TTAB Issues Protective Order Excluding Petitioner's Executive Director from Taking or Attending the Depositions of Two Witnesses, Due to Past Harassment

[Caveat: Yours Truly represents Respondent in this proceeding]. In what appears to be a case of first impression at the TTAB, the Board granted a motion for a protective order excluding Professor Eben Moglen (Columbia Law School), petitioner's executive director, from taking or attending the discovery depositions of two witnesses, due to past harassment. "Respondent's evidence indicates the likely harm to Mr. Kuhn and Ms. Sandler should Mr. Moglen be present at their depositions, let alone take their depositions. This would present significant prejudice to Respondent's ability to defend the cancellation." Software Freedom Law Center v. Software Freedom Conservancy, Cancellation No. 92066968 (November 8, 2023) [not precedential].

Respondent Conservancy submitted evidence that Mr. Moglen, inter alia, screamed at and berated Mr. Kuhn, shared personal information about Mr. Kuhn with third parties, "[m]ade evocative comments in a public setting, which Mr. Kuhn believes was intended to refer to the murder of Mr. Kuhn's mother," called him a "psycho" and he and Ms. Sandler "clowns," yelled at and threatened Ms. Sandler numerous times, and berated Ms. Sandler from the audience while she sat on a conference panel. Conservancy also submitted a declaration from Mr. Kuhn's therapist regarding the likely harm to Mr. Kuhn that would result from Moglen's attendance and participation at the depositions.

Mr. Moglen argued, in part, that he should not be disqualified from taking the depositions because:

[T]heir testimony is they are afraid. Let them call their frailties and troubles what they like, they are no basis for interfering with our, SFLC’s, right to be represented by the counsel of our choice.

After decades spent law professing, I guess there are quite a few people who, imagining me cross-examining them, would feel afraid. Their subjective moods do not constitute a basis for limiting my state-granted right to practice law.

Under FRCP 26(c)(1)(E), the Board may "for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including . . . designating the persons who may be present while the discovery is conducted." "'Good cause' . . . may include barring individuals from attending a deposition in order to prevent intimidation of the witness."

In making this determination, the Board "may balance the deposing party’s significant interest in conducting discovery in preparation for trial in the manner of its choosing against the harm the individual’s attendance at the depositions will cause the witnesses."

Weighing against the potential harm to respondent was "Petitioner's argument that Mr. Moglen has 'a good knowledge of the background and the record' and as an employee of Petitioner, is 'inexpensive.'" The Board found that these facts are not entitled to significant weight.

Petitioner is ably represented by outside counsel, and could send any corporate representative other than Mr. Moglen to assist. Even assuming that Mr. Moglen possesses unique information relating to the claim and defenses pending before the Board (which he has not asserted), Petitioner has not demonstrated that its outside counsel is unable to take the depositions without real-time assistance from Mr. Moglen. As to the added expense of using outside counsel, the Board routinely requires parties representing themselves pro se to retain counsel to obtain access to discovery, even if this results in additional costs.

Finally, the Board observed that if petitioner's counsel finds that he cannot complete the depositions without input from Mr. Moglen, petitioner may seek available remedies: e.g., suspending the depositions and/or filing a motion for additional time, to allow counsel to confer with Mr. Moglen. See Fed. R. Civ. P. 30(d)(1); see also TBMP § 404.06(c). "On the other hand, the potential psychological harm to Respondent’s witnesses cannot be ameliorated by any Board order."

The proceeding remains suspended in light of a pending petition to the Director concerning another discovery issue.

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TTABlogger comment: Mr. Moglen did not file an appearance in the case. The Board noted that "it is quite uncertain whether he could represent Petitioner as counsel. See Trademark Rule 11.307, 37 C.F.R. § 11.307 ('A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness' except in limited circumstances); see also TBMP §513.02 and authorities cited therein."

Text Copyright John L. Welch 2023.