Scranton Prods., Inc. v. Bobrick Washroom Equip., Inc.

• Citation: 190 F.Supp.3d 419
• Decision Date: 03 June 2016
• Docket Number: 3:14-CV-00853
• Parties: Scranton Products, Inc., Plaintiff, v. Bobrick Washroom Equipment, Inc., Defendant.
• Court: U.S. District Court — Middle District of Pennsylvania

190 F.Supp.3d 419

Scranton Products, Inc., Plaintiff,

v.Bobrick Washroom Equipment, Inc., Defendant.

3:14-CV-00853

United States District Court, M.D. Pennsylvania.

Filed June 3, 2016

Gretchen L. Jankowski, Jordan M. Webster, Wendelynne J. Newton, Eric M. Spada, Buchanan Ingersoll & Rooney PC, Pittsburgh, PA, Jan L. Budman, II, Buchanan Ingersoll & Rooney, Harrisburg, PA, for Plaintiff.

Carl W. Hittinger, Jeffry W. Duffy, Matthew M. Oates, Baker & Hostetler LLP, Philadelphia, PA, Julian D. Perlman, Baker Hostetler, LLP, New York, NY, for Defendant.

MEMORANDUM OPINION

Robert D. Mariani, United States District Judge

Pending before the Court are six discovery disputes. In the first dispute, Defendant Bobrick Washroom Equipment, Inc. ("Bobrick") seeks relief in connection with the alleged "unauthorized practice of law and unethical conduct of Mr. Brian Cooper," in-house counsel for Plaintiff Scranton Products, Inc. ("SP"). (Docs. 138-140). Next, Bobrick challenges SP's "improper redactions," specifically, SP's redactions based on its determination that certain information is irrelevant to the litigation. (Docs. 142, 152, 161). The other four disputes concern the parties' challenges to certain "Confidential" and "Attorneys Eyes Only" ("AEO") designations under the Modified Stipulated Protective Order (the "Protective Order"). (Docs. 101, 109, 115; 123-124; 141, 149-151, 156-159; 186). The Court will address each dispute in turn.

I. INTRODUCTION AND PROCEDURAL HISTORY

Plaintiff SP filed a complaint (the "Complaint") in May 2014 alleging, among other things, that Defendant Bobrick "carefully orchestrated a campaign to scare architects, product specifiers, procurement representatives, building owners, and others in the construction industry into believing that Scranton Products' toilet partitions are fire hazards, are unsafe and pose health and safety risks if used in building projects across the country." (Compl. at ¶ 1). SP asserts two claims under the Lanham Act, 15 U.S.C. § 1125(a), claiming "literally false advertising," and "deceptive and misleading advertising" and seeks both monetary damages and equitable relief. (Id . at ¶¶ 61-76). SP also brings claims under Pennsylvania law, alleging common law unfair competition, commercial disparagement, and tortious interference with existing or prospective business relations. (Id. at ¶¶ 77-92). Bobrick filed its Answer on June 25, 2014. (Doc. 21).

For the past two years the parties have engaged in protracted and highly contentious discovery disputes, filing motion after motion requesting the Court's intervention. On May 20, 2016, the Court held oral argument in connection with five of the six pending discovery disputes.

A. The Alleged Unauthorized Practice of Law and Unethical Conduct of Brian Cooper

In the first pending dispute, Bobrick seeks relief concerning the alleged unauthorized practice of law and "unethical and improper conduct" of SP's in-house counsel, Mr. Brian Cooper. (Docs. 138-140). In particular, Bobrick alleges that Mr. Cooper has violated Pennsylvania Bar Rule 302 ("Rule 302") and three provisions of the Pennsylvania Rules of Professional Conduct: Rules 4.2, 8.4(a), and 8.4(c). As a result of Mr. Cooper's apparent misconduct, Bobrick requests that the Court: (1) order SP "to produce all documents and information that have been withheld based on an assertion that such documents reflect privileged attorney-client communications between SP and Mr. Cooper," because Mr. Cooper is not authorized to practice law in Pennsylvania; and (2) enter an order precluding SP from "continuing to use or rely upon its self-serving characterization," of a July 11, 2013, telephone call between Bobrick President Mark Louchheim and SP President Don Wharton "because of Mr. Cooper's unethical conduct—secretly participating in and documenting" the telephone call. (Id. at 1-2).

i. Pennsylvania Bar Rule 302

Rule 302 requires non-admitted "in-house" attorneys providing legal services within Pennsylvania to first obtain a Limited In-House Corporate Counsel License ("Rule 302 License"). Pa. BAR. § 302(a). Since January 13, 2013, Mr. Cooper has served as general counsel for CPG International, Inc. ("CPG") and its affiliates, which includes Plaintiff SP. (Doc. 138-2, at 3). When he was first hired in early 2013, Mr. Cooper testified that he worked and maintained an office "strictly" in Scranton, Pennsylvania. (Id. at 5-6). Eight months later, in August 2013, Mr. Cooper relocated to Skokie, Illinois. (Id .). Since then, Mr. Cooper "kind of" has an office in Pennsylvania that he testified he "go[es] to" but does not "spend really any time there unless I am doing work in Pennsylvania which is probably about every two or three months." (Id. at 7-8).

Mr. Cooper testified that he was aware of Rule 302 but did not know whether he possessed a Rule 302 License. Specifically, Mr. Cooper testified that he was "not sure" whether he possessed a Rule 302 License and that he "recall[ed] there was something about that" but did not "remember." (Doc. 138-2, at 8). He further testified that he did not recall whether he submitted an application to obtain a Rule 302 License and that he "thought [he] had." (Id. at 7). However, it is undisputed that Mr. Cooper neither obtained a Rule 302 License nor is a member of the Pennsylvania Bar. It is also undisputed that Mr. Cooper has been an active member of the California Bar since 1990. (Id. at 7); see also (Doc. 138-3). According to Bobrick, Mr. Cooper's failure to obtain a Rule 302 License warrants a finding that certain of his communications with SP are not protected from disclosure by the attorney-client privilege.

ii. Alleged Violation of the Pennsylvania Rules of Professional Conduct

Bobrick next asserts that, in addition to his failure to comply with Rule 302, Mr. Cooper violated Rules 4.2, 8.4(a), and 8.4(c) of the Pennsylvania Rules of Professional Conduct. Mr. Cooper's alleged violations all stem from his "silent participation" in a July 11, 2013, telephone call between SP's President Don Wharton and Bobrick's President Mark Louchheim.

On July 11, 2013, prior to the commencement of the instant litigation, SP's President Don Wharton initiated a call with Bobrick's President Mark Louchheim to discuss the parties' ongoing dispute over Bobrick's statements to third parties regarding SP's HDPE toilet partition products and their compliance, or lack thereof, with the NFPA-286 standard.¹ Neither Mr. Wharton nor Mr. Cooper informed Mr. Louchheim (or, for that matter, Bobrick's in-house or outside counsel) that Mr. Cooper was in the same room as Mr. Wharton, listening and taking notes. (Doc. 138-2, at 12). Moreover, Mr. Cooper testified at his deposition that he advised Mr. Wharton prior to the call by providing him with "talking points," and that he "assumed" Bobrick to be represented by counsel at the time of the July 11, 2013 call. (Doc. 138-2). Mr. Cooper found it unnecessary to disclose his presence on the call because he "was just there to witness the call" and "wasn't participating on the call" or "making any statements." (Doc. 138-2).

SP has used Mr. Cooper's notes and characterizations of the call to support its claims in this litigation. Specifically, SP alleges that during the call Mr. Louchheim "acknowledged that Scranton products offered for sale NFPA 286-complaint HDPE toilet partitions." (Compl. at ¶ 39). The Complaint also asserts that Mr. Louchheim:

further acknowledged that Bobrick's specific attacks on Scranton Products' HDPE toilet partitions ... were initiated because Scranton Products is an industry leader in toilet partitions, thus revealing the true motive behind Bobrick's improper campaign: to imply that Scranton Products' HDPE toilet partitions were unsafe, thereby diverting toilet partition sales away from Scranton Products to Bobrick.

(Id. at ¶ 40). Mr. Louchheim and Bobrick dispute SP's characterizations of the call, and deny that Mr. Louchheim admitted on the call that SP sells a NFPA-286 compliant HDPE toilet partitions. (Doc. 140).

Mr. Cooper's failure to disclose his presence and notetaking to Mr. Louchheim is, according to Bobrick, a violation of the Pennsylvania Rules of Professional Conduct. Because of this alleged violation, Bobrick seeks an order precluding SP from "using or relying on any written or oral characterization" of the telephone call. (Doc. 138, at 16). Alternatively, Bobrick requests that "[s]hould the Court believe that additional factual information is needed to determine whether Mr. Cooper impermissibly originated or orchestrated Mr. Wharton" in connection with the call, that the Court "order SP, at a minimum, to submit the relevant correspondence to the Court for in camera review." (Id. at 17).

B. SP's Redactions For Relevancy

The second dispute before the Court concerns whether SP properly redacted certain information contained on 225 pages of documents it produced to Bobrick. SP redacted this information after determining it was "irrelevant" to any claim or defense at issue in the litigation.² (Doc. 142, at 3-4). To remedy what Bobrick terms SP's "improper redactions," Bobrick seeks an order requiring SP to "(1) produce unredacted versions of all documents SP has redacted to date based on relevance, (2) refrain from making an further relevance redactions absent order from the court, and (3) consistent with the current language of Federal Rule of Civil Procedure 34, disclose whether it has silently withheld documents in their entirety based on its objections including relevance objections." (Id. ). SP did not submit unredacted copies of the documents at issue for the Court's in camera review.

C. Challenges to Certain Confidential and Attorneys Eyes Only Designations

Bobrick also raises challenges to SP's designations of certain documents and information as "Confidential" and/or AEO under the Protective Order. Bobrick maintains that SP failed to demonstrate "good cause" to support its designations of 557 documents as "Confident...