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.

Continue Reading Plaintiff “Strikes Out”: Expert can be Both Testifying and Consulting

Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 2156665 (N.D. Ill. Jul. 26, 2007) (Cole, M.J.)
Judge Cole granted in part defendant Little Lady Foods’ (“LLF”) Fed. R. Civ. P. 37 motion to bar evidence of allegedly late-identified trade secrets. Plaintiff Fast Food Gourmet (“FFG”) originally identified four trade secret elements of its process for making thin crust frozen pizza. FFG’s Vice President of Operations Crause identified four additional elements during his deposition. And FFG later identified two additional elements. LLF argued that FFG should be limited to the first four elements because FFG never updated its interrogatory responses to include the six additional elements. The Court held that the four additional elements disclosed during the deposition had “otherwise been made known” pursuant to Fed. R. Civ. P. 26(e) and, therefore, were not required to be added to FFG’s interrogatory responses. The Court excluded the other two elements. FFG argued that it had identified the elements by identifying documents containing the elements in its interrogatory responses pursuant to Fed. R. Civ. P. 33(d). But the Court held that the documents FFG identified only identified the two elements sporadically, and in connection with elements that were not trade secrets. This, combined with Crause’s testimony that he had identified all of the trade secret elements, made FFG’s Rule 33(d) statements insufficient.
Practice Tip: Rule 33(d) is often seen as a simple escape from answering cumbersome or difficult interrogatories. Of course, it is also often warranted. But when you use Rule 33(d), make sure to identify the correct documents, and make sure the identified documents fully support your position.

Continue Reading Interrogatory Responses Supplemented by Deposition Testimony

According to Interbrand Ronald is worth more than Mickey. Interbrand has just published its 2007 Best Global Brands, ranking the top 100 brands that: 1) derive at least a third of earnings outside of the brand’s home country; 2) are recognized beyond the brand’s customer base; and 3) have public marketing and financial data. Interbrand also excludes brands that are hard to identify as having brand value separate from their products or services. For example, pharma brands are excluded because Interbrand has determined that consumers focus on products rather than the overarching company branding. That leaves Northern District companies like Abbott Labs out of the running. But the Northern District is still very well represented. For example, McDonald’s jumped one spot this year, surpassing Disney in brand value. Here are the Northern District companies (or at least those very near the Northern District) on the list:
Northern District Top Global Brands 07 Rank 06 Rank Company 07 Brand Value (in USD Millions)
8 9 McDonald’s 29.398
59 59 Wrigley’s 5.777
77 69 Motorola 4.149
86 79 Kraft 3.732
Thanks to the Seattle Trademark Lawyer for identifying the ranking.

Continue Reading Ronald Beats Mickey: Northern District Home to Several Top Global Brands

Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., No. 05 C 6022, 2007 WL 1673563 (N.D. Ill. Jun. 8, 2007) (Cole, J.).
Judge Cole denied plaintiff Fast Food Gourmet, Inc.’s (“FFGI”) motion to compel responses to interrogatories, in this trade secret case involving frozen pizzas (you can read more about this case in the Blog’s archives). FFGI served defendants with an interrogatory seeking information regarding which brands of frozen pizza (aside from the accused DiGiorno Thin Crispy Crust Pizza) defendants baked in the ovens which were allegedly part of FFGI’s trade secret crust-making process for stone hearth oven, thin crust, frozen pizzas. Defendants objected to the interrogatory, which led to a meet and confer between the parties on February 15, 2007, two weeks before the close of fact discovery on March 1. The meet and confer did not resolve the dispute. On April 1, FFGI submitted its expert reports and then, six weeks after the close of discovery, FFGI moved to compel responses to the interrogatories. But FFGI failed to notice the motion until more than one month later on May 18. The Court noted that, while it had discretion to grant the motion, motions to compel filed after the close of fact discovery are generally held to be untimely unless accompanied by a “reasonable and persuasive justification” for the delay. FFGI, however, provided no justification for its delay.
But the Court ultimately denied FFGI’s motion not because it was untimely, but because the evidence lacked evidentiary value. FFGI assured the Court that it would not seek any other discovery after receiving the interrogatory responses. FFGI had also repeatedly taken the position that its trade secrets crust-making process involved the combination of various elements and processes including the ovens that were the focus of FFGI’s interrogatories, but that the ovens alone were not a trade secret. The interrogatory responses alone , therefore, were of no value. They would necessarily require additional discovery to be relevant to the case. For example, it was not enough to know which other pizzas were baked in the ovens. FFGI would need to know how each pizza baked in the oven was prepared in order to determine whether the pizzas were made using the FFGI trade secrets. That would require additional fact discovery, but fact discovery was already closed. The Court, therefore, denied FFGI’s motion to compel.
Practice tip: File your discovery motions on or before the close of discovery. And always explain to the Court why you need documents or interrogatory responses, particularly if you are seeking them after the close of discovery.

Continue Reading Delayed Filing Leads to Half-Baked Motion to Compel