United States District Court, S.D. Florida
B&D NUTRITIONAL INGREDIENTS, INC., a California corporation, Plaintiff,
UNIQUE BIO INGREDIENTS, LLC, d/b/a UNIQUE BIOTECH USA, a Florida limited liability company, JAIRO ESCOBAR, an individual, LUIS ECHEVERRIA, an individual, RATNA SUDHA MADEMPUDI, an individual, and UNIQUE BIOTECH LIMITED, an Indian corporation, Defendants.
S. SELTZER United States Magistrate Judge.
CAUSE has come before the Court pursuant to [DE 166]
Defendants' Expedited Motion to Compel the Production of
B & D Rule 26 Disclosures. Defendants move for an order
compelling Plaintiff, B & D Nutritional Ingredients, Inc.
(“B & D”), to produce the customer lists
referenced in B & D's Rule 26 disclosures. B & D
asserts that its customer list is a confidential trade secret
that must be protected.
D acknowledges that its customer list is relevant to the
issues in this litigation over alleged trade secrets and
tortious interference with a business relationship, but asks
the Court to conduct an in camera inspection of both
parties' customer lists in order to identify those
customers that Plaintiff and Defendants hold in common and to
redact the information pertaining to all other customers.
Plaintiff also objects to producing the customer list when
Defendants have not yet produced a “single
document” in discovery.
is correct that “under Florida law, customer lists and
related information may constitute protectable trade
secrets.” Echostar Satellite, LLC v. Viewtech,
Inc., 2010 WL 2822109, at * 6 (S.D. Fla. Jul. 16, 2010)
(Simonton, M.J.) (emphasis in original). A customer list may
be a trade secret where the evidence shows that it was the
product of great expense and effort, that the information
contained is private and not available from public sources,
and that the owner of the list has taken reasonable efforts
to maintain its secrecy. See East v. Aqua Gaming,
Inc., 805 So.2d 932, 934 (Fla. Dist. Ct. App. 2001);
Merrill Lynch, Pierce, Fenner & Smith, Inc. v.
Silcox, 2001 WL 1200656, at *4 (S.D. Fla. Oct. 4, 2001).
Although Plaintiff has not presented evidence that its
customer list is a trade secret, the Court will adopt that
conclusion for purposes of this motion.
secrets such as customer lists may subject to production
where they are relevant, but the court must take measures to
protect the interests of the owner. Echostar, 2010
WL 2822109, at * 7. In this case, after Defendants filed
their motion to compel production of Plaintiff's customer
list, the Court ordered the parties to submit a proposed
joint confidentiality order [DE 167]. A Confidentiality Order
[DE 170] was entered and governs all parties in this case.
The Confidentiality Order contains an “attorney's
eyes only” provision that restricts disclosure to the
attorneys in the case and prevents disclosure to the parties
and their princpals and employees.
Court finds that the Confidentiality Order provides the
necessary amount of protection to Plaintiff's customer
list, while allowing for the necessary disclosure of
information relevant to the issues in this litigation.
See, e.g., CruiseCompete, LLC v.
Smolinski & Assocs., Inc., 2012 WL 12888578, at *2
(S.D. Fla. Oct. 1, 2012) (Hopkins, M.J.) (customer list
produced by party would be adequately protected by a
protective order limiting access to those attorneys who have
appeared in the Iowa action and expert witnesses who agree to
be bound by the protective order). Having designated its
customer list as confidential and a trade secret, Plaintiff
has the option under the Confidentiality Order to limit
viewing of the customer list to “attorney's eyes
only.” Assuming Plaintiff claims the protections of the
Confidentiality Order, counsel for the parties can endeavor
to jointly narrow the list to those customers that are
relevant to the issues in this case, and redact from the list
those customers that are not relevant.
argues that it should not be required to produce its customer
list when Defendants have to date not produced a
“single document” in response to Plaintiff's
discovery requests. The Court notes that Defendants have been
ordered to produce all unobjected-to documents no later than
May 26, 2017 [DE 179]. The same deadline shall apply to
Plaintiff. Both parties shall file with the Court a Notice of
Compliance with this Order and with the Court's May 19,
2017 Order [DE 179].
requests an award of attorney's fees incurred in the
making of its motion and notes the Court's cautionary
language regarding its duty to impose sanctions under
Fed.R.Civ.P. 37. However, the Court finds that sanctions are
not appropriate in this case as Plaintiff's trade secret
assertion was substantially justified, making an award of
sanctions in this instance unjust. Therefore, it is hereby
AND ADJUDGED that Defendants' Expedited Motion to Compel
the Production of B & D Rule 26 Disclosures [DE 166] is
GRANTED in part. Plaintiff shall produce the customer list
referenced in its Rule 26 disclosure by May 26, 2017, subject
to the Confidentiality Order [DE 170]. Upon production of
documents both parties shall file with the Court a Notice of