*1 Currently pending before the Special Master is defendants' Intellisphere LLC, et al. (“Defendants”) application to overrule the objections of plaintiffs' Engage Healthcare Communications LLC, et al. (“Plaintiffs”) to Defendants' unilateral redaction of certain documents responsive to Plaintiffs' document requests. This application, filed with leave from the Special Master, relates to 240 documents of the approximately 4,300 documents produced by Defendants, along with certain attachments thereto, which were also redacted.

Defendants' redaction of documents was first raised by Plaintiffs' counsel at the October 18, 2016 conference with the Special Master. Defendants' basis for the redactions is that they are direct competitors of Plaintiffs, the information redacted is irrelevant to the litigation between the parties, and much of that irrelevant information is highly sensitive and proprietary data. At that time, the Special Master ordered Defendants to provide Plaintiffs with a redaction log containing the generalized bases upon which documents were redacted in an effort to help narrow the dispute. (Transcript of the October 18, 2016 hearing before the Special Master (“Tr.”), 61:6–12).[1] Unfortunately, the redaction log did not foster the desired result. After Defendants' counsel produced the redaction log, Plaintiffs' counsel contended by letter dated February 9, 2017, inter alia, that the log was too vague and that case law generally disfavored unilateral redactions and requested that issue be briefed for the Special Master's consideration.

Subsequently, a briefing schedule was established, and on February 20, 2017, Defendants filed a letter brief (“Defendants' Mov'g Brf.”) requesting that the Special Master rule that they need not unredact information that is plainly irrelevant to the case, especially because much of the irrelevant information is highly sensitive and proprietary to Defendants' respective businesses. Defendants are particularly concerned about producing this information because, even if it was to be marked as “Attorneys' Eyes Only” per the Discovery Confidentiality Order (“DCO”) in place, it would still potentially damage Defendants because Plaintiffs' counsel represents Plaintiffs in multiple capacities outside of this litigation, and whether intentionally or inadvertently, the irrelevant but sensitive information in this case may be used to Defendants' detriment.

Plaintiffs, by contrast, contend that case law provides that parties are simply not permitted to redact otherwise discoverable documents. Further, Plaintiffs contend that simply because some of its current lawyers have represented Plaintiffs for many years in a number of capacities is not a sufficient ground upon which Defendants should be permitted to redact documents, especially given the existence of the DCO.

For the reasons set forth below, Defendants' application is DENIED; however, given the unique circumstances of this case, the parties are ordered to meet and confer to try and resolve disputes as to the redacted documents. For all documents upon which agreement cannot be reached, Plaintiffs' may designate them for an in camera review by the Special Master.

A. Discovery Proportionality

*2 As a threshold matter, the parties raise the issue of discovery proportionality. Defendants claim that a “common sense” approach to discovery under the new Fed. R. Civ. P. 26 must be used, especially for discovery relating to trademarks and brands not at issue in this litigation. (See Defendants' Mov'g Brf., pp. 2–3). Plaintiffs contend that discovery proportionality relates to the scope of discovery in the case as a whole based on its complexity, the issues presented, etc., and does not apply at the “micro-level,” i.e. the production of portions of particular documents. (See Plaintiffs' February 27, 2017 letter (“Plaintiffs' Opp Brf”), pp. 1–4).

For purposes of the pending application, the real issue, insofar is discovery proportionality is concerned, is whether it enables a party to unilaterally redact irrelevant information contained in otherwise relevant documents sought by its adversary. Discovery proportionality, while certainly important, is not applicable to the issue of whether a party may unilaterally redact information sought by its adversary. Defendants' proportionality argument primarily relies upon Gilead Sciences, Inc. v. Merck & Co, Inc., 2016 U.S. Dist. LEXIS 5616 (N.D. Cal. Jan. 13, 2016).[2] As a threshold matter, Gilead emphasizes, as do Defendants' counsel, that “the discovery sought is proportional to the needs of the case.” Id. at *4; (Defendants' February 20, 2017 letter, pp. 2) (emphasis added).

Here, the issue is not so much what discovery Plaintiffs have sought, but rather what Defendants have produced. In other words, Defendants determined that certain documents were responsive to Plaintiffs' document request, but that the responsive documents also contained irrelevant (and competitively sensitive) information. No authority has been cited by either party for the proposition that a seemingly legitimate discovery request which results in a disproportionally large or irrelevant volume of documents, permits the producing party to unilaterally redact information on proportionality grounds.

Moreover, Gilead is readily distinguishable from the facts here. Gilead involved a patent infringement case relating to a particular chemical compound known as PSI–6130. Id. at *5. The discovery request at issue was held to be disproportionate because it did not relate to PSI–6130, but rather involved two other unrelated compounds known as PSI–0194 and PSI–1834. Id. at *6. Here, by contrast, all documents at issue contain some responsive relevant information. Furthermore, Defendants have already produced documents in response to Plaintiffs' requests. (See, e.g., Defendants' Mov'g Brf.”, Exh. A, Redaction Log of Defendants' Document Production). Thus, it is clear that at least part of each document produced relates to the issues in the litigation.

Notably, and unlike Gilead, Defendants did not initially refuse to respond to the discovery based on the disproportionality of the request. Defendants' proportionality concern should have arisen before Defendants' production in response to the document demands by the Plaintiffs, and asserted in the form of an objection to one or more of Plaintiffs' document demands. See Takacs v. Union County, 2009 WL 3048471, at *1 (D.N.J. Sept. 23, 2009) (“The purpose of this rule of proportionality is ‘to guard against redundant or disproportionate discovery by giving the court authority to reduce the amount of discovery that may be directed to matters that are otherwise proper subjects of inquiry’ ”); see also Fed. R. Civ. P. 34(b)(2)(B–C).

Accordingly, the fact that a document responsive to a discovery request contains both relevant and irrelevant information does not automatically mean that the discovery request was disproportionate to the needs of the case. Instead, Defendants seek to use proportionality to validate a production that they have already made with unilateral redactions. This is not a proportionality concept. The real dispute between the parties is whether it is permissible for the producing party to unilaterally redact irrelevant information contained in documents that are otherwise responsive to the requesting party's discovery request.

B. Unilateral Redactions

*3 The unilateral redaction of irrelevant information has been the subject of many recently decided cases. To date, however, the neither the Supreme Court nor the Third Circuit Court of Appeals has ruled on this issue, and thus there's no binding authority that controls in the District of New Jersey. Moreover, there is case law that says one can unilaterally redact, and there are cases that say that one cannot.

The leading case supporting the proposition that a party may unilaterally redact irrelevant information in an otherwise responsive document is Spano v. Boeing Co., 2008 WL 1774460 (S.D. Ill. Apr. 16, 2008). There the Court held that “the redaction of information on plans [not in dispute] was acceptable because that information is not relevant to the issues in this case and not reasonably calculated to lead to the discovery of admissible evidence.” Id. at *3. However, the majority of opinions supporting redaction of irrelevant information that have been cited by the parties, or located by the Special Master, often have a unique set of circumstances that place those cases in a different posture than this one. For instance, in In re Takata Airbag Prods. Liab. Litig., 2016 WL 1460143, at *1 (S.D. Fla. Mar. 1, 2016), the parties agreed to redact irrelevant information but disagreed on the procedure for doing so. In that case the Court largely adopted the special master's report and recommendation permitting redaction of irrelevant information from certain otherwise responsive documents because it contained competitively sensitive information that competitors could use to defendant's detriment. Id., at *2–3. Similarly, in In re Yasmin and Yaz (Drospirenone) Mktg., Sales Practices, & Prods. Liability Litig., 2010 WL 3780798, at *1–2 (S.D. Ill. Sept. 22, 2010), the parties agreed to a Case Management Order (“CMO”) about the producing party's ability to redact certain categories of information from its document production. Plaintiffs' then moved to modify the CMO. The Court granted the motion in part because some of the redactions complained of made “the production virtually unusable.” Id. at *3.

The common thread between Takata and Yasmin is they both involved prior agreements about what information could and could not be redacted by the producing party. Similarly, in Beauchem v. Rockford Products Corp., 2002 WL 1870050, at *2 (N.D. Ill. Aug. 13, 2002) the Court, after an in camera review of documents redacted by the defendants, found that “good cause exist[ed] to support redaction.” (Emphasis added). See also, Gates v. Rohm and Hass Company, 2007 WL 295416, at *1 (E.D. Pa. Jan. 29, 2007) (holding that after an in camera review that “the redactions are in all respects consistent with [defendant's] description of the redaction process it employed...and disclosure of the redacted material will not advance the preparation for or resolution of the” case). Because these cases involve either a pre-existing agreement among the parties or a decision by the Court after-the-fact, they do not support the proposition that a party always has the unilaterally redact portions of documents that it contends are irrelevant. Here, there is no pre-existing agreement among the parties, and the cases involving after-the-fact decisions are limited to the facts in those particular cases.

The majority of the cases cited by the parties, as well as those independently located by the Special Master, clearly state that unilateral redactions based on one party's subjective view of relevancy are improper.[3] See, e.g., Toyo Tires & Rubber Co., Ltd v. CIA Wheel Group, 2016 WL 6246384, at *2 (C.D. Cal. Feb. 23, 2016) (The Court agrees that the producing party “may not redact otherwise responsive documents because those documents contain irrelevant material”); Bonnell v. Carnival Corporation, 2014 WL 10979823, at *4 (S.D. Fla. Jan. 31, 2014) (holding that defendant “cannot unilaterally redact portions of otherwise discoverable, non-privileged documents based on its own belief that portions of the documents are irrelevant to the claims in this case”) (emphasis in the original); Melchior v. Hilite International, Inc. 2013 WL 2238754, at *3 (E.D. Mich. May 21, 2013) (holding a subpoenaed nonparty “cannot unilaterally redact portions of documents based on relevancy grounds”); Bartholomew v. Avalon Capital Group, Inc., 278 F.R.D. 441, 451 (D. Minn. 2011) (“Redaction is an inappropriate tool for excluding alleged irrelevant information from documents that are otherwise responsive to a discovery request. It is a rare document that contains only relevant information. And irrelevant information within a document that contains relevant information may be highly useful to providing context for the relevant information.”); Krausz Indus., Ltd. v. Romac Indus., Inc., 2011 WL 13100750, at *3 (W.D. Wash. Aug. 10, 2011) (“The Court is persuaded by cases that hold that unilateral redactions on the basis of irrelevance or non-responsiveness is improper”); Evon v. Law Offices of Sidney Mickell, 2010 WL 455476, at *4 n.1 (E.D. Cal. Feb. 3, 2010) (“Redaction is, after all, an alteration of potential evidence. The Federal Rules sanction only very limited unilateral redaction, see Fed. R. Civ. P. 5.2. Outside of these limited circumstances, a party should not take it upon ... itself to decide unilaterally what context is necessary for the non-redacted part disclosed, and what might be useless to the case”); ArcelorMittal Cleveland Inc. v. Jewell Coke Co., L.P., 2010 WL 5230862, at *3 (N.D. Ohio Dec. 16, 2010) (“The Court is not persuaded that [Defendant] is entitled to redact information in its document production that it believes is irrelevant or non-responsive to [Plaintiff's] document request. Indeed, the language of Rule 34 discusses production of ‘documents,’ rather than paragraphs or sentences. The Court sees no compelling reason [to permit Defendant to withhold information it thinks is] not relevant or responsive where that information appears in a document that contains otherwise relevant or responsive information.”); Orion Power Midwest, L.P. v. American Coal Sales Co., 2008 WL 4462301, at *1–2 (W.D. Pa. Sept. 30, 2008) (affirming a special master's reasoning “that redaction of documents is disfavored and is appropriate only in limited circumstances”...and finding that there is no express or implied support in the Federal Rules of Civil Procedure by “which a party would scrub responsive documents of non-responsive information.”); see also In re Medeva Securities Litigation, 1995 WL 943468, at *3 (C.D. Cal. May 30, 1995) (“The Court does not welcome unilateral editing of documents by the producing party. Even when implemented with restraint and in good faith, the practice frequently gives rise to suspicion that relevant material harmful to the producing party has been obscured. It also tends to make documents confusing or difficult to use”).

*4 Aside from the number of Courts that have rejected the position that a party has a unilateral right to redact information, the Special Master is satisfied that the underlying rationale in reaching those decisions is sound. Analysis of Fed. R. Civ. P. 34, which governs the production of documents between parties, is instructive. Nothing in that rule either expressly or impliedly authorizes a party to unilaterally redact documents. If anything, the Rule contemplates that a party cannot do so. For instance, the plain language of Fed. R. Civ. P. 34(a) permits a party to request that its adversary “produce and permit the requesting party ... to inspect [any responsive documents] in the responding party's possession custody or control[.]” (Emphasis added). In turn, “the responding party may state that it will produce copies of documents ... instead of permitting inspection.” Fed. R. Civ. P. 34(b)(2)(B). The language of the rule plainly intimates that the copy of the document produced would be identical to the document to be inspected. If portions of a document produced did not contain the same content as the document had it been inspected, then it would not be a true copy, and would defeat the purpose of an inspection. See Bonnell, 2014 WL 10979823, at *3 (finding “that Rule 34 requires documents to be produced in a form or forms in which they are ordinarily maintained”) (citing Orion Power Midwest, 2008 WL 4462301 at *2); Bartholomew, 278 F.R.D. at 451–52 (observing the Rule 34 concerns the production of documents, and not “particular pictures, graphics, paragraphs sentences, or words”).

The Special Master finds that Defendants' unilateral redaction of documents, although explicable given the unsettled status of the case law in this circuit, was nevertheless improper. This, however, does not end the analysis.

C. Confidentiality Concerns and Disclosure to Legal Counsel

This case, in particular, has involved a unique, if not extraordinary, number of discovery disputes because Plaintiffs and Defendants are archrivals in the medical publishing industry and because the principal of Plaintiffs and the principal of Defendants are brothers. To say that there is a level of mistrust between the parties in this case would be an understatement. As a result, when responsive documents have included non-relevant information that is both proprietary and highly sensitive, the Defendants were extremely reluctant to disclose that information because it could be detrimental to their business. (Defendants' March 7, 2017 letter, p.2). Thus, the Defendants redacted it. On the other hand, the Plaintiffs are suspicious that the redacted information could be the successful lynch pin to the case. (Tr., pp. 60:25–61:5.)[4] See Bonnell, 2014 WL 10979823, at *3 (“the unilateral editing of documents ‘frequently gives rise to suspicion that relevant material harmful to the producing party has been obscured’ ”) (quoting In Re Medeva Securities Litigation, 1995 WL 943468 at *3). Plaintiffs also claim that the Discovery Confidentiality Order (“DCO”) in place should assuage any of Defendants' concerns about disclosure. Defendants argue that Plaintiffs' counsel represents Plaintiffs on a variety of different matters, including those not involving litigation, and thus providing them with highly sensitive non-relevant information could be harmful notwithstanding a “Confidential” or “Attorneys' Eyes Only” designation.

The DCO is certainly a useful tool, especially when highly sensitive information that is germane to the litigation needs to be disclosed. However, given that the parties are direct competitors in the same industry, coupled with the familial relationship between the Plaintiffs and the Defendants, and because Plaintiffs' counsel represents Plaintiffs in numerous matters unrelated to this litigation, the Special Master is satisfied that the DCO does not require the Defendants to produce highly sensitive and proprietary data that is not relevant to any of the issues in the case.

*5 Because the Special Master concludes that the parties may not unilaterally redact irrelevant pieces of information from responsive documents, but at the same time are not required to turnover sensitive and proprietary information that is not relevant to the case to a competitor with familial ties and whose counsel also represents the competitor in multiple capacities, the appropriate course of action should be for the disclosing party to make an application to the Special Master regarding the documents at issue. See Bartholomew, 278 F.R.D. at 452 (holding that “a party seeking the power to unilaterally redact documents for relevance should request leave to redact those portions that the party contends are irrelevant”); Bonnell, 2014 WL 10979823 at *4, n. 6 (concluding that while a party may not unilaterally redact irrelevant information from responsive documents, such information may be redacted upon agreement of the parties or upon permission from the court).

To be clear, this Report and Recommendation is not an invitation to counsel in future cases to burden the Court with an application every time a party wishes to redact allegedly non-relevant information from a document. In the ordinary course, non-relevant information in an otherwise responsive document should be produced pursuant to Fed. R. Civ. P. 34. Moreover, non-relevant information that is propriety in nature that is contained in an otherwise responsive document should typically be produced pursuant to a DCO and designated as a “Confidential” or “Attorneys' Eyes Only” document, unless the particular circumstances of the case dictate otherwise. Only the presence of unique circumstances should necessitate the Court's involvement with non-relevant information. While it is not necessary at this juncture to define the point at which the parties should involve the Court or Special Master with non-relevant information, the Special Master is satisfied that this case warrants it.

Accordingly, Defendants' application to have the Special Master overrule the Plaintiffs' objections to documents that Defendants' counsel unilaterally redacted on relevance grounds is denied. However, given the special circumstances present here (namely that the parties are direct competitors in the medical publishing industry, the principals of the parties are brothers, Plaintiffs' counsel has represented Plaintiffs' for many years in both litigation and non-litigation matters, and the redacted documents at issue contain highly sensitive and proprietary data that is not relevant to the trademark issues in this case), the Special Master is treating Defendants' application as one for a protective order.

In the first instance, the parties are to meet and confer with respect to the 240 redacted documents at issue and the certain attachments thereto that were not produced.[5] The parties are to determine in good faith whether there are any documents upon which they cannot reach agreement. As Defendants have represented, and Plaintiffs have not disputed, “most of the redactions...occur in the context of hundreds-of-pages long Power Point presentations that address all aspects of Defendants' strategic planning...These presentations cover topics ranging from financial performance to employee evaluations and compensation, and most of their content is wholly irrelevant to any issue in this litigation.” (Defendants' March 7, 2017 letter, p. 2). Given that, the Special Master advises the parties to mindful of the following excerpt from Evon, supra:

*6 Evon, 2010 WL 455476, at *4 n.1 (emphasis in the original). Here, just as sanctions may be recommended for a party's bad-faith hiding of information, sanctions may also be recommended for a party's bad faith challenging of documents whose redacted information bears no logical relationship to the litigation at hand. See Order Appointing Special Master, dated August 11, 2016, at ¶ 7 (ECF No. 205).

For the reasons set forth above, Defendants' application to overrule the Plaintiffs' objections to Defendants' redaction of documents responsive to their document requests is DENIED. The parties shall meet and confer to resolve, to the extent possible, disputes as to the 240 redacted documents and any attachments. For all documents upon which agreement cannot be reached, Plaintiffs' may designate them for an in camera review by the Special Master. An appropriate order shall follow.