United States District Court, E.D. Michigan, Southern Division
OPINIONANDORDER GRANTING PLAINTIFF'S MOTION FOR
Gershwin A. Drain United States District Court Judge
before the Court is Plaintiff's Motion for Protective
Order. Dkt. No. 50. Plaintiff requests a protective order to
prevent Defendant from taking the deposition of
Plaintiff's General Counsel. For the reasons stated
below, this Court will grant Plaintiff's Motion.
Jaguar Land Rover Limited, filed the present complaint on
September 6, 2016 against Defendant Bombardier Recreational
Products. Dkt. No. 1. In its complaint, Plaintiff alleged
trademark infringement, unfair competition, and a violation
of the Michigan Consumer Protection Act. Id. at pg.
2 (Pg. ID 2). On March 3, 2018, Plaintiff filed its Motion
for Protective Order. Dkt. No. 50. Plaintiff requests that
this Court prohibit Defendant from taking the deposition of
its General Counsel, Anna-Lisa Corrales. Defendant filed a
response on March 19, 2018 opposing the Motion. Dkt. No. 54.
On April 30, 2018, Plaintiff filed its reply under seal. Dkt.
Rule of Civil Procedure 26(c)(1) allows a party to move for a
protective order to prevent a deposition. A court may grant a
protective order for good cause. See Id. In
addition, the Sixth Circuit has adopted more stringent
requirements under the Shelton test for requests
to depose opposing counsel. Discovery from opposing counsel
is only allowed when: (1) no other means exist to obtain the
information ...; (2) the information sought is relevant and
nonprivileged; and (3) the information is crucial to the
preparation of the case.” Nationwide Mut. Ins. Co.
v. Home Ins. Co., 278 F.3d 621, 628 (6th Cir. 2002).
Applicability of Shelton
contends that Shelton is not applicable to this case
because Ms.Corrales is not litigating this case and
Plaintiff's litigation strategy will not be exposed. Dkt.
No. 54, pg. 15 (Pg. ID 1106). Plaintiff asserts that the
Shelton rule is applicable because Ms. Corrales is
litigation counsel, as she oversees all litigation for
Plaintiff. Dkt. No. 62, pg. 7 (pg. ID 1265). Additionally,
Ms. Corrales has been involved in strategic decisions
regarding the enforcement of the trademark in issue for many
Shelton, the Eighth Circuit considered the
applicability of the Shelton rule to deposing the
supervising in-house counsel of American Motors Company.
Shelton, 805 F.2d at 1326-27. The court held that
deposing opposing counsel must meet the Shelton
Shelton opinion itself suggests that the
applicability of the rule extends beyond trial counsel. The
Shelton court considered the application of the
Shelton rule to a company's supervising in-house
counsel, and not trial counsel. Further, in this case, Ms.
Corrales is properly categorized as litigation counsel
because she oversees all litigation for Plaintiff. The cases
cited by Defendant to argue that Shelton is not
applicable are factually distinct from this case, as analyzed
in Plaintiff's reply brief. See Dkt. No. 62,
pgs. 6, 7 (Pg. ID 1265, 1266). Therefore, this Court holds
that the Shelton test is applicable to this case,
and will proceed to analyze under Shelton.
one of the Shelton test requires that there are no
other means to obtain the information sought by the counsel
the party wishes to depose. Nationwide Mut. Ins.
Co., 278 F.3d at 628. Prong two of the Shelton
test requires that the information sought is relevant and not
privileged. Id. Defendant states that it seeks
information from Corrales about her process of preparing the
trademark registration renewal, also known as the trademark
prosecution process. Dkt. No. 54, pg. 14 (Pg. ID 1105).
Defendant asserts that Corrales is the only witness who can
testify about the preparation of the trademark registration