30 F.3d 854 (7th Cir. 1994), 92-3687, Jepson, Inc. v. Makita Elec. Works, Ltd.

Docket Nº:92-3687.
Citation:30 F.3d 854
Party Name:JEPSON, INCORPORATED and Ko Shin Electric and Machinery Company, Limited, Plaintiffs, v. MAKITA ELECTRIC WORKS, LIMITED, Makita USA, Incorporated and Makita Corporation of America, Defendants-Appellants, and William A. ZEITLER, Douglas J. Colton and Verner, Liipfert, Bernhard, McPherson & Hand, Appellants, v. BLACK & DECKER, INCORPORATED, Appellee.
Case Date:July 26, 1994
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit
 
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Page 854

30 F.3d 854 (7th Cir. 1994)

JEPSON, INCORPORATED and Ko Shin Electric and Machinery

Company, Limited, Plaintiffs,

v.

MAKITA ELECTRIC WORKS, LIMITED, Makita USA, Incorporated and

Makita Corporation of America, Defendants-Appellants,

and

William A. ZEITLER, Douglas J. Colton and Verner, Liipfert,

Bernhard, McPherson & Hand, Appellants,

v.

BLACK & DECKER, INCORPORATED, Appellee.

No. 92-3687.

United States Court of Appeals, Seventh Circuit

July 26, 1994

Argued Feb. 17, 1994.

Rehearing and Suggestion for Rehearing En Banc Denied Aug. 22, 1994.[*]

Page 855

Jeffrey A. Orr, Frederick J. Sujat, Klayman & Associates, Washington, DC, for plaintiffs.

James K. Gardner (argued), Phil C. Neal, James H. Bowhay, Ralph T. Russell, Bradley C. Twedt, Neal, Gerber & Eisenberg, Chicago, IL, for Makita Elec. Works, Ltd., Makita USA, Inc., Makita Corp. of America, William A. Zeitler, Douglas J. Colton, Verner, Liipfert, Bernhard, McPherson & Hand.

Raymond P. Niro, John C. Janka (argued), Niro, Scavone, Haller & Niro, Chicago, IL, Mark D. Gately, Daniel R. Lanier, Steven F. Barley, Miles & Stockbridge, Baltimore, MD, for Black & Decker, Inc.

Before CUMMINGS, KANNE, and ROVNER, Circuit Judges.

KANNE, Circuit Judge.

Jepson, Inc. and Ko Shin Electric and Machinery Co., Ltd. filed suit against Makita U.S.A., Inc., Makita Corporation of America and Makita Electric Works, Ltd. (hereafter collectively referred to as "Makita") for alleged violations of the Racketeer Influenced and Corrupt Organizations Act ("RICO"), 18 U.S.C. Sec. 1961 et seq. and various state law provisions.

During discovery, Makita served a Notice of Deposition on the Black and Decker Corporation ("Black & Decker"), pursuant to Fed.R.Civ.Pro. 30(b)(6), seeking to depose a representative of Black & Decker knowledgeable about "foreign and domestic competition in the United States power tool industry; the geographic and product markets for power tools in the United States; the importation into the United States of power tools; the manufacturers and importers of power tools sold in the United States and their product lines and sales; labeling of domestic content requirements; trademarks of power tools in the United States; the reputation and performance of power tools manufactured in the United States and abroad." 1 In response to the Notice of Deposition, Black & Decker offered the testimony of Joseph Galli, Jr., Vice President of Marketing for Black & Decker's power tools group.

Prior to Galli's deposition, Makita and Black & Decker entered into a Stipulated Protective Order which provides in pertinent part:

1. This Protective order shall apply to all information conveyed by Black & Decker, Inc. (hereinafter termed "conveying party") to another party (hereinafter termed "receiving party") in this action pursuant to the Deposition Subpoena and Notice of Deposition served upon it.... CONFIDENTIAL

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MATERIALS are any DISCOVERY MATERIALS that contain trade secrets or other confidential research, development, financial, corporate, or commercial information of the conveying party. Subject to the terms set forth below, all information produced by the conveying party shall be used by the receiving party solely for the purposes of preparing for and conducting this action and shall not be used for any other purpose.

2. Counsel for the conveying party may designate as CONFIDENTIAL MATERIALS any deposition testimony that counsel in good faith considers to contain or reflect research, financial, commercial, business or other information that the conveying party deems confidential.

....

9. In the event counsel for the party receiving CONFIDENTIAL MATERIALS objects to the designation of any or all such items as being designated CONFIDENTIAL MATERIALS, said counsel shall advise the conveying party, in writing, of such objections and the reasons therefore. If the parties fail to resolve the dispute among themselves, it shall be the obligation of the party objecting to the designation of material as CONFIDENTIAL MATERIALS to file, within (5) days after notifying the conveying party of its objections, an appropriate motion to obtain a prompt ruling from the Court concerning the confidentiality of the items in dispute....

Through an oversight, the Stipulated Protective Order was never submitted to the district court.

The parties to the litigation, but not Black & Decker, further stipulated to an Agreed Interim Protective Order ("IPO") which provides in pertinent part:

1. [T]he following information shall be considered "Confidential Material" and may be used in this action as set forth in this Interim Protective Order ("IPO"), subject to objections from opposing parties: All documents, things, pleadings, and deposition transcripts labeled "Confidential" produced or taken by plaintiffs and defendants from each other or from third parties in this litigation, subject to challenge by any opposing party(s) within 20 days of entry of this IPO or 10 days of production, whichever is later.

....

4. Recipients of Confidential Material shall not reveal, reproduce, disclose, or describe the Confidential Material, or the contents of Confidential Material, in whole or in part, to any person other than a person authorized to receive such documents.... Recipients of Confidential Material shall use such material only for purposes of this action and for no other purpose.

The IPO was signed by Magistrate Judge Edward A. Bobrick on May 30, 1991.

On June 5, 1991 Makita took Galli's deposition. Before Galli began his testimony, Black & Decker's attorney designated "the entire context of Mr. Galli's deposition testimony ... as confidential pursuant to paragraph 3 of the stipulated protective order...." Makita did not challenge the designation of Galli's testimony as confidential within the ten day period required by the IPO.

In May of 1992, Black & Decker filed a petition with the United States International Trade Commission ("ITC") alleging that Makita was "dumping" professional power tools in the United States at less than fair market value within the meaning of 19 U.S.C. Sec. 1673 et seq. During an ITC Preliminary Conference, Gary DiCamillo, President of Black & Decker's power tool group, gave testimony on what constitutes a like-product for purposes of...

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