*1 Defendants move to compel additional document production, information regarding document searches and spoliation, and additional in camera review. Plaintiffs object that the requests are moot and not proportionate to the needs of the case. Plaintiffs move for a protective order precluding any further discovery in response to the Court's Amended Order on discovery issues of February 22, 2019 (“February Order”). For the following reasons, Defendants' motion is granted in part and Plaintiffs' motion is denied as moot.

Plaintiffs' motion for protective order asserts that they have fully complied with the Court's February Order and requests that discovery be deemed closed as to each aspect of that order. In the alternative, Plaintiffs request a special master be appointed if discovery is going to continue. Defendants' motion to compel argues that Plaintiffs have not complied with the Court's February Order on Motions 1, 3, 6, 8, and 11, as well as other, previous orders of the Court. Defendants also argue that the Court should not grant any protective order or appoint a special master. Because Plaintiffs' motion presumes compliance with the Court's February Order for which Defendants move to compel compliance, the Court first addresses Defendants' motion to compel.

Defendants request that the Court order Plaintiffs to: (1) search the documents of three custodians with the term “RBK”; (2) produce documents relating to an outside counsel opinion that Erica Han purportedly obtained; (3) produce the documents of Corry Kelahear or allow Defendants to issue a third-party subpoena to Mr. Kelahear; (4) produce documents from certain adidas and Reebok Board members, executives with roles on the Board, and persons who attended and participated in Board meetings; (5) produce, in a method that preserves metadata, employee/agent store visits covering off-price stores, from July 1, 2012 to November 10, 2013; (6) fully comply with previous Court orders regarding providing detailed information relating to document destruction; (7) submit for in camera review newly-produced documents spanning from March 2015 to March 2016 relating to the 2016 trademark registration for improper redaction of facts and the crime-fraud exception; and (8) submit for in camera review all documents withheld on the basis of attorney-client privilege or work product that refer to TRB or RBX for disclosure of underlying facts relating to Defendants' defense of laches, the date Plaintiffs reasonably believed litigation was likely, and a determination of whether work-product protection should be waived.

Defendants request that the documents of custodians Han, Will Federspiel (to the extent he is in possession of Han's documents), and Todd Krinsky be searched for the term “RBK” from the time period of January 1, 2011-December 31, 2012. Plaintiffs contend that after the motion to compel was filed, they ran this search and only two responsive documents were found. Defendants express skepticism at this result, because Han was a primary person involved in the RBK trademark maintenance program in 2012 and based on documents produced from other custodians she was a primary source of communication. Thus, Defendants expect that there would likely be more responsive documents than what has been produced.

*2 Plaintiffs respond that Han's communications could have been produced from other custodians. That, however, would not explain expected communications such as emails between Han and Kelahear, a custodian whose documents have not been searched and who it is evident from other documents had more than one communication with Han. Plaintiffs also note that their original RBK 2012 trademark renewal production was “a few dozen” documents and their supplemental production after the February Order was only six documents. This is puzzling because the RBK 2012 renewal program appears to have involved numerous people in several departments spanning many months. If the Court correctly understands the representations by Plaintiffs, the total production other than the documents ordered produced after the Court found a waiver of attorney-client privilege was approximately 30 documents. This seems low given the program's communication-intensive nature. The Court therefore understands Defendants' concern regarding the number of responsive documents.

To confirm that responsive documents have been produced, Plaintiffs shall re-run a search using the standalone term “RBK” on the documents of Han, Federspiel (to the extent he is in possession of Han's documents), and Krinsky from the time period of January 1, 2011-December 31, 2012. For each of these custodians, Plaintiffs shall provide Defendants with a sworn statement attesting that the search was conducted and the results retrieved, including the total number of documents returned from the search (regardless if they were duplicative of documents already produced, privileged, or otherwise designated), the number of those documents that were eliminated through internal deduplication (if applicable), the number of those documents that were duplicative of documents already produced (if applicable), the number of those documents that were designated as attorney-client privileged or subject to work-product protection (if any), and the number of any newly-responsive documents produced as a result (if any).

Defendants request documents related to Han's communications with outside counsel Notaro, Michalos & Zaccaria P.C., relating to the 2012 RBK trademark renewal. Defendants assert that there were communications between Han and outside counsel referencing a graphic that contained the RBK logo and discussing whether the graphic would be enough to establish use of RBK as a trademark. Defendants assert that Plaintiffs have not produced the graphic that Han sent to outside counsel or what the “opinion” was that outside counsel provided to Han regarding whether that graphic would be sufficient. Defendants request information regarding how outside counsel searched its records, and if the search was insufficient then a further search by outside counsel or Plaintiffs might be necessary.

Plaintiffs respond that they provided outside counsel with a copy of the February Order, requested counsel gather all responsive documents, and produced all the documents gathered by outside counsel to Defendants. Plaintiffs argue that no further action is warranted and discovery into how outside counsel searched its records is unnecessary, disproportionate, and based on conjecture that any “opinion” was provided to Han by outside counsel in writing. Plaintiffs' objections are sustained, and Defendants' motion is denied.

Kelahear works for CCM Hockey, which is a Canadian company that Reebok sold in June 2017. Kelahear was involved in the 2012 RBK stickering program as it related to hockey products.

Defendants argue that although CCM Hockey is no longer affiliated with Reebok, Plaintiffs have not clearly responded to the question of whether after the sale of CCM Hockey Plaintiff retained any contractual or other right to access Kelahear's documents, or whether Plaintiffs could readily get the documents by asking CCM Hockey. Thus, Defendants argue, Kelahear's documents may still be within the possession, custody, or control of Reebok, or easily attainable by Reebok. Plaintiffs also argue that because Kelahear's documents were in the custody and control of Plaintiffs during the fact discovery period of this litigation and the documents were not produced, having Plaintiffs obtain the documents or at least attempt to obtain the documents is reasonable. In the alternative, Defendants request leave to subpoena CCM Hockey for Kelahear's documents.

*3 To the extent Plaintiffs maintained as a term of sale or through some other mechanism the right to possession, custody, or control over CCM Hockey's or its employee's documents, Plaintiffs are directed to search or to have CCM Hockey search Kelahear's documents in the same manner they searched other custodians for 2012 RBK trademark renewal and maintenance responsive documents. To the extent, however, that Plaintiffs do not have possession, custody, or control over such documents, Defendants' motion is denied.

Defendants request that the documents of “unsearched” Reebok Board members, executives, and persons attending Board meetings be searched, including Tim Behean, Allan Pye, Elizabeth Birchenhough, Martin O'Brien, and Sarah Talbot. Defendants also request that the documents of “unsearched” adidas Board members, executives, and persons attending Board meetings be searched, including Hermann Deininger (former adidas Chief Managing Officer), Jan Runau (former adidas Chief Corporate Communication Officer), and Michael Rupp (former Reebok Chief Operating Officer). Defendants also mention Matthias Malessa and Gerben Otter, who were “witnesses” during the Board meeting where the U.S. company's decision to “pause” use of the RBK mark was discussed.

Plaintiffs state that they already have searched the documents of all Board members. Plaintiffs object to searching other persons documents merely because they are an executive or because they attended a Board meeting, without any other basis provided for finding that the person might have information relevant to the 2012 RBK stickering program or the earlier decision not to use the RBK mark. Plaintiffs also state that Behean's documents were destroyed.

Defendants respond that Talbot and O'Brien had only self-searches done that did not include the 2012 RBK stickering and maintenance program. Defendants also respond that the Board members whose documents were searched were generally not around during the relevant 2007-2012 time period and thus searching the documents of these more ancillary executives and Board meeting attendees is more critical.

Defendants have repeatedly questioned the lack of production relating to Reebok's decision to transition away from or “pause” use of the RBK mark. Such an important corporate decision would be expected to have some level of discussion and analysis. Considering the history around the production relating to this topic, the Court will allow searches of the documents of the executives and others who attended the Board meeting where the “pause” of the RBK Mark was discussed, for three months before and after that Board meeting. Talbot and O'Brien's documents are also to be re-searched, if they were not previously searched for documents relating to the 2012 RBK trademark renewal and maintenance (or stickering) program.

Defendants request an order compelling Plaintiffs to produce documents relating to any visits to “off-price stores” (such as to T.J. Maxx, Marshalls, Ross Stores, and Burlington Coat Factory), from the time period July 1, 2012 through November 10, 2013. Defendants contend that Plaintiffs have refused to search non-legal custodians for relevant and responsive documents, despite the February Order compelling Plaintiffs to produce documents relating to store sweeps and site visits during that time period.

Plaintiffs do not address Defendants' arguments in the briefing before the Court. Plaintiffs instead note that they did produce a few documents from the relevant time period relating to store visits. Plaintiffs also note that they produced a significant number of documents from outside the relevant time period because they wanted to “avoid” future discovery disputes and thus produced everything they received from their outside investigators, regardless of responsiveness or relevance.

*4 Defendants, however, provide a copy of a letter from Plaintiffs' counsel to Defendants' counsel discussing this issue, among others. Plaintiffs' counsel explains:

ECF 444-15 at 8.

At this point, further discovery into this issue would be an unreasonably burdensome “fishing expedition.” See Rivera v. NIBCO, Inc., 364 F.3d 1057, 1072 (9th Cir. 2004) (“[C]ourts need not condone the use of discovery to engage in fishing expeditions.”). It is unknown what non-legal employees, if any, visited stores in 2012 and 2013 and whether they took any photographs. Searching the documents of hundreds of employees on the chance that one might have performed a sweep or site visit is disproportionate and unreasonably burdensome. Defendants' motion is denied.

Defendants argue that Plaintiffs have not complied with the February Order and previous Court orders requiring that “Plaintiffs must inform Defendants whether the files of any former employees (within the designated categories) have been destroyed since the commencement of this action and, if so, Plaintiffs must further disclose the relevant dates, extent, and reasons for any such destruction of documents.” The Court further noted that Plaintiffs may not “assume” that a former employee's documents have been destroyed pursuant to a general document destruction policy but must confirm that the documents had, in fact, been destroyed.

Plaintiffs provided Defendants with a chart detailing the departure date of the former employees, with the document destruction date of 30 days later (pursuant to the general document destruction policy). See, e.g., ECF 442-1 at 6. Plaintiffs' counsel further represented that “Plaintiffs have searched their information technology records and have found that no records indicate anything other than that the company's policy was followed in each of these instances. Thus, the company believes the employees' email (including archived email) and hard drives were deleted pursuant to company policy on or before the deletion date indicated below.”

Defendants argue that Plaintiffs have not sufficiently researched whether the departed employees' documents are accessible. For example, Defendants note that Behean was listed as a key witness in lawsuits filed in 2010, 2013, and 2014 (and thus presumably subject to litigation holds), that he is an attorney with settlement authority who entered into 191 settlement agreements on Plaintiffs' behalf, and that Plaintiffs' document retention policy states that litigation files are to be preserved during the pendency of litigation and for seven years thereafter, and thus it “strains credulity” that Behean's documents were destroyed 30 days after he left the company in 2014.

*5 Plaintiffs have sufficiently complied with the Court's orders for regular former employees. For former employees such as Behean that were identified as witnesses or potential custodians in pending litigation or attorneys whose files might otherwise be preserved, however, Plaintiffs must perform a more diligent investigation into whether the documents were actually destroyed pursuant to the general document destruction policy or were otherwise preserved. Defendants' motion is granted in part.

Defendants move for an order compelling Plaintiffs to provide the Court for in camera review documents from 2015-2016 withheld for attorney-client privilege and work-product protection relating to Reebok's 2016 renewal of the RBK mark. Defendants contend that Plaintiffs' trademark maintenance program in 2012 was not bona fide use in commerce. Defendants argue that after 2012 and leading up to the 2016 trademark renewal, Plaintiffs' use of the mark did not become bona fide, and review of the documents in camera will support a finding of the crime-fraud exception, the same as the Court's in camera review did for the 2012 trademark renewal.

Plaintiffs respond that Defendants have not made the requisite threshold showing for an in camera review. Plaintiffs emphasize that after 2014, Reebok sold hundreds of thousands of products with the RBK mark on the outside of the packaging, indicating bona fide use, and unlike the 2012 sales where the stickers with the mark were placed on the inside of the box. Defendants respond, however, that Plaintiffs do not provide documentary support identifying what sales involve the mark on the outside of the packaging. Defendants also respond that Federspiel testified that Reebok does not know when the stickers started being placed on the outside of the boxes and that Krinsky testified that the spreadsheet on which Plaintiffs rely to make this argument was subject to “human error” and was “manually tampered with before production” and thus is not reliable.

To obtain in camera review of communications that a party contends fall within the crime-fraud exception, the party must demonstrate “a factual basis adequate to support a good faith belief by a reasonable person that in camera review of the materials may reveal evidence to establish the claim that the crime fraud exception applies.” United States v. Zolin, 491 U.S. 554, 572 (1989) (citation omitted). The Ninth Circuit has observed that the threshold for conducting in camera review is “considerably lower ... than for fully disclosing documents.” In re Grand Jury Investigation, 974 F.2d 1068, 1073 (9th Cir. 1992). “[U]nfounded suspicion,” however, is insufficient to justify in camera review. See Rock River Commc'ns., Inc. v. Universal Music Grp., Inc., 745 F.3d 343, 353 (9th Cir. 2014) (alteration added). If the party moving for in camera review makes the threshold showing, “courts should make the decision to review in light of the amount of material they have been asked to review, the relevance of the alleged privilege[d] material to the case, and the likelihood that in camera review will reveal evidence to establish the applicability of the crime-fraud exception.” In re Grand Jury Investigation, 974 F.2d at 1073 (alteraton added).

Defendants' argument that there is sufficient evidence to suspect fraud on the PTO in the 2016 renewal of the RBK mark to justify in camera review is based on Plaintiffs' conduct relating to the 2012 renewal, the fact that Plaintiffs' employees could not clearly recall when Plaintiffs began putting the stickers on the outside of the box, the fact that Plaintiffs' records do not distinguish between sales with stickers on the outside of the box versus the inside, and the fact that Plaintiffs' spreadsheet is not fully reliable. Plaintiffs, however, continuously sold a large volume of products with the RBK mark from 2012 through the 2016 renewal. They did not stop and then start again shortly before the 2016 renewal, as occurred in 2012. Although Defendants may have a subjective good faith belief that fraud on the PTO occurred in 2016, there is not a sufficient factual basis on which to order an in camera review. Even if Defendants' met the threshold requirement, considering the amount of material, the relevance of the privileged material to the case, and the likelihood that in camera review will reveal evidence to establish the applicability of the crime-fraud exception, the Court would decline to review the documents in camera. Defendants' motion on this basis is denied.

*6 Defendants argue that the documents should be reviewed in camera so that the Court can consider whether Plaintiffs failed to produce underlying factual information that is severable and distinct and thus able to be produced when privileged information can be redacted. Plaintiffs respond that they redacted privileged transmittal emails and produced the nonprivileged attachments. Defendants have not shown a basis for the Court to conclude that Plaintiffs have improperly withheld factual information that is severable and distinct from otherwise privileged documents and could be produced with redactions. This motion is denied.

Defendants argue that the Court should review documents in camera to determine whether they contain factual information that is severable and can be produced if the document is redacted to protect the attorney-client privileged or work-product protected information. Defendants contend that there are factual gaps relating to when Plaintiffs first learned about the RBX mark, the RBX brand, and TRB. Defendants discuss the “critical facts and information” that remain “undisclosed” and “missing.” Absent from Defendants argument, however, is a basis for asserting that these purportedly “missing” “critical facts and information” are contained in documents withheld for privilege and are contained in a manner that is distinct and severable and thus discoverable. Defendants' motion for in camera review on this basis is denied.

Plaintiffs assert that they did not need to preserve documents until August 26, 2014. Defendants contend that Plaintiffs claim protection under the work-product doctrine for documents earlier than August 26, 2014. Defendants argue that Plaintiffs cannot refute an earlier obligation to preserve documents while at the same time claiming work-product protection for earlier documents, because the standards for each are similar.

Defendants cite to one 2013 document relating to a watch notice issued on the trademark application for RBX in the Philippines. Plaintiffs respond that because this document involved an application in the Philippines, it was a separate process from this case and involved different factual and legal issues. Thus, argue Plaintiffs, its claim of work-product protection is not based on this litigation but on the separate legal analysis that occurred relating to the decision of how to move forward in the Philippines. Defendants do not discuss any other documents withheld dated earlier than Plaintiffs' claimed date of preservation. Plaintiffs, however, note that there are some other documents, but that they involve different underlying litigation. Defendants fail to show that an in camera review is necessary to reconcile Plaintiffs' asserted document preservation date in this case and claims of work-product protection on documents. Defendants' motion for in camera review on this basis is denied.

Defendants assert that “much” of Plaintiffs' arguments relating to the watch notices and Defendants' laches defense has now been rebutted by recently-produced documents. Defendants contend, however, that because of document destruction and unavailability of witnesses, there remain some “open questions,” at least with respect to three early watch notices and the activities of Dana Bar Magen, a witness who lives in Europe. Defendants received, however, information relating to at least 13 watch notices, Plaintiffs' employees who reviewed them, and that they had a status of “no action.” This information relates to Defendants' laches defense. Considering all the evidence in this case, the fact that there are “gaps” in documentary evidence and one witness who lives in Europe is not a basis on which to conduct an in camera review to consider whether Defendants meet the requirements of Rule 26(b)(3)(A)(ii) of the Federal Rules of Civil Procedure to overcome Plaintiffs' claims of attorney work-product protection. Discovery is often imperfect and that does not warrant breaching work-product protection. Defendants' motion for in camera review on this basis is denied.

*7 Plaintiffs moved for a protective order to preempt Defendants from compelling discovery. Most of Plaintiffs' motion was rendered moot by Defendants' filing their motion to compel. For the issues raised in Defendants' motion to compel, the Court has either granted or denied Defendants' motion. For the issues the Court granted Defendants' motion, Plaintiffs' motion is necessarily denied. For the issues the Court denied Defendants' motion, Plaintiffs' motion is moot because the Court has rejected Defendants' arguments and the discovery dispute is resolved. For issues not specifically raised in Defendants' motion to compel, the Court finds a protective order unnecessary. Defendants did not move to compel on those topics and the Court will not allow a further motion on those topics. Accordingly, Plaintiffs' motion for a protective order is denied as moot.

Plaintiffs' motion for a special master is also denied. The discovery permitted herein is narrow in scope, the Court gave specific guidance on how it should be conducted, and it should not require a special master to oversee compliance.

Defendants' supplemental motion to compel (ECF 443) is GRANTED IN PART and DENIED IN PART, as set forth in this Order. Plaintiffs' motion for a protective order (ECF 441) is denied as moot. Attorney's fees are not awarded at this time.

IT IS SO ORDERED.

DATED this 2nd day of August, 2019.