Sullivan d/b/a Survivor v. Jamison, No. 06 C 5240, Slip Op. (N.D. Ill. Dec. 21, 2010) (Mason, J.).
Judge Mason ruled upon the parties’ cross motions regarding a Protective Order in this trademark and copyright case involving the band Survivor, of Eye of the Tiger fame. The Court held that third parties, and former Survivor members, could be given access to confidential documents used in conjunction with their respective testimony at deposition, hearings or trial. They were not, however, permitted access to attorney’s eyes only documents.

Continue Reading Related Third Parties Given Limited Access to Confidential Documents

McDavid Knee Guard, Inc. v. Nike USA, Inc., No. 08 C 6584, Slip Op. (N.D. Ill. Jun. 9, 2009) (Mason, Mag. J.).
Judge Mason denied plaintiffs’ motion to disclose defendant’s highly confidential technical information to plaintiff Stirling Mouldings’ Managing Director (“MD”) in this patent case. Stirling argued that MD, who was also the patent-in-suit’s inventor, was a necessary technical expert based upon his extensive experience with the technology. Nike countered that Stirling had already hired other expert witnesses who had been able to provide technical opinions and that, if granted access to Nike’s supplier’s alleged trade secret process, MD would not be able to compartmentalize the information and avoid using it in competitive decision-making. Nike also argued that Stirling was precluded from seeking access to the information for MD because he was specifically excluded from seeing Highly Confidential materials in the Protective Order and because the parties expressly agreed that information from a site visit was to be maintained as Highly Confidential and only show to plaintiffs’ counsel.
The Court held that Stirling was not precluded by prior agreements or orders from seeking access for MD. But the Court also held that plaintiffs had not met their burden of showing good cause to modify the Protective Order granting MD access to Highly Confidential documents. First, plaintiffs had already hired outside experts that had provided competent technical opinions and none of those experts had submitted a declaration stating they needed MD’s expertise to render an opinion. Furthermore, Nike showed that disclosing its supplier’s technical information to MD would likely cause competitive harm. It would be impossible for him to fully segregate the technical knowledge he would gain when performing his strategic decision-making role for Stirling. The Court noted, however, that it did not determine whether the process at issue was, in fact, a trade secret.
Finally, the Court noted that it did not consider plaintiffs’ arguments that MD would necessarily hear the technical information during the trial. The Magistrate Judge did not have jurisdiction over the District Judge’s decision of whether to seal the courtroom for trial when technical information is discussed.

Continue Reading Inventor/Plaintiff’s Managing Director Not Given Highly Confidential Technical Information

Magistrate Judge Mason’s term ends on September 28, 2009. As part of considering reappointing Judge Mason for an additional eight year term, the Northern District is establishing an advisory panel of Northern District citizens. Additionally, the Northern District Clerk is accepting written comments to regarding Judge Mason to assist the panel until March 20, 2009 at the following address:
Magistrate Judge Advisory Panel
c/o Mr. Michael W. Dobbins
Clerk of Court
U.S. District Court
219 South Dearborn St. – Rm. 2050
Chicago, IL 60604

Continue Reading Northern District Considers Reappointment of Magistrate Judge Mason

Faruki v. Eagle Seven, No. 06 C 7125, Min. Order (N.D. Ill. Aug. 10, 2007) (Mason, J.).
Magistrate Judge Mason denied plaintiffs’ motion for a protective order to prevent a third party deposition. Plaintiffs argued that the third party’s only knowledge relevant to the case was outside the relevant time frame. But the Court did not reach the merits of the motion because plaintiffs filed their motion two business days prior to the deposition. The motion was filed so close to the date of the deposition that the motion was noticed for the day after the deposition was set to be taken. Plaintiffs were aware of the subpoena and the deposition date for at least two weeks prior to filing their motion and the parties appeared before the Court during that time, but plaintiffs failed to raise the issue. The Court, therefore, denied the motion as untimely.
Practice tip: Deposition scheduling issues are often negotiated until very near the planned date, but if you think you might bring the issues before the Court make sure to warn the Court if you are appear while you are aware of the issue and, if at all possible, file your motion with sufficient time to notice your motion before the deposition is scheduled.
* The minute order is available here.

Continue Reading Untimely Protectiver Order Motion is Denied

Am. Hardware Manufs. Assoc. v. Reed Elsevier Inc., No. 03 C 9421, 2007 WL 1521185 (N.D. Ill. May 14, 2007) (Moran, J.).
Judge Moran denied in part plaintiff’s motion to strike defendants’ confidentiality designations regarding the deposition of defendants’ former CEO. Defendants designated as “Highly Confidential,” among other portions of the deposition, those portions in which one of defendants’ customer contracts (the “Contract”) was discussed. Defendants argued that the terms of the Contract were trade secrets and, therefore, should be given the strongest confidentiality protection available pursuant to the parties’ Protective Order. Magistrate Judge Mason previously reviewed the designation, held that the Contract was not likely trade secret and reduced the related designations to “Confidential.” Judge Moran agreed with Judge Mason, rejecting the argument that the Contract was a trade secret as “conclusory and vague.” And Judge Moran agreed that the Contract warranted a “Confidential” designation. Judge Moran also explained that while the deposition and related documents would be protected by the Protective Order during discovery, they would not when the Court ruled on dispositive motion or held trial, quoting the Seventh Circuit:
“Secrecy is fine at the discovery stage, before the material enters the judicial record” those documents that “influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality.” Baxter Int’l, Inc. v. Abbott Labs., 297 F.3d 544, 545 (7th Cir. 2002). Thus, at the summary judgment, trial or appellate stage, documents that have previously been deemed confidential may not retain such a designation. See Little v. Mitsubishi Motor Mfg. of Am. Inc., 2006 WL 1554317, at *3 (C.D. Ill. 2006).

Continue Reading Contract Terms are Not Trade Secret