*1 On June 15, 2020 Plaintiff Orgain, Inc. (“Plaintiff) and Defendants Purely Northern Innovations Holding Corp. dba Purely Inspired, Lakeside Innovations Holdings Corp., Iovate Health Sciences International, Inc., Iovate Health Sciences U.S.A. Inc., and Kerr Investment Holding Corp. (collectively, “Defendants” or “Iovate”) filed a Joint Stipulation Regarding Plaintiff's Motion to Compel (“Motion”), [Dkt. No. 114], along with an Application to File Documents Under Seal [Dkt. No. 112]. The Application to File Under Seal was granted and a sealed copy of the Motion was subsequently filed. [Dkt. No. 120]. Plaintiff seeks to prevent Defendants from clawing back seven privileged documents (“Challenged Documents”) that were inadvertently produced during discovery by asking the Court to compel de-designation of the Challenged Documents. Defendants oppose this Motion. The Court finds this Motion appropriate for decision without oral argument.

This action is based on the alleged infringement by Defendants on Plaintiff's trademark for organic plant-based organized protein powder. [Dkt. No. 1]. Both parties are nutrition companies that produce various lines of nutrition products and health supplements. The Challenged Documents were produced as part of a batch of ninety-seven documents, referred to as the “Nielsen Data,” containing sales and market information comparing Orgain's product to Iovate's. [Dkt. No. 120, p. 5[1]]. The Challenged Documents received Bates labels of IOV_28261, IOV_28268, IOV_28308, IOV_28309, IOV_28310, IOV_28311, and IOV_28312. [Id.]. The first two, IOV_28261 and IOV_282608, are identical PDF documents containing comparisons of sales data and the packaging of the two products in dispute. [Dkt. No. 120-1, Exhs. F-G]. The PowerPoint presentation IOV_28308 contains similar content in addition to bullet points summarizing the legal merits of the current action. [Id., Exh. A]. The four remaining documents, IOV_28309 to IOV_28312, were Excel spreadsheets embedded in the PowerPoint that contained sales data comparing Orgain's product packaging to Iovate's. [Dkt. No. 120-11, ¶ 13].

Plaintiff alleges the metadata of all the Challenged Documents lists the Nielsen Corporation as the author, except for IOV_28308, which was authored by Maylani Campbell, Iovate's Analytics and Insight Manager. [Dkt. No. 120-1, ¶¶ 6-8]. Defendants assert the Challenged Documents were prepared by Iovate's employees at the direction of Iovate's in-house legal team. [Dkt. No. 120-10, ¶ 3; Dkt. No. 120-11, ¶ 2].

Plaintiff asserts Defendants have not met their burden to establish the Challenged Documents as privileged, subject to the protection of the work product doctrine. [Dkt. No. 120, p. 9]. Plaintiff argues that because the Challenged Documents were authored by the Nielsen Corporation, were last edited by the Analytics and Insights Manager at Iovate, and comprise mostly sales data and market information, they were not created solely for litigation. [Id. at pp. 9-11]. Under the Ninth Circuit's “because of” standard for dual purpose documents, Plaintiff argues the Challenged Documents would have been created in substantially similar form absent the current litigation. [Id. at pp. 10-11]. Last, Plaintiff asserts the “bare facts” in the Challenged Documents are discoverable, regardless of whether or not the entirety is deemed discoverable. [Id. at p. 11].

*2 Defendants assert the Challenged Documents fall into the category of ordinary work product and are thus covered by the protections of the work product doctrine. [Dkt. No. 120, p. 15]. As such, Plaintiff is required to show a substantial need for the Challenged Documents and that it would face undue hardship trying to obtain similar information. [Id. at pp. 16-17].

Federal Rule of Civil Procedure 26(b) permits “discovery regarding any nonprivileged matter that is relevant to any party's claim or defense.” Privileged matter includes documents covered by the work product doctrine, as Defendants assert applies in this case. Rule 26(b)(3) states, in relevant part, “[o]rdinarily, a party may not discover documents and tangible things that are prepared in anticipation of litigation or for trial by or for another party or its representative (including the other party's attorney, consultant, surety, indemnitor, insurer, or agent).” Fed. R. Civ. Proc. 26(b)(3). Thus, “to qualify for protection against discovery under this rule, documents must have two characteristics: (1) they must be ‘prepared in anticipation of litigation or for trial,’ and (2) they must be prepared ‘by or for another party or by or for that other party's representative.’ ” In re California Pub. Utilities Comm'n, 892 F.2d 778, 780-81 (9th Cir. 1989) (citing Rule 26(b)(3)(A)). “The party claiming work product immunity has the burden of proving the applicability of the doctrine.” Bozzuto v. Cox, Castle & Nicholson, LLP, 255 F.R.D. 673, 677 (C.D. Cal. 2009). In turn, to compel a party to disclose information otherwise protected by Rule 26(b)(3), the moving party must show the material is discoverable under Rule 26(b)(1), the party has a “substantial need” for the materials, and they cannot obtain a “substantial equivalent” of the material without “undue hardship.” Fed. R. Civ. Proc. 26(b)(3)(A)(i)-(ii).

The seven Challenged Documents fall under the protection of the work product doctrine. The first prong of the work product doctrine asks whether the materials were prepared “in anticipation of litigation or for trial.” Fed. R. Civ. Proc. 26(b)(3)(A). Here, a number of facts demonstrate the Challenged Documents were prepared in anticipation of litigation. First, the metadata reflects they were created in August or September of 2018, roughly a month after the case was filed. [Dkt. No. 120-11, ¶¶ 3-6]. Second, despite Plaintiff's repeated assertions the Challenged Documents “merely compile sales data between Iovate and Orgain,” the first page of the PowerPoint clearly contains points of legal analysis on the merits of the current action. [Dkt. No. 120, p. 10; Dkt. No. 120-3, Exh. A]. The subsequent pages contain factual information to support the analysis on the first page. [Dkt. No. 120-3, Exh. A]. Last, the Challenged Documents were initially sent to counsel for Defendants by Ms. Heikkila, the Associate Director of Trade-Mark & Corporate Affairs at Iovate and a member of their in-house legal team. [Dkt. No. 120-10, ¶¶ 1, 8-9]. Although not dispositive on its own, the sending of the documents that contain legal analysis and supporting information in an email to counsel, in context, adds weight to the argument the Challenged Documents were prepared in anticipation of litigation. See Phoenix Techs. Ltd. v. VMware, Inc., 195 F. Supp. 3d 1096, 1106 (N.D. Cal. 2016) (considering whether the addressees of an email included counsel in a discovery dispute over the contents of emails and an attached PowerPoint presentation). A PDF identical to IOV_28261 and IOV_28268 was sent by Ms. Heikkila to Defendant's counsel, Scott J. Ferrell and David W. Reid. [Dkt. No. 120-10, ¶ 8]. The PowerPoint IOV_28308, containing the four Excel sheets, was also sent to Defendants' counsel, David W. Reid, and copied Iovate's in-house counsel on the email. [Id. at ¶ 9]. Defendants adequately show that the Challenged Documents were prepared in anticipation of litigation.

*3 The second prong of the work product doctrine asks whether the documents were created “by or for another party or its representative (including the other party's attorney ...).” Fed. R. Civ. Proc. 26(b)(3)(A). Plaintiff asserts the metadata of the Challenged Documents reveal the majority of them were created by Nielsen and last edited by Iovate's Analytics and Insights Manager. [Dkt. No. 120, p. 10]. However, the PowerPoint IOV_28308, containing the four Excel spreadsheets, was authored by Iovate's Analytics and Insights Manager, [Dkt. No. 120-1, ¶¶ 6, 8], and the Challenged Documents began circulating between counsel for Defendants and Iovate's in-house counsel. [Dkt. No. 120-10, ¶ 9]. A PDF identical to the remaining two documents, IOV_28261 and IOV_28268, also was sent to Defendants' counsel by a member of Iovate's in-house counsel. [Dkt. No. 120-10, ¶ 8]. Thus, even though the Challenged Documents may not have been authored by counsel for Defendants, the above facts, taken together, demonstrate the Challenged Documents were prepared “for another party or its representative,” which includes counsel for Defendants. Defendants make an adequate showing that the Challenged Documents were created by or for another party or its representative. As such, the Challenged Documents fall under the protection of Rule 26(b)(3)(A) and are properly designated as privileged.

Plaintiff challenges that the Challenged Documents were prepared for litigation, arguing instead they were prepared for an “independent purpose” in the “regular course of business.” [Dkt. No. 120, p. 10]. Defendants respond that the Challenged Documents are entitled to work product protection under the “because of” standard. [Id. at pp. 17-18]. If a document may be considered dual-purpose, such as for purposes of business and litigation, the Ninth Circuit has applied a “because of” standard. This standard holds “a document should be deemed prepared in anticipation of litigation ... if in light of the nature of the document and factual situation in the particular case, the document can be fairly said to have been prepared or obtained because of the prospect of litigation.” In re Grand Jury Subpoena (Mark Torf/Torf Envtl. Mgmt.), 357 F.3d 900, 907 (9th Cir. 2004) (internal citations and quotation marks omitted). The formulation does not look to whether litigation was the primary motive behind the document, but “considers the totality of the circumstances and affords protection when it can fairly be said that the document was created because of anticipated litigation, and would not have been created in substantially similar form but for the prospect of that litigation.” Id. at 908 (internal citations and quotation marks omitted).

The Challenged Documents are still covered by the work product doctrine. For the same reasons discussed above, it can be fairly said the Challenged Documents were created because of anticipated litigation. As well, although comparison of sales data with a competitor's product may have been created absent the current litigation, a summary of legal analysis on the merits of this case would likely not have been. Defendants meet their burden to show the work product doctrine is applicable to the Challenged Documents.

As Defendants have met their burden to show the work product doctrine is applicable to the Challenged Documents, Plaintiff must show the Challenged Documents should be exempted from Rule 26(b)(3)(A)'s protection by showing a substantial need for the documents and that it would suffer an undue hardship obtaining a substantial equivalent. Green v. Baca, 226 F.R.D. 624, 652 (C.D. Cal. 2005) (“[f]act work product is discoverable only upon a showing of substantial need and an inability to secure a substantial equivalent by alternate means without undue hardship.”). Plaintiff does not satisfy either of these requirements.

Plaintiff has not demonstrated a substantial need for the Challenged Documents or that it would face an undue burden if required to obtain the information through other means. Plaintiff provides little argument regarding substantial need or undue burden in obtaining a substantial equivalent. Plaintiff only states it needs the Challenged Documents for its Summary Judgment Motion. [Dkt. No. 120, p. 6; Dkt. No. 132, pp. 5-6]. Plaintiff alleges the Challenged Documents contain information contradicting sworn testimony of the Defendants. [Dkt. No. 132, pp. 5-6]. However, Plaintiff does not elaborate or give any further reason for the necessity of the Challenged Documents. [Dkt. No. 120, p. 6; Dkt. No. 132, pp. 5-6].

*4 Similarly, Plaintiff does not provide any arguments that it would face an undue burden obtaining a substantial equivalent to the contents of the Challenged Documents. As best the Court can tell, the majority of the factual information Plaintiff asserts it needs, has already been produced to Plaintiff in other forms. Financial information showing Iovate's monthly revenue and expenses has already been produced to Plaintiff. [Dkt. No. 120-11, ¶ 23, Exhs. 2-3]. Defendants also produced Iovate's income statements from 2014 to 2019, including those specifically for its plant-based protein powder, [Dkt. No. 120-11, ¶ 21], and Excel spreadsheets containing Iovate's sales of organic protein products. [Id. at ¶ 24]. Plaintiff has not identified any reason why it needs images comparing the packaging of the two products, or why it would face an undue burden obtaining such a comparison elsewhere. Accordingly, Plaintiff fails to meet its burden of showing it has a substantial need for the Challenged Documents or that it would face an undue burden obtaining similar information.

Accordingly, Defendants' Motion to Compel de-designation of the Challenged Documents [Dkt. Nos. 114, 120] is denied.[2]

IT IS SO ORDERED.