ROBERT H. YOE, III, et al., Plaintiffs, v. CRESCENT SOCK COMPANY, et al., Defendants Case No. 1:15-cv-3-SKL United States District Court, E.D. Tennessee, Southern Division Filed March 24, 2017 Counsel Cara J. Alday, Gary R. Patrick, Patrick, Beard, Schulman & Jacoway, PC, Chattanooga, TN, Jay S. Bowen, Pro Hac Vice, Rebekah Shulman, Will Parsons, Shackelford, Bowen, McKinley, Norton, LLP, Nashville, TN, for Plaintiffs. John T. Winemiller, Ian Garrett McFarland, R. Bradford Brittian, Merchant & Gould, P.C., Knoxville, TN, for Defendants Lee, Susan K., United States Magistrate Judge ORDER *1 Before the Court is a brief regarding ongoing discovery disputes about the list of keywords and terms used to search the internal emails of Defendant Crescent Sock Company (“Defendant” or “Crescent”), filed by Plaintiffs, Robert H. Yoe, III (“Yoe”) and Yoe Enterprises, Inc. (“YEI”) (collectively “Plaintiffs”) [Doc. 220]. Plaintiffs assert that they submit their brief pursuant to the Court's Order entered November 4, 2016 [Doc. 200]. Plaintiffs request that the Court require Crescent to search email accounts of certain Crescent employees and to produce internal emails that contain certain keywords. Plaintiffs also request that the Court require Crescent to produce the responsive documents without redaction. Crescent responded with a memorandum in opposition [Doc. 225] that was later revised [Doc. 226-1] to reflect a notice of errata [Doc. 226]. Plaintiffs filed a reply [Doc. 228]. This matter is now ripe and the brief [Doc. 220] will be construed as a motion to compel. I. BACKGROUND At issue is subpart 5 of Plaintiffs' Request for Production (“RFP”) No. 29, which involves internal communications from September 4, 2013 to present related to prospective and actual sales of OmniWool Tactical socks and Hiwassee Trading Company socks to the military. Originally, Plaintiffs requested “all documentation” related to all products sold, contemplated and/or offered for sale by Crescent to the United States military since September 4, 2013 [Doc. 174 at Page ID #2676]. Crescent objected to this request as vague, indefinite, overly broad and unduly burdensome. Plaintiffs sought to compel Crescent to more fully respond to RFP No. 29 and the Court conducted a hearing on August 15, 2016 on this, and a wide range of other, discovery issues. During the August 15 hearing, the Court ordered Crescent to provide Plaintiffs with a sample of each style of sock that it manufactures for sale to the military [Doc. 163 at Page ID #2612]. Plaintiffs claim they narrowed RFP No. 29 after obtaining the Omni Wool Tactical sock sample [Doc. 174 at Page ID #2677]. From there, Plaintiffs sought 12 different categories of documents they assert are within the scope of RFP No. 29 for the period of September 4, 2013 through the present [Doc. 174-1 at Page ID #2682-83]. Each category was designated as a “subpart.” YEI's subpart 5 seeks to produce all internal communications, including memorandum and emails related to prospective sales and actual sales of Omni Wool Tactical Socks and Hiwassee Trading Company socks to the military [Doc. 177 at Page ID #2731]. Crescent objected to providing this information and asserted that the requested documents are not relevant to the claims and defenses in the lawsuit and “[a]t most, information about Crescent's actual sales and offers for sale, including Crescent's communications to military representatives about sales and offers for sale, are potentially relevant” [Doc. 182 at Page ID #2765]. Crescent contended that production of the requested internal documents would reveal Crescent's current sales strategies to YEI, its competitor, to Crescent's detriment [id.; Doc. 180-1 at Page ID #2753, ¶ 8]. *2 During a hearing on October 26, 2016, the Court determined that the information requested by Plaintiffs was generally discoverable. The Court entered an order November 4, 2016, ordering the parties to work together in good faith to develop key words or search terms for Crescent to use to locate communications responsive to this request [Doc. 200]. The Court ordered Crescent to provide to Plaintiffs its proposed list of key words or search terms by November 4, 2016, and ordered Plaintiffs to provide any additional key words or search terms to Crescent by November 7, 2016. The Court further ordered that if the parties were unable to agree on the comprehensive key word or search terms list, each party “shall” submit their proposed list to the Court by November 8, 2016 and “shall” identify the key words or search terms upon which no agreement could be reached [Doc. 200 at Page ID # 2861]. The parties apparently ignored this directive of the Court, but they continued to attempt to resolve their differences. According to the current filings, on November 2, 2016, Crescent proposed collection protocols of the information sought in subparts 4 and 5 of RFP No. 29, designated further as the Bucket A and Bucket B document collection protocols [Doc. 220-2 at Page ID #3043-44]. The Bucket A protocol addresses the collection of information sought in subpart 4 of RFP No. 29 – between Crescent and third-party individuals. The Bucket B protocol address internal communications among certain Crescent employees. The parties agreed on two conditions for Bucket A, and it is not at issue here. Pursuant to the Bucket A collection, Crescent produced in December 2016 more than 30,000 pages, constituting all non-privileged ESI collected from nine custodians sent to or from certain third-party email accounts [Doc. 226-1 at Page ID #3167]. The parties, however, did not agree on the protocol for Bucket B, regarding information sought in subpart 5 of RFP No. 29. The parties continued to work together in November 2016 in an attempt to reach agreement. They participated in numerous telephone conferences and exchanged emails regarding which keywords Crescent would use to search its emails responsive to subpart 5 of RFP No. 29. Despite these efforts, the parties were not able to agree on the keywords or search terms to be used in the Bucket B information collection protocol. Yet, the parties continued to disregard the Court's order that: “If the parties are unable to agree on the comprehensive key word or search terms list, each party SHALL submit their proposed list to the Court by November 8, 2016 and shall identify the key words or search terms upon which no agreement could be reached.” [Doc. 200 at Page ID # 2861]. Reportedly, Crescent produced 2,650 documents under the Bucket B collection with certain words or names redacted on January 6, 2017. The search method Crescent employed is described in detail in its response brief, Doc. 226-1 at Page ID #3168-70, and is restated as follows. Crescent collected data from the email accounts of three individuals – Cathy Allen, Jenn Bain, and Pete Bellman [Doc. 225-2] – who Crescent identified as “decision-makers who would necessarily be involved in discussions regarding the development of sock for sale to the military” [Doc. 226-1 at Page ID #3168]. Crescent further filtered the emails retrieved by screening for only those that included one of twelve named individuals in the email “to,” “from,” or “cc” field (“Condition #1(B)”). The twelve individuals were Thomas Walden (sometimes spelled Waldon), Joe Allen, Sandra Boyd, Shawna Brazzell, Stephanie Martin, Jenn Bain, Jack Ewing, Heather Lingerfelt, Pete Bellman, Crystal Macon, Pam Breeden, or Cathy Allen. Crescent next screened those emails for ones that contained one of the following keywords used in isolation: military, tactical, technology, program, specification, ADS, marines, army, special forces, special op, MARSOC, or border patrol (“Condition #2(B)”). Crescent then applied additional filters to pair-down the results as described in Crescent's response brief, Doc. 226-1 at Page ID #3169-70 (“Original Bucket B Search”), by including only those emails that contained certain terms and combinations of terms within ten (10) words of each other. Of the remaining emails, Crescent's attorney then determined which were relevant and responsive and produced those to Plaintiffs. *3 Plaintiffs sent Crescent a letter dated January 13, 2017 that addressed what Plaintiffs saw as deficiencies in the production under Bucket B [Doc. 220-3]. In the letter, Plaintiffs identified the individuals whose emails should be searched and the keywords that should be searched singularly and not in combination. Specifically, Plaintiffs asserted: we were clear in our request that certain key words be searched singularly and not in combination with other words. As we have always maintained, the following key words should be searched: Military, tactical, technology, specification, defense, darley, bonney, marines, border patrol, omni!, HTC, OWT or Hiwassee! In addition, the combination of the terms “FITS” and “similar” should be searched. Furthermore, Crescent initially proposed to collect emails from the email accounts of Cathy Allen, Pete Bellman, Jenn Bain, Stephanie Martin, Pam Breeden, and Jack Ewing, all of whom Crescent contended were the custodians from which Crescent reasonably expected to find correspondence about sales to the military. In response, we requested that the emails of the following people also be included in the collection: Thomas Waldon, Joe Allen, Sandra Boyd, Heather Lingerfelt, Shawna Brazzell and Crystal Macon. [Doc. 220-3, at Page ID #3048-49]. Crescent responded in a letter dated January 18, 2017, in which it declined to expand its search to the singular keywords requested by Plaintiff [Doc. 220-4]. In the same letter, Crescent said it would expand the search for a combined term of “FITS” and “similar” so long as they were within ten (10) words of each other [id. at Page ID #3053]. Crescent stated that it “had collected 7 GB of data in its effort to respond to Request No. 29, alone” [id. at Page ID # 3051]. The parties conferred by phone. Plaintiffs state that in that conference, Crescent agreed to search the email account of Thomas Walden; to consider searching the email accounts of two others, Jack Ewing and Heather Lingerfelt; to search the terms “military” and “tactical” singularly and not in combination with other terms; and to search the word “FITS” within ten words of the word “similar” [Doc. 220 at Page ID #2989-90]. Crescent declined to search the email account of six others – Joe Allen, Sandra Boyd, Stephanie Martin, Pam Breeden, Shawna Brazzell, and Crystal Macon [id. at Page ID #2990]. Plaintiff further sought for Crescent to produce the unredacted emails containing redacted names or words [id.]. Crescent produced 5,362 documents on February 10, 2017 responsive to subpart 5 of RFP No. 29 [Doc. 226-1 at Page ID #3171]. Crescent explained by letter dated February 10, 2017 that the documents produced that day included those “containing the words ‘tactical’ or ‘military’ and marked for production those related either to FITS or to other tactical socks sold or developed for sale to the military” and those “from the accounts of Jack Ewing, Thomas Walden, and Heather Lingerfelt using the same criteria originally used to populate Bucket B” [Doc. 225-3, Page ID #3138]. Crescent did not collect documents “from the accounts of Joe Allen, Sandra Boyd, Stephanie Martin, Pam Breeden, Shawna Brazzell, or Crystal Macon” [id.]. The same day, Plaintiffs filed the brief (herein construed as a motion) now at issue. II. STANDARDS Under Rule 26 of the Federal Rules of Civil Procedure, “[u]nless otherwise limited by court order, ... [p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense.” Fed. R. Civ. P. 26(b)(1). Nevertheless, there are ultimate and necessary boundaries to discovery. Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978). “ ‘[I]t is well established that the scope of discovery is within the sound discretion of the trial court.’ ” Coleman v. Am. Red Cross, 23 F.3d 1091, 1096 (6th Cir. 1994) (quoting United States v. Guy, 978 F.2d 934, 938 (6th Cir. 1992)). The court may limit such discovery if “the burden or expense of the proposed discovery outweighs its likely benefit.” Fed. R. Civ. P. 26(b)(2)(C)(iii). *4 Rule 26(b)(1) provides that “[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case.” Proportionality is to be determined by looking to the importance of the issues at stake, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden of the proposed discovery outweighs its likely benefit to the requesting party. See Rule 26(b)(1). As the advisory committee's notes clarify, the scope of discovery was not intended to include everything “reasonably calculated to lead to the discovery of admissible evidence,” so this language was removed and the proportionality factors were restored to their original place in defining the scope of discovery. Fed. R. Civ. P. 26(b)(1) advisory committee's note to 2015 amendment; see also Quality Mfg. Sys., Inc. v. R/X Automation Sols., Inc., No. 3:13-CV-00260, 2016 WL 1244697, at *2 (M.D. Tenn. Mar. 30, 2016). III. ANALYSIS Plaintiffs maintain it is “critical” for Crescent to produce its internal emails relating to the development and production of the socks Crescent has offered to, or is selling to, the military [Doc. 220 at Page ID #2990]. Plaintiffs take the position that Crescent is using YEI's trade secrets, based on a physical inspection of the socks Crescent is selling and a review of the actual computer Crescent has used to manufacture the OmniWool Tactical socks [id.]. Plaintiffs describe Crescent's internal email communications as “highly relevant to establish who directed the misappropriation of YEI's intellectual property for the purpose of creating a sock to be sold to the military to compete directly FITS® with the military and what representations were made to the military to induce them to purchase socks other than FITS®” [id. at Page ID #2991]. Plaintiffs take issue with Crescent's Original Bucket B Search, stating “Crescent unilaterally determined the email accounts it would search and only those that contained certain search term combinations, and then those combinations had to be within ten (10) words of each other” [id. at Page ID #2988]. Crescent objects to Plaintiffs' additional ESI requests as “not in line with the proportionality mandate of Rule 26” [Doc. 226-1 at Page ID #3173]. Crescent reports that “[a]lmost all” of its “discovery efforts since October 1, 2016, have been devoted to Request No. 29” [id. at Page ID #3166]. These efforts allegedly have cost Crescent in excess of $75,000, including “attorney and vendor costs for managing, hosting, processing, reviewing, and producing the ESI.” [id.]. Crescent argues that of the documents produced so far none show evidence Omni Wool Socks were copied from FITS designs [id. at Page ID #3173-76]. Crescent asserts it is not reasonably likely that more ESI using additional custodians and search terms will yield any new and probative evidence [id. at Page ID #3177]. Further, Crescent argues that many of the additional search terms that Plaintiff proposed are “too ubiquitous” [id. at Page ID #3184]. For these reasons, Crescent objects to Plaintiffs' request as “unreasonable, wholly unsupported by the facts, and not at all justified by the evidence produced to date” [id. at Page ID #3164]. Plaintiffs cite three justifications for their request for further discovery of subpart 5 of RFP No. 29. First, Plaintiffs cite a February 2014 email chain in which Crescent employees discuss with third-party sales representative Mike Bonney his request to create sock samples for possible sale to the military [Doc. 220-1]. Next, Plaintiffs cite an email sent by Heather Lingerfelt on September 23, 2015 in which “she suggests to Cathy Allen that Crescent take the OmniWool name and add a tactical line using the ‘current product’ ” that Plaintiffs state refers to FITS [Doc. 220 at Page ID #2992]. Finally, Plaintiff cites sealed Exhibit I [Doc. 222], asserting it shows that “Crescent used the FITS® programs to create the OmniWool Tactical Socks sold to the military” [Doc. 220 at Page ID #2990]. Plaintiffs assert that Exhibit I indicates that Crescent did not even change the terminology when copying the FITS programs [id.]. *5 Crescent disputes the conclusion or inference Plaintiff has drawn from each instance. The Allen Declaration [Doc. 225-4] explains that Mike Bonney contacted Crescent employees unsolicited [Doc. 225-4 at Page ID #3141]. She explains that Crescent is often contacted by sales people to produce socks like something else Crescent manufactures to increase the sales people's business or sales [id.]. Ms. Allen explains that she chose not to respond because of the ongoing controversy with YEI over the ownership of the FITS technology [id.]. She explains that the matter died and Crescent never manufactured the samples requested [id.]. She does not believe that there are additional written communications relating to Mr. Bonney's request for samples [id.]. Next, Crescent argues nothing in the September 23, 2015 Lingerfelt email implicates FITS [Doc. 226-1 at Page ID #3174]. Crescent already had a line of Omni Wool socks that it had sold before FITS was developed [id.]. Crescent explains that Ms. Lingerfelt's reference to “current product” logically refers to the existing Omni Wool line, which would need to be lengthened to accommodate military boots [id.]. There would not be a need to lengthen FITS socks for military boots. Disputing this, Plaintiffs state that Crescent's explanation is in direct contradiction to another internal email on the same topic that Plaintiffs discovered in the Bucket B documents produced February 10, 2017 [Doc. 228 at Page ID #3208]. Plaintiffs argue that specific internal emails from Crescent employees produced thus far from the Bucket B documents show only one conclusion: “that Crescent took the FITS sock, sold it to the military, and extended the sock” [id. at Page ID #3209]. With regard to Exhibit I, Crescent argues that Plaintiffs' analysis is based on the file names contained in the program rather than on the actual code used in the program files [Doc. 226-1 at Page ID #3175]. Crescent argues the “prestyle” files titled FITS-CRE, FIT-TRAN, FIT-CREW, and FITS-TER contain no code written specifically for FITS [id.]. One of the files is empty with no content and the other files contain codes written by the software developer for use in Crescent's programs for existing Omni Wool socks or new codes [id.]. Crescent located the original stand-alone versions of the four pre-style files shown on Exhibit I on Mitchell Beckler's laptop when he was an employee of Crescent [id. at Page ID #3176]. The codes apparently were built into at least one earlier Omni Wool program using the software and were later modified [id.]. The program's metadata still shows in the original list of prestyle names [id.]. Crescent states that “[n]one of the knitting specifications for the FITS specific elastic pattern or any other code proprietary to the FITS design appear in the code of the Omni Wool program” [id. at Page ID #3176]. This is sworn to in the Bain Declaration [Doc. 225-6]. Ms. Bain explains that the file names building blocks in earlier knitting programs and their “analysis of the program used to manufacture the Omni Wool Tactical sock confirms that no code or other FITS-related proprietary content associated with those four prestyle file names are to be found in the program for the accused sock.” [Doc. 225-6 at ¶ 10]. In response, Plaintiffs challenge that “many of the statements in Ms. Bain's affidavit are false” [Doc. 228 at Page ID #3211]. Plaintiffs assert that Mr. Beckler conducted an “in-depth analysis” that compared “the Omni Wool Tactical Program for a given style of sock to the FITS® program for the same style of FITS® sock. It is clear that Crescent used the exact same steps to create most of the Omni Wool Tactical sock,” including use of a trade secret related to the toe seam [id. at Page ID #3212]. *6 Plaintiffs request that the Court order Crescent to search the email accounts of Thomas Walden, Jack Ewing, Heather Lingerfelt, Sandra Boyd, Joe Allen, Stephanie Martin, Pam Breeden, Shawna Brazzell, and Crystal Macon [Doc. 220 at Page ID #2996]. Crescent identified Walden, Ewing, and Lingerfelt as being “already Bucket B custodians.” [Doc. 226-1 at Page ID #3181]. They argue that the remaining six individuals Plaintiffs name either are not or have not been “central to the design, development, sale, or marketing of socks to the military.” [id. at Page ID #3183]. Plaintiffs also request that Crescent be required to add three names – David Bales, Bill Reveil (Reveal), and Tammy Mainor – to the list of individuals whose names appear in the to/from/cc field, search criteria under Condition #1(B) [Doc. 220 at Page ID #2997]. Crescent maintains that the addition of these three individuals would be “cumulative,” as none of them “were decision-makers with respect to the development or design of socks sold to the military, or otherwise” [Doc. 226-1 at Page ID #3183]. Plaintiffs also request that this Court order Crescent to produce the internal emails since January 1, 2014 that contain the following key words: military, tactical, technology, specification, defense, darley, bonney, Marines, border patrol, Omni!, HTC, OWT, Hiwassee, brand, and the combination of the terms “FITS®” and “similar” [Doc. 220 at Page ID #2997]. Crescent objects to three of the proposed terms – “bonney,” “darley,” and “defense” – on the ground that Bucket A included responsive emails from Mike Bonney and Darley Defense [Doc. 226-1 at Page ID #3183]. Next, Crescent argues that other terms – “technology,” “specification,” and “brand” – are generic, while “Hiwassee,” “HTC,” “omni,” and “OWT” are brand terms and “Both sets of terms would paint with far too broad a brush” [Doc. 226-1 at Page ID #3184]. Plaintiffs further request that Crescent produce the documents without redaction [Doc. 220 at Page ID #2997]. Crescent responds that “YEI's complaints about redactions are overblown because Crescent's Bucket B production contains only one email chain in which a single, irrelevant phrase was redacted” [Doc. 226-1 at Page ID #3184]. Plaintiffs assert that the weight of the evidence recovered thus far and its search parameters are reasonable and not in violation of the proportionality requirement of Rule 26 [Doc. 228 at Page ID #3221]. Crescent states that it would agree to give Plaintiff YEI additional discovery if YEI would share in associated costs [Doc. 226-1 at Page ID #3177]. Defendant states that “YEI's Request No. 29 has already imposed on Crescent a crippling burden. It is unreasonable to expect Crescent to continue to shoulder all the discovery costs in this case” [id.]. Defendant states that “[w]ithout conditioning the advancement of e-discovery tiers on either the sharing of costs or a distinct showing of need, the risk of prejudice abounds” [id.]. After weighing the rationale provided by Plaintiffs for seeking additional ESI from Crescent against the burden further discovery places on Crescent, the Court FINDS that the information Plaintiffs now seek as responsive to subpart 5 of RFP No. 29 is generally discoverable as set forth herein. Accordingly, the Court ORDERS Crescent to produce the non-privileged and responsive information collected from the search protocols conducted in the manner and pursuant to the parameters set forth below. Plaintiffs MAY select up to two new custodians to undergo the same search and collection of ESI provided in the Original Bucket B Search, similarly subject to Conditions #1(B) and #2(B), that were performed on the email accounts of Crescent employees Cathy Allen, Jenn Bain, and Pete Bellman and described by Crescent in its revised opposition memorandum, Doc. 226-1 at Page ID #3169-70. Plaintiffs MAY add one new combination search, which may use terms identified by Crescent as “ubiquitous” [Doc. 226-1 at Page ID #3184] so long as the keyword search of the term chosen is run with a limiting combination that includes conjunctive connectors (e.g., “AND” or “w/__”) with other terms. The combination search may be applied to searches of custodian accounts already searched in the Original Bucket B Search and new custodians selected by Plaintiffs in response to this Order.[1] If the results of this search yield truly significant new information, upon timely application the Court will consider whether additional word searches are warranted and proportional to the needs of the case. *7 Plaintiffs SHALL be responsible for the actual cost of any additional ESI searches responsive to subpart 5 of RFP No. 29 that are completed in the manner described above. However, to the extent that Crescent elects to conduct a review of the documents produced in the search prior to production, Crescent will do so at its own expense. Given the approaching discovery completion deadline, this process must be completed timely and the Court will not tolerate unreasonable delay. IV. CONCLUSION For the foregoing reasons, Plaintiffs' request for further discovery [Doc. 220] is GRANTED IN PART as set forth herein. SO ORDERED. ENTER: Footnotes [1] ESI searches conducted pursuant to this order may filter for information protected by attorney-client privilege by following the procedure set forth in Plaintiffs' reply brief, Doc. 228 at Page ID #3222. Accordingly, Crescent may “filter out any emails that were sent to or received from any of its attorneys, or even those in which any of its attorneys' names were mentioned. Crescent can focus its privilege review upon those emails” [id.].