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Macy's, Inc. and Macys.Com, Inc v. Strategic Marks

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION


March 26, 2013

MACY'S, INC. AND MACYS.COM, INC.,
PLAINTIFFS,
v.
STRATEGIC MARKS, LLC,
DEFENDANT.

The opinion of the court was delivered by: The Honorable Samuel Conti United States District Judge

STIPULATED PROTECTIVE ORDER AND RELATED COUNTERCLAIMS 24 25 26 27 28

3 confidential, proprietary, or private information for which special protection from public 4 disclosure and from use for any purpose other than prosecuting this litigation may be 5 warranted. Accordingly, the parties hereby stipulate to and petition the Court to enter the 6 following Stipulated Protective Order ("Stipulated Order"). The parties acknowledge that 7 this Stipulated Order does not confer blanket protections on all disclosures or responses 8 to discovery and that the protection it affords from public disclosure and use extends only 9 to the limited information or items that are entitled to confidential treatment under the 10 applicable legal principles. The parties further acknowledge, as set forth in Section 12.3, 11 below, that this Stipulated Order does not entitle them to file confidential information 12 under seal; Civil Local Rule 79-5 and General Order 62 set forth the procedures that 13 must be followed and the standards that will be applied when a party seeks permission 14 from the Court to file material under seal. The parties further acknowledge that the 15 protections afforded by this Stipulated Order apply to Protected Material properly 16 designated as so by either party prior to the parties entering into this Stipulated Order. 17

19 information or items under this Stipulated Order. 20

2.2 "CONFIDENTIAL" Information or Items: Disclosure or Discovery Material

(regardless of how it is generated, stored, maintained, or produced) and/or tangible 22 things qualify for protection as "CONFIDENTIAL" Information or Items if their disclosure 23 to the public would violate a personal, financial, or other interest protected by law (such 24 as a trade secret or other confidential research, development, or proprietary commercial 25 information) or such Disclosure or Discovery Material and/or tangible things otherwise 26 qualify for protection under Federal Rule of Civil Procedure 26(c). 27

1. PURPOSES AND LIMITATIONS

Disclosure and discovery activity in this action are likely to involve production of

2. DEFINITIONS

2.1 Challenging Party: a Party or Non-Party that challenges the designation of

2.3 Counsel: Outside Counsel and/or House Counsel (as well as their

associated attorneys and support staff). 2

2.4 Designated House Counsel: House Counsel who seek access to

"HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" information in this matter. 4

5 items that it produces in disclosures or in responses to discovery as either 6

Information or Items. 8

9 regardless of the medium or manner in which it is generated, stored, maintained or 10 produced (including, among other things, testimony, transcripts, videotaped depositions, 11 video cassettes , or other digital media upon which the recorded deposition has been 12 stored, and tangible things), that are produced or generated in disclosures or responses 13 to discovery sought (in writing and/or during a deposition) in this matter. 14

2.7 Expert: a person with specialized knowledge or experience in a matter

15 pertinent to the litigation who has been retained by a Party or its Counsel to serve as an 16 expert witness or as a consultant in this action. 17

2.5 Designating Party: a Party or Non-Party that designates information or

"CONFIDENTIAL" or "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" 7

2.6 Disclosure or Discovery Material: all items, testimony or information,

2.8 "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" Information or

Items: extremely sensitive "CONFIDENTIAL" Information or Items, disclosure of which to 19 another Party or Non-Party would create a substantial risk of serious harm that could not 20 be avoided by less restrictive means. 21

2.9 House Counsel: attorneys who are employees of a party to this action.

House Counsel does not include Outside Counsel. 23

24 other legal entity not named as a Party to this action. 25

26 action, but are retained to represent or advise a party to this action in connection with this 27 action, or are affiliated with a law firm which has appeared on behalf of that party in this 28

2.10 Non-Party: any natural person, partnership, corporation, association, or

2.11 Outside Counsel: attorneys who are not employees of a party to this

action. 2

3 employees, consultants, retained experts, and Outside Counsel (and their support staffs). 4

5 or Discovery Material to (or makes such material available for inspection to) a Receiving 6

2.14 Professional Vendors: persons or entities that provide litigation support

8 services (e.g., photocopying, court reporting, stenographic reporting, videotaping, 9 translating, preparing exhibits or demonstrations, and organizing, copying, imaging, 10 coding, converting, storing or retrieving data, documents or information, or designing 11 programs for handling data connected with this litigation in any form or medium), and 12 their employees and subcontractors. 13

14 designated by a Designating Party as "CONFIDENTIAL" or "HIGHLY CONFIDENTIAL -- 15

ATTORNEYS' EYES ONLY" Information or Items (or deemed to be so pursuant to the 16 terms of this Stipulated Protective Order). 17

18 from a Producing Party. 19

2.12 Party: any party to this action, including all of its officers, directors,

2.13 Producing Party: a Party or Non-Party that testifies or provides Disclosure

Party in connection with this action. 7

2.15 Protected Material: any Disclosure or Discovery Material that is

2.16 Receiving Party: a Party that receives Disclosure or Discovery Material

3. SCOPE

The protections conferred by this Stipulation and Order cover not only Protected

Material (as defined above), but also the following material which is hereby deemed to 22 constitute Protected Material under this Stipulated Order: (1) any information copied or 23 extracted from Protected Material by (or at the behest) of someone other than the 24

Designating Party for that Protected Material; (2) all copies, excerpts, summaries, or 25 compilations of Protected Material made by (or at the behest) of someone other than the 26

Designating Party for that Protected Material; and (3) any testimony, conversations, or 27 presentations by Parties or their Counsel that might reveal Protected Material. 28

2 information: (i) lawfully acquired by the Receiving Party (by means other than discovery 3 in this litigation) prior to its disclosure by the Designating Party in a manner that did not 4 impose any obligation of confidentiality upon the Receiving Party; (ii) lawfully acquired by 5 the Receiving Party from a third party who obtained the information lawfully, was under 6 no obligation of confidentiality to the Designating Party when it provided the information 7 to the Receiving Party, and failed to impose any conditions of confidentiality upon the 8

Party to the Receiving Party; (iv) entered the public domain (after its disclosure by the 10

Designating Party to the Receiving Party) as a result of a publication not involving a 11 violation of this Stipulated Order, including becoming part of the public record through 12 trial or otherwise. The Parties shall confer in good faith prior to trial in an attempt to 13 devise any necessary additional and/or alternate protective procedures to be applicable 14 at trial that are satisfactory to the Court. 15

However, the protections conferred by this Stipulated Order do not cover

Receiving Party; (iii) was in the public domain when it was disclosed by the Designating 9

This Stipulated Order has no effect upon, and its scope shall not extend to, any

Party's use or disclosure of its own "CONFIDENTIAL" Information or Items. 17

18 parties execution of this Stipulated Order shall be afforded the full protections conferred 19 by this Stipulated Order. 20

22 by this Stipulated Order shall remain in effect until a Designating Party agrees otherwise 23 in writing or a court order otherwise directs. Final disposition shall be deemed to be the 24 later of (1) dismissal of all claims and defenses in this action, with or without prejudice; 25 and (2) final judgment herein after the completion and exhaustion of all appeals, 26 rehearings, remands, trials, or reviews of this action, including the time limits for filing any 27 motions or applications for extension of time pursuant to applicable law. 28

Protected Material that has been produced by a Designating Party prior to the

4. DURATION

Even after final disposition of this litigation, the confidentiality obligations imposed

4 this Stipulated Order shall make a good faith effort to limit any such designation only to 5 material that qualifies for protection hereunder (according to the standards set forth in 6 paragraphs 2.2 and 2.8 of this Stipulated Order). Where practicable, a Designating Party 7 shall designate for protection only the qualifying portions of material, documents, items, 8 or oral or written communications, leaving non-qualifying material, documents, items, and 9 oral or written communications undesignated. 10

11 information or items as "CONFIDENTIAL" or "HIGHLY CONFIDENTIAL - ATTORNEYS' 12

EYES ONLY" Information or Items pursuant to terms of this Stipulated Order shall 13 constitute the verification by Counsel of record for the Producing Party that at least one 14 attorney has reviewed the material being designated and that the designation is, in the 15 good faith judgment of the Producing Party's Counsel, consistent with the terms of this 16

Stipulated Order. Designations that are shown to be clearly unjustified, or to have been 17 made for an improper purpose (e.g., to unnecessarily encumber or retard the case 18 development process or to impose unnecessary expenses and burdens on other parties), 19 expose the Designating Party to sanctions. 20

If it comes to a Designating Party's attention that information or items that it

21 designated for protection do not qualify for protection at all or do not qualify for the level 22 of protection initially asserted, that Designating Party shall promptly notify all other parties 23 that it is withdrawing the mistaken designation. 24

26 of section 5.2(a) below), or as otherwise stipulated or ordered, Disclosure or Discovery 27

Material that qualifies for protection under this Stipulated Order must be clearly 28

5. DESIGNATING PROTECTED MATERIAL

5.1 Exercise of Restraint and Care in Designating Material for Protection.

Each Party or Non-Party that designates information or items for protection under

Mass and/or indiscriminate designations are prohibited. The designation of any

5.2 Manner and Timing of Designations.

Except as otherwise provided in this Stipulated Order (see, e.g., second paragraph

designated as such before the material is disclosed or produced. 2

4 documents, but excluding transcripts of depositions or other pretrial or trial proceedings), 5 that the Producing Party affix the legend "CONFIDENTIAL" or "HIGHLY CONFIDENTIAL 6

-- ATTORNEYS' EYES ONLY" to each page that contains Protected Material. If only a 7 portion of the material appearing on such a page qualifies for protection hereunder, the 8

Designation in conformity with this Stipulated Order requires:

(a) for information in documentary form (e.g., paper or electronic

Producing Party must also clearly identify the protected portion(s) (e.g., by making 9 appropriate markings in the margins) and must specify, for each portion thus identified, 10 the level of protection being asserted for the referenced material. 11

12 inspection need not designate any portions thereof for protection until after the inspecting 13

During the inspection and before the designation, all of the material made available for 15 inspection shall be temporarily deemed "HIGHLY CONFIDENTIAL -- ATTORNEYS' 16

EYES ONLY." After the inspecting Party has identified the documents it wants copied 17 and/or produced, the Producing Party shall be provided with a reasonable opportunity 18

(prior to copying and/or production of the requested documents) to determine which of 19 the requested documents, or portions thereof, qualify for protection under this Stipulated 20

(b) for testimony given in deposition or in other pretrial or trial proceedings,

22 that the Designating Party identify on the record all protected testimony and specify the 23 level of protection being asserted before the close of the deposition, hearing, or other 24 proceeding. If a Party has reasons for believing it may be (or has been) impractical to 25 comply fully with this requirement, and/or it appears that substantial portions of the 26 testimony may qualify for protection, the Designating Party may invoke on the record 27 prior to the conclusion of the deposition, hearing, or other proceeding, a right to have up 28

A Party or Non-Party that makes original documents or materials available for

Party has indicated which documents or material it would like copied and produced. 14

Order, and to designate its Protected Material as such. 21

to 21 days following the deposition (the "21-Day Review Period"), hearing, or other 2 proceeding to identify the specific portions of the testimony as to which protection is 3 sought and to specify the level of protection being asserted. Following expiration of such 4

21-Day Review Period, only those portions of the testimony that are appropriately 5 designated for protection within that 21-Day Review Period shall be covered by the 6 provisions of this Stipulated Order. 7

Alternatively, when there is good cause to do so, a Designating Party may

8 specify, during the deposition or up to 21 days afterwards (if that period is properly 9 invoked during the deposition), that the entire transcript shall be treated as 10

Parties shall give the other parties reasonable notice if they reasonably

12 expect a deposition, hearing or other proceeding to include Protected Material so that the 13 other parties can ensure that only authorized individuals who have signed the 14

"Acknowledgment and Agreement to Be Bound" (Exhibit A) are present at those 15 proceedings. Nonetheless, if Protected Material is about to be (or at risk of being) 16 disclosed during a deposition, then prior to disclosure of the Protected Material, any 17 person not authorized to receive the Protected Material pursuant to paragraph 7.2 or 18 paragraph 7.3 below shall be excluded from the deposition until testimony regarding 19 those matters has been concluded. The use of a document as an exhibit at a deposition 20 shall not in any way affect its designation as "CONFIDENTIAL" or "HIGHLY 21

Transcripts containing Protected Material shall have an obvious legend on

23 the title page that the transcript contains Protected Material, and the title page shall be 24 followed by a list of all pages (including line numbers as appropriate) that have been 25 designated as Protected Material and the level of protection being asserted by the 26

Designating Party. Additionally, each page of the transcript containing Protected Material 27 shall be individually marked as containing Protected Material, including the level of 28

"CONFIDENTIAL" or "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY." 11

CONFIDENTIAL -- ATTORNEYS' EYES ONLY." 22

protection being asserted by the Designating Party for such Protected Material. The 2

Designating Party shall inform the court reporter of these requirements. Any transcript 3 that is prepared before the expiration of a 21-Day Review Period shall be treated by all 4 parties during that period as if it had been designated "HIGHLY CONFIDENTIAL -- 5

ATTORNEYS' EYES ONLY" in its entirety unless otherwise agreed. After the expiration 6 of that period, the transcript shall be treated as Protected Material only if, and as, actually 7 designated. 8

9 any other tangible items, that the Producing Party affix in a prominent place on the 10 exterior of the container or containers in which the information or item is stored (and to 11 the extent possible, on the information or item itself) the legend "CONFIDENTIAL" or 12

"HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY." If only a portion or portions of 13 the information or item warrant protection, the Producing Party, to the extent practicable, 14 shall identify the protected portion(s) and specify the level of protection being asserted. 15

A 21-Day Review Period shall automatically commence upon the Parties' final

16 execution of this Stipulated Order during which the Parties may (i) identify specific 17 portions of deposition testimony taken previously in this action for which protection under 18 this Stipulated Order is sought and (ii) specify the level of protection being asserted under 19 this Stipulated Order. Following expiration of this automatic 21-Day Review Period, only 20 those portions of the previous deposition testimony that are appropriately designated for 21 protection within the automatic 21-Day Review Period shall be covered by the provisions 22 of this Stipulated Order. 23

(c) for information produced in some form other than documentary and for

5.3 Inadvertent Failures to Designate.

To the extent that material which should have been designated as

"CONFIDENTIAL" or "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" is 26 inadvertently produced without such designation, the Producing Party shall provide 27 written notice of the material that was inadvertently produced, the designation that is 28

applicable to the material, and the date of discovery of the inadvertent production to the 2

Receiving Party immediately following discovery of the inadvertent production. Following 3 receipt of notice of a designation applied pursuant to this paragraph, the Receiving Party 4 must make reasonable efforts to assure that the newly designated material is treated in 5 accordance with the provisions of this Stipulated Order. 6

9 for failure to meet the qualifications set forth in paragraphs 2.2, 2.8, 5.1, and/or 5.2 of 10 this Stipulated Order, for unreasonable delay in designating material pursuant to 11 paragraph 5.3 of this Stipulated Order, or because the designation exceeds the 12 limitations (which are set forth in paragraph 3 of this Stipulated Order) on protections 13 offered hereunder. Unless a prompt challenge to a Designating Party's confidentiality 14 designation is necessary to avoid foreseeable, substantial unfairness, unnecessary 15 economic burdens, or a significant disruption or delay of the litigation, a Party does not 16 waive its right to challenge a confidentiality designation by failing to mount a challenge 17 promptly after the original designation is made. 18

20 hand delivery, U.S. Mail or e-mail) written notice of each designation it is challenging and 21 describing the basis for each challenge (the "Notice"). To avoid ambiguity as to whether a 22 challenge has been made, the Notice must recite that the challenge to confidentiality is 23 being made in accordance with this specific paragraph of the Stipulated Order. The 24 parties shall attempt to resolve each challenge in good faith, and must begin the process 25 by conferring directly with each other in person or telephonically (other forms of 26 communication are not sufficient) within 14 days after the date upon which the Notice 27 was hand delivered, mailed, or e-mailed. In conferring, the Challenging Party must 28

6. CHALLENGING CONFIDENTIALITY DESIGNATIONS

6.1 Grounds and Timing for Challenges.

Any Party or Non-Party may challenge a designation of confidentiality at any time

6.2 Meet and Confer.

The Challenging Party shall initiate a dispute resolution process by serving (by

explain the basis for its belief that the confidentiality designation was not proper and must 2 give the Designating Party an opportunity to review the designated material, to reconsider 3 the circumstances, and, if no change in designation is offered, to explain the basis for the 4 chosen designation. A Challenging Party may proceed to the next stage of the challenge 5 process only after engaging in this meet and confer process or establishing that the 6

Designating Party is unwilling to participate in the meet and confer process in a timely 7 manner. 8

6.3 Judicial Intervention.

If the Parties cannot resolve a challenge without court intervention, the

Challenging Party shall file and serve a motion challenging a confidential designation 11 under Civil Local Rule 7 (and in compliance with Civil Local Rule 79-5 and General Order 12

62, if applicable) within 21 days after the initial Notice of challenge, or within 14 days after 13 the parties agree that the meet and confer process will not resolve their dispute, 14 whichever is earlier. Each such motion must be accompanied by a competent 15 declaration affirming that the movant has complied with the meet and confer 16 requirements imposed in the preceding paragraph. 17

The burden of persuasion in any such challenge proceeding shall be on the

Designating Party. Frivolous challenges and those made for an improper purpose (e.g., 19 to harass or impose unnecessary expenses and burdens on other parties) may expose 20 the Challenging Party to sanctions. All parties shall continue to afford the material in 21 question the level of protection to which it is entitled under the Producing Party's 22 designation until the court rules on the challenge. 23

26 another Party or by a Non-Party in connection with this case only for prosecuting, 27 defending, or attempting to settle this litigation. Such Protected Material may be disclosed 28

7. ACCESS TO AND USE OF PROTECTED MATERIAL

7.1 Basic Principles.

A Receiving Party may use Protected Material that is disclosed or produced by

only to the categories of persons and under the conditions described in this Stipulated 2

Order. When the litigation has been terminated, a Receiving Party must comply with the 3 provisions of Section 13 below. 4

5 location and in a secure manner that ensures that access is limited to the persons 6 authorized under this Stipulated Order. 7

"CONFIDENTIAL" only to: 11

13 captioned proceedings to whom it is reasonably necessary to disclose the information for 14 this litigation who has been provided with a copy of this Stipulated Order and thereafter 15 signed the "Acknowledgment and Agreement to Be Bound" (Exhibit A); 16

Protected Material must be stored and maintained by a Receiving Party at a

7.2 Disclosure of "CONFIDENTIAL" Information or Items.

Unless otherwise ordered by the Court or permitted in writing by the Designating

Party, a Receiving Party may disclose any information or item designated 10

(a) the Court and its personnel;

(b) any alternative dispute resolution personnel engaged in the above

(c) the Receiving Party's Outside Counsel in this action if said Outside

Counsel executed this Stipulated Order, and any other Outside Counsel (or employee 18 thereof) to whom it is reasonably necessary to disclose the information for this litigation 19 who has either (i) been provided with a copy of this Stipulated Order and thereafter 20 signed the "Acknowledgment and Agreement to Be Bound" (Exhibit A), or (ii) personally 21 signed some other confidentiality agreement (enforceable by the law firm with which the 22

Receiving Party's Outside Counsel who executed this Stipulated Order was associated at 23 the time) which obligates said Outside Counsel (or employee thereof) to protect such 24 information or Items in a manner consistent with, or exceeding, the applicable standards 25 set forth herein; 26

27 disclosure is reasonably necessary for this litigation, or any other employee of the 28

(d) any managing agent, officer, or director, or House Counsel to whom

Receiving Party who is supervising the Receiving Party's Outside Counsel or House 2

Counsel in connection with this litigation (or to whom Outside or House Counsel for the 3

(e) any Party's insurers, if any, to whom disclosure is reasonably

5 necessary in connection with this litigation, or their Counsel who has been provided with 6 a copy of this Stipulated Order and thereafter signed the "Acknowledgment and 7

(f) the author or recipient of a document containing the information or a

9 custodian or other person who otherwise possessed, knew or had authorized access to 10 the information; 11

12 consultants, and clerical and secretarial staff) to whom disclosure is reasonably 13 necessary for this litigation so long as said Professional Vendors have either (i) been 14 provided with a copy of this Stipulated Order and thereafter signed the "Acknowledgment 15 and Agreement to Be Bound" (Exhibit A), or (ii) signed some other confidentiality 16 agreement enforceable by the Receiving Party (or its agent(s)) which obligates the 17

Professional Vendor(s) to protect the information or items in a manner consistent with, or 18 exceeding, the standards set forth herein; 19

(h) Experts (as defined in this Stipulated Order), professional jury or trial

20 consultants, and any other Non-Party consultants (together with their associates, 21 consultants, and clerical and secretarial staff) of the Receiving Party retained to assist in 22 the prosecution, defense, arbitration, mediation, settlement, or other disposition of this 23 action to whom disclosure is reasonably necessary for this litigation so long as said such 24

Experts, consultants (and associates, consultants, and clerical and secretarial staff 25 thereof) have either (i) been provided with a copy of this Stipulated Order and thereafter 26 signed the "Acknowledgment and Agreement to Be Bound" (Exhibit A), or (ii) signed 27 some other confidentiality agreement enforceable by the Receiving Party (or its agent(s)) 28

Receiving Party otherwise reports in connection with this litigation); 4

Agreement to Be Bound" (Exhibit A). 8

(g) any Professional Vendor(s) (together with their associates,

which obligates the Experts, consultants (and associates, consultants, and clerical and 2 secretarial staff thereof) to protect the information or items in a manner consistent with, or 3 exceeding, the standards set forth herein; 4

(i) any employee of a Receiving Party not otherwise described herein to

5 whom disclosure is reasonably necessary while preparing for a deposition taken pursuant 6 to FRCP 30(b)(6), so long as such employee has been provided with a copy of this 7

Bound" (Exhibit A); and 9

10 described herein to whom disclosure is reasonably necessary and who has been 11 provided with a copy of this Stipulated Order and thereafter signed the "Acknowledgment 12 and Agreement to Be Bound" (Exhibit A), unless otherwise agreed by the Designating 13

(k) any other person to whom the Designating Party has consented to

15 disclosure in advance and in writing as set forth in paragraph 7.2 who has been provided 16 with a copy of this Stipulated Order and thereafter signed the "Acknowledgment and 17

(l) any member of a jury, or alternate thereto, assigned to hear the

19 above-captioned case. 20

Stipulated Order and thereafter signed the "Acknowledgment and Agreement to Be 8

(j) during their depositions, any witness in the action not otherwise

Party or ordered by the Court; 14

Agreement to Be Bound" (Exhibit A); and 18

(m) The above list of persons to whom "CONFIDENTIAL" Information or

Items may be provided may be expanded by mutual agreement of the Parties. Any Party 22 may propose such an expansion by serving a letter on all Outside Counsel specifically 23 identifying (and describing the role and function of) the person(s) proposed to be added 24 to the list ("Expansion Letter"). Person(s) so identified shall be automatically added to 25 the persons listed in paragraph 7.2 unless (within ten (10) business days of service of the 26

Expansion Letter) any Counsel for a Party objects to the Expansion Letter by serving a 27 written objection stating a good faith basis for such an objection. To the extent a Party's 28

Counsel objects to an Expansion Letter, the proposed expansion is denied, and no 2

"CONFIDENTIAL" Information or Items produced by the objecting Party may be disclosed 3 in contravention to such objection unless and until the objecting Party voluntarily retracts 4 the objection in writing, or the Court so orders. 5

CONFIDENTIAL -- ATTORNEYS' EYES ONLY" only to: 10

12 captioned proceedings to whom it is reasonably necessary to disclose the information for 13 this litigation who has been provided with a copy of this Stipulated Order and thereafter 14 signed the "Acknowledgment and Agreement to Be Bound" (Exhibit A), and to whom the 15 procedures set forth in paragraph 7.4(a)(1), below, have been followed; 16

7.3 Disclosure of "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY"

Information or Items.

Unless otherwise ordered by the Court or permitted in writing by the Designating

Party, a Receiving Party may disclose any information or item designated "HIGHLY 9

(a) the Court and its personnel;

(b) any alternative dispute resolution personnel engaged in the above

(c) the Receiving Party's Outside Counsel in this action if said Outside

Counsel executed this Stipulated Order, and any other Outside Counsel (or employee 18 thereof) to whom it is reasonably necessary to disclose the information for this litigation 19 who has either (i) been provided with a copy of this Stipulated Order and thereafter 20 signed the "Acknowledgment and Agreement to Be Bound" (Exhibit A), or (ii) personally 21 signed some other confidentiality agreement (enforceable by the law firm with which the 22

Receiving Party's Outside Counsel who executed this Stipulated Order was associated at 23 the time) which obligates said Outside Counsel (or employee) to protect such information 24 or Items in a manner consistent with, or exceeding, the applicable standards set forth 25 herein; 26

27 disclosure is reasonably necessary for this litigation, (ii) have been provided with a copy 28

(d) Designated House Counsel of the Receiving Party (i) to whom

of this Stipulated Order and thereafter signed the "Acknowledgment and Agreement to Be 2

Bound" (Exhibit A), and (iii) as to whom the procedures set forth in paragraph 7.4(a)(2), 3 below, have been followed; 4

(e) the author or recipient of a document containing the information or a

5 custodian or other person who otherwise possessed, knew or had authorized access to 6 the information; 7

8 consultants, and clerical and secretarial staff) to whom disclosure is reasonably 9 necessary for this litigation so long as said Professional Vendors have either (i) been 10 provided with a copy of this Stipulated Order and thereafter signed the "Acknowledgment 11 and Agreement to Be Bound" (Exhibit A), or (ii) signed some other confidentiality 12 agreement enforceable by the Receiving Party (or its agent(s)) which obligates the 13

Professional Vendor(s) to protect the information or items in a manner consistent with, or 14 exceeding, the standards set forth herein; 15

(g) Experts (as defined in this Stipulated Order), professional jury or trial

16 consultants, and any other Non-Party consultants (together with their associates, 17 consultants, and clerical and secretarial staff) of the Receiving Party retained to assist in 18 the prosecution, defense, arbitration, mediation, settlement, or other disposition of this 19 action to whom disclosure is reasonably necessary for this litigation so long as said such 20

Experts, consultants (and associates, consultants, and clerical and secretarial staff 21 thereof) have either (i) been provided with a copy of this Stipulated Order and thereafter 22 signed the "Acknowledgment and Agreement to Be Bound" (Exhibit A), or (ii) signed 23 some other confidentiality agreement enforceable by the Receiving Party (or its agent(s)) 24 which obligates the Experts, consultants (and associates, consultants, and clerical and 25 secretarial staff thereof) to protect the information or items in a manner consistent with, or 26 exceeding, the standards set forth herein, and to whom the procedures set forth in 27 paragraph 7.4(a)(3), below, have been followed; 28

(f) any Professional Vendor(s) (together with their associates,

2 disclosure in advance and in writing as set forth in paragraph 7.4(a)(4) below who has 3 been provided with a copy of this Stipulated Order and thereafter signed the 4

"Acknowledgment and Agreement to Be Bound" (Exhibit A) , and to whom the procedures 5 set forth in paragraph 7.4(a)(4), below, have been followed; and 6

7 above-captioned case. 8

(h) any other person to whom the Designating Party has consented to

(i) any member of a jury, or alternate thereto, assigned to hear the

7.4 Procedures for Approving or Objecting to Disclosure of "HIGHLY

CONFIDENTIAL -- ATTORNEYS' EYES ONLY" Information or Items to Dispute

Resolution Personnel, Designated House Counsel, Experts or Others. 11

(a)(1) Unless otherwise ordered by the Court or agreed to in writing by the

Designating Party, a Party that seeks to disclose to any mediator or arbitrator engaged in 13 the above captioned proceedings any information or item that has been designated 14

"HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" pursuant to paragraph 7.3(b) 15 first must make a written request to the Designating Party that (1) sets forth the full name 16 of the mediator or arbitrator and the city and state of his or her residence, (2) attaches a 17 copy of the mediator's or arbitrator's current resume, (3) identifies the mediator's or 18 arbitrator's current employer, (4) sets forth an explanation as to why the Party believes 19 disclosure of the information is reasonably necessary, and (5) provides the Designating 20

Party with at least three specific dates and/or times upon which the Party seeking to 21 disclose to the mediator or arbitrator shall be available to meet and confer with the 22

(a)(2) Unless otherwise ordered by the Court or agreed to in writing by the

Designating Party, a Party that seeks to disclose to Designated House Counsel any 25 information or item that has been designated "HIGHLY CONFIDENTIAL -- ATTORNEYS' 26

Designating Party that (1) sets forth the full name of the Designated House Counsel and 28

Designating Party in advance of such disclosure. 23

EYES ONLY" pursuant to paragraph 7.3(d) first must make a written request to the 27

the city and state of his or her residence, and (2) describes the Designated House 2

Counsel's current and reasonably foreseeable future primary job duties and 3 responsibilities in sufficient detail to determine if the Designated House Counsel is 4 involved, or may become involved, in any competitive decision-making. Any Designated 5

House Counsel who receives "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" 6 information pursuant to this Oder must disclose any relevant changes in job duties or 7 responsibilities within ten (10) business days of such changes or responsibilities to allow 8 the Designating Party to evaluate any later-arising competitive decision-making 9 responsibilities. 10

Stipulated Order) any information or item that has been designated "HIGHLY 13

CONFIDENTIAL -- ATTORNEYS' EYES ONLY" pursuant to paragraph 7.3(g) first must 14 make a written request to the Designating Party that (1) sets forth the full name of the 15

Expert's current resume, (3) identifies the Expert's current employer(s), (4) identifies each 17 person or entity from whom the Expert has received compensation or funding for work in 18 his or her areas of expertise or to whom the expert has provided professional services, 19 including in connection with a litigation, at any time during the preceding five years (if the 20

Expert believes any of this information is subject to a confidentiality obligation to a third-21 party, then the Expert should provide whatever information the Expert believes can be 22 disclosed without violating any confidentiality agreements, and the Party seeking to 23 disclose to the Expert shall be available to meet and confer with the Designating Party 24 regarding any such engagement), and (5) identifies any litigation (by name and number 25 of the case, filing date, and location of court, if such information is not available to the 26

Expert, the Expert should provide the nature of the litigation and the identity of the 27 attorney(s) and/or client(s) that retained the Expert in the matter) in connection with which 28

(a)(3) Unless otherwise ordered by the Court or agreed to in writing by the

Designating Party, a Party that seeks to disclose to an Expert (as defined in this 12

Expert and the city and state of his or her primary residence, (2) attaches a copy of the 16

the Expert has offered expert testimony, including through a declaration, report, or 2 testimony at a deposition or trial, during the preceding five years. 3

(a)(4) Unless otherwise ordered by the Court or agreed to in writing by the

Designating Party, a Party that seeks to disclose to any other person any information or 5 item that has been designated "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" 6 pursuant to paragraph 7.3(h) first must make a written request to the Designating Party 7 that (1) sets forth the full name of the person to whom the Party wishes to disclose the 8 information and the city and state of his or her residence, (2) attaches a copy of that 9 person's current resume, (3) identifies the person's current employer, (4) sets forth an 10 explanation as to why the Party believes disclosure of the information is reasonably 11 necessary, and (5) provides the Designating Party with at least three specific dates 12 and/or times upon which the Party seeking to disclose to the other person shall be 13 available to meet and confer with the Designating Party in advance of such disclosure. 14

Expert, the Party seeking to disclose such material may do so without disclosure of the 17 identity of the non-testifying Expert as long as the non-testifying Expert is not a current or 18 former officer, director, or employee of a competitor of a Party or anticipated to become 19 one. 20

(b) A Party that makes a request and provides the information specified in

21 the preceding respective paragraphs may disclose the subject Protected Material to the 22 identified mediator, arbitrator, Designated House Counsel, Expert or other person unless, 23 within ten (10) business days of delivering the request, the Party receives a written 24 objection from the Designating Party. Any such objection must set forth in detail the 25 grounds on which it is based. 26

27 with the Designating Party (in person or over the telephone) to try to resolve the matter 28

To the extent that "CONFIDENTIAL" or "HIGHLY CONFIDENTIAL --

ATTORNEYS' EYES ONLY" information or items may be disclosed to a non-testifying 16

(c) A Party that receives a timely written objection must meet and confer

by agreement within seven (7) business days of receipt of the written objection. If no 2 agreement is reached, the Party seeking to make the disclosure to the mediator, 3 arbitrator, Designated House Counsel, Expert or other person may file a motion as 4 provided in Civil Local Rule 7 (and in compliance with Civil Local Rule 79-5 and General 5

Order 62, if applicable) seeking permission from the Court to do so. Any such motion 6 must describe the circumstances with specificity, set forth in detail the reasons why the 7 disclosure to the mediator, arbitrator, Designated House Counsel Expert or other person 8 is reasonably necessary, assess the risk of harm to the Designating Party that the 9 disclosure would entail and the risk of harm to the Party seeking such disclosure if the 10 disclosure is not permitted, and suggest any additional means that could be used to 11 reduce such risks. In addition, any such motion must be accompanied by a competent 12 declaration describing the parties' efforts to resolve the matter by agreement (i.e., the 13 extent and the content of the meet and confer discussions) and setting forth the reasons 14 advanced by the Designating Party for its refusal to approve the requested disclosure. 15

In any such proceeding, the Party opposing disclosure to the mediator, arbitrator,

Designated House Counsel, Expert or other person shall bear the burden of proving that 17 the risk of harm that the disclosure would entail (under the safeguards proposed) 18 outweighs the Receiving Party's need to disclose the Protected Material to the mediator, 19 arbitrator, Designated House Counsel, Expert or other person. 20

23 compels disclosure of any information or items designated in this action as 24

"CONFIDENTIAL" or "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" that Party 25 must: 26

27 shall include a copy of the subpoena or court order; 28

8. PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN

OTHER LITIGATION

If a Party is served with a subpoena or a court order issued in other litigation that

(a) promptly notify in writing the Designating Party. Such notification

2 order to issue in the other litigation that some or all of the material covered by the 3 subpoena or order is subject to this Stipulated Order. Such notification shall include a 4 copy of this Stipulated Protective Order; and 5

6 pursued by the Designating Party whose Protected Material may be affected. 7

8 subpoena or court order shall not produce any information designated in this action as 9

(b) promptly notify in writing the party who caused the subpoena or

(c) cooperate with respect to all reasonable procedures sought to be

If the Designating Party timely seeks a protective order, the Party served with the

"CONFIDENTIAL" or "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" before a 10 determination by the Court from which the subpoena or order issued, unless the Party 11 has obtained the Designating Party's permission. The Designating Party shall bear the 12 burden and expense of seeking protection in that Court of its Protected Material -- and 13 nothing in these provisions should be construed as authorizing or encouraging a 14

Receiving Party in this action to disobey a lawful directive from another court. 15

18 produced by a Non-Party in this action and designated as "CONFIDENTIAL" of "HIGHLY 19

Parties in connection with this litigation is protected by the remedies and relief provided 21 by this Stipulated Order. Nothing in these provisions should be construed as prohibiting a 22

(b) In the event that a Party is required, by a valid discovery request, to

24 produce a Non-Party's confidential information in its possession, and the Party is subject 25 to an agreement with the Non-Party not to produce the Non-Party's confidential 26 information, then the Party shall: 27

9. A NON-PARTY'S PROTECTED MATERIAL SOUGHT TO BE

PRODUCED IN THIS LITIGATION

(a) The terms of this Stipulated Order are applicable to information

CONFIDENTIAL -- ATTORNEYS' EYES ONLY." Such information produced by Non-20

Non-Party from seeking additional protections. 23

(1) promptly notify in writing the Requesting Party and the Non-Party

that some or all of the information requested is subject to a

confidentiality agreement with a Non-Party;

(2) promptly provide the Non-Party with a copy of the Stipulated

Order in this litigation, the relevant discovery request(s), and a

reasonably specific description of the information requested; and

(3) make the information requested available for inspection by the

Non-Party.

(c) If the Non-Party fails to object or seek a protective order from this

Court within ten (10) business days of receiving the notice and accompanying 10 information, the Receiving Party may produce the Non-Party's confidential information 11 responsive to the discovery request. If the Non-Party timely seeks a protective order, the 12

Receiving Party shall not produce any information in its possession or control that is 13 subject to the confidentiality agreement with the Non-Party before a determination by the 14

Court. Absent a court order to the contrary, the Non-Party shall bear the burden and 15 expense of seeking protection in this court of its Protected Material. Nothing in these 16 provisions should be construed as authorizing or encouraging a Receiving Party in this 17 action to disobey a lawful directive from another court order restricting disclosure of 18 confidential material. 19

Stipulated Order, the Receiving Party must immediately (a) notify in writing the 23

Designating Party of the unauthorized disclosures; (b) use its best efforts to retrieve all 24 unauthorized copies of the Protected Material; (c) inform the person or persons to whom 25 unauthorized disclosures were made of all the terms of this Stipulated Order; and (d) 26 request such person or persons to execute the "Acknowledgment and Agreement to Be 27

Bound" that is attached hereto as Exhibit A. 28

10. UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL

If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed

Protected Material to any person or in any circumstance not authorized under this 22

4 of production shall not be deemed a waiver of any claim of confidentiality as to such 5 matter. To the extent that material subject to a claim of privilege or other protection is 6 inadvertently produced, the Producing Party shall provide written notice to the Receiving 7

11. INADVERTENT PRODUCTION OF PRIVILEGED OR OTHERWISE

PROTECTED MATERIAL

Inadvertent production of Protected Material without proper designation at the time

Parties as soon as reasonably possible following the discovery of the inadvertent 8 production specifically identifying the material that was inadvertently produced, the nature 9 of the privilege or other protection and the date of discovery of the inadvertent production. 10

"CONFIDENTIAL" Information or Items or " HIGHLY CONFIDENTIAL -- ATTORNEYS' 12

EYES ONLY " in compliance with paragraph 5.2 above (and bearing the same production 13 numbers as the previously undesignated material originally produced)) which replace in 14 the Receiving Party's paper and electronic files of the previously undesignated material 15 originally produced. When a Producing Party gives such notice to the Receiving Parties, 16 the obligations of the Receiving Parties are those set forth in Federal Rule of Civil 17

Procedure 26(b)(5)(B) with the exception that the Receiving Parties shall not use the 18 inadvertently produced material to challenge the privilege or other protection. 19

The written notice shall be accompanied by a copy of the Material (marked as 11

12. MISCELLANEOUS

12.1 Right to Further Relief.

Nothing in this Stipulated Order abridges the right of any person to: (a) apply to the

Court for a further protective order relating to any Protected Material or relating to any 23 discovery in this litigation; or (b) apply to the Court for an order (i) compelling production 24 of documents, (ii) permitting disclosure of Protected Material beyond the scope 25 contemplated by the terms of this Stipulated Order, or (iii) modifying this Stipulated Order 26 in any other manner 27

12.2 Right to Assert Other Objections.

2 otherwise would have to object to disclosing or producing any information or item on any 3 ground not addressed in this Stipulated Order. Similarly, no Party waives any right to 4 object on any ground to use in evidence of any of the material covered by this Stipulated 5

12.3 Filing Protected Material.

By stipulating to the entry of this Stipulated Order no Party waives any right it

Order. 6

8 after appropriate notice to all interested persons, a Party may not file in the public record 9 in this action any Protected Material. A Party intending to file Protected Material under 10 seal must provide three (3) days notice to the other Party either by facsimile or e-mail. 11

Shortly after notice is given, the Parties shall meet and confer concerning whether said 12 material should be filed under seal. If it is determined through the meet and confer 13 process that it is necessary to file the material under seal, the Party intending to file said 14 material under seal must comply with Civil Local Rule 79-5 and General Order 62. 15

Protected Material may only be filed under seal pursuant to a court order authorizing the 16 sealing of the specific Protected Material at issue. Pursuant to Civil Local Rule 79-5 and 17

Protected Material at issue is privileged, protectable as a trade secret, or otherwise 19 entitled to protection under the law. If a Receiving Party's request to file Protected 20

Material under seal pursuant to Civil Local Rule 79-5(d) and General Order 62 is denied 21 by the Court, then the Receiving Party may file the Protected Material in the public record 22 pursuant to Civil Local Rule 79-5(e) unless otherwise instructed by the Court. 23

25 each Receiving Party must return all Protected Material to the Producing Party or destroy 26 such material. As used in this subdivision, "all Protected Material" includes all copies, 27 abstracts, compilations, summaries, and any other format reproducing or capturing any of 28

Without written permission from the Designating Party or a court order secured

General Order 62, a sealing order will issue only upon a request establishing that the 18

13. FINAL DISPOSITION

Within 60 days after the final disposition of this action, as defined in Section 4,

the Protected Material. Whether the Protected Material is returned or destroyed, the 2

Receiving Party must submit a written certification to the Producing Party (and, if not the 3 same person or entity, to the Designating Party) by the 60-day deadline that (1) identifies 4

(by category, where appropriate) all the Protected Material that was returned or 5 destroyed and (2) affirms that the Receiving Party has not retained any copies, abstracts, 6 compilations, summaries or any other format reproducing or capturing any of the 7

Protected Material. Notwithstanding this provision, Counsel are entitled to retain an 8 archival copy of all pleadings, motion papers, trial, deposition, and hearing transcripts, 9 legal memoranda, correspondence, deposition and trial exhibits, expert reports, attorney 10 work product, and consultant and expert work product, even if such materials contain 11

Protected Material. Any such archival copies that contain or constitute Protected Material 12 remain subject to this Stipulated Order as set forth in Section 4. 13

15 together, shall be one and the same document. Faxed (or otherwise electronically 16 transmitted) signatures on this Stipulated Order and/or the "Acknowledgment and 17

This Stipulated Order shall become effective as a stipulation among the Parties

19 immediately upon its execution by Counsel for all Parties, notwithstanding the pendency 20 of approval by the Court. If approval by the Court is ultimately withheld, no Receiving 21

Party shall treat any Protected Material produced to them or generated prior to that time 22 other than as provided in this Stipulated Order without giving the Producing Party 23 sufficient advance notice to allow the Producing Party to apply to the Court for additional 24 relief. 25

26 for the purposes of enforcing this Stipulated Order. 27

14. EXECUTION OF THE STIPULATED ORDER; COURT'S JURISDICTION.

This Stipulated Order may be signed in counterparts, each of which, taken

Agreement to Be Bound" (Exhibit A) shall be deemed binding, as if originals. 18

This Court shall retain jurisdiction over all persons subject to this Stipulated Order

15. INAPPLICABILITY OF THIS STIPULATED ORDER.

Notwithstanding any of the foregoing, this Stipulated Order shall not apply to the

2 disclosure of any Protected Material by any Party in response to its receipt from any 3 governmental entity of a subpoena or other process or order (including but not limited to 4 a grand jury subpoena) to both (1) produce any such Protected Material in connection 5 with a criminal or quasi-criminal investigation and (2) maintain the secrecy of both the 6 request for, and the production of, the Protected Material. Additionally, this Stipulated 7

Order shall not apply to the disclosure of any Protected Material by any Party to the 8 extent that a state or federal statute precludes that Party from disclosing the existence of 9 a subpoena to the Party whose records are sought. 10 11

IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD.

DATED: March 25, 2013 HANSON BRIDGETT LLP By: /s/ Christopher S. Walters GARNER K. WENG CHRISTOPHER S. WALTERS Attorneys for Plaintiffs MACY'S, INC. and MACYS.COM, INC. DATED: March 25, 2013 AMSTER, ROTHSTEIN & EBENSTEIN LLP By: /s/ Anthony F. Lo Cicero ANTHONY F. LO CICERO CHESTER ROTHSTEIN MARC J. JASON JESSICA CAPASSO Attorneys for Plaintiffs MACY'S, INC. and MACYS.COM, INC. DATED: March 25, 2013 KB-ASH LAW GROUP By: /s/ Benjamin Ashurov BENJAMIN ASHUROV Attorneys for Defendant STRATEGIC MARKS, LLC

PURSUANT TO STIPULATION, IT IS SO ORDERED.

EXHIBIT A

ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND

I, _____________________________ [print or type full name], of

_________________ [print or type full address], declare under penalty of perjury that I 5 have read in its entirety and understand the Stipulated Protective Order that was issued 6 by the United States District Court for the Northern District of California on 7

Marks, LLC., U.S. District Court for the Northern District of California, Case No. 11-CV-9

Protective Order and I understand and acknowledge that failure to so comply could 11 expose me to sanctions and punishment in the nature of contempt. I solemnly promise 12 that I will not disclose in any manner any information or item that is subject to this 13

Stipulated Protective Order to any person or entity except in strict compliance with the 14 provisions of this Stipulated Protective Order. 15

16 the Northern District of California for the purpose of enforcing the terms of this Stipulated 17

Protective Order, even if such enforcement proceedings occur after termination of this 18 action. 19 20

City and State where sworn and signed:

[printed name]

Signature: __________________________________

[signature]

_______________ [date] in the case of Macy's Inc. and Macy's.com, Inc. v. Strategic 8

06198-SC. I agree to comply with and to be bound by all the terms of the Stipulated

10

I further agree to submit to the jurisdiction of the United States District Court for

Date: _________________________________ 21

Printed name: ______________________________ 23

20130326

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