Court Declines to Order Defendant to Redo its Search After Self-Collection: eDiscovery Case Law

Shark week, er, eDiscovery Case Week, continues!  In Maker’s Mark Distiller, Inc. v. Spalding Grp., Inc., et al., No. 3:19-CV-00014-GNS-LLK (W.D. Ky. Apr. 20, 2021), Kentucky Magistrate Judge Lanny King granted the plaintiff’s motion for protective order regarding deposition testimony concerning ‘[t]he functionality of any Claimed Trade Dress’ and granted in part and denied in part the plaintiff’s motion to compel – denying it with regard to the plaintiff’s request to compel Defendant Spalding to implement a new search protocol and redo its search, but granting it with regard to the plaintiff’s request to compel Defendant Spalding to produce additional financial records.

Case Background

In this case involving claims by the plaintiff that the defendants had marketed a similar bourbon infused cigar after it had terminated its licensing agreement with the defendants, the plaintiff filed their Motion for Protective Order and Motion to Compel in December 2020; arguing that (1) Spalding must implement a new search protocol and produce additional financial records, and (2) that Spalding should not be permitted to seek deposition testimony concerning functionality.  Regarding functionality, the plaintiff requested the Court enter “a Protective Order precluding Defendants Spalding … from seeking deposition testimony from Maker’s Mark under Federal Rule of Civil Procedure 30(b) concerning ‘[t]he functionality of any Claimed Trade Dress.’ ”.


As for Spalding’s search process and the plaintiff’s request that Spalding redo its search, the plaintiff argued that “(1) ‘Defendants ignored the email accounts (and other records) of at least two custodians’; (2) the keyword searches used were inadequate; (3) Outlook is an inappropriate program for discovery purposes; (4) “employee’s and not attorney’s” made relevance determinations; and (5) the low number of produced emails imply withholding.”

Judge’s Ruling

With regard to the Motion for Protective Order, Judge King stated in granting the plaintiff’s motion: “it is not the case that the presumption of non-functionality would evaporate even if this Court were to cancel the ‘465 mark. As the burden rested with defendants, they could have preserved the argument by asserting an affirmative defense. But by failing to assert functionality, Defendants have waived their ability to challenge…Rather than raising functionality, Spalding concedes they have not challenged, and do not plan to challenge, functionality: Spalding ‘does not dispute that the ‘465 Registration is incontestable and only subject to certain defenses and challenges to validity…. [,] does not dispute that Maker’s Mark is entitled to a presumption that the ‘465 Registration is non-functional and further does not dispute that it has not asserted an affirmative defense directed to the issue of functionality of the ‘465 Registration.’”

With regard to Spalding’s search process and the plaintiff’s request that Spalding redo its search, Judge King stated: “Here, Maker’s Mark waited six months to bring this issue to the “Defendant’s” attention and nine months to bring this issue to the attention of the Court…Federal Courts have found more timely objections constituted waiver…Thus, Maker’s Mark untimely objection constitutes waiver.”

However, Judge King also stated: “Even if it did not, the alleged deficiencies identified do not justify Defendant reconstituting their entire production.”  Responding to each of the plaintiff’s five points above, Judge King stated, as follows:

  1. “While also true that there appears to have been an inconsistency by the employees in their collection effort, this does not appear to be purposeful misrepresentation, but rather a mistake. And it is a mistake that they attempt to cure. Spalding offered to ‘run the search terms through Mr. Owings’ email within three (3) business days and produce any additional documents that may be garnered (although it is not anticipated that there would be any not previously produced).’…Maker’s Mark refused this offer, with the only stated reason being that ‘Defendants would have been following the same flawed process they used with the other custodians.”…Thus, where this Court concludes the process was not flawed, a new search is not justified, and where Defendant’s make no demand for these documents, none will be granted.”
  2. (Citing Hyles vs. New York City and United States v. O’Keefe) “Maker’s Mark also asserts problems with the keywords themselves, but this Court sees no reason why these terms ought not have captured the relevant documents for collection.”
  3. “The Court sees no reason why this is the case.”
  4. “Here, not only are there are no smoking guns, Spalding demonstrated their relevancy determinations, instruction, and oversight.”
  5. “Maker’s Mark is required to provide evidence to permit a reasonable deduction that evidence was withheld, which rises above vague notions, speculation, or hunches…Here, Maker’s Mark fails to identify any credible evidence—not of flawed process (which is disputed above), but that the demonstration of flawed process ought to permit a deduction of withheld evidence.”

Judge King concluded by denying the plaintiff’s motion to compel the defendant to redo its search, stating: “Thus, Spalding shall not be required to conduct an entirely new search.”

With regard to the plaintiff’s motion to compel additional financial records, Judge King stated, in granting that request: “Here, it is not readily apparent to the court that any harm would come from production, or that it would be unduly burdensome to produce the limited documents requested. Similarly, while Spalding asserts that ‘Maker’s Mark is seeking damages for sales made by Ted’s Cigars after that License Agreement was terminated.’…This is not the only reason these documents might be relevant. Maker’s Mark asserts that ‘those records are relevant to demonstrating the importance of the role the Licensed Cigar played in the development and growth of Defendants’ business’ and ‘will likely be relevant to evaluating the reasonableness of the costs and other amounts Defendants assert should be deducted to calculate Defendants’ profits from the Bourbon Cigar.’…Thus, the information is discoverable, and ought to be produced.”

So, what do you think?  What could the plaintiff have done differently regarding its request for the defendant to redo its search?  Please share any comments you might have or if you’d like to know more about a particular topic.

Case opinion link courtesy of eDiscovery Assistant, an Affinity partner of eDiscovery Today.  See Kelly Twigger, CEO of eDiscovery Assistant discuss the case ruling here!

Grammar Disclaimer: Grammatical errors regarding plural terms are not mine… 😉

P.S.: Happy 16th Birthday, Kiley! 🙂

Disclaimer: The views represented herein are exclusively the views of the author, and do not necessarily represent the views held by my employer, my partners or my clients. eDiscovery Today is made available solely for educational purposes to provide general information about general eDiscovery principles and not to provide specific legal advice applicable to any particular circumstance. eDiscovery Today should not be used as a substitute for competent legal advice from a lawyer you have retained and who has agreed to represent you.

One comment

  1. From my very limited ‘crow’s nest’ view of the matter, I wonder if the court’s thinking may have been that plaintiff did one thing right, and one thing not so right, in its search request: 1) Based on the ruling, plaintiff correctly was specific in asking for certain financial records, and was granted the request; 2) From this review, it may be that plaintiff erred by not stating more specifically what it expected would be found by conducting an entirely new search.

    I don’t know if any such discussion or conclusion was actually part of the decision, but a requestor must keep in mind the 2015 FRCP updates that require, in part, specificity in requests for additional information, just the same as requiring specificity in opposing an additional production. Perhaps plaintiff here could have been more successful in their request by including some of that specificity.

    Aaron Taylor
    GreenLight Discovery LLC

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