*1 By letter dated October 18, 2012, Defendants, Scott Pontone, Harry Pontone and Pontone Casket Company (together “the Pontone Defendants”), pursuant to Federal Rule of Civil Procedure 37, moved to compel Plaintiffs to respond to certain of Harry Pontone's Sixth Discovery Requests and Scott Pontone and Pontone Casket Company's Fourth Discovery Requests directed to Plaintiffs (collectively referred to as “Pontone Defendants' Counterclaim Discovery Requests”). Plaintiffs timely responded to the Pontone Defendant's Motion to Compel via letter dated October 25, 2012. As Counsel for the Pontone Defendants and Plaintiffs have done in the past, they prepared helpful charts addressing the alleged deficiencies in Plaintiffs' responses to the Pontone Defendants' Counterclaim Discovery Requests and Plaintiffs' response to those alleged deficiencies.[1] Although there are a substantial number of discovery requests at issue in this Motion to Compel, the parties, through counsel, have again been helpful in organizing their respective arguments in such a way as to allow me to efficiently address each of the discovery requests in question.

Interrogatory No. 2: In this Interrogatory, the Pontone Defendants seek the name and law firm affiliation of all of Plaintiffs' legal counsel who, during the last five years (June 1, 2007 to date), have had discussions with any third party relating to or regarding any of the Defendants, Josephine Pesce or Joey Redmond. Plaintiffs objected to this Interrogatory on the basis that it is overly broad and seeks information protected by the attorney-client and work-product privileges. Plaintiffs did identify their law firm, Reed Smith as having had discussions regarding the Defendants with third parties in the course of investigating the claims and defenses at issue in this case.

Based on the Parties' arguments, it is clear that the critical information the Pontone Defendants are seeking is whether or not any attorney from Reed Smith had discussions with any of the representatives of the funeral homes in the New York area who provided declarations to counsel for the Defendants in this action. It is my view that the Interrogatory as framed is overly broad and on its face seeks information that would clearly be protected by the attorney work-product privilege. Given the nature of the Counterclaims filed by the Pontone Defendants and Defendant Batesville in this case, however, it is my judgment that Defendants are entitled to know the identity of any of the funeral home representatives who submitted declarations in this case with whom counsel for Plaintiffs or anyone acting on their behalf has had a discussion relating to the claims and defenses in this litigation. 1 thereby direct that the Plaintiffs provide an amended response that identifies any of the funeral home representatives who provided declarations in this case with whom they have had discussions regarding the claims and defenses in this case as well as the date and nature of those discussions (by telephone, e-mail, in person, etc.). If none of those representatives have been contacted, Plaintiffs should so indicate. Once that information is provided in an amended answer, counsel for Defendants are free to make inquiry with those representatives identified as to the content of any such discussions which would not be privileged.

*2 Interrogatory No. 3: In this Interrogatory, the Pontone Defendants ask the Plaintiffs to respond to a contention interrogatory regarding the scope of the confidentiality provisions contained in the 2005 Asset Purchase Agreement and Scott Pontone's Key Employee/Employment Agreement. Plaintiffs object to the Interrogatory on the ground that it is ambiguous, particularly to the extent that it uses the undefined terms “general knowledge, information and skills” and on the ground that it poses a hypothetical and asks for an opinion. Subject to those objections, Plaintiffs responded to the Interrogatory. The crux of the dispute between Plaintiffs and the Pontone Defendants regarding this Interrogatory is a disagreement over whether the phrase “general knowledge, information and/or skills regarding the casket market” is or is not vague and ambiguous. The Pontone Defendants are correct that Fed.R.Civ.P. 33(a)(2) authorizes a party to ask for an opinion or contention that relates to fact or the application of law to fact.

I am satisfied, however, that Plaintiffs' response to the Interrogatory is adequate as Plaintiffs have previously identified the nature of the “Company Confidential Information” that they contend Scott Pontone possesses and allegedly has been using in violation of the confidentiality provisions in the cited agreements. The objections, response and disagreements between the parties regarding this interrogatory response are merely another example of one party trying to get the other party to accept its version of the facts and law and that party “crying foul” when the responding party will not agree. This type of back and forth has typified many of the discovery disputes between the parties in this case. Specifically, the Pontone Defendants' Motion to Compel with regard to this Interrogatory is Denied.

Interrogatory No. 4: This Interrogatory is essentially the same as Interrogatory No. 3 except that it relates to Harry Pontone. After the Pontone Defendants corrected a typographical error in the Interrogatory, Plaintiffs provided a similar response to this Interrogatory as their response to Interrogatory No. 3. For the reasons I expressed in my recommended decision relating to Interrogatory No. 3, the Pontone Defendants' Motion to Compel with regard to this Interrogatory is Denied.

Interrogatory No. 6: In this Interrogatory, the Pontone Defendants propound a contention Interrogatory relating to the interpretation of Section 4.06 and Section 4.07 of Harry Pontone's Key Employee/Employment Agreement. After reviewing Plaintiffs' Response to the Interrogatory and the Pontone Defendants' description of the alleged deficiency in that response, it is my determination that the Pontone Defendants' Motion to Compel is Denied with one limited exception. To fairly characterize this Interrogatory, the Pontone Defendants ask Plaintiffs whether the cited provisions in Harry Pontone's Key Employee/Employment Agreement preclude Mr. Pontone from working for a “Competing Business” (as defined in the referenced Employment Agreement) solely with respect to the 37 funeral home customers identified by Plaintiffs as potentially at issue in this litigation (with no further restriction). Plaintiffs should answer this straight forward contention with a “yes” or “no” along with any additional explanation they believe is necessary. To that extent, the Pontone Defendants' Motion to Compel is Granted.

Interrogatory No. 7: In this Interrogatory, the Pontone Defendants ask Plaintiffs to identify each and every statement in the now famous Customer Declarations produced to Plaintiffs at Bates Nos. FH0001 through FH0078, Plaintiffs contend is “inaccurate.” Plaintiffs object to this Interrogatory on the grounds that it is overly broad and unduly burdensome and further that a response requiring Plaintiffs to specify how and why they contend certain statements are inaccurate relates to Plaintiffs' strategies and theories in the case and is protected work-product. Plaintiffs respond to the Interrogatory by simply stating that any of the allegations of the Customer Declarations which conflict with the Amended Complaint and/or the discovery to date are inaccurate.

*3 I agree with the Pontone Defendants that their Interrogatory does not ask Plaintiffs to explain “how or why” a particular statement in the referenced Customer Declarations is inaccurate. Thus, it is my determination that the Pontone Defendants are entitled to a specific response to this Interrogatory simply identifying by paragraph number or statement, those statements in the Declarations that Plaintiffs claim are inaccurate. Plaintiffs may designate their response as “Attorney's Eyes Only” if they so choose and to the extent the Pontone Defendants believe such a designation is improper, the Confidentiality Agreement and Order in this case sets forth the procedure for the Parties to follow to resolve that dispute.

Interrogatory No. 11: In this Interrogatory, the Pontone Defendants ask Plaintiffs to identify each and every customer they contacted to investigate the statements set forth in the Customer Declarations discussed above. Plaintiffs object to this Interrogatory on attorney work-product grounds maintaining that any discussions between their counsel and any customers related to this case is protected work-product. Plaintiffs did respond to this Interrogatory by identifying contacts any non-lawyer representatives of Plaintiffs have had with customers who provided Declarations.

My decision with respect to the Motion to Compel Responses to Interrogatory No. 2 in this Report and Recommendation addresses the dispute between Plaintiffs and the Pontone Defendants with regard to this Interrogatory. In my view, if Plaintiffs provide the additional information I have directed them to provide in response to Interrogatory No. 2, the Pontone Defendants will have the information they need to conduct any further investigation and/or to make arguments regarding the claims set forth in their Counterclaim. The Pontone Defendants Motion to Compel with respect to this Interrogatory, therefore, is Denied as Moot.

Interrogatory No. 14: In this Interrogatory, the Pontone Defendants ask Plaintiffs to identify any private investigator or security agency or guard or “other individual” retained by any of the Plaintiffs or their lawyers from June 1, 2010 to the present. Plaintiffs object to this Interrogatory on the ground that it seeks information protected by the attorney-client and work-product privileges. As an additional matter, the Interrogatory as drafted is overly broad because it is not tied to the Defendants or the claims in this litigation. To the extent Plaintiffs or their counsel have retained a private investigator or security firm to assist them in the investigation of the actions of Defendants in anticipation of potentially filing this action, the question posed by the Motion to Compel and Response is whether the identification of any such individual, agency or firm constitutes protected work-product. Neither of the parties provided me with any case law addressing this question.

Fed.R.Civ.P. 26(b)(3) precludes a party from discovering documents and tangible things prepared in anticipation of litigation or for trial by or for another party or its representative (including the other party's attorney, consultant, insurety, indemnitor, insurer, or agent). The scope of that rule covers work performed by a private investigator or security company hired in anticipation of litigation by Plaintiffs or Plaintiffs' counsel because any documents or materials prepared by any such individual or company is protected from discovery. It follows, therefore, that the identity of the individual or company retained in anticipation of litigation is likewise protected as is whether or not Plaintiffs' Counsel made the determination to hire any such individual or company.

Interrogatory No. 16: In this Interrogatory, the Pontone Defendants ask Plaintiffs to identify any entity from which they have purchased caskets from June 1, 2010 to the present that were not manufactured by any of the Plaintiffs. Although Plaintiffs filed objections to the Interrogatory, they did respond and identify Batesville as a company from which Plaintiffs purchased caskets during the relevant time period. Plaintiffs, however, did not specifically identify individuals with knowledge of these purchases in their response to this interrogatory. Although I recognize that Plaintiffs have identified, through written discovery and deposition in this case, essentially all of the material employees that were employed in their casket business, it is my determination that Plaintiffs should identify the individual or individuals with the most knowledge regarding this topic so that Counsel for the Pontone Defendants can consider whether or not she wants to include one or more of those individuals in the five Counterclaim depositions she has been given leave to take. To that limited extent, the Pontone Defendants' Motion to Compel a further response to this Interrogatory is Granted.

*4 Interrogatory No. 17: In this Interrogatory, the Pontone Defendants ask Plaintiffs to identify each and every customer to whom any of the Plaintiffs have sold caskets manufactured by Batesville from June 1, 2010 to the present. The Pontone Defendants claim that the requested information is relevant to the Pontone Casket Company's claim for false and misleading advertising in the Amended Counterclaims. Plaintiffs objected to this Interrogatory on the grounds that it is overly broad and seeks information that is not relevant.

The Pontone Defendants have not articulated any reason why Pontone Casket Company would have standing to raise any claims related to Plaintiffs' alleged failure to disclose to any of its customers that the casket sold to them was manufactured by Batesville or some other third party. Nevertheless, because we are in the discovery phase for the Counterclaims, Plaintiffs should answer in a supplemental answer to this Interrogatory, whether or not they generally inform customers of the manufacturer of caskets sold by Plaintiffs, but manufactured by Batesville. Based upon that response, the Pontone Defendants can make inquiries during upcoming depositions of counterclaim deponents regarding Plaintiffs' practice. To that limited extent, therefore, the Pontone Defendants' Motion to Compel is Granted.

Interrogatory No. 18: In this Interrogatory, the Pontone Defendants ask another contention interrogatory relating to the application of the restrictive provisions in Harry Pontone's Employment Agreement and 2005 Asset Purchase Agreement to a hypothetical future employment position for Harry Pontone. The back and forth between Plaintiffs and the Pontone Defendants over this Interrogatory is another example of the Parties elevating form over substance and not thinking like trial lawyers. Contrary to the Pontone Defendants' suggestion that the question posed in this Interrogatory is simple, the terms used and the manner in which the hypothetical contention is phrased, is anything but simple. Although the Plaintiffs' response is not a beacon of clarity, it does answer Defendants' question. As I read the response, Harry Pontone's employment by a “Competing Business” after October 1, 2013 would not automatically violate the provisions of the 2005 Asset Purchase Agreement and Key Employee/Employment Agreement, but his disclosure or use of any of Plaintiffs' “Confidential Information” as defined in those agreements would. The Pontone Defendants' Motion to Compel, therefore is Denied.

Interrogatory No. 19: In this Interrogatory, Pontone Defendants ask Plaintiffs to identify what “methodology” any of the Plaintiffs have used or intend to use to determine whether the Individual Defendants Josephine Pesce or Joey Redmond have been using or disclosing “Confidential Information” belonging to any of the Plaintiffs. Plaintiffs objected to this Interrogatory on the grounds that it is vague, ambiguous, incomprehensible and seeks Information protected by the attorney-client and work-product privileges. Simply put, this Interrogatory asks Plaintiffs to tell the Pontone Defendants how they intend to prove their case against the Individual Defendants. As noted in the further statement provided by Plaintiffs in their response to the Motion to Compel, the Plaintiffs had previously responded to multiple discovery responses regarding their allegations as to the Confidential Information that has been used and/or disclosed by Scott Pontone, Harry Pontone, Josephine Pesce and Joey Redmond. Plaintiffs also have identified numerous documents allegedly containing such Confidential Information and/or proof of its disclosure or use. At the end of this case, the Fact Finder will determine whether or not the evidence cited by Plaintiffs is sufficient to establish their alleged claims against Scott Pontone or Harry Pontone but, at this juncture in the case, Plaintiffs' response to this Interrogatory is adequate. The Pontone Defendants' Motion to Compel, therefore, is Denied.

*5 Interrogatory No. 20: In this Interrogatory, the Pontone Defendants seek disclosure of the amount of legal fees and expenses Plaintiffs have been billed in connection with this lawsuit to date. Plaintiffs object to this Interrogatory on the basis of relevancy and on attorney-client and work-product privilege grounds. In my judgment, the total amount of fees billed to Plaintiffs to date is not protected by either the attorney-client or work-product privilege. Although the Court will ultimately have to determine whether or not the total amount of fees billed to Plaintiffs is relevant to the Defendants' Counterclaims regarding Plaintiffs alleged improper motives in commencing and pursuing their claims against Defendants, we are still in the discovery phase and Plaintiffs should provide that number in response to this Interrogatory. Plaintiffs can designate this information as “Attorney's Eyes Only” until such time as the Court determines whether or not it is relevant and admissible in connection with Defendants' Counterclaims. With that condition, therefore, the Pontone Defendants' Motion to Compel is Granted.

Request for Production No. 20: This request seeks production of all documents and communications related to alleged surveillance or investigation of the Individual Defendants, Josephine Pesce or Joey Redmond, by the request of Plaintiffs or their attorneys. Plaintiffs object to this request on the grounds that it seeks documents protected by the attorney-client and work-product privileges and is duplicative of prior requests.

As noted in my discussion of Interrogatory No. 14, Plaintiffs' work-product objection is supported by Fed.R.Civ.P. 26(b)(3)(A). The Pontone Defendants' Motion to Compel, therefore, is Denied.

Request for Production No. 22: This Request seeks production of all documents and communications related to customer returns of caskets in the New York Metropolitan area since January 1, 2009. Plaintiffs object to the Request on grounds that it is overly broad and unduly burdensome, that it seeks documents and information that are not relevant to the claims and defenses nor likely to lead to the discovery of relevant evidence and that the Request is duplicative of prior requests. Specifically, Plaintiffs state that documents responsive to this Request have already been produced in response to Request Nos. 24 and 30 of Scott Pontone's Second Amended Request for Production.

I agree with Plaintiffs that this Request should be limited to the particular funeral home customers Plaintiffs identified as relevant to their damage claims. The information sought by the Pontone Defendants with respect to those customers in this Request for Production is certainly relevant as it relates to the Defendants' claim that any loss of business suffered by Plaintiffs with respect to certain of these customers resulted from factors other than alleged improper solicitation by either of the Individual Defendants. To the extent Plaintiffs have produced all documents relating to returns or complaints lodged by any of these 37 funeral home customers in the New York Metropolitan area, there is nothing to compel. If Plaintiffs have not done so, in connection with their response to the previous request for production, they should at least identify the Bates number of the documents they have produced responsive to this Request.

Request for Production No. 24: This Request demands that Plaintiffs produce unredacted copies of all non-privileged documents they have produced to date in this litigation that contain redactions. Plaintiffs in response cite the undersign's previous Report and Recommendation allowing Plaintiffs to redact certain information from Board minutes, marketing reports, strategic planning documents, and sales reports that are wholly unrelated to the New York Metropolitan market at issue in Plaintiffs' claims in its Amended Complaint.

With the filing of the Counterclaims by Batesville and the Pontone Defendants and the increasing disputes that have arisen over redactions for reasons other than “privilege” performed by all the Parties in this case, I have concluded that my earlier decision allowing redactions for purposes other than attorney-client or work-product privilege should be amended. Frankly, Plaintiffs chose to file a Complaint against its largest competitor and certain of its former employees, at least one of whom is actively in competition with Plaintiffs. The Defendants in response have filed wide-ranging Counterclaims attacking Plaintiffs' conduct with respect to its business and its pursuit of this litigation. When Claims and Counterclaims between competitors of the type found in this case are asserted, one of the costs of that decision is the fact that sales, marketing and other potentially sensitive documents become subject to production in the litigation. For that reason, parties, like the Parties in this case, negotiate and put in place a Stipulated Protective Order and Confidentiality Agreement that permits them to protect sensitive or arguably unrelated or irrelevant information in the documents that also contain relevant information by designating those materials as “Attorney's Eyes Only”. I am also persuaded by Judge McVerry's Opinion in Orion Power Midwest, LP v. American Coal Sales, Co., 2008 WL 4462301 (W.D. Pa. Sept. 30, 2008) and the absence of any case law support for redactions unrelated to attorney-client or work-product privilege.

*6 It is my determination, therefore, that ALL PARTIES SHOULD PRODUCE IN UNREDACTED FORM ANY DOCUMENTS IN WHICH THE REDACTIONS ARE UNRELATED TO ATTORNEY-CLIENT OR WORK-PRODUCT PRIVILEGE. If the Parties can work out some arrangement between them that allows certain redacted material to remain redacted, that is certainly permissible. But, this constant battle over redactions (Plaintiffs' pending Motion to Compel against the Pontone Defendants contains a redaction issue) is an unnecessary distraction, wasteful and is simply not supported by the Federal rules or case law. Because Plaintiffs and Batesville have produced redaction logs, the process of identifying those documents that have been redacted and simply producing unredacted versions should not prove too difficult or time consuming, particularly the documents that have been scanned into a database.

I recognize that this reversal of my previous determination may create some short-term angst for the Parties, but I believe it will result in a long-term benefit in moving this case forward.

Request for Production No. 27: This Request asks for all records Plaintiffs have kept or maintained from 2007 to the present regarding the Confidential Information, documents or trade secrets that Plaintiffs claim Individual Defendants, Josephine Pesce or Joey Redmond accessed from 2005 to August, 2010. Plaintiffs object on multiple grounds but primarily because they have responded to multiple discovery requests concerning the Confidential Information, documents and trade secrets they contend Scott Pontone, Harry Pontone, Josephine Pesce and Joey Redmond accessed while employed by Plaintiffs and allegedly are using in violation of various contractual and common law restrictions. Plaintiffs' response to the Motion to Compel specifically identifies those prior requests and interrogatories to which it provided this information.

I am satisfied that Plaintiffs' prior responses are adequate and give the Pontone Defendants sufficient notice of the evidence upon which Plaintiffs are relying to support their breach of duty claims against Scott Pontone and Harry Pontone. The Pontone Defendants' Motion to Compel, therefore, is Denied.

Request for Production No. 28: This Request asks for all records and documents of any attempt by Plaintiffs to hire employees or former employees of Defendant Batesville. Although Plaintiffs initially objected to this Request on the grounds that it seeks information not relevant to the claims and defenses in this action nor reasonably calculated to lead to the discovery of relevant evidence, their response to the Motion to Compel states that responsive documents have already been produced and additional responsive documents would be produced pursuant to the ESI Protocol negotiated by the Parties.

I agree with the Pontone Defendants that the Request is relevant to the Defenses and Counterclaims filed by Defendant Batesville and the Pontone Defendants but I have no basis for rejecting Plaintiffs' representation that any additional responsive documents will be produced pursuant to the ESI searches that have been conducted in connection with the search terms agreed to between Plaintiffs and the Pontone Defendants for Counterclaim Discovery.

Once counsel for the Pontone Defendants has an opportunity to review those documents produced by Plaintiffs, she can determine whether or not she believes Plaintiffs' representation is accurate and seek appropriate relief if necessary after the required meet and confer conference with Plaintiffs' counsel.

*7 Although this Report and Recommendation denies the Pontone Defendants' Motion to Compel for the majority of the responses to Request for Production and Interrogatories challenged in that Motion, there are a number of the Interrogatories and Request for Production to which I have determined Plaintiffs owe a supplemental or more specific response. To the extent that neither Plaintiffs nor the Pontone Defendants file objections to this Report and Recommendation (likely, a pipe dream), is my recommendation that Plaintiffs provide those amended and supplemental responses by November 30, 2012.

Respectfully submitted by:

/s/ Mark D. Shepard

Mark D. Shepard

Special Discovery Master

Babst, Calland, Clements and Zomnir, P.C.

Two Gateway Center, 6th Floor

Pittsburgh, PA 15222

(412) 394-5400

msheparda@babstcalland.corn

For ease of understanding in the event objections to this Report and Recommendation are filed, I attach to this Report and Recommendation a copy of the chart attached to Plaintiff's Response which contains the full text of the particular Counterclaim discovery request in question, Plaintiff's original response, the deficiency in that response as identified by counsel for the Pontone Defendants and the further statements and responses of the parties set forth in their respective Motion to Compel and Response.