient brochure and on its website. ASB further listed unspecified “various” employees and agents of Plaintiffs with knowledge of Plaintiffs' claims and “various” employees and agents of Gradient who were familiar with Gradient's presentation at the February 2020 meeting and the materials distributed there. ASB stated that the list was not exhaustive and would be supplemented as necessary. *2 (2) State the names and, if known, the addresses and telephone numbers of all persons who you believe have given written or recorded statements relevant to any party's claims or defenses. Unless you assert a privilege or work product protection against disclosure under applicable law, attach a copy of each such statement if it is in your possession, custody, or control. If not in your possession, custody, or control, state the name and, if known, the address and telephone number of each person who you believe has custody of a copy. (Id. ¶ B.2.) ASB answered “None at this time” but again reserved the right to supplement its response. (3) List the documents, electronically stored information (“ESI”), tangible things, land, or other property known by you to exist, whether or not in your possession, custody or control, that you believe may be relevant to any party's claims or defenses. To the extent the volume of any such materials makes listing them individually impracticable, you may group similar documents or ESI into categories and describe the specific categories with particularity. Include in your response the names and, if known, the addresses and telephone numbers of the custodians of the documents, ESI, or tangible things, land, or other property that are not in your possession, custody, or control. For documents and tangible things in your possession, custody, or control, you may produce them with your response, or make them available for inspection on the date of the response, instead of listing them. Production of ESI will occur in accordance with paragraph C.2 below. (Id. ¶ B.3.) ASB identified several categories of responsive documents, including communications between ASB and Gradient regarding the planning of the February 2020 meeting purporting to show that ASB had no prior knowledge that Bankers Life would be referenced at the meeting or listed on the materials; text messages between non-employee ASB RSMs mentioning Bankers Life after the meeting; and documents related to trademark defenses such as the weakness of Plaintiffs' mark and efforts to enforce the mark. Plaintiffs believed the responses were insufficient and sent ASB a deficiency letter two weeks later. ASB did not answer the letter but supplemented its MIDP responses on August 7, 2020. According to Plaintiffs, the supplementation did not resolve the issues raised in the deficiency letter. Plaintiffs then filed the present motion to compel ASB to provide the complete list of attendees of ASB's February 2020 managers' meeting and to produce documents ASB identified in its responses, including (1) the text messages and emails of those attendees from the due date of the meeting to a reasonable period thereafter, which it defines as about thirty days; (2) communications between Defendants and ASB RSMs regarding the planning and organization of the February 2020 meeting and the programming presented; (3) documents relating to the use of Bankers Life's name or mark, including to solicit customers or recruit agents. ASB responds that Plaintiffs did not engage in a good faith effort to resolve the dispute before filing the motion, in violation of Local Rule 37.2 and further states that it has already agreed to produce documents after the parties have agreed to an ESI protocol, including search terms and custodians. In addition, ASB contends that some of the documents Plaintiffs seek need not be produced because they are neither relevant nor in ASB's control. DISCUSSION As an initial matter, Plaintiffs are admonished for their failure to fully comply with Local Rule 37.2 and this Court's standing order, by filing the present motion before the parties had reached an impasse. However, in order to avoid further delay, the Court will address some of the substance of the parties' dispute. Plaintiffs are cautioned that if any future motions are filed before a thorough meet and confer process has been completed, they may be summarily stricken. Meeting Attendees *3 Defendant contends that it has provided Plaintiffs with the names of all attendees of the February 2020 meeting who Defendant believes are likely to have discoverable information, and further that the list of all RSM attendees comprises sensitive commercial information that it is not obliged to disclose to its direct competitor. Finally, Defendants maintain that the issue in the case is whether there was actionable customer confusion, and any potential confusion among RSMs is not relevant to that inquiry. First, it is premature to assume that no RSMs have information that their customers were confused by the alleged use of the Bankers Life mark. Second, RSMs could have information about Defendants' communications related to the marks, both during and after the meeting. Defendant has not explained the basis for its confidence that no unnamed attendees have discoverable information. Moreover, Defendant's concern that the information is proprietary is misplaced, as an agreed confidentiality order has already been entered in the case. Defendant must produce the list of attendees to the best of its knowledge. Document Production The Court agrees with Defendant that to the extent Plaintiffs seek full production of ESI materials, the motion is premature until after the parties have had a full opportunity to complete their negotiation of an ESI protocol. (See Am. MIDP Standing Order ¶ C.2.a) (“When the existence of ESI is disclosed or discovered, the parties must promptly confer and attempt to agree on matters relating to its disclosure.”) But that does not relieve Defendant of its present obligation to search for and produce non-ESI documents that are responsive to the MIDP requests. The Court will not require the duplicate production of hard copies of documents that will also be part of an ESI production. The motion is denied, however, with respect to Plaintiffs' request that Defendant produce text messages and emails of non-employee RSM attendees from the date of the meeting to as much as thirty days thereafter. Defendant argues that the documents are not relevant, and it does not have custody and control of them. In determining whether a party has control, “the test is whether the party has a legal right to obtain the evidence.” Thermal Design, Inc. v. Am. Soc'y of Heating, Refrigerating & Air-Conditioning Eng'rs, Inc., 755 F.3d 832, 839 (7th Cir. 2014) (quoting Dexia Credit Local v. Rogan, 231 F.R.D. 538, 542 (N.D. Ill. 2004)) (internal quotations and alterations omitted); see Tech. Concepts, L.P. v. Cont'l Mfg. Co., No. 92 C 7476, 1994 WL 262119, at *1 (N.D. Ill. June 10, 1994) (Williams, J.) (“The existence of this legal right of control depends upon the relationship between the parties, usually arising from statute, affiliation or employment.”). “The burden of showing that a party is in control of requested documents falls upon the party which brings the motion to compel.” Tech. Concepts, 1994 WL 262119, at *1. Plaintiffs do not dispute Defendant's characterization of the attendees as “non-employee ASB RSM's,” but nevertheless contend that Defendant “clearly” has sufficient control over the RSM attendees “to require them to produce such documents” as evidenced by the fact that they sent the RSMs an email instructing them to handle information communicated during the meeting in a particular way. (Pl.'s Mem. at 9-10.) “But the fact that a party could obtain a document if it tried hard enough and maybe if it didn't try hard at all does not mean that the document is in its possession, custody, or control; in fact it means the opposite.” Chaveriat v. Williams Pipe Line Co., 11 F.3d 1420, 1427 (7th Cir. 1993). Plaintiffs have failed to meet their burden of establishing that Defendant has custody and control of documents in the possession of non-employee third parties, who surely have their own protectible interests in their personal text and email communications. See Evan Law Group LLC v. Taylor, No. 09 C 4896, 2011 WL 72715, at *10 (N.D. Ill. Jan. 6, 2011) (“To find that Defendant has custody and control of the documents would ‘completely circumvent the protections afforded by Federal Rule of Civil Procedure 45.’ ”) (citation omitted). The issues of relevance and burden are not yet ripe until Plaintiff issues a subpoena for the communications and a third-party RSM objects, but Plaintiff is strongly cautioned that any third-party discovery requests must be very narrowly tailored, and Rule 45 requires a subpoena to be quashed if it “subjects a person to undue burden.” Fed. R. Civ. P. 45(d)(3)(A); see also Fed. R. Civ. P. 45(d)(1) (“A party or attorney responsible for issuing and serving a subpoena must take reasonable steps to avoid imposing undue burden or expense on a person subject to the subpoena.”). CONCLUSION *4 For the foregoing reasons, Plaintiffs' Motion to Compel Document Production and Complete Written Discovery Responses of Defendant American Senior Benefits, LLC [Doc. No. 72] is granted in part and denied in part. Defendant must supplement its MIDP responses, consistent with this order, by January 22, 2021. SO ORDERED. ENTERED: Footnotes [1] The Northern District of Illinois' Amended Standing Order regarding MIDP provides for initial disclosures that supersede the disclosures required by Rule 26(a)(1).