Discovery and Pre-Trial Investigations in Copyright

February 20, 2013 – WestlegalEd Center

Raymond J. Dowd Luke McGrath

Partner Partner

Dunnington Bartholow & Miller LLP lmcgrath@dunnington.com

1359 Broadway #600

New York NY 10018

rdowd@dunnington.com

Dowd is the author Copyright Litigation Handbook (West 2011 Ed)(cited as “CLH”). Copyright

Litigation Handbook is available in hard copy for easy portability and deskside use or available

to Westlaw subscribers through the database ID COPYLITIG.

McGrath is a former prosecutor and experienced litigator.

A FEW DISCOVERY PRACTICE TIPS

1. First step should always be a litigation hold letter.

Philips Electronics North America Corp. v. BC Technical, 773 F. Supp.2d 1149 (D.

Utah)(awarding sanctions of judgment, attorneys fees, and spoliation sanctions for failure to

issue litigation hold, intentional destruction of documents, and subsequent misrepresentations to

the court).

A party’s discovery obligations do not end with the implementation of a “litigation hold” to the

contrary, that’s only the beginning. Counsel must oversee compliance with the litigation hold,

monitoring the party’s efforts to retain and produce the relevant documents. Proper

communication between a party and her lawyer will ensure (1) that all relevant information (or at

least all sources of relevant information) is discovered, (2) that relevant information is retained

on a continuing basis; and (3) that relevant non-privileged material is produced to the opposing

party.” Zubulake v. UBS Warburg LLC, 2004 WL 1620866 (S.D.N.Y. July 20, 2004) (“Zubulake

V”).

2. Consider expedited discovery

A number of district courts have found good cause to permit expedited discovery under the

Federal Rules where the recording industry has IP addresses for individuals who have illegally

distributed or downloaded music, but do not have the name of the person whose computer was

assigned that address. See Capitol Records, Inc. v. Doe, No. 07-cv-1570, 2007 WL 2429830

(S.D.Cal. Aug. 24, 2007) (granting subpoena for information from University of California, San

Diego); Warner Bros., Records Inc. v. Does 1-4, No. 2:07-cv-424, 2007 WL 1960602 (D.Utah

July 5, 2007) (granting subpoena for information from Off Campus Telecommunications);

Warner Bros. Records, Inc. v. Does 1-20, No. 07-cv-1131, 2007 WL 1655365 (D. Colo. June 5,

2007) (granting subpoena for information from Quest Communications); Arista Records, LLC v.

Does 1-9, No. 07-cv-628, 2007 WL 1059049 (D. Colo. April 4, 2007).

Courts typically have found good cause based upon (1) allegations of copyright infringement,

(2) the danger that the ISP will not preserve the information sought, (3) the narrow scope of the

information sought, and (4) the conclusion that expedited discovery would substantially

contribute to moving the case forward. See e.g. Capital Records, Inc. 2007 WL 2429830 at *1.

Plaintiffs in this case seek expedited discovery in order to gain access to documents that would

identify each Defendant's true name, address (current and permanent), telephone number, email

address, and Media Access Control (MAC) address. Arista Records, LLC v. Does 1-9, 2008

WL 2982265 (S.D. Ohio 2008).

3. Discovery as a collaborative process

Many attorneys seek to use meet and confer strategically as a means of “winning” in a

discovery battle. An adept practitioner will be wary of such strategies, but will also approach

discovery in the maner the Courts have sought to craft it: a cooperative collaborative process in

which both clients win if the lawyers work together to produce the correct materials in the most

cost-effective manner. Courts have increasingly imposed duties upon counsel conducting

electronic discovery to cooperate. E.g., Mancia v. Mayflower Textile Servs. Co., 2008 WL

4595175 (D. Md. Oct. 15, 2008).

From the case:

Before proceeding further on a discovery dispute, the court ordered the parties to meet

while keeping in mind the statement in Fed. R. Civ. P. 26(g)(1)(B)(iii) that discovery must be

proportional to what is at stake in the litigation.

Plaintiffs in a collective action alleging failure of defendants to provide overtime pay

filed motions to compel further discovery responses by defendants. The court reviewed

defendants’ objections to plaintiffs’ discovery and found apparent violations of Fed. R. Civ. P.

26, 33, and 34 because defendants failed to state objections with specificity and apparently failed

to make a “reasonable inquiry” before responding.

After a hearing, the court ordered the parties to meet to resolve their differences. The

court pointed out that Fed. R. Civ. P. 26(g) required a reasonable inquiry by the attorney before

requesting or responding to discovery. The growing concern over the expense of litigation,

especially with the advent of electronic discovery, could be addressed, according to the court, if

lawyers met and conferred before initiating discovery to discuss the amount in controversy and

how to conduct discovery that was proportional to what was at stake. The court stated that the

requirement of discovery being proportional to what was at issue was effectively stated by Rule

26(g)(1)(B)(iii) and Rule 26(b)(2)(C)(i)-(iii).

The court noted that the Sedona Conference had issued a Cooperation Proclamation that had

the laudable goal of achieving transparent discovery. In the meantime, the court provided the

parties with guidance on the requirements of Rules 26(b)(2)(C) and 26(g). Counsel were ordered

to meet “to quantify a workable ‘discovery budget’ that is proportional to what is at issue in the

case,” to consider phased discovery with initial production of least burdensome or expensive

sources of information, and to present the court with a status report in a format required by the

court identifying any unresolved issues.

I. Initial discovery considerations

Rule 26(d) of the Federal Rules of Civil Procedure generally provides that formal

discovery will not commence until after the parties have conferred as required by Rule 26(f).1

Courts may permit expedited discovery before the Rule 26(f) conference upon a showing of good

cause.2 Good cause exists where the need for expedited discovery, in consideration of the

administration of justice, outweighs the prejudice to the responding party.3

Rule 26(d) provides:

A party may not seek discovery from any source before the parties have conferred as

required by Rule 26(f), except in a proceeding exempted from initial disclosure under Rule

26(a)(1)(B), or when authorized by these rules, by stipulation, or by court order.4

1 Fed. R. Civ. P. 26(d) and (f); American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066-67 (C.D. Cal. 2009);

Qwest Communications Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003) (footnote

added); In re Countrywide Financial Corp. Derivative Litigation, 542 F. Supp. 2d 1160, 1179 (C.D. Cal. 2008),

subsequent determination, 554 F. Supp. 2d 1044 (C.D. Cal. 2008); Ayyash v. Bank Al-Madina, 233 F.R.D. 325,

326, 63 Fed. R. Serv. 3d 680 (S.D. N.Y. 2005). 2 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066-67 (C.D. Cal. 2009), citing In re Countrywide Fin.

Corp. Derivative Litig., 542 F. Supp. 2d at 1179; Semitool, Inc. v. Tokyo Electron America, Inc., 208 F.R.D. 273,

276 (N.D. Cal. 2002); see also Qwest Communications Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418,

419 (D. Colo. 2003) (party seeking expedited discovery prior to Rule 26(f) conference has burden of showing good

cause); Merrill Lynch, Pierce, Fenner & Smith, Inc. v. O'Connor, 194 F.R.D. 618, 623 (N.D. Ill. 2000) (expedited

discovery requires plaintiff show prima facie the need for the expedited discovery). 3 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066-67 (C.D. Cal. 2009), citing In re Countrywide

Financial Corp. Derivative Litigation, 542 F. Supp. 2d 1160, 1179 (C.D. Cal. 2008), subsequent determination, 554

F. Supp. 2d 1044 (C.D. Cal. 2008). 4 Fed. R. Civ. P. 26(d)(1).

"The good cause standard may be satisfied where a party seeks a preliminary

injunction."5 However, expedited discovery is not automatically granted merely because a party

seeks a preliminary injunction, so where a plaintiff seeks expedited discovery to prepare for a

preliminary injunction hearing, the court will consider the entirety of the record and the

reasonableness of the request in light of the circumstances.6 Factors commonly considered in

determining the reasonableness of an expedited discovery request include, but are not limited to:

(1) whether a preliminary injunction is pending; (2) the breadth of the discovery requests; (3) the

purpose for requesting the expedited discovery; (4) the burden on the defendants to comply with

the requests; and (5) how far in advance of the typical discovery process the request was made.7

In every case, the court has the discretion, in the interests of justice, to prevent excessive or

burdensome discovery.8 By asking for expedited discovery that is not narrowly tailored to

preliminary issues, a plaintiff risks having its entire application denied.9

Where the identity of a defendant is unknown, a defendant may seek leave for discovery

prior to a Rule 26(f) conference by ex parte motion.110

Discovery in copyright cases follows the

same principles under the Federal Rules of Civil Procedure as do other litigations. Try to get as

much information as possible through informal channels prior to filing suit. Once the litigation is

commenced, you must provide copies to your adversary of all communications to third parties

seeking evidence. In cases involving adversaries such as counterfeiting operations, the evidence

is likely to disappear quickly once notification occurs, so ex parte relief should be considered.

Where the potential copyright litigation involves specialized knowledge, such as music or

software cases, it may be advisable to hire an expert prior to drafting the complaint and filing the

case. Make sure to conduct a thorough client interview.11

A copyright registration certificate is

not only prima facie evidence of copyright ownership, but also a jurisdictional prerequisite to

filing suit in federal court. Make sure to obtain the copyright registration certificate from the

Copyright Office prior to filing suit.12

Using the expedited “special handling” procedure, the

certificate may be obtained in as little as five business days.13

5 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066-67 (C.D. Cal. 2009), citing Qwest

Communications Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003); see also El Pollo

Loco, S.A. de C.V. v. El Pollo Loco, Inc., 344 F. Supp. 2d 986, 991 (S.D. Tex. 2004) (expedited discovery for

preliminary injunctions or challenges to personal jurisdiction). 6 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1067 (C.D. Cal. 2009), citing Merrill Lynch, Pierce,

Fenner & Smith, 194 F.R.D. at 624 (footnote added). 7 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1067 (C.D. Cal. 2009), citing Disability Rights Council

of Greater Washington v. Washington Metropolitan Area Transit Authority, 234 F.R.D. 4, 6 (D.D.C. 2006)

(citations omitted); Qwest Communications Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419 (D.

Colo. 2003). 8 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1067 (C.D. Cal. 2009), citing Qwest Communications

Intern., Inc. v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003); Wachovia Securities, L.L.C. v.

Stanton, 571 F. Supp. 2d 1014, 1050 (N.D. Iowa 2008). 9 American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071 (C.D. Cal. 2009).

10 Arista Records LLC v. Does 1-27, 584 F. Supp. 2d 240, 253, 239 Ed. Law Rep. 476 (D. Me. 2008); UMG

Recordings, Inc. v. Doe, 2008 WL 4104214, *3 (N.D. Cal. 2008); Arista Records LLC v. Does 1-19, 551 F. Supp.

2d 1, 6, 233 Ed. Law Rep. 645 (D.D.C. 2008). 11

See Chapter 3, §§3:1 et seq. 12

See Chapter 4, §§4:1 et seq. 13

See Chapter 5, §§5:1 et seq.

Many issues in copyright litigation are resolved on motion practice, ex parte applications,

or hearings not involving juries. From the beginning, it is important to case strategy to think

about how to collect admissible evidence to support every aspect of the case and to ensure where

possible that early rulings on admissibility are obtained to avoid surprise at trial. Even where a

defendant defaults in answering, a plaintiff will still be called upon to establish facts permitting

the court to determine liability.14

II. Preservation orders

Federal courts have the implied or inherent power to issue preservation orders as part of

their general authority to manage their own affairs so as to achieve the orderly and expeditious

disposition of cases.15

Inherent powers must be exercised with restraint and discretion.

16 In determining

whether to grant a request for a preservation order, the Court of Claims has adopted a

streamlined two-prong standard that "requires that one seeking a preservation order demonstrate

that it is necessary and not unduly burdensome."17

The Court of Claims has explained this

standard precludes consideration of "whether plaintiff is likely to be successful on the merits of

its case in deciding whether to protect records from destruction."18

To meet the first prong of this test, the proponent ordinarily must show that absent a court

order, there is significant risk that relevant evidence will be lost or destroyed--a burden often met

by demonstrating that the opposing party has lost or destroyed evidence in the past or has

inadequate retention procedures in place. More than that, the proponent must show that the

particular steps to be adopted will be effective, but not overbroad--the court will neither lightly

exercise its inherent power to protect evidence nor indulge in an exercise in futility.19

Some federal courts, however, have found the streamlined two-prong standard of the

Court of Claims to be inadequate, and instead have adopted a "balancing test" which considers

the following three factors:

1) the level of concern the court has for the continuing existence and maintenance of the

integrity of the evidence in question in the absence of an order directing preservation of

the evidence; 2) any irreparable harm likely to result to the party seeking the

14

See Apple Computer Inc. v. Micro Team, 2000 WL 1897354 (N.D. Cal. 2000) (declining to enter a default

judgment without evidence). 15

American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-72 (C.D. Cal. 2009), citing Pueblo of Laguna v.

U.S., 60 Fed. Cl. 133, 135-36 (2004) (quoting Link v. Wabash R. Co., 370 U.S. 626, 630-31, 82 S. Ct. 1386, 1389, 8

L. Ed. 2d 734, 6 Fed. R. Serv. 2d 831 (1962)). 16

American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-1072 (C.D. Cal. 2009), citing Chambers v.

NASCO, Inc., 501 U.S. 32, 44, 111 S. Ct. 2123, 2132, 115 L. Ed. 2d 27, 19 Fed. R. Serv. 3d 817 (1991). 17

American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-1072 (C.D. Cal. 2009), citing Pueblo of Laguna v.

U.S., 60 Fed. Cl. 133, 138 (2004). 18

American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-1072 (C.D. Cal. 2009), citing Pueblo of Laguna v.

U.S., 60 Fed. Cl. 133, 138 n.8 (2004). 19

American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-72 (C.D. Cal. 2009), citing Pueblo of Laguna v.

U.S., 60 Fed. Cl. 133, 138 n.8 (2004).

preservation of evidence absent an order directing preservation; and 3) the capability of

an individual, entity, or party to maintain the evidence sought to be preserved, not only

as to the evidence's original form, condition or contents, but also the physical, spatial

and financial burdens created by ordering evidence preservation.20

The difference between these two tests lies in what the moving party must show with

respect to the content of the evidence that is in danger of being destroyed.21

This test also rejects

consideration of the "proof of a probability of success in the litigation" factor, as well as the

"public interest" factor, generally considered when determining injunctive relief.22

Where a

plaintiff makes overbroad requests, fails to address the risk that evidence will go missing or be

destroyed, fails to explain the need for the preservation order, and fails to address the burden that

would be imposed upon the defendants, a court may deny an application for a preservation

order.23

III. Mandatory initial disclosure under Rule 26

After filing the complaint, mandatory disclosure under Rule 26 will be the first evidence

that the parties will need to exchange. Mandatory disclosures must be made in writing, signed

and served.24

Failure to comply with Rule 26(a) can lead to a pleading being stricken.25

Attorneys who are not familiar with federal practice may find these procedures strikingly

different from their usual practices. Rule 26 requires this exchange to take place after an initial

conference between the parties to agree on a discovery plan.26

Under Rule 26, this initial

conference, known as a “Rule 26(f) Conference,” is to take place between the parties and not

involving the court, and has a very specific agenda.

The parties must develop a proposed discovery plan that indicates the parties' views and

proposals concerning:

• what changes should be made in the timing, form, or requirement for disclosures under

Rule 26(a), including a statement as to when disclosures under Rule 26(a)(1) were made or

will be made;27

• the subjects on which discovery may be needed, when discovery should be completed,

and whether discovery should be conducted in phases or be limited to or focused upon

particular issues;28

• what changes should be made in the limitations on discovery and what other limitations

should be imposed;29

and

20

American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1071-72 (C.D. Cal. 2009), citing Capricorn Power Co.,

Inc. v. Siemens Westinghouse Power Corp., 220 F.R.D. 429, 433-34 (W.D. Pa. 2004) (footnote omitted) 21

American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1073 (C.D. Cal. 2009), citing Treppel v. Biovail Corp.,

233 F.R.D. 363, 370 (S.D. N.Y. 2006). 22

American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1073 (C.D. Cal. 2009), citing Capricorn Power Co., Inc.

v. Siemens Westinghouse Power Corp., 220 F.R.D. 429, 433 n.1 (W.D. Pa. 2004). 23

American LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1073-74 (C.D. Cal. 2009) 24

Fed. R. Civ. P. 26(a)(4). 25

Chanel, Inc. v. Kouzniakova, 2008 WL 2741133, *1 (E.D. N.Y. 2008) (striking answer). 26

Fed. R. Civ. P. 26(f). 27

Fed. R. Civ. P. 26(f)(1). 28

Fed. R. Civ. P. 26(f)(2). 29

Fed. R. Civ. P. 26(f)(3).

• any other discovery orders that the parties intend to seek from the court.30

Absent agreement between the parties extending the time to exchange evidence, 14 days

after the Rule 26(f) conference, the following evidence must be exchanged:

• the name and, if known, the address and telephone number of each individual likely to

have discoverable information that the disclosing party may use to support its claims or

defenses, unless solely for impeachment, identifying the subjects of the information;31

• a copy of, or a description by category and location of, all documents, data

compilations, and tangible things that are in the possession, custody, or control of the party

and that the disclosing party may use to support its claims were defenses, unless solely for

impeachment;32

• the computation of any category of damages claimed by the disclosing party, making

available for inspection and copying as under Rule 34, the documents or other evidentiary

material, not privileged or protected from disclosure, on which such computation is based,

including materials bearing on the nature and extent of injuries suffered;33

and

• for inspection and copying as under Rule 34 any insurance agreement under which any

person carrying on an insurance business may be liable to satisfy part or all of the judgment

which may be entered in the action or to indemnify or reimburse for payments made to

satisfy the judgment.34

It is important to check local rules, the judge's individual rules, and local practices in the

very early stages of the litigation. Under Rule 26(f), the foregoing information is presumptively

discoverable immediately unless the parties agree otherwise or objections were timely raised to

the court.35

In federal practice, conferring with an adversary on issues relating to discovery may

avoid needless expense and delay, particularly where both sides agree. Rule 29 of the Federal

Rules of Civil Procedure permits many of the discovery procedures mandated by the rules to be

varied by the parties. Parties may try to bifurcate discovery on liability and damages, but where a

discovery plan benefits only one party and prejudices another, it may be rejected.36

Federal Rule of Civil Procedure 26 requires parties to disclose the discovery requested

regarding any nonprivileged matter that is relevant to any party's claim or defense.37

The Rule

also provides that a party who has made disclosures such as responses to interrogatories or

requests for production of documents, "must supplement or correct its disclosure or response in a

timely manner if the party learns that in some material respect the disclosure or response is

incomplete or incorrect, and if the additional information has not otherwise been made known to

the other parties during the discovery process."38

Rule 37(c)(1) gives teeth to these requirements

30

Fed. R. Civ. P. 26(f)(4). 31

Fed. R. Civ. P. 26(f)(1)(A). 32

Fed. R. Civ. P. 26(f)(1)(B). 33

Fed. R. Civ. P. 26(f)(1)(C). 34

Fed. R. Civ. P. 26(f)(1)(D). 35

Fed. R. Civ. P. 26(a). 36

See, e.g., Persian Carpet, Inc. v. L. & J.G. Stickley, Inc., 2010 WL 1052266, *2 (M.D. N.C. 2010) (rejecting a

bifurcation plan based on discovery only into the defense of copyright ownership). 37

Fed. R. Civ. P. 26(b)(1). 38

Fed. R. Civ. P. 26(e)(1)(A).

by forbidding the use at trial of any information required to be disclosed by Rule 26(a) that is not

properly disclosed.39

Rule 37 provides in pertinent part: "A party that without substantial

justification fails to disclose information required by Rule 26(a) or 26(e)(1), or to amend a prior

response to discovery as required by Rule 26(e)(2), is not, unless such failure is harmless,

permitted to use as evidence at a trial, at a hearing, or on a motion any witness or information not

so disclosed."40

IV. Pretrial disclosures

Absent a court order or agreement of the parties to the contrary, 90 days prior to trial, the

following additional evidence must be disclosed:

• the identity of any expert witnesses;41

• written expert reports;42

• the names and addresses of any additional expected witnesses;43

• the designation of any witnesses whose testimony will be presented by deposition

excerpts, along with the pertinent portions of the deposition testimony;44

and

• an identification of each document or other exhibit (including summaries of other

evidence) separately identifying those which the party expects to offer and those which the

party may offer if the need arises.45

V. Additional discovery tools

In addition to the automatic disclosure, parties may obtain discovery by one or more of

the following methods:

• Depositions upon oral examination under Rule 3046

• Depositions upon written questions under Rule 3147

• Written interrogatories under Rule 3348

• Request for or subpoena for production of documents or things or permission to enter

upon land or other property for inspection and other purposes under Rule 34 or Rule 4549

• Physical and mental examinations under Rule 3550

• Requests for admission under Rule 3651

• Letters rogatory for parties and nonparties outside the United States

39

Fed. R. Civ. P. 37(c)(1). Microsoft Corp. v. EEE Business Inc., 2008 WL 4369773, *2 (N.D. Cal. 2008); Yeti by

Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106, 59 U.S.P.Q.2d 1833, 50 Fed. R. Serv. 3d 319 (9th Cir.

2001). 40

Fed. R. Civ. P. 37(c)(1). 41

Fed. R. Civ. P. 26(a)(2)(A). 42

Fed. R. Civ. P. 26(a)(2)(B). 43

Fed. R. Civ. P. 26(a)(3)(A). 44

Fed. R. Civ. P. 26(a)(3)(B). 45

Fed. R. Civ. P. 26(a)(3)(C). 46

Fed. R. Civ. P. 26(a)(5), 30. 47

Fed. R. Civ. P. 31. 48

Fed. R. Civ. P. 26(a)(5); 33(a) (limiting to 25 the number of interrogatories to be served absent leave of court). It

is important to check local rules for uses of and limitations on interrogatories. 49

Fed. R. Civ. P. 26(a)(5), 34, 45. 50

Fed. R. Civ. P. 26(a)(5), 35. 51

Fed. R. Civ. P. 26(a)(5), 36.

VI. Motion practice that may occur related to discovery and evidence

• Motions to compel testimony, production of documents, or other responses to discovery

requests

• Motions concerning protective orders

• Motions to quash subpoenas

• Motions for discovery sanctions

• Motions in limine to admit or preclude evidence

• Motions to withdraw admissions

• Motions to determine the sufficiency of discovery responses

Where a plaintiff can show a nexus between an infringement and indirect profits, a court

may grant a motion to compel production of financial information.52

Where a party has made a

motion to compel complete responses to interrogatories, a court may opt instead to limit

testimony to the extent of the responses.53

Where a motion to compel production of documents is

granted, a court may also require a party to provide a written response describing efforts to locate

such documents if the party is unable to produce them.54

A motion to compel will be denied

where the moving party cannot show that an offer to permit inspection of the document will be

onerous.55

VII. Collecting evidence in jurisdictions outside the United States

Copyright infringement actions often involve witnesses or evidence outside the United

States. A court may order depositions of a party witness, such as a company representative, to be

held outside the United States.56

The best direct source of information is the United States

Department of State's Web site under the topic “Judicial Assistance.”57

It is important to

determine first what treaties a country has entered into with the United States and whether that

country has restrictions on evidence collection by consulting “Country-Specific Information.”58

For litigation involving gathering evidence in foreign jurisdictions, the issuance of letters

rogatory pursuant to Rule 28(b) of the Federal Rules of Civil Procedure may be necessary and

appropriate.59

If such discovery is illegal in a foreign jurisdiction, this claim must be raised

before the discovery occurs and is not grounds for excluding evidence obtained in violation of

foreign laws.60

Where dismissal under Rule 19 of the Federal Rules of Civil Procedure is urged because

a party has allegedly failed to join an indispensable party who is outside the United States, a

52

Urband & Lazar Music Pub., Inc. v. Carter, 2009 WL 799759, *2 (E.D. La. 2009). 53

Knowledgeaz, Inc. v. Jim Walters Resources, Inc., 2009 WL 425961, *2 (S.D. Ind. 2009). 54

Weber Design Group, Inc. v. U.S. Wrecking and Land Clearing, Inc., 2008 WL 4888825, *4 (S.D. Fla. 2008). 55

Fed. R. Civ. P. 35(a)(1). Mattel, Inc. v. Rand Intern. Leisure Products, Ltd., 2008 WL 4826320, *6 (W.D. N.Y.

2008) 56

1993 WL 696697 (plaintiff in New York case to be deposed in New Zealand). 57

http://travel.state.gov/law/info/judicial/judicial_688.html. 58

http://travel.state.gov/law/info/judicial/judicial_2510.html 59

See P & D Intern. v. Halsey Pub. Co., 672 F. Supp. 1429, 1435, 5 U.S.P.Q.2d 1133 (S.D. Fla. 1987) (rejecting

foreign party's forum non-conveniens argument because foreign parties subject to discovery by letters rogatory). 60

Popular Imports, Inc. v. Wong's Intern. Inc., 166 F.R.D. 276 (E.D. N.Y. 1996) (illegality of depositions in China

not raised until after evidence collected).

court may permit discovery by letters rogatory pursuant to Rule 28(b) prior to determining

whether dismissal is appropriate.61

In weighing forum non conveniens arguments in intellectual

property actions, the Second Circuit has expressed optimism regarding this discovery device:

“any difficulties that the Court might encounter regarding witnesses whose attendance the Court

is unable to compel can most likely be resolved by the use of the deposition testimony or letters

rogatory.”62

Conversely, federal courts may by statute render aid to foreign and international tribunals

and to litigants before such tribunals.63

Assertions of copyright in tape recordings as a ground for

resisting requests in aid of an Irish defendant in a criminal proceeding were rejected by the

Seventh Circuit.64

Defenses of lack of reciprocity, lack of ultimate admissibility of evidence, and

a failure to seek letters rogatory from the foreign tribunal were rejected as defenses to an action

commenced in the United States by a party litigant in a Canadian proceeding seeking discovery

pursuant to 28 U.S.C.A. §1782.65

VIII. Duty to supplement disclosure and sanctions for failure to disclose

Sanctions for failure to disclose are governed by Rule 37 of the Federal Rules of Civil

Procedure. Such sanctions may be severe and may include attorney's fees, defenses precluded, or

evidence excluded.66

In Encore Entertainment, LLC v. Kiddesigns, Inc.,67

the court entertained a

motion to bar evidence of license agreements pursuant to Rule 37 in a copyright action due to a

party's failure to correct deposition testimony that such licenses did not exist that the party

subsequently learned was false. Quoting Rule 37, the court noted:

A party that without substantial justification fails to disclose information required by Rule

26(a) or 26(e)(1), or to amend a prior response to discovery as required by Rule 26(e)(2), is

not, unless such failure is harmless, permitted to use as evidence at a trial, at a hearing, or

on a motion any witness or information not so disclosed. In addition to, or in lieu of this

sanction, the court on motion and after affording an opportunity to be heard, may impose

other appropriate sanctions ….68

In considering the motion, the court noted the duty to supplement disclosure of responses

made pursuant to Rule 26:

A party who has made a disclosure under subdivision (a) [of Rule 26] or responded to a

request for discovery with a disclosure or response is under a duty to supplement or correct

61

Costello Pub. Co. v. Rotelle, 670 F.2d 1035, 1041, 212 U.S.P.Q. 811, 1981-2 Trade Cas. (CCH) &p;64352, 32

Fed. R. Serv. 2d 1053 (D.C. Cir. 1981) (discussing good faith effort to obtain evidence by letters rogatory on

remand); 2003 WL 21692814 at *5 (availability of letters rogatory relevant in deciding whether plaintiff's chosen

forum is inconvenient). 62

Overseas Programming Companies, Ltd. v. Cinematographische Commerz-Anstalt, 684 F.2d 232, 235 (2d Cir.

1982). 63

28 U.S.C.A. §1782 64

McKevitt v. Pallasch, 339 F.3d 530, 31 Media L. Rep. (BNA) 2141, 61 Fed. R. Evid. Serv. 1398 (7th Cir. 2003). 65

John Deere Ltd. v. Sperry Corp., 754 F.2d 132 (3d Cir. 1985). 66

Fed. R. Civ. P. 37. 67

Encore Entertainment, LLC v. KIDdesigns, Inc., 2005 WL 2249897 (M.D. Tenn. 2005) 68

Encore Entertainment, LLC v. KIDdesigns, Inc., 2005 WL 2249897 (M.D. Tenn. 2005) (quoting Fed. R. Civ. P.

37).

the disclosure or response to include information thereafter acquired if ordered by the court

or in the following circumstances:

(1) A party is under a duty to supplement at appropriate intervals its disclosures under

subdivision (a) if the party learns that in some material respect the information disclosed is

incomplete or incorrect and if the additional or corrective information has not otherwise

been made known to the other parties during the discovery process or in writing. With

respect to testimony of an expert from whom a report is required under subdivision

(a)(2)(B) the duty extends both to information contained in the report and to information

provided through a deposition of the expert ….

(2) A party is under a duty seasonably to amend a prior response to an interrogatory, request

for production, or request for admission if the party learns that the response is in some

material respect incomplete or incorrect and if the additional or corrective information has

not otherwise been made known to the other parties during the discovery process or in

writing.69

In rejecting the motion to preclude the evidence, the court found that the missing

information that contradicted the deposition testimony was made available to the adversary prior

to the close of discovery. The court found that where the evidence was disclosed, there was no

corresponding duty to supplement deposition testimony, and that the licenses could be relied on

as evidence.70

In Home Design Services, Inc. v. Hibiscus Homes of Florida, Inc.,

71 the court excluded a

party's expert report that was purportedly offered as rebuttal evidence, which Rule 26 requires to

be served within 30 days following the disclosure that it rebuts.72

Finding the expert's report to

contain testimony that contained rebuttal, but also went far beyond the scope of rebuttal, and that

the report was submitted 77 days after the court's scheduling order without substantial

justification, the court excluded the portion of the expert testimony that was not rebuttal.73

In Point Productions A.G. v. SONY Music Entertainment, the court granted Sony's

motion to preclude the entirety of an expert's testimony and struck affidavits submitted in

support of a motion.74

In rejecting an expert's second report, purportedly offered in rebuttal, the

court opined:

…. [The expert's new testimony] is a revisionist theory never before offered in this 10 year

old case. To accept the contention that the affidavits merely support and initial position

when they in fact expound a wholly new and complex approach designed to fill a

significant and logical gap in the first report would eviscerate the purpose of the expert

disclosure rules.75

In rejecting the expert's second report, the court noted the unfairness to Sony--“[n]early all

69

Encore Entertainment, LLC v. KIDdesigns, Inc., 2005 WL 2249897 (M.D. Tenn. 2005) (quoting Fed. R. Civ. P.

26(e)). 70

Encore Entertainment, LLC v. KIDdesigns, Inc., 2005 WL 2249897 (M.D. Tenn. 2005). 71

Home Design Services, Inc. v. Hibiscus Homes of Florida, Inc., 68 Fed. R. Evid. Serv. 528 (M.D. Fla. 2005). 72

Fed. R. Civ. P. 26(a)(2)(B). 73

Home Design Services, Inc. v. Hibiscus Homes of Florida, Inc., 68 Fed. R. Evid. Serv. 528 (M.D. Fla. 2005). 74

Point Productions A.G. v. Sony Music Entertainment, Inc., 2004 WL 345551 (S.D. N.Y. 2004). 75

Point Productions A.G. v. Sony Music Entertainment, Inc., 2004 WL 345551 (S.D. N.Y. 2004).

of the new submissions contain factual claims never before placed in evidence ...”76

A less harsh result for failure to disclose is found in Winfield Collection, Ltd. v. Sun Hill

Industries, Inc.77

In that matter, rather than granting a motion to strike evidence, the court

reopened discovery where there was a late disclosure of witness identities and testimony to

permit the adversely affected party the fair opportunity to conduct limited discovery into those

issues.

Rule 37 authorizes the court to “sanction a recalcitrant party by entering an order: (1)

deeming the matter which is the subject of the discovery request established for the purposes of

the action; (2) prohibiting the offending party from supporting or opposing designated claims or

defenses, or from introducing designated matters into evidence; or (3) striking out pleadings, or

parts thereof, dismissing the action in whole or in part, or granting a default judgment.78

Entry of

the default judgment is not mandatory upon plaintiffs request in the court has discretion to

require some proof of the facts that must be establish in order to determine liability.79

IX. Requests for admissions in copyright litigation

Requests for admissions are governed by Rule 36 of the Federal Rules of Civil

Procedure. Requests for admissions may be served on the adversary any time after the initial

Rule 26(f) conference.80

Requests for admissions simply ask the adversary to admit the truth of

any discoverable matter “that relate to statements or opinions of fact or of the application of law

to fact, including the genuineness of any documents described in the request.”81

Copies of

documents should be served with the requests for admissions unless copies have already been

provided to the adversary or made available for inspection and copying.82

Requests for admissions are a powerful tool and are often overlooked by litigants.

Requests for admissions have the effect of shifting the burden of attorney's fees and expenses to

the party who refuses to admit something that is later proven. Requests for admissions must be

responded to in a detailed fashion. Early service of requests for admissions may greatly reduce

the cost and burdensomeness of discovery by clarifying what factual or legal issues are truly at

stake. Any matter admitted is deemed conclusively established for the purposes of the litigation

unless a motion to withdraw the admission is timely made. Case law is replete with examples of

attorneys responding to requests for admissions in an evasive or cavalier fashion or not at all.83

On a motion to determine the sufficiency of responses to requests for admissions, inadequate

responses or a failure to respond results in the matter being deemed admitted.84

Prior to issuing a

76

Point Productions A.G. v. Sony Music Entertainment, Inc., 2004 WL 345551 (S.D. N.Y. 2004). 77

Winfield Collection, Ltd. v. Sun Hill Industries, Inc., 2002 WL 1009571 (E.D. Mich. 2002). 78

Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002). 79

Apple Computer Inc. v. Micro Team, 2000 WL 1897354 (N.D. Cal. 2000). 80

Fed. R. Civ. P. 36. 81

Fed. R. Civ. P. 36(a). 82

Fed. R. Civ. P. 36(a). 83

See, e.g., U2 Home Entertainment, Inc. v. Lai Ying Music & Video Trading, Inc., 2005 Copr. L. Dec. P 28999,

2005 WL 1231645 (S.D. N.Y. 2005), motion for stay pending appeal denied, 2007 WL 747794 (S.D. N.Y. 2007)

and judgment aff'd in part, vacated in part, 245 Fed. Appx. 28 (2d Cir. 2007) (imposing liability based on failure to

respond to requests for admissions). 84

Fed. R. Civ. P. 36(a).

casual denial, an attorney should be aware of the consequences:85

[w]here a matter is not admitted, “[t]he answer shall specifically deny the matter or set forth

in detail the reasons why the answering party cannot truthfully admit or deny the matter. A

denial shall fairly meet the substance of the requested admission, and when good faith

requires that a party qualify an answer or deny only a part of the matter of which an

admission is requested, the party shall specify so much of it as is true and qualified or deny

the remainder. And answering party may not give lack of information or knowledge as a

reason for failure to admit or deny unless the party states that the party has made reasonable

inquiry and that the information known or readily obtainable by the party is insufficient to

enable the party to admit or deny. A party who considers that a matter of which admission

has been requested presents a genuine issue for trial may not, on that ground alone, object

to the request; the party may, subject to the provisions of Rule 37(c), deny the matter or set

forth reasons why the party cannot admit or deny it.”

Under Rule 37, which governs sanctions to be imposed for failures to respond properly to

discovery requests “an evasive or incomplete disclosure, answer, or response is to be treated as a

failure to disclose, answer, or respond.”86

The importance of requests for admissions as an evidentiary tool is highlighted in

Jorgensen v. Epic/Sony Records.87

In analyzing whether a copyright infringement plaintiff had

established the defendants' access to his copyrighted works, the Second Circuit Court of Appeals

reversed the District Court's failure to consider the defendants' response to a request for

admissions that stated “on limited occasions, writers, producers or musicians affiliated with Sony

may have been shown some material solicited by the A&R Department at some point during

1995, 1996 and 1997 ... .”88

Based in part on this admission, the Second Circuit vacated the

district court's grant of summary judgment.89

On the other hand, a court may decline to impose sanctions for inadequate responses even

where an attorney's response consisted of belated “substantive” handwritten notations on a

photocopy of the requests for admissions.90

In that matter, the court excused the lateness and

denied a motion for sanctions but instructed the moving party that the party could make a motion

to determine the sufficiency of the responses under Rule 36(a).91

Summary judgment may be obtained based on a failure to respond to requests for

admissions by submitting a certificate of service by first-class mail.92

Statutory damages under

85

Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002) (quoting Rule 36(a)). 86

Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002) (quoting Rule 36(a)). 87

Jorgensen v. Epic/Sony Records, 351 F.3d 46, 69 U.S.P.Q.2d 1067 (2d Cir. 2003). 88

Jorgensen v. Epic/Sony Records, 351 F.3d 46, 50, 69 U.S.P.Q.2d 1067 (2d Cir. 2003). 89

Jorgensen v. Epic/Sony Records, 351 F.3d 46, 57, 69 U.S.P.Q.2d 1067 (2d Cir. 2003). 90

Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002). 91

Tangorre v. Mako's, Inc., 2002 WL 206988 (S.D. N.Y. 2002). 92

Johnson v. Tuff-N-Rumble Management, Inc., 2000 WL 1808431 (E.D. La. 2000).

17 U.S.C.A. §504 may be imposed.93

Findings of willfulness and awards of attorney's fees may

be made based on such failures,94

as well as grants of injunctive relief.95

Attorneys frequently object to providing responses where requests for admissions call for

“conclusions of law.” Rule 36 explicitly permits requests for admissions to involve both facts

and law facts applied to law. In one copyright action, the requests for admissions read as follows

Request No. 1: You have no factual or legal basis to support any of the counterclaims

asserted against the plaintiffs ... .

Request No. 2: You sustained no actual damages as a result of any of the allegations set

forth in defendants' counterclaims asserted against plaintiffs ... .

Request No. 3: You have no objection to the court dismissing the counterclaims previously

asserted on your behalf against the plaintiffs ... in this litigation, such dismissal being with

prejudice and without costs.96

The court treated the failure to respond as admissions of all three requests for admissions

and granted summary judgment.97

While a party could object to a request for admissions and risk a later ruling of the court

that such objection was unwarranted, an alternate procedure is to move for a protective order, a

strategy that may ensure that counsel will not be perceived as evasive in hindsight and also to

limit burdensome and irrelevant requests.98

Parties must also be cognizant that as discovery progresses, information may be obtained

that contradicts previous admissions. Rule 36(b) permits motions to withdraw previous

admissions. In one copyright case, a party's prior attorney who was “upset” over facing a

sanctions motion for bringing the copyright infringement case made admissions “too hastily”

with respect to the similarity of architectural plans to other plans that were in the public domain.

Upon reflection, the plaintiffs realized that they were incorrect and moved 14 months later to

withdraw the admissions. The court permitted the withdrawal, notwithstanding the dilatory

motion. The court permitted the defendants to file a motion for fees and expenses for work

occasioned by their reliance on the withdrawn admissions.99

In another copyright infringement

action, on defendants' motion for summary judgment, the court granted the plaintiff's motion to

withdraw the admissions and deemed the complaint amended, but granted summary judgment

anyway.100

X. Protective orders and motions to compel

93

Johnson v. Tuff-N-Rumble Management, Inc., 2000 WL 1808431 (E.D. La. 2000). 94

See, e.g., Nick-O-Val Music Co., Inc. v. P.O.S. Radio, Inc., 656 F. Supp. 826, 829 (M.D. Fla. 1987). 95

See, e.g., Chess Music, Inc. v. Bowman, 474 F. Supp. 184, 209 U.S.P.Q. 644 (D. Neb. 1979); Chess Music, Inc.

v. Tadych, 467 F. Supp. 819, 204 U.S.P.Q. 516 (E.D. Wis. 1979). 96

Burdick v. Koerner, 179 F.R.D. 573, 575 (E.D. Wis. 1998). 97

Burdick v. Koerner, 179 F.R.D. 573, 576 (E.D. Wis. 1998). 98

See, e.g., Warner Bros., Inc. v. Multinational Products Corp., 1986 WL 1439 (S.D. N.Y. 1986) (granting

protective order on grounds overbroad, irrelevant, and beyond knowledge information and belief). 99

Howard v. Sterchi, 725 F. Supp. 1572, 1581 (N.D. Ga. 1989), aff'd, 12 F.3d 218 (11th Cir. 1993). 100

Green v. Schwarzenegger, 1995 WL 874191 (C.D. Cal. 1995), order aff'd, 107 F.3d 877 (9th Cir. 1997).

It is customary, particularly in litigations involving large defendants, for the issue of

stipulating to a joint protective order to arise. A joint protective order is usually agreed to

between the parties to protect confidential information, particularly trade secrets, customer lists

and such materials as computer source code. During the discovery process, items are generally

marked confidential and must be filed under seal if they are submitted to the court. For very

sensitive secrets, information may be produced “for attorneys' eyes only” or only to be evaluated

by an independent expert who has no relationship to the parties.

Although there is generally a strong presumption against sealing public documents, in the

context of intellectual property, these agreements are routine and most courts will readily grant

the protections that a joint protective order would have provided an adversary.101

A practitioner

should stand ready to agree to reasonable restrictions based on commercial needs and to object to

onerous, unreasonable or unworkable provisions. On the other hand, the existence of a protective

order may be used against the party who agreed to it to show that production of, for example, a

customer list, would not cause any damage.102

Finally, even if the parties agree, a court may

refuse to implement sealing orders or protective orders for a wide variety of administrative,

competing policy and practical reasons, including the federal government's regulations governing

the method of storing and destroying case files.103

As a practical matter, ensuring that a law office complies with protective orders can pose

challenges to ordinary law office procedures. For example, a client may not review documents

marked “attorneys' eyes only.” In addition, materials marked “confidential” must be properly

labeled and filed under seal. Generally, to accept filings under seal, the clerk will require a copy

of the protective order. The case law is replete with situations where documents were

accidentally filed publicly. For an attorney whose staff may not be prepared for the unusual

requirements of a protective order, extra training and warnings are advisable. Failure to abide

scrupulously by the terms of a protective order may lead to sanctions such as disqualifying an

expert.104

Where the parties fail to agree, the party seeking protection may apply for protective

order pursuant to Rule 26(c) to overcome the presumption in favor of discovery, and the party

seeking the protective order must show good cause by demonstrating a particular need for

protection. Rule 26(c) provides that the court may make any order which justice requires

including one or more of the following:

(1) that the disclosure or discovery not be had;

(2) that the disclosure or discovery may be had only on specified terms and conditions,

including a designation of the time or place;

(3) that the discovery may be had only by a method of discovery other than that selected

by the party seeking discovery;

101

See, e.g., Liveware Publishing, Inc. v. Best Software, Inc., 252 F. Supp. 2d 74 (D. Del. 2003) (granting

protective order directing customer list to be treated as “highly confidential”). 102

IPC Information Systems, LLC v. Odyssey Group, Inc., 232 F.R.D. 206, 207 (S.D. N.Y. 2005) (protective order

expressly contemplated disclosure of trade secrets). 103

See Alvarez Cabrera v. Trataros Const. Inc., 184 F. Supp. 2d 149, 153 (D.P.R. 2002) (discussing competing

considerations and administrative burdens involved in sealing cases indefinitely). 104

See, e.g., Beam System, Inc. v. Checkpoint Systems, Inc., 42 U.S.P.Q.2d 1461, 1997 WL 364081 (C.D. Cal.

1997).

(4) that certain matters not be inquired into, or that the scope of the disclosure or

discovery be limited to certain matters;

(5) that discovery be conducted with no one present except persons designated by the

court;

(6) that a deposition, after being sealed, be opened only by order of the court; and

(7) that a trade secret or other confidential research, development, or commercial

information not be revealed or be revealed only in a designated way; and that the parties

simultaneously file specified documents or information enclosed in sealed envelopes to be

opened as directed by the court.105

Broad allegations of harm, unsubstantiated by specific examples or articulated reasoning,

do not satisfy the Rule 26(c) test.106

The burden of establishing the propriety of a protective

order rests with the movant.107

The singer Bob Dylan, for example, showed that there was a

strong probability of the plaintiff selling the discovery materials during the course of the

litigation. In granting the protective order, the court noted that “the plaintiff is free to utilize the

materials in preparing and presenting this case in the judicial forum--not the forum of

sensationalized media exposure” A deposition may not generally be avoided by a protective

order if objections to problematic questions could be raised at the deposition.108

Where overbroad discovery requests are promulgated, whether for documents, requests

for admissions, interrogatories or depositions, a party may seek a protective order. A party who

is adversely affected has standing to object to discovery requests served on a nonparty that will

prejudice the party.109

Where a court finds that a party has alleged a personal right in information

held by the nonparty, such as documents containing confidential research, development and

commercial information, the court will find the objecting party to have standing.110

In Comstock,

Inc. v. Conros Corporation,111

the court gave an excellent, succinct summary of the issues

involved in copyright infringement litigation, and excluded all others.

While perhaps overly simplistic as this court understands a claim based on alleged

copyright infringement, the issues in such an action, in the case of the photograph, are:

(1) is the photograph the subject of the copyright?

(2) is the plaintiff the holder of, or entitled to enforce, the copyright?

(3) is the copyright valid?

(4) is the accused photograph a direct copy of or substantially similar to the copyrighted

photograph?

(5) what actual damages has the copyright holder sustained or what additional profits has

the infringer obtained by reason of the infringement?

(6) is the infringement willful, so as to support an award of statutory damages pursuant to

17 U.S.C.A. §504(c)(2)?

105

Fed. R. Civ. P. 26(c). 106

Damiano v. Sony Music Entertainment, Inc., 168 F.R.D. 485, 490, 36 Fed. R. Serv. 3d 998 (D.N.J. 1996). 107

Damiano v. Sony Music Entertainment, Inc., 168 F.R.D. 485, 490, 36 Fed. R. Serv. 3d 998 (D.N.J. 1996). 108

Holm v. Pollack, 2001 WL 1257728 (E.D. Pa. 2001). 109

Comstock v. Conros Corp., 1996 WL 194268 (N.D. Ohio 1996). 110

New Park Entertainment L.L.C. v. Electric Factory Concerts, Inc., 2000 WL 62315 (E.D. Pa. 2000). 111

Comstock v. Conros Corp., 1996 WL 194268 (N.D. Ohio 1996).

The court limited discovery, including questions at depositions, to these discrete issues.

112

Where a nonparty to an action is served with a subpoena issued by a court over 100 miles

away from the nonparty's residence, the subpoena may be quashed by a local federal district

court.113

Rule 45 of the Federal Rules of Civil Procedure requires attorneys issuing subpoenas to

“take reasonable steps to avoid imposing undue burden or expense on a person subject to that

subpoena.”114

In addition to the Rules of Civil Procedure, the Copyright Act provides for subpoenas to

be served on Internet Service Providers (ISPs).115

Such subpoenas may not be issued to ISPs that

do not store allegedly infringing material.116

Since there is no national service of process under

the Copyright Act, such a subpoena may be issued only by the court in whose district the

subpoena is served.117

The Copyright Act prescribes certain formalities for such subpoenas and

how to obtain them from the clerk of the court.118

Courts may prescribe limitations on the use of

information obtained from ISPs on ex parte applications.119

A court may grant a motion to compel disclosure of privileged information where a party

has used such information as a “sword” rather than as a “shield.”120

Ordinarily, a privilege is

preserved by keeping an oral communication secret or logging a document onto a privilege log

and disclosing and describing the basis for the assertion of the privilege to the adversary on the

privilege log.121

The work product privilege protects both “fact” and “opinion” work product.122

Where plaintiff disclosed facts gained during the work product process on its Web site, to wit:

[Plaintiff] was alerted by [Defendant] employees that [Plaintiff's] software source codes

were being copied and used by [Defendant] to sell products to nonprofit organizations.

...

Plaintiff has been informed by Defendant's employees that, in spite of their objections,

[Defendant] allegedly directed its employees to use plaintiff's trade secrets for various

purposes, including developing software and interactive web sites for third parties, and

other derivative works in the nonprofit sector. Employees of [Defendant] signed written

112

Comstock v. Conros Corp., 1996 WL 194268 (N.D. Ohio 1996). 113

Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 218 F.R.D. 423 (D. Del. 2003). 114

Fed. R. Civ. P. 45(c)(1). 115

17 U.S.C.A. §512(h). 116

In re Subpoena To University of North Carolina at Chapel Hill, 367 F. Supp. 2d 945, 74 U.S.P.Q.2d 1661 (M.D.

N.C. 2005). 117

In re Subpoena To University of North Carolina at Chapel Hill, 367 F. Supp. 2d 945, 74 U.S.P.Q.2d 1661 (M.D.

N.C. 2005). 118

17 U.S.C.A. §512(h); In re Subpoena To University of North Carolina at Chapel Hill, 367 F. Supp. 2d 945,

951-952, 74 U.S.P.Q.2d 1661 (M.D. N.C. 2005). 119

BMG MUSIC, et al., Plaintiffs, v. DOES 1-203, Defendants., 2004 WL 594397 (E.D. Pa. 2004). 120

Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503 (S.D. Cal. 2003). 121

Fed. R. Civ. P. 26(b)(5). 122

Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503, 507 (S.D. Cal. 2003). Prior to December 1, 2010, virtually all

communications between counsel and a testifying expert were discoverable. Now, Fed. R. Civ. P. 26(b)(4)(C)

protects communications between counsel and an expert required to give a written report under Rule 26(a)(2)(B)

except: (1) communications about the expert’s compensation; (2) facts or data provided by counsel that the expert

considered in forming opinions; and (3) assumptions provided by counsel on which the expert relied in forming

opinions.

affidavits under penalty of perjury.123

The court found that the foregoing disclosures waived the attorney work product privilege and

ordered disclosure of the employee affidavits.124

The court found that the waiver did not extend

to any related materials and upheld the privilege asserted in recorded conversations with

employees.125

Where a party asserts a privilege, but fails to produce a privilege log, the court

may order the party to produce such a log.126

When a party seeks discovery from a corporation, rather than guess at what officer of the

corporation has knowledge, the deposition may be noticed pursuant to Rule 30(b)(6). This

provision of the Federal Rules of Civil Procedure requires the corporation to provide a person

with knowledge. This rule imposes an affirmative duty upon the business entity “to prepare the

selected deponent to adequately testify not only on matters known by the deponent, but also on

subjects that the entity should reasonably know.”127

The rule is designed to prevent business

entities from “bandying” or the practice of presenting employees for their deposition who

disclaim knowledge of facts known by other individuals within the entity.128

In copyright

infringement actions, these depositions are helpful in determining the interrelationships of

corporations in the chain of licensing and distribution.129

Where a defendant failed to prepare its witness to provide the requested cost calculations

during discovery as required by the Rule 30(b)(6) deposition, to provide its costs during

discovery, or to supplement its lack of a response in a timely fashion, the court granted the

plaintiff's motion that evidence of deductible costs be stricken.130

123

Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503, 510-511 (S.D. Cal. 2003). 124

Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503, 513 (S.D. Cal. 2003). 125

Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503, 513 (S.D. Cal. 2003). 126

New Park Entertainment L.L.C. v. Electric Factory Concerts, Inc., 2000 WL 62315 (E.D. Pa. 2000). 127

Sanyo Laser Products Inc. v. Arista Records, Inc., 214 F.R.D. 496, 503 (S.D. Ind. 2003) (citations omitted). 128

Sanyo Laser Products Inc. v. Arista Records, Inc., 214 F.R.D. 496, 503 (S.D. Ind. 2003). 129

See, e.g., Sanyo Laser Products Inc. v. Arista Records, Inc., 214 F.R.D. 496, 503 (S.D. Ind. 2003) (designated

witnesses may authenticate documents produced in discovery relating to relationships with affiliated corporations). 130

Universal Furniture Intern., Inc. v. Collezione Europa, USA, Inc., 599 F. Supp. 2d 648, 660, 90 U.S.P.Q.2d 1275

(M.D. N.C. 2009), judgment aff'd, 618 F.3d 417, 96 U.S.P.Q.2d 1137 (4th Cir. 2010), as amended, (Aug. 24, 2010).

For more on copyright litigation tactics and strategy, see Copyright Litigation Handbook (West 2012-2013). Reviews:

"Until...this book there simply was no litigation-friendly guide to copyright litigation." David Wolfsohn, Woodcock Washburn

"An outstanding legal resource for copyright litigators"

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"this book is a must" Kaiser Wahab, Wahab & Medenica

"chockablock with insightful and practical information"

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"great practice overview for an experienced copyright litigator" Corey Field, Ballard Spahr

1 �

PROTOCOL FOR PRODUCTION OF DOCUMENTS

1. Document Image Format. Each document shall be produced in Tagged Image File Format

(“TIFF”), regardless of whether such documents are stored by the parties in the ordinary

course of business in electronic or hard copy form. Each TIFF image file should be one page

and should reflect how the source document would appear if printed to hard copy.

a. Load File. The production shall include a Concordance-compatible Load File that

indicates document breaks to accompany the TIFF images and additional fields as

identified in Section 4 below.

b. File Name. Each document image file shall be named with the unique Bates Number

of the page of the document in question, followed by the extension “TIF.” File names

should not be more than fifteen characters long or contain spaces or underscore

symbols.

c. Document Unitization. If a document is more than one page, the unitization of the

document and any attachments and/or affixed notes shall be maintained as they

existed in the original document.

d. Color. Documents shall be produced as black and white TIFF images. A party shall

produce color images for a reasonable number of selected documents if requested to

do so in writing.

2. Searchable Text. In addition to TIFF images, each production will include text files

corresponding to the TIFF files described above.

a. Hard Copy Documents. Hard copy documents shall be scanned using Optical

Character Recognition technology and searchable ASCII text files shall be produced

(or Unicode text format if the text is in a foreign language). Each file shall be named

with the unique Bates Number of the first page of the corresponding TIFF document

followed by the extension “.txt”.

b. Electronic Documents. The full text of each native electronic document shall be

extracted (“Extracted Text”) and produced in a text file. The Extracted Text shall be

provided in searchable ASCII text format (or Unicode text format if the text is in a

foreign language) and shall be named with the unique Bates Number of the first page

of the corresponding TIFF document followed by the extension “.txt”.

3. Production Media. Documents shall be produced on external hard drives or readily

accessible computer or electronic media (the “Production Media”).

4. Metadata. For all Electronic Documents, an ASCII text file shall be produced setting forth

the Metadata Fields listed in Appendix A. For the avoidance of doubt, a party is not obligated

to produce metadata from a document if metadata does not exist in the document, or if the

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metadata is not machine extractable. For redacted Electronic Documents, metadata fields

must be produced only to the extent such fields will not divulge redacted information.

5. Request for Native Production. All Microsoft Excel, Access and PowerPoint files should

be produced natively. All native files must be slip sheeted with a TIFF placeholder.

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APPENDIX A

METADATA FIELD DESCRIPTION

BEGBATES Beginning Bates number assigned to each

document.

ENDBATES Ending Bates number assigned to each

document.

BEATTACH Beginning Bates number assigned to the group

of documents to which the parent document

and any attachment documents are associated.

ENDATTACH Ending Bates number assigned to the group of

documents to which the parent document and

any attachment documents are associated

DATEMODIFIED The Date Modified of the document formatted

as follows: MM/DD/YYYY with leading zeros

as appropriate (e.g., 06/07/2009).1

DOCTYPE Document type as identified by metadata

associated with the native document indicating

the application that created the native

document (e.g., Google Docs, Microsoft Word

6.0, Gmail, Outlook Email, etc.).

TITLE The title, subject, or filename, in order of

preference, of the document or email.

AUTHOR The document author or originator of the email

message.

RECIPIENT The recipient of any document or email as

reflected in the metadata associated with the

document.

CC Names of copied recipients of any document or

email as reflected in the metadata associated

with the document.

���������������������������������������� �������������������1 Unless otherwise agreed upon in writing and in advance, no party is representing that the DATEMODIFIED

field is a correct historical date. While this is true of all metadata, it is particularly pertinent in the case of the

DATEMODIFIED field because the value of the field can be easily and inadvertently changed, e.g., when

transferring documents from one computer to another.

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METADATA FIELD DESCRIPTION

BCC Names of recipients who received blind copies

of any document or email as reflected in the

metadata associated with the document.

CUSTODIAN Name of the individual whose custodial file

contained the document.

CUSTAPPEND Name of custodians whose exact copies of the

document were removed through Horizontal

Deduplication. Only used when Horizontal

Deduplication is implemented.

DATESENT The Date Sent of the document (if applicable)

or email message formatted as follows:

MM/DD/YYYY with leading zeros as

appropriate (e.g., 06/07/2009).

DATERECEIVED The Date Received of the document (if

applicable) or email message formatted as

follows: MM/DD/YYYY with leading zeros as

appropriate (e.g., 06/07/2009).

TIMESENT The Time Sent of the document (if applicable)

or email message formatted as follows:

HH:MM AM or HH:MM PM (as appropriate)

with leading zeros as appropriate (e.g., 01:15

AM).

TIMERECEIVED The Time Received of the document (if

applicable) or email message formatted as

follows: HH:MM AM or HH:MM PM (as

appropriate) with leading zeros as appropriate

(e.g., 01:15 AM).