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November 3, 2020

Lit Alerts—November 2020

A Publication of the Litigation Practice Group

Privilege: District Court Rules Federal Rule of Evidence 502(d) Cannot Be Used To Compel Production of Potentially Privileged Documents Prior To Privilege Review

In Equal Employment Opportunity Commission v. George Washington University, the US District Court for the District of Columbia held that Federal Rule of Evidence 502(d) orders cannot be used to force a responding party to produce potentially privileged documents without the opportunity to first review them.

The US Equal Employment Opportunity Commission (EEOC) filed a discrimination lawsuit against The George Washington University, on behalf of Sara Williams, a former executive assistant to the university's athletic director. The EEOC alleged Williams was treated less favorably than a male comparator by being paid less for equal work and denied employment opportunities and advancement. A discovery dispute arose from four EEOC requests for production of documents served on the university—three seeking thousands of emails from work accounts of the university's former athletic director and his two assistants and a fourth seeking information related to workplace complaints against the former athletic director.

The university argued the requests were overbroad, unduly burdensome, and would impose costs that were not proportional to the needs of the case. In response, the EEOC proposed a "less rigorous procedure by which [counsel for the university] or its e-discovery vendor would 'use filtering and targeted searches' . . . to segregate protected material; attorneys would then review those documents to confirm that they contain protected information; redact such information, and create a privilege log." The EEOC further proposed that the remaining emails, which did not hit on search terms, would be produced without document-by-document privilege review by the university. The university would then be permitted to use the claw back provisions of Federal Rule of Evidence 502 to claw back any privileged documents produced in this process. In response to the university's argument that the procedure proposed by the EEOC would likely result in both privileged documents being produced and non-privileged material being withheld, the EEOC argued that Rule 502(d) was drafted for cases like this one, "so that document-by-document pre-production privilege review does not have to be performed, and will not be cost prohibitive." In addition, the EEOC urged the court to enter an FRE 502(d) order that the university would not waive privilege for documents produced pursuant to this procedure, even if the university did not agree to the entry of the order.

Ultimately, the court denied the EEOC's motion to compel a full response to the discovery requests and narrowed the scope of the requests. As the court noted, "courts are 'not normally in the business of dictating to parties the process they should use when responding to discovery,' including 'the manner in which [they] should review documents ... for privilege' and 'whether [that] document review should be done by humans or with the assistance of computers.'" Rather, as The Sedona Principles recognize, a responding party is generally best suited to determine how it reviews and produces documents. Thus, the court found it would be inappropriate to order the university to produce the emails pursuant to the EEOC's proposed procedure, and that doing so would potentially compel the production of privileged information, constituting "an abuse of discretion."

Intellectual Property: District Court Denies Cross-Motions for Summary Judgment in INHALE Trademark Dispute

Inhale, Inc. is a California company that manufactures and sells tobacco and tobacco-related products under its federally registered INHALE marks. Inhale LLC, an unrelated company, operates a marijuana retail business in Eugene, Oregon. While LLC does not sell marijuana products under its own name, it does sell apparel and stickers bearing the phrase "Inhale Dispensary," depicted next to a green marijuana leaf. Concerned that this use would generate consumer confusion, late last year, Inc. sued LLC in district court in Oregon for trademark infringement, false designation of origin, unfair competition, and counterfeiting. In October, the district court denied Inc.'s motion for partial summary judgment with respect to liability, and denied LLC's cross-motion for summary judgment on all claims.

The court explained that each of the infringement, false designation, and unfair competition claims turned on whether LLC's use of "Inhale" was likely to cause consumer confusion, deception, or mistake. This is a "fact-specific, multi-factor" inquiry for which summary judgment is disfavored, and the district court ruled that neither party had presented sufficient evidence to support its request for summary judgment on these claims.

Following Ninth Circuit precedent, the district court analyzed the likelihood of confusion by reference to eight Sleekcraft factors, including the strength of the marks at issue, the similarity of the goods, and evidence of actual confusion. The district court explained that neither party had presented sufficient evidence to demonstrate that even one of the Sleekcraft factors clearly favored one side or the other. To the court, the claims called out for "at least further discovery, if not resolution at trial."

The parties' motions fared no better with respect to Inc.'s counterfeiting claim. To demonstrate counterfeiting, a party must prove that the defendant used a non-genuine mark that is identical to or substantially indistinguishable from its own registered mark, in connection with the same category of goods for which the mark is registered. Whether marks are substantially indistinguishable is a question of fact. Here, the court ruled that while "the marks are similar in the general sense," a "reasonable jury . . . could go either way on the question."

In several instances, the district court's order appears to indicate dissatisfaction with the evidence and argument presented by the parties. It might therefore serve as a reminder to trademark litigants of the importance of building an adequate evidentiary record prior to filing for summary judgment, given the highly fact-specific nature of many trademark disputes.

© Arnold & Porter Kaye Scholer LLP 2020 All Rights Reserved. This newsletter is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.