In Opternative, Inc. v. Jand, Inc., 17-CV-6936 (RA)(SN)(S.D.N.Y. July 12, 2019), a New York Magistrate Judge granted in part and denied in part Defendant’s motion to compel Plaintiff to produce printouts of two files of source code, a log file, and a listing of directories and files despite such material being covered by a previously entered protective order.
This case stems from allegations of unlawful use of information that Plaintiff claimed Defendant employed to launch a competing service, with the crux of the litigation related to the underlying source code. During the course of litigation, the parties agreed to a protective order in which “any material designated as ‘Highly Confidential — Source Code’ will not be produced in a native format…Instead, the source code must be ‘made available for inspection, in a format allowing it to be reasonably reviewed and searched, during normal business hours or at other mutually agreeable times at an office of the Producing Party’s counsel or another mutually agreed upon location’…The on-site review is highly circumscribed…It must be conducted in a ‘secured room without Internet access or network access to other computers’…The inspecting party is prohibited from copying, removing, or transferring any files from the secure location…The inspecting party may, however, request printouts ‘of limited portions of source code that are reasonably necessary for the preparation of court filings, pleadings, expert reports, discovery responses, or demonstratives (‘Papers’), or for deposition or trial, but shall not request paper copies for the purposes of reviewing the source code other than electronically.’”
Pursuant to the Order, Plaintiff designated their source code as highly confidential and Defendant’s counsel and expert inspected the source code in May 2019. Following their review of the source code, Defendants requested printouts of twenty files, consisting of 12,000 lines of code.
In response, Plaintiff argued that such a request was not compliant with the Protective Order but would be open to considering a narrower request. In response, Defendant proferred the following: 1) two files of source code comprised of 354 lines of code; 2) a log file; and 3) a directory of the files contained in the source code. Plaintiff refused this request again on the grounds that the request for the two files violated the Protective Order and that it would only produce the log and directory if Defendant agreed to a reciprocal exchange.
In ruling on Defendant’s request regarding the source code, the Court held that Plaintiff’s belief that the Protective Order would allow the use of printouts during the deposition but would prohibit requests for the purpose of preparing for depositions was “frivolous” and stated that “[t]hat definition would require attorneys writing their deposition outlines to sit in a secured room with the source code, away from their offices, without access to the internet or any other network. That is a significant burden that also would do nothing to promote the confidentiality of the source code.” Further, the Court held that Defendant had provided a “reasonably necessary basis for the request” that “likely would [not] be narrowed with further on-site review.”
With regard to the log file request, the Court referred to the impasse as “truly strange” and ordered Plaintiff to produce the file, ruling that “Plaintiff has not demonstrated anything resembling good cause” for denying the request and that their contention of the Defendant’s definition of “Highly Confidential — Source Code” was “an airing of grievances” and “not a basis for denying Defendant’s motion.”
As for the file directory request, the Court denied Defendant’s motion without prejudice and stated: “Instead of blindly tilting the balance of this standoff, the Court will reserve its judgment. If Plaintiff or Defendant is unable to obtain file directories to its satisfaction, then they should file properly supported briefing with the Court.”