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IN THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF FLORIDA

PANAMA CITY DIVISION

In Re

SLEP-TONE ENTERTAINMENT 

CORPORATION, CONSOLIDATED CASES Case No: 5:11cv32/RS/CJK

O R D E R

This discovery matter is before me on Defendants’ Motion to Compel Better

Answersto Defendants’ Deposition Questions(doc. 126) and Plaintiff’s Response to

Defendants Donovan’s Reef and Green Glass Mall’s Motion to Compel (doc. 129). 

In the motion, defendants Donovan’s Reef Lounge & Package Store, Inc., and Green

Glass Mall, Inc. (“Donovan’s Reef”), take issue with deposition answers provided by

Mr. Kurt Slep, appearing as Slep-Tone’s designee under FEDERAL RULE OF CIVIL

PROCEDURE 30(b)6). Donovan’s Reef has attached a brief excerpt of the deposition

to its motion, and apparently intends for this excerpt to inform the court as to exactly

what question or questions Mr. Slep improperly refused to answer. I will assume this

is the case because nowhere in the Donovan’s Reef motion does Donovan’s Reef

specifically identify the questions to which it seeks to compel an answer.

This case has been brought by Slep-Tone against a number of defendants. 

Slep-Tone is a company that produces products known as “compact disc plus

graphics” and “MP3 plus graphics.” (Doc. 1, pp. 2-3). These products are used by

entertainment venues wishing to offer karaoke to patrons. In its complaint, Slep-Tone

generally alleges that persons known as “karaoke jockeys” have swapped or copied

Slep-Tone’s intellectual property which had been stored on the compact discs and

MP3 products, and are illegally using Slep-Tone’s product to promote karaoke

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businesses. The action is brought under the Trademark Act of 1946, 15 U.S.C. §§

1114, 1125. The claimagainst Donovan’s Reef was originally brought in this district

in civil action number 5:11cv69. This claim has now been consolidated with a

number of pending claims brought by Slep-Tone against various entertainment

purveyors alleged to be illegally using Slep-Tone’s karaoke products. (Doc. 63).

Frommy review ofthe deposition excerpts(doc. 126-2), I have determined that

counsel for Donovan’s Reef inquired repeatedly concerning the basis for Slep-Tone’s

lawsuit against Donovan’s Reef (doc. 126-2, pp. 16, 18, 19). The most concise

question to which Donovan’s Reef would like an answer appears at page nineteen of

the deposition where counsel says: “But how do you know Donovan’s Reef did what

you’re claiming? What’s the basis for your lawsuit against Donovan’s Reef?” At that

point the deponent, Mr. Slep, said “My attorney has all the information” and counsel

for Slep-Tone interposed a work product objection. Counsel for Slep-Tone then

stated that he would not produce any information concerning the basis of the lawsuit

against Donovan’s Reef. The question before me, then, is whether plaintiff SlepTone should be compelled to provide to defendant Donovan’s Reef a factual

description of the proof Slep-Tone believes will carry the day in its claim against

Donovan’s Reef. 

Plaintiff, in its response to the motion (doc. 129), claims that an answer to the

question posed by Donovan’s Reef “is attorney work product, because it comprises

written reports from counsel’s investigator generated for the purpose of enabling

counsel to determine whether or not to sue and on what grounds.” (Doc. 129, p. 3). 

This is not an accurate representation of the question asked at the deposition. Instead,

the question posed to Mr. Slep merely inquired asto the evidentiary basis upon which

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the copyright infringement lawsuit has been brought. Although investigative reports

utilized by attorneys in determining whether to bring the lawsuits, and which

defendants should be included, may well qualify as work product, that question is not

before the court. The simple question is whether a RULE 30(b)(6) deponent may be

compelled to summarize the proof and facts upon which plaintiffrelies to substantiate

its allegations in this lawsuit. This is not a difficult question. 

The federal work product doctrine, originally enunciated in Hickman v. Taylor,

329 U.S. 495 (1947), is codified in FEDERAL RULE OF CIVIL PROCEDURE 26(b)(3),

and provides: “(A) Ordinarily, a party may not discover documents and tangible

things that are prepared in anticipation of litigation or for trial by or for another party

or its representative (including the other party’s attorney, consultant, surety,

indemnitor, insurer, or agent).” “The work-product doctrine . . . is intended to

preserve a zone of privacy in which a lawyer can prepare and develop legal theories

and strategy ‘with an eye toward litigation,’ free from unnecessary intrusion by his

adversaries.” United States v. Adlman, 134 F.3d 1194, 1196 (2d Cir. 1998) (quoting

Hickman, 329 U.S. at 510-11). The scope of the work product doctrine derives from

its purposes:

The work product doctrine protects from disclosure documents and

tangible things prepared in anticipation of litigation by or for a party or

by or for that party’s attorney acting for his client. Fed. R. Civ. P.

26(b)(3); In re Grand Jury Proceedings, 601 F.2d 162, 171 (5th Cir.

1979). The doctrine applies only to documents a party has assembled

and not to facts learned from those documents. Hickman, 329 U.S. 495,

67 S. Ct. 385; United States v. Pepper’s Steel &Alloys, Inc., 132 F.R.D.

695, 697 (S.D. Fla. 1990) (citing In Re Alexander Grant & Co.

Litigation, 110 F.R.D. 545, 548 (S.D. Fla. 1986)). Accord Smith v.

Insurance Co. of No. America, 30 F.R.D. 534, 538 (M.D. Tenn. 1962);

Cedolia v. C.S. Hill Saw Mills, Inc., 41 F.R.D. 524, 527 (M.D.N.C.

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1967). Thus, the doctrine cannot be used as a shield against discovery

of the facts that have been learned, the identity of the persons who

learned such facts, or the existence or non-existence of documents, even

though the documents themselves may not be subject to discovery.

Pepper’s Steel, 132 F.R.D. at 697; Cedolia, 41 F.R.D. at 527; Smith, 30

F.R.D. at 538.

Henderson v. HolidayCVS, L.L.C., 269 F.R.D. 682, 687-88 (S.D.Fla. 2010) (footnote

omitted).

A similar question has been presented recently in an action between competing

breweries. In Bear Republic Brewing Company v. Central City Brewing Company,

275 F.R.D. 43 (D. Mass. 2011), plaintiff Bear Republic wished to utilize a deposition

to discover facts learned by an investigator employed by the defendant during the

course of investigation. The court summarized the question and its answer as

follows:

The next issue is whether Bear Republic is entitled to discover the

facts which were learned by the investigator during the course of his

investigation. The answer is manifestly in the affirmative. In the case

of Laxalt v. McClatchy, 116 F.R.D. 438 (D. Nev., 1987), the Court dealt

with an attempt to depose two investigators hired by defendants and

held that:

[B]oth deponents must answer questions which seek to

discover all relevant facts in the case, regardless of whether

those facts were discovered in their roles as defendants’

investigators, or before those employment relationships

were created.

Laxalt, 116 F.R.D. at 442–43 (citing Eoppolo v. National Railroad

Passenger Corp., 108 F.R.D. 292 (E.D. Pa., 1985) (and further

collecting cases). See also United States v. Dentsply International, Inc.,

187 F.R.D. 152, 155–56 (D. Del., 1999)). However, the Court noted

that “... there is a possibility that a discussion of factual matters may

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reveal counsel’s tactical orstrategic thoughts.” Id. at 443 (citing Powell

v. United States Dept. of Justice, 584 F. Supp. 1508, 1520 (N.D. Cal.,

1984)). “The work product privilege protects intangible work product

as well as what Fed. R. Civ. P. 26(b)(3) calls ‘documents and tangible

things’.” Nesse, etc. v. Pittman, 202 F.R.D. 344, 356 (D.D.C., 2001)

(citing Alexander v. FBI, 192 F.R.D. 12, 17 (D.D.C., 2000); Athridge v.

Aetna Cas. &Sur. Co., 184 F.R.D. 200, 209 (D.D.C., 1998); Laxalt, 116

F.R.D. at 441; Delco Wire &Cable, Inc. v. Weinberger, 109 F.R.D. 680,

691 (E.D. Pa., 1986)). As a result, at a deposition of an investigator,

counsel must “... carefully tailor his questions in the deposition, so as to

elicitspecific factual material, and avoid broad based inquiries, ... which

could lead to the disclosure of trial strategies.” Laxalt, 116 F.R.D. at

443 (citing Powell, 584 F. Supp. at 1520).

To be clear, the Court rules that what is discoverable are the facts

Mr. Staples learned during the course of his investigation. Unless there

has been a waiver of the work-product protection, see infra, as noted,

Rule 26(b)(3)(A), Fed. R. Civ. P., protects from disclosure “...

documents and tangible things that are prepared in anticipation of

litigation or for trial by or for another party ...”. And it is clear that Mr.

Staples’ work was for a “party”, Central City, and was done “in

anticipation of litigation or for trial.” Thus, any reports Mr. Staples

prepared for Central City’s counsel would not be discoverable (absent

waiver), but the facts recited in the reports would be. For these reasons,

the Court will not quash the subpoena to Mr. Staples to the extent that

Bear Republic seeks testimony respecting the facts which he uncovered

during the course of his investigation.

Id. at 45-46.

Based upon the authorities noted above, and clearly consistent with the purpose

of work product protection, questioning an opponent as to what factual information

it will rely upon to support the case is perfectly appropriate discovery which does not

impermissibly invade counsel’s thought processes. The work product rule is not

implicated merely because one party asks the other for the facts which support its

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position. Bregman v. District of Columbia, 182 F.R.D. 352, 356 (D.D.C. 1998); see

also United States v. Pepper’s Steel & Alloys, Inc., 132 F.R.D. 695, 699 (S.D. Fla.

1990) (noting that deponent can be required to identify the factual basis for specific

claims asserted in litigation). “Otherwise, every witnessthat . . . counsel preparesfor

deposition pursuant to Rule 30(b)(6) could assert the work product doctrine on the

basis that he learned the facts while reviewing documentsselected by [counsel].” Id.

Simply put, “the privilege does not apply to underlying facts which can be explored

during deposition.” In re Alexander Grant & Co. Litigation, 110 F.R.D. 545, 548

(S.D. Fla. 1986).

As in the cases discussed above, the information sought by Donovan’s Reef

concerns the facts upon which the litigation is based. As of yet, these defendants

have not sought (at least to the knowledge of this court) production of the documents

substantiating those facts, and thus the question of whether investigative documents

are privileged is not before the court. The holding in Bear Republic is actually

broader than any ruling sought by Donovan’s Reef in that Bear Republic, the party

to the litigation, actually sought to depose its opponent’s investigator. In the present

case, the deposition in question is a RULE 30(b)(6) deposition of a corporate

representative who did not himself do the investigation. The suggestion that the

corporate representative cannot be compelled to disclose an outline of the facts

supporting the claim is not consonant with the work product privilege. To carry this

to its logical extent, one might inquire what would happen if Donovan’s Reef were

to file a motion for summary judgment stating that no facts have been brought forth

to substantiate the allegations in the complaint. Would Slep-Tone then respond that

it could not reveal these facts because they are part of its work product? If Slep-Tone

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did so, it might well be faced with an adverse summary judgment, and it is not

conceivable that Slep-Tone would choose this course of litigation. 

Accordingly, it is ORDERED:

1. At the expense of plaintiff Slep-Tone Entertainment Corporation, Mr.

Kurt Slep will appear for a deposition, at a mutually agreeable time, but within two

weeks of the date of this order, pursuant to the original Notice of Deposition filed in

this case (doc. 126-1). Slep-Tone Entertainment Corporation will bear all costs of

this deposition, including the court reporter.

2. At such deposition, Mr. Slep must provide the facts learned by SlepTone during the course of its investigation into the alleged copyright violations as

those facts pertain to Donovan’s Reef and Green Glass Mall.

3. Plaintiff will not be required to provide any true work product, including

disclosure of trial strategy, or documents and tangible things that have been actually

prepared in anticipation of litigation. To be clear, the facts known to Slep-Tone

which would support the claims advanced against these defendants must be disclosed

in the RULE 30(b)(6) deposition.

4. Pursuant to FEDERAL RULE OF CIVIL PROCEDURE 37, I find that SlepTone’s refusal to answer the deposition question was not substantially justified. 

Accordingly, I will award reasonable expensesincurred by Donovan’s Reef in pursuit

of this motion. Counsel for Donovan’s Reef will file an affidavit of expenses

incurred, including attorneys fees, within ten days of the date of this order. Plaintiff

will be allowed ten days in which to respond.

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DONE AND ORDERED this 11 day of April, 2012.

th

/s/Charles J. Kahn, Jr.

CHARLES J. KAHN, JR.

UNITEDSTATESMAGISTRATEJUDGE

Case No: 5:11cv32/RS/CJK

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