my name is alan writer and i represent the plaintiff appellants in this case the subpoena is at issue here and the motion to compel arise from an action pending in the district court in oregon the plaintiffs in that case are adidas and reebok and in that case they've made the claim that t r p has infringed on certain of their trademarks one of the trademarks that is that issue in that litigation that reebok is claiming that our b x infringes on it r b k trademark now the reason we ended up subpoenaing the leagues and then moving to compel was that in the course of discovery we had learned that reebok in two thousand and seven stopped putting our b k on and anything we learned that because of a subpoena we served on a nonparty which gave us a document that reebok had generated but had never actually produced to us in which it it's back flips so backflips in or around two thousand and seven received this document and this document laid out reeboks plans to shift its brand from r b k to the word mark reebok over the course of two thousand and seven through two thousand and nine or two thousand and ten and in that roll out plan specifically referred to the communications it was planning on having with the n h l and the n f l with respect to its plans to rebrand itself now at the time reebok had licensing agreements with both of those between reebok and those leagues and we believed based upon that document in which reebok specifically stated its intent to communicate its rebranding decisions to each of those leagues that there were such communications and as per the letter that we filed yesterday on friday for the very first time a year after we more than a year after we had served documentum in seeking this information reebok actually produced on friday documents showing that it had in fact communicated with the league's concerning its plans to re to the southern district of new york yes or out of the southern district didn't have authority want to know because that's one of the things that makes this kind of awfully either complicated or unusual i'm not sure which because you have a judge we're talking about what a judge in the southern district of new york did and we're talking about are you abuse of discretion pi this judge who really doesn't is not involved in the case is just and involved in the in these subpoenas so she were kind of usually were once removed from and asked to overturn the by an abuse of discretion grounds now in a sense what were twice removed were discretion in a case in which she was not injured that she was not in charge of and that meant i would think makes it very difficult for us and for what well the issue is if it's like a case where she she she does not want to undermine what's going the necessity of your having gone there i'm not saying there's anything wrong with it i'm just trying to look down on the difficulty of our very your judgment as to the southern district your exercise of discretion i  think that task is easier than your honor is suggesting because in the course of rendering her decision below the judge in a very informal way and using quite informal language listed a series of reasons as to why she was the motion to compel not of those reasons withstand scrutiny you talk about the eight different ways how whatever the number was in each of those ways if one looks at them cumulatively or individually none of those withstand analysis for example the judge said if these documents were important we would've sought them earlier than we did and we would have made a motion to compel sooner than we did but we made  today those documents are important to us that ruling contradicted another statement that the judge made which was that we should have made it six months before  plus we should have pursued we back heart of than we did what is your strongest argument looking at those as those eight ways where you think that the district court abused its discretion what is your best argument which one or one i think there actually are all equally improper there is no factual basis there is no legal basis for any one of them and i suppose the court could say well maybe  speculation about whether these documents were important to us whether these documents might contain information that would be relevant in the case the relevance is not cannot seriously be an issue if a party ceases using a trademark and at the time of doing so declares an intent or intent can be inferred that they are not going to reuse that trademark it would constitute an abandonment of the trade so what the leagues were told by reebok what the words the words that reebok used to describe its intent could result in a finding by the district court in oregon that in fact they did a bend in that and this arises in the context at the time we made the motion to compel reebok had had produced around forty thousand documents not one of those documents not a single document addressed the decision they made back in two thousand and seven to drop the use of our b k and switched to reebok it was only the backflips document that articulated the reason and also conveniently for us having a strong word but you're suggesting that they had stuff that they were required to turn over and over and you found out about it by getting it from a third party well we as i said we got documents on friday that have never should have been turned over a year and a half before whether that constitutes contempt ok whether i'm not debating the date but whether it's contempt or whether it justifies in fact the dismissal of of their case against us because it is not the first but is about the sixth or seventh time in which they have violated their discovery obligations where you would and well yes i would your honor because that that's a that's a complete resolution and the issue as to rebox and indeed this is violation of their discovery obligations is not before the court but it's because we never had gotten a single document and we knew from the record from that backflips document that the only way at that point that we could get it would be from the leagues themselves that we serve the subpoenas on the league and then move to compel another aspect of the subpoena is in in june and july of two thousand  sixteen i believe that is correct and there was a long drawn out series of communications an attempt it wasn't until january of two thousand and seventeen that you had the motion to right we were still fighting with reebok over trying to get documents and only when discovery was about to close did we realize at this point we had to try to enforce those subpoenas because reebok has and there's no dispute about th draconian and very aggressive euphemistically referred to as a document retention policy what it really is is a document destruction policy and they've told us from the very beginning of this case that they routinely are e mails out once they reach five years of age in fact at the beginning of the case they refused to turn over anything that they did have that was beyond five years so we've had a long series of fights with reebok as a result of those fights and of the recent order that we submitted to the court that discovery is still ongoing we had no notice in advance of friday that we were going to actually for the first time be seeing communications between reebok and the leagues we have what we do know is that all those documents came from a single custodian there could be multiple custodians whom whom they are now researching with it was an individual at at reebok who had responsibility for communicating with the leagues and and so when the judge said it's sheer speculation that the leagues would actually have anything we believe that that was an abuse of discretion because the backflips document showed that that reebok intended to communicate with the leaks when the judge said i'm concerned about an appearance issue with respect to the district  finding really undercuts rule forty five because under rule forty five we had no choice but to bring the motion to compel here we couldn't bring it in our game because they were not subject to jurisdiction in oregon you have three minutes  meaningful substantive differences i think the only difference and i don't think it's meaningful is the discovery period that t r p one of the n h l to search was ten years and the n f l period was four years we think both are under the burdensome but as a matter of law i think we mention are the legal are you to be clear t r b's motion to compel reflects a backwards approach to discovery that is pursuing documents from a third party rather than from a party to the litigation that unquestionably is in the best position to produce the underlying information we're used to well this court has held repeatedly that where a party seeking discovery from a third party has other avenues that are either more accessible or can be from a party to the litigation than that avenue should be pursued first that was this court's holding i think your honor judge hall and judge sac in the in region are in case where one of the parties produced documents in an l case you held as part of that panel don't burden a third party until you exhaust discovery from the party now based on the record before her which respectfully is the only thing this court should consider on this motion judge code identified at least four maybe as many as eight but i counted for her separate independent and proper reasons to deny his motion first t r be had the ability to pursue the documents from reebok after all this is about reeboks us trademarks and rebox brannock strategy and to grant the motion one view of what you're looking for reebok is what they give us yours goes well i'm not sure i understand the there looking for stuff with which to stick riba right they are but that doesn't mean reebok can avoid its discovery obligations and what judge cote was concerned about was to be represented after a long delay it was finally going to move to compel these documents from reebok when it should have done it back in the summer of sixty and lo and behold even though it's not before this court reebok had the documents and what judge koch was troubled by was for her to rule on the issues that were to be presented to the district court in oregon the trial judge the judge who's deciding the issues in the case who's in the best position here to pass on these documents in those circumstances where you create an issue an appearance issue an issue of commie judge code also recognized based on the information submitted by the leagues that the burden t to the n f l to search documents for a four year period we estimated that would lead to at least seventeen thousand documents that would have to be reviewed for the n h l it's even more than that if you do that because when you say probably two hundred thousand dollars and for the n h l it would be significantly more than that your honor because again what reebok was seeking for the n h l was more than two and a half times at a ten year period and again looking at the proportionality factors under rule twenty six twenty rb had an avenue that it ignored for a year which is to file a motion to compel before judge simon in the district of oregon they ignored that option for a year even waiting three months after judge coats decision to find the information when reebok is in the best of twenty seven thousand so to go back to your time line judge katz in the subpoenas were served i think actually may have twenty sixteen the n h l served its responses and objections in june of sixteen the n f l july first of sixty there was one meeting confirmed in august and at that point it was clear our position was this is about reeboks trademarks reeboks nonuse of those trademarks reeboks products you should be able to get this from reebok you certainly haven't run into the ground at that point there was no back and forth there was no no negotiation there was silence were counsel should have done what judge cote correctly found they should have done was take the avenue that they eventually did which is to pursue that information from a party to the litigation from  reebok your honor it's unclear there are two categories of documents at issue it's unclear whether to be a still seeking any agreements between reebok in the leagues they indicated they withdrew some but not all so let me briefly address that  judge coat found reebok unquestionably was in possession of its license agreements with the leak and had an ability and should and could pursue that ability the ability to get those documents from reebok a judge could also found there was an appearance issue because if that motion to compel was being made again that's the judge who should be deciding that issue and as perhaps best evidence of therapy is lack of diligence i learned yesterday from counsel that one of the agreements that it that's a issue before the court was omitted from their motion to compel before the district of oregon so given to hear of these laxity in pursuing this information from a party to the case they can hardly and should not be allowed to come to this court to seek the and what is your  say why isn't that why is it inappropriate to get them from me but i think both issues were being teed up with the district court so i think that's why there was an appearance issue to be clear in terms of the fifteen thousand hits or seventeen thousand for the n f l chief judge katzman that was using the search term that t r be argued we should be required to search which is to search every document every e mail every electronic document for the word rb cat which is not only a brand of reeboks but it's a commonly used abbreviation for reebok and in fact i looked at some of the hits obviously not all fifteen thousand there are seventeen thousand of them and the e mails i saw when people were using our b k it was we have a meeting at our b k or did you get the jersey from our b k so again this is the proverbial needle in the haystack when our b k to n h l powered by reebok sometime between april and september of two thousand and nine and if we accept that the store is actually run by by reebok don't you think it's it's it's likely that reebok would have had some communications with the n h l about changing the slogan and there's not implicate the the issue of whether the r v kmart was abandoned well i think those communications certainly could have existed but to comply with the proportionality requirements of will twenty six here b has a much higher recognised again given the lack of diligence to be demonstrated in running those issues to the ground with reebok who again is in the best position to provide information about why it is or is it using mark's again this is about reebok state of mind not the n statement and given the parties relative access which is another important factor under the porch analogy analysis reebok of course has access to this information we know that now because they produced it they produced it last friday how how reebok destroys all its documents from prior to two thousand and ten we reached out to rebox counsel and in fact they represented in the declaration before judge code they produced more than six thousand documents from before two thousand and ten the documents that reebok produced last friday there are about fifty or sixty of them i've only seen for council seen all of them i've only seen the ones that are communications with my client they were from two thousand and eight so this notion that reebok so there is no you know what counsel conce has the there is a deletion policy but individual employees have the ability to save emails as most of us do and that doesn't affect documents on the server and we know reebok in fact has produced many many documents before two thousand and ten  and so this is a red herring it's possible moments some of them but you do have that rebar goes and because it's theoretically possible but respectfully third party discovery requires a much higher standard particularly when t r p spent a year before moving to compel the documents from lead back which judge coat found was clear evidence that this was not a critical issue in the case and again it's only two of reeboks products line reebok products reebok has many many of oregon that's what the doctor thank you the injustice of the position taken by the league's here is that in the district of oregon reeboks council has deliberately via has perhaps not the liberally perhaps simply negligent way but one way or another completely violated its discovery obligations as a plaintiff in a case before a federal district court it is not the law and it is not the fact that we waited a year to force reebok to produce these documents reebok did give us sixty one hundred documents predating two thousand and ten not one of them addressed its decision to rebrand back in two thousand and seven and in response to our document demands seeking all the documents that are at issue in the motion to compel reebok did not say we're not going to produce them reebok said we will search and will produce if we find anything that's responsive they then conducted a negligent search now with respect to waiting and being do it tory before the district of argan we shown that after an initial sanctions motion that the judge imposed upon reebok and adidas because a very few still to search the three european pointers for any response of documents judge simon directed the parties not to contact him on a unilateral basis but to contact him only in a joint statement that joint statement took months to prepare and took hundreds of attorney hours because the way it worked was party a would take a position we would respond they would see our response they would change their ears we changed ours it took months to accomplish that it wasn't it wasn't a lack of pursuit it was because the judge wanted a single dispositive document addressing all the outstanding issues that finally got filed the judge rendered a decision over reeboks objection he directed them to provide to to undertake further search chairs and producer sponsored documents and in part that's what led to what happened on friday but it is also not in dispute that reebok did represent that they have this aggressive document retention policy and so although we did get documents on friday that maybe all the documents we ever get there could be hundreds of documents more thousands dealing with this issue because it's clear from the documents we got that there was some friction between the leagues and reebok about that decision to rebrand faced with that what the district court should have done and abused its discretion by not doing was craft a resolution that would reduce the burden upon the leagues while still giving us documents that we require because for us it's a bet the company case if we lose in oregon we're died and we're bankrupt or marks are destroyed and i know i'm about to run out but if i can just suggest a way to craft this is we now know from the documents that we got on friday the identity of it least one person at the leagues with whom reebok communicated it would not be expensive or extant sieve for counsel now to interview those individuals find out from them who else received engage in this discovery and respond to the subpoenas query those individuals about us on their teams would have been involved in dealing with reebok on the decision to rebrand and that might bring the number of potentially potential custodians down from seventeen to three or four and then over the looking for from that limited group would be email communications that they had with reebok about the alternative way of doing it we thought this would be simpler and less expensive because educating a thirty six witnesses a very costly and burdensome process but there was a way and the district court should have pursued it and again abused its discretion by not doing so to try to find a way to accommodate both our needs and the league's needs we have no reason to impose unnecessary burdens on the leagues we don't want them to be reviewing e mails for people who have nothing to respond but now that we got so far support our argument that at the time that reebok shifted its branding from our b k to reebok it was not going to go back to our b k it's not conclusive but it's enough it nice to create an issue of fact before that jury the problem we have is we just got these documents on friday there from one custodian who evidently must have saved them on his own there could be hundreds of others but we'll never we know that unless we get the produced trying to coordinate these two things you're asking us to take into account something that happened on friday we don't know if something else is going to happen this friday in the following friday and each one supports your view that you should be given access to these judge that there's no law that says we have to wait for reebok to go through its process of producing respons documents before asking the league you saying that procedure proceeding is over or it's well we got documents on friday we had no advance notice so fact discovery is in effect still continuing because reebok and indeed us are under orders to search custodians both in the united states and in europe for responsive documents because they had refused to do that in the first instance the problem we have is given that given that document retention policy even though this one custodian had documents that may be it the leaks have never represented before judge culture before this court that they have a similar policy so there is no reason to believe that they in the same way that reebok has destroyed the documents going back to two thousand and seven they've never made that representation so presumably they do and presumably they have a wider universe of documents than we're ever going to get from reebok and there is simply no case law that supports the proposition that the process in oregon has to conclude before the leagues have any burden at all to search for respons documents a subpoena can be served at any time in the course of the case there were other subpoenas served here one of which produced that backflips document reebok should have had that document but they evidently did not let me ask you this we have a mediation process and you have the parties been through mediation in connection with this i'm not even sure where the discovery is going to mediation this was never sent to a mediation process but we would welcome that process just perhaps jeeves commission you folks could confer just briefly and let us know through some simple communication judge and i'm not sure why i would argue with that proposition but yes and i think mediation is a way to do it to achieve what we suggested back before judge conan what we've suggested here which is that there is a way for us to get what we need without overburdening the leagues we can talk about the time period issue we i think there's a way as they outlined before with the least can identify more precisely potential custodians so that the scope of the search is narrowed we're not looking for internal documents exchange between riba between league employees were simply looking for the e mails and there ought to be a way for us to craft that encases support the proposition that rather than simply denying a motion in its entirety a district court judge faced with the facts that judge was presented with should in fact attempt to craft a resolution that is suitable so that neither side is prejudiced  subpoenaing party receives something of value and the receiving party of that subpoena is not overburdened and whether it's done by remaining this back to the lower court or by going through the camp process either way is obviously better than where we are today but more importantly either way is correct and either way is consistent with what courts have held across the country in dealing with issues of the war and that is it seems odd that there is no communication the literal communication between this district court and the district court are going to i mean one would think you in in the real world rather than the world we all live in i mean we lawyers or you pick up the phone say to you you're running this case this stuff or not rather than trying to figure it out yourself based on second hand and third evidence but i take it there is no such procedure if there is well i'm aware of any such procedure it simply is it's not something i would have privy to judges can always pick up the phone and talk to a judge  another district and i doubt that they'd be anything improper about that in in fact as you're suggesting might have advanced this issue so that we wouldn't have to be here today because some of the concerns that judge coats stated i judge i would have to discuss it with my clients and it would be happy to report back to the court within twenty four hours on that issue i think the concern we have is we actually made a proposal that the other side rejected that was limited to one or two custodians for each league and not for years but a narrow time period we made that to avoid having a litigate before judge cut before having to come here and burn this court they rejected it now that they've lost they obviously are grasping at straws but i understand the court's direction i will of course discuss the issue with my clients and report back to the court jo thought that one custodian was simply insufficient under what i've outlined before if they were to interview that custodian at each league and now we know the names of the custodians who received those e mails they could determine from that custodian else at the n h l who else at the n f l were involved in the rebranding discussions and then that universe of people could be narrowed down and we could talk about the time period and we could talk about the number of custodians but simply unilaterally suggesting that it be done with one person was was something we just sent it was a pig in a poke discussion not for us but that's if you go into  mediation i agree except except that counsel said we rejected it and now we're raising it because we lost below but we raised it below and we said there's another way to craft this we can modify this subpoena it isn't simply their way or the highway and it isn't simply the motion to compel is denied its entirety it was up to the district court judge to attempt to accommodate both sides and for the court to say for example she didn't think the material was important