1 2 3 4 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 5 AT TACOMA 6 MOUNTAINEERS FOUNDATION, Case No. C19-1819 RSL-TLF 7 Plaintiff, v. ORDER REGARDING THE 8 DESIGNATION OF DONOR THE MOUNTAINEERS, INFORMATION AS ATTORNEY’S 9 EYES ONLY Defendants. 10
11 This matter comes before the Court on plaintiff’s Motion for Entry of ESI Order 12 (Dkt. 22) and Motion for Protective Order (Dkt. 24). The Court held hearings on March 13 13, 2020 (Dkt. 40), April 10, 2020 (Dkt. 44) and ordered supplemental briefing for the 14 hearing on May 6, 2020 (Dkt. 57). 15 The parties have submitted an Agreement Regarding Discovery of Electronically 16 Stored Information (Dkt. 58) and a Stipulated Protective Order (Dkt. 59). The final 17 remaining issue was the issue of attorney-eyes-only designations regarding top-level 18 executives. The parties have entered into a stipulated protective order that provides, in part: “A party may designate as “CONFIDENTIAL - ATTORNEY EYES ONLY” any 19 Confidential material that the party believes in good faith is of such an extremely sensitive 20 or secret nature that disclosure of such information to any other party or non-party 21 reasonably poses the risk of competitive injury and may compromise and/or jeopardize 22 its business interests even if protected by a Confidential designation.” Dkt. 59 at 2-3.
23 24 1 The Court ordered supplemental briefing on the issue of attorney-eyes-only 2 designations, specifically pertaining to information about supporters and donors of 3 plaintiff’s non-profit entity. The defendant argues that there is no basis for the use of 4 attorney-eyes-only designations for plaintiff’s donor list. Dkt. 46 at 2. Defendant further 5 contends that plaintiff’s proposed designations would unduly prejudice and impair
6 defendant’s ability to litigate the current action. Id. Accordingly, defendant requests that 7 the Court appropriately and explicitly limit the categories of attorney-eyes-only 8 designation categories. Id. 9 In the alternative, defendant request that the Court uphold the Court’s previous 10 Order directing the parties to identify non-attorney individuals at the top ties of their 11 organizations to review donor and volunteer information otherwise designated as 12 attorney-eyes-only. Dkt. 46 at 2. 13 Plaintiff argues its donor lists are confidential trade secrets and the Court should 14 allow plaintiff to designate its donor list as attorney-eyes-only, without any exception
15 that would allow a client representative to view that data. Dkt. 49 at 2. Plaintiff contends 16 defendant’s request that defendant’s CEO and Director of Development be allowed 17 access to the donor list “serves no legitimate purpose and threatens Plaintiff’s 18 confidential business information as well as the privacy interest of its donors and 19 supporters.” Id. at 3. Therefore, plaintiff requests that any donor information produced 20 by either party be subject to an attorney’s eyes-only designation. Id. Plaintiff contends 21 that this will allow full and fair access to information without placing organizational and 22 privacy interests at risk. Id. 23 24 1 Discussion 2 Determining whether a protective order is appropriate requires the Court to 3 consider competing interests. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 4 1470 (9th Cir. 1992). There is an interest in a thorough investigation of facts: Discovery 5 of information that is relevant to claims and defenses is crucial to the fairness and
6 accuracy of factual development in litigation. Id.; Fed. R. Civ. P. 26(b)(1)). And, there is 7 an interest in respecting the need to maintain confidentiality of information for which 8 there is a privacy protection: A responding party is entitled to protection from “undue 9 burden” in discovery, including the protection of confidential materials. Id. (quoting Fed. 10 R. Civ. P. 26(c)). 11 Context of the risks and safeguards -- as they develop in relation to claims and 12 defenses in a specific case -- is also a factor for the Court to carefully evaluate. Brown 13 Bag Software v. Symantec Corp., at 1470-1472. The context of this case is allegations 14 of trademark infringement; the relevant inquiry is whether there exists a likelihood of
15 confusion. MAI Systems Corp. v. Peak Computer Inc., 991 F.2d 511, 523 (9th Cir. 16 1993). This case involves competing allegations of trademark infringement. Dkt. 1, 38. 17 Both parties contend that the other party’s continued use of the alleged trademarks has 18 and will continue to cause confusion amongst consumers, donors and the public. Dkt. 1 19 at ¶¶ 66, 67, 70, 73, 116, Dkt. 38 at ¶¶ 3.24, 4.3, 5.2, 6.3. 20 The legal test for determining the likelihood of confusion asks whether the 21 alleged use of a trademark by a non-trademark holder is “likely to cause confusion or to 22 cause mistake, or to deceive as to the affiliation, connection, or association” of the two 23 24 1 products or parties. See, Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792, 2 807 (9th Cir. 2003). 3 To determine whether a likelihood of confusion exists, the Court must weigh the 4 following factors: 5 (1) the strength of the mark; (2) the proximity of the goods [or services]; 6 (3) the similarity of the marks; (4) evidence of actual confusion; 7 (5) marketing channels used; (6) the type of goods [or services] and the degree of care likely to be 8 exercised by the purchaser; (7) defendant’s intent in selecting the mark; and 9 (8) likelihood of expansion of the product [or service] lines.
10 La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 874 (9th Cir. 2014). 11 The Court must balance the risk of inadvertently disclosing confidential 12 information to competitors against the risk that tightly-held protection of confidential 13 information will impair the ability to effectively and quickly litigate this action. The Court 14 is sensitive to plaintiff’s concerns regarding third party donor and volunteer privacy 15 interests; yet, in light of the claims of donor confusion and the Ninth Circuit’s multi-factor 16 test for assessing the likelihood of confusion, it would be unduly burdensome for the 17 parties to prosecute this action without having counsel collaborate with the top 18 executives in their non-profit client entities as the discovery process moves forward. The 19 precise terms of the protective order, along with the “agreement to be bound”, will 20 provide the protection needed – and will inform the top executives who have been 21 designated to have access to any confidential information, that their obligations of 22 maintaining confidentiality are important to the integrity of the litigation as ordered by the 23 Court. Dkt. 59 at 13. 24 1 Accordingly, the Court’s ruling balances these interests and will allow for the 2 parties to designate donor information as attorney-eyes-only, with the caveat that two 3 top level individuals within each organization may review the confidential information. 4 Plaintiff has designated Mindy Roberts and Nancy Neyenhouse as the reviewing 5 individuals within their organization. Dkt. 59 at 4-5. Defendant has designated Tom Vogl
6 and Amber Carrigan as the two top level individuals within their organization who may 7 review the data. Id. Of course counsel will consult with their clients about the importance 8 of respecting the Court’s order regarding confidentiality in this matter.
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1 2 3 4 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 5 AT TACOMA 6 MOUNTAINEERS FOUNDATION, Case No. C19-1819 RSL-TLF 7 Plaintiff, v. ORDER REGARDING THE 8 DESIGNATION OF DONOR THE MOUNTAINEERS, INFORMATION AS ATTORNEY’S 9 EYES ONLY Defendants. 10
11 This matter comes before the Court on plaintiff’s Motion for Entry of ESI Order 12 (Dkt. 22) and Motion for Protective Order (Dkt. 24). The Court held hearings on March 13 13, 2020 (Dkt. 40), April 10, 2020 (Dkt. 44) and ordered supplemental briefing for the 14 hearing on May 6, 2020 (Dkt. 57). 15 The parties have submitted an Agreement Regarding Discovery of Electronically 16 Stored Information (Dkt. 58) and a Stipulated Protective Order (Dkt. 59). The final 17 remaining issue was the issue of attorney-eyes-only designations regarding top-level 18 executives. The parties have entered into a stipulated protective order that provides, in part: “A party may designate as “CONFIDENTIAL - ATTORNEY EYES ONLY” any 19 Confidential material that the party believes in good faith is of such an extremely sensitive 20 or secret nature that disclosure of such information to any other party or non-party 21 reasonably poses the risk of competitive injury and may compromise and/or jeopardize 22 its business interests even if protected by a Confidential designation.” Dkt. 59 at 2-3.
23 24 1 The Court ordered supplemental briefing on the issue of attorney-eyes-only 2 designations, specifically pertaining to information about supporters and donors of 3 plaintiff’s non-profit entity. The defendant argues that there is no basis for the use of 4 attorney-eyes-only designations for plaintiff’s donor list. Dkt. 46 at 2. Defendant further 5 contends that plaintiff’s proposed designations would unduly prejudice and impair
6 defendant’s ability to litigate the current action. Id. Accordingly, defendant requests that 7 the Court appropriately and explicitly limit the categories of attorney-eyes-only 8 designation categories. Id. 9 In the alternative, defendant request that the Court uphold the Court’s previous 10 Order directing the parties to identify non-attorney individuals at the top ties of their 11 organizations to review donor and volunteer information otherwise designated as 12 attorney-eyes-only. Dkt. 46 at 2. 13 Plaintiff argues its donor lists are confidential trade secrets and the Court should 14 allow plaintiff to designate its donor list as attorney-eyes-only, without any exception
15 that would allow a client representative to view that data. Dkt. 49 at 2. Plaintiff contends 16 defendant’s request that defendant’s CEO and Director of Development be allowed 17 access to the donor list “serves no legitimate purpose and threatens Plaintiff’s 18 confidential business information as well as the privacy interest of its donors and 19 supporters.” Id. at 3. Therefore, plaintiff requests that any donor information produced 20 by either party be subject to an attorney’s eyes-only designation. Id. Plaintiff contends 21 that this will allow full and fair access to information without placing organizational and 22 privacy interests at risk. Id. 23 24 1 Discussion 2 Determining whether a protective order is appropriate requires the Court to 3 consider competing interests. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 4 1470 (9th Cir. 1992). There is an interest in a thorough investigation of facts: Discovery 5 of information that is relevant to claims and defenses is crucial to the fairness and
6 accuracy of factual development in litigation. Id.; Fed. R. Civ. P. 26(b)(1)). And, there is 7 an interest in respecting the need to maintain confidentiality of information for which 8 there is a privacy protection: A responding party is entitled to protection from “undue 9 burden” in discovery, including the protection of confidential materials. Id. (quoting Fed. 10 R. Civ. P. 26(c)). 11 Context of the risks and safeguards -- as they develop in relation to claims and 12 defenses in a specific case -- is also a factor for the Court to carefully evaluate. Brown 13 Bag Software v. Symantec Corp., at 1470-1472. The context of this case is allegations 14 of trademark infringement; the relevant inquiry is whether there exists a likelihood of
15 confusion. MAI Systems Corp. v. Peak Computer Inc., 991 F.2d 511, 523 (9th Cir. 16 1993). This case involves competing allegations of trademark infringement. Dkt. 1, 38. 17 Both parties contend that the other party’s continued use of the alleged trademarks has 18 and will continue to cause confusion amongst consumers, donors and the public. Dkt. 1 19 at ¶¶ 66, 67, 70, 73, 116, Dkt. 38 at ¶¶ 3.24, 4.3, 5.2, 6.3. 20 The legal test for determining the likelihood of confusion asks whether the 21 alleged use of a trademark by a non-trademark holder is “likely to cause confusion or to 22 cause mistake, or to deceive as to the affiliation, connection, or association” of the two 23 24 1 products or parties. See, Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792, 2 807 (9th Cir. 2003). 3 To determine whether a likelihood of confusion exists, the Court must weigh the 4 following factors: 5 (1) the strength of the mark; (2) the proximity of the goods [or services]; 6 (3) the similarity of the marks; (4) evidence of actual confusion; 7 (5) marketing channels used; (6) the type of goods [or services] and the degree of care likely to be 8 exercised by the purchaser; (7) defendant’s intent in selecting the mark; and 9 (8) likelihood of expansion of the product [or service] lines.
10 La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 874 (9th Cir. 2014). 11 The Court must balance the risk of inadvertently disclosing confidential 12 information to competitors against the risk that tightly-held protection of confidential 13 information will impair the ability to effectively and quickly litigate this action. The Court 14 is sensitive to plaintiff’s concerns regarding third party donor and volunteer privacy 15 interests; yet, in light of the claims of donor confusion and the Ninth Circuit’s multi-factor 16 test for assessing the likelihood of confusion, it would be unduly burdensome for the 17 parties to prosecute this action without having counsel collaborate with the top 18 executives in their non-profit client entities as the discovery process moves forward. The 19 precise terms of the protective order, along with the “agreement to be bound”, will 20 provide the protection needed – and will inform the top executives who have been 21 designated to have access to any confidential information, that their obligations of 22 maintaining confidentiality are important to the integrity of the litigation as ordered by the 23 Court. Dkt. 59 at 13. 24 1 Accordingly, the Court’s ruling balances these interests and will allow for the 2 parties to designate donor information as attorney-eyes-only, with the caveat that two 3 top level individuals within each organization may review the confidential information. 4 Plaintiff has designated Mindy Roberts and Nancy Neyenhouse as the reviewing 5 individuals within their organization. Dkt. 59 at 4-5. Defendant has designated Tom Vogl
6 and Amber Carrigan as the two top level individuals within their organization who may 7 review the data. Id. Of course counsel will consult with their clients about the importance 8 of respecting the Court’s order regarding confidentiality in this matter. 9 Conclusion 10 Based on the foregoing, the parties’ oral arguments, and the record, the Court 11 ORDERS: 12 (1) The parties may designate donor information as attorney-eyes-only, with the 13 caveat that two top level individuals within each organization may review the 14 donor information.
15 (2) The Court finds that the provision regarding attorney eyes-only designations 16 contained in the parties’ Stipulated Protective Order (Dkt. 59) is appropriate 17 under Fed. R. Civ. P. 26(b)(1) and 26(c); Brown Bag Software v. Symantec 18 Corp., 960 F.2d 1465, 1470 (9th Cir. 1992). 19 Dated this 8th day of May, 2020. 20 21 A 22 Theresa L. Fricke 23 United States Magistrate Judge