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`No. 10 Misc. 15
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`Memorandum Opinion & Order
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`BSN MEDICAL, INC.,
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`Plaintiff,
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`-against-
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`PARKER MEDICAL ASSOCIATES,
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`LLC and A. BRUCE PARKER,
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`Defendants.
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`JOHN F. KEENAN, United States District Judge Sitting in Part I:
`I.
`Background
`Plaintiff BSN Medical, Inc. (“BSN”) designs, manufactures,
`and sells medical supplies. Defendant Bruce Parker is the
`general partner and President of Parker Medical Associates
`(“Parker Medical”). BSN alleges that in the 1980’s, Bruce
`Parker developed a synthetic splinting product called Ortho-
`Glass; in 1996, he sold all of the Ortho-Glass business,
`including the patents and other intellectual property, to BSN.
`However, in 2006, Parker allegedly began manufacturing a
`splinting product called EZY Splint (or Parker Splint) using the
`Ortho-Glass trade secrets and technology he previously sold to
`BSN. Parker Medical’s EZY Splint product directly competes with
`BSN’s Ortho-Glass product. The underlying complaint, currently
`pending in the Western District of North Carolina, asserts
`claims for, inter alia, copyright infringement, misappropriation
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`1
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 2 of 11
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`of trade secrets, and Lanham Act false advertising/unfair
`competition.
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`Movant Mesco Medical LLC (“Mesco”) is a medical device and
`equipment wholesaler located in Randolph, New Jersey. Mesco
`purchases EZY Splint products from Parker Medical and resells
`them to end customers including hospitals and orthopedic
`doctor’s offices. Mesco, which sells the EZY Splint product,
`and BSN, which sells Ortho-Glass, are alleged to be competitors
`in the Northern and Central New Jersey medical supply market.
`On November 22, 2010, BSN attempted to serve a subpoena issued
`from the District of New Jersey on Mesco seeking documents
`regarding the identity of customers who purchased EZY Splint
`and/or Parker Splint products from Mesco. Mesco objected to the
`New Jersey subpoena on procedural grounds. On December 3, 2010
`BSN issued another subpoena out of the Southern District of New
`York seeking:
`1.
`Any and all documents (including those created and/or
`stored electronically) that comprise, refer, or relate to
`any communication between Mesco and Parker Medical
`Associates, LLC or any representative of Parker Medical
`Associates, LLC from January 1, 2006 to the present.
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`2.
`Any and all documents (including those created and/or
`stored electronically) that comprise, refer, or relate to
`any communication between Mesco and Bruce Parker from
`January 1, 2006 to the present.
`3.
`Any and all documents (including those created and/or
`stored electronically) that comprise, refer, or relate to
`any communication between Mesco and Parker, Poe, Adams, and
`Bernstein, LLP from January 1, 2009 to the present.
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`2
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 3 of 11
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`Any and all documents (including those created and/or
`4.
`stored electronically) that comprise, refer, or relate to
`any communication between any attorney acting on Mesco’s
`behalf and Parker, Poe, Adams, and Bernstein, LLP from
`January 1, 2009 to the present.
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`5.
`Except for those documents created or received by
`Mesco in its capacity as a distributor for BSN Medical,
`Inc., produce all documents (including those created and/or
`stored electronically) that comprise, refer, or relate to
`any communication that references, refers, or relates to
`BSN Medical, Inc., Ortho-Glass, or any variant thereof.
`6.
`Documents sufficient to show Mesco’s monthly sales, by
`customer, of any product manufactured by Parker Medical
`Associates, LLC, including products sold under brand names
`EZY Splint and/or Parker Splint, from January 1, 2007 to
`the present.
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`See Subpoena Dated Dec. 3, 2010, Duffy Cert., Ex. D. On
`December 17, 2010, Mesco moved in Part I to quash the subpoena
`issued by BSN. The parties appeared before this Court on
`January 18, 2011.
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`Analysis
`II.
`Generally, parties may seek discovery of “any nonprivileged
`matter that is relevant to any party’s claim or defense.” Fed.
`R. Civ. P. 26(b)(1). Although the Rules provide for broad
`discovery, “[t]o protect a person subject to or affected by a
`subpoena, the issuing court may, on motion, quash or modify the
`subpoena if it requires disclosing a trade secret or other
`confidential research, development, or commercial information.”
`Fed. R. Civ. P. 45(c)(3)(B)(i). Rule 45 should be read in
`conjunction with the limitations of discovery found in Rules 26
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 4 of 11
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`and 34 of the Federal Rules of Civil Procedure. See Atwell v.
`City of New York, No. 07 Civ. 2365, 2008 WL 5336690, at *1
`(S.D.N.Y. Dec. 15, 2008). Thus, in determining the bounds of
`discovery, the court must balance the burden of production
`against the need for the requested documents. Fed. R. Civ. P.
`26(b)(2)(C)(iii); see Fears v. Wilhelmina Model Agency, Inc.,
`No. 02 Civ. 4911, 2004 WL 719185, at *1 (S.D.N.Y. Apr. 1, 2004)
`(“[W]here, as here, discovery is sought from a non party, the
`Court should be particularly sensitive to weighing the probative
`value of the information sought against the burden of production
`on the non party.”). To achieve this balance, the court may
`specify conditions for discovery, including “limiting the scope
`of disclosure or discovery to certain matters” and “requiring
`that a trade secret or other confidential research, development,
`or commercial information not be revealed or be revealed only in
`a specified way.” Fed. R. Civ. P. 26(c)(1)(D), (G).
`A.
`Request # 6
`Mesco contends that in order to respond to Request # 6, it
`would have to disclose its proprietary customer lists to a
`direct competitor. In determining whether information
`constitutes a trade secret, New York and North Carolina courts
`consider the following Restatement factors:
`(1) the extent to which the information is known
`outside of the business; (2) the extent to which it is
`known by employees and others involved in the
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 5 of 11
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`business; (3) the extent of measures taken by the
`business to guard the secrecy of the information; (4)
`the value of the information to the business and its
`competitors; (5) the amount of effort or money
`expended by the business in developing the
`information; (6) the ease or difficulty with which the
`information could be properly acquired or duplicated
`by others.
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`N. Atl. Instruments, Inc. v. Haber, 188 F.3d 38, 44 (2d Cir.
`1999) (quoting Restatement of Torts § 757 cmt. b); Combs &
`Assocs., Inc. v. Kennedy, 555 S.E.2d 634, 640 (N.C. Ct. App.
`2001).
`There does not appear to be a strong dispute that the
`customer lists are trade secrets. Mesco submitted the
`uncontested certification of its president, Mark Stephens, who
`states that:
`Mesco’s customer lists and sales data are not
`information known outside of Mesco’s business and
`constitute highly confidential information that
`is not made generally available. Indeed, total
`sales information is not made available to most
`of Mesco’s own employees. It would involve a
`great deal of time and expense for another
`company to duplicate this information on its own.
`This information is highly confidential and
`represents a great asset which, if obtained by
`BSN, a direct competitor of Mesco, would have
`disastrous consequences to Mesco’s business.
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`Stephens Cert. at ¶¶ 9-11. Other courts have recognized
`customer lists as trade secrets. See, e.g., N. Atl.
`Instruments, 188 F.3d at 46; Webcraft Techs., Inc. v. McCaw, 674
`F. Supp. 1039, 1046 (S.D.N.Y. 1987) (protecting as a trade
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 6 of 11
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`secret a customer list that reflected “development of a
`specialized knowledge of the customer’s operations and needs”).
`However, BSN submitted the certification of Prof. J.C.
`Poindexter, its damages expert in the underlying action, who
`explains that that the only way to accurately calculate the
`amount of sales BSN has lost to Parker Medical is to track
`individual customers’ purchasing history. BSN can refer to its
`own records to determine how much its Ortho-Glass sales have
`dropped, but it cannot with any degree of certainty attribute
`those losses to Parker Medical, especially in light of the fact
`that there are more than two splinting product manufacturers in
`the market. But, if BSN can show that Customer 1 had a history
`of buying Ortho-Glass and then switched to EZY Splint, then it
`can establish a direct link between BSN’s lost profits and
`Parker Medical’s allegedly unfair trade practices. See Finlon
`Cert., Ex. B, Poindexter Cert. at ¶¶ 4-5. Thus, the identity of
`Mesco’s customers is directly relevant to BSN’s damages claim
`against Parker Medical, and is essential for Prof. Poindexter to
`do the kind of detailed tracking required to prove that BSN’s
`damages were caused by Parker Medical as opposed to adverse
`market conditions or the actions of another splinting product
`manufacturer.
`Even if Mesco’s customer lists constitute trade secrets,
`the Court can impose sufficient protections to allay Mesco’s
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 7 of 11
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`concerns about disclosing sensitive information to a competitor.
`BSN has proposed entry of a protective order limiting access to
`the customer list to BSN’s attorneys and experts only, with no
`access granted to any BSN employee. This proposal is even more
`restrictive than the protective order currently in place between
`the parties in the North Carolina action, which provides for
`“super confidential” designation of “highly sensitive
`information of any party that could cause serious competitive
`harm or other serious harm if such information is disclosed to
`any other person.” See Protective Order, Finlon Cert., Ex. F.
`Documents designated “super confidential” in the North Carolina
`action can only be disclosed to attorneys, experts, and a single
`designated representative of each party.1 BSN’s willingness to
`forego access to Mesco’s confidential information by any of its
`own representatives demonstrates that the document requests are
`made in good faith. There is no allegation that BSN has ever
`engaged in anticompetitive conduct towards Mesco or any other
`splinting product manufacturer. Finally, BSN has offered to
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`1 At oral argument, Mesco contended that a protective order gives
`cold comfort because BSN violated the North Carolina protective
`order by attaching confidential documents it provided to BSN to
`motion papers filed in opposition to the instant application.
`BSN acknowledged the disclosure, but explained that the filing
`was inadvertent, and counsel is taking steps to remove the
`confidential material from the public docket. The Court credits
`counsel’s representation that such a mistake will not be
`repeated and presumes that all parties will abide by the highly
`restrictive protective order endorsed herein.
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 8 of 11
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`reimburse Mesco for reasonable costs associated with responding
`to the subpoena, offsetting any burden imposed on Mesco. Since
`BSN has no other reasonable way to accurately ascertain its
`damages, since the information sought is directly relevant to
`BSN’s damages claim, and since the Court can fashion protective
`measures such that BSN does not have access to Mesco’s trade
`secrets, the motion to quash with respect to Request # 6 of the
`December 3, 2010 subpoena is denied.
`B.
`Requests # 1, 2, and 5
`In the underlying North Carolina action, BSN alleges that
`Parker Medical and Bruce Parker himself made false statements to
`customers about its EZY Splint product. BSN further argues that
`Mesco’s president Mark Stephens has made statements to the
`effect that EZY Splint is the same as or is “the original”
`Ortho-Glass. Thus, BSN seeks the documents specified in Request
`# 1, 2, and 5 to determine whether Parker Medical and/or Bruce
`Parker told Mesco to make these statements. Mesco objects that
`the Requests are so broad that they seek information irrelevant
`to the claims in the North Carolina action.
`BSN’s stated intention is to reach documents concerning
`their claims in the North Carolina action, but the requests as
`worded include any documents, whether business or personal,
`having anything to do with the relationship between Parker
`Medical and Mesco. There are no facts presented about Mesco’s
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 9 of 11
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`interactions with Parker Medical, but if, for example, the two
`entities have an extensive business relationship involving
`products other than EZY Splint, these requests would call for
`documents irrelevant to the question of whether Bruce Parker or
`Parker Medical directed Mesco to make false representations
`about the EZY Splint product. Request # 5 is similarly
`overbroad. It does not specify any time frame for the requested
`documents; as Ortho-Glass has been on the market for a
`significant period of time, the request as it is currently
`phrased could potentially cover a decade’s worth of documents.
`Furthermore, Request # 5 as written could reach internal sales
`strategies at Mesco and independent assessments of BSN’s product
`which have nothing to do with Parker Medical.
`However, if Requests # 1, 2, and 5 are restricted to the
`subject matter of the underlying North Carolina action, and if
`Request # 5 is revised to include a date range, the documents
`requested could be relevant to BSN’s false advertising claims
`against Parker Medical. Again, BSN has offered to reimburse
`Mesco’s reasonable costs to offset any burden. Finally, to the
`extent these requests seek trade secrets, the protective order
`will prevent their disclosure. Therefore, the motion to quash
`with respect to Requests 1, 2, and 5 is denied subject to BSN
`limiting the scope of the requests as indicated.
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 10 of 11
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`Requests # 3 and 4
`C.
`BSN alleges that defense counsel in the underlying North
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`Carolina action, Parker, Poe, Adams, and Bernstein, assisted
`various third parties in responding to BSN’s subpoenas. BSN
`seeks documents specified in Requests # 3 and 4 to determine if
`Parker Medical’s counsel was in any way involved with Mesco’s
`response to the November or December 2010 subpoenas. Mesco
`objects on relevance grounds.
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` These requests are also broadly worded. If, for example,
`Parker, Poe, Adams, and Bernstein represents Mesco in other
`legal matters, the requests as they stand would call for
`irrelevant and privileged documents. However, Mesco has
`independent counsel in this Part I matter, and if documents do
`exist indicating non-privileged communications between Parker
`Medical’s defense counsel in the underlying action and the third
`party distributor, that would certainly be impeachment evidence
`that is relevant to BSN’s claims against Parker Medical. Again,
`BSN has offered to reimburse Mesco’s reasonable expenses in
`responding to the subpoena, and the protective order would
`prevent disclosure of any trade secrets. Therefore, the motion
`to quash with respect to Requests # 3 and 4 of the December 3,
`2010 subpoena is denied subject to BSN narrowing the requests to
`documents relating to the underlying North Carolina action.
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`Case 1:10-mc-00015-P1 Document 18 Filed 01/19/11 Page 11 of 11
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`III.
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`Conclusion
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`Mesco's motion to quash is denied subject to the fol
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`conditions:
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`(I) BSN cont
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`to ensure that confidential
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`documents i
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`ently fil
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`conjunction with this Part I
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`motion be removed from the
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`docket;
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`(2) BSN execute a
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`ective order limiting access to the customer informat
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`provided by Mesco to attorneys'
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`expert's
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`s only, wi
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`no
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`access to any BSN
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`oyeei
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`(3) BSN revise
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`sts Nos. 1-6 so
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`that they are 1
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`t
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`in scope to the subject matter of the
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`rlying North Carolina lawsuit; and (4) BSN reimburse Mesco
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`reasonable costs incurred
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`complying wi
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`December 3,
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`2010 subpoena.
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`SO ORDERED.
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`Dat
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`New York, New York
`January 19, 2011
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