Tuesday, March 01, 2016

Precedential No. 4: Documents Must Be Produced in Unredacted Form, Says TTAB

The Board ordered Applicant Coleman to produce unredacted versions of the documents it had previously produced, rejecting Coleman's argument that the redacted portions were irrelevant or contained confidential material. Intex Recreation Corp. and Intex Marketing Ltd. v. The Coleman Company, Inc., 117 USPQ2d 1799 (TTAB 2016) [precedential].

Coleman maintained that the redacted portions concerned product lines not at issue in this proceeding, and "highly proprietary" competitive information. The Board found persuasive the approach taken by the district court (S.D. Ohio) in Beverage Distributors, Inc. v. Miller Brewing Co. :

(1) redaction of otherwise discoverable documents is the exception rather than the rule; (2) that ordinarily, the fact that the producing party is not harmed by producing irrelevant information or by producing sensitive information which is subject to a protective order restricting its dissemination and use renders redaction both unnecessary and potentially disruptive to the orderly resolution of the case; and (3) that the Court should not be burdened with an in camera inspection of redacted documents merely to confirm the relevance or irrelevance of redacted information, but only when necessary to protect privileged material whose production might waive the privilege.

The Board noted that FRCP 34 speaks of production of "documents," rather than paragraphs or sentences. It saw no compelling reason for Coleman not to disclose purportedly irrelevant information in a document that contains relevant information. Unilateral redaction deprives the receiving party of the full context of the relevant information and fuels mistrust about the propriety of the redaction. Allowing such redaction would incentive parties to hide as much as they dared to hide.

Unilateral redaction would increase the potential for discovery disputes, resulting in wasteful expenditure of time and resources, and would place "an unnecessary and substantial burden" on the Board in conducting in camera review of each disputed document.

As to confidential information, the Board observed that its standard protective order in automatically in place in every case, and Coleman should have designated the disputed documents under the appropriate tier of confidentiality. If Coleman believed the standard order was inadequate, it should have sought modification of the order.

The Board allowed Coleman two weeks to produce the unredacted documents. To the extent they contain confidential information, Coleman should designate such portions of the documents under the appropriate tier of confidentiality.

Read comments and post your comment here.

TTABlog comment: According to Coleman's opposition paper, "The documents about which Intex complains largely comprise Powerpoint presentations to huge customers including Walmart and Target."

BTW: Suppose a document contains a third-party's confidential information that the producing party is obliged to keep confidential?

Text Copyright John L. Welch 2016.


At 8:07 AM, Anonymous Anonymous said...

I have this situation right now. I had to subpoena third-party documents and signed a non-disclosure agreement. I classified these documents as attorneys' eyes only - but the reason I needed the third-party documents in the first place was because they contradict Opposer's witnesses' testimony. In my view, I need to show at least some of them to Opposer's witnesses on cross - but was planning to do by moving to a confidential transcript. I am not sure what the correct answer is...


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