Minerva26

Delta Airlines, Inc. v. Marriott Int'l, Inc.

2023 WL 7319516 (N.D. Ga. 2023)

June 22, 2023

Ross, Eleanor L., United States District Judge

Download PDF

To Cite List

Summary

The court found that the attorney-client privilege and work product protection applied to some questions posed to Delta's in-house lawyer, Mr. Arnold, during his deposition. The court also found that the fact of a discussion with Mr. Benjamin may be entitled to privilege, but that the ultimate meaning of the Agreement is a legal conclusion for the court to decide. The court granted and denied various motions to compel responses to questions, and ordered that any information the parties wished to remain permanently under seal should be filed in a motion with a supporting brief and proposed order.

Additional Decisions

DELTA AIR LINES, INC., Plaintiff and Counterclaim Defendant,
v.
MARRIOTT INTERNATIONAL, INC., Defendant and Counterclaim Plaintiff, and,
MARRIOTT WORLDWIDE CORP., Counterclaim Plaintiff

1:20-CV-01125-ELR

United States District Court, N.D. Georgia, Atlanta Division

Signed June 06, 2023

Filed June 22, 2023

Counsel

Allison W. Buchner, Pro Hac Vice, Diana M. Torres, Pro Hac Vice, Lauren J. Schweitzer, Pro Hac Vice, Kirkland & Ellis LLP, Los Angeles, CA, Bruce H. Ratain, Pro Hac Vice, Barnes & Thornburg, LLP, Chicago, IL, Robin Ann McCue, Pro Hac Vice, Kirkland & Ellis, Chicago, IL, Claudia Ray, Dale M. Cendali, Pro Hac Vice, Johanna Schmitt, Pro Hac Vice, Jonathan D. Brit, Pro Hac Vice, Justin Edward Taylor, Pro Hac Vice, Mary Christine Mazzello, Pro Hac Vice, Shanti Sadtler Conway, Pro Hac Vice, Johannes Alexander Doerge, Pro Hac Vice, Shanti Sadtler Conway, Kirkland & Ellis LLP, New York, NY, James Charles Grant, Samuel Reed Rutherford, Alston & Bird, LLP, Atlanta, GA, Benjamin Alexander Stone, Thomas J. Munger, Caroline Rawls Strumph, Alston & Bird LLP, Atlanta, GA, for Plaintiff and Counterclaim Defendant.
Anna B. Naydonov, Pro Hac Vice, White & Case LLP, Washington, DC, Mark S. Sommers, Pro Hac Vice, Naresh Kilaru, Pro Hac Vice, Danny M. Awdeh, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC, Nicholas J. Inns, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, Washington, DC, Claudia T. Bogdanos, Pro Hac Vice, Quinn, Emanuel, Urquhart, Oliver & Hedges, LLP, New York, NY, Dylan I. Scher, Pro Hac Vice, Todd Anten, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, Jessica Arnold Caleb, Timothy Brandon Waddell, Caplan Cobb LLP, Atlanta, GA, Robert Gordon Wright, Virginia L. Carron, Finnegan Henderson Farabow Garrett & Dunner, LLP, Atlanta, GA, Morgan E. Smith, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Palo Alto, CA, for Counterclaim Plaintiff Marriott Worldwide Corp.
Anna B. Naydonov, Pro Hac Vice, White & Case LLP, Washington, DC, Danny M. Awdeh, Pro Hac Vice, Douglas A. Rettew, Pro Hac Vice, Mark S. Sommers, Pro Hac Vice, Naresh Kilaru, Pro Hac Vice, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC, Derek Shaffer, Pro Hac Vice, Eric C. Lyttle, Pro Hac Vice, Nicholas J. Inns, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan LLP, Washington, DC, Claudia T. Bogdanos, Pro Hac Vice, Quinn, Emanuel, Urquhart, Oliver & Hedges, LLP, New York, NY, Dylan I. Scher, Pro Hac Vice, Todd Anten, Pro Hac Vice, Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY, Matthew Samet, Morgan E. Smith, Pro Hac Vice, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Palo Alto, CA, Jessica Arnold Caleb, Timothy Brandon Waddell, Caplan Cobb LLP, Atlanta, GA, Robert Gordon Wright, Virginia L. Carron, Finnegan Henderson Farabow Garrett & Dunner, LLP, Atlanta, GA, for Defendant and Counterclaim Plaintiff Marriott International, Inc.

Ross, Eleanor L., United States District Judge

ORDER

*1 There are several matters presently pending before the Court. The Court sets out its reasoning and conclusions below.

I. Background[1]

This case arises from a dispute over what Plaintiff and Counterclaim Defendant Delta Airlines, Inc. (“Delta”) terms the “Delta Marks,” defined as “Delta's trademarks that include the word DELTA, including” the use of that word in a “sans-serif font and dark blue color scheme” depicted in the Amended Complaint. See Am. Comp. ¶¶ 1, 14 [Doc. 30].

At some point before 2014, Delta Hotels Limited (“DHL”)—an entity that operated a chain of hotels called “Delta Hotels”—sought to register certain trademarks related to its brand in Hong Kong and China. [See Docs. 387-2, 387-3]. Delta initially opposed those registrations on January 20, 2014. See id. After Delta lodged its opposition to DHL's proposed marks, DHL and Delta sought to settle their dispute over the same. [See Doc. 387-3]; see also Deposition of Alan Arnold (“Arnold Dep.”) at 19:4–12 [Doc. 381-2].[2] This desire for a settlement ultimately resulted in a March 25, 2015 “Trade Mark Coexistence Agreement” (the “Agreement”) between Delta and Delta Hotels Limited Partnership (“DHLP”)—one of DHL's affiliates.[3] [See Doc. 33-1]. [redacted] See Arnold Dep. at 25:11–19. Mr. Arnold executed the Agreement on behalf of the company, and Greta Moran, Delta's General Manager of Brand Identity and Creative Services, witnessed the Agreement for the company. [See Docs. 33-1 at 8 (one of the signature pages of the Agreement); 381-4 at 7 (reflecting Mr. Arnold's full name and job title at Delta)]; Arnold Dep. at 47:18–49:5 [redacted] Deposition of Greta Moran at 14:5–16 [Docs. 381-3, 387-6].[4] After entering into the Agreement, Delta signed several letters of consent authorizing Counterclaim Plaintiff Marriott Worldwide Corporation and certain related entities to use particular marks associated with the Delta Hotels brand in Australia, Chile, Israel, and Taiwan in association with certain classes of good and services.[5] [See Doc. 381-4]. Mr. Arnold signed these consents on Delta's behalf. [See id. at 6–8, 11–12, 14, 16, 18].

*2 In 2015, Defendant and Counterclaim Plaintiff Marriott International, Inc. “acquired ... DHLP[.]” See Am. Compl. ¶ 20. Delta alleges that, at that time, DHLP and its Delta Hotels brand “operated solely in Canada, with no presence in the United States.”[6] See id. Delta claims that “[p]rior to Marriott's acquisition, DHLP used the ... distinctive logos,” depicted below, “which included a highly styled, curling ‘D’ design and serif font.”[7]

See id. ¶ 21.

Following its acquisition of DHLP, Marriott allegedly “rapidly expanded the Delta Hotels chain to the United States ... and rebranded to the” purportedly infringing “Delta Hotels Marks, which closely mimic the Delta Marks.” See id. ¶ 22. The “Delta Hotels Marks” are “Marriott's trademarks that include the word DELTA, including along with the [aforementioned] sans-serif font and dark blue color scheme” depicted in the Amended Complaint. See id. ¶ 1. The changes Marriott purportedly made to its branding of Delta Hotels properties following its acquisition of those properties included (1) “eliminating the stylized, curling ‘D’ design in [branding] ... that DHLP had used in Canada for decades[;]” (2) “chang[ing] DHLP's longstanding color scheme from a bright blue to a dark blue color that more closely mimics and causes confusion with the Delta Marks[;]” and (3) “us[ing] a dark blue and white color scheme and modern design—design elements associated with Delta.” See id. ¶¶ 23–24, 31. The Amended Complaint provides several examples of the allegedly infringing Delta Hotels Marks. See id. ¶¶ 23–35. One such example is the so-called “Delta Hotels Vertical Logo”:

Image: https://ediscoveryassist.s3.amazonaws.com/uploads/images/AAGRVVCM_Ice1f3a70842a11eeb0a4aec77cae50c5.png

See id. ¶ 23. Another is Marriott's use of the word “Delta” as depicted below and compared with a mark DHLP previously used and a Delta mark:

Image: https://ediscoveryassist.s3.amazonaws.com/uploads/images/JYIWPDSA_Ice18d1d0842a11eeb0a4aec77cae50c5.png

See id. ¶ 24. The Complaint cites other examples of the allegedly infringing Delta Hotels Marks as well. See id. ¶¶ 25–35.

Delta filed this case on March 11, 2020, claiming that

Marriott has embarked upon a calculated strategy of ... gratuitously using the name DELTA for its DELTA HOTELS chain of hotels in the United States [and] ... adopt[ing] a sans-serif font and dark blue color scheme for its DELTA HOTELS business that closely mimics the font and color scheme used by Delta[.]

*3 See Compl. [Doc 1]. In its operative Complaint, Delta asserts three (3) Lanham Act claims, three (3) Georgia state statutory claims, and a claim for declaratory judgment that asks this Court to determine the meaning of the Agreement. See Am. Compl. ¶¶ 48–91. On June 26, 2020, Marriott brought a counterclaim against Delta for breach of contract based on the Agreement. See Marriott's Answer at 27–36.

Fact discovery opened on July 27, 2020. See id.; LR 26.2, NDGa.; FED. R. CIV. P. 6(a)(1)(C). Mr. Arnold was originally “scheduled to be deposed on March 26, 2021, but the [P]arties postponed his deposition” pending the Court's resolution of several discovery disputes then before it. See Declaration of Shanti Sadtler Conway (“Conway Decl.”) ¶ 8 [Doc. 387-9]; [see also Doc. 191 at 2]. Those disputes were resolved by a June 25, 2021 Order issued by Magistrate Judge J. Clay Fuller, which the undersigned affirmed over Marriott's objections on December 22, 2021. [See Docs. 167, 168, 174, 214, 217, 248, 251, 295].

The Parties presented additional discovery disputes to the Court in the spring and summer of 2022, and the Court extended the schedule for this case as a result. [See Docs. 304, 310, 313, 318, 319, 323, 324]. The amended schedule allowed for three (3) months of discovery following the Court's resolution of the Parties' remaining discovery disputes. [See Doc. 310]. The Court resolved those remaining discovery disputes by an Order issued on November 8, 2022 (the “November 8 Order”). [See Doc. 343]. On November 29, 2022, Marriot filed a “Motion Regarding the Scope of Plaintiff's Claims,” which asks the Court to “clarify” the meaning of the November 8 Order. [Doc. 348]. Delta opposes Marriott's scope of claims motion and has also filed a related “Motion for Leave to Submit a Sur-Reply to Address New Arguments in Marriott's Reply in Support of Its Motion Regarding the Scope of Plaintiff's Claims.” [Docs. 349, 353]. Marriott opposes Delta's request for a sur-reply. [Doc. 357].

While Marriott's “Motion Regarding the Scope of Plaintiff's Claims” remained pending, the Parties continued discovery in accordance with the Court's scheduling Orders. [See Docs. 310, 344]. Ms. Moran was deposed on January 20, 2023, both in her individual capacity and as Delta's Federal Rule of Civil Procedure 30(b)(6) corporate representative on the Agreement and Delta's “understanding and interpretation of the” same. See Moran Dep. at 1; [Docs. 387-11 at 80; 387-14]. Mr. Arnold was deposed on January 30, 2023, both as Delta's Rule 30(b)(6) representative on thirty-two (32) different topics and in his individual capacity. See Arnold Dep. at 1; [Doc. 387-14]. During Mr. Arnold's deposition, Delta objected to numerous questions Marriott asked, sometimes instructing Mr. Arnold not to answer and sometimes cautioning him not to reveal privileged information in giving an answer. See, e.g., Arnold Dep. at 29:8–30:24. Delta also instructed Mr. Arnold not to answer at least one question because his deposition had gone over the seven (7)-hour limit imposed by Federal Rule of Civil Procedure 30(d)(1). See id. at 333:11–337:15.

Marriott's counsel emailed Delta's counsel on February 6, 2023, to “object to Delta['s] ... repeated invocations of privilege attended by instructions that Mr. Arnold not answer [allegedly] basic questions from Marriott about Delta's contemporaneous understanding surrounding various provisions of the ... [A]greement and [its] implementation of [the] same.” [See Doc. 390-8 at 5]. The Parties met and conferred regarding Marriott's objection the next day and were unable to resolve their dispute. See Declaration of Bruce H. Ratain (“Ratain Decl.”) ¶ 5 [Doc. 387-15]; [Doc. 390-8 at 2]. The issue regarding the time allowed for Mr. Arnold's deposition was not raised either in the emails the Parties exchanged on February 6 and 7, 2023, or during the conference they held on February 7, 2023. See Ratain Decl. ¶ 5; [see also generally Doc. 390-8].

*4 Pursuant to the undersigned's Instructions for Civil Cases [Doc. 63 at 4–6], on February 8, 2023, the Parties filed a “Consolidated/Joint Discovery Statement” asking for the Court's assistance in resolving the issues surrounding Mr. Arnold's deposition. [Doc. 375]. In the discovery statement, Marriott took issue with the fact that “Mr. Arnold refused to answer 41 questions relating to the Agreement on privilege grounds[.]” [See id. at 2] (emphasis omitted). Marriott attached excerpts of Mr. Arnold's deposition and highlighted the questions that elicited the responses and objections it was challenging. [See Docs. 375 at 2; 375-1]. Marriott's discovery statement was limited to the issue of Delta's purportedly “improper privilege objections during the 30(b)(6) deposition of Alan Arnold” and did not mention the issue regarding the time allowed for Mr. Arnold's deposition. [See generally Doc. 375]. On February 21, 2023, the Court directed the Parties via email to meet and confer once more about their dispute over Mr. Arnold's deposition. The Parties did so that same day and were unable to reach a resolution. See Ratain Decl. ¶ 7. Accordingly, Marriott filed its “Motion to Compel the Testimony of Alan Arnold” on March 6, 2023. [See Doc. 380].

Having been fully briefed, each of Marriott's “Motion Regarding the Scope of Plaintiff's Claims,” Delta's “Motion for Leave to Submit a Sur-Reply to Address New Arguments in Marriott's Reply in Support of Its Motion Regarding the Scope of Plaintiff's Claims,” Marriott's “Motion to Compel the Testimony of Alan Arnold,” and the associated motions to seal are ripe for the Court's review.[8] [Docs. 348, 349, 351, 353, 357, 363, 380, 382, 386, 388, 390, 392]. The Court begins with Marriott's “Motion Regarding the Scope of Plaintiff's Claims” and Delta's related request for leave to file a sur-reply. [Docs. 348, 353].

II. Marriott's “Motion Regarding the Scope of Plaintiff's Claims” [Doc. 348] and Delta's Motion for Leave to Submit a Sur-Reply Regarding the Same [Doc. 353]

By its motion regarding the scope of Delta's claims, Marriott requests that the Court “clarify” whether the November 8 Order means that “the only trademarks at issue in this case are” the “Updated Logos” depicted below “and no others”:[9]

Image: https://ediscoveryassist.s3.amazonaws.com/uploads/images/AIMJWQZB_Ice1b1bc0842a11eeb0a4aec77cae50c5.png

[See Doc. 348-1 at 3]. Marriott contends that the November 8 Order limited the scope of the trademarks at issue in this case because: (1) along with a reply brief Marriott submitted in support of a motion to compel the November 8 Order resolved, Marriott included a chart “listing other marks containing DELTA used by Marriott and/or its predecessor-in-interest as part of the DELTA HOTELS brand” and (2) in the November 8 Order, the Court denied Marriott discovery it requested, supposedly “deeming the additional marks [referenced in Marriott's chart] ‘irrelevant to this trademark infringement suit concerning Marriott's acquisition and alteration of the Delta Hotels marks in the United States.’ ” [Doc. 348-1 at 3–5] (citing [Doc. 337 at 9–11] and quoting [Doc. 343 at 3]). Delta asserts that Marriott misconstrues the November 8 Order and that Marriott's motion regarding the scope of Delta's claims is procedurally improper. [See Doc. 349].

Upon review, the Court agrees with Delta that the Court did nothing in the November 8 Order to limit the scope of Delta's claims to the Updated Logos. As explained above, those Updated Logos are but one example of the marks Delta claims Marriott has infringed in the Amended Complaint. See Am. Compl. ¶¶ 25–35. And since the Court has not dismissed or granted summary judgment to Marriott on any portion of any of Delta's claims, the scope of those claims remains that which is pled in the Amended Complaint.

*5 Marriott's attempt to cast the Updated Logos as the only marks it changed following its 2015 acquisition of DHLP is wrong and thus does nothing to change this analysis. [See, e.g., Doc. 325 at 2–3]. The Amended Complaint describes at least three (3) types of general changes that Marriott purportedly made to its branding of DHLP properties following its acquisition of those properties, and none of those changes are limited to the Updated Logos. See Am Compl. ¶¶ 23–24, 31.

Neither do the Court's three (3) references to a “logo” in the November 8 Order aid Marriott's position. [See Doc. 343 at 2, 6, 11]. In these places, the word “brand” is perhaps the word the Court should have chosen to use (rather than the word “logo”), because, as the Amended Complaint makes clear, this case arises from Marriott's 2015 acquisition of DHLP and its subsequent decisions to expand the Delta Hotels chain into the U.S. market and change how that chain is branded. See Am. Compl. ¶¶ 22–24, 31. And again, as the Amended Complaint makes clear, Delta's claims are based on Marriott's alleged use of the Delta Hotels Marks, which are defined as “Marriott's trademarks that include the word DELTA, including along with [Delta's purportedly distinctive] sans-serif font and dark blue color scheme.” See id. ¶ 1. Because nothing in the Amended Complaint suggests that the Delta Hotels Marks that are at issue in this case are limited to the Updated Logos, nothing in Court's November 8 Order—including its use of the word “logo”—should be read to limit the scope of Delta's claims to the Updated Logos. See Alley v. U.S. Dep't of Health & Human Servs., 590 F.3d 1195, 1202 (11th Cir. 2009) (explaining that “[a] district court is in the best position to interpret its own orders”).

In this regard, it is worth noting that none of the three (3) sentences in the November 8 Order that use the word “logo” can be accurately described as part of the November 8 Order's holding because none of them are “necessary to” the Order's “result.” See United States v. Gillis, 938 F.3d 1181, 1198 (11th Cir. 2019) (defining what constitutes the holding of a case); see also Alley, 590 F.3d at 1202. Two (2) of these sentences provide descriptive background, one of this case in general and another of an argument that Marriott made in a motion to compel that the November 8 Order resolved. [See Doc. 343 at 2, 6]. The third parenthetically notes that the only reference to Delta Hotels in one of the pieces of evidence Marriott offered to argue that former Delta Chief Executive Officers Ed Bastian and Richard Anderson had discoverable information related to this case is “in plain text and without [the Delta Hotels] logo.” [See id. at 11].

Indeed, none of the Court's rulings in the November 8 Order depend on this case being solely about the Updated Logos. The Court denied Marriott's request for further pre-2014 documents because Marriott failed to show how those documents are relevant to Delta's claims or Marriott's equitable defenses in this case—which all center on “ ‘Marriott's [2015] acquisition and alteration of the DELTA HOTELS marks in the United States.’ ”[10] [See Doc. 333 at 14] (quoting [Doc. 248 at 37]); see also Am. Compl. ¶¶ 1–2, 23–24; [Doc. 343 at 6–9]. Additionally, the Court rejected Marriott's other requests—that the Court compel Delta to search the files of its current CEO, a former CEO, and six (6) additional custodians—because Marriott failed to carry its burden to show that these eight (8) individuals had non-duplicative documents that are relevant to this case. [See Doc. 343 at 9–16]. None of these rulings restrict the scope of this action to the Updated Logos.

*6 In short, the Court's November 8 Order did not hold that the Updated Logos are the only marks at issue in this case. Though the Court disagrees with the Marriott's interpretation of the November 8 Order, the Court agrees with Marriott that none of the above analysis is aided by the sur-reply Delta offers. The Court accordingly grants in part Marriott's “Motion Regarding the Scope of Plaintiff's Claims” [Doc. 348] to the extent it requests the clarification provided herein and denies Delta's “Motion for Leave to Submit a Sur-Reply to Address New Arguments in Marriott's Reply in Support of Its Motion Regarding the Scope of Plaintiff's Claims.” [Doc. 353].

III. Marriott's “Motion to Compel the Testimony of Alan Arnold” [Doc. 380]

The Court next turns to Marriott's motion to compel certain deposition testimony from Alan Arnold. It begins its analysis of that motion by setting forth the pertinent legal standards.

A. Legal Standards

1. The attorney-client privilege

“Parties may obtain discovery”—including answers to deposition questions—“regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case.” FED. R. CIV. P. 26(b)(1). “[I]n order to claim” that the attorney-client privilege shields information from being discovered, “the proponent of the privilege must prove that what is sought to be protected is (1) a communication (2) made between privileged persons (3) in confidence (4) for the purpose of obtaining or providing legal assistance for the client.” See Diamond Resorts U.S. Collection Dev., LLC v. US Consumer Att'ys, P.A., 519 F. Supp. 3d 1184, 1197 (S.D. Fla. 2021); accord Johnson v. 27th Ave. Caraf, Inc., 9 F.4th 1300, 1313 (11th Cir. 2021) (“The attorney-client privilege protects disclosures made by a client to his attorney, in confidence, for the purpose of securing legal advice or assistance.” (internal quotation marks omitted)).[11] “The protection of the privilege extends only to communications and not to facts.” Upjohn Co. v. United States, 449 U.S. 383, 395 (1981) (emphasis omitted) (alteration adopted) (quoting City of Phila. v. Westinghouse Elec. Corp., 205 F. Supp. 830, 831 (E.D. Pa. 1962)).

The attorney-client privilege can also be waived, “either expressly or by implication.” See Knox v. Roper Pump Co., 957 F.3d 1237, 1248 (11th Cir. 2020). “The doctrine of waiver by implication reflects the position that the attorney-client privilege ‘was intended as a shield, not a sword.’ ” Id. (cleaned up) (quoting Cox v. Adm'r U.S. Steel & Carnegie, 17 F.3d 1386, 1417 (11th Cir. 1994)).

Under the doctrine of waiver by implication, a defendant may not use the privilege to prejudice his opponent's case or to disclose some selected communications for self-serving purposes..... Thus, a party waives the attorney-client privilege when that party places privileged information in issue through some affirmative act for his own benefit, and to allow the privilege to protect against disclosure of such information would be manifestly unfair to the opposing party.

Id. at 1248–49 (11th Cir. 2020) (cleaned up) (quoting Cox, 17 F.3d at 1417).

2. The work product protection

*7 Pursuant to the work product protection, “[o]rdinarily, a party may not discover” information that is “prepared in anticipation of litigation or for trial by or for another party or its representative.”[12] See FED. R. CIV. P. 26(b)(3)(A).

The concept “in anticipation of litigation” contains within it two related, but nonetheless distinct, concepts. One is temporal. The other is motivational. To satisfy the temporal requirement[,] ... a document must, obviously, have been prepared before or during the litigation.

...

[To satisfy the motivational requirement, t]he document or material must also have been prepared for litigation and not for some other purpose.

United States ex rel. Bibby v. Wells Fargo Bank, N.A., 165 F. Supp. 3d 1319, 1324–25 (N.D. Ga. 2015).

An attorney's so-called “opinion work product—that is, materials containing ‘the mental impressions, conclusions, opinions, or legal theories of a party's attorney or other representative concerning the litigation’ ”—is treated differently from other work product, which is known as fact work product. See Drummond Co., Inc. v. Conrad & Scherer, LLP, 885 F.3d 1324, 1335 (11th Cir. 2018) (quoting FED. R. CIV. P. 26(b)(3)(B)). “Discovery may be had into factual work product upon a party showing ‘substantial need for the materials to prepare its case’ and that it ‘cannot, without undue hardship, obtain their substantial equivalent by other means.’ ” See id. (quoting FED. R. CIV. P. 26(b)(3)(B)). Opinion work product, in contrast, “enjoys a nearly absolute immunity and can be discovered only in very rare and extraordinary circumstances.” Cox, 17 F.3d at 1422 (quoting In re Murphy, 560 F.2d 326, 336 (8th Cir. 1977)). Additionally, a party may waive the protection it enjoys over fact work product “by inject[ing] the work-product directly into the litigation[,]” but this doctrine of “ ‘at-issue’ waiver [does ]not apply to opinion work-product materials.” See MapleWood Partners, L.P. v. Indian Harbor Ins. Co., 295 F.R.D. 550, 624 (S.D. Fla. 2013) (citing Cox, 17 F.3d at 1422–23).

3. Motions to compel

When “a deponent fails to answer” a properly framed deposition question, “[a] party seeking” a response to that question “may move for an order compelling an answer” to the same. See FED. R. CIV. P. 37(a)(3)(B)(i). However, in civil actions assigned to the undersigned, parties must obtain “prior permission from the Court” before filing a motion to compel. [See Doc. 63 at 4]; see also Johnson v. Bd. of Regents of Univ. of Ga., 263 F.3d 1234, 1269 (11th Cir. 2001) (explaining that a district court enjoys “broad discretion” over pre-trial matters such as discovery). Parties can only obtain that permission by filing a consolidated/joint discovery statement after they meet and confer with each other regarding the dispute as required by Federal Rule of Civil Procedure 37 and this district's Local Rule 37.1. [See Doc. 63 at 4–5]. The consolidated/joint discovery statement must “outlin[e] the[ parties' respective] positions on each of the discovery items in dispute.” [See id. at 5]. And “[t]he parties are required to attach as an exhibit to the consolidated[/joint] statement an excerpt of the relevant discovery requests including only the language of the specific requests and, potentially, the disputed responses, that are the subject of the dispute.” [See id. at 5].

*8 After receiving a consolidated/joint discovery statement, the Court determines what further proceedings should be held, including whether to permit formal motion practice on the dispute such as Marriott's present motion to compel. [See id. at 6]. The Court imposes these procedures on parties because, in its experience, these steps facilitate the informal resolution of discovery disputes in the overwhelming majority of cases and obviate the need for the formal motion practice, “resulting in less delays of discovery.” [See id. at 4].

B. Discussion

Having set forth the relevant legal standards, the Court now applies them to Marriott's motion to compel. The Court first provides an overview of the Parties' arguments related to that motion. It then discusses each of the sixty (60) questions that elicited the responses and objections Marriott challenges by its present motion in thematic groups the Court has identified.[13]

1. The Parties' arguments

Marriott contends that Delta's invocation of the attorney-client privilege and work product protection is improper and that the subjects of the questions objected to instead “fall squarely into the category of non-privileged, factual information in the possession of [Delta] officials, which [Delta] cannot shield simply by asserting that [it is] in the possession of one of its in-house attorneys.” [See Docs. 381 at 17–18; 391 at 11–13]. Marriott characterizes those subjects as including Delta's “ultimate understanding of certain provisions of the Agreement,” why Delta believes that certain of its and Delta Hotels' marks cannot “coexist peacefully in the United States,” and the reasons “certain provisions were ... included in the Agreement.” [See Doc. 381 at 17]. According to Marriott, Delta's designation of Mr. Arnold as a Rule 30(b)(6) witness and disclosure of Mr. Arnold “as having information about the negotiation of the Agreement and [Delta's] understanding of the” same along with Marriott's treatment of its own Rule 30(b)(6) witness who testified about the Agreement support the conclusion that the subjects about which Mr. Arnold was asked during his deposition are not privileged or work product protected. [See id. at 19–21]. Marriott further asserts that Delta waived any privilege or protection it enjoys over information about Delta's interpretation of the Agreement because Mr. Arnold purportedly testified about his understanding of paragraph 6 of the Agreement and paragraph E of the recitals to the same. [See Docs. 381 at 21–29; 391 at 17–19].

Delta responds by contending that Mr. Arnold provided all non-privileged information within his possession and that Mr. Arnold could only answer the questions Delta objected to—including those about Delta's “intent and interpretation” of the Agreement and “why” Delta took certain actions—by drawing on information he learned as a result of privileged and work product protected communications. [See Doc. 387 at 21–24]. It argues that Mr. Arnold did not waive the protections Delta enjoys over the information responsive to these questions because (1) Mr. Arnold did not interpret the Agreement or otherwise disclose any protected information and instead simply read what the Agreement said into the record, (2) Delta has not affirmatively relied on Mr. Arnold's testimony in this ligation, and (3) the information Marriott seeks to compel is opinion work product and the protection over such work product cannot be waived. [See id. at 24–28].

2. Questions about Mr. Arnold's previous statements about the Agreement's meaning (questions 1–2 and 4)

*9 The Court begins with the first, second, and fourth questions that are the subject of Marriott's present motion. These questions came toward the end of a colloquy between Marriott's counsel, Eric Lyttle, and Mr. Arnold about what Mr. Arnold did to prepare for his deposition.[14] See Arnold Dep. at 12:9–23:21. Mr. Arnold testified that, among other things, he reviewed Ms. Moran's deposition testimony in preparation for his deposition “to get an understanding of what Delta's ... understanding” of the Agreement was, presumably because Ms. Moran was designated as Delta's Rule 30(b)(6) witness on that topic. See Arnold Dep. at 23:22–25:10; [see also Docs. 387-12 at 83; 387-14]. Mr. Lyttle asked Mr. Arnold whether his “view” of the Agreement “differ[ed] from that of Ms. Moran.” See Arnold Dep. at 29:6-10. Mr. Arnold responded that “Ms. Moran's testimony was consistent with the communications that [he] had with [Marriott employee] Rick Hoffman about the scope of the [A]greement being limited to Hong Kong and the People's Republic of China.” See id. at 29:16–19 (Mr. Arnold's testimony in this regard); id. at 252:11–12 (Mr. Arnold confirming that Hoffman is a Marriott employee). Mr. Lyttle then asked Mr. Arnold the following three (3) questions:

[Question 1:] Prior to your deposition today, have you ever articulated the position that the ... [A]greement between Delta Hotels and Delta ... was limited to Hong Kong and China?

...

[Question 2:] I'm not asking about your conversations in preparation. I'm asking about prior to your preparation for this deposition; and prior to your deposition today, have you ever before articulated a view that the scope of the ... [A]greement between Delta Hotels and Delta ... was limited to Hong Kong and China?

...

[Question 4:] Mr. Arnold, to anyone other than your client at Delta ... , have you ever articulated the view that the [A]greement between Delta Hotels and Delta ... is limited to Hong Kong and China?

...

Anyone other than you hold an attorney/client privilege or claim to—with?

Arnold Dep. at 30:5–32:12.

Mr. Arnold responded to question 1: “I don't think that I can answer that question without waiving attorney/client privilege.” Id. at 30:5–15. Question 2 prompted a discussion between Mr. Lyttle and Delta's counsel, Claudia Ray, as to whether the same called for privileged information; that discussion ended with Ms. Ray stating: “I'm not going to let him answer that question. I'm objecting on the grounds of privilege.” See id. at 30:16–31:13. Mr. Arnold opted to follow the instruction. See id. at 31:14–16. After some discussion between Mr. Lyttle and Ms. Ray, Mr. Arnold answered question 4: [redacted] Id. at 31:25–32:13.

Upon review and consideration, the Court finds that questions 1 and 2 could call for Mr. Arnold to reveal privileged communications, at least in part. By virtue of his position as an in-house lawyer at Delta responsible for overseeing the negotiation of the Agreement, see Arnold Dep. at 25:11–19, many of Mr. Arnold's communications regarding his view about the scope of the Agreement might plausibly be with Delta's outside lawyers (placing Mr. Arnold in the role of the client) and with internal business stakeholders at Delta (placing Mr. Arnold in the role of the attorney). See Diamond Resorts U.S. Collection Dev, 519 F. Supp. 3d at 1197 (noting that communications between privileged persons are protected). Such communications between Mr. Arnold and Delta's counsel or Mr. Arnold and Delta's internal business stakeholders would necessarily be “for the purpose of securing legal advice or assistance” because they would be about Delta's strategy regarding the Agreement, educating Delta's internal stakeholders about the Agreement, or creating an internal understanding of what the Agreement means. See Johnson, 9 F.4th at 1313. However, questions 1 and 2 are not limited to Mr. Arnold's communications with outside counsel or Delta's internal business stakeholders, see Arnold Dep. at 30:5–22, and, to the extent they asked about communications with those whom Mr. Arnold did not an enjoy the attorney-client privilege, they do not call for the revelation of privileged information. See Diamond Resorts U.S. Collection Dev., 519 F. Supp. 3d at 1197. Neither could information about these communications be considered work product because such communications were not “prepared ... for ... [a] party or its representative” “in anticipation of litigation.” See FED. R. CIV. P. 26(b)(3)(A). To the extent these communications were “in anticipation of litigation,” they were made on behalf of Delta (a party), not “prepared ... for” Delta. See id.

*10 Nonetheless, the Court finds that any non-privileged communications responsive to questions 1 and 2 were covered by question 4. Compare Arnold Dep. at 30:5–8 and id. at 30:16–22, with id. at 31:25–32:12. And though Ms. Ray “instruct[ed Mr. Arnold] not to disclose any privileged communications, information[,] or work product” in response to question 4, she also told him that if he could answer the question without revealing such privileged information he could “go ahead” and do so. See id. at 31:25–32:17. Mr. Arnold then responded with information about “the only non-privileged conversation that [he] would have had” that was responsive to question 4. See id. at 31:25–32:23. And because Mr. Arnold's response to question 4 was complete, Marriott cannot compel a further response to the same. See FED. R. CIV. P. 37(a)(3)(B)(i) (allowing a motion to compel only where “a deponent fails to answer a question”). In short, because Mr. Arnold provided all the non-privileged information he had that was responsive to questions 1–2 and 4, the Court denies Marriott's motion to compel responses to those questions.

3. Questions about whether Mr. Arnold would answer certain other questions (questions 3, 35, 39–40, and 55)

Questions 3, 35, 39–40, and 55 were asked at different times during Mr. Arnold's deposition but are all similar in that they were non-substantive. See Arnold Dep. at 31:17–24, 227:21–228:5, 247:1–23, 313:2–22. Instead of seeking information about issues relevant to the merits of the Parties' claims and defenses in this case, by these questions Marriott's counsel simply asked whether Mr. Arnold would answer certain other questions or whether he or Delta would be asserting the attorney-client privilege or work product protection in response. See id. Mr. Arnold did not always directly respond to these questions, but, upon review and consideration, the Court finds that it was always clear whether Mr. Arnold was or was not willing to answer the substantive questions Mr. Lyttle was asking of him. See id. Accordingly, the Court finds that Mr. Arnold adequately responded to questions 3, 35, 39–40, and 55 and denies Marriott's motion to compel a response to the same. See FED. R. CIV. P. 37(a)(3)(B)(i).

4. Questions about Mr. Arnold's views on the meaning of the Agreement (questions 5, 34, 38, and 48)

Questions 5, 34, 38, and 48 all concern Mr. Arnold's understanding or interpretation of the Agreement. See Arnold Dep. at 33:10–34:19, 227:11–20, 246:14–25, 286:20–287:18. After Mr. Arnold testified that he was in accord with Delta's view that the Agreement was limited to Hong Kong and China, Mr. Lyttle asked Mr. Arnold question 5: “Have you—I'm not talking about any communication that you've had to any client—have you ever held the view that the ... [A]greement between Delta Air Lines and Delta Hotels was limited to Hong Kong and China?” See id. at 29:8–33:14. Ms. Ray instructed Mr. Arnold not to answer this question, and he followed this instruction. See id. at 33:15–34:19. Mr. Lyttle clarified that he was asking about Mr. Arnold's “personal view” and “understanding” of the Agreement. See id. But Ms. Ray took the position that Mr. Arnold's “personal view [about the Agreement] as Delta's counsel [is] based on his legal analysis and/or any instructions that he got from his outside counsel” and that she would therefore not allow Mr. Arnold to “testify as to his legal impressions, understanding[,] or advice he got from outside counsel.” See id.

Question 34 came much later in Mr. Arnold's deposition. After introducing a draft of the Agreement and establishing Mr. Arnold's familiarity with the same, Mr. Lyttle began to ask Mr. Arnold questions about Mr. Arnold's understanding of the Agreement. See Arnold Dep. 221:14–226:22. When he began to answer these questions, Mr. Arnold remarked that “all [he] c[ould] testify to is really what the document says.” See id. at 224:20–21. Eventually Mr. Lyttle turned to paragraph 6 of the Agreement. See id. at 226:7–9. Mr. Lyttle read the text of that paragraph, and then had the following colloquy with Mr. Arnold and Ms. Ray:

*11 Q. [From Mr. Lyttle:] ... Did I read that correctly?

A. [From Mr. Arnold:] Yes.

[redacted]

[redacted] [redacted]

[redacted]

MS. RAY: Objection.

THE WITNESS: [redacted]

[Question 34, from Mr. Lyttle:] [redacted]

MS. RAY: Objection. Privileged. Caution the witness not to disclose any privileged communications, information, or work product. I'm going to instruct him not to answer.

MR. LYTTLE: I'm sorry, are you asking the witness—

MS. RAY: I'm instructing him not to answer.[15]

See id. at 226:10–227:20 (emphasis added).

Shortly thereafter, Mr. Lyttle again asked Mr. Arnold about paragraph 6 of the Agreement:

Q. (By Mr. Lyttle) Okay. When we look at paragraph 6, I just have a very specific question. [redacted]

MS. RAY: Objection. Asked and answered.

THE WITNESS: [redacted]

Q. (By Mr. Lyttle) Yes.

A. [redacted]

Q. Anything else?

A. No.

Q. Okay. Now, you said—excuse me, [redacted][16]

A. I guess I can also say—add one more thing, if I might.

MS. RAY: Caution the witness not the disclose any privileged information—

...

THE WITNESS: ... [redacted]

Q. (By Mr. Lyttle) [redacted]

A. [redacted]

Q. Right. [redacted]

MS. RAY: Objection. Asked and answered.

THE WITNESS: [redacted]

See id. at 229:8–232:1. Mr. Lyttle and Mr. Arnold then debated whether the above-referenced testimony involved Mr. Arnold's interpretation the Agreement or whether he was just testifying as to what the same says. See id. at 232:2–235:13.

Later, Mr. Lyttle continued his questioning about paragraph 6 of the Agreement. See id. at 238:11–249:9. This time he focused on language in that paragraph through which Delta agreed not to “challenge, object to and/or oppose” Delta Hotels' “use and registration of” certain marks that “incorporated the word] ‘Delta’ (including its transliteration in Chinese and other languages).” [See Doc. 33-1 at 5] (the portion of the Agreement containing paragraph 6); see also Arnold Dep. at 238:11–249:22 (Mr. Lyttle's examination of Mr. Arnold regarding the same). During this questioning, Mr. Lyttle asked Mr. Arnold question 38 and Ms. Ray responded as follows:

[Question 38, from Mr. Lyttle:] What is your understanding what other languages can be referred to there?

MS. RAY: Objection. Asked and answered. Privileged. I'll instruct not to answer.

Q. (By Mr. Lyttle) Not able to interpret that one because of privilege?

MS. RAY: Objection. Misstates his testimony. Argumentative.

Q. (By Mr. Lyttle) Yes or no.

MS. RAY: Same objections.

See Arnold Dep. at 246:14–23 (emphasis added).

Finally, by question 48, Mr. Lyttle asked Mr. Arnold [redacted] See id. at 286:20–22. After Mr. Lyttle asked this question, he, Ms. Ray, and Mr. Arnold engaged in the following colloquy:

MS. RAY: Objection. Privilege. I instruct not to answer.

*12 Q. BY MR. LYTTLE: Are you going the follow your counsel's advice?

A. Yes.

Q. Okay. [redacted]

MS. RAY: Objection. Caution on privilege grounds.

THE WITNESS: We need to take a quick break. Before we do, would you read the question back, please?

Q. BY MR. LYTTLE: [redacted]

MS. RAY: All right. Let's take a break.

THE WITNESS: I—we don't need a break. I misheard the question. There is no non-privilege[d] information that I can give you about that.

See id. at 286:20–287:18.

Upon review and consideration, the Court agrees with Marriott that each of questions 5, 34, 38, and 48 could elicit at least some non-privileged or non-work product protected information. By each of these questions, Mr. Arnold was asked about his personal views regarding the Agreement, his personal understanding or interpretation of the same, or how any of these things may have changed over time. See Arnold Dep. at 29:8–33:14, 226:10–228:5, 246:14–23, 286:20–287:18. Information responsive to these questions is not necessarily protected by the attorney-client privilege because it does not inevitably involve communications between Mr. Arnold and anyone else. See Upjohn, 449 U.S. at 395 (“The protection of the privilege extends only to communications and not to facts.” (emphasis in original) (alteration adopted)). Though Mr. Arnold may have drawn on privileged communications in arriving at his views about the Agreement, that is not the only possibility.

Neither are Mr. Arnold's views and understanding of the Agreement completely work product protected. They are protected by the work product doctrine to the extent they were formed between the time Delta first opposed Delta Hotels' trademark registrations in Hong Kong and the date of the Agreement, i.e., between January 20, 2014 and March 25, 2015.[17] [See Docs. 33-1 at 2; 387-2]. During this period, Delta reasonably anticipated that it would litigate a dispute it had with Delta Hotels over whether certain marks could be registered in China and Hong Kong. See Hybrid Athletics, LLC v. Hylete, Inc., No. 3:17-CV-1767 (VAB), 2019 WL 6317953, at *13 (D. Conn. Nov. 26, 2019) (finding that an “active[ ] disput[e]” over trademarks was sufficient for a party to anticipate litigation). And because the Agreement was intended (at least in part) to settle that dispute, Mr. Arnold's understanding of, interpretation of, and views regarding the Agreement between January 20, 2014 and March 25, 2015, were by definition “mental impressions, conclusions, opinions, or legal theories of [a Delta] attorney ... concerning the [anticipated] litigation.” See FED. R. CIV. P. 26(b)(3)(B); SE Prop. Holdings, LLC v. GulfSouth Priv. Bank, No. 3:13CV6/MCR/CJK, 2015 WL 12868077, at *3 (N.D. Fla. Feb. 27, 2015) (concluding that an attorney-witness' “understanding or interpretation of [an] agreement” formed “solely” in connection with certain litigation was protected opinion work product);[18] [see also Doc. 387-3]; Arnold Dep. at 19:4–12.

*13 However, Delta fails to establish that Mr. Arnold's views and understanding of the Agreement formed before or after the period between January 20, 2014, and March 25, 2015, are necessarily work product protected because it has not shown that it reasonably anticipated litigation regarding the dispute it had with Delta Hotels over Delta Hotels' attempted trademark registrations in China and Hong Kong during that time. Therefore, Mr. Arnold may have formed such views unconnected to any anticipated litigation. See SE Prop. Holdings, 2015 WL 12868077, at *3 (finding an attorney-witness' “understanding or interpretation of [an] agreement” at times when litigation was not anticipated were not work product protected); IMC Chemicals, Inc. v. Niro Inc., No. CIV.A. 98-2348-JTM, 2000 WL 1466495, at *12 (D. Kan. July 19, 2000) (suggesting that an attorney-witness' “personal intent and interpretation of” contractual provisions and proposed changes thereto were not privileged or work product protected).[19]

Additionally, contrary to Marriott's assertions, Mr. Arnold's testimony about his understanding of paragraph 6 of the Agreement and paragraph E of the recitals to the same did not waive any attorney-client privilege or work product protection Delta enjoys over information responsive to questions 5, 34, 38, and 48. “[T]he subject-matter waiver doctrine does not extend to materials protected by the opinion work product privilege[,]” so Delta could not waive the work product protection over Mr. Arnold's “mental impressions” and “opinions” that questions 5, 34, 38, and 48 ask about. See Cox, 17 F.3d at 1422. And even if that were not case, it is not clear that Mr. Arnold's testimony revealed any of his work product protected “mental impressions” and “opinions” about the Agreement because he did not testify as to when he formed his above-referenced views and understanding of paragraphs 6 and E. See Arnold Dep. at 226:10–227:20, 229:8–232:1. Likewise, Delta has not waived the attorney-client privilege over any protected communications regarding Mr. Arnold's views or understanding of the Agreement because there is no indication that it “has disclose[d] some selected communications” regarding the same “for self-serving purposes.” See Knox, 957 F.3d at 1248. Mr. Arnold's testimony regarding paragraphs 6 and E does not explicitly reference any confidential attorney-client communications he engaged in, and there is no indication in his testimony about the sources from which he developed his understanding of those provisions. See Arnold Dep. at 226:10–227:20, 229:8–232:1.

Because some of the information responsive to questions 5, 34, and 38 is not necessarily attorney-client privileged or work product protected, it was improper for Delta to categorically prohibit Mr. Arnold from answering the same. And though Mr. Arnold has already testified that he has no non-privileged information responsive to question 48, see Arnold Dep. at 286:20–287:18, the Court believes the wisest course forward is to allow Marriott to ask this question of Mr. Arnold again after Mr. Arnold has had the benefit of reviewing the Court's rulings on the scope of the attorney-client privilege and work product protection in this context. If Mr. Arnold is still able to testify that he has no non-privileged information responsive to question 48 after reviewing this order, the Court will find that answer acceptable. The Court therefore grants Marriott's motion to compel responses to questions 5, 34, 38, and 48. During a second deposition, Mr. Arnold must testify about: (1) any views or understanding of the Agreement he formed outside of the period of January 20, 2014, to March 25, 2015, (2) which were formed without the aid of any confidential communications he participated in as Delta's lawyer or as the client of Delta's outside counsel where he sought or was asked for legal advice. If Mr. Arnold has no such views or understanding of the Agreement, he must testify to that fact under oath.

5. Questions not raised in Marriott's Consolidated/Joint Discovery Statement (question 6–13, 15–24, 27, 49, and 52)

*14 Questions 6–13, 15–24, 27, 49, and 52 concern an array of different subjects, see Arnold Dep. at 55:1–56:9, 62:17–66:8, 77:11–19, 118:20–119:9, 122:18–123:15, 163:12–25, 172:14–17, 176:11–14, 287:19–20, 304:16–17, but they are united by the fact that Marriott failed to raise them in the “Consolidated/Joint Discovery Statement” that preceded its present motion to compel. [Compare Docs. 375 at 2 and 375-1, with Doc. 381-1]. Accordingly, the Court denies Marriott's motion to compel responses to these questions for Marriott's failure to comply with a lawful order of the Court. [See Doc. 63 at 4–6] (requiring a consolidated/joint discovery statement to include an attachment that lists “the relevant discovery requests”); LR 16.5, NDGa. (“Failure to comply with the Court's pretrial instructions may result in the imposition of sanctions[.]”); Betty K Agencies, Ltd. v. M/V MONADA, 432 F.3d 1333, 1337 (11th Cir. 2005) (discussing a court's authority to enforce its own orders).

6. Question 14

Question 14 was asked during a section of Mr. Arnold's deposition in which Mr. Lyttle inquired about how Delta was alerted to the use of its marks by third parties in general and about how Delta learned about Marriott's use of certain Delta Hotels marks in particular. See Arnold Dep. at 68:11–73:20. During that line of questioning, Mr. Lyttle, Ms. Ray, and Mr. Arnold had the following exchange:

Q. BY MR. LYTTLE: So in 2016, 2017, Marriott was telling Delta ... that it was using the Delta Hotels' mark, correct?

MS. RAY: Objection. Misstates his testimony.

THE WITNESS: Yes.

[Question 14, from Mr. Lyttle]: And what did Delta ... do with that information?

MS. RAY: Objection. Privileged. And I instruct not to answer.

Q. BY MR. LYTTLE: Are you going to take your counsel's instructions?

A. Yes.

See id. at 71:14–72:1 (emphasis added).

Upon review and consideration, the Court finds that Delta improperly prevented Mr. Arnold from answering question 14. The facts about what actions Delta took in response to learning from Marriott that Marriott was using the Delta Hotels Marks are neither privileged nor work product protected; they are simply facts. See, e.g., In re Uehling, No. 1:13-MC-00022-BAM, 2013 WL 3283212, at *6 (E.D. Cal. June 27, 2013) (explaining that non-privileged “facts include a client's actions, which cannot be shielded from discovery merely because an attorney was present to observe them”). Mr. Arnold may ultimately be unable to testify as to some or all of Delta's actions because he only learned about them through privileged communications he had in his role as Delta's in-house legal counsel. See IMC Chemicals, 2000 WL 1466495, at *13 (“When attorneys speak they must take extreme care not to disclose the substance of privileged attorney-client communications. If their knowledge of a particular subject comes only from the client through privileged communications, then they must refrain from discussing that subject outside the confidential attorney-client relationship. To do otherwise would effectively disclose privileged communications. The attorney-client privilege is intended to protect the client from such disclosure.” (emphasis in original)). However, Mr. Arnold is obligated to provide whatever information he has from non-privileged sources about the actions Delta took in response to learning that Marriott was using the Delta Hotels marks referred to in question 14. See Blattman v. Siebel, No. CV 15-530-GMS, 2017 WL 5953303, at *1 n.1 (D. Del. Dec. 1, 2017) (“An attorney may testify as a percipient witness about non-privileged facts.”). And if Mr. Arnold has no such information, he is obligated to testify to that fact under oath. For the foregoing reasons, the Court grants Marriott's motion to compel a response to question 14.

7. Questions about Delta's decision not to oppose certain trademark registrations (questions 25–26 and 28–33)

At roughly the midpoint of Mr. Arnold's deposition, Mr. Lyttle began to ask Mr. Arnold about registrations of Delta Hotels marks that Delta did not object to or oppose. See Arnold Dep. at 169:13–15, 170:6–171:3. Regarding a registration Delta Hotels made in the United States in 2015, Mr. Lyttle, Ms. Ray, and Mr. Arnold had the following exchange:

*15 Q. (By Mr. Lyttle) Okay. And you're aware, sir, that Delta ... filed no opposition or objection to Delta Hotels' registration of this Delta Hotels mark in the United States in 2015?

MS. RAY: Objection. Foundation.

THE WITNESS: Not that I'm aware.

[Question 25, from Mr. Lyttle:] Okay. Why did Delta ... not oppose this registration by Delta Hotels of Delta Hotels in the United States in 2015?

MS. RAY: Objection. Privileged. I instruct not to answer.

Q. (By Mr. Lyttle) Are you going to follow your counsel's advice?

A. I am.

[Question 26:] Mr. Arnold, I just need to round this out, and I'll do it with the other one too. Are there any non-privileged reasons you can tell me or the jury about why Delta ... would not oppose this registration by Delta Hotels in the United States?

MS. RAY: Objection on privilege grounds. If you can answer without disclosing privileged communications, information, work product, you can go ahead. Otherwise, you should not answer.

THE WITNESS: Any testimony that I would give would have to do with my role as Delta's trademark counsel and conversations with outside counsel, and so there's nothing I can say that's not privileged.

Arnold Dep. at 175:4–176:5 (emphasis added). In several other places, by questions 28–33, Mr. Lyttle asked Mr. Arnold why Delta did not “oppose or otherwise object” to trademark registrations Delta Hotels or Marriott made in the United States in 2015 and 2016 and in the United Kingdom. See id. at 181:3–20, 189:2–25, 192:23–193:5, 197:24–198:16, 200:20–202:1, 204:21–205:2, 214:20–215:3. Mr. Arnold did not answer any of questions 28–33. See id.

Upon review and consideration, the Court finds that it was improper for Delta to forbid Mr. Arnold from answering questions 25 and 28–33 on privilege grounds. To begin, the responses to these questions are not work product protected because there is no indication that there was ever a dispute between Delta and Delta Hotels regarding the trademark registrations they ask about. See id. Mr. Arnold testified that Delta did not oppose various Delta Hotels trademark registrations, so it logically follows that it did not anticipate litigation regarding them. See id.; FED. R. CIV. P. 26(b)(3)(A) (requiring a party to anticipate litigation to take advantage of the work product protection).

Additionally, asking one of Delta's in-house lawyers about why Delta did not object to or oppose certain trademark registrations does not necessarily call for the revelation of privileged information. The reasons why Delta decided not to object to or oppose the registrations these questions are themselves non-privileged facts, and Mr. Arnold may have learned about what those reasons were in his role as a business advisor, not a legal advisor. See, e.g., Gamache v. Hogue, 595 F. Supp. 3d 1344, 1352 (M.D. Ga. 2022) (“Attorneys do not always act in a legal capacity.” (internal quotation marks omitted)). And to the extent Mr. Arnold learned of information responsive to questions 25 and 28–33 when receiving or providing “non-legal, business advice,” that information is not privileged and must be disclosed. See id. (“A communication made for a purpose other than to seek or give legal advice is not privileged, and the mere fact that a lawyer is used to make the non-legal communication does not make it privileged.”); United States v. Davita, Inc., 301 F.R.D. 676, 682 (N.D. Ga. 2014) (“[W]here a lawyer provides non-legal business advice, the communication is not privileged.” (quoting Wachtel v. Health Net, Inc., 482 F.3d 225, 231 (3rd Cir. 2007)); Carpenter v. Mohawk Indus., Inc., Civil Action No. 4:07-CV-00049-HLM, 2007 WL 5971741, at *9 (N.D. Ga. Oct. 1, 2007) (describing when communications that incorporate legal and business advice are privileged).

*16 It is possible that Mr. Arnold knows of the reasons Delta did not object to or oppose certain trademark registrations only through privileged communications he engaged in, but that does not make it permissible for Delta to prevent Mr. Arnold from answering questions 25 and 28–33 altogether. Instead, Mr. Arnold is obligated to provide whatever information he has from non-privileged sources about the reasons why Delta decided not to object to or oppose the registrations that these questions concern. And if Mr. Arnold has no such information, he is obligated to testify to that fact under oath. The Court accordingly grants Marriott's motion to compel a response to questions 25 and 28–33.

For similar reasons, Mr. Arnold's response to question 26 was inadequate. Mr. Arnold answered this question by stating that “[a]ny testimony that [he] would give would have to do with [his] role as Delta's trademark counsel and conversations with outside counsel, and so there's nothing [he could] say that's not privileged.” See Arnold Dep. at 175:4–176:5. However, as just explained, not everything “hav[ing] to do with [Mr. Arnold's] role as Delta's trademark counsel” or even necessarily all of his “conversations with outside counsel” are subject to the attorney-client privilege. See id. Any communications wherein Mr. Arnold was exclusively or predominantly receiving or providing “non-legal, business advice” are not privileged. Mr. Arnold must provide any information responsive to question 26 he learned through such communications. Again, it is possible there is no such information, but, if that is true, Mr. Arnold must testify under oath to the same. The Court accordingly grants Marriott's motion to compel a response to question 26.

8. Questions about why certain language is included in the Agreement (questions 36–37 and 41–42)

Questions 36–37 and 41–42 all concern why certain language was included in the Agreement. [See Doc. 381-1 at 4–5] (listing these questions). In questions 36 and 37, Mr. Lyttle focused on language in paragraph 6 of the Agreement through which Delta agreed not to “challenge, object to and/or oppose” Delta Hotels' “use and registration of” certain marks that “incorporate[ed the word] ‘Delta’ (including its transliteration in Chinese and other languages).” [See Doc. 33-1 at 5] (the portion of the Agreement containing paragraph 6); see also Arnold Dep. at 238:14–249:22 (Mr. Lyttle's examination of Mr. Arnold regarding the same). During this questioning, Mr. Lyttle, Ms. Ray, and Mr. Arnold had the following exchanges:

[Question 36, from Mr. Lyttle]: Okay. And why did Delta ... want this language?

MS. RAY: Objection. Privilege. I'm going to instruct the witness not to answer.

Q. (By Mr. Lyttle) Are you going to take your counsel's instructions?

A. Yes.

...

[Question 37, from Mr. Lyttle:] [redacted]

MS. RAY: I'm going to object on privilege grounds and instruct not to answer.

Q. (By Mr. Lyttle) Are you going to not answer that under privilege grounds?

A. Yes.

Q. Okay. Not able to interpret that one, right?

MS. RAY: Objection. Misstates his testimony.

Q. (By Mr. Lyttle) I just want to be clear. You can't interpret that one under privilege?

MS. RAY: Objection. Misstates his testimony.

THE WITNESS: Which one?

Q. (By Mr. Lyttle) [redacted] They're going to claim that's our privilege. We're going to claim privilege there, right?

MS. RAY: Objection. Misstates his testimony. Argumentative.

THE WITNESS: I'm happy to say that it says what it says just like I said the E says what it says.

Arnold Dep. at 239:13–19, 245:14–246:13.

Later, Mr. Lyttle turned his questioning to paragraph 5 of the Agreement and paragraph E of the recitals to the same. See id. at 265:25–269:7. Unlike paragraph 6, both of these paragraphs contain the words “in Hong Kong and China.”[20] [See Doc. 33-1 at 4–5]. With respect to paragraphs 5 and E, Mr. Lyttle, Ms. Ray, and Mr. Arnold had the following exchange:

*17 Q. BY MR. LYTTLE: Okay. So in paragraph 5, we agree, you and I can agree, does relate to Hong Kong and China, correct?

MS. RAY: Objection. Calls for legal conclusion. Foundation. Scope. Privilege. And I'll caution the witness not to disclose any privileged communications, information[,] or work product.

THE WITNESS: Paragraph 5 refers to Hong Kong and in China.

Q. BY MR. LYTTLE: Right. And we've talked about paragraph 6 does not expressly refer to Hong Kong and China, correct?

A. Paragraph 6 does not refer to Hong Kong and China, and as I testified earlier, paragraph E of the recitals, states the intention of the [A]greement to resolve a coexistence problem between the parties in Hong Kong and China.

[Question 41, from Mr. Lyttle:] So if paragraph 6 is limited to Hong Kong and China via some reading in of paragraph E, as you've testified, why would you need to add language here about transliteration and Chinese and other languages?

MS. RAY: Privilege. I'm going to instruct not to answer.

Q. BY MR. LYTTLE: Are you going to take your counsel's instructions?

A. I am.

...

Q. BY MR. LYTTLE: Okay. What's your testimony about paragraph E?

A. Paragraph E says that the [A]greement is resolving and setting out the way in which the marks of Delta Air Lines and Delta Hotels can coexist in Hong Kong and China. Then there are eight paragraphs that have—as I read this document—the mechanics of how that coexistence is going to happen. And then there is a paragraph 9 that says, that in other jurisdictions, the parties will—it says cooperate in good faith to agree upon a mutually acceptable compromise[,] consent[,] and/or coexistence along the lines set forth in the [A]greement.

[Question 42, from Mr. Lyttle:] If paragraph E says that this ... [A]greement is limited to Hong Kong and China as you've testified, why do you need to specify Hong Kong and China in paragraph 5?

MS. RAY: Objection. Privilege. I instruct not to answer.

Q. BY MR. LYTTLE: Are you going to take your counsel's instructions on that?

A. Yes.

Arnold Dep. at 265:25–268:2 (emphasis added).

Upon review and consideration, the Court finds that information responsive to questions 36–37 and 41–42 is protected by the work product doctrine. As noted supra, Delta reasonably anticipated litigation in the period between when Delta first objected to Delta Hotels' use of certain marks in Hong Kong and the signing of the Agreement. See supra pp. 33–34. Indeed, the Agreement was designed at least in part to end the litigation that Delta anticipated following its dispute with Delta Hotels over Delta Hotels' attempted registration of certain marks. See id. Accordingly, the reasons Delta or Mr. Arnold wanted any specific language in the Agreement would necessarily reveal “mental impressions, conclusions, opinions, or legal theories of” Delta's attorneys or other representatives working at the direction of its attorneys “concerning the [anticipated] litigation” such that they are work product protected. See FED. R. CIV. P. 26(b)(3)(B); In re Bilzerian, 258 B.R. 846, 849 (Bankr. M.D. Fla. 2001) (“[T]he touchstone of the work-product inquiry is whether the discovery demand is made with the precise goal of learning what the opposing attorney's thinking or strategy may be.”). Finally, Delta could not waive the work product protection it enjoys over this material because it is opinion work product not subject to the at issue waiver doctrine. Even if this material was fact work product, there was still no waiver because there is no indication that Mr. Arnold ever testified about why certain language was included in the Agreement. See Cox, 17 F.3d at 1422. Therefore, the Court denies Marriott's motion to compel responses to questions 36–37 and 41–42.[21]

9. Question 43

*18 During a dispute between Mr. Lyttle and Ms. Ray about the scope of the attorney-client privilege and work product protection in the context of Mr. Arnold's deposition, Mr. Lyttle, Ms. Ray, and Mr. Arnold had the following exchange:

[Question 43, from Mr. Lyttle:] ... [W]hy am I not allowed, in your view, to inquire about your read of this document, except for when it's paragraph E, that's not privileged? But the additions Delta ... made, my question[']s about why paragraph 5 is that Hong Kong and China, that all of a sudden is privilege[d]; do you have an understanding why that is?

MS. RAY: Objection. Misstates his testimony. Argumentative. Asked and answered. Privilege. I'm going to instruct the witness not to testify if it would require him to disclose any privileged information, communications[,] or work product.

THE WITNESS: I've been instructed not to answer the question.

Q. BY MR. LYTTLE: Okay.

A. And I'm taking Delta's counsel advice not to testify on that topic.

Q. Okay.

See Arnold Dep. at 268:3–269:4 (emphasis added).

Upon review and consideration, the Court finds that information responsive to question 43 is not privileged or work product protected. The final part of that question simply required a “yes” or “no” response from Mr. Arnold, and such a response would not reveal any privileged or work product protected material. See id. It is true that the first part of question 43 or further follow up questions about Mr. Arnold's understanding of how the attorney-client privilege or work product protection apply to his deposition might call for Mr. Arnold to reveal the content of privileged communications between himself and Ms. Ray, who served as Mr. Arnold's attorney for purposes of his deposition. See id. at 11:21–25 (“MS. RAY: ... I'll just note that the witness is appearing here today pursuant to notice and a subpoena to him individually, and I'm representing him on behalf of Delta Air Lines and also individually.”). However, that is not necessarily the case. As an attorney himself, Mr. Arnold may have some understanding, independent of that developed through communications with his counsel, of how the attorney-client privilege and work product doctrine operate with respect to his deposition. Information about that understanding would not be privileged. See Upjohn, 449 U.S. at 395 (explaining that the attorney-client privilege only protects communications, not information separate from those communications). And the information sought by the first part of question 43 and any follow up questions regarding Mr. Arnold's understanding of the privilege issues in this case would not be work product protected because Mr. Arnold left Delta before this litigation began and is thus not Delta's attorney or representative within the meaning of Rule 26. See FED R. CIV. P. 26(b)(3)(A); see also Arnold Dep. at 49:4–11 (Mr. Arnold testifying that he retired from Delta in April 2019 and that the contract work he has done since his retirement has not involved Delta); Compl. (filed in March 2020). For the foregoing reasons, the Court grants Marriott's motion to compel a response to question 43.

10. Question 44

At one point during Mr. Arnold's deposition, Mr. Lyttle entered as an exhibit an email [redacted] See Arnold Dep. at 269:17–271:9 (Mr. Lyttle introducing the email); id. at 273:23–274:4 (Mr. Arnold testifying that Mr. Kilmer was Marriott's outside counsel). While examining this email, Mr. Lyttle, Mr. Arnold, and Ms. Ray had the following exchange:

*19 Q. [From Mr. Lyttle:] ... [redacted]

A. I don't—I will review these.

Q. Sure.

A. [redacted]

[Question 44:] Okay. [redacted]

MS. RAY: Objection. Calls for legal conclusion. Privilege. I instruct not to answer.

Q. BY MR. LYTTLE: Well, do you have a view on that, sir?

MS. RAY: Objection. Legal conclusion. I instruct not to answer.

THE WITNESS: I don't have a view on that.

MR. LYTTLE: I agree maybe it's a legal conclusion. I don't see how his view [redacted] is a legal conclusion—or excuse me, a privilege issue.

Arnold Dep. at 271:14–272:9 (emphasis added).

Upon review and consideration, the Court finds it unnecessary to determine whether information responsive to question 44 is privileged or work product protected because, as the Parties seem to agree, question 44 calls for Mr. Arnold to make a legal conclusion. While a witness in this case can be asked about his views about the Agreement or about Delta's views regarding the same (subject to the dictates of the attorney-client privilege and work product protection), the ultimate meaning of the Agreement is a legal conclusion for this Court to decide. See Wise v. Braniff Airways, Inc., 622 F.2d 738, 743 (5th Cir. 1980) (describing “the meaning of a written contract” as “a legal conclusion”).[22] Because question 44 asks Mr. Arnold to draw a legal conclusion, the Court denies Marriott's motion to compel a response to the same.

11. Questions about Mr. Arnold's conversations with Delta's outside counsel (questions 45 and 50)

Two (2) of the responses and objections Marriott challenges in its present motion to compel were made in response to questions about whether Mr. Arnold had certain conversations with Delta's outside counsel, Frank Benjamin. See Arnold Dep. at 281:10–282:1, 293:17–23 (these questions being asked and answered); see also id. at 40:24–43:4 (Mr. Arnold testifying that Mr. Benjamin was Delta's outside counsel). Question 45 concerned [redacted]

[Question 45, from Mr. Lyttle]: Okay. Did you discuss with Mr. Benjamin [redacted]

MS. RAY: I'm going to object on privilege grounds, and instruct the witness not to disclose any privileged communications, information or work product. If you've got any non-privilege[d] information, you can share the facts. That's fine.

MR. LYTTLE: The facts of that discussion is not privileged. If it occurred, that's what I'm asking.

MS. RAY: The fact of a discussion with Mr. Benjamin may be entitled to that. What they talked about is privileged.

THE WITNESS: I can't answer that question without getting into privilege.

See id. at 277:22–282:1. Mr. Arnold later testified that he met with Mr. Benjamin [redacted]. See id. at 282:2–8.

Question 50 concerned an email exchange between Mr. Kilmer and Mr. Benjamin [redacted]. See Arnold Dep. at 288:3–293:18. In that exchange, Mr. Benjamin—Delta's outside counsel—wrote:

We interpret the Agreement as requiring Delta to consent to future applications in other countries, as long as the services described in such applications are consistent with those in China and Hong Kong.

*20 [See Doc. 391-2 at 5] (the relevant email); Arnold Dep. at 291:8-14 (Mr. Lyttle quoting the email). Mr. Lyttle, Mr. Arnold, and Ms. Ray then engaged in an extended colloquy about the meaning of the word “we” in this message that including the following:

Q. [redacted]

MS. RAY: Same objection. Foundation. Speculation. Asked and answered. Privilege. And I caution on privilege grounds.

THE WITNESS: [redacted]

[Question 50, from Mr. Lyttle:] Okay. [redacted]

MS. RAY: Objection. Privilege. I'm going to instruct not to answer.

Q. BY MR. LYTTLE: Are you going to follow your counsel's advice?

A. Yes.

See id. at Arnold Dep. at 291:8–293:23. Before this colloquy, Mr. Arnold testified that he and Mr. Benjamin had discussed [redacted]. See id. at 289:7–290:13.

Upon review and consideration, the Court finds that questions 45 and 50 call for the revelation of material protected by the attorney-client privilege. It is true that “[t]he fact that a client is meeting with an attorney for the purposes of obtaining legal advice, and the general subject matter of such meeting, is not necessarily privileged.” See Meade v. Gen. Motors, LLC, 250 F. Supp. 3d 1387, 1391 (N.D. Ga. 2017) (citing, inter alia, In re Grand Jury Proceedings, 689 F.2d 1351, 1352–53 (11th Cir. 1982)). However, questions 45 and 50 asked about more than the “general subject matter” of conversations between Mr. Arnold and his attorney; they inquire about whether Mr. Arnold ever made specific communications to his outside counsel for legal advice about particular issues. See Arnold Dep. at 277:22–282:1, 291:8–293:23. Such communications are what the attorney-client privilege is designed to protect. See Palmisano v. Paragon 28, Inc., No. 21-60447-CIV, 2021 WL 1686948, at *6 (S.D. Fla. Apr. 7, 2021) (“The attorney-client privilege protects confidential communications the client makes to an attorney for the purpose of obtaining legal advice.” (citing Fisher v. Dist. Ct. of Sixteenth Jud. Dist., 424 U.S. 382, 391 (1976)); Bibby, 165 F. Supp. 3d at 1328–29 (“What is vital to the privilege is that the communication be made in confidence for the purpose of obtaining legal advice from the lawyer. .... [T]he ultimate touchstone for application of the privilege is whether the communication revealed advice from, or a request for advice made to, an attorney in some fashion.” (cleaned up)); see also United States v. Suarez, 820 F.2d 1158, 1160 (11th Cir. 1987) (“The purpose of the attorney-client privilege is to promote freedom of consultation between client and lawyer by eliminating the fear of subsequent compelled legal disclosure of confidential communications.”). The Court accordingly denies Marriott's motion to compel responses to questions 45 and 50.[23]

12. Questions about why Delta agreed to consent to certain trademark registrations and under what circumstances Mr. Arnold would sign certain consents (questions 46–47, 53–54, and 57)

Question 46 asked about [redacted]. See Arnold Dep. at 283:6–14. Question 47 asked Mr. Arnold [redacted]. See id. at 285:11–19. Question 53 asked [redacted]. See id. at 306:22–307:22. Ms. Ray objected to each of these questions on privilege grounds and instructed Mr. Arnold not to answer them. See id. at 283:6–14, 285:11–19, 306:22–307:22.

*21 In questions 54 and 57, Mr. Lyttle asked Mr. Arnold whether he would have [redacted] See id. at 312:18–313:22, 321:2–25. After Ms. Ray lodged a privilege objection and cautioned Mr. Arnold not to reveal any privileged or work product protected information in response to these questions, Mr. Arnold answered each by saying that he had no responsive non-privileged information. See id.

Upon review and consideration, the Court finds that the information responsive to questions 46–47, 53–54, and 57 is not work product protected and that these questions could elicit at least some non-privileged information. First, Delta fails to show that these questions call for the revelation of work product protected information. The only litigation that Delta described anticipating in its opposition to Marriott's motion to compel is that related to the 2015 oppositions Delta filed to Delta Hotels' proposed trademark registrations in Hong Kong and China. [See Doc 387 at 23 n.9]. Because each of the consents that questions 46–47, 53–54, and 57 concerned were related to trademark registrations Marriott made in places other than Hong Kong and China after the Agreement was executed, Delta has failed to show that those consents were executed at a time when and concerned trademark requests in locations where Delta anticipated litigation. [See Doc. 381-4]; see also Diamond Resorts U.S. Collection Dev, 519 F. Supp. 3d at 1200 (“the proponent of the work product [protection], ... bears the burden of establishing it by a preponderance of the evidence”). Thus, Delta fails to show that any information related to the consents at issue in these questions enjoys work product protection. See FED. R. CIV. P. 26(b)(3)(A) (providing protection only for that material “prepared in anticipation of litigation or for trial”).

Second, the reasons Delta agreed to and Mr. Arnold signed the subject consents are non-privileged facts. Mr. Arnold may have learned about why Delta agreed to these consents and may have been directed to sign the same in his role as a business advisor, not a legal advisor. See, e.g., Gamache, 595 F. Supp. 3d at 1352. Thus, to the extent Mr. Arnold learned of information responsive to questions 46–47, 53–54, and 57 when receiving or providing “non-legal, business advice,” that information is not privileged and must be disclosed. See id.; Davita, 301 F.R.D. at 682; Carpenter, 2007 WL 5971741, at *9. While it is possible that Mr. Arnold knows of such information only by virtue of privileged communications, Delta may not prevent Mr. Arnold from answering questions 46–47 and 53 altogether. Instead, Mr. Arnold is obligated to provide whatever information he has from non-privileged sources about why Delta agreed to consent to certain trademark registrations and why he signed those various consents. And if Mr. Arnold has no such information, he is obligated to testify to that fact under oath.

Delta did not prevent Mr. Arnold from responding to questions 54 and 57 altogether, and instead cautioned Mr. Arnold not to reveal any non-privileged in response to those questions. See Arnold Dep. at 312:18–313:1, 321:16–25. And Mr. Arnold responded that he had no non-privileged information in response to each of these questions. See id. Nonetheless, the Court finds that wisest course forward is to allow Marriott to ask these questions of Mr. Arnold again after Mr. Arnold has had the benefit of reviewing the Court's rulings on the scope of the attorney-client privilege and work product protection in this context. If Mr. Arnold testifies that he has no non-privileged information responsive to questions 54 and 57 after reviewing this order, the Court will find that answer acceptable.

*22 For the foregoing reasons, the Court grants Marriott's motion to compel a response from Mr. Arnold to questions 46–47, 53–54, and 57.

13. Question 51

Question 51 came during a portion of Mr. Arnold's deposition when he and Mr. Lyttle were discussing an email between Delta and Marriott's respective outside counsel [redacted]. See Arnold Dep. at 296:8–302:17 (Mr. Arnold testifying regarding [Doc. 391-2 at 4]). In the email, Marriott's counsel states that [redacted]. [See Doc. 391-2 at 4]. [redacted]. [Compare id.], with Arnold Dep. at 226:7–227:20, 229:8–232:1 and Am. Compl. ¶¶ 85–90. Thus, Mr. Lyttle asked Mr. Arnold question 51:

Q. BY MR. LYTTLE: [redacted]

Arnold Dep. at 300:4–11. Ms. Ray objected as to the form of the question and on privilege grounds and instructed Mr. Arnold not to answer. See id. at 300:12–13. Believing he was seeking non-privileged factual information, Mr. Lyttle proceeded to repeatedly ask Mr. Arnold [redacted]. See id. at 300:13–302:17. [redacted]. See id. at 302:1–17.

Because question 51 is an impermissible compound question and because Mr. Arnold appears to have provided the information question 51 seeks, the Court denies Marriott's motion to compel a response to it. See FED. R. CIV. P. 37(a)(3)(B)(i); Otis v. Demarasse, 399 F. Supp. 3d 759, 767 (E.D. Wis. 2019) (explaining that an attorney's “objections to the form of questions as multiple or compound” were “proper”).

14. Question 56

Question 56 arose during a discussion of a consent Delta signed that allowed Delta Hotels to use certain marks in Taiwan. See Arnold Dep. at 317:24–321:1. The letter of consent states:

[redacted]

[Doc. 381-4 at 11] (the Taiwan letter of consent); accord Arnold Dep. at 307:23–308:23 (Mr. Lyttle introducing and quoting the Taiwan letter of consent). After quoting this language, Mr. Lyttle asked Mr. Arnold whether it was a true statement, both at the time it was made (i.e., on the date the letter was executed, October 17, 2016) and “today” (i.e., on the date of Mr. Arnold's deposition, January 30, 2023). See Arnold Dep. at 319:14–320:3. Ms. Ray, Mr. Arnold, and Mr. Lyttle then had the following exchange:

MS. RAY: If you have any non-privileged information, you can share.

THE WITNESS: [redacted]

Q. BY MR. LYTTLE: [redacted]

MS. RAY: Objection. Asked [and] answered.

THE WITNESS: [redacted]

[Question 56, by Mr. Lyttle]: [redacted] [redacted]

MS. RAY: Objection. Privilege. I instruct not to answer.

Q. BY MR. LYTTLE: Are you going to take your counsel's advice?

A. Yes.

Id. at 320:7–321:1 (emphasis added).

Upon review and consideration, the Court finds that the information responsive to question 56 is not work product protected and that it could elicit at least some non-privileged information. First, there is no indication that any information responsive to question 56 was developed in anticipation of litigation. As noted, the only litigation Delta references in response to Marriott's instant motion is that which Delta anticipated might have arisen from the dispute regarding certain marks Delta Hotels sought to register in Hong Kong and China. [Doc 387 at 23 n.2]. Question 56 concerns a consent Delta agreed to regarding marks in Taiwan, and, thus, the information it seeks is unrelated to the anticipated litigation Delta identified. [See id.]; Arnold Dep. at 319:14–321:1. Delta thus fails to show information responsive to question 56 is work product protected. See FED. R. CIV. P. 26(b)(3)(A); Diamond Resorts U.S. Collection Dev, 519 F. Supp. 3d at 1200.

*23 Second, information responsive to question 56 is not necessarily attorney-client privileged because it does not inevitably involve communications between Mr. Arnold and anyone else. See Upjohn, 449 U.S. at 395 (“The protection of the privilege extends only to communications and not to facts.” (emphasis in original) (alteration adopted)). Though Mr. Arnold may have drawn on privileged communications in arriving at his views about whether Delta and Delta Hotels marks cannot peacefully coexist in the United States, the Court cannot say so with any certainty. Mr. Arnold is required to testify about any understanding he formed separate and apart from privileged communications with his attorneys (Delta's outside counsel) or his client (Delta's managers) about why certain Delta and Delta Hotels marks were able to peacefully coexist in other countries but supposedly not in the United States.

Because not all of the information responsive to question 56 is necessarily attorney-client privileged and none of it is work product protected, it was improper for Delta to categorically prohibit Mr. Arnold from answering the same. Thus, the Court grants Marriott's motion to compel a response to question 56.

15. Questions about differences between Mr. Arnold's and Marriott's counsel's interpretations of the Agreement (questions 58 and 59)

Questions 58 and 59 concerned an email exchange between Delta and Marriott's respective outside counsel regarding a mark Delta was trying to register in Brazil, which Marriott opposed. See Arnold Dep. at 322:1–329:15. Toward the end of his testimony regarding this email exchange, Mr. Arnold quoted Mr. Benjamin—Delta's outside counsel—as saying the following in an email: [redacted][24] See id. at 327:2–4. The following exchange then ensued:

[Question 58, from Mr. Lyttle]: [redacted]

MS. RAY: Objection. Legal conclusion. Privilege. Instruct not to answer.

MR. LYTTLE: I'm not asking—it's a factual question.

[Question 59, from Mr. Lyttle]: [redacted]

[redacted]

MS. RAY: Objection. Legal conclusion. Foundation. Privilege. Instruct not to answer.

See id. at 327:5–24 (emphasis added). After a colloquy about whether questions 58 and 59 called for the revelation of privileged information, Mr. Lyttle, Ms. Ray, and Mr. Arnold continued as follows:

Q. BY MR. LYTTLE: Mr. Arnold, do you have a view, yes or no, about—I don't want to know what that view is about—we'll deal with this with a judge, and we're going to be seeing you again but—but I just want to know as we sit here today, so the judge has a clear record, do you have a view, yes or no, a fact of the view, whether or not what [redacted]

MS. RAY: Same objection. I'm going to caution on privileged grounds.

THE WITNESS: I haven't formed a view on that.

Q. BY MR. LYTTLE: You don't have a view on that?

A. I haven't formed a view on that. No.

Q. Okay.

See id. at 327:25–329:15.

Upon review and consideration, the Court finds it unnecessary to determine whether questions 58 and 59 call for the revelation of privileged or work product protected information. Mr. Arnold testified under oath that he has no view about whether the interpretation of the Agreement Mr. Benjamin offered in the email that was the subject of the above-referenced questions is consistent with Mr. Arnold's own personal interpretation of the Agreement. See id. It logically follows, therefore, that Mr. Arnold has no information (privileged, work product protected, or otherwise) responsive to questions 58 and 59. The Court accordingly denies Marriott's motion to compel responses to those questions.

16. Question 60

Delta objected to the final question that is the subject of Marriott's present motion—number 60—for the sole reason that it was past the seven (7)-hour mark of Mr. Arnold's deposition when Marriott asked it. See Arnold Dep. at 333:11–337:4. Marriott did not include the issue of Mr. Arnold's deposition being cut off at the seven (7)-hour mark in the “Consolidated/Joint Discovery Statement” that precipitated its instant motion to compel. Compare Ratain Decl. ¶¶ 5, 7; [Docs. 375; and 390-8], with [Doc. 381 at 5, 7, 25]. Accordingly, the Court denies Marriott's motion to compel question 60 for Marriott's failure to comply with a lawful order of the Court. [See Doc. 63 at 4–6] (requiring a consolidated/joint discovery statement to “outlin[e] the[ parties' respective] positions on each of the discovery items in dispute”); LR 16.5, NDGa.; Betty K Agencies, 432 F.3d at 1337.

IV. Various Motions to Seal [Docs. 382, 388, 392]

*24 In addition to the substantive motions discussed supra, the Parties have collectively filed three (3) motions to seal to all or portions of various filings they made in connection with Marriott's motion to compel Mr. Arnold to answer certain questions during his deposition. [See Docs. 382, 388, 392]. The Court now considers those motions to seal.

“Once a matter is brought before a court for resolution, it is no longer solely the parties' case, but also the public's case.” Brown v. Advantage Eng'g, Inc., 960 F.2d 1013, 1016 (11th Cir. 1992). Accordingly, “court records are presumptively public.” See Nash v. Kherimba Facility Serv., LLC, No. 1:19-CV-590-MHC, 2020 WL 13561584, at *1 (N.D. Ga. Feb. 27, 2020). Indeed, members of the public enjoy a “common-law right of access to judicial proceedings” that “includes the right to inspect and copy public records and documents.” Romero v. Drummond Co., 480 F.3d 1234, 1245 (11th Cir. 2007) (quoting Chi. Trib. v. Bridgestone/Firestone, 263 F.3d 1304 (11th Cir. 2001)).

“This right of access is not absolute, however.” Id. “The right of access does not apply to discovery and, where it does apply, may be overcome by a showing of good cause.” Id. With respect to the first point, “[d]ocuments filed in connection with motions to compel discovery are not subject to the common-law right of access[.]” Id. In this regard, the Eleventh Circuit “ha[s] explained that the need for public access to discovery is low because discovery is essentially a private process the sole purpose of which is to assist trial preparation.” Id. (internal quotation marks omitted). Additionally, as noted, a court may seal material that would otherwise be publicly accessible where a party asking for such relief shows good cause exists to support it. See id. at 1246. “Essentially, good cause” for sealing “exists where ‘a party's privacy or proprietary interest in information overcomes the interest of the public in accessing the information.’ ” See Nash, 2020 WL 13561584, at *1 (alterations accepted) (quoting Romero, 480 F.3d at 1246). Thus, the good cause inquiry involves “balancing the public interest in accessing court documents against a party's interest in keeping the information confidential,” and whether good cause exists depends on “the nature and character of the information in question.” See Romero, 480 F.3d at 1246.

Upon review and consideration, the Court finds that good cause exists to permanently seal the material that the Parties have requested remain shielded from public view, particularly because these materials were all filed in support of or in opposition to a motion to compel deposition testimony. The Court accordingly grants the Parties' various motions to seal. [See Docs. 382, 388, 392].

V. The Sealing of This and the Court's December 22, 2021 Order

The Court files this order provisionally under seal given that it has sealed some of the information the Parties have offered in support of and in opposition to it. See supra part IV. The Court also previously filed the Order it issued on December 22, 2021 under seal for similar reasons. [See Doc. 295]. Though both of these orders concern discovery matters, the Court is cognizant of the fact that “[t]he operations of the courts and the judicial conduct of judges are matters of utmost public concern,” and the Court thus prefers that as much of its orders be publicly available as possible. See Landmark Commc'ns, Inc. v. Virginia, 435 U.S. 829, 839 (1978). Therefore, should the Parties desire for any information in this order or in the Court's December 22, 2021 Order to remain permanently under seal, they should, within fourteen (14) days of the date of this order, file motions requesting that the Court permanently seal portions of these orders “together with a supporting brief [for each motion] and a proposed order granting” the same. See LR, NDGa., App. H § II(J)(2)(d). To be clear, the Parties should file one motion requesting the sealing of portions of this order and a separate motion requesting the sealing of the December 22, 2021 Order. Consistent with the Local Rules of this district, the brief filed in support of each motion

*25 must: (i) identify, with specificity, the ... portion(s) ... [of each order that the Parties wish to remain under seal]; (ii) explain ... the reasons sealing is necessary; (iii) explain ... why less drastic alternatives than sealing will not provide adequate protection; and (iv) address the factors governing sealing of documents reflected in controlling case law.

Id. Each motion should also be accompanied by a proposed redacted copy of the relevant order. And, if possible, each motion should be made jointly. If the Parties do not wish for any portion of this order, the December 22, 2021 Order, or both to remain under seal, the Parties shall file, within (14) days of the date of this order, a notice specifying that fact.

VI. Conclusion

For the foregoing reasons, the Court GRANTS IN PART AND DENIES IN PART Marriott's “Motion Regarding the Scope of Plaintiff's Claims.” [Doc. 348]. The Court GRANTS that motion to the extent it requests the clarification of the Court's November 8, 2022 Order that the Court provides herein. The Court DENIES the motion in all other respects. The Court DENIES Delta's “Motion for Leave to Submit a Sur-Reply to Address New Arguments in Marriott's Reply in Support of Its Motion Regarding the Scope of Plaintiff's Claims.” [Doc. 353].

Next, the Court GRANTS IN PART AND DENIES IN PART Marriott's “Motion to Compel the Testimony of Alan Arnold.” [See Doc. 380]. The Court DENIES the motion to the extent it seeks to compel answers to questions 1–4, 6–13, 15–24, 27, 35–37, 39–42, 44–45, 49–52, 55, and 58–60. The Court GRANTS the motion to the extent it seeks to compel answers to questions 5, 14, 25–26, 28–34, 38, 43, 46–48, 53–54, and 56–57. The Court ORDERS E. Alan Arnold to sit for another deposition no later than June 30, 2023, and to answer the questions identified in the previous sentence as well as any reasonable follow up questions to the same in a manner not inconsistent with the Court's directives articulated throughout this order. The Court recognizes that Mr. Arnold's testimony may be relevant to any forthcoming motions for summary judgment. By a separate amended scheduling order, the Court will accordingly make slight adjustments to the summary judgment briefing schedule to account for the date of Mr. Arnold's deposition. Though the Court recognizes that Mr. Arnold is no longer employed by Delta, the Court ORDERS Delta to use its best efforts to assist Marriott in securing this additional deposition of Mr. Arnold. The Court DIRECTS Delta to immediately provide Mr. Arnold with a copy of this order and ORDERS Mr. Arnold to review it in advance of his second deposition. Though the Court herein compels Mr. Arnold to answer certain questions, the undersigned reminds the Parties that, as noted throughout this order, Mr. Arnold may not have any non-privileged information in response to certain questions. If Mr. Arnold testifies during his second deposition that he lacks any non-privileged information in response to any of Marriott's questions, the Court will accept that sworn testimony as a sufficient answer to such questions.

In the process of deciding Marriott's present motion to compel, the Court reviewed the transcript of Mr. Arnold's deposition in its entirety and has concerns about the unprofessional tone that counsel for all Parties appeared to take with each other and, at times, with the witness. See, e.g., Arnold Dep. at 106:20–107:13, 211:17–213:6, 230:3-231:1, 333:12–337:4. The Court CAUTIONS the Parties that it will not look favorably upon counsel engaging in similar conduct in the future. In this regard, the Court reminds counsel that “[d]iscovery is intended to operate with minimal judicial supervision and should be practiced with a spirit of cooperation and civility[,]” that “parties and their attorneys” have a duty “to adequately confer and to otherwise cooperate during discovery[,]” and that the Court may sanction those who do not fulfill this responsibility. See Arrowpac Inc. v. Sea Star Line, LLC, No. 3:12-CV-1180-J-32JBT, 2014 WL 12618688, at *2 (M.D. Fla. Aug. 22, 2014) (internal quotation marks omitted) (quoting S.L. Sakansky & Assocs., Inc. v. Allied Am. Adjusting Co. of Fla., LLC., No. 3:05-cv-708-J-32MCR, 2007 WL 2010860, at *1 (M.D. Fla. July 6, 2007)). The Court admonishes counsel to conduct themselves with the professionalism befitting their status as of officers of this Court.

*26 The Court GRANTS Marriott's “Motions for Leave to File Materials Under Seal” [Docs. 382, 392] and Delta's “Motion to File Materials Under Seal.” [Doc. 388]. The Court DIRECTS the Clerk to PERMANENTLY SEAL docket entries 381, 381-1, 381-2, 381-3, 381-4, 387, 387-3, 387-4, 387-6, 387-7, 387-8, 387-11, 387-12, 391, 391-1, and 391-2. Because they are already publicly available elsewhere on the docket and not the subject of Delta's “Motion to File Materials Under Seal,” the Court DIRECTS the Clerk to UNSEAL docket entries 387-1, 387-2, 387-5, 387-9, 387-10, 387-13, 387-14, and 387-15. To the extent Delta files motions to seal in the future, the Court ORDERS it to file provisionally under seal only those materials it is requesting be permanently sealed.

Finally, if the Parties wish to keep portions of this order or the Court's December 22, 2021 Order [Doc. 295] under seal, the Court ORDERS them to make the filings described supra in part V.

SO ORDERED, this 6th day of June, 2023.

Footnotes

[1]

For additional factual and procedural background, the Court refers to its Orders dated June 25, 2021, and November 8, 2022. [See Docs. 248, 343].

[2]

All pinpoint citations to record materials herein, with the exception of those to depositions, refer to the blue page numbers created by the Court's CM/ECF system. Pinpoint citations to depositions refer to the pagination in the original deposition transcript.

[3]

Delta refers to this document as the “Hong Kong Agreement” (see, e.g., Am. Compl. ¶ 43) and Marriott refers to it as the “Worldwide Coexistence Agreement.” See, e.g., Marriott's Answer at 9 [Doc. 33]. The Court herein uses the title that is reflected on the face of the document. [See Doc. 33-1 at 2]. Additionally, the Parties hotly dispute the meaning of the Agreement. See Am. Compl. ¶¶ 84–91; Marriott's Answer at 33–35. The Court takes no position regarding the meaning of the Agreement herein.

[4]

Neither Party filed Ms. Moran's full deposition in connection with the motions resolved by this order. Various excerpts of Ms. Moran's deposition can be found at docket entries 381-3 and 387-6.

[5]

Prior to the registration of trademark, “each good or service in a trademark application must be classified in its appropriate class.” See U.S. Patent & Trademark Off., Nice Agreement current edition version - general remarks, class headings and explanatory notes, https://www.uspto.gov/trademarks/trademark-updates-and-announcements/nice-agreement-current-edition-... (last visited June 5, 2023).

[6]

“DHLP or its predecessor ... operated a Delta Hotel in Hong Kong” at some point before 2015 and “may have previously operated a hotel called Delta Court of Flags in Orlando for a brief period of time in the 1990s, but that hotel was subsequently closed and demolished in or around 1996.” See Am. Compl. ¶ 20.

[7]

Hereinafter, the Court uses “Marriott” generically to refer to both Defendant and Counterclaim Plaintiff Marriott International, Inc. and Counterclaim Plaintiff Marriott Worldwide Corp. The latter Marriott entity is a wholly owned subsidiary of the former. See Marriott's Answer at 4 n.1, 29 ¶ 10 n.2.

[8]

“To the extent it would aid the Court, Marriott respectfully requests oral argument on its motion” to compel. [See Doc. 381 at 25]. The Court finds that oral argument would not be helpful to it and denies Marriott's request for the same. See LR 7.1(E), NDGa. (prescribing that “[m]otions will [generally] be decided by the Court without oral hearing”); [Doc. 63 at 8] (“In accordance with the Court's Local Rules, motions are usually decided without oral argument, but the Court will consider any request for hearing if the party ... requesting oral argument specif[ies] the particular reasons argument may be helpful to the Court and what issues will be the focus of the proposed argument.” (emphasis added)).

[9]

Marriott collectively describes these three (3) logos as the “Updated Logo” [see Doc. 348 at 2], however the Court refers to them as the plural “Updated Logos” for the sake of clarity.

[10]

The Court notes that Delta also claims to have “already satisfied its discovery obligations” regarding Marriott's demand for pre-2014 documents. [See Doc. 333 at 19].

[11]

Because this is a federal question case, the federal common law of privilege governs rather than privilege law of any particular state. See FED. R. EVID. 501; State Farm Mut. Auto. Ins. Co. v. Kugler, 840 F. Supp. 2d 1323, 1329 (S.D. Fla. 2011) (“only [the] federal law of privilege will apply in a federal question case even if it contains pendent state law claims”); see also Am. Compl. ¶ 8. “Federal law [always] governs the work product” protection regardless of the basis of the court's jurisdiction. See Diamond Resorts, 519 F. Supp. 3d at 1197.

[12]

Though the text of Rule 26(b)(3)(A)—which codifies the work product protection—refers to “documents and tangible things,” at least some courts have applied it to deposition questions. See Lyew v. Homebanc Mortg. Corp., No. 06-61045-CIV, 2006 WL 8462692, at *1 (S.D. Fla. Dec. 20, 2006); Phoenix Nat'l Corp. v. Bowater U.K. Paper Ltd., 98 F.R.D. 669, 671 (N.D. Ga. 1983).

[13]

Marriott's motion to compel discusses three (3) categories of questions Delta allegedly improperly instructed Mr. Arnold not to answer. [See Doc. 381 at 13–16]. However, Marriott only provides examples of questions it asserts fall within each category. [See id.] And nowhere in its briefing or any of the exhibits attached thereto does Marriott comprehensively group or categorize all of the questions that elicited the responses and objections it challenges. [See generally Docs. 381, 381-1, 391]. The Court has accordingly grouped together those questions that, in its view, touch on similar issues or themes.

[14]

Marriott sets forth each of the sixty (60) questions it challenges by its present motion in a chart filed under seal at docket entry 381-1. In the remainder of this order, the Court uses Marriott's numbering of questions for ease of reference.

[15]

The transcript of Mr. Arnold's deposition contains certain formatting inconsistencies. Block quotations herein have largely reproduced the formatting used in the transcript with any alterations thereto indicated with brackets or ellipses.

[16]

Wilkinson & Grist was the outside law firm Delta retained to assist it with negotiating the Agreement. See Arnold Dep. at 25:11–26:6, 46:11–47:4

[17]

The Court recognizes that Delta may have communicated its intent to oppose Delta Hotels' Hong Kong trademark registrations before January 20, 2014, and that such communications might trigger an anticipation of litigation. [See Doc. 387-3 at 3] (referencing a November 13, 2013 letter from Delta to Delta Hotels). However, Delta has not placed these communications in the record and therefore has failed to show the basis for any asserted work product protection predating January 20, 2014. See Diamond Resorts U.S. Collection Dev, 519 F. Supp. 3d at 1200 (“the proponent of the work product [protection], ... bears the burden of establishing it by a preponderance of the evidence”).

[18]

The Court recognizes that the Southeast Property Holdings opinion considered Florida, not federal, law. See SE Prop. Holdings, 2015 WL 12868077, at *2. The Court nonetheless finds the reasoning of that opinion to be persuasive.

[19]

The Court recognizes that the IMC Chemicals opinion considered Kansas, and not federal, law. See IMC Chemicals, 2000 WL 1466495, at *12. The Court nonetheless finds the reasoning of that opinion to be persuasive.

[20]

Paragraph E says “in Hong Kong and PRC[.]” [See Doc. 33-1 at 4]. However, “PRC” is an abbreviation for the People's Republic of China, and is thus functionally interchangeable with “China.” See Arnold Dep. at 225:14–17.

[21]

Because the Court finds that information responsive to questions 36–37 and 41–42 is work product protected, the Court does not consider whether that information is covered by the attorney-client privilege.

[22]

Decisions by the former Fifth Circuit issued before October 1, 1981, are binding as precedent in the Eleventh Circuit. See Bonner v. City of Prichard, 661 F.2d 1206, 1207 (11th Cir. 1981) (en banc).

[23]

Because the Court finds that information responsive to questions 45 and 50 is attorney-client privileged, the Court does not consider whether that information is covered by the work product protection.

[24]

As noted above, one of the central disputes in this case is whether the Agreement requires Delta to consent to the use of certain marks worldwide or only in Hong Kong and China. See Am. Compl. ¶¶ 85–90.