Opinion
99 Civ. 4677 (WK) (KNF)
October 31, 2002
MEMORANDUM and ORDER
In this action, which contains, inter alia, allegations of trademark counterfeiting and trademark infringement, a dispute has arisen concerning the appropriate scope of a proposed protective order. The parties agree that certain information the parties have should be withheld from public disclosure under an order issued pursuant to Rule 26(c) of the Federal Rules of Civil Procedure. However, the parties are unable to agree on the issue of whether, as plaintiffs have proposed, the protective order should include two discrete categories of confidential information, namely, "Confidential" and "Confidential — Attorneys Only."
Under Fed.R.Civ.P. 26(c)(7), a court, upon a showing of good cause, may "make any order which justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including . . . that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a designated way."
Under the terms of the proposed protective order, which is titled "Stipulated Order of Protection," information subject to disclosure may be designated either "Confidential" or "Confidential — Attorneys Only" if it is such that a party to this action "reasonably and in good faith believes" that the information is "a trade secret or other confidential research, development, or commercial information" entitled to protection pursuant to Fed.R.Civ.P. 26(c)(7). In addition, the proposed order provides that information designated "Confidential" may be disclosed to, among others, outside counsel of record, independent experts, a party's in-house legal counsel, and "one person who is a party or employee of a party," whereas disclosure of information designated "Confidential — Attorneys Only" is restricted to outside counsel and independent experts.
Pursuant to the proposed protective order, information marked "Confidential" or "Confidential — Attorneys Only" may also be disclosed to necessary clerical and legal personnel employed by counsel, the Court and its employees, court reporters, persons identified as the authors of writings containing confidential information, jurors and any other persons that the Court designates.
Plaintiffs contend that the inclusion in a protective order of a provision stipulating two levels of confidentiality is common practice in litigation involving trade secrets and is warranted in this case. The defendants are opposed to the inclusion in the protective order of the proposed categories of confidential information. They propose, among other things, to delete from the draft protective order all references to the designation "Confidential — Attorneys Only," on the ground that this restriction interferes seriously with their efforts to present a successful defense.
The Court has reviewed the parties' submissions and has concluded that their interest in having the Court resolve this issue is somewhat premature. As plaintiffs suggest, trial courts commonly enter protective orders that restrict disclosure of trade secrets and other confidential commercial information to counsel and experts. See Vesta Corset Co., Inc. v. Carmen Foundations, Inc., No. 97 Civ. 5139, 1999 WL 13257, at *3 (S.D.N.Y. Jan. 13, 1999) (citing Quotron Systems, Inc. v. Automatic Data Processing, Inc., 141 F.R.D. 37, 40 [S.D.N.Y. 1992]). However, when disclosure is limited in this way, typically the court has determined that a specific item or category of information is a trade secret or is confidential in the requisite sense. See, e.g., NBA Properties, Inc. v. Untertainment Records LLC, No. 99 Civ. 2933, 1999 WL 642822, at *1-2 (S.D.N.Y. Aug. 24, 1999) (limiting disclosure of two specific categories of information, marketing strategy and information about illegal or immoral behavior, to attorneys only); Vesta Corset Co., 1999 WL 13257, at *3-4 (limiting disclosure of certain pricing and marketing information to counsel and experts); Rywkin v. New York Blood Center, No. 95 Civ. 10008, 1999 WL 435242, at *1-3 (S.D.N.Y. June 25, 1999) (limiting disclosure of certain research materials determined to be trade secrets to plaintiff, her counsel and experts); Princeton Management Corp. v. Assimakopoulos, No. 91 Civ. 5192, 1992 WL 84552, at *1 (S.D.N.Y. Apr. 10, 1992) (limiting disclosure of defendant's course manual and related study materials to two designated representatives of the plaintiff).
In the instant case, the draft protective order does not describe with specificity the information or types of information the parties seek to protect by entry of the order. Moreover, no documents or other materials have yet been marked by the parties to this action as "Confidential" or "Confidential — Attorneys Only." Compare, e.g., Quotron Systems, 141 F.R.D. at 39-40 (denying plaintiff's motion for entry of a protective order pending reclassification by the defendants of certain documents previously marked, improperly, as "highly confidential").
Accordingly, until such times as information designated as confidential becomes the subject of a dispute between the parties, the document proposed by plaintiffs, titled "Stipulated Order of Protection," shall govern discovery in this action.
In this regard, it should be noted that the proposed protective order provides for such an eventuality: "In the event that a party receiving information that the producing party has designated CONFIDENTIAL or CONFIDENTIAL — ATTORNEYS ONLY disagrees with the propriety of that designation, the parties will first try, in good faith, to resolve such dispute . . . [or] may present the dispute to the Court for judicial resolution."