No. 03 C 9421 Page 3

violate his professional obligations. At the same time, we note that this case has been
particularly contentious. Plaintiff's legal team may be well advised to keep him out of the loop
respecting materials relating to defendant’s future plans and strategies unless his knowledge
is necessary for the prosecution of the case. But we leave that to them.

The parties shall submit a draft protective order conforming to the above by

September 28, 2004.

Sernes 8, Mera

Q JAMES B. MORAN
enior Judge, U.S. District Court

So 16,2004



‘inte Outer Form (06/97)

United States District Court, Northern District of Ilinois

or Magis Judge James B. Moran “Than Auigned Jodie
CASE NUMBER 03 C9421 DATE 9/17/2004
CASE AMERICAN HARDWARE MANUFACTURERS vs. REED ELSEVIER, INC.
TITLE

of the motion being presented,]

[In the Following box (a) indicate the party filing the motion, e.g, plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

MOTION:
MEMORANDUM OPINION AND ORDER
DOCKET ENTRY:
ql) Oo Filed motion of [ use listing in “Motion” box above.]
(2) oa Brief in support of motion due
@) o Answer brief to motion due___. Reply to answer briefdue___.
(4) Oo Ruling/Hearing on setfor sat
(5) ao Status hearing[held/continued to] [set for/re-set for] on setfor at.
() Oo Pretrial conference[held/continued to] [set for/re-set for]on__setfor__——ss at.
(o) a Trial[set for/re-set for]on__—_at
(8) a [Bench/Jury trial] [Hearing] held/continuedto__—_at
(9) o This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

QUFRCP4(m) CLocal Rule 41.1 CIFRCP41(a\(1) OFRCP41(a)(2).

(il) [For further detail see order attached to the original minute order.]

ao {Other docket entry] | Enter Memorandum Opinion And Order. The parties shall submit a draft
protective order conforming to the above (memorandum opinion and order) by September 28, 2004.

No notices required, advised in open court.

No notices required.

Notices mailed by judge's staff.
Notified counsel by telephone.

av | Docketing to mail notices.

Mail AO 450 form. on sn
Copy to judge/magistrate judge, J¥so9 1 9 1s10
one Ly sh id LI das h00e
Le deputy's
“ { Ratertime renpivell sb
‘central Clerk's Office



UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

D0cKerEy
AMERICAN HARDWARE SEp 21
MANUFACTURERS ASSOCIATION, 2004

a Delaware not-for-profit corporation,
Plaintif€,

vs. No: 03 C 9421
REED ELSEVIER, INC., a Massachusetts
corporation and REED EXHIBITIONS, a
division of Reed Elsevier, Inc., and
_, ASSOCIATION OF EXPOSITIONS &
SERVICES, a division of Reed Elsevier, Inc.,
and FREEMAN DECORATING CO.
(a/k/a The Freeman Companies), an Iowa
corporation, and FREEMAN DECORATING
SERVICES, INC., (a/k/a The Freeman
Companies), a Texas corporation,

Defendants.

eS SS Se Swe rw ers

MEMORANDUM OPINION AND ORDER

On August 23, 2004, plaintiff filed a motion to compel. Reciting its version of recent
history, it complained that defendants wanted a protective order that required it to raise
objections to confidentiality designations and then justify them. On September 7, 2004, the
Reed defendants submitted their version of recent history. It, wisely, withdrew from its prior
position that the party attacking confidentiality had the burden of persuasion, but continued
to believe that the party objecting to a confidentiality designation should be the one to raise
it with the court. They also wished to preclude William P. Farrell , Jr., a partner in plaintiff's

firm who is one of plaintiff's lawyers in this case, from access to materials designated “highly


No, 03 C9421 ° Page 2

confidential”, which are “attorneys eyes only” trade secrets materials. Attorney Farrell is the
son of the present vice-chairman of plaintiff's board and former president and CEO and the
brother of plaintiff's current president and CEO. Accordingly, the defendants, attorney
Farrell has long represented plaintiff and advised the company respecting its business plans
and dealings. According to plaintiff he is not and never has been an officer, director or in-
house counsel of the plaintiff; he is and has been a partner in the law firm. And plaintiff in
its reply, raises a new wrinkle. It contends that material and information arising during the
course of the parties continued relationship cannot be confidential because they all were privy
to them.

The scope of the lawsuit remains in doubt. If it extends back through the pre-release
period, much of the materials may indeed have been previously shared and, accordingly, not
within the ambit of “highly confidential”. That does not necessarily mean, however, that none
of it is confidential. There are other competitors out there. Nor are we persuaded that the
party seeking to maintain confidentiality must be the one to bring the dispute to the attention
of the court. That contemplates an extra step: a party designates a document as confidential,
opposing party disagrees and so advises the designating party, and sometime thereafter, before
the opposing party discloses it, seeks court protection. A more orderly procedure is for the
party who opposes the designation to seek to strike it. We are talking only about a means of
initiating a judicial resolution. Clearly, the party seeking to maintain confidentiality has the
burden of persuasion.

Finally, we do not believe attorney Farrell should be precluded from access. He is an

officer of the court, subject to the court’s orders, and we have no reason to believe he would