Addison Whitney, LLC v. Cashion

2020 NCBC 48

• Court: North Carolina Business Court
• Decided: June 10, 2020
• Docket: 17-CVS-1956
• Status: Published

Opinion

Addison Whitney, LLC v. Cashion, 2020 NCBC 48.

STATE OF NORTH CAROLINA IN THE GENERAL COURT OF JUSTICE SUPERIOR COURT DIVISION MECKLENBURG COUNTY 17 CVS 1956

ADDISON WHITNEY, LLC,

Plaintiff,

v. ORDER AND OPINION ON BRANNON CASHION; VINCENT PLAINTIFF’S MOTIONS FOR BUDD; RANDALL SCOTT; CONTEMPT AGAINST JOHN MILLER ANDREW CUYKENDALL; AMY BAYNARD; JENNIFER RODDEN; AND TO COMPEL DISCOVERY AND and LEADERBOARD BRANDING, DEFENDANTS’ MOTION TO COMPEL LLC, DISCOVERY Defendants.

1. This lawsuit, filed in January 2017, has generated an abundance of

discovery disputes, leading to lengthy extensions of the case calendar. To bring

discovery to a close and move to the next phase of litigation, the Court directed the

parties to confer in good faith about lingering discovery issues and, if needed, to

submit any insoluble disputes for resolution. Pending are three motions, comprising

twenty or more distinct discovery disputes.

Littler Mendelson, P.C., by Michael Scott McDonald, Stephen D. Dellinger, Steven A. Nigh, Allan H. Neighbors, IV, and Elise Hofer McKelvey, for Plaintiff Addison Whitney, LLC.

Van Hoy, Reutlinger, Adams & Dunn, PLLC, by G. Bryan Adams, III, for Defendants Brannon Cashion, Vincent Budd, Randall Scott, Andrew Cuykendall, Amy Baynard, Jennifer Rodden, and Leaderboard Branding, LLC, and for nonparty respondent John Miller.

Conrad, Judge. I. BACKGROUND

2. This litigation is between a branding company and six former officers and

employees. 1 Addison Whitney, LLC pitches itself as a specialist in branding strategy

with a focus on pharmaceutical companies. Most of its management—Brannon

Cashion, Vincent Budd, Randall Scott, Andrew Cuykendall, Amy Baynard, and

Jennifer Rodden—resigned on the same morning in January 2017. They then

launched a competing business named Leaderboard Branding, LLC (together

“Defendants”).

3. Addison Whitney filed suit and sought a preliminary injunction to stop the

competing venture before it started. In short, Addison Whitney’s theory is that the

six former employees conspired to sabotage its business from the inside and to use its

trade secrets as building blocks for a commercial rival. Its claims for relief include

misappropriation of trade secrets, breach of fiduciary duty, conversion, and others.

Defendants insist that they did everything by the book, tending to their duties at

Addison Whitney until the very end and even referring clients to Addison Whitney

after their departure. On a limited record, the Court granted a narrow preliminary

injunction against the use of specific trade secrets but, noting the absence of

noncompete covenants, refused to bar Defendants from competing altogether. See

Addison Whitney I, 2017 NCBC LEXIS 23, at *5–6, 13, 33, 34.

1 Previous orders and opinions detail the nature of this case and its procedural history. See Addison Whitney, LLC v. Cashion, 2017 NCBC LEXIS 23 (N.C. Super. Ct. Mar. 15, 2017) [“Addison Whitney I”]; Addison Whitney, LLC v. Cashion, 2017 NCBC LEXIS 51 (N.C. Super. Ct. June 9, 2017); Addison Whitney, LLC v. Cashion, 2017 NBC LEXIS 111 (N.C. Super. Ct. Dec. 1, 2017). 4. Defendants counterclaimed. They allege that Addison Whitney owes unpaid

wages, mostly from commissions, under the North Carolina Wage and Hour Act.

They also allege that Addison Whitney took a series of unlawful steps to stifle

competition from Leaderboard Branding. Chief among these was a press release

about the preliminary-injunction order, disseminated through an online ad campaign

using Google AdWords. Defendants say the press release was defamatory and

harmed their reputations with prospective clients.

5. Discovery disputes have bubbled up with regularity, especially on the

nettlesome subject of electronically stored information (“ESI”). The parties’ protocol

for ESI discovery was itself a sore spot, requiring the Court to broker an agreement.

(See Parties’ Agreed Upon ESI and Computer Forensic Search Protocol, ECF No. 101

[“ESI Protocol”].) The ESI Protocol addresses the preservation, retrieval, and

production of information stored on computers, on other electronic devices, and in

remote e-mail and cloud storage accounts (such as Gmail or Dropbox). It also includes

privilege, confidentiality, and privacy protections. Throughout, the protocol stresses

the need for coordination between the parties and their forensic experts. (See, e.g.,

ESI Protocol 3–5, 8, 9.)

6. Other sore spots have persisted. Each side accuses the other of running up

costs. Defendants believe Addison Whitney’s demands for ESI are intrusive and

burdensome; Addison Whitney has long complained of a data dump by Defendants.

Faced with a motion to compel in early 2018, (see Pl.’s 1st Mot. Compel, ECF No. 121),

Defendants withdrew their objections and began producing complete images of thumb drives, laptops, and other devices. In a joint status report, Defendants said they did

so to give Addison Whitney latitude “to conduct searches for documents and

information on its own terms to ensure that there were no claims of inadequate or

incomplete production.” (Parties’ Joint Status Report 2, ECF No. 127.) If those were

the goals, the effort misfired. Addison Whitney complained that the production was

both excessive (because Defendants did not identify specific documents) and likely

incomplete (because Defendants might have withheld other computers and online

accounts). (See Parties’ Joint Status Report 2.) At that point, though, Addison

Whitney had gotten what it initially sought and did not press for specific additional

relief, mooting the underlying motion. (See generally Order on Disc. Mots., ECF No.

128.) These arguments would recur as discovery progressed, requiring several

conferences with the Court.

7. Disputes often mean delay in litigation. At the parties’ requests, the Court

extended the discovery period six times. (See ECF Nos. 114, 118, 131, 136, 150, 162.)

The last extension required all discovery to be completed by early March 2019. (See

Order on Mot. Modify Case Mgmt. Order Deadlines 1, ECF No. 162.)

8. Less than a month before that deadline, the Court addressed the status of

discovery at an in-person hearing. The Court directed counsel to confer and give a

report itemizing the discovery that remained outstanding, any anticipated disputes,

and an estimate of the time needed to complete discovery. The only point of consensus

was that each side continued to be unhappy with the other’s discovery responses. To

move things along, the Court gave counsel one more chance to narrow their disputes in good faith and also set a deadline to submit any and all lingering disputes. (See

Order on Case Mgmt. Sched. 2, ECF No. 174.)

9. At issue are nearly two dozen disputes divided among three motions.

Addison Whitney has filed a motion for contempt against John Miller, a nonparty.

(See Pl.’s Mot. Contempt Against John Miller, ECF No. 166 [“Pl.’s Contempt Mot.”].)

In addition, Addison Whitney and Defendants have both filed motions to compel the

other to produce documents and ESI. (See Pl.’s 2d Mot. Compel, ECF No. 196; Defs.’

Mot. Compel, ECF No. 194.) The record is voluminous, and many of the 100 or so

exhibits were filed provisionally under seal, often unnecessarily. All three motions

are ripe for determination, having been fully briefed and argued at a hearing on July

31, 2019, at which all parties and Miller were represented by counsel.

II. ANALYSIS

10. The rules governing discovery are liberal by design. In general, “[p]arties

may obtain discovery regarding any matter, not privileged, which is relevant to the

subject matter involved in the pending action . . . .” N.C. R. Civ. P. 26(b)(1). “The test

of relevancy under Rule 26 is not, of course, the stringent test required at trial. The

rule is designed to allow discovery of any information ‘reasonably calculated to lead

to the discovery of admissible evidence . . . .’ ” Willis v. Duke Power Co., 291 N.C. 19,

34, 229 S.E.2d 191, 200 (1976) (emphasis in original) (quoting N.C. R. Civ. P. 26(b)).

11. Yet even liberal discovery has its limits. Rule 26, though generous, should

not be construed as an invitation for parties “to roam at will in the closets of others.”

Reynolds Am., Inc. v. Third Motion Equities Master Fund, Ltd., 2018 NCBC LEXIS 115, at *5 (N.C. Super. Ct. Nov. 7, 2018) (alteration, citation, and quotation marks

omitted). Courts can and should curb discovery when it would be “unreasonably

cumulative or duplicative” or otherwise “unduly burdensome or expensive.” N.C. R.

Civ. P. 26(b)(1a). “One party’s need for information must be balanced against the

likelihood of an undue burden imposed upon the other.” Willis, 291 N.C. at 34, 229

S.E.2d at 200.

12. Here, the parties have also asserted the attorney-client privilege and the

work-product doctrine as grounds to resist discovery. “When the relationship of

attorney and client exists, all confidential communications made by the client to his

attorney on the faith of such relationship are privileged and may not be disclosed.”

Dickson v. Rucho, 366 N.C. 332, 340, 737 S.E.2d 362, 369 (2013) (alteration, citation,

and quotation marks omitted). The party asserting the attorney-client privilege has

the burden to show that

(1) the relation of attorney and client existed at the time the communication was made, (2) the communication was made in confidence, (3) the communication relates to a matter about which the attorney is being professionally consulted, (4) the communication was made in the course of giving or seeking legal advice for a proper purpose although litigation need not be contemplated and (5) the client has not waived the privilege.

State v. Murvin, 304 N.C. 523, 531, 284 S.E.2d 289, 294 (1981). “If any one of these

five elements is not present in any portion of an attorney-client communication, that

portion of the communication is not privileged.” In re Miller, 357 N.C. 316, 335, 548

S.E.2d 772, 786 (2003).

13. The work-product doctrine serves a more limited purpose: to “safeguard the

lawyer’s work in developing his client’s case.” Evans v. United Servs. Auto Ass’n, 142 N.C. App. 18, 29, 541 S.E.2d 782, 789 (2001) (citation and quotation marks omitted).

The doctrine applies only to “documents and tangible things” that were “prepared in

anticipation of litigation or for trial by or for another party or by or for that other

party’s consultant, surety, indemnitor, insurer, or agent . . . .” N.C. R. Civ. P. 26(b)(3).

“Materials prepared in the ordinary course of business are not protected by the

work-product doctrine.” In re Ernst & Young, LLP, 191 N.C. App. 668, 678, 663

S.E.2d 921, 928 (2008), aff’d as modified in part, 363 N.C. 612, 684 S.E.2d 151 (2009).

Our courts have stressed that “[t]his immunity should be narrowly construed” and

that the party asserting it bears the burden of proof. Kelley v. Charlotte Radiology,

P.A., 2019 NCBC LEXIS 84, at *8 (N.C. Super. Ct. May 15, 2019); see also Berens v.

Berens, 247 N.C. App. 12, 22–23, 785 S.E.2d 733, 741–42 (2016); Isom v. Bank of Am.,

N.A., 177 N.C. App. 406, 412–13, 628 S.E.2d 458, 462–63 (2006).

14. All these matters lie within the trial court’s sound discretion. See, e.g.,

Wachovia Bank, N.A. v. Clean River Corp., 178 N.C. App. 528, 531, 631 S.E.2d 879,

882 (2006); Nationwide Mut. Fire Ins. Co. v. Bourlon, 172 N.C. App. 595, 601, 617

S.E.2d 40, 45 (2005). For issues not definitively addressed by North Carolina courts,

the Court looks to decisions that interpret and apply analogous federal rules. See

Bryson v. Sullivan, 330 N.C. 644, 655, 412 S.E.2d 327, 332 (1992); see also Crosmun

v. Trs. of Fayetteville Tech. Cmty. Coll., 832 S.E.2d 223, 233 (N.C. Ct. App. Aug. 6,

2019) (noting that few North Carolina cases address ESI). A. Addison Whitney’s Motion for Contempt

15. The Court begins with Addison Whitney’s motion for contempt against John

Miller, an attorney who provided legal advice to Budd, Cashion, and Cuykendall

before their resignations from Addison Whitney. Miller helped form Leaderboard

Branding. He also advised Budd, Cashion, and Cuykendall about their plans to

resign and compete against their former employer.

16. Addison Whitney subpoenaed Miller twice, seeking a deposition and

documents. (See Pl.’s Contempt Mot. Exs. 3, 5, ECF Nos. 166.1, 166.3.) Miller did

not respond the first time, but Defendants objected on the grounds of attorney-client

privilege, work-product immunity, and overbreadth. (See Pl.’s Contempt Mot. Ex. 4,

ECF No. 166.2.) Despite Defendants’ objections, the parties and Miller agreed to a

date for his deposition, later canceled by Addison Whitney due to a scheduling

conflict. (See Defs.’ Resp. Opp’n Pl.’s Mot. Contempt [“Defs.’ Contempt Opp’n”] Ex. 3,

ECF No. 173.3.) The deposition was not rescheduled, and no documents were

produced. In lieu of pressing the issue, Addison Whitney served a second, identical

subpoena. (See Pl.’s Contempt Mot. Ex. 5.) Defendants renewed their objections, and

this time, Miller served his own. 2 (See Pl.’s Contempt Mot. Exs. 6, 7, ECF Nos. 166.4,

2 Addison Whitney contends that Miller waived his objections the first time around and that

service of the second subpoena “did not give Mr. Miller another chance to object” because it was “not a new subpoena.” (Pl.’s Contempt Mot. 8.) Addison Whitney cites no law to support that argument. In its discretion, the Court concludes there was no waiver, given Miller’s timely response to the second subpoena and the absence of any evidence of bad faith. And in any event, the attorney-client “privilege belongs solely to the client,” In re Miller, 357 N.C. at 339, 584 S.E.2d at 788, and is therefore “the client’s alone to waive,” Crosmun, 832 S.E.2d at 236. At least Budd, Cashion, and Cuykendall had standing to assert the privilege, and their timely responses would have preserved that objection even if Miller hadn’t. See, e.g., Window 166.5.) When Addison Whitney scheduled the deposition, Miller did not appear. (See

Pl.’s Contempt Mot. Ex. 8, ECF No. 166.6.)

17. This motion followed. Although framed in the language of contempt, the

motion does not actually seek to hold Miller in contempt of court. Rather, Addison

Whitney asks the Court to compel Miller to sit for a deposition and to produce nine

categories of documents, (see Pl.’s Contempt Mot. 1 n.1). See also N.C. R. Civ. P.

45(c)(4) (“If objection is made, the party serving the subpoena may, upon notice to the

subpoenaed person, move at any time for an order to compel the subpoenaed person’s

appearance at the deposition or the production of the materials designated in the

subpoena.”).

18. Defendants contend that Miller should not be compelled to testify or produce

documents because his communications with Budd, Cashion, and Cuykendall were

privileged. (See Defs.’ Contempt Opp’n 5, ECF No. 173.) Addison Whitney argues

that the privilege was waived when Budd and Cashion testified about Miller’s advice

during their depositions. (See Pl.’s Contempt Mot. 5, 8, 12.)

19. The attorney-client privilege is a fragile thing. Litigants must take care not

to disclose privileged material to their opponents because disclosure destroys

confidentiality and waives the privilege that goes along with it. There are exceptions

for some inadvertent disclosures. See, e.g., Morris v. Scenera Research, LLC, 2011

NCBC LEXIS 34, at *23–28 (N.C. Super. Ct. Aug. 26, 2011). But courts rarely show

sympathy when a party intentionally discloses privileged material. See, e.g., State v.

World of Baton Rouge, LLC v. Window World, Inc., 2018 NCBC LEXIS 59, at *6–7 (N.C. Super. Ct. June 19, 2018). Tate, 294 N.C. 189, 193, 239 S.E.2d 821, 825 (1978) (“It is well settled that the

privilege afforded a confidential communication between attorney and client may be

waived by the client when he offers testimony concerning the substance of the

communication.”); Hulse v. Arrow Trucking Co., 161 N.C. App. 306, 310–11, 587

S.E.2d 898, 901 (2003) (following Tate).

20. This is especially so when the disclosure is made to gain advantage in

litigation. It is fundamental that the privilege cannot be used as both sword and

shield. “In other words, when a party entitled to claim the attorney-client privilege

uses confidential information against his adversary (the sword), he implicitly waives

its use protectively (the shield) under that privilege.” Willy v. Admin. Review Bd.,

423 F.3d 483, 497 (5th Cir. 2005). For that reason, “there is ample authority

supporting the proposition that the act of raising an advice of counsel defense waives

the attorney-client privilege with regard to certain matters in a particular dispute.”

Richardson v. Frontier Spinning Mills, Inc., 2011 NCBC LEXIS 40, at *7 (N.C. Super.

Ct. Oct. 6, 2011); see also State v. Fair, 354 N.C. 131, 168, 557 S.E.2d 500, 525–26

(2001) (“Moreover, even if the communication had been confidential, defendant

waived the attorney-client privilege when he presented the substance of the

communication as part of his defense.”).

21. Here, Budd and Cashion testified voluntarily and in detail about the advice

they received from Miller. 3 Without objection by his counsel, Budd explained that

3 Each side submitted excerpts of the deposition transcripts as exhibits.The excerpts of Budd’s deposition testimony appear at ECF Nos. 167.1 and 171.1. The excerpts of Cashion’s deposition testimony appear at ECF Nos. 167.2 and 171.2. we had at least two, if not maybe three, face-to-face meetings with a guy name[d] John Miller who is an attorney here in Charlotte that helped us also establish the LLC and some of those types of things. And he seemed to be a pretty good consult on the, you know, if you’re going to leave this company, here is the best way to leave it. Don’t do this, don’t do that, don’t take anything, don’t plan anything during work hours. So all of the things in which you would continue to be living up to your obligation at Addison Whitney but since it is, you know, your right to— to do this other thing, to come up with a plan B. It was kind of a, you know, just make sure you are adhering to these—these types of items. Don’t take anything, don’t take anything, don’t take anything is what he continued to tell us.

(Dep. V. Budd 230:6–21; see also Dep. V. Budd 236:2–5 (“Q. Well, I thought you were

just telling me that you were advised not to, for example, take anything with you? A.

That was his advice, yes.”); Dep. V. Budd 240:16–20 (“Don’t do any planning on the

company time. If you are continuing to work for Addison Whitney, any—any time

that you spend doing anything other than that should be weekends, nights, mornings,

off days.”).)

22. Budd also testified that Miller gave advice about client relationships. As

the departure date approached, Budd and the others posed various “what-if

scenario[s]” to Miller—for example, if certain clients

didn’t want to work with [Addison Whitney.] So we were, you know, giving him most likely some hypotheticals. And I think that was probably in—and then maybe that happened in January. But I think that was the point in time where we started looking at going if there is any gray area, let’s take the high road, let’s not pursue, let’s not do any of that. So I think that we were probably tracking to getting some of that information from him around that time, January.

(Dep. V. Budd 233:23–234:8.) Miller advised “that if there was a gray area, it would

be in your best interest to shoot those clients back to [Addison Whitney] and let them

satisfy the business.” (Dep. V. Budd 237:6–9.) Along the same lines, Miller told them “absolutely do not contact any customers prior to departure and say that you are

leaving.” (Dep. V. Budd 243:14–15; see also Dep. V. Budd 243:16–17 (“Q. And did you

follow that advice? A. Absolutely.”).) With Miller’s guidance, Defendants also added

a disclaimer to their marketing materials so that work performed during their time

at Addison Whitney would not be attributed to Leaderboard Branding. (See Dep. V.

Budd 305:24–306:9.)

23. Cashion’s testimony, though less extensive, touched on similar themes. He

testified without objection by counsel that he sought advice from Miller about how “to

do this the right way”—referring to resigning and founding a competitor. (Dep. B.

Cashion 124:6.) Miller “asked if [Defendants] had a Non-Compete” and remarked

“[t]hat’s awesome” when told that they did not. (Dep. B. Cashion 124:18–20.)

Cashion also testified that he “believe[d] part of the advice that we got was it would

be better to resign collectively versus in pieces[,]” though he did not say definitively

whether this advice came from Miller or was “advice given from a friend or from a

legal perspective.” (Dep. B. Cashion 150:2–6.)

24. Budd and Cashion disclosed these communications because they—and the

other Defendants—intend to rely on Miller’s advice as a defense, apparently to show

that they acted in good faith before and after leaving Addison Whitney. Defendants’

counsel confirmed as much at the hearing. And Budd said so in his deposition: “I’m

not waiving my attorney/client confidentiality totally. But where I feel as though it

will help my defense, I will answer these questions.” (Dep. V. Budd 230:2–5 (emphasis

added).) 25. The Court concludes that Budd and Cashion voluntarily disclosed the

substance of confidential communications with Miller to Addison Whitney. These

communications are no longer confidential, and having partially disclosed them to

support a defense based on advice of counsel, Defendants cannot “shield the

underlying communications from scrutiny by the opposing party.” In re Grand Jury

Proceedings, 219 F.3d 175, 182 (2d Cir. 2000). The privilege has been waived. 4

26. This waiver extends not only to what has been disclosed but also to all

communications relating to the same subject matter. As this Court recently observed,

the extent of any waiver is a question of fairness.

Parties should not be able to disclose favorable material while concealing damaging material as privileged. Nor is it fair for a party to put the privileged communication into issue—such as through an advice of counsel defense—while relying on the privilege. In both cases, courts “broaden the waiver as necessary to eliminate the advantage.”

Technetics Grp. Daytona, Inc. v. N2 Biomedical, LLC, 2018 NCBC LEXIS 116, at *17–

18 (N.C. Super. Ct. Nov. 8, 2018) (quoting Teleglobe Commc’ns Corp. v. BCE, Inc. (In

re Teleglobe Commc’ns Corp.), 493 F.3d 345, 361 (3d Cir. 2007)).

27. A relatively broad subject matter waiver is appropriate in this case to

prevent any unfair advantage. The subject matter of the communications disclosed

by Budd and Cashion is, broadly defined, the method and manner of their

4 Defendants argue that no waiver occurred because Budd and Cashion prefaced their answers by stating that they did not intend to waive the privilege. (See Defs.’ Contempt Opp’n 2, 3, 5, 6.) That is not correct. “A privileged person would seldom be found to waive if his intention not to abandon could alone control the situation.” Hayes v. Ricard, 244 N.C. 313, 323, 93 S.E.2d 540, 548 (1956) (citation and quotation marks omitted). Budd and Cashion could have asserted privilege and kept the communications with Miller secret. Instead, they chose to disclose Miller’s advice to bolster their defense. Having done so, they cannot now maintain the privilege. resignations from Addison Whitney. Thus, drawing from Defendants’ own

description of Miller’s advice, the Court concludes that the subject matter waiver

includes at least communications about the

implications of not having covenants not to compete with the Plaintiff; their 2007 confidentiality agreements; formation of BVA, LLC; how to depart in the best way possible and to “take the high road” with regard to projects and customers; not to take any property belonging to Plaintiff, refer business back to Plaintiff; don’t do any planning during working hours, continue to perform your normal job duties, and inserting a disclaimer into Leaderboard Branding powerpoints identifying examples of their prior work experience.

(Defs.’ Contempt Opp’n 3.)

28. The upshot is that Miller must appear for a deposition. Addison Whitney

may question him about communications within the scope of the subject matter

waiver. Defendants remain free to object to questions that stray into privileged

communications about other topics.

29. That leaves the nine requests for production attached to Addison Whitney’s

subpoena. Apart from the privilege objection, Miller asserts overbreadth and

work-product immunity. No documents were submitted in camera and no privilege

log was produced, making it impossible to tell whether any given document is

immune or privileged (for example, privileged communications about something

other than Defendants’ departure from Addison Whitney). The Court therefore

decides the objections on the record as it stands.

30. Request number 1 is overbroad because it seeks all communications with

Defendants regardless of the subject. (See Pl.’s Contempt Mot. Ex. 7 at 3.) Rather

than strike the request, the Court modifies it to cover only those communications disclosed by Budd and Cashion and other communications within the subject matter

waiver discussed above—that is, the method and manner of their resignations from

Addison Whitney. Miller shall produce documents responsive to this request, as

modified.

31. Request numbers 2 and 3 ask for documents and communications about

Leaderboard Branding’s formation and ownership. (See Pl.’s Contempt Mot. Ex. 7 at

3, 4.) The objection to these requests appears to be that they are cumulative of other

discovery. (See Defs.’ Contempt Opp’n 10.) The Court overrules that objection.

Defendants do not point to any specific documents they produced on these topics, and

the requests do not appear to be unreasonably cumulative.

32. Request numbers 4 through 6 relate to Miller’s pursuit of trademarks,

copyrights, and patents on Defendants’ behalf. (See Pl.’s Contempt Mot. Ex. 7 at 4–

6.) Request number 7 relates to Miller’s pursuit of financing on their behalf. (See

Pl.’s Contempt Mot. Ex. 7 at 6.) The requests are not overly broad or unduly

burdensome as Defendants contend—indeed, it seems that Miller may not have any

responsive documents, and the burden to say so would be minimal. (See Defs.’

Contempt Opp’n 10.) That said, if Miller has responsive documents, Defendants may

have legitimate privilege objections. Neither Budd nor Cashion testified about

communications with Miller on these subjects, and they do not appear to be related

to the advice-of-counsel defense. Miller should produce any nonprivileged, responsive

documents and identify any documents under a claim of privilege in an appropriate

privilege log. 33. The Court sustains the objection to request number 8. That request, which

asks for “[a]ll work product” prepared by Miller, (Pl.’s Contempt Mot. Ex. 7 at 7), is

overbroad and nonspecific, even if the attorney-client privilege and work-product

immunity do not apply or were waived as Addison Whitney contends. See Alexander

Interactive, Inc. v. Adorama, Inc., 2014 U.S. Dist. LEXIS 84604, at *41–42 (S.D.N.Y.

June 17, 2014) (denying request for “all work product” that did not specify factual

material being sought). Miller need not produce documents responsive to request

number 8.

34. The ninth and final request covers invoices and billing statements for work

Miller performed for Defendants. (See Pl.’s Contempt Mot. Ex. 7 at 7.) Miller objects

to the relevance. (See Defs.’ Contempt Opp’n 10.) The Court is not convinced that

the request is irrelevant, but it does appear to be encompassed by the first request

for communications with Defendants. The Court therefore modifies this request in

similar fashion. Miller shall produce all invoices and billing statements for work

performed within the subject matter waiver discussed above. If the documents

include entries for other matters that remain privileged, those entries may be

redacted and recorded in an appropriate privilege log. No further response is

required.

35. All other objections to the document requests are overruled, including any

work-product objections. Miller has not identified specific documents that supposedly

contain protected work product and therefore has not carried his burden. See, e.g.,

United States v. Hatfield, 2010 U.S. Dist. LEXIS 4026, at *27 (E.D.N.Y. Jan. 8, 2010) (holding that party did not carry her burden when she “failed to identify any specific

documents as privileged or protected by the work product doctrine, and certainly

never presented such documents to the Court”); see also Subramanian v. Lupin Inc.,

2019 U.S. Dist. LEXIS 68776, at *16 (S.D.N.Y. Apr. 23, 2019) (similar); Sonnino v.

Univ. of Kan. Hosp. Auth., 221 F.R.D. 661, 669 (D. Kan. 2004) (similar).

36. Accordingly, the Court grants Addison Whitney’s motion in part. On or

before July 15, 2020, Miller shall appear for a deposition. By the same date, he shall

also produce documents responsive to request numbers 1 through 7 and 9, as

modified. Counsel shall confer and agree to a reasonable time and place for the

deposition, bearing in mind official guidance about COVID-19 precautions and the

need to preserve the health and safety of all.

B. Addison Whitney’s Motion to Compel

37. Addison Whitney’s motion to compel covers a range of matters, mostly

concerning the adequacy of Defendants’ production of ESI and other information.

(See generally Pl.’s 2d Mot. Compel, ECF No. 196.) There are also disputes about

Defendants’ privilege logs and whether to modify the parties’ stipulated protective

order.

a. Text Messages

38. The first dispute relates to Defendants’ production of text messages.

Addison Whitney argues, and Defendants deny, that the production is incomplete.

39. There are two related reasons for Addison Whitney’s suspicion. One is that

some Defendants did not produce any text messages from software platforms they admit having used. Budd and Scott, for example, used the WhatsApp platform yet

did not produce any WhatsApp messages. (See Aff. J. Shapiro ¶¶ 22–25, 31–33, ECF

No. 200.) Likewise, Cuykendall produced no text messages that he sent or received

through Apple’s iMessage service. (See Aff. J. Shapiro ¶¶ 26–30.)

40. The second reason is that some Defendants did not produce messages known

to exist from other sources. These include a text string that Rodden exchanged with

Lizzy Guterma, an Addison Whitney employee, about plans to leave the company in

January 2017. Addison Whitney obtained the texts from Guterma, but Rodden did

not produce them. (See Compl. Ex. A, ECF No. 1; Aff. J. Shapiro ¶¶ 34–44.) The

missing messages also include WhatsApp conversations produced by Baynard and

Rodden but absent from the productions for Budd, Cashion, and Scott, even though

one or more of them were part of the conversations. (See Aff. J. Shapiro ¶¶ 19–25,

31–33.)

41. Defendants do not deny these discrepancies. Neither do they explain them.

A review by Defendants’ forensic expert turned up some of Cuykendall’s iMessages,

which had been inadvertently withheld and have now been produced. (See Aff. C.

Walton ¶¶ 19, 20, 22, ECF No. 205.2.) Otherwise, Defendants insist that they have

“imaged all of their cell phones, and have provided [Addison Whitney] with text

messages, MMS messages, What’s App [sic] messages and any other communications

on those devices, except those which are privileged or private personal

communications.” (Defs.’ Resp. Opp’n Pl.’s 2d Mot. Compel 7, ECF No. 205 [“Defs.’

Opp’n”]; see also Aff. C. Walton ¶¶ 9, 10, 17–20, 23.) 42. Some measure of relief is in order, given the compelling evidence of missing

data and Defendants’ unsatisfying explanation for it. The productions from Baynard

and Rodden show clearly that Budd, Cashion, and Scott did not produce responsive

messages that they either sent or received, but Defendants’ expert could not speak to

“the individual custodians’ circumstances and whether such messages ever existed.”

(Aff. C. Walton ¶ 25.) Perhaps there is an innocent explanation. The messages may

have been overlooked in the same way that Cuykendall’s iMessages were. Other

possible explanations—such as deletion of evidence—are less likely to be innocent.

Either way, when some messages are known to be missing, it is reasonable to wonder

whether others are too. See, e.g., Nursing Home Pension Fund v. Oracle Corp., 254

F.R.D. 559, 565 (N.D. Cal. 2008) (“[H]aving established with certainty that numerous

emails were not produced from Ellison’s email files―because the emails were

produced from other files or accounts―it is impossible to know whether additional

unproduced emails were also deleted or not turned over.”).

43. Addison Whitney requests either an explanation from Defendants (and a

complete production if more messages are found) or access to the images of

Defendants’ devices so that it can perform its own forensic review. The Court opts

for the less intrusive measure. Defendants must investigate the discrepancies. If

Defendants find messages that were inadvertently withheld, the messages should be

produced along with an explanation of how they were recovered. On the other hand,

if Defendants find nothing more, they must explain whether and under what

circumstances the messages were deleted. See Robinson v. City of Ark. City, 2012 U.S. Dist. LEXIS 103807, at *12–13 (D. Kan. July 26, 2012) (compelling party to

“investigate the circumstances surrounding the deletion of” an e-mail and to produce

results of investigation).

b. Third-Party Cloud Accounts

44. A second ESI dispute concerns the method that Defendants used to produce

data from their third-party cloud accounts, such as Gmail or Dropbox. Defendants

produced synced copies of these accounts: roughly speaking, a synced copy is an

electronic folder used to save and store information in a cloud account on a user’s

local computer. (See Aff. C. Walton ¶¶ 11–16.) Addison Whitney argues that this

method of recovery and production violates the parties’ ESI Protocol and asks the

Court to compel Defendants “to immediately arrange for the total capture of [third-

party] cloud accounts . . . .” (Pl.’s 2d Mot. Compel 7.)

45. No violation occurred. The ESI Protocol doesn’t require any particular

method for recovering data from third-party accounts. Twice, it states that the

parties and their experts must confer and agree on a method of capture. (See ESI

Protocol 3 (“[T]he substance of any files or data recovered and produced from a [third-

party account] will be recovered and produced using a method mutually agreed upon

by the Parties [sic] forensic experts . . . .”); ESI Protocol 5 (“[T]he Parties and their

forensic experts will confer and agree upon the best method of capture of the

information in the [third-party accounts].”).) Through mutual neglect, that

conference never happened. Defendants could not have breached an agreement that

was never made. 46. Addison Whitney nevertheless argues that Defendants’ production of synced

“images” was inconsistent with earlier representations that they would perform

complete “downloads” of the accounts. (See Pl.’s 2d Mot. Compel 5–6 & n.3.) The

e-mail traffic in the record does not support that assertion. Defendants’ counsel never

promised a “forensic download” or “forensic capture.” (See Pl.’s 2d Mot. Compel Exs.

17, 18, ECF Nos. 196.16, 196.17.) Indeed, both sides appear to have used the words

“images” and “downloads” interchangeably. (See Pl.’s 2d Mot. Compel Ex. 18 at 4

(e-mails from counsel for Addison Whitney referring to “TPA account images”).)

47. Addison Whitney also argues that the sync process is inadequate because it

can be applied selectively so that some data stored in the cloud would not appear on

the local computer hard drive. (See Aff. J. Shapiro ¶¶ 8–10, 14.) That may be true,

and there are likely more thorough methods of recovery and production. But the

evidence does not show that Defendants used the sync process in bad-faith to hide

data. And if Addison Whitney wanted Defendants to use a more thorough method, it

should have said so in a timely way through the process that it agreed to in the ESI

Protocol. There is no reason to rewrite the ESI Protocol after the fact to prohibit the

production of synced copies or to require a different, more expensive method of

recovery.

48. On this issue, Addison Whitney’s discontent is a product of its own making.

At no point did Addison Whitney request a conference, propose a method of recovery,

or object to Defendants’ efforts to produce data without first reaching an agreement about the method for doing so. The request to compel a complete download of

third-party cloud accounts is denied.

c. Leaderboard Branding’s Financial Information

49. The next dispute relates to Leaderboard Branding’s financial information.

The issue is one of breadth. Addison Whitney asserts that it has received only

incomplete and outdated financial summaries; it seeks a swath of additional data.

(See Pl.’s 2d Mot. Compel 8, 10; Pl.’s 2d Mot. Compel Ex. 21 at 8–11, ECF No. 196.20.)

Defendants say they might be willing to produce discrete items but object to anything

more as overly burdensome. (See Defs.’ Opp’n 9–11.)

50. As the hearing made clear, most of the data that Addison Whitney seeks is

contained in a QuickBooks software file, which Leaderboard Branding uses to keep

its financial and accounting information. Equally clear is that there is no real dispute

about the relevance of that file, just a misunderstanding. Defendants’ counsel

thought the file had been produced. It hadn’t: Addison Whitney searched Defendants’

computer images in vain. (See Aff. D. Hoffman ¶ 6, ECF No. 199.) As best the Court

can tell, Defendants have no reasoned objection to producing the QuickBooks file now,

given that they intended to do so long ago. Defendants also agreed at the hearing to

produce an updated profits and loss statement. Together, these two documents would

largely satisfy Addison Whitney’s needs, and in its discretion, the Court declines to

require any more burdensome and likely cumulative production of other financial

documents. 51. Accordingly, Leaderboard Branding shall produce the QuickBooks file and

an updated profits and loss statement. In all other respects, Addison Whitney’s

request for financial information is denied.

d. Leaderboard Branding’s Confidential Information

52. Addison Whitney requested that Leaderboard Branding “[i]dentify each and

every type of information, whether individually or in compilation, that Defendant

Leaderboard [Branding] considers and treats as confidential, proprietary, or trade

secret to its business.” (Pl.’s 2d Mot. Compel Ex. 21 at 3.) Defendants object to the

request as irrelevant and overly broad. (See Defs.’ Opp’n 11–13; Pl.’s 2d Mot. Compel

Ex. 21 at 3.)

53. This request is facially overbroad. It may be true, as Addison Whitney

contends, that a plaintiff in a trade-secret misappropriation case needs discovery of

information that a defendant considers confidential. But the discovery must be based

on the asserted trade secrets. This request has no limit, calling for every bit of

confidential information from a direct competitor. It is hard to imagine a more

intrusive request.

54. Addison Whitney asserts that it has specified its own trade secrets in

keeping with the requirement that “a plaintiff alleging a trade secret

misappropriation claim must identify its trade secrets with reasonable particularity

before it is allowed to obtain discovery of a defendant’s confidential information and

trade secrets.” DSM Dyneema, LLC v. Thagard, 2014 NCBC LEXIS 51, at *11 (N.C.

Super. Ct. Oct. 17, 2014). Perhaps it has. Even so, the prediscovery disclosure requirement exists so that courts can discern the relevance of the plaintiff’s discovery

requests and prevent needless disclosure of the defendant’s confidential information.

See id. at *11–12. It is not a box-checking exercise that leads to unlimited discovery

of a competitor’s confidential information, whether related to the disclosed trade

secrets or not.

55. Addison Whitney also argues that it needs this information “to test

Defendants’ defense that little to nothing in the industry is confidential or trade

secret . . . .” (Pl.’s Reply Br. 6, ECF No. 218.) If the point is that Defendants keep

some things secret, that isn’t in dispute, and Addison Whitney doesn’t need an

exhaustive list of Defendants’ secrets to prove it. If instead the issue is whether

Addison Whitney’s own alleged trade secrets are public knowledge, then it is simply

looking in the wrong place.

56. The Court denies the request.

e. Privilege Logs

57. Next, Addison Whitney contends that Defendants’ privilege logs are

deficient. (See Pl.’s 2d Mot. Compel 12–13.) A party withholding otherwise

discoverable materials as privileged must serve privilege logs that describe the

information in a way that enables the other parties to assess the privilege claim

without revealing the protected information. See N.C. R. Civ. P. 26(b)(5); Business

Court Rule (“BCR”) 10.5. The case management order requires the parties to provide

the date of the protected communication, the author and recipient, a description of the subject matter, and the privilege asserted, among other things. (See Third Am.

Case Mgmt. Order 5–6, ECF No. 131.)

58. In support, Addison Whitney attaches four pages from Defendants’ privilege

logs in which the entries do not identify the author or recipient of the

communications. (See Pl.’s 2d Mot. Compel Ex. 24, ECF No. 196.21.) Defendants

should revise these pages to correct that deficiency and to comply with the case

management order in all other respects.

59. It is not clear if Addison Whitney also seeks to compel Defendants to revise

other privilege logs that are not in the record. If it does, that request is denied.

Addison Whitney has not offered evidence of other deficiencies. There is no basis to

require comprehensive revisions.

60. Defendants shall revise the entries shown in exhibit 24 to Addison

Whitney’s second motion to compel. In all other respects, Addison Whitney’s motion

to compel as to Defendants’ privilege logs is denied.

f. Bridget Budd’s E-mail Accounts and Laptop Computer

61. For the second time, Addison Whitney seeks to compel discovery responses

from Budd’s wife, Bridget. In early 2018, Addison Whitney learned that Budd had

sent a copy of its training manual to Bridget’s business e-mail address. (See Parties’

Joint Status Report 3.) Based on that single e-mail, Addison Whitney sought a

forensic image of her e-mail account. The Court concluded “that Addison Whitney’s

request to image the entire e-mail account of a non-party [was] facially overbroad.”

(Order on Disc. Mots. 4.) 62. Now, Addison Whitney argues that circumstances have changed. During

her deposition, Bridget denied having extensive involvement in the planning that led

to Leaderboard Branding’s creation. (See Dep. B. Budd 22:16–23:7, 23:8–18, ECF No.

197.1.) Addison Whitney believes this was false. It argues that Defendants used her

business office for meetings and that she received confidential information by e-mail.

(See Pl.’s 2d Mot. Compel 15; Pl.’s 2d Mot. Compel Exs. 27, 28, ECF Nos. 197.5, 197.6.)

Addison Whitney served Bridget with a subpoena and now asks the Court to compel

her to provide forensic images of one business e-mail account, two personal e-mail

accounts, and her laptop. (See Pl.’s 2d Mot. Compel 14–15, 15 n.4; Pl.’s 2d Mot.

Compel Ex. 21 at 31–32.)

63. It’s not clear that Bridget was served with a copy of the motion; as a

nonparty, she does not receive electronic notice of case filings. The notice issue can

be shelved, though, because the Court again concludes that Addison Whitney’s

request is overbroad. Assuming Defendants used Bridget’s office for a few meetings,

there is still no persuasive evidence that she participated in the meetings, much less

that she was a key player in the creation of Leaderboard Branding. In addition,

Addison Whitney has not shown that the few documents Bridget received by e-mail

are sensitive or important to the issues in the case. This is not enough to justify the

burden, expense, and intrusiveness of imaging a nonparty’s e-mail accounts and

laptop computer. See Crosmun, 832 S.E.2d at 233 (“[A] Court must be mindful of the

potential intrusiveness of ordering forensic imaging.” (alteration, citation, and

quotation marks omitted)); Arris Grp., Inc. v. Cyberpower Sys. (USA), 2017 NCBC LEXIS 58, at *7, 8 (N.C. Super. Ct. July 11, 2017) (observing that courts must “protect

nonparties from burden and expense imposed without sufficient justification”

(citation and quotation marks omitted)).

g. Addison Whitney’s Fourth Requests for Production

64. Defendants objected to all thirteen requests in Addison Whitney’s fourth

requests for production and did not produce any documents. (See Pl.’s 2d Mot. Compel

Ex. 21 at 19–21, 23–29.) The requests break down into two groups. The first group

asks for copies of Defendants’ drug name database, master case studies list, and client

tracking database. (See Pl.’s 2d Mot. Compel Ex. 21 at 20.) The second group relates

to intellectual property protections, development records, and communications with

third parties (including pitch materials) about certain software tools and business

methods used by Defendants, called SCORE, POCA, and INN. (See Pl.’s 2d Mot.

Compel Ex. 21 at 19–21.)

65. Addison Whitney seeks complete responses. (See Pl.’s 2d Mot. Compel 15–

16.) Defendants contend that the requests are based on claims that have been

dismissed and, thus, are no longer relevant. See Addison Whitney, LLC v. Cashion,

2019 NCBC LEXIS 17, at *7, 8 (N.C. Super. Ct. Mar. 6, 2019) (granting motion to

dismiss claims related to contracts governing the ownership of employee work

product).

66. The Court concludes that the requests are relevant to claims that have not

been dismissed. Addison Whitney has alleged that its trade secrets include, among

other things, a proprietary drug name database, confidential case studies for past projects, and a SalesForce database with sensitive client leads and other information.

(See Third Am. Compl. ¶¶ 20(a), (g), (i), ECF No. 151.) Addison Whitney claims that

Defendants misappropriated each. Defendants’ own drug name database, case

studies, and client database are surely relevant to that claim. Likewise, Addison

Whitney alleges that Budd developed the SCORE process and that Cuykendall

developed the POCA and INN tools while still employed with the company and using

its resources. (See Third Am. Compl. ¶¶ 60, 115, 116, 176, 177.) If these Defendants

used Addison Whitney’s resources to develop work product that they intended to use

to compete against it, that could support the claim for breach of fiduciary duty. Thus,

the requests about SCORE, POCA, and, INN are reasonably calculated to lead to the

discovery of admissible evidence.

67. Defendants make no objection other than relevance. That objection is

overruled, and they shall produce documents responsive to Addison Whitney’s fourth

requests for production.

h. Modification of Protective Order

68. As an addendum to its motion to compel, Addison Whitney seeks to amend

the parties’ consent protective order so that it may share material designated as

attorney eyes’ only (“AEO”) with two unnamed employees. (See Joint Stipulation for

Entry of Agreed Protective Order, ECF No. 109 [“Protective Order”].) The basis for

the request is that “counsel requires assistance from [Addison Whitney] personnel in

preparing its case,” ostensibly because there aren’t any independent expert witnesses in the branding industry. (Pl.’s 2d Mot. Compel 17–18.) Defendants oppose allowing

their competitor’s employees to review AEO materials. (See Defs.’ Opp’n 19–20.)

69. The protective order is a blanket protective order of the type “routinely

entered into by parties in commercial litigation, especially in cases between

competitors.” SmartSignal Corp. v. Expert Microsystems, Inc., 2006 U.S. Dist. LEXIS

32305, at *6 (N.D. Ill. May 12, 2006). By agreement, the parties may protect

documents that they believe in good faith to contain trade secrets or other confidential

information, and especially sensitive material may be further “limited to ‘attorney

eyes only.’ ” (Protective Order 2.) “The disclosure of confidential information on an

attorneys’ eyes only basis is a routine feature of civil litigation involving trade

secrets.” Paycom Payroll, LLC v. Richison, 758 F.3d 1198, 1202 (10th Cir. 2014)

(citation and quotation marks omitted).

70. As the moving party, Addison Whitney must show good cause. See, e.g.,

Heraeus Kulzer, GmbH v. Biomet, Inc., 881 F.3d 550, 566 (7th Cir. 2018). Relevant

considerations include the nature of the protective order, the foreseeability of the

requested modification, the parties’ reliance on the order, and the potential harm

from granting or denying the modification. See, e.g., Intel Corp. v. VIA Techs., Inc.,

198 F.R.D. 525, 531–32 (N.D. Cal. 2000); Bayer AG v. Barr Labs., Inc., 162 F.R.D.

456, 462–63 (S.D.N.Y. 1995). The Court concludes that Addison Whitney has not met

its burden.

71. First, the nature of the protective order weighs against modification.

Addison Whitney agreed to the protective order; it was not imposed by the Court. “A party’s prior consent to the protective order will weigh against its motion for

modification.” Bayer AG, 162 F.R.D. at 466; accord Royal v. Boykin, 2018 U.S. Dist.

LEXIS 211089, at *6 (N.D. Miss. Dec. 14, 2018); United States ex rel. Fisher v. Ocwen

Loan Servicing, LLC, 2016 U.S. Dist. LEXIS 7475, at *9 (E.D. Tex. Jan. 22, 2016);

SmartSignal, 2006 U.S. Dist. LEXIS 32305, at *5.

72. Second, the requested modification was foreseeable. The protective order

was entered in December 2017, not long before expert disclosures were due (though

that date was later extended). Addison Whitney should have known whether it would

be difficult to find an independent expert when it agreed to the AEO restrictions in

the protective order.

73. Third, the request comes late in discovery, long after the parties produced

volumes of material in reliance on the protective order. When producing documents,

each side could mark materials as “Confidential” (allowing the other side to share

them with employees “to provide assistance to counsel”) or as AEO (keeping them out

of the hands of the other side’s employees). (Protective Order 4.) Addison Whitney’s

request would eviscerate that distinction and defeat the very purpose of the AEO

protection that the parties agreed to in the first place. See Ocwen Loan Servicing,

2016 U.S. Dist. LEXIS 7475, at *12 (“The Court finds that the end of the discovery

period, after the parties have relied upon the Protective Order to produce documents

in the case, is not the appropriate time to dispute the Protective Order, into which

the parties jointly entered.”). 74. Fourth, Addison Whitney has not shown that its need for modification

outweighs Defendants’ need for protection. In fact, Addison Whitney has not even

identified the two employees. “[T]his information is essential to the Court’s ability to

weigh the relative harms.” Compass Minerals Am., Inc. v. Gaia Enters., Inc., 2017

U.S. Dist. LEXIS 130421, at *10 (D. Kan. Aug. 16, 2017). It also bears noting that

Addison Whitney’s in-house counsel is authorized to access AEO materials,

mitigating the need for disclosure to other employees. (See Protective Order 4.) The

Court therefore concludes that Defendants’ need to protect their confidential

information from a direct competitor outweighs Addison Whitney’s need to disclose

that information to its nonlawyer employees.

75. Accordingly, the Court denies Addison Whitney’s request to modify the

protective order. See, e.g., ViaSat, Inc. v. Acacia Commc’ns, Inc., 2017 U.S. Dist.

LEXIS 30596, at *8–10 (S.D. Cal. Mar. 2, 2017) (denying request to modify protective

order to allow disclosure to in-house engineers in trade-secret litigation).

i. Defendants’ Contracts with Leaderboard Branding and Rodden’s Calendars

76. Finally, Addison Whitney requested Leaderboard Branding’s employment

agreements and Rodden’s calendars. (See Pl.’s 2d Mot. Compel 16–17.) Defendants

agreed to produce both. (See Defs.’ Opp’n 19.) The Court therefore denies the

requests as moot.

C. Defendants’ Motion to Compel

77. The last motion at issue is Defendants’ motion to compel. They press a half

dozen or so document disputes. (See Defs.’ Mem. Supp. Mot. Compel 14–22, ECF No. 195 [“Defs.’ Mem. Supp.”].) 5 They also ask the Court to compel Addison Whitney to

designate witnesses for a deposition under Rule 30(b)(6). (See Defs.’ Mem. Supp. 5–

14.)

a. Communications Referring to Defendants

78. In a series of requests, Defendants sought all communications that concern

or refer to them. These include requests for communications “between customers or

prospective customers and Addison Whitney regarding the Defendants’ departure

from Addison Whitney”; communications “by any Addison Whitney employee

concerning or referencing any of the Defendants or Leaderboard Branding from

December 1, 2016 to the present”; and documents sent after January 21, 2017 to

“current, former or prospective customers which refer to any of the individual

Defendants or Leaderboard Branding, LLC.” (Defs.’ Mot. Compel Ex. 5 at 7, 8, ECF

No. 194.5; Defs.’ Mot. Compel Ex. 7 at 2, ECF No. 194.6.) There are two disputes,

both about ESI.

79. One is whether Addison Whitney adequately searched for responsive

e-mails. Defendants argue that Addison Whitney arbitrarily limited its search to

seven employees over a two-month period and should be compelled to search the

e-mails of seventeen others for a longer period. (See Defs.’ Mem. Supp. 14–15.)

80. In fact, Addison Whitney’s search was much broader. The evidence shows

that Addison Whitney searched the e-mails of more than twenty individuals, yielding

thousands of e-mails that were produced to Defendants. (See Pl.’s Opp’n Defs.’ Mot.

5 This brief inadvertently marks the first page as page “2” so that all page numbers are off by

one. The Court uses the brief’s pagination when citing it. Compel 2, ECF No. 208 [“Pl.’s Opp’n”]; Aff. S. Nigh ¶¶ 7–9, ECF No. 206.1.) Among

other things, Addison Whitney produced e-mails sent to customers regarding

Defendants’ departure, along with the script that its employees were directed to use

when doing so. (See Pl.’s Opp’n 3; Aff. S. Nigh Ex. 5, ECF No. 206.2.) In addition,

Addison Whitney produced other e-mails that referred to Defendants in the weeks

before and after their resignations. (See Aff. S. Nigh Ex. 5.)

81. Defendants have not shown what the value of additional searching would

be. They have not identified key individuals, time periods, or subject matters that

were omitted from Addison Whitney’s production. It is doubtful whether more

thorough searches would turn up anything of relevance beyond what has already been

produced. See, e.g., Todero v. Blackwell, 2018 U.S. Dist. LEXIS 235872, at *3 (S.D.

Ind. Apr. 5, 2018) (denying motion to compel additional e-mail searches). On the

other hand, a general search for all e-mails that merely refer to Defendants, whatever

the context, would turn up a great deal of irrelevant information, necessitating a

lengthy and expensive review for relevance and privilege. See Cotton v. Costco

Wholesale Corp., 2013 U.S. Dist. LEXIS 103369, at *8 (D. Kan. July 24, 2013)

(denying motion to compel production of all documents referring to party because “the

requests also likely encompass a significant amount of information pertaining to

unrelated issues”).

82. In its discretion, the Court concludes that the burden to Addison Whitney

would far outweigh the uncertain benefit of additional searches. Accordingly, the

Court denies this request. 83. A second dispute relates to text messages. In contrast to its substantial

e-mail production, Addison Whitney did not produce any responsive text messages.

Defendants ask the Court to compel Addison Whitney to produce text messages sent

or received on its employees’ personal cell phones or to produce images of those

devices. (See Defs.’ Mem. Supp. 15–16, 17.) Addison Whitney objects that it has no

control over its employees’ personal devices and therefore cannot be compelled to

produce them. (See Pl.’s Opp’n 5–8.)

84. The question is whether Addison Whitney has “possession, custody or

control” over its employees’ personal devices. N.C. R. Civ. P. 34(a)(i). This standard

is met “if the party has actual possession, custody or control of the materials or has

the legal right to obtain the documents on demand.” SciGrip, Inc. v. Osae, 2015

NCBC LEXIS 89, at *9 (N.C. Super. Ct. Sept. 28, 2015) (citation and quotation marks

omitted). In this context, relevant considerations include whether the employer

issued the devices to its employees, whether the devices were used for work-related

purposes, and whether the employer had any legal right to obtain data from the

devices. See, e.g., Goolsby v. Cty. of San Diego, 2019 U.S. Dist. LEXIS 140326, at *11–

13 (S.D. Cal. Aug. 19, 2019); Cotton, 2013 U.S. Dist. LEXIS 103369, at *17–18.

85. These considerations decidedly favor Addison Whitney. The company does

not issue mobile devices to its employees. (See Aff. R. McPhail ¶¶ 3, 4, ECF No.

208.11.) Defendants have not argued or shown that employees use their devices for

business purposes, much less to what extent. At most, there is evidence that some

employees voluntarily gave text messages to Addison Whitney to support its investigation and that Addison Whitney has a policy allowing it to “monitor . . .

non-Company provided equipment that is connected to the Company network[.]”

(Defs.’ Mot. Compel Ex. 20 at 2, ECF No. 194.11.) But cooperation by employees does

not signify control over them. And even assuming Addison Whitney’s technology

policy gives it a legal right to obtain text messages exchanged over its network, there

is no evidence that any text messages went through that network as opposed to

another, such as a cellular network.

86. The Court concludes that Addison Whitney has neither the authority nor

the legal right to obtain the text messages requested by Defendants and therefore

cannot be compelled to produce them. For the same reason, the Court denies the even

more intrusive request to compel production of the employees’ personal devices for

forensic imaging. See Goolsby, 2019 U.S. Dist. LEXIS 140326, at *11–13 (denying

motion to compel); Cotton, 2013 U.S. Dist. LEXIS 103369, at *17–18 (same).

b. Defendants’ E-mails and Calendar Entries While Employed at Addison Whitney

87. Next up is another ESI dispute, this time about work-related e-mails and

calendar entries from the computers issued to each individual Defendant during

employment with Addison Whitney. (See Defs.’ Mem. Supp. 16–17.) Relevance is not

at issue. Rather, the parties dispute how far back the search must go. Addison

Whitney proposes “a one-year period prior to Defendants’ resignation” subject to

agreement on reasonable search terms. (Pl.’s Opp’n 15.) At the hearing, counsel for

Defendants argued that the search should go back several years. It was apparent that counsel had not meaningfully discussed a compromise and that, if they had, this

could have been resolved without the Court’s involvement.

88. In any event, the Court concludes that it would be reasonable to search

e-mails and calendar entries from May 1, 2015 through the date of Defendants’

resignations. This period appears to be consistent with timeframes adopted in the

ESI Protocol for other purposes. It is also tied to Addison Whitney’s allegations. It

was in May 2015 that Cashion allegedly sabotaged Addison Whitney’s effort to secure

noncompetition agreements with Budd, Scott, and Cuykendall. (See Third Am.

Compl. ¶¶ 52–56.) Not long after, Cashion allegedly began meeting with potential

investors for a new competing business. (See Third Am. Compl. ¶ 57.) Defendants

should be able to test these allegations in discovery. But requiring Addison Whitney

to go back any further would be unduly burdensome, given that the likelihood of

finding relevant information diminishes rapidly before May 2015.

89. Accordingly, Addison Whitney shall produce responsive e-mails and

calendar entries from May 1, 2015 through January 21, 2017. Counsel shall confer

to identify a list of reasonable search terms and to settle on a format in which the

e-mails and calendar entries should be produced. In all other respects, Defendants’

request for the disputed e-mails and calendar entries is denied.

c. Commissions Spreadsheet

90. The third issue concerns a spreadsheet in which Addison Whitney calculated

unpaid commissions owed to Budd, Cashion, Cuykendall, and Scott at the time of

their resignations. (See Defs.’ Mem. Supp. 18–19; Defs.’ Mot. Compel Ex. 5 at 12.) This document is tied to Defendants’ counterclaim under the North Carolina Wage

and Hour Act. Addison Whitney does not contest relevance but asserts work-product

immunity and attorney-client privilege. (See Pl.’s Opp’n 9–11.)

91. The disputed spreadsheet is not protected work product. It was not

“prepared in anticipation of litigation or for trial,” which is an essential ingredient of

work-product immunity. N.C. R. Civ. P. 26(b)(3). Rather, it was prepared as part of

Addison Whitney’s standard offboarding process for departing employees. The

spreadsheet’s authors, Natasha Kempf and Rebecca McPhail, testified that they

calculated the commissions owed to Budd, Cashion, Cuykendall, and Scott just as

they had for others in the past. (See Dep. N. Kempf 139:18–21, 140:7–10, 141:2–11,

ECF No. 187.7; Dep. R. McPhail 213:7–215:25, ECF No. 206.7.) Neither testified that

the task was performed at the instruction of counsel or for a litigation-related

purpose.

92. Addison Whitney insists that it was contemplating litigation at the time,

but “even though litigation is already in prospect, there is no work product immunity

for documents prepared in the regular course of business rather than for purposes of

the litigation.” Cook v. Wake Cty. Hosp. Sys., Inc., 125 N.C. App. 618, 624, 482 S.E.2d

546, 551 (1997) (citation and emphasis omitted). Addison Whitney also submitted for

in camera review several e-mails in which Kempf sought guidance from in-house

counsel about the company’s commission policy. The Court finds nothing in these

communications to suggest that the spreadsheet was “prepared or obtained because

of the prospect of litigation.” Id. (emphasis added); see also Isom, 177 N.C. App. at 413, 628 S.E.2d at 463 (“And, it goes without saying that any otherwise business

emails, copied to an attorney, are not protected by the work product doctrine solely

due to the fact that they were sent during a time when the business is anticipating

litigation.”). Addison Whitney has not carried its burden to show that the

spreadsheet is immune from discovery. See Wachovia Bank, 178 N.C. App. at 531–

32, 631 S.E.2d at 882.

93. Neither has Addison Whitney carried its burden as to the attorney-client

privilege. When Kempf and McPhail were asked about the spreadsheet during their

depositions, no privilege objection was made. (See Dep. N. Kempf 139:18–21, 140:7–

10, 141:2–11; Dep. R. McPhail 213:7–215:25.) Even now, Addison Whitney’s point

seems to be that Kempf or McPhail had other confidential communications (the in

camera e-mails) about the commissions. (See Pl.’s Opp’n 10–11.) Defendants have

not sought those e-mails. The spreadsheet itself does not appear to be a privileged

communication, and Addison Whitney has not shown otherwise.

94. Accordingly, Addison Whitney shall produce the spreadsheet.

d. Personnel Files

95. Defendants next request the personnel files of more than twenty Addison

Whitney employees. (See Defs.’ Mot. Compel Ex. 6 at 27–28, ECF No. 192.1.) Addison

Whitney objects on the grounds of privacy concerns and overbreadth. (See Pl.’s Opp’n

8–9.)

96. “[P]ersonnel files contain perhaps the most private information about an

employee within the possession of an employer.” Whittingham v. Amherst Coll., 164 F.R.D. 124, 127 (D. Mass. 1995). For that reason, courts often refuse to compel their

disclosure unless the files are clearly relevant and there is no less intrusive way to

obtain the information. See, e.g., Armitage v. Biogen, Inc., 2019 U.S. Dist. LEXIS 253,

at *16 (M.D.N.C. Jan. 2, 2019) (limiting discovery to files “of employees whose action

or inaction has a direct bearing on the plaintiff’s claims or defendant’s affirmative

defenses”); James v. Peter Pan Transit Mgmt., Inc., 1999 U.S. Dist. LEXIS 2565, at

*31–32 (E.D.N.C. Jan. 20, 1999) (“Personal privacy and the confidentiality of

personnel files are important public policy concerns.”); Raddatz v. Standard Register

Co., 177 F.R.D. 446, 447–48 (D. Minn. 1997) (“[T]he very act of disclosing an

employee’s sensitive and personal data is a highly, and frequently, an unnecessarily

intrusive act . . . .”); cf. Dahdal v. Thorn Americas, Inc., 1997 U.S. Dist. LEXIS 14792,

at *4 (D. Kan. Sept. 15, 1997) (“To permit wide dissemination of personnel files would

result in a clearly defined, serious, and unnecessary injury to the privacy of the

employee who is not a party to the lawsuit.”).

97. Many, perhaps all, of the individuals named by Defendants are potential

witnesses, but that alone does not make their personnel files fair game. There must

be some connection between the information in the file and the asserted claims and

defenses. The connection just isn’t there. Defendants do not discuss any of the

individuals by name or explain why their involvement merits full disclosure of their

personnel files and all the sensitive information contained within. What Defendants

seem most interested in are disciplinary policies and employment contracts. (See

Defs.’ Mem. Supp. 20.) There are far less invasive ways to obtain such things. 98. Accordingly, the Court denies the request.

e. Business Assessment Report

99. After Defendants resigned in January 2017, Addison Whitney performed an

assessment of its business. Mark Dmytruk, the Chief of Staff for Addison Whitney’s

parent company, investigated matters and prepared a written report. Addison

Whitney contends that the report is protected work product.

100. In their BCR 10.9 summary and their opening brief, Defendants did not

challenge the assertion of work product but instead asked the Court to compel

Addison Whitney “to produce the factual information that it gleaned from the

investigation in question.” (Defs.’ Mem. Supp. 21.) On that point, there is nothing to

compel. Counsel for Addison Whitney represented that it has never objected to

discovery of the facts underlying the report or tried to stop Defendants from deposing

Dmytruk.

101. For the first time in the reply brief, Defendants asked for the report itself

and argued that it is not protected work product. (See Defs.’ Reply Br. 7–8, ECF No.

215.) This argument is tardy. Even if it weren’t, the Court concludes after in camera

review that the assessment report is protected work product. The circumstances

show that the report was prepared in anticipation of litigation. It was delivered to

counsel and states that it was prepared for counsel; nothing suggests that Dmytruk

would have prepared this type of report in the ordinary course of his duties.

Moreover, Defendants cannot show that they are “unable without undue hardship to

obtain the substantial equivalent of the materials by other means” because, at least at the time of the hearing, they had not deposed Dmytruk about the facts underlying

the report. N.C. R. Civ. P. 26(b)(3).

102. In short, Defendants are free to depose Dmytruk. The Court denies their

request for his report.

f. Google AdWords Campaigns

103. The next issue relates to Addison Whitney’s experience with Google

AdWords. Addison Whitney agreed to produce documents related to its May 2017

AdWords campaign, which is the subject of Defendants’ defamation counterclaim.

But it has refused, on relevance grounds, to produce documents related to other

AdWords campaigns dating back to 2011. (See Pl.’s Opp’n 12–13.) Defendants ask

the Court to compel a response. (See Defs.’ Mem. Supp. 21–22.) 6

104. The Court agrees with Addison Whitney. The earlier campaigns are not a

basis for the defamation counterclaim. Defendants do not even sketch out the

supposed relevance of the content of those campaigns, arguing instead that they are

entitled to know Addison Whitney’s “processes for choosing words and identifying

target audiences” when using AdWords. (Defs.’ Mem Supp. 22.) Perhaps it is

relevant how Addison Whitney chose terms and identified the audience for the May

2017 campaign. But it is not relevant how Addison Whitney did so for campaigns on

other topics at different times. This request is denied.

6 This discovery request is not in the record, but there is no dispute that the request and

Addison Whitney’s objections to it were properly served. g. 30(b)(6) Deposition Notice

105. “It is not literally possible to depose a corporation. Instead, information

from a corporation must be sought from natural persons who can speak on behalf of

the corporation.” Hooker v. Norfolk S. Ry. Co., 204 F.R.D. 124, 125 (S.D. Ind. 2001);

accord Littlefield v. NutriBullet, L.L.C., 2017 U.S. Dist. LEXIS 222836, at *20 (C.D.

Cal. Nov. 3, 2017). This is the purpose of Rule 30(b)(6), which allows a party to name

a corporation or similar organization as a deponent. The party seeking discovery

must “describe with reasonable particularity the matters on which examination is

requested.” N.C. R. Civ. P. 30(b)(6). In turn, the responding organization must

“designate one or more officers, directors, or managing agents, or other persons who

consent to testify on its behalf, and may set forth, for each person designated, the

matters on which he will testify.” Id.

106. “The effect of the rule is to place upon the business entity the burden of

identifying witnesses who possess knowledge responsive to subjects requested in the

Rule 30(b)(6) request.” Hooker, 204 F.R.D. at 126. The entity has the duty not only

to provide knowledgeable witnesses but also to educate the witnesses if they do not

have personal knowledge of the designated subjects. See, e.g., Great Am. Ins. Co. of

N.Y. v. Vegas Constr. Co., 251 F.R.D. 534, 539 (D. Nev. 2008). Their testimony, after

all, “represents the knowledge of the corporation, not of the individual deponents.”

United States v. Taylor, 166 F.R.D. 356, 361 (M.D.N.C. 1996). And their answers “are

binding on the corporation.” Littlefield, 2017 U.S. Dist. LEXIS 222836, at *20–21. 107. That said, a 30(b)(6) deposition should not be a “memory contest.” E.g.,

Jenkins v. XpresSpa Grp., Inc., 2020 U.S. Dist. LEXIS 58724, at *12 (S.D.N.Y. Apr.

2, 2020) (citation and quotation marks omitted); Great Am. Ins. Co. of N.Y., 251 F.R.D.

at 539. Overbroad and unduly burdensome deposition topics are subject to court

oversight just as any other form of discovery would be. As one court recently put it,

“an overbroad 30(b)(6) notice ‘subjects the noticed party to an impossible task’ and

therefore will not be allowed.” Crocs, Inc. v. Effervescent, Inc., 2017 U.S. Dist. LEXIS

221098, at *8 (D. Colo. Jan. 3, 2017) (quoting Cotton v. Costco Wholesale Corp., 2013

U.S. Dist. LEXIS 103367, at *2 (D. Kan. July 24, 2013)).

108. Defendants served Addison Whitney with a notice of deposition that listed

twenty-eight topics. (See Defs.’ Mot. Compel Ex. 1, ECF No. 194.1.) Addison Whitney

objected and refused to designate corporate witnesses for all but five. (See Defs.’ Mot.

Compel Ex. 3, ECF No. 194.3.) For efficiency and clarity, the Court groups the topics

by subject matter or objection, as needed.

109. Topics 1, 2, 6, 12–15, 28. The first set of topics covers all facts underlying

Addison Whitney’s contentions that Defendants misappropriated trade secrets and

confidential information, breached their fiduciary duties, and unlawfully diverted

corporate opportunities, among other things. (See Defs.’ Mot. Compel Ex. 1 at 5–7,

9.) Addison Whitney objects that it could not adequately prepare witnesses to testify

about these topics. (See Pl.’s Opp’n 15–17.) It also claims that contentions should be

the subject of interrogatories, rather than a 30(b)(6) deposition. (See Pl.’s Opp’n 15–

16.) 110. Federal district courts are divided in their approaches to “contention”

30(b)(6) topics. Some courts treat them favorably. See, e.g., Landry v. Swire Oilfield

Servs., L.L.C., 323 F.R.D. 360, 384–85 (D.N.M. 2018); Majestic Bldg. Maint., Inc. v.

Huntington Bancshares, Inc., 2018 U.S. Dist. LEXIS 114267, at *16 (S.D. Ohio July

10, 2018) (“Courts have consistently held ‘that a Rule 30(b)(6) notice of deposition

that seeks the factual bases for another party’s claims or defenses is proper.’ ”

(quoting Smith v. Gen. Mills, Inc., 2006 U.S. Dist. LEXIS 19093, at *8 (S.D. Ohio Apr.

13, 2006))).

111. Most courts take a more restrictive view. One reason is that other discovery

tools, especially interrogatories, are better suited to explore an opponent’s legal

theories. See, e.g., Cx Reinsurance Co. v. B&R Mgmt., Inc., 2018 U.S. Dist. LEXIS

56386, at *11 (D. Md. Apr. 3, 2018); JPMorgan Chase Bank ex rel. Mahonia Ltd. v.

Liberty Mut. Ins. Co., 209 F.R.D. 361, 362 (S.D.N.Y. 2002). Another reason is that it

may be unreasonable to expect a witness, even an educated witness, to be prepared

to testify about all facts underlying a given claim. See, e.g., Lenox Maclaren Surgical

Corp. v. Medtronic, Inc., 2015 U.S. Dist. LEXIS 75813, at *15 (D. Colo. June 11, 2015);

Castillon v. Corr. Corp. of Am., 2014 U.S. Dist. LEXIS 124509, at *4–5 (D. Idaho Sept.

2, 2014); In re Indep. Serv. Orgs. Antitrust Litig., 168 F.R.D. 651, 654 (D. Kan. 1996).

112. There is no need to choose one approach over the other in this case. By any

standard, Defendants’ topics are unduly burdensome. Taken together, these topics

would require Addison Whitney to prepare one or more witnesses to testify about

“[a]ll facts” and “[a]ll evidence” that support more than half a dozen claims and defenses. (E.g., Defs.’ Mot. Compel Ex. 1 at 5.) That is impracticable. The obligation

to make a good-faith effort to produce knowledgeable witnesses “becomes less realistic

and increasingly impossible as the number and breadth of noticed subject areas

expand.” Apple Inc. v. Samsung Elecs. Co., 2012 U.S. Dist. LEXIS 9921, at *13 (N.D.

Cal. Jan. 27, 2012); see also id. (observing that Rule 30(b)(6) “does not extend to

burdening the responding party with production and preparation of a witness on

every facet of the litigation”). Thus, the Court will not compel Addison Whitney to

designate a witness for topics 1, 2, 6, 12–15, and 28.

113. Defendants have expressed concern that Addison Whitney’s responses to

contention interrogatories were vague and lacked detail. No motion has been filed on

that issue, but Addison Whitney has offered to supplement its responses as a

compromise. Counsel should confer and agree to a date certain for the amended

responses.

114. Topics 3–5, 7, 23–27. These nine topics cover a range of matters: evaluations

of Cashion’s job performance in 2015 and 2016 (topic 3); employment contracts offered

to Cashion (topic 4); a 2016 corporate resolution (topic 5); Defendants’ time sheets in

the year before their resignations (topic 7); the May 2017 press release and AdWords

campaign (topics 23–26); and Addison Whitney’s calculation of commissions owed to

certain Defendants (topic 27). (See Defs.’ Mot. Compel Ex. 1 at 5, 6, 8.) Addison

Whitney objects that each topic is duplicative of other discovery, including deposition

testimony of individual fact witnesses. (See Pl.’s Opp’n 17–18.) 115. This is a common objection, often overruled. Ordinarily, a 30(b)(6)

deposition is not “unnecessary or cumulative simply because individual deponents—

usually former or current employees of the entity whose Rule 30(b)(6) deposition is

sought—have already testified about the topics noticed in the Rule 30(b)(6) deposition

notice.” La. Pac. Corp. v. Money Mkt. 1 Institutional Inv. Dealer, 285 F.R.D. 481, 487

(N.D. Cal. 2012) (collecting cases). Indeed, “[c]orporate designees are commonly

produced, and no doubt some of their testimony may be a re-hash of what’s been

covered elsewhere, but their testimony is the testimony of the corporation itself, and

for that reason alone it may not be duplicative.” Appleton Papers Inc. v. George A.

Whiting Paper Co., 2009 U.S. Dist. LEXIS 111768, at *11 (E.D. Wis. Sept. 2, 2009). 7

116. Here, the Court sees no evidence of abuse or overreaching. Defendants are

entitled to have binding answers from Addison Whitney on these topics even if the

designee’s testimony ends up being more or less the same as that of earlier witnesses

(or if one of the earlier witnesses is named as the 30(b)(6) designee). Accordingly,

Addison Whitney must produce a corporate representative to testify as to topics 3–5,

7 See also, e.g., Edwards v. Scripps Media, Inc., 331 F.R.D. 116, 122 (E.D. Mich. 2019) (“[T]he

prior testimony from the individual fact witnesses does not relieve defendant from its obligation to designate a witness under Rule 30(b)(6)[.]”); FDIC v. Giancola, 2015 U.S. Dist. LEXIS 125229, at *11 (N.D. Ill. Sept. 18, 2015) (reasoning that “substantial other discovery” did “not render a Rule 30(b)(6) deposition duplicative”); New Jersey v. Sprint Corp., 2010 U.S. Dist. LEXIS 14890, at *9–10 (D. Kan. Feb. 19, 2010) (“Even if the substance of the information ultimately provided mirrors that of the testimony given by Sprint’s former directors and employees, plaintiff still is entitled to tie down the definitive positions of Sprint itself, rather than that of the individuals who work for Sprint.”); Dongguk Univ. v. Yale Univ., 270 F.R.D. 70, 78 (D. Conn. 2010) (allowing 30(b)(6) deposition even though duplicative); Tri- State Hosp. Supply Corp. v. United States, 226 F.R.D. 118, 125–26 (D.D.C. 2005) (reasoning that there is “no principle of law that precludes a party from pursuing during a deposition a topic about which it has already received information via other discovery devices”). 7, and 23–27. See Duke Energy Carolinas, LLC v. AG Ins. SA/NV, 2019 NCBC LEXIS

75, at *11 (N.C. Super. Ct. Nov. 22, 2019) (allowing 30(b)(6) deposition because “the

record does not reflect that corporate positions, intentions, and reasons, rather than

the actions and understandings of individual corporate employees, were topics of

inquiry at the depositions taken to date”).

117. Topics 16–18, 21. Four topics address the changes that Addison Whitney

made to its practices and policies for handling confidential and proprietary

information after Defendants resigned. (See Defs.’ Mot. Compel Ex. 1 at 7.) Addison

Whitney objects that these topics seek information about subsequent remedial

measures, which is forbidden by Rule 407 of the North Carolina Rules of Evidence.

(See Pl.’s Opp’n 18.)

118. This objection “is inapt. Rule 407 governs admissibility. It does not preclude

discovery.” Granberry v. Jet Blue Airways, 228 F.R.D. 647, 651 n.2 (N.D. Cal. 2005)

(discussing analogous federal Rule 407); see also Laws v. Stevens Transp., Inc., 2013

U.S. Dist. LEXIS 32221, at *8–9 (S.D. Ohio Mar. 8, 2013) (observing that federal Rule

407 “governs the admissibility of evidence and does not control pretrial discovery”).

If information about subsequent remedial measures is reasonably calculated to lead

to the discovery of admissible evidence, then it is relevant and discoverable, even if

Rule 407 later bars admissibility at trial. See, e.g., Venator v. Interstate Res., Inc.,

2015 U.S. Dist. LEXIS 146891, at *10–12 (S.D. Ga. Oct. 29, 2015); Bernat v. City of

Cal. City, 2010 U.S. Dist. LEXIS 111538, at *13–14 (E.D. Cal. Oct. 12, 2010); Stalling v. Union Pac. R.R. Co., 2003 U.S. Dist. LEXIS 9550, at *29–30 (N.D. Ill. June 6, 2003);

Miner v. Kendall, 1996 U.S. Dist. LEXIS 18801, at *3–4 (D. Kan. Sept. 27, 1996).

119. At this stage, the Court is satisfied that these topics are reasonably

calculated to lead to the discovery of admissible evidence. It would be speculative to

guess what the testimony will be and how Defendants might use it later. Among

other things, testimony about these measures could serve as impeachment evidence

or help demonstrate the “feasibility of precautionary measures,” both of which are

exempt from Rule 407. N.C. R. Evid. 407. Addison Whitney must produce a designee

to address topics 16–18 and 21.

120. Topic 20. This topic states as follows: “Details regarding Plaintiff’s

compiling and maintaining information regarding its competitors, and the specific

types of information Plaintiff has collected and saved regarding its competitors,

including the contents of a folder on the Plaintiff’s computer servers containing such

information, and the means by which Plaintiff has obtained or received such

information, and the current status of such folder and information.” (Defs.’ Mot.

Compel Ex. 1 at 7.) Addison Whitney objects to the relevance. The Court sustains

the objection because the topic addresses all competitor research whether or not it

has anything to do with the specific trade secrets at issue. The Court will not compel

Addison Whitney to produce a witness for this topic.

121. Topic 19. This topic covers “[d]etails regarding the contents” of the

assessment report prepared by Dmytruk. (Defs.’ Mot. Compel Ex. 1 at 7; see also

Defs.’ Mem. Supp. 14.) Addison Whitney again asserts work-product immunity. (See Pl.’s Opp’n 19.) As the Court recently explained, however, “the facts contained within

work product remain discoverable even when the document itself is protected.”

Kelley, 2019 NCBC LEXIS 84, at *48 (citing Nat’l Union Fire Ins. Co. v. Murray Sheet

Metal Co., 967 F.2d 980, 984 n.5 (4th Cir. 1992)); see also In re Int’l Sys. & Controls

Corp. Sec. Litig., 693 F.2d 1235, 1240 (5th Cir. 1982) (observing that “the work

product immunity protects only the documents themselves and not the underlying

facts”). The Court overrules the objection, and Addison Whitney must designate a

witness to address topic 19.

III. CONCLUSION

122. For these reasons, the Court, in the exercise of its discretion, GRANTS in

part and DENIES in part Addison Whitney’s motion for contempt against Miller. To

be clear, the Court does not hold Miller in contempt. Rather, the Court ORDERS

Miller to appear for a deposition and to produce documents responsive to request

numbers 1 through 7 and 9, as modified above, all on or before July 15, 2020. By the

same date, Miller shall also produce a privilege log, consistent with the requirements

of the case management order, for any documents that Defendants contend to be

privileged and outside the scope of the subject matter waiver discussed above.

Counsel shall work together to identify a mutually agreeable date and location for

the deposition. In all other aspects, Addison Whitney’s motion for contempt against

Miller is DENIED.

123. The Court GRANTS in part and DENIES in part Addison Whitney’s second

motion to compel. The Court ORDERS as follows: a. Defendants shall revisit their production of text messages. If Defendants

find messages that were inadvertently withheld, the messages should be produced

along with an explanation of how they were recovered. On the other hand, if

Defendants find nothing more, they must explain whether and under what

circumstances the messages were deleted.

b. Leaderboard Branding shall produce an updated profit and loss

statement and its QuickBooks file.

c. Defendants shall revise the privilege logs identified in exhibit 24 to

Addison Whitney’s second motion to compel so that they comply with the case

management order in all respects.

d. Defendants shall produce documents responsive to Addison Whitney’s

fourth requests for production.

e. These matters shall be completed on or before July 15, 2020.

f. In all other aspects, Addison Whitney’s second motion to compel is

DENIED.

124. The Court GRANTS in part and DENIES in part Defendants’ motion to

compel. The Court ORDERS as follows:

a. Addison Whitney shall produce e-mails and calendar entries, for the

period from May 1, 2015 through January 21, 2017, that reside on computers

issued to Defendants during their employment with the company. Counsel shall

confer to determine a list of reasonable search terms and method of production. b. Addison Whitney shall produce the spreadsheets prepared by Kempf and

McPhail to calculate commissions possibly owed to Budd, Cashion, Cuykendall,

and Scott.

c. Addison Whitney shall designate one or more witnesses for topics 3–5, 7,

16–19, 21, and 23–27 in Defendants’ Rule 30(b)(6) notice. Counsel shall work

together to identify a mutually agreeable date and location for the deposition.

d. These matters shall be completed on or before July 15, 2020.

e. In all other respects, Defendants’ motion to compel is DENIED.

125. All parties shall bear their own costs and fees. For each motion, the Court

granted some relief and denied other requests so that neither side can be said to have

prevailed more than the other. It would be unjust to award expenses. See N.C. R.

Civ. P. 37(a)(4) (allowing denial of fees when court concludes that “circumstances

make an award of expenses unjust”); N.C. R. Civ. P. 45(e)(2) (allowing fee award if

objection is “unreasonable” or “made for improper purposes”).

126. At an earlier stage, the Court stated that the discovery period would close

within two weeks of any order on these motions. On second thought, and in view of

the restrictions imposed during the ongoing COVID-19 pandemic, the Court

ORDERS that the close of discovery shall be July 31, 2020. Requests for extensions

will not be favored, and each side is responsible for ensuring that it can complete

discovery within this time period. See BCR 10.4(a).

127. The parties shall file any postdiscovery dispositive motions no later than

September 14, 2020. Response and reply briefs shall be governed by BCR 7.8. SO ORDERED, this the 10th day of June, 2020.

/s/ Adam M. Conrad Adam M. Conrad Special Superior Court Judge for Complex Business Cases