UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF INDIANA 

HAMMOND DIVISION

E.T. PRODUCTS, LLC, ) 

 Plaintiff, ) 

 ) 

 v. ) Cause No.: 2:13-CV-424-PPS-PRC 

 ) 

D.E. MILLER HOLDINGS, INC., et al., ) 

 Defendants. ) 

OPINION AND ORDER 

 This matter is before the Court on Plaintiff, E.T. Products, LLC’s Motion for Entry of 

Protective Order [DE 42], filed on July 3, 2014. Defendants filed a response on August 4, 2014, 

and Plaintiff filed a Reply on August 11, 2014. On August 27, 2014, this Court issued a minute 

order taking the motion under advisement and setting it for a hearing to clarify what the parties 

understood the terms “trade secret” and “confidential information” to mean. The hearing took 

place on September 18, 2014. At that hearing, the Court directed the parties to file a stipulation 

as to their understanding of the terms “confidential information” and “trade secret” as it related 

to the proposed protective order. The parties filed a stipulation on September 26, 2014. 

 This case centers on a dispute about whether Defendants engaged in unlawful 

competition by breaching non-compete clauses they allegedly agreed to. The parties agree that a 

protective order is warranted, but disagree about whether the order should include a provision 

allowing parties to designate discovery documents containing trade secrets as being for attorney 

eyes only. Plaintiff wants this; Defendants do not. 
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 Plaintiff contends that there are two reasons why Defendants should not be able to look at 

Plaintiff’s trade secrets. First, Plaintiff contends that an attorney-eyes-only provision is 

warranted because Plaintiff does not trust Defendants to handle the information properly, given 

the alleged collusion between Defendants and one of Plaintiff’s competitors. Second, Plaintiff 

represents that an attorney-eyes-only provision is in force in a related state-court case involving 

the same competitor Defendants are alleged to have colluded with. Plaintiff represents that the 

state-court order remains in effect and that certain documents that would be responsive to 

Defendants’ discovery requests in this case are already designated as being for attorney eyes only 

in that case. According to Plaintiff, these documents could therefore not be disclosed without 

first amending the related state-court protective order. 

 Defense counsel objects that an attorney-eyes-only designation would unfairly prejudice 

his clients, who could be cross-examined about documents they had never seen before. In 

addition, Defendants represent that they have not retained an expert and that defense counsel, 

who is not an expert in the fuel-additive industry, which is integrally related to this case, would 

not be able to prepare effectively without discussing these documents with his clients. Rather 

than designate documents containing trade secrets as for attorney eyes only, Defendants propose 

that they would agree to not discuss or share in any manner any trade secret or confidential 

information with any outside parties. 

 Under the Federal Rules of Civil Procedure, parties are entitled to obtain discovery 

regarding “any nonprivileged matter that is relevant to any party’s claim or defense.” Fed. R. 

Civ. P. 26(b)(1). Relevant information is defined broadly and need not be admissible at trial, as 

long as it is reasonably calculated to lead to admissible evidence. Id. 
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 Nevertheless, Federal Rule of Civil Procedure 26(c)(1) provides that courts may issue 

protective orders limiting discovery for good cause. Fed. R. Civ. P. 26(c)(1). Rule 26(c)(1) 

“essentially operates to balance the public’s interest in open proceedings against an individual’s 

private interest in avoiding ‘annoyance, embarrassment, oppression, or undue burden or expense 

. . . .’” Id. at 554. Potential limits include specifying the terms of discovery, forbidding inquiry 

into certain matters, limiting the scope of discovery, and “requiring that a trade secret or other 

confidential research, development, or commercial information not be revealed or be revealed 

only in a specified way.” Id. The Court has discretion in deciding when a Protective Order is 

appropriate and what degree of protection is required. Felling v. Knight, 211 F.R.D. 552, 554 

(S.D. Ind. 2003). And “it is not uncommon for courts to limit trade secrets to attorneys’ eyes 

only in protective orders.” Directory Concepts, Inc. v. Fox, 1:08-CV-225, 2008 WL 5263386, at 

*7 (N.D. Ind. Dec. 16, 2008) (citing Cook Inc. v. Boston Scientific Corp., 206 F.R.D. 244, 249 

(S.D. Ind. 2001); Autotech Technologies Ltd. P’ship v. Automationdirect.com, Inc., 235 F.R.D. 

435, 445 (N.D. Ill. 2006) (collecting cases)). 

 The party seeking the protective order has the burden of showing that good cause exists 

for it. Id. “In order to establish that information should be subject to a protective order, the party 

seeking protection bears the burden of establishing: (1) that the information is in fact a trade 

secret or confidential commercial information and (2) that there is good cause to protect the 

information.” Culinary Foods, Inc. v. Raychem Corp., 151 F.R.D. 297, 300 (N.D. Ill. 1993). 

 In light of the sensitivity of the trade-secret information (discussed and defined below), 

the alleged relationship between Defendants and one of Plaintiff’s competitors, and the strictures 

of the state-court protective order, the Court agrees that an attorney-eyes-only provision is an 

appropriate way to protect Plaintiff’s trade secrets. Defendants should nevertheless not be taken 
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by surprise by being asked questions about this information at a deposition or at trial. 

Accordingly, in addition to the provisions laid out below, the Court orders Plaintiff to notify 

Defendant’s attorney, at least five business days before any deposition or trial testimony of its 

intent to question a Defendant about any attorney-eyes-only material. After receiving notice, 

Defense counsel may show the trade-secret information to his client and discuss it. 

 In light of all this, the Court FINDS that Plaintiff has shown good cause for an entry of a 

protective order. The Court accordingly GRANTS E.T. Products, LLC’s Motion for Entry of 

Protective Order [DE 42] and ORDERS as follows. 

1. If any party produces documents, things, or testimony deemed by that party to be 

confidential or proprietary, the documents or tangible things will be conspicuously marked 

“CONFIDENTIAL” and the testimony will be so noted in the record by counsel for the 

testifying witness. Once designated, the testimony, document, or thing identified as confidential 

(referred to as “Protected Material”), may be used by any party for any appropriate purpose at 

trial or other hearing, subject to routine evidentiary objections, if any, and for any legitimate 

purpose during discovery, but such Protected Material must be handled as outlined in this Order 

until further Order of the Court. 

 2. Except as provided below, Protected Material shall not be shown to, discussed 

with, or otherwise disclosed to any person other than to: 

 

 a. Outside attorneys for the parties and regular employees of such attorneys 

assigned to and necessary to assist in this action; 

 

 b. The parties or their officers, directors and employees, to the extent 

necessary for the conduct of this action; 

 c. Bona fide consultants and experts who are not employees or agents of a 

party or direct competitors of a party, to the extent necessary for the 

conduct of this action; 
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 d. Deponents noticed by the parties, to the extent necessary for the conduct 

of this action; and 

 e. Deposition and trial court reporters. 

 3. Before Protected Material is shown to any such persons, they must be advised of 

this Order and its protections, and the persons enumerated in categories (c), (d) and (e) of Section 

2 must be provided with a copy of this Order and acknowledge in writing their agreement to be 

bound by it. 

 4. All Protected Material produced or provided in the course of this litigation shall 

be used solely for the purpose of preparing for trial and the actual trial of this litigation and for 

no other purposes whatsoever, and shall not be disclosed to anyone except in accordance with the 

terms of this Order. Within sixty days after the conclusion of this litigation, Protected Material 

and any copies of it must be returned to the producing party. 

5. Any documents produced subject to the terms of this Protective Order shall be 

considered either “CONFIDENTIAL” or “ATTORNEYS’ EYES ONLY” and shall be given 

confidential treatment as described below. All documents produced subject to this Protective 

Order shall be designated or stamped “CONFIDENTIAL” or “ATTORNEYS’ EYES 

ONLY.”

6. In designating materials, the parties will designate only those portions of materials 

that fall within the specific, demarcated categories of materials identified below. Notwithstanding 

any other provisions of this Order, if materials or documents also contain information that does 

not fall within the specific, demarcated categories of materials, the parties will redact only the 

portions of those materials that fall within the specific, demarcated categories of materials. 
6 

7. In designating materials, the parties will act in good faith to comply with this 

Protective Order. 

8. Information designated as “CONFIDENTIAL” means the following nonpublic information: 

(a) “Non-Party Private Information” defined as home addresses, 

telephone numbers, internet addresses, social security numbers, and tax or 

banking information of non-parties, as well as information regarding the nonparties’ contracts, pricing, discounts, and advertising budgets and expenditures, 

which could be viewed by the customers’ competitors in the marketplace. 

(b) Documents that were marked as “Confidential” and exchanged during the 

underlying litigation in Marshall County, Indiana, and still subject to that court’s 

protective order. 

9. Public disclosure of Non-Party Private Information would risk unnecessary 

annoyance or embarrassment of non-parties, would unfairly and gratuitously invade the privacy 

of non-parties, would subject non-parties to the possibility of identity theft, and would strain the 

business relationships the parties have with such non-parties (as the disseminator of their private 

information). 

10. Information designated as “ATTORNEYS’ EYES ONLY” means the following 

non-public information: 

(a) “Trade Secrets” defined as the following categories of information: 

(i) “Customer Proprietary Information” including, but not limited to 1) custom 

pricing lists and discounts, 2) sales invoices, 3) billing amounts for customers, 

4) sales practices, 5) its customers’ policies and procedures; 6) its customers’ 

preferences, 7) customer lists, 8) contact lists, 9) written and/or electronic 

information regarding specialized needs and requirements of customers, 10) 

written and/or electronic information regarding the needs and requirements of 

customers, and 11) internal company forms. 

(ii) “Client Database Information” defined as those databases, including, but not 
7 

limited to “MAS90,” “Saleslogix,” and updated or replacement database programs 

that manage information associated with clients, prospects, and vendors, which 

includes information such as company name; contact’s name, title, department, 

telephone and facsimile numbers, postal and e-mail address, and web site; notes; 

history; and secondary contact information. 

 

(iii) “Research and Development Information” defined as all data regarding 

product formulations, changes, research, and development of products. 

(iv) “Manufacturer/Distributor Information” defined as all data concerning the 

terms and conditions of any manufacturer and/or distributor agreements with 

third parties governing the purchase, distribution and/or sale of products 

(v) “Financial Information” defined as revenue and expense figures, 

compensation plans, tax and/or banking information, information on investors, 

stockholders, sales and profit margins, gross, net, and profit figures. 

(vi) “Marketing and Sales Information” defined as all data concerning current 

and future business development, marketing plans, reports, studies, and internal 

sales training information and materials. 

 (b) “Highly Confidential Business Information” defined as identities, 

street addresses, telephone numbers, and internet addresses of customers; customer 

preferences and purchasing habits; point or contact persons through which sales have been 

made; and data quantifying sales, discounts, sales order timing, costs and/or pricing, and 

the value of orders by the parties’ customers. 

(c) “Proprietary Personnel Information” defined as the identity, position, 

territory, work history, qualifications, evaluations, and salary and benefits of current 

employees of the parties. 

(d) Documents that were marked as “Attorney Eyes Only” and exchanged during the 

underlying litigation in Marshall County, Indiana, and still subject to that court’s protective 

order. 

11. As argued by Plaintiff in its Motion for Protective Order, harm could reasonably 

result from the disclosure of ATTORNEYS’ EYES ONLY information to either the public or 

to opposing parties. 

12. CONFIDENTIAL or ATTORNEYS’ EYES ONLY information may be found 

in any document (whether in hard copy or digital form), deposition transcript, interrogatory 
8 

answer, response to a request for admission and/or production, or other information provided in 

this action or portion thereof. 

13. CONFIDENTIAL or ATTORNEYS’ EYES ONLY documents or information 

shall not be exhibited, disseminated, copied, or in any way communicated to anyone for any 

purpose whatsoever, other than in conjunction with this litigation. Except as provided for in this 

Protective Order, the parties shall keep all documents or information covered by the terms of 

this Protective Order from all persons. 

14. Neither the receiving party nor its representatives shall disclose documents 

designated as CONFIDENTIAL, other than to the following persons: 

(a) The parties’ designated representatives or counsel in this action; 

(b) Employees of the parties’ counsel acting at the direction of 

counsel, and assigned to and necessary to assist such counsel in the 

preparation or trial of this action; 

(c) Independent experts and consultants retained by any party who 

have executed the agreement found in Exhibit A and whose 

assistance is necessary for the preparation of trial of this specific 

action; and 

(d) Witnesses for each party provided that such witnesses expressly 

agree to comply with the terms of this Protective Order and 

provided that such witnesses shall be allowed to review the 

CONFIDENTIAL documents or information, but shall not be 

provided with copies of the CONFIDENTIAL documents or 

information. 

(e) The Court (including any agent of the Court) and any court 

reporter used during depositions. 

The parties and their designated representatives will maintain the confidentiality associated with 

those documents designated as CONFIDENTIAL and will not disclose or otherwise share such 

information with anyone other than their designated counsel of record in this action at any time 
9 

either during the pendency of this action or subsequent to the conclusion of the litigation. To the 

extent CONFIDENTIAL documents are used as exhibits or attachments to any filing with the 

Court in the above-captioned litigation, the party so using the CONFIDENTIAL documents 

will file on the record the documents with the CONFIDENTIAL information redacted and will 

file the unredacted documents with the Court in a sealed envelope prominently marked with the 

caption and docket number of the case, a description of the contents of the envelope, the legend 

“CONFIDENTIAL: SUBJECT TO PROTECTIVE ORDER,” and a statement substantially 

in the following form: 

This envelope contains documents which were filed in this cause by [name of 

party] in conjunction with [name of pleading] (or for the purpose of trial), and is 

not to be opened, nor the contents to be displayed or revealed except by, or upon 

order of, the Court. 

This notwithstanding any party wishing to file anything under seal must file a separate and 

specific motion for such protection as provided for by Local Rule 5-3. The motion will only be 

granted for good cause shown and if consistent with Seventh Circuit Court of Appeals case law 

regarding filing materials under seal. 

15. Counsel for the receiving party shall not disclose documents designated as 

ATTORNEYS’ EYES ONLY other than to the following persons: 

(a) Attorneys for the parties in this action, including in-house 

attorneys, and those assigned to and necessary to assist such 

counsel in the preparation or trial of this action, including their 

assistants, associates, paralegals, clerks, and stenographic personnel 

assigned to and necessary to assist such counsel in the preparation 

or trial of this action; 

(b) Independent experts and consultants retained by any party who 

have executed Exhibit A and whose assistance is necessary for the 

preparation of trial of this specific action; 

(c) Any party who appears as an author, addressee, or recipient on the 
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face of the document; and 

(d) The Court (including any agent of the Court) and any court 

reporter used during depositions. 

To the extent an “ATTORNEYS’ EYES ONLY” document is used as an exhibit or attachment to 

any filing with the Court in the above-captioned litigation, the party so using the document will file 

on the record documents with the ATTORNEYS’ EYES ONLY information redacted and will 

file the un-redacted ATTORNEYS’ EYES ONLY documents with the Court in a sealed 

envelope prominently marked with the caption and docket number of the case, a description of 

the contents of the envelope, the legend “ATTORNEYS’ EYES ONLY: SUBJECT TO 

PROTECTIVE ORDER,” and a statement substantially in the following form: 

This envelope contains documents which were filed in this cause by [name of 

party] in conjunction with [name of pleading] (or for the purpose of trial), and is 

not to be opened, nor the contents to be displayed or revealed except by, or upon 

order of, the Court. 

This notwithstanding any party wishing to file anything under seal must file a separate and 

specific motion for such protection as provided for by Local Rule 5-3. The motion will only be 

granted for good cause shown and if consistent with Seventh Circuit Court of Appeals case law 

regarding filing materials under seal. 

16. Counsel may orally describe to their clients, in a summary and general fashion only, 

the nature and type of any ATTORNEYS’ EYES ONLY information received that is reasonably 

necessary to advise and counsel their client regarding strategy and settlement. Counsel may seek 

permission of counsel for the disclosing party to have particular “ATTORNEYS’ EYES ONLY”

documents or information presented to and/or viewed by a party’s representatives. To do so, the 

requesting party must submit a verbal or written request that references the specific document(s) by 

a description sufficient to identify the document(s) the requesting party’s counsel is seeking 
11 

permission to show his client(s). 

In the event a dispute arises as a result of this procedure or as a result of any denial of a 

specific request, the parties shall confer and attempt to resolve such dispute. In the event a dispute 

cannot be resolved after the parties have met and conferred, the person or party challenging the 

confidentiality and/or disclosure of a particular document may submit that discovery dispute to the 

Court for consideration. Nothing in this Protective Order shall be construed as precluding a party 

from seeking additional protection from the Court against the disclosure or production of any other 

confidential information, including an order that such information not be disclosed or that it be 

disclosed only in a designated manner. 

17. Nothing in this Protective Order precludes or limits a party from viewing its 

own confidential or attorneys eyes only documents. 

18. The use of CONFIDENTIAL or ATTORNEYS’ EYES ONLY documents or 

information at trial must be addressed at the final pretrial conference. 

19. CONFIDENTIAL or ATTORNEYS’ EYES ONLY documents or information 

subject to this Protective Order shall not be made public by counsel for the receiving party or 

divulged to anyone other than the persons entitled to access such information under paragraphs 14 

and 15. Any such persons shall be advised of, and shall agree in writing to, the terms of this 

Protective Order. In the event that a non-party witness refuses to agree to be bound by this 

Protective Order, the parties will endeavor to resolve the issue among themselves. 

20. This Protective Order shall not be construed as an admission: (i) that any material 

or document designated as confidential is, in fact, confidential; (ii) as to the correctness or truth of 

any allegation made or position taken relative to any matter designated as confidential; or (iii) 

with respect to the competency, relevance or materiality of any document or thing designated as 
12 

confidential. This Protective Order shall not be used for any evidentiary purpose other than in 

relation to the enforcement of its terms. 

21. A party shall designate all other Confidential Information disclosed during any 

deposition in this matter as “CONFIDENTIAL” by notifying all parties in writing, within 

thirty days of receipt of the transcript, of the specific pages and lines of the transcript that 

contain Confidential Information. Each party shall attach a copy of such written notice to the 

face of the transcript and each copy thereof in its possession, custody, or control. 

22. Nothing shall prevent disclosure beyond the terms of this Protective Order if any 

party expressly consents to such disclosure, either in writing or in the record of any proceeding 

in this litigation, or if the Court, after notice to all affected parties, orders such disclosure. 

23. This Protective Order shall not prohibit disclosure of CONFIDENTIAL or 

ATTORNEYS’ EYES ONLY documents or information to the Court or Court personnel 

(including any court for purposes of appellate review) at any time. 

24. Any party and any interested member of the public can challenge the secreting of any 

particular documents. If a party or an interested member of the public makes such a challenge, the 

party who designated the material shall be allowed to oppose any such challenge. The party who 

designated the material shall bear the burden of proof to show that the material is entitled to 

protection. 

25. In the event that a producing party discovers that CONFIDENTIAL or 

ATTORNEYS’ EYES ONLY materials have been inadvertently produced without being marked 

with the appropriate designation, the producing party may thereafter notify the receiving party or 

parties and require the latter to retrieve and return any unmarked or incorrectly marked material and 

to substitute appropriately marked materials, provided (i) that the producing party has initially 
13 

taken reasonable measures to identify and designate such material, (ii) that the producing party 

notifies the receiving party or parties promptly after learning of such inadvertent failure, and (iii) 

that the amount of material as to which an assertion of inadvertent failure is made is reasonably 

small in amount. Upon receipt of such notification from the producing party, the receiving party or 

parties shall not thereafter disclose any such material or any information contained therein to any 

persons who are not entitled to receive such information as set forth above in Paragraphs 14 and 15. 

However, the receiving party or parties are not liable with respect to any prior disclosure or use of 

such material, so long as that disclosure was otherwise consistent with the terms of this Order. 

26. The inadvertent production of any privileged or otherwise protected or exempted 

information shall not be deemed a waiver or impairment of any claim of privilege or protection 

including but not limited to the attorney-client privilege, work product doctrine, or the 

confidential nature of any such information, provided that the producing party shall promptly 

notify the receiving party and require the receiving party to retrieve and return any such 

material, and counsel shall not use such information for any purpose until further order of the 

Court. Any analyses, memoranda, or notes that were generated based upon such inadvertentlyproduced information must, from that point onward, be treated as if it had been properly 

designated. 

27. Prior to the trial of this matter, the parties shall confer in good faith in an effort to 

reach agreement concerning a joint proposal to the Court with respect to the handling of 

CONFIDENTIAL or ATTORNEYS’ EYES ONLY Materials at trial, and shall make such 

proposal no later than the final pre-trial conference in this case. If the parties are unable to reach 

agreement on this subject, each party may make its own submission to the Court no later than 

the final pretrial conference. 
28. Within sixty days of the final conclusion of all aspects of this litigation, including 

any and all appeals the parties shall identify all persons to whom designated materials were 

produced, providing a copy of each executed undertaking and shall either (a) assemble and return to 

the person providing information designated as CONFIDENTIAL or ATTORNEYS’ EYES 

ONLY all such material in his or her possession or (b) destroy all such material in his or her 

possession, delivering to the person providing such information a written certificate that he or she 

has complied with this Order. Notwithstanding the foregoing, at the close of the case, the parties 

may retain a copy of CONFIDENTIAL or ATTORNEYS’ EYES ONLY that were filed with the 

Court, used at trial, or made an exhibit to a deposition so long as such documents are held in the 

strictest confidence and remain subject to the provisions of this Protective Order. 

29. The restrictions embodied in this Protective Order shall be binding on the party 

to whom such CONFIDENTIAL or ATTORNEYS’ EYES ONLY material is disclosed 

unless and until there is a showing that: (i) information which is so designated as confidential 

was or has become public knowledge absent a breach of the restrictions embodied herein, or (ii) 

such information was already known to the party to whom such disclosure was made through a 

third party who himself has not breached any confidential relationship that existed or exists 

between such third party and the party making the disclosure. 

SO ORDERED this 20th day of October, 2014. 

s/ Paul R. Cherry f

 MAGISTRATE JUDGE PAUL R. CHERRY 

 UNITED STATES DISTRICT COURT 

cc: All counsel of record 
Exhibit “A” 

Written Acknowledgement of Protective Order 

 ___________________________________ declares that: 

 I reside at _______________________ in the city of________________, county 

_____________, state of ______________________; 

 I am currently employed by ___________________________________, located at 

__________________________________________________, and my current job title is 

______________________. 

 I have read and believe I understand the terms of the Protective Order regarding 

Confidential Information, dated October 17, 2014, filed in Cause No.: 2:13-CV-424-PPS-PRC, 

pending in the United States District Court for the Northern District of Indiana. I agree to comply 

with and be bound by the provisions of the Protective Order. I understand that any violation of 

the Protective Order may subject me to sanctions by the Court. 

 I shall not divulge any information, electronic or otherwise, documents, or copies of 

documents, designated “Confidential” or “Attorney Eyes Only” obtained pursuant to such 

Protective Order, or the contents of such documents and/or electronic information, to any person 

other than those specifically authorized by the Protective Order. I shall not copy or use such 

information and/or documents except for the purposes of this action and pursuant to the terms of 

the Protective Order. 

 As soon as practical, but no later than sixty days after final termination of this action, I 

shall return to the attorney from whom I have received any documents in my possession 
designated “Confidential” or “Attorney Eyes Only,” and all copies, excerpts, summaries, notes, 

digests, abstracts, and indices relating to such documents. 

 I submit myself to the jurisdiction of the United States District Court for the Northern 

District of Indiana for the purpose of enforcing or otherwise providing relief relating to the 

Protective Order. 

 I declare under the penalty of perjury that the foregoing is true and correct. 

 Executed on _________________ _________________________ 

 (Date) (Signature)