*1 This case is before the undersigned pursuant to 28 U.S.C. § 636, the Rules of this Court, and Standing Order 13-02.

Now before the Court are the following Motions:

The Court addressed a number of Motions [Docs. 38, 39, 46, 50, 59] at a motion hearing on March 5, 2019. Attorneys Laura Chapman, Yasamin Parsafar, and Thomas Scott appeared on behalf of Plaintiff. Attorneys W. Kyle Carpenter, Jacob Horton, Robert Pitts, and Raymond Stephens were present on behalf of Defendant. After the motion hearing, Plaintiff filed two status reports, and the parties engaged in additional motion practice. The above Motions are now ripe and ready for adjudication.

Accordingly, for the reasons further explained below, Plaintiff's Motion to Compel [Doc. 38] and Defendant's Motion to Compel [Doc. 39] are DENIED AS MOOT, Defendant's Motion for Protective Order [Doc. 46] is DENIED, Plaintiff's Motion to De-Designate [Doc. 50] is GRANTED IN PART, Plaintiff's Objections [Doc. 59] are DENIED; Plaintiff's Motion to Seal [Doc. 60] is DENIED; Defendant's Motion to Strike [Doc. 67] is DENIED, and Plaintiff's Emergency Motion [Doc. 77] is GRANTED IN PART.

I. BACKGROUND

The Court will begin with the allegations in the pleadings and then turn to the procedural history of this case as it relates to the issues before the Court.

A. Pleadings

The Complaint [Doc. 1] in this matter was filed on May 14, 2018. According to the Complaint, Plaintiff is in the business of preparing individuals for college and careers. [Doc. 1 at ¶ 3]. As part of its business, Plaintiff develops and makes available developmental assessments, called WorkKeys—a collection of proctored tests that measure the most important workplace skills affecting an individual's job performance. [Id.]. Plaintiff alleges that WorkKeys assessments are the basis for the National Career Readiness Certificate (“NCRC”)—the nation's most recognized work readiness credential recommended by thousands of employers. [Id. at ¶ 12]. Plaintiff states that the ACT NCRC is also recommended for college credit by the American Council on Education (“ACE”). [Id.].

*2 The Complaint states that the original version of WorkKeys was introduced in 2006 as WorkKeys 1.0 and that the newer version is called WorkKeys 2.0. [Id. at ¶ 14]. Plaintiff asserts that at all relevant times, ACT NCRC has been awarded at four levels of achievement—Bronze, Silver, Gold, and Platinum—based on performance on the WorkKeys assessments. [Id. at ¶ 16]. Plaintiff states that ACT, WorkKeys, NCRC are trademarks registered to Plaintiff and that Plaintiff also has common law trademarks rights in “BRONZE, SILVER, GOLD, and PLATINUM” for use with career readiness certification. [Id. at ¶ 25].

The Complaint further alleges that Defendant is in the business of developing training curriculum and that Defendant previously developed training curriculum articulated with WorkKeys pursuant to a written agreement with Plaintiff. [Id. at ¶ 28]. On January 1, 2006, the parties entered into a WorkKeys Publisher Agreement (“Publisher Agreement”) that permitted Defendant to become a “Preferred Content Partner” of WorkKeys training products on the terms and conditions set forth in the Publisher Agreement. [Id.]. Defendant was thereby authorized to develop and sell WorkKeys Curricula, for which it paid Plaintiff annual and royalty fees. [Id.].

The Complaint states that Defendant had access to Plaintiff's work when Defendant obtained a contract (“Florida Prime Contract”) with the State of Florida in support of the Florida Ready to Work Credential Program. [Id. at ¶ 39]. The parties entered into their own contract (“Florida Subcontract”) on March 1, 2007, wherein Plaintiff agreed to furnish services that Defendant agreed to purchase. [Id. at ¶ 40]. The Florida Subcontract, and later amendments, contained provisions regarding confidentiality and intellectual property rights. [Id. at ¶¶ 45-46]. Under the Florida Prime Contract, Defendant delivered Plaintiff's WorkKeys assessments to Floridians and utilized Plaintiff's SkillPro software. [Id. at ¶¶ 41-42]. The Florida Prime Contract was extended several times, and therefore, the parties entered into several amendments on their Florida Subcontract. [Id. at ¶¶ 52-60].

After the parties' Publisher Agreement expired, the parties exchanged correspondence regarding various disputes and later resolved this disputes by entering into a Settlement Agreement, which became effective on December 21, 2010. [Id. at ¶¶ 62-63]. The Complaint states that in the Settlement Agreement, Defendant “represented and warranted that, to the best of its knowledge and belief, it is currently respecting and not infringing Plaintiff's intellectual property rights and that it did not have in its custody or control any of Plaintiff's confidential or secure materials, which it was not legally entitled to possess.” [Id. at ¶ 65].

The Complaint states that on or about November 14, 2017, South Carolina's Statewide Term Contract governmental unit issued a Request for Proposal (“RFP”) for a “Career Ready Test.” [Id. at ¶ 66]. The RFP provided that the scope of the solicitation was to “establish a State Term Contract to provide a turnkey solution, to include Contractor administration, scoring and reporting, for an off-the-shelf software of career readiness skills and aptitudes” that “may be administered to approximately 70,000 students and adults across the state annually and include both online paper administrations.” [Id. at ¶ 67]. The estimated contract period provided in the RFP was from February 5, 2018, to February 4, 2023. [Id. at ¶ 69]. The parties each submitted a written proposal, and Defendant was awarded the contract. [Id. at ¶¶ 71-72, 78].

*3 The Complaint alleges that in response to the RFP, Defendant copied Plaintiff's copyrighted works. [Id. at ¶ 73]. Plaintiff states it did not authorize Defendant to reproduce, adopt, distribute, or use any of its content in any response to any request for proposal. [Id. at ¶ 74]. The Complaint also states that Defendant represented in its written response to the RFP that its assessments can support Work Ready Community, but Work Ready Community is a movement led by Plaintiff. [Id. at ¶ 76]. Plaintiff states that it has not authorized Defendant to state that its assessments can support this initiative. [Id.].

The Complaint states that the State of South Carolina awarded the contract to Defendant on January 26, 2018, and that Defendant intends to continue to copy Plaintiff's copyrighted works and use them without authorization, infringe upon its trademarks, and breach other confidentiality provisions. [Id. at ¶ 78]. Plaintiff asserts claims for (1) copyright infringement, (2) unfair competition by infringement of common law rights under the Lanham Act, (3) use of false designation under the Lanham Act, (4) false advertising under the Lanham Act, and (5) breach of contract.

Defendant also filed a Counterclaim against Plaintiff. In the Counterclaim, Defendant alleges that the parties are developers and sellers of training course curriculum, evaluation, and testing used to train and evaluate students and workers. [Id. at ¶ 145]. Among the products that Plaintiff developed is a series of assessments called “WorkKeys” that are intended to assess workplace skills affecting an individual's job performance. [Id. at ¶ 146]. Defendant states that from 1997 to 2011, the parties had ongoing business relationships that were governed in part by the following contracts: (1) Publisher Agreement, (2) Florida Subcontract, (3) a courseware license agreement related to Plaintiff's delivery of WIN curriculum through Plaintiff's network of ACT Centers (the “Courseware License Agreement”), and (4) a subcontract agreement (as largely documented through email exchanges) related to Plaintiff's delivery of Defendant's Career Readiness System including pre and post assessments to the State of Georgia (the “Georgia Subcontract”) (collectively, the “Governing Agreements”) [Id. at ¶ 147].

Defendant alleges that throughout their business relationship, it submitted to Plaintiff copies of its Career Readiness System, including pre and post assessments, incorporating skill level descriptions of Plaintiff's WorkKeys systems for approval, and Plaintiff approved such WorkKeys related materials for use and sale by Defendant. [Id. at ¶ 149]. Defendant states that Plaintiff never complained or objected to its incorporation of skill level descriptions of Plaintiff's WorkKeys system into Defendant's Career Readiness System including pre and post assessments. [Id. at ¶ 151]. Defendant avers that on or about December 21, 2010, the parties entered into a Settlement Agreement, which superseded the Governing Agreements and terminated the business relationship between them. [Id. at ¶ 152].

Defendant states that in the time since the business relationship between the parties ended, Defendant continued to use and sell its curriculum incorporating skill level descriptions of Plaintiff's WorkKeys systems and that Plaintiff has been aware of such activity and raised no objection. [Id. at ¶ 153]. Defendant alleges that Plaintiff has reviewed the entirety of Defendant's Career Readiness System, including pre and post assessments, and no dispute has arisen between the parties prior to this lawsuit. [Id.]. Defendant alleges other third parties have been permitted to incorporate skill level descriptions of Plaintiff's WorkKeys systems into documents prepared and used by the third parties without complaint or objection by Plaintiff. [Id. at ¶ 154]. Defendant submits that notwithstanding Plaintiff's acquiescence to the uncontrolled use of its WorkKeys systems by others and its commitment of copyrights associated with ACT's WorkKeys systems to the public domain, on or about March 22, 2018, Plaintiff obtained three United States Copyright Registrations purporting to claim ownership of copyrights associated with ACT's WorkKeys systems. [Id. at ¶ 155]. Defendant alleges that such copyright registrations and Plaintiff's claims to ownership of copyrights associated with the WorkKeys systems are invalid. [Id. at ¶ 157]. Further, Defendant alleges that Plaintiff has no trademark rights, federal or common law, in connection with its use of terms “Bronze,” “Silver,” “Gold,” and “Platinum” in connection with state education and workforce programs. [Id. at ¶ 160].

*4 Defendant alleges that during the parties' ongoing business relationship, Plaintiff performed a review of Defendant's Career Readiness System, including pre and post assessments incorporating the WorkKeys systems skill level descriptions, and confirmed a 100% alignment with Plaintiff's WorkKeys systems. [Id. at ¶ 166]. This 100% alignment was confirmed in a letter from Plaintiff's President and Chief Operating Office to Defendant. In addition, Plaintiff verified in a detailed report the alignment of Defendant's content, cognitive complexity, and breath of coverage of its curriculum including pre and post assessments with ACT's WorkKeys systems. [Id.]. An independent contractor, Measured Progress, verified Defendant's alignment. [Id. at ¶ 167].

Defendant states that on June 26, 2018, Plaintiff sent a letter to Paul Connerty of KC Associates, LLC, and on June 27, 2018, it sent a similar letter to Mr. Hy Small, an ORA Business Services Consultant. [Id. at ¶ 168]. In those letters, Plaintiff stated that: (1) the ACT WorkKeys system will not work with other assessments; (2) WorkKeys does not work interchangeably with Defendant's assessments; (3) Defendant does not have a component that matches job profiling; and (4) Defendant's claims that its assessments “align” with the WorkKeys assessments are false. [Id.]. Defendant asserts that such statements are false, misleading, and were made with the intention of interfering with Defendant's business relationships, including its relationships with Mr. Connerty, Mr. Small, and its contract with the State of South Carolina. [Id. at ¶ 169].

Defendant has brought claims for false advertising and intentional inference with business relationship. It has also brought suit for declaratory judgment with respect to Plaintiff's claims.

B. Procedural History

As mentioned above, the Court addressed a number of motions [Docs. 38, 39, 46, 50, 59] at a motion hearing on March 5, 2019. Two days after the motion hearing, on March 7, 2019, Plaintiff filed a Status Report (“First Status Report”) [Doc. 64], stating that at the motion hearing, the Court questioned whether Defendant is able to redesignate its document production, but Defendant did not provide the Court with a date that it would do so. Plaintiff states that during the hearing, Defendant identified two categories of documents it believed to be Highly Confidential, Attorneys' Eyes Only (“AEO”): (1) financial documents and (2) Defendant's assessments. Plaintiff states that it followed up with Defendant on March 5 to determine when it could redesignate, and Defendant responded that it was virtually impossible to identify the bates-stamped numbers this week. Plaintiff submits that Defendant's assertion is contrary to the representation made at the hearing, wherein Defendant stated that it produced documents in a way that permits quick and efficient screening of these electronically-text searchable documents. The remainder of the First Status Report regurgitates arguments that were raised in the reply brief in support of Plaintiff's Motion to De-Designate. In the First Status Report, Plaintiff requests that the Court order Defendant to provide Plaintiff a list of the bates-stamped numbers by the following date and time, March 8, 2019, at 5:00 p.m.

On March 14, 2019, Plaintiff filed a Second Supplemental Status Report (“Second Status Report”) [Doc. 66]. Plaintiff states that at the March 5 hearing, on Defendant's Motion to Compel, Plaintiff informed the Court that it would produce additional documents responsive to Defendant's requests relating to the creation and development of its assessments at issue in this case. Plaintiff reports that it has provided an additional 800 documents—the vast majority of which relate to the “creation, development, and ownership” of Plaintiff's works of authorship. Further, Plaintiff reports that Defendant has not de-designated. Plaintiff proceeds to argue issues that were previously raised in the filings and at the motion hearing (i.e., Defendant's assessments and pricing information are not AEO).

*5 In response to the Status Reports filed by Plaintiff, Defendant moved [Doc. 67] to strike them, primarily arguing that they were filed in violation of Local Rule 7.1. Specifically, Defendant asserts that Plaintiff reargues several of the points already presented in the briefs and raised at the hearing. With respect to redesignating documents, Defendant states that in a good-faith effort to resolve this matter, it is willing to attempt to provide to Plaintiff re-designated production of its documents, along with a spreadsheet identifying by bates number, the documents Defendant still deems to be AEO. Plaintiff filed a Response [Doc. 68], objecting to Defendant's Motion to Strike, and requests that the Court issue eight specific orders. See [Doc. 68 at 1-2]. Plaintiff further asserts that Defendant's proposed compromise is vague and insufficient because Defendant does not specify what types of documents it will include on its spreadsheet. Plaintiff further states that the issues in Defendant's Motion to Compel have been resolved and that Defendant's Motion to Strike should be denied.

Subsequently, on April 16, 2019, Plaintiff filed its Emergency Motion [Doc. 77], relating to its Second Set of Interrogatories and Second and Third Sets of Requests for Production of Documents. Defendant has filed a Response [Doc. 84] objecting to the Emergency Motion, and Plaintiff replied [Doc. 85]. This Motion is now ripe for adjudication.

II. ANALYSIS

Before turning to the merits of the Motions, the Court notes that on November 26, 2018, the undersigned held a telephonic conference in an attempt to resolve the parties' disputes prior to motion practice, which can be expensive and time consuming. Given the number of disputes, the Court determined that issues were not amendable to informal resolution and granted both parties leave to file motions to compel. The undersigned encouraged the parties to continue their good-faith negotiations to resolve these discovery disputes without Court intervention.

After reviewing numerous motions, often accompanied by voluminous exhibits, and hearing the oral arguments, it appears to the Court that the parties have abandoned their attempts to resolve discovery disputes in good faith without the Court's intervention. In fact, the more recently filed Motion (Plaintiff's Emergency Motion), suggests that the parties cannot even agree on whether they attempted to meet and confer in good faith. See Emergency Motion [Doc. 77 at 5] (Plaintiff explaining that it tried to meet and confer, but Defendant refused) and Defendant's Response [Doc. 84 at 3] (Defendant stating that Plaintiff disregarded the meet and confer requirements). A number of courts have noted that the meet and confer requirement is not an “empty formality,” and that parties are required to participate in a “meaningful meet and confer.” Brady v. LTD Parts, Inc., No. 2:08-0058, 2009 WL 2224172, at *1 (M.D. Tenn. July 22, 2009) (quoting Ross v. Citifinancial, Inc., 203 F.R.D. 239, 240 (S.D. Miss. 2001)).

The Court notes that many of the discovery disputes could have been resolved had the parties simply communicated better at the outset. Instead, the parties engaged in extensive motion practice, which has inundated this Court and ultimately delayed this case. The discovery process works best when both parties abide by Rule 1 (explaining that the Rules “should be construed, administered, and employed by the court and the parties to secure the just, speedy, and inexpensive determination of every action and proceeding”). The parties are ADMONISHED that moving forward, they SHALL attempt to resolve discovery disputes prior to filing motions in this Court. The parties' back-and-forth letters and emails to one another do not seem to be helpful in resolving the disputes, so the Court encourages the parties to call one another or utilize video conferencing. If a motion must be filed, the movant SHALL explain in detail and include all documentation of the efforts to meet and confer and to resolve the discovery dispute.

Before turning to the specific relief sought in the Motions, the Court will begin with Federal Rule of Civil Procedure 26, which governs discovery. Federal Rule of Civil Procedure 26(b)(1) provides as follows:

Courts have explained that the “scope of discovery under the Federal Rules of Civil Procedure is traditionally quite broad.” Meredith v. United Collection Bureau, Inc., 319 F.R.D. 240, 242 (N.D. Ohio 2017) (quoting Lewis v. ACB Bus. Serv., Inc., 135 F.3d 389, 402 (6th Cir. 1998)). Courts have cautioned, however, that “[d]iscovery requests are not limitless, and parties must be prohibited from taking ‘fishing expeditions’ in hopes of developing meritorious claims.” Bentley v. Paul B. Hall Reg'l Med. Ctr., No. 7:15-CV-97-ART-EBA, 2016 WL 7976040, at *1 (E.D. Ky. Apr. 14, 2016). “[T]he [C]ourt retains the final discretion to determine whether a discovery request is broad or oppressive.” Id. (citing Surles v. Greyhound Lines, Inc., 474 F.3d 288, 305 (6th Cir. 2007)).

With the above analysis and the present issues in mind, the Court will now turn to the Motions.

A. Defendant's Motion to Strike [Doc. 67]

The Court will begin with Defendant's Motion to Strike the Status Reports given that the Status Reports relate to the other Motions below. As mentioned above, after the hearing, Plaintiff filed two Status Reports. Defendant moves to strike both Status Reports, asserting that Plaintiff attempts to reargue the points that the Court has already heard. Defendant states that both Status Reports violate Local Rule 7.1(d). Further, Defendant asserts that the Status Reports also raise new arguments for which it has no opportunity to respond. Defendant accuses Plaintiff of engaging in a discovery war as opposed to advancing litigation and resolving this case. Defendant states that the Status Reports also request specific relief in violation of Federal Rule of Civil Procedure 7, which requires parties to file motions if they request a court order. Defendant states that if the Court is inclined to consider the Status Reports, it would like an opportunity to file its own status report. Defendant states that with respect to re-designating documents, in a good-faith effort to resolve this matter, it is willing to attempt to provide redesignated production of its documents to Plaintiff, along with a spreadsheet identifying by bates number the documents that it believes to be AEO.

Plaintiff responded [Doc. 68] in opposition to the Motion and requests that the Court issue eight specific orders. See [Doc. 68 at 1-2]. Plaintiff argues that the issues raised in its Motion to Re-Designate are not resolved by Defendant's proposed compromise. Plaintiff requests that the Court limit the universe of Defendant's documents that can be designated as AEO to only financial documents, other than public pricing information. Further, Plaintiff argues that the Court's order should require Defendant to reproduce only the non-pricing financial information that will remain AEO due to Defendant's claimed technical difficulties. Plaintiff explains that Defendant's suggestion to produce new bate-stamped numbers is problematic because it has already reviewed over 100,000 documents and continues to review thousands of additional documents each day. Plaintiff states that its document review team has already tagged documents, and if the original bates numbers are not used in the re-production, Plaintiff will not be able to identify the documents it has already invested money and work product in reviewing. Further, Plaintiff asserts that the issues in Defendant's Motion to Compel have been resolved and that Defendant's Motion to Strike should be denied. Plaintiff states that Defendant's accusations contradict the facts and that Plaintiff's Status Reports do not violate any rules.

*7 Local Rule 7.1(d) provides as follows:

E.D. Tenn. L.R. 7.1(d). The Court has reviewed the Status Reports, and portions of them comply with Rule 7.1. Specifically, in the First Status Report, Plaintiff reports to the Court that after the hearing, it attempted to determine a timeframe as to when Defendant could redesignate. Making the Court aware of such information is in accordance with Rule 7.1(d). Plaintiff's First Status Report continues, however, that Defendant's assessments are not AEO, and it copies a paragraph taken from Plaintiff's reply brief. This information does not call to the Court's attention developments occurring after the hearing, and therefore, is not filed in accordance with Local Rule 7.1.

Plaintiff's Second Status Report is similar. Plaintiff reports to the Court that after the hearing, it produced additional documents in order to respond to Defendant's Request for Production of Documents. This information is helpful and in accordance with the Local Rule. Plaintiff continues, however, to argue that Defendant's assessments and pricing information are not AEO. This is not helpful and simply prolongs a ruling on the pending motions.

Given that some of the information is in accordance with Local Rule 7.1, the Court will not strike the Status Reports. Plaintiff is hereby ADMONISHED that any filings moving forward shall comply with the Court's Local Rules. Finally, in Defendant's Motion to Strike, it requests an opportunity to respond to the Status Reports. First, Defendant was permitted to respond to the new information outlined in the Status Reports. See E.D. L.R. 7.1(d) (any response to a supplemental brief shall be filed within seven days). With respect to Plaintiff's arguments contained in the Status Reports that were already presented to the Court, the undersigned understands the issues and another response from Defendant is not necessary. Accordingly, Defendant's Motion to Strike Status Report Filed by Plaintiff [Doc. 67] is DENIED.

B. Plaintiff's Motion to Compel Supplemental Responses [Doc. 38] and Plaintiff's Emergency Motion [Doc. 77]

Plaintiff's Motion to Compel [Doc. 38] has been thoroughly briefed [Docs. 41, 43, 57]. Plaintiff complains that Defendant has not provided it with all the facts in support of Defendant's affirmative defenses and that Defendant's written responses do not comply with Rule 34 because Defendant submitted boilerplate objections. Defendant responded that it produced all nonprivileged documents in its possession that are responsive to Plaintiff's document requests and that it has fully responded to interrogatories. Further, Defendant argues that Interrogatories 1-19 are contention interrogatories because they request all facts supporting affirmative defenses. Plaintiff replied, and later supplemented, arguing that 96% of the documents produced by Defendant are not responsive and that they have incurred significant fees associated with the document production, which it asserts should be born by Defendant.

*8 After the hearing on this matter, Plaintiff filed an Emergency Motion [Doc. 77], which requests supplemental responses to Plaintiff's second set of interrogatories and second and third requests for production of documents. Plaintiff states that the second set of document requests seeks ten discrete categories of documents relating to Plaintiff's expert report on alignment and that the third set seeks seven discrete categories of documents relating to Plaintiff's expert report on damages. Plaintiff states that it served a second set of interrogatories with nine questions that ask Defendant to identify documents within its production that specifically relate to Plaintiff's expert reports.

Further, in the Emergency Motion, Plaintiff states that at the March 5 hearing, the undersigned inquired as to what specific documents Plaintiff needed that could be obtained relatively inexpensively and that Defendant echoed the undersigned's sentiment to narrow discovery. Plaintiff states, “That is exactly what [Plaintiff] did,” by serving the additional discovery. [Doc. 77 at 4]; see also [Id. at 2] (Plaintiff identified the documents it needed in its second and third sets of document requests). Thus, it appears that Plaintiff has narrowed its discovery requests, and therefore, Plaintiff's Motion to Compel Supplemental Responses [Doc. 38] is DENIED AS MOOT.[1]

In the Emergency Motion, Plaintiff states that Defendant has refused to provide any documents or answers responsive to the discovery requests. Plaintiff argues that Defendant is withholding critical information and that Defendant has failed to produce relevant documents stored in Dropbox, Google Drive, Citrix Share Drive, and/or its other external servers. Plaintiff states that Defendant should identify responsive alignment documents it allegedly produced or state that they do not exist. Finally, Plaintiff argues that the Court should compel Defendant to produce or identify information relevant to its damages expert report.

The Court will address the discovery requests and objections thereto separately.

1. First Requests for Production of Documents

Specifically, Plaintiff requests that Defendant produce all documents in its possession, custody, or control that are responsive to its second set of requests for production. Plaintiff also requests that Defendant explain whether it is withholding responsive information based on an objection, whether the document exists, and if the documents have already been produced, provide the bate-stamped number. Plaintiff explains that its second set of requests for document production is narrowly tailored to Defendant's claim of alignment. Plaintiff asserts that it reviewed Defendant's original production and could not locate the specific information requested. In addition, Plaintiff states that in reviewing the document production, Plaintiff noticed missing links and documents.

Defendant argues that Plaintiff's discovery requests are duplicative and that under Rule 34, Defendant is under no obligation to identify the bates numbers corresponding to each of Plaintiff's document requests. With respect to missing links and documents, Defendant filed a Declaration of Teresa Chasteen, Defendant's President and CEO, who affirms that as far as Defendant is aware, there are no responsive, relevant, non-privileged, non-duplicative documents in Defendant's possession, custody, or control that are stored by Defendant on any external servers that have not already been produced.

*9 Federal Rule of Civil Procedure 34 governs requests for documents. Specifically, Rule 34(E) provides:

“Rule 34(b) (2)(E)(i) is meant to prevent a party from obscuring the significance of documents by giving structure to the production.” F.D.I.C. v. Cuttle, No. 11-CV-13442, 2012 WL 5990284, at *2 (E.D. Mich. Nov. 30, 2012) (quoting Nolan, L.L. C. v. TDC Int'l Corp., No. 06–cv–14907, 2007 WL 3408584, at *2 (E.D. Mich. Nov.15, 2007)). The responding party can choose whether to produce the documents as they are kept in the usual course or label and organize them. Valeo Elec. Sys., Inc. v. Cleveland Die & Mfg. Co., No. 08-CV-12486, 2009 WL 1803216, at *2 (E.D. Mich. June 17, 2009) (other citation omitted). “Courts are split on whether both Rule 34(b)(2)(E)(i) and Rule 34(b)(2)(E)(ii) apply to ESI productions or whether an ESI production must comply with only Rule 34(b)(2)(E)(ii).” Quality Mfg. Sys., Inc. v. R/X Automation Sols., Inc., No. 3:13-CV-00260, 2016 WL 1244697, at *5 (M.D. Tenn. Mar. 30, 2016) (quoting Metro. Life Ins. Co., No. 3:14-CV-2498-B, 2016 WL 98603, at *10 (N.D. Tex. Jan. 8, 2016)). The Middle District of Tennessee recently held, “The line of cases applying Rule 34(b)(2)(E)(i) to the organization of documents and ESI and applying Rule 34(b)(2)(E)(ii) to the appropriate format of ESI is persuasive and will be applied in this matter.” Quality Mfg. Sys., Inc. v. R/X Automation Sols., Inc., No. 3:13-CV-00260, 2016 WL 1244697, at *6 (M.D. Tenn. Mar. 30, 2016).

“The party arguing that it produced documents as they were kept in the usual course of business bears the burden of showing that the documents were so kept.” F.D.I.C. v. Cuttle, No. 2012 WL 5990284, at *2 (other citation omitted). Finally, “A party demonstrates that it has produced documents in the usual course by revealing information about where the documents were maintained, who maintained them, and whether the documents came from one single source or file or from multiple sources or files.” Id. (other citation omitted).

The dilemma that the Court faces is that Plaintiff began with broad discovery requests, and Defendant produced hundreds of thousands of documents in response to those discovery requests, and in doing so, included hundreds of documents that are wholly irrelevant, see [Doc. 61], and designated all documents as AEO. Plaintiff asserts that it cannot locate the responsive documents, and Defendant insists that it has produced every responsive document.

*10 At the March 5 hearing, the Court inquired as to the specific documents Plaintiff needed. The Court finds Plaintiff's second set of document requests to be a reasonable compromise to narrow discovery. Given that it is not clear whether Defendant produced the documents as they are kept in the usual course of business, the Court ORDERS Defendant to supplement its responses to the second set for requests for documents. Specifically, if such documents have already been produced, Defendant SHALL provide the bates-stamped number. If Defendant continues to rely on the remaining objections, Defendant shall state “whether any responsive materials are being withheld on the basis of that objection.” Fed. R. Civ. P. 34(b)(2)(C). Defendant SHALL provide these responses within fourteen (14) days of entry of this Memorandum and Order. With respect to missing links and documents, Defendant has represented in its CEO's Declaration that there are no responsive, relevant, non-privileged, non-duplicative documents in Defendant's possession, custody, or control that are stored by Defendant on any external servers that have not already been produced. Thus, it appears to the Court that Defendant does not possess additional documents.

2. Third Set of Requests for Documents

With respect to Plaintiff's third set of requests for documents, Plaintiff states that they seek information relating to damages. Plaintiff states that in its original requests for documents, Defendant produced thousands of invoices sprinkled among hundreds of thousands of documents but that these invoices do not indicate whether payments were received. Plaintiff states that the third set of requests for documents consist of only seven requests that are narrowly tailored to the needs of its expert report on damages. Plaintiff argues that Defendant has not produced its contemporaneous business records (QuickBooks Company file or QuickBooks Backup) (“QuickBooks”) and the information it did produce is entirely useless without the QuickBooks.

Defendant objects that such information is duplicative. With respect to its QuickBooks files, Defendant asserts that it produced 76 of the QuickBook files in the native format, “.QBJ.” Plaintiff told Defendant that these files were not readable, so Defendant reviewed this matter with its forensic e-discovery vendor and learned that if Defendant produced the files in the requested “.QBW” format, it would result in producing Defendant's financial account passwords and active links to its financial institution accounts. Defendant states that it produced detailed summaries of its assessment revenues from its business dealings in multiple states and that it will also produce summaries of cost information once such summaries have been created. Defendant states that Plaintiff has received or will receive shortly, all information regarding Defendant's finances that is relevant to this case.

As an initial matter, the Court will not compel Defendant to provide its QuickBooks in “.QBW” format, given that Defendant has represented that such a production will include active links to its financial institution accounts. Defendant also represents that it produced detailed summaries of its assessment revenues from its business dealings in multiple states and that it will also produce summaries of cost information once such summaries has been created. Once Plaintiff has received these documents, if it is unsatisfied, it may contact the Court to set a hearing. With respect to the remaining third set of requests for document production, the Court ORDERS Defendant to supplement as directed in section directly above.

3. Second Set of Interrogatories

With respect to the second set of Interrogatories, Plaintiff states that it consists of nine Interrogatories directed to information relevant to Plaintiff's damages expert report. Plaintiff states that at the very least, Defendant should have to identify by bates number the documents Defendant produced that were responsive to each of Plaintiff's request for production of documents. Plaintiff asserts that Defendant provided boilerplate objections. Plaintiff states that in response to the second set of Interrogatories, Defendant stated that the information may be derived or ascertained by examining documents that Defendant has already produced and that the burden of deriving or ascertaining such information will be substantially the same for either party. Plaintiff states that if Defendant truly produced the documents that contain the requested information, in order to rely on such documents to respond to an interrogatory, Defendant must provide the bates number so that Plaintiff can locate and review them.

*11 Defendant argues that in addition to seeking duplicative information, Plaintiff's second set of Interrogatories also seek information that is not relevant to any claim or defense in the present lawsuit. For instance, Defendant explains, that in Interrogatory No. 20, Plaintiff requests the amount of money Defendant has received for its assessments, but the only assessment at issue is the content of Defendant's bid submitted in response to the South Carolina RFP. Further, Defendant asserts that many of the Interrogatories are compound and exceed the obligations imposed by the Federal Rules of Civil Procedure.

With respect to Interrogatory Nos. 20-24, the Court will limit the response to South Carolina only. Defendant's responses, however, rely on Rule 33(d) (i.e., stating that Plaintiff may ascertain the information by examining records that were previously produced) but are not complete. Specifically, Rule 33(d) states:

In its responses to these Interrogatories, Defendant did not specify the records that must be reviewed. Defendant shall supplement its responses to Interrogatories Nos. 20-25 within fourteen (14) days in compliance with Rule 33(d).

With respect to the remaining Interrogatories, Plaintiff requests that Defendant identify all bates-stamped numbers that are responsive to all of its Request for Production. The parties agreed in their discovery plan to limit the number of interrogatories to 40. Plaintiff served over 150 document requests, and therefore, answering the remaining Interrogatories exceeds the agreed upon limit. While the Court ordered Defendant to identify the bates numbers to the limited second and third requests for production, the Court finds requiring Defendant to identify the bates numbers of all of its production burdensome, especially because Defendant produced the files in a searchable format and provided the metadata. Accordingly, Plaintiff's Emergency Motion [Doc. 77] is GRANTED IN PART AND DENIED IN PART.

C. Defendant's Motion to Compel

Defendant requests that the Court compel Plaintiff to provide full and complete responses to Defendant's First Set of Requests for Production (Nos. 1-265). Defendant states that Plaintiff identified nineteen (19) alleged original works of authorship that are apparently relevant to the history of Plaintiff's development of its WorkKeys product. Defendant argues that because one major issue of this case is whether the skill level description portions of Plaintiff's WorkKeys systems are entitled to copyright protection, it is critical that Defendant be permitted to investigate the history of each of these nineteen works. Defendant asserts that its document requests consist of a set of thirteen (13) requests for production of documents pertaining to copyright authorship and validity, repeated for each of the nineteen (19) allegedly copyrighted works identified by Plaintiff in the Complaint.

At the hearing, Plaintiff argued that its position is based on proportionality due to the significant number (i.e., 265) of requests for documents. Plaintiff asserted that with respect to Request for Production No. 4, after the Motion was filed, it produced the report from the American Council on Education that shows that the American Council on Education approved Plaintiff's WorkKeys for college credit. Plaintiff stated that approval of WorkKeys for college credit was simply background information in the Complaint and that producing all documents pertaining to that approval is not relevant or proportional to the needs of this case.

*12 Plaintiff continued that with respect to the remaining Requests for Production of Documents, it has only alleged three copyrighted works of authorship and not sixteen. Plaintiff stated that it was in the process of producing documents for the remaining Requests for Production of Documents. Defendant responded that it was not clear to it that Plaintiff was relying on only three works and that Defendant needed the documents for at least those three works.

In Plaintiff's Second Status Report, it asserts that since the hearing “it produced 800 additional documents-the vast majority of which relate to the ‘creation, development, and ownership’ of Plaintiff's works of authorship.” [Doc. 66 at 1]. In addition, in response to Defendant's Motion to Strike, Plaintiff again asserted, “The issues in [Defendant's] motion are resolved and [Defendant] makes no argument to the contrary in its response to the Status Reports. The Court should deny [Defendant's] motion to compel as moot. Defendant did not file a reply brief. Accordingly, it appears to the Court that Plaintiff has produced the information that Defendant sought, and therefore, the Motion to Compel [Doc. 39] is DENIED AS MOOT.

D. Defendant's Motion for Protective Order [Doc. 46]

Defendant moves for a protective order prohibiting Plaintiff from (1) issuing further subpoenas duces tecum to Defendant's customers and (2) enforcing the subpoenas deuces tecum that have already been served to Defendant's customers from August 16, 2018, to January 25, 2019. Defendant asserts that between August 2018 through January 2019, Plaintiff served ten (10) subpoenas to two of Defendant's third-party customers who have no involvement with the facts at issue in the present lawsuit. Defendant asserts that the subpoenas were served for an improper purpose, they seek information that is irrelevant and/or overbroad, and Plaintiff is able to obtain, and has obtained, the same information directly from Defendant.

Plaintiff responds [Doc. 51] that Defendant lacks standing to challenge third-party subpoenas, the document requests in the subpoena are relevant and not a fishing expedition, Defendant has no right to limit Plaintiff's sources of information, and Defendant's claim of harm is woefully inadequate.

At the hearing, Defendant acknowledged that it did not have standing to quash the subpoenas and that it was not requesting that the Court quash the subpoenas. Instead, Defendant requested a protective order, alleging that Plaintiff is attempting to interfere with Defendant's business relationship with others. Plaintiff also stated that the third parties had already responded, and while it does not have any subpoenas currently pending, it may issue additional subpoenas pending its review of Defendant's document production.

Rule 26(c) provides, “A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending.” Fed. R. Civ. P. 26(c)(1). “The motion must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute without court action.” Fed. R. Civ. P. 26(c)(1).[2] Rule 26(c)(1) continues, “The court may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden, or expense.” A number of courts have explained that “[g]ood cause is established with ‘specific facts showing clearly defined and serious injury’ resulting from the discovery sought.’ ” Tenneco Auto. Co. v. Kingdom Auto Parts, No. CIV A 08CV10467-DT, 2009 WL 36428, at *2 (E.D. Mich. Jan. 6, 2009) (quoting Nix v. Sword, 11 Fed. App'x 498, 500 (6th Cir. 2001)) (other citations omitted).

*13 As mentioned above, Defendant requests the Court to prohibit Plaintiff from enforcing the subpoenas already issued and to prohibit Plaintiff from issuing further subpoenas to its customers. Defendant's first request is moot because Plaintiff stated at the hearing that the third parties that it served with the subpoenas have already responded.

With respect to Defendant's latter request (i.e., prohibit Plaintiff from serving Defendant's customers with subpoenas), Plaintiff argues that Defendant does not have standing to seek such relief. Courts have held that absent some claim of privilege, a party has no standing to quash a subpoena directed at a non-party. White Mule Co. v. ATC Leasing Co. LLC, No. 3:07CV00057, 2008 WL 2680273, at *4 (N.D. Ohio June 25, 2008) (other citations omitted). Defendant has not requested that the Court quash any potential subpoena. Instead, Defendant requests a protective order prohibiting Plaintiff from serving additional subpoenas. A party may “seek a protective order to preclude discovery through subpoenas issued on third parties.” Id.; see also Tenneco Auto. Co., 2009 WL 36428, at *2 (“Defendants do not move under Fed. R. Civ. P. 45(c)(3) to quash the subpoenas. Therefore, Plaintiff's argument that only the issuing court has jurisdiction to quash the subpoenas, as Rule 45 allows, is inapposite.”). As mentioned above, Rule 26(c) allows a party or person from whom discovery is sought to seek protection from annoyance, embarrassment, oppression, or undue burden, or expense.

The Court declines Defendant's request to prohibit Plaintiff from issuing subpoenas at this time. First, Defendant has not shown with specific facts that Plaintiff will use any potential subpoena to harm Defendant's business relationships or that any potential disclosures will harm Defendant. Tenneco Auto Co., 2009 WL 36428, at *2 (“Although service of these subpoenas could potentially adversely impact Defendants' businesses, the injury forecast by Defendants is speculative and conclusory to the extent that it fails to establish good cause.”); McNaughton-McKay, Elec. Co. v. Linamar Corp., No. 09-CV-11165, 2010 WL 2560047, at *3 (E.D. Mich. June 15, 2010) (defendant's argument that the documents may reveal trade secretes or other confidential information is speculative and lacks specificity).

Further, because there are no pending subpoenas that remain—that this Court is aware of—any decision regarding Defendant's remaining arguments (relevancy, overbroad, other convenient methods) is premature. Finally, Defendant's argument that the subpoenas burden its customers is not Defendant's argument to make. See id. (“Defendant does not have standing to argue that Chrysler's compliance with the subpoena will cause undue burden where Chrysler has not objected to the subpoena on this ground.”). Accordingly, the Court finds Defendant's Motion for Protective Order [Doc. 47] not well taken, and it is DENIED.

E. Plaintiff's Motion to Compel De-Designation of Improperly Designated Production [Doc. 50] and Plaintiff's Objection to the Declaration of Teresa Chasteen [Doc. 59]

Before the Court turns to the Plaintiff's Motion to Compel, the Court will consider Plaintiff's Objections to the Declaration of Teresa Chasteen.

1. Plaintiff's Objections [Doc. 59]

Plaintiff moves to strike two statements in the Declaration of Teresa Chasteen [Doc. 59]. Specifically, Plaintiff objects to the following statements:

[Doc. 56-1 at 56]. With respect to paragraph 4, Plaintiff argues that the testimony is speculation and that Chasteen fails to identify any factual basis in order to lay a foundation for such assertion. In addition, Plaintiff states that Chasteen fails to demonstrate any threat of or actual harm and Chasteen fails to establish that she is an expert on such testimony. With respect to paragraph 6, Plaintiff asserts that the testimony lacks foundation and that just because the assessments are not publicly available does not render them highly confidential pursuant to the Protective Order. Plaintiff states that such statements are conclusory.

Defendant did not file a written response to Plaintiff's Objections. At the hearing, however, Defendant argued that there is no reason to sustain the objections because Chasteen is Defendant's President and Chief Executive Officer (“CEO”), and she is qualified to testify about the information in her declaration.

“[W]here the statements contain evidence that would otherwise be inadmissible, a court should disregard the inadmissible evidence, rather than striking it from the record.” Hughes v. Lavender, No. 2:10-CV-674, 2011 WL 2945843, at *4 (S.D. Ohio July 20, 2011). The Court has considered Plaintiff's objections and will overrule them. As Defendant explained, Chasteen is the President and CEO of Defendant, and as such, the Court will not exclude her statements regarding Defendant's pricing strategies and assessments. Chasteen states that she has personal knowledge of the matters declared. [Doc. 56-1 at 55]. Further, the Court does not find that such statements constitute expert testimony. Accordingly, Plaintiff's Objections to Declaration of Teresa Chasteen [Doc. 59] are DENIED.

2. Plaintiff's Motion to De-Designate [Doc. 50]

Plaintiff requests that the Court compel Defendant to immediately de-designate its entire production or grant Plaintiff immediate access to Defendant's documents regardless of the documents' designation and award Plaintiff its attorney's fees and costs. For grounds, Plaintiff states that Defendant indiscriminately dumped its entire electronic document server and violated the Protective Order by designating (without review) its entire production of 765,201 documents as AEO. Plaintiff argues that the AEO Designation is the most restrictive designation and that Defendant improperly mass-designated its production as AEO without review. As of the date of filing the Motion, Plaintiff asserts that Defendant has de-designated only 37,914 out of its 765,201 documents. Plaintiff requests sanctions under Rule 37 and under the Court's inherent authority to award sanctions. Plaintiff asserts that it is harmed by Defendant's designation because it cannot meaningfully participate in this case and that Defendant's improperly attempted to shift the burden by requiring Plaintiff challenge individual documents or pages.

*15 Defendant states that Plaintiff's Motion is improper. Defendant asserts that when Plaintiff initially produced documents, it also designated all of its documents as AEO and produced them without any significant review. Defendant states that it followed Plaintiff's example. Defendant states that it is reviewing its initial production and will re-designate those documents that should be redesignated. Defendant argues that it has not acted in bad faith and only followed Plaintiff's lead. Defendant states that with the exception of six documents, it redesignated the documents that Plaintiff has specifically identified. Defendant argues that Plaintiff's Motion is based on a flawed interpretation of the stipulated Protective Order and that many of its documents are properly designated AEO. Defendant argues that Plaintiff is not entitled to any award of fees.

Plaintiff replies [Doc. 62] that when it responded to discovery requests, it searched for responsive documents and reviewed every document that it produced in discovery. In addition, Plaintiff asserts that Defendant's overbroad objection is not an excuse to mass-designate its entire document server as AEO and dump it on Plaintiff without review. Plaintiff states that despite claiming Plaintiff was impatient with respect to Defendant's production, Defendant dumped its documents two months after the extended deadline for production. Plaintiff argues that three additional months have passed, and Defendant has not cured its improper mass-designation. Plaintiff states that Defendant has submitted two types of information that qualify as AEO (financial information and its assessments), but Defendant fails to identify such documents among the documents that it produced. Finally, Plaintiff states that Defendant's argument that Plaintiff must identify the documents is inconsistent with the good-faith duty implicit in the Protective Order, which is to review and properly designate documents prior to production.

The Protective Order in this case defines “Highly Confidential/Attorneys' Eyes Only” as documents that are “comprised of trade secretes or other extremely sensitive and confidential research, development, financial, or other commercial information, the disclosure of which would create a substantial risk of serious harm that could not be avoided by less restrictive means.” [Doc. 34]. Defendant's designation of its entire document production as AEO is improper. While Defendant offers a number of reasons as to why it designated of its documents as AEO (Plaintiff did it too, discovery was overbroad, Plaintiff did not follow section 8 of the Protective Order), it does not deny and cannot deny that it is improper for it to designate all of its documents as AEO. For instance, in Plaintiff's Reply, it produced a sample of the documents (under seal) that Defendant designated as AEO. Many of the documents are email solicitations from Amazon, restaurant reviews, confirmations, news articles, and other junk emails. None of this document production is confidential, let alone AEO.

Although such blanket designations are improper, Defendant has offered to remedy this problem. Defendant has asserted many times that it is reviewing the documents and that it will produce redesignated documents. In its Motion to Strike Status Report [Doc. 67], Defendant suggests, “In a good-faith effort to resolve this matter, Defendant is willing to attempt to provide redesignated productions of its documents to Plaintiff, along with a spreadsheet identifying by bates number the documents Defendant still deems to be [AEO.]” Plaintiff objects to Defendant's proposal as being vague and insufficient because Defendant does not clarify what types of documents it will include on its spreadsheet. Plaintiff asserts that Defendant's assessments and pricing information are not AEO. Plaintiff also explains that it has already engaged in document review and that if Defendant reproduces documents with new bates numbers, its money and time spent on reviewing the original production is wasted.

*16 The Court finds that the best solution is for Defendant to provide Plaintiff with an excel sheet that lists the bates numbers of documents that are appropriately designated as AEO. Reproducing the documents is unnecessary and burdensome given that Plaintiff has already invested time and money reviewing the original production. The Court acknowledges that the parties vigorously dispute whether certain information (assessments and pricing) should be designated as AEO. Defendant asserts that revealing pricing information will cause it competitive harm and that its assessments should not be given to Plaintiff, who is a competitor. Plaintiff does not contest that, as a general proposition, a party's “pricing strategies” or financial information may qualify as AEO. Plaintiff argues that Defendant, however, has not provided an example of such documents. With respect to assessments, Plaintiff argues that Defendant's marketing material claims that Defendant was able to develop its assessments by reverse engineering Plaintiff's products. Plaintiff asserts that Defendant's assessments should not be designated as AEO.

At this time, it is not clear what financial information will be designated as AEO. With respect to assessments, the Court notes that in response to Defendant's Motion to Strike, Plaintiff states that it offered a compromise at the hearing to limit the number of people who can access Defendant's assessments but that defense counsel has not responded to this offer. Accordingly, given the above, the Court ORDERS Defendant to provide a list of the bate-stamped numbers of the documents that it believes should be designated as AEO. In an attempt to keep this case moving along, the Court ORDERS Defendant to provide a status report on its review and a timeline of when this project can be completed. This status report SHALL also include a joint section explaining whether the parties can agree on how assessments should be designated, given Plaintiff's suggested compromise above. The status report SHALL be filed by May 24, 2019.

Finally, both parties request attorney's fees and expenses. The Court declines to award either party their attorney's fees or expenses. Plaintiff includes a certification [Doc. 50] explaining that it sent emails to defense counsel on January 4, 7, and 11 requesting a meet and confer, and that on January 11, Plaintiff's counsel called defense counsel but was forced to leave a voicemail. Plaintiff states that defense counsel did not respond to any of these requests. [Doc. 50 at 15]. In Plaintiff's counsel's declaration, however, she states that defense counsel did respond on January 11, and he explained that he was in the process of reviewing the designations of documents and anticipated redesignating documents but noting it would take some time to review. [Doc. 50-1]. The parties subsequently engaged in a number of email correspondences over this issue. The Court has considered the parties' filings, and while Defendant's wholesale AEO designation was improper, Defendant immediately began to remedy this problem. Given the circumstances, the Court finds that neither party is entitled to its attorney's fees and costs.

G. Plaintiff's Motion for Leave to File Under Seal [Doc. 60]

As mentioned above, in support of Plaintiff's Reply to its Motion to De-Designate, Plaintiff filed a number of documents (over 300 pages) [Doc. 61] as a sample of the information that Defendant produced AEO. Plaintiff states that it vigorously disagrees that the documents qualify as AEO for production under the Protective Order in this case. Plaintiff states that, for instance, the documents include a number of solicitations.

Pursuant to the Court's Memorandum and Order Regarding Sealing Confidential [Doc. 6], if a party moves to file under seal information that has been designated as confidential by someone else, the party who has designated the information as confidential will have fourteen days to respond indicating whether the party supports the motion. Defendant did not respond to the Motion. In any event, the Court has reviewed the documents and does not find that the documents should be placed under seal. Accordingly, Plaintiff's Motion for Leave to File Documents Under Seal [Doc. 60] is DENIED. Given that Defendant did not respond to the Motion, the Court DIRECTS the Clerk to unseal [Doc. 61].

III. CONCLUSION

*17 Accordingly, for the reason set forth above, the Court FINDS as follows:

IT IS SO ORDERED.

ENTER: