Sara Lee Corp. v. Kraft Foods Inc., No. 09 C 3039, Slip Op. (N.D. Ill Apr. 1, 2011) (Denlow, Mag. J.).

Judge Denlow, with a nod to baseball’s opening day, denied plaintiff Sara Lee’s motion to compel expert discovery from defendants (collectively "Kraft Foods") in this trademark dispute. Kraft Foods retained an expert who helped create a survey and then used that survey as part of his expert opinion regarding advertising of Sara Lee hot dogs. The report opined that Sara Lee’s advertisement — "Taste America’s Best Beef Franks" — was misleading because it led consumers to believe that it was Sara Lee’s Angus Beef Franks rather than its Ball Park Beef Franks that were being advertised. Kraft Foods also used the expert in a consulting capacity regarding another Sara Lee hot dog advertisement. The Court’s in camera review showed that all the expert did was advise as to how a survey could be conducted, and that he did not know whether a survey was conducted or what the results were if a survey was conducted.

The Court noted that most courts allow an expert to have both testifying and non-testifying roles, but that the production obligation is generally broad. The only material that can be withheld as privileged or work product is information generated or considered "uniquely" as a consultant. And ambiguity was to be decided in favor of production. Because the requested materials only discussed the studies regarding the advertisement for which the expert was not testifying, they did not need to be produced. Furthermore, because the materials did not provide facts, data or assumptions provided by counsel, they would not have to have been produced by a testifying expert based upon the recent revisions to the Fed. R. Civ. P. 26(a)(2)(B). Instead, the requested materials were protectable work product pursuant to Fed. R. Civ. P. 26(b)(4)(C).

Finally, the Court denied Kraft Foods’ motion for fees and costs because Sara Lee was substantially justified in seeking in camera review of the disputed communications.