IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON 

PORTLAND DIVISION 

WANKE CASCADE DISTRIBUTION LTD, an 

Oregon corporation, 

Plaintiff, 

v. 

FORBO FLOORING, INC., a Delaware 

corporation, 

Defendant. 

ACOSTA, Magistrate Judge: 

3: 13-cv-768-AC 

OPINION AND ORDER 

The parties seek the couti's renewed assistance to resolve their disagreement over the 

form of protective order to be used in this breach of contract and intentional economic 

interference case between two flooring products industty competitors. The court conducted a 

discovery conference on Februaty 20, 2014, to resolve this and other discovety disputes between 

the parties. During the discovety conference the court directed counsel to confer further 

regarding the form of protective order and, if their disputes remained unresolved, to submit to 

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Case 3:13-cv-00768-AC Document 38 Filed 04/11/14 Page 1 of 6
the court their respective proposed protective orders no later than March 28, 2014. 1 Counsel 

conferred and resolved additional disagreements but could not reach full agreement on the 

protective order dispute. Consequently, both sides submitted to the court a letter brief, with 

attachments, explaining their respective positions on the protective order. 2 The comt heard 

additional argument on Aprilll, 2014. 

Wanke argues certain of its documents produced to Forbo should be afforded "Attorney's 

Eyes Only" ("AEO") protection to prevent Forbo from obtaining a competitive sales advantage 

in the flooring products business. Forbo argues AEO protection is unwarranted because Wanke 

has not demonstrated patticularized harm would result from disclosure of these documents to 

Forbo employees, and because its employees must review the documents to advise Forbo's 

counsel regarding the strength of Wanke's claims. 

The court finds good cause exists to enter a two-tier protective order that permits the 

patties to designate documents as either "Confidential" or "Attorney's Eyes Only." Concurrent 

with this Opinion and Order, the court enters the form of protective order to be used in this case, 

which fmther specifies the good cause finding and identifies the precise categories of documents 

which may be designated "AEO". A prompt decision on the issue is required because of the 

1 The transcript of this hearing appears in the court file as Document No. 32. 

2 These submissions are filed in the court record along with this Opinion and Order. 

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Case 3:13-cv-00768-AC Document 38 Filed 04/11/14 Page 2 of 6
proximity of scheduled depositions and the importance to ongoing document production. 

Accordingly, and because the parties and their lawyers are familiar with the arguments and legal 

authorities surrounding the protective order issue, this Opinion and Order addresses only the 

pivotal points of the dispute, and incorporates by reference and citation background and legal 

authority. 

First, for the applicable standards the comt refers to and incorporates herein by reference 

those authorities cited and discussed in Foltz v. State Farm Mutual Ins. Co., 331 F.3d 1122 (9th 

Cir. 2003), Brown Bag Software v. Symantec Cmp., 960 F.2d 1465 (9th Cir. 1992), Santella v. 

Grizzly Indus., Inc., Civil No. 3:12-mc-00131-SI, 2012 WL 5399970 (D. Or. Nov. 5, 2012), and 

Tinn v. E}.iM Labs, Inc., 556 F. Supp. 2d 1191 (D. Or 2008). Foltz established the general 

framework for entering and modifYing protective orders; Brown Bag, Santella and Tinn provide 

guidance for resolving the current dispute. 

In Santella, the patties agreed to an protective order that included an AEO designation 

option, but a dispute arose when the defendant moved to disclose to its retained expert a 

subpoenaed third-party's confidential information. The third-party argued a substantial risk of 

competitive harm would result and AEO protection should apply to preclude review by 

defendant's expert. Defendant argued it needed to rely on its expert's analysis of the 

confidential information, and defendant's expeti agreed to be bound by the protective order's 

nondisclosure requirements. The court concluded defendant's expeti could receive and review 

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the confidential information. It first reviewed the "risk of inadvertent disclosure," an assessment 

that turned on whether the retained expert was a "competitive decision-maker." 2012 WL 

5399970, at *4-5. The court found the expert was not, as he had no involvement in the 

defendant's business operations and his knowledge of the third-party's confidential information 

could not be used to the third-party's competitive detriment. Id. at *5-*7. 

Here, there is a high risk of inadvertent disclosure of Wanke's competitively sensitive 

information because the Forbo employee most likely to review Wanke's confidential information 

and advise Forbo's lawyers is Forbo's general manager. Forbo's counsel stated at hearing that 

Forbo's general manager is the likely Forbo employee with whom counsel would consult 

regarding Wanke's confidential pricing information, customer lists, and similar data; the 

company's relatively small size eliminated suitable substitutes at lower levels of responsibility in 

the company. The can be no reasonable disagreement that Forbo's general manager is a, if not 

the, competitive decision-maker for the company, and this status distinguishes him from the 

expert in Santella. There, the court found no meaningful risk of inadvertent disclosure by the 

defendant's expert because the expert was not "in a position to effectuate or direct decisions 

made using knowledge that is tainted by [third-party's] confidential information." 2012 WL 

5399970, at *6. Here, the Forbo's general manager occupies that exact position. The expert in 

Santella worked independently and was not involved with defendant's business operations. 

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Here, Forbo's general manager is- and, in fact, might be, based on its counsel's descriptions of 

the general manager's role in the company- Forbo's business operations. 

Nor can Forbo's general manager's assurance of non-disclosure or non-use protect 

Wanke here, as did Santella expe1i's assurance protect the third-party's competitive information 

under the facts of that case. The Forbo general manager's role is similar to that of the general 

counsel in Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir. 1992). There, 

plaintiff's in-house counsel served as plaintiff's "sole legal advisor," and the district judge found 

the relevant question to be whether plaintiffs counsel's employment would necessarily entail 

advising plaintiff in areas relating to defendant's trade secrets: 

The magistrate expressly credited in-house counsel's integrity and good faith. 

The magistrate had to consider, however, not only whether the documents could 

be locked up in cabinets, but also whether Brown Bag's counsel could lock-up 

trade secrets in his mind, safe from inadvertent disclosure to his employer once he 

had read the documents. As the U.S. Steel court suggested, the magistrate 

therefore inquired into counsel's responsibilities as Brown Bag's sole legal 

advisor and pers01mel manager. 

960 F.2d at 1471. Here, Forbo's general manager's responsibilities at least involve decisionmaking on pricing and other areas of Forbo's business that overlap similar areas of Wanke's 

business and contained within Wanke's confidential information. As with the in-house counsel 

in Brown Bag, Forbo's general manager cannot reasonably be expected to "lock-up" Wanke's 

trade secrets in his mind to prevent inadvertent disclosure in his decision-making role as Forbo's 

general manager. 

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The court also finds that, on this record, Forbo has not demonstrated a substantial risk of 

prejudice if the AEO designation option is available in this case. Forbo has not shown an 

inability to find an expert who can supply its lawyers with the same knowledge and expertise 

apparently possessed by Forbo's general manager or by other competitive decision-makers who 

work for Forbo. Again, Brown Bag provides guidance. The court there found plaintiff failed to 

demonstrate prejudice because its concerns were too speculative, it failed to demonstrate 

prejudice, it had "never attempted" to employ an independent consultant, and it failed to show 

undue burden. 960 F.2d at 1471-72. Here, Forbo references each of these points but only as 

potential hindrances, burdens, or prejudices. Fmiher, because the protective order the court will 

enter provides a procedure for removing the AEO designation, Forbo's concerns are adequately 

addressed and balanced against Wanke's interests in safe-guarding its competitively sensitive 

information. 

IT IS SO ORDERED. 

DATED this ij~eyof April, 2014. 

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