Paul Rudolph Foundation, Inc. v. Paul Rudolph Heritage Foundation

Background

Paul Rudolph Foundation, Inc. (PRF) produced 1,963 documents and its Second Supplemental Response and Objections to Defendants’ Interrogatory No. 4 with an “Attorneys’ Eyes Only” (AEO) designation. The designation limited disclosure to attorneys and certain other authorized recipients under the parties’ Protective Order. Paul Rudolph Heritage Foundation and Ernst Wagner asked the court to require PRF to change the designations or remove them from all of the materials.

The underlying lawsuit includes claims involving trademark infringement, willful copyright infringement, related common-law claims, and the status of certain images and intellectual-property rights. This order did not decide those underlying claims. It addressed only whether PRF properly used the AEO designation for the discovery materials.

Legal standard

The party seeking continued protection bears the burden of showing good cause for the restriction. Under the Protective Order, AEO treatment may apply to material whose public disclosure is restricted by law or would harm business, commercial, financial, or personal interests. Examples include previously undisclosed financial information and technical information or trade secrets.

The court reviewed 20 agreed sample documents, called Exemplars, and the interrogatory responses privately, outside the parties’ presence. The court did not decide whether the materials qualified for the Protective Order’s broader “Confidential” designation because the parties had not addressed that issue.

Rulings on the samples

- Exemplar 1: The court upheld the AEO designation. It contained PRF’s balance sheet and profit-and-loss statement, which qualified as previously undisclosed financial information. - Exemplar 2: The court upheld the AEO designation only for paragraph 2, which discussed PRF’s financial results. PRF had to remove the designation from the rest of the document. - Exemplar 3: The court rejected the AEO designation. It was an email confirming renewal of PRF’s internet domain names and did not contain information covered by the Protective Order. - Exemplar 4: The court rejected the AEO designation except for the donor’s name and address. PRF had to remove the designation from the rest of the donation thank-you letter. - Exemplar 5: The court upheld the AEO designation. The spreadsheet contained names, addresses, and contact information that the court understood to be a list of actual or potential donors, similar to a customer list. - Exemplars 6 through 20: The court rejected the AEO designations. These materials involved events, Library of Congress activities, board meetings, emails, social-media matters, intellectual-property discussions, office space, and related subjects, but the court found that they did not contain information within the Protective Order’s AEO category.

Interrogatory responses and order

The responses discussed PRF’s damages theories and calculations. Although the estimates were derived from information that could properly receive AEO protection, the court found that PRF had not shown why the estimates themselves required that designation. The court therefore rejected the AEO designation for the responses.

The court granted in part and denied in part the defendants’ request. PRF was ordered to remove the AEO designation from the specified portions of Exemplars 2 and 4, all of Exemplars 3 and 6 through 20, and the interrogatory responses. PRF also had to promptly review the remaining documents for possible re-designation consistent with the order and produce the re-designated materials by February 15, 2023.

Effect of the ruling

The order changed the AEO treatment of the specified discovery materials but did not decide the parties’ underlying trademark, copyright, or related claims. It also did not alter PRF’s broader “Confidential” designations or approve any particular designation under that category.