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CSL Silicones Inc. v. Midsun Group Inc.

United States District Court, D. Connecticut

June 27, 2016



          Charles S. Haight, Jr. Senior United States District Judge.

         Defendant Midsun Group Inc. ("Midsun") moves pursuant to Fed.R.Civ.P. 26(c)(1)(g), [1] for this Court to enter an order protecting it against any disclosure as to certain of Plaintiff's discovery requests. Doc. 60. It does so mostly on the ground that the information contains purported confidential trade secrets. Defendant earlier filed a nearly identical motion for a protective order. Doc. 40. However, on the same date that Plaintiff filed its opposition to that motion, the parties filed to the docket a jointly-filed Stipulated Protective Order (the "SPO"). Doc. 50. On January 8, 2016, the Court held a hearing on the motions pending before it in this case, including Defendant's earlier motion for a protective order. In the Court's ultimate ruling, it held as follows as to that motion:

As to the protective order, the parties filed to the docket a stipulated protective order that may seem to obviate the need for a ruling by the Court, [Doc. 50], although the issue was not so clear given counsels' statements at the hearing. The parties are directed to confer regarding the status of [this] motion[]. In the meantime, the Court finds it administratively prudent to DENY [THE] MOTION[] WITHOUT PREJUDICE to refiling following the parties' conference on these issues.

CSL Silicones Inc. v. Midsun Grp. Inc., 2016 WL 1060189, at *12 (D. Conn. Mar. 15, 2016). Evidently, the parties have now conferred, to no avail, leading Defendant to file its renewed motion for a protective order on March 25, 2016. This Ruling resolves Defendant's renewed motion.

         I. DISCUSSION

         The Federal Rules envision a broad scope of discovery in civil actions. Specifically,

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.

         Fed. R. Civ. P. 26(b)(1). Clearly, however, discovery is far from absolute. Relevant here are two such avenues for withholding material from discovery. First, grounded in Rule 26(b)(1) itself, a party need not produce material that is not "relevant to any party's claim or defense." Second, Rule 26(c)(1)(G) allows a party to move for a protective order "requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way."

         Prior to assessing Defendant's specific arguments, the Court must make a preliminary note as to Defendant's submissions. A continuing feature of its papers submitted to this Court, Defendant's papers on the instant motion are far from a model of clarity. For example, under the heading "TRADE SECRETS: Interrogatory 7, 13; Request for Production 36, 37, 39 and 40, " Defendant makes arguments as to the relevance of Interrogatory #8. Doc. 60, at 7. Note that its heading makes no indication that what follows will contain an objection as to relevance, rather than trade secrets, and makes no mention of Interrogatory #8. This is just one instance of the conflation within Defendant's motion of its arguments as to relevance and as to trade secret protection. See, e.g., Doc. 60, at 7 ("The foregoing is a trade secret. None of these queries relate to the Polaroid factors."). The relevance of the requested documents, and whether they are protected trade secrets, are entirely independent and separate avenues of inquiry.

         In light of the sloppiness of its papers, it is simply unclear the exact relief Defendant requested. As another notable example, Defendant expressly summarizes on page one of its memorandum of law that "[t]his motion addresses" Plaintiff's interrogatories 7, 8, 12, and 13, and Plaintiff's "requests for product [sic] 36, 37, 39, 40." Doc. 60, at 1. However, the motion then goes on to raise issues as to other discovery requests, specifically, Plaintiff's interrogatories 6, 7, 9, 12, 13, and 14 and requests for production 27, 28, and 32. Then, Defendant somehow claims in its reply brief that "had Plaintiff carefully read Defendant's renewed motion it does not extend to Interrogatory 6, " "does not extend to Interrogatory 14, " and "does not extend to Request for Production 32." Doc. 69, at 6. This is non-sensical. For example, its memorandum expressly states: "Requests 28 and 32 seek 'the classes or types of purchasers to whom Defendant's goods or services' under Defendant's marks. These are confusing and speculative, and together with Interrogatories 6, 7, 12, 13 and 14 are not limited in scope or time." Doc. 60, at 9 (emphases added).

         In light of the above, the Court will take Defendant at its word and presume the motion only seeks a protective order as to Plaintiff's interrogatories 7, 8, 12, and 13, and Plaintiff's requests for production 36, 37, 39, and 40.

         A. Relevance

         The challenged discovery requests seek information and documents as to the composition, formulation, design, development, sourcing, and testing of Defendant's products alleged to have been sold under Plaintiff's mark. Defendant argues any such information is irrelevant because "[n]o issue in the current cases depends, for its resolution, on knowledge ascertainable from the disputed [discovery requests]." Doc. 60, at 2. Plaintiff responds that because such documents relate to the relative quality of the two products, they are relevant. Doc. 68, at 6. It is true that a central factor of the "likelihood of consumer confusion" test arising out of Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir. 1961) is the "respective quality of the products." Int'l Info. Sys. Sec. Cert. Consortium, Inc. v. Security Univ., LLC, ___ F.3d ___, 2016 WL 2893172, at *5 (2d Cir. May 18, 2016). Plaintiff also points out that if Midsun's product is of inferior quality, there is an increased likelihood that it faces actual damages upon confusion. The Second Circuit has spoken specifically to these twin relevancies of the quality of a product in a trademark infringement suit:

Essentially, there are two issues with regard to quality, but only one has relevance to determining the likelihood of confusion. If the quality of the junior user's product is low relative to the senior user's, then this increases the chance of actual injury where there is confusion, i.e., through dilution of the senior user's brand. . . . [S]ee, e.g., Lois Sportswear, 799 F.2d at 875. A marked difference in quality, however, actually tends to reduce the likelihood of confusion in the first instance, because buyers will be less likely to assume that the senior user whose product is high-quality will have produced the lesser-quality products of the junior user. Conversely, where the junior user's products are of approximately the ...

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