DELTONA TRANSFORMER CORPORATION, Plaintiff, v. THE NOCO COMPANY, Defendant Case No. 6:19-cv-308-Orl-41LRH United States District Court, M.D. Florida Filed March 09, 2020 Counsel Dominique J. Carroll, Pro Hac Vice, Fox Rothschild LLP, Lawrenceville, NJ, Alex Louis Braunstein, Megan Anne McNamara, Patricia M. Flanagan, Fox Rothschild, LLP, West Palm Beach, FL, for Plaintiff. Lida Rodriguez-Taseff, Law Office of Lida R. Rodriguez-Taseff, Opa Locka, FL, Meredith M. Wilkes, Pro Hac Vice, Kerry A. Barrett, Pro Hac Vice, Jones Day, Cleveland, OH, Andrew J. Turnier, Jones Day, Miami, FL, Ann K. Ford, Pro Hac Vice, Devika Persaud, DLA Piper US, LLP, Washington, DC, Gregory A. Castanias, Pro Hac Vice, Jones Day, Washington, DC, John M. Nading, Pro Hac Vice, DLA Piper US, LLP, Washington, DC, Kristina K. Cercone, Pro Hac Vice, Jones Day, Chicago, IL, Maia Sevilla-Sharon, Ryan Dwight O'Quinn, DLA Piper US LLP, Miami, FL, Stuart Eric Pollack, Pro Hac Vice, DLA Piper US LLP, New York, NY, for Defendant. Hoffman, Leslie R., United States Magistrate Judge Order *1 This cause came on for consideration without oral argument on the following motion filed herein: MOTION: DEFENDANT AND COUNTERCLAIMANT THE NOCO COMPANY'S MOTION FOR PROTECTIVE ORDER AND MEMORANDUM IN SUPPORT (Doc. 67) FILED: December 19, 2019 THEREON it is ORDERED that the motion is DENIED. I. Background On February 14, 2019, Plaintiff Deltona Transformer Company (“Deltona”) filed a multi-count Complaint against Defendant The NOCO Company (“NOCO”) alleging, among other things, trademark infringement and false designation of origin and unfair competition under the Lanham Act, common law trademark infringement, and violations of the Florida Deceptive and Unfair Trade Practices Act. (Doc. 1).[1] The parties filed their Case Management Report on April 24, 2019 (Doc. 32), thus discovery has been open at least since that time. See Fed. R. Civ. P. 26(d)(1); Local Rule. 3.05(c)(2)(B). The Court entered its Case Management and Scheduling Order (“CMSO”) on May 9, 2019 (Doc. 36), setting a discovery deadline of June 15, 2020. The parties thereafter engaged in discovery, with Deltona propounding requests for production upon NOCO on June 29, 2019. (See Doc. 49). There were issues with NOCO's responses to this discovery, resulting in Deltona filing a motion to compel on October 18, 2019. (Id.). NOCO responded to the motion (Doc. 51), and I held a hearing on the motion on December 3, 2019. (Docs. 53, 61). I made several rulings at the hearing, which were memorialized in an order dated December 4, 2019. (Doc. 64). For purposes of the present Order, I limited Deltona's eighth and ninth requests for production to all documents that mention the “Asserted Marks” or “Accused Marks” as those terms were defined by Deltona in its first set of requests for production, and limited the time period for such production to January 1, 2015 to present. (Id. at 3-5).[2] I further directed NOCO to serve Deltona with all documents responsive to these modified requests for production on or before December 20, 2019. (Id. at 5). At no time prior to the hearing, did NOCO move for a protective order with respect to any of the issues addressed in the motion to compel. I noted this point several times during the December 3, 2019 hearing. (Doc. 65, at 12, 28). However, at the conclusion of my discussion with the parties concerning Deltona's eighth and ninth requests for production, I noted that once NOCO began the process of responding to these requests, if NOCO determined that any identified documents involved “areas that are not relevant to this case” or are “overly broad” that NOCO was welcome to file a motion for protective order. (Id. at 51-52). I further noted that given the early stage of the discovery process, it would be impossible to ascertain whether any documents would fall into such categories.[3] *2 On December 19, 2019, NOCO took me up on my invitation and filed a Motion for Protective Order (Doc. 67). NOCO seeks a protective order limiting the scope of NOCO's document production in response to Deltona's eighth and ninth requests for production “to exclude all documents (either in their entirety or redacted where otherwise responsive) that mention [Deltona's] alleged marks at issue in this case solely in reference to Plaintiff in a legal, non-infringing manner that neither constitutes ‘use in commerce’ to support an allegation of trademark infringement or unfair competition ... nor has any bearing on how the relevant purchasing public perceives [Deltona's] alleged marks for purposes of counterclaims for cancellation of genericness....” (Id. at 1-2).[4] See also Id. at 16 (repeating that NOCO seeks a protective order limiting the scope of production “to exclude all documents (either in their entirety or redacted where otherwise responsive), that mention Deltona's Alleged Marks to refer to Deltona in a legal, non-infringing manner.”). Deltona has filed a response in opposition (Doc. 69), and the Motion for Protective Order is ripe for disposition. II. Applicable Law “The Federal Rules of Civil Procedure strongly favor full discovery whenever possible.” Farnsworth v. Procter & Gamble Co., 758 F.2d 1545, 1547 (11th Cir. 1985). However, discovery is not without limits. A party or person from whom discovery is sought may seek a protective order protecting them from “annoyance, embarrassment, oppression, or undue burden or expense.” Fed. R. Civ. P. 26(c)(1). The party or person moving for a protective order must show “good cause” exists for the court to issue such an order. Fed. R. Civ. P. 26(c)(1). A showing of good cause “contemplates a particular and specific demonstration of fact as distinguished from stereotyped and conclusory statements.” United States v. Garrett, 571 F.2d 1323, 1326 n.3 (5th Cir. 1978).[5] “[W]hether good cause exists for a protective order is a factual matter to be decided by the nature and character of the information in question[.]” Chicago Tribune Co. v. Bridgestone/Firestone, Inc., 263 F.3d 1304, 1315 (11th Cir. 2001). In addition to showing good cause, the moving party must show that, on balance, its interest in seeking the protective order outweigh the interests of the opposing party. McCarthy v. Barnett Bank of Polk Cty., 876 F.2d 89, 91 (11th Cir. 1989). III. Analysis A. The Motion for Protective Order Lacks Specificity NOCO's Motion for Protective Order is due to be denied for several reasons. First, NOCO has failed to satisfy the specificity requirement necessary for the issuance of a protective order. “A protective order should be entered only when the movant makes a particularized showing of ‘good cause’ and specific demonstration of fact by affidavit or testimony of a witness with personal knowledge, of the specific harm that would result from disclosure or loss of confidentiality; generalities, conclusory statements and unsupported contentions do not suffice.” Dovin v. Nair and Co., Inc., No. 2:08-cv-104-FtM-29SPC, 2009 WL 10670056, at *1 (M.D. Fla. Jun. 30, 2009). “Thus, the Court should only issue a protective order when the movant demonstrates, through affidavit or testimony, the specific harm that would result from disclosure or loss of confidentiality.” Evanston Ins. Co. v. Republic Properties, Inc., No. 6:16-cv-1649-Orl-40GJK, 2017 WL 3723613, at *4 (M.D. Fla. Jun. 15, 2017). “[G]eneralized concerns, conclusory statements, or unsupported contentions are not sufficient reasons for entry of a protective order.” Id. (citing Dovin, 2009 WL 10670056, at *1; Garrett, 571 F.2d at 1326 n.3). *3 NOCO's motion, while lengthy, does not provide the necessary detail. There are no affidavits or testimony from any witness with personal knowledge about the nature or contents of the documents NOCO seeks to withhold. Rather, NOCO just repeatedly mentions “documents that clearly use the Alleged Marks to refer to Deltona,” or documents that mention the Alleged Marks “in a legal, non-infringing manner” without giving any further details. NOCO does not even specify if these documents are emails, memoranda, letters, or other correspondence. (See, e.g., Doc. 67 at 2, 8, 16). How exactly is the Court to ascertain whether any of these unidentified documents fall into these amorphous categories? Moreover, it would seem that determining whether something references the Alleged Marks “in a legal, non-infringing manner” goes to the crux of the case – in other words, as Deltona argues in response, it would appear that NOCO wishes the Court to make admissibility and substantive determinations as to whether or not NOCO has infringed on Deltona's trademarks. Such issues are not before the Court at this time. NOCO attempts to narrow its request to “internal NOCO documents using the Alleged Marks to refer to Deltona,” and “documents between NOCO and third-parties using the Alleged Marks to refer to Deltona.” (Doc. 67 at 8). Again, NOCO has provided no affidavits or other testimony to support this request, nor has NOCO even provided an exemplar with which the Court could attempt to figure out what NOCO wants. On this basis alone, NOCO's motion is due to be denied. See Wyndham Hotels & Resorts, LLC v. Leisure Getaways, Inc., No. 6:17-cv-501-Orl-31GJK, 2017 WL 10059023, at *3 (M.D. Fla. Oct. 25, 2017) (“[T]he Court will only issue a protective order on the basis of confidentiality when the moving party demonstrates, through affidavit or other evidence, that each responsive document that is withheld is truly confidential and a specific harm would result from its disclosure or loss of confidentiality.... To make such a showing, the motion for protective order should include an appendix that contains affidavits or other evidence upon which the party relies to support its claim of confidentiality as to each withheld document. The appendix should be organized so the evidence submitted in support of the movant's claim of confidentiality is correlated with each withheld document to which the evidence applies. In short, the motion for protective order and the supporting appendix must be establish a prima facie case for confidentiality protection as to each withheld document.”). NOCO further argues that the unidentified documents they seek to withhold “contain competitively sensitive commercial information that should be protected from disclosure,” particularly where the party requesting the documents is a competitor of NOCO's. (Doc. 67 at 9). However, “it is not proper to refuse to produce discoverable information based on a general assertion that the information is confidential and proprietary .... Many cases between competitors have been litigated and case law is replete with ways in which truly confidential and proprietary information can be produced in discovery.” Gamecraft, LLC v. Vector Putting, LLC, No. 6:12-cv-51-Orl-28KRS, 2012 WL 12899018, at *3 (M.D. Fla. Jun. 22, 2012) (citing Lockheed Martin Corp. v. Boeing Co., No. 6:03-cv-796-Orl-28KRS, 2005 WL 5278461 (M.D. Fla. Jan. 26, 2005)). Indeed, NOCO has employed one such method – a negotiated and executed confidentiality agreement – which the Court will address below. Cf. Rail Trusts Locomotive Leasing, LLC v. SunCoke Energy, Inc., No. 3:15-cv-1112-J-39MCR, 2016 WL 8929072, at *3 (M.D. Fla. Oct. 25, 2016) (denying motion for protective order on the conclusory basis that the documents would likely reveal confidential business information where the parties entered into a stipulated confidentiality agreement). B. NOCO's Relevancy Argument Fails Next, NOCO argues that the information it seeks to withhold is not relevant and therefore outside the scope of Deltona's discovery requests. The Court disagrees. “Relevant evidence is evidence having ‘any tendency to make a fact more or less probable than it would be without the evidence; and the fact is of consequence in determining the action.’ ” Government Employees Ins. Co. v. Clear Vision Windshield Repair, L.L.C., No. 6:16-cv-2077-Orl-28TBS, 2017 WL 7370979, at *1 (M.D. Fla. Mar. 20, 2017). Moreover, “[t]he term ‘relevant’ in Rule 26 should encompass ‘any matter that bears on, or that reasonably could lead to other matter that could bear on, any issue that is or may be in the case.’ ” United States v. South Capital Constr., Inc., No. 8:16-cv-705-T-24JSS, 2018 WL 7017404, at *1 (M.D. Fla. June 26, 2018) (citing Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)). Thus, “[w]here there is doubt over relevancy, discovery should still be permitted.” Kennedy v. McKnight, No. 17-14041-CIV-MARTINEZ/MAYNARD, 2017 WL 4654446, at *1 (S.D. Fla. Oct. 17, 2017) (citing Fair Housing Ctr. Of the Greater Palm Beaches, Inc. v. High Point of Delray Beach Condo. Ass'n., Section 1, Inc., No. 05-81040, 2006 WL 8066685, at *3 (S.D. Fla. Oct. 23, 2006)). *4 Here, NOCO argues that the documents it seeks to withhold are not relevant because they do not constitute an allegedly infringing use of the Alleged Marks “in commerce” and “do not bear on the analysis of whether there is a likelihood of confusion under the Lanham Act.” (Doc. 67 at 11). NOCO further argues that the documents at issue are not relevant to NOCO's genericness counterclaims, because they are not documents transmitted to the general public. (Id.). Once again, NOCO is putting the proverbial cart before the horse, and asking the Court, in the course of resolving discovery motions, to make determinations concerning the key issues in this case – namely whether or not NOCO has been unlawfully infringing on Deltona's Alleged Marks. That is a question for summary judgment or trial, not for discovery. And as the Court stated at the December 3, 2019 hearing, relevancy for purposes of discovery is far broader than relevancy and admissibility at trial. See Fed. R. Civ. P. 26(b)(1) (“Information within [the] scope of discovery need not be admissible in evidence to be discoverable.”); Davis on behalf of J.D.D. v. Carroll, No. 8:16-cv-998-T-35MAP, 2018 WL 8370049, at *1 (M.D. Fla. Mar. 7, 2018) (“Relevance for discovery purposes is much broader than relevance for trial purposes.”). In addition, Deltona persuasively argues that the information it seeks in its eighth and ninth requests for production is relevant, both to establishing its claims of trademark infringement, and to defending against NOCO's genericness counterclaims. (See Doc. 69 at 13-18). For example, it is possible that the documents NOCO seeks to withhold could be relevant as to NOCO's intent – i.e. willfulness – in its use of the Alleged Marks, and as to the similarity of NOCO's and Deltona's trade channels and customers. See Frehling Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999) (listing the factors to consider in determining whether there is a likelihood of consumer confusion in a trademark infringement case). In addition, and as discussed at the December 3, 2019 hearing, willfulness is a factor that must be looked at to determine punitive damages. Accordingly, the Court finds that the materials Deltona has requested in its eighth and ninth requests for production – and as narrowed by the Court (see Doc. 64 at 4) – fall within the broad definition of relevancy as applied to the issues in this case. NOCO's request for a protective order is due to be denied on this basis. C. The Confidentiality Agreement is Valid and Provides Sufficient Protection NOCO's final argument is that the confidentiality agreement, which it negotiated and executed as of October 2, 2019, will not provide sufficient protection to NOCO if it is ordered to produce the documents presently at issue. NOCO does not argue that the confidentiality agreement is invalid or unenforceable. Instead, NOCO points to Attorney Patricia M. Flanagan, Deltona's lead counsel in this case, and argues that Ms. Flanagan is really acting as Deltona's de facto in-house counsel – more specifically that Ms. Flanagan is essentially an employee or officer of Deltona involved in “competitive decision making” – and therefore any production of documents to Ms. Flanagan (even those marked “attorney's eyes only”) is really a production of documents to Deltona itself. (Doc. 67 at 13-15). I find this argument wanting. First, as already stated, NOCO negotiated and executed a 19-page reciprocal confidentiality agreement with Deltona – and it appears by all accounts that the negotiations occurred with Ms. Flanagan herself. Indeed, Ms. Flanagan has signed the confidentiality agreement on behalf of Deltona. (Doc. 69-2). And other than signing the confidentiality agreement, Ms. Flanagan is nowhere mentioned in it. Moreover, at the time the parties entered into the confidentiality agreement, Ms. Flanagan's relationship with Deltona was well known and not hidden – NOCO nowhere argues that this is newly discovered information, and in fact notes that Ms. Flanagan has worked with Deltona as its outside counsel since at least 2015. (Doc. 67 at 15).[6] Thus, to raise these issues now, several months after NOCO negotiated and executed the confidentiality agreement, is unpersuasive. And, it is glaring that NOCO does not request that Ms. Flanagan be excluded from reviewing these materials, does not assert that it has attempted to modify the confidentiality agreement in any manner to afford NOCO the protections it seeks, and has not refused to produce any other documents during discovery on this same basis.[7] Simply put, “[i]t is disingenuous to negotiate for and enter into a reciprocal confidentiality agreement and then contend that the terms you drafted and agreed to provide insufficient protection.” Life Ins. Settlement Ass'n, Inc. v. Fin. Research Ass'n, LLC, No. 6:07-cv-180-Orl-31DAB, 2007 WL 3171305, at *2 (M.D. Fla. Oct. 25, 2007).[8] See also Superior Consulting Servs., Inc. v. Shaklee Corp., No. 6:16-cv-2001-Orl-31GJK, 2017 WL 2895919, at *3 (M.D. Fla. June 12, 2017) (“Plaintiff fails to provide valid reasons as to why the [parties’ confidentiality agreement] does not afford sufficient protection.”). *5 Having found all of NOCO's arguments to be unpersuasive, the Court will deny NOCO's Motion for Protective Order. And given the length of time that NOCO has already delayed providing the discovery, the Court will also set forth a schedule for NOCO to produce all materials it has withheld in response to Deltona's requests for production 8 and 9, as those requests were previously narrowed by the Court. Moreover, Deltona notes that to the extent NOCO has produced materials in response to these requests for production, many of those documents have been heavily redacted without any apparent explanation. (See Doc. 69 at 9; Doc. 69-1, at ¶ 8). Therefore, NOCO will also be required to produce unredacted copies of the documents identified below. See Fed. R. Civ. P. 26(c)(2) (noting that where a motion for protective order is denied, the court may, on just terms, order that any party or person provide or permit discovery). IV. Sanctions In its response, Deltona requests an award of sanctions, arguing that NOCO filed the Motion for Protective Order in bad faith and in an attempt to vexatiously multiply the litigation of this case. (Doc. 69 at 19). The Court is not willing to go as far as Deltona's characterization of NOCO's motion; however, it is clear to the Court that NOCO's motion is deficient both procedurally and substantively, and that NOCO was not substantially justified in its arguments. As such, an award of sanctions is appropriate. See Fed. R. Civ. P. 26(c)(3); 37(a)(5)(B). Deltona shall be awarded its reasonable fees and costs incurred in the preparation and filing of its response to NOCO's Motion for Protective Order. V. Conclusion Accordingly, it is ORDERED that: 1. NOCO's Motion for Protective Order (Doc. 67) is DENIED. 2. On or before March 16, 2020, NOCO shall produce to Deltona all documents responsive to Deltona's eighth and ninth requests for production, as limited by the Court's December 4, 2019 Order (Doc. 64). If NOCO seeks to withhold any such documents on the basis of attorney-client privilege or attorney work product privilege, NOCO shall submit to Deltona on or before March 16, 2020 a privilege log listing such documents, in the format required by the Court's standing order. In re Standing Order Regarding Privilege Logs, Case No. 6:19-mc-32-Orl-LRH, Doc. 1 (M.D. Fla. June 17, 2019). 3. On or before March 16, 2020, NOCO shall also produce unredacted versions of documents bates numbered NOCO0000749-NOCO0000750; NOCO0000769-NOCO0000778;NOCO0000782; NOCO0000785-NOCO0000792; NOCO0000795-NOCO0000801; and NOCO0000803-NOCO0000809. 4. No extensions of the March 16, 2020 deadline will be granted absent the most exigent of circumstances. 5. On or before March 23, 2020, the parties shall confer in person or via telephone in a good faith effort to agree upon the amount of attorney's fees and costs to be awarded to Deltona pursuant to this Order. If the parties are able to reach agreement, they shall file on or before March 30, 2020 a joint notice with the Court setting forth the agreed amounts. 6. If the parties are unable to reach agreement on the amount of attorney's fees and costs, then on or before March 30, 2020, Deltona may file a motion to quantify the attorney's fees and costs awarded in this Order. The motion for quantification must be supported by evidence concerning counsels’ hourly rate and the time spent on preparing and filing its response, as well as contain appropriate legal authority to support the requested amounts. DONE and ORDERED in Orlando, Florida on March 9, 2020. Footnotes [1] NOCO has filed an answer and counterclaims against Deltona seeking to cancel Deltona's trademarks on the basis that they are generic. (Doc. 55). [2] Deltona's eighth request for production originally requested “All documents, including communications, memoranda, notes, and meeting minutes, that concern or are from, to, or among one or more of Defendant's shareholders, investors, officers, directors, management, or employees which discuss (i) choosing the Accused Mark; (ii) alternatives to the Accused Mark; (iii) the Asserted Marks; (iv) Plaintiff; (v) any of Plaintiff's employees; (vi) Plaintiff's use of the Asserted Marks; or (vii) Plaintiff's products and/or services.” (Doc. 51-1 at 9). Deltona's ninth request for production originally requested “all documents concerning Plaintiff, Plaintiff's employees, the Asserted Marks, or Plaintiff's products and/or services.” (Id. at 10). [3] I recognize that a “motion for protective order is generally untimely if it was made after the date the discovery material was to be produced.” Cornell Pump Co. v. Thompson Pump and Manufacturing Co., Inc., Case No. 6:17-cv-847-Orl-41TBS, 2018 WL 3827248, at *3 (M.D. Fla. Feb. 22, 2018) (quoting Morock v. Chautauqua Airlines, Inc., No. 8:07-cv-210-T-17-MAP, 2007 WL 4322764, at *1 (M.D. Fla. Apr. 30, 2007)). In this case, however, I find that NOCO's Motion for Protective Order is not untimely as I specifically invited NOCO to seek such relief with respect to these very requests for production. (See Doc. 65 at 51-52). [4] On December 20, 2019, NOCO filed a “Notice of Compliance” in which it states that it has served upon Deltona second amended responses to Deltona's requests for production, all relevant unredacted documents, a further supplemental production of documents, and NOCO's privilege log. (Doc. 68). NOCO further states that it has withheld production of documents responsive to requests for production 8 and 9 “in good faith” and pursuant to its recently filed Motion for Protective Order and its privilege log. (Id.). [5] The Eleventh Circuit adopted as binding precedent all decisions of the former Fifth Circuit handed down prior to the close of business on September 30, 1981. Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc). [6] NOCO did not raise any concerns about Ms. Flanagan or about the confidentiality agreement in response to Deltona's motion to compel, or at the December 3, 2019 hearing. And while I invited NOCO to move for a protective order, my invitation was expressly limited to the issue of whether Deltona's eighth and ninth requests for production, as limited by the Court, remained either overly broad or resulted in the production of irrelevant information. It is therefore questionable whether this portion of NOCO's motion is even timely. See Cornell Pump Co., 2018 WL 3827248 at *3. [7] Perhaps the reason why NOCO has not engaged in any of these actions is because it realizes its argument is tenuous at best. The Court has reviewed the cases cited by NOCO in support of its allegations against Ms. Flanagan and finds them to be factually inapposite. The cases either involved situations where in-house counsel were permitted to review confidential materials, or where counsel were named defendants. See PhishMe, Inc. v. Wombat Security Technologies, Inc., No. CV 16-403-LPS-CJB, 2017 WL 4138961, at *1 (D. Del. Sept. 18, 2017); Intel Corp v. VIA Technologies, Inc., 198 F.R.D. 525, 531 (N.D. Cal. 2000); Rubenstein Law, P.A. v. Friedman Law Assocs., No. 8:16-cv-1511-T-36JSS, 2017 WL 385757, at * 2 (M.D. Fla. Jan. 27, 2017). And in Lockheed Martin Corp. v. Boeing Co., No. 6:03-cv-796-Orl-28KRS, 2005 WL 5278461, at *3 (M.D. Fla. Jan. 26, 2005), the court modified an existing protective order to make it more narrow, to preclude in-house counsel involved in competitive decision making with respect to pursuing rocket launch contracts from reviewing certain confidential materials. No such facts exist in this case, other than the simple fact that Ms. Flanagan is Deltona's long-standing outside counsel. [8] The Court is further persuaded by two additional points. First, Deltona has submitted the declaration of Ms. Flanagan herself, in which she states that she is “only outside counsel and I played no role in sales or management matters of any kind. Further, I ... have never attended any sales, management or board meetings.” (Doc. 69-1, at ¶ 7). Second, Deltona points out that if the Court were to adopt NOCO's argument concerning Ms. Flanagan, then the Court would also have no choice but to apply the same ruling to NOCO's lead counsel – Ann Ford – who is also NOCO's outside trademark counsel as well as counsel of record in this case. (Doc. 69 at 18, n. 17; Doc. 69-1 at ¶ 4; Doc. 69-3).