Laura Larson v. Warner Bros Entertainment, Inc, et al

Filing 62

Filed (ECF) Appellees DC Comics and Warner Bros. Entertainment, Inc. in 11-55863, Appellants DC Comics and Warner Bros. Entertainment, Inc. in 11-56034 reply to response (motion to supplement record on appeal). Date of service: 07/11/2012. [8246958] [11-55863, 11-56034] (AP)

Download PDF
EXHIBIT A Case 2:10-cv-03633-ODW -RZ Document 391 Filed 04/25/12 Page 1 of 38 Page ID #:24465 1 2 3 4 5 6 DANIEL M. PETROCELLI (S.B. #097802) dpetrocelli@omm.com MATTHEW T. KLINE (S.B. #211640) mkline@omm.com CASSANDRA L. SETO (S.B. #246608) cseto@omm.com O’MELVENY & MYERS LLP 1999 Avenue of the Stars, 7th Floor Los Angeles, CA 90067-6035 Telephone: (310) 553-6700 Facsimile: (310) 246-6779 10 PATRICK T. PERKINS (admitted pro hac vice) pperkins@ptplaw.com PERKINS LAW OFFICE, P.C. 1711 Route 9D Cold Spring, NY 10516 Telephone: (845) 265-2820 Facsimile: (845) 265-2819 11 Attorneys for Plaintiff DC Comics 7 8 9 12 UNITED STATES DISTRICT COURT 13 CENTRAL DISTRICT OF CALIFORNIA 14 15 DC COMICS, Plaintiff, 16 17 18 19 20 21 22 23 24 25 26 Case No. CV 10-3633 ODW (RZx) DISCOVERY MATTER v. PACIFIC PICTURES CORPORATION, IP WORLDWIDE, LLC, IPW, LLC, MARC TOBEROFF, an individual, MARK WARREN PEARY, as personal representative of the ESTATE OF JOSEPH SHUSTER, JEAN ADELE PEAVY, an individual, LAURA SIEGEL LARSON, an individual and as personal representative of the ESTATE OF JOANNE SIEGEL, and DOES 1-10, inclusive, Defendants. DC COMICS’ EX PARTE APPLICATION TO LIFT TEMPORARY STAY ON COURT’S MAY 25, 2011, AND AUGUST 8, 2011, ORDERS DECLARATION OF CASSANDRA SETO AND [PROPOSED] ORDER FILED CONCURRENTLY HEREWITH Judge: Magistrate: Hon. Otis D. Wright II Hon. Ralph Zarefsky Requested Hearing Date: Apr. 30, 2012 Requested Hearing Time: 10:00 a.m. 27 28 DC’S EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT A 12 Case 2:10-cv-03633-ODW -RZ Document 391 Filed 04/25/12 Page 7 of 38 Page ID #:24471 1 MEMORANDUM OF POINTS & AUTHORITIES 2 Enough is enough. Eleven months ago this Court ordered defendants to 3 produce the “Toberoff Timeline” documents they gave to the U.S. Attorney’s 4 Office (“USAO”). Docket No. 262. Weeks later the Court then ordered defendants 5 to produce all of their communications with the government. Docket No. 309. 6 At defendants’ request, the Court temporarily stayed the required productions 7 to allow defendants to seek writ review in the Ninth Circuit. Docket Nos. 287, 309. 8 In seeking and defending the stay, defendants promised to produce the documents 9 once “the Ninth Circuit has the opportunity to weigh in” on their writ petition. 10 Docket No. 286 at 4. That “opportunity” has now passed. After full briefing and 11 oral argument, the Ninth Circuit issued a unanimous opinion last week denying 12 defendants’ petition, affirming this Court’s ruling that defendants waived privilege 13 over the Timeline documents, and affirming this Court’s ruling that defendants 14 shared no common-interest privilege with the USAO. See Appendix A. 15 In a last-ditch effort to suppress the Timeline documents and the devastating 16 facts they disclose, defendants now assert that this Court’s stay order should remain 17 in place indefinitely—until defendants seek further review by the Ninth Circuit and 18 perhaps the U.S. Supreme Court. Even then, defendants refuse to produce the 19 documents unless all remain confidential and are hidden from the public. These are 20 clear misreadings of this Court’s orders and are causing severe prejudice to DC. 21 DC has two important appellate filings due in the Ninth Circuit on May 24, 22 2012. These briefs will reference and discuss the Timeline documents, as those 23 documents are central to the issues being litigated in both appeals, and the Ninth 24 Circuit has the discretion and good reason to consider them. If DC were required to 25 follow the motion procedure set forth in Local Rule 7 to lift the Court’s current 26 stay, the earliest date such a noticed motion could be heard is June 4, 2012—weeks 27 after DC’s appellate filings are due. Defendants’ express aim in seeking delay is to 28 keep the crucial Timeline documents from DC and the Ninth Circuit. -1DC’S EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT A 13 Case 2:10-cv-03633-ODW -RZ Document 391 Filed 04/25/12 Page 8 of 38 Page ID #:24472 1 Indeed, defendants’ delay efforts have already begun, full force. Rather than 2 file their petitions for review on May 1, when they are due, they moved yesterday 3 for a 30-day extension to file their rehearing petitions. If this request is granted, 4 defendants will not file their petitions until after DC’s May 24 appellate briefs are 5 due. But this is not all. The Ninth Circuit can take up to seven months to rule on 6 en banc petitions, and while rehearing will undoubtedly be denied, defendants will 7 have near 90 days to file a petition for certiorari. Months will then be spent briefing 8 and resolving that baseless cert petition. In short, defendants seek to orchestrate a 9 situation where DC never has access to the Timeline documents for any use, ever. 10 No more delay can or should be countenanced. Not only does DC need the 11 Timeline and other documents for pending appellate filings, DC needs to take and 12 resume key discovery in the case. Discovery was greatly impeded (especially on 13 the deposition front) while the writ pended the past 11 months. No more delay in 14 discovery, which is antecedent to a final resolution of this case, should be invited 15 given the direct impact of these lawsuits on the Superman franchise. Defendants 16 say their termination notices take effect in October 2013, and they clearly want to 17 run the clock in this case before the validity of those notices is fully adjudicated. 18 These are not valid reasons for delay. This Court should order defendants to 19 produce the Timeline documents and USAO communications immediately, without 20 limitation, and by no later than April 30, 2012, at 5 p.m. PDT. 21 1. The Court’s Stay Order and Defendants’ Arguments In Support of It. Now 22 that the Ninth Circuit has rejected defendants’ writ petition, this Court should lift 23 the stay on its May 25 and August 8, 2011, orders. Docket Nos. 262, 287, 309. In 24 their opposition to DC’s motion to compel production of the Timeline documents, 25 defendants told this Court: “[A]t a minimum, any order from this Court requiring 26 the production of privileged material should be stayed pending writ review in order 27 to give the district court and if necessary the Ninth Circuit the opportunity to 28 address the important privilege issues at stake here before any production is -2DC’S EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT A 14 Case 2:10-cv-03633-ODW -RZ Document 391 Filed 04/25/12 Page 12 of 38 Page ID #:24476 1 request for a 30-day extension (until May 31) to file their rehearing petitions in the 2 Ninth Circuit. Seto Decl. Ex. G. Whenever defendants’ petitions are filed, the 3 Ninth Circuit can take up to seven months to rule on them. See FED. R. APP. P. 4 40(a)(1); Ninth Circuit General Orders 5.4(b)-(c), 5.5(a)-(b). While rehearing will 5 undoubtedly be denied, see infra at 10-13, defendants will then have close to 90 6 days to file a petition for certiorari, see 28 U.S.C. § 2101(c); Supreme Court Rule 7 13.1, 13.3, and it will then take several additional months to brief and resolve it. 8 a. DC needs the Timeline documents for soon-to-be-filed appellate briefs. 9 Defendants have appealed the district court’s denial of their SLAPP motion, and 10 DC’s answering brief in that appeal is due May 24, 2012—less than a month from 11 today. The Timeline documents are important to this SLAPP briefing. The 12 threshold inquiry under the SLAPP statute is whether DC’s state-law claims are 13 based on protected activity. See Navellier v. Sletten, 29 Cal. 4th 82, 89 (2002). 14 According to the detailed descriptions in the Timeline, among the Timeline 15 documents are Toberoff’s correspondence and agreements with the Siegel and 16 Shuster heirs, as well as a memorandum from an outside law firm advising that 17 Toberoff that his business deals with the heirs raise “questions of legality.” Docket 18 No. 49, Ex. A at 62-67. These documents will confirm—as the district court rightly 19 held, Docket No. 337—that DC’s claims do not arise out of Toberoff’s protected 20 activities as a lawyer, but are instead based on Toberoff’s inducing the heirs to enter 21 into illicit business agreements with him, see id.; Docket No. 307 at 13-22. 22 The second step of the SLAPP analysis considers the probability of success 23 on DC’s state-law claims. See Equilon Enters. v. Consumer Cause, Inc., 29 Cal. 24 4th 53, 67 (2002). The Timeline documents directly corroborate DC’s claims that 25 Toberoff improperly interfered with DC’s agreements and relationships with the 26 heirs—including, for example, the memo from Kevin Marks to the Siegels 27 affirming that they reached a “deal” with DC in 2001 and warning them against 28 repudiating that agreement in favor of Toberoff’s business offer. See Docket No. -6DC’S EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT A 15 Case 2:10-cv-03633-ODW -RZ Document 391 Filed 04/25/12 Page 13 of 38 Page ID #:24477 1 307 at 22-25; Docket No. 334 at 17-25. Moreover, these still-hidden documents 2 will refute defendants’ statute-of-limitations and other arguments and demonstrate 3 DC’s entitlement to further discovery, which is itself a basis for denying a SLAPP 4 motion. See Shropshire v. Fred Rappoport Co., 294 F. Supp. 2d 1085, 1100 (N.D. 5 Cal. 2003) (deferring SLAPP ruling until summary judgment because “SLAPP 6 motion raises factual questions that cannot be resolved” without discovery); 7 Lafayette Morehouse, Inc. v. Chronicle Publ’g Co., 37 Cal. App. 4th 855, 868 8 (1995) (court can continue SLAPP hearing so discovery can be completed). 9 Also on May 24, 2012, DC must file its reply brief in the Siegel cross-appeal. 10 A central issue in that appeal—indeed, DC’s lead argument on its cross-appeal—is 11 whether the parties reached a binding settlement agreement in 2001 that bars Laura 12 Siegel Larson’s claims. Seto Decl. Ex. H-106-118. DC has asked the Ninth Circuit 13 to enter judgment for DC as a matter of law, especially given that recent Circuit 14 authority confirms that a settlement agreement is enforceable where, as here, the 15 parties reached agreement on its material terms—even if the settlement later falls 16 apart during finalization of a long-form agreement. Id. Ex. H-106-115 (discussing, 17 inter alia, The Facebook, Inc. v. Pac. Nw. Software, Inc., 640 F.3d 1034, 1038 (9th 18 Cir. 2011). At minimum, the new Timeline evidence, including the Marks memo, 19 confirms that there are disputed factual issues that can only be resolved in Larson’s 20 favor at trial. Id. Ex. H-115-18. In fact, the Marks memo, which is among the 21 Timeline documents, confirms that the Siegels had a “deal” with DC. Id. at 18-19, 22 37; Seto Ex. H-99-100, 118. This memo is key evidence in the Siegel appeal, id., 23 and defendants’ refusal to produce it is plainly tactical: defendants desperately 24 want to deprive the Courts (especially the Ninth Circuit) of this damaging evidence. 25 If DC were required to follow the Local Rule 7 motion procedure to lift the 26 Court’s current stay, the earliest date such a noticed motion could be heard is June 27 4, 2012—well after DC’s May 24 appellate briefs are due. Defendants’ efforts to 28 run the clock should be rejected, and the Court’s stay order should be lifted. -7DC’S EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT A 16 Case 2:10-cv-03633-ODW -RZ Document 391 Filed 04/25/12 Page 14 of 38 Page ID #:24478 1 b. Defendants seek to undermine the urgent need for the Timeline 2 documents by asserting that DC cannot refer to the documents in appellate briefing. 3 Seto Decl. Ex. F-52. This argument is specious, and ignores two fundamental facts. 4 First, DC also needs the Timeline documents to take and complete discovery, see 5 infra at 9; and, second, both appeals are interlocutory, and the Ninth Circuit has far 6 greater latitude and reason to consider such evidence. Indeed, what defendants 7 ignore is that the Ninth Circuit—and the Ninth Circuit alone—has complete 8 discretion to determine what evidence it will consider on appeal.1 9 Considering Timeline-related evidence—including the Marks memo and 10 memoranda describing Toberoff’s unlawful business dealings—makes a great deal 11 of sense in both appeals, as fairness dictates such long-suppressed evidence be 12 heard. E.g., Mangini v. U.S., 314 F.3d 1158, 1160-61 (9th Cir. 2003) (granting 13 motion to supplement record with three newly discovered letters that refuted 14 material misstatement in opposing party’s affidavits below); Rigsby v. Avenenti, 15 1992 WL 144440, at *4 n.1 (9th Cir. June 26, 1992) (granting motion to 16 supplement record with documents “only recently obtained”); Cootz v. Gen. Tel. 17 Co., 1988 WL 131672, at *5 n.5 (9th Cir. Nov. 25, 1988) (granting motion to 18 supplement record with section of collective bargaining agreement that “was not 19 part of the record below” because it was “material to th[e] appeal” and opposing 20 parties “had possession” of the document during the suit).2 21 22 23 24 25 26 27 28 1 See Lowry v. Barnhart, 329 F.3d 1019, 1024 (9th Cir. 2003) (court has inherent authority to supplement record); accord See More Light Invs. v. Morgan Stanley DW Inc., 415 Fed. Appx. 1, 2 (9th Cir. 2011); Johnson v. Rancho Santiago Comm’y College Dist., 623 F.3d 1011, 1020 n.3 (9th Cir. 2010). 2 Colbert v. Potter, 471 F.3d 158, 165-66 (D.C. Cir. 2006), is equally instructive. There, a receipt was relevant to whether the statute of limitations had run. In the district court, appellee submitted a photocopy of the back side of the receipt, and appellant “challenged the sufficiency and significance of [appellee]’s evidence.” Id. The D.C. Circuit allowed appellee to supplement the record with a complete copy because, as here, this evidence “go[es] to the heart of the contested issue, [and] it would be inconsistent with this court’s own equitable obligations … to pretend that [it does] not exist.” Id. at 166 (emphasis added). -8DC’S EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT A 17 Case 2:10-cv-03633-ODW -RZ Document 391 Filed 04/25/12 Page 15 of 38 Page ID #:24479 1 And, in any event, the Timeline documents are very much a part of the record 2 in both the Siegel and Pacific Pictures cases. The Court ordered those documents 3 produced on May 25, 2011—before defendants filed their notice of appeal in Siegel 4 and five months before the district court ruled on defendants’ SLAPP motion. 5 Docket No. 337; Case No. CV-04-08400 (ODW) (RZ), Docket No. 671. 6 c. DC will also be prejudiced by the second year-long delay defendants seek 7 to engender because DC has an urgent need to complete discovery in this case and 8 obtain a final judgment. Many parts of discovery, chief among them depositions, 9 ground to a halt after the Court issued its stay order. Often at the urging of the 10 witnesses’ counsel, DC has had to defer depositions for key witnesses, including 11 Toberoff, his three companies, his business partner Ari Emanuel, the Siegels’ 12 former counsel Kevin Marks, the Timeline author, and many others. DC needs the 13 Timeline documents to conduct examinations of these witnesses, to develop other 14 evidence necessary to pursue its rights (including by seeking summary judgment), 15 and to depose the defendant heirs. Docket No. 364 at 8-10. 16 Defendants want to grind the case to a halt for as long as they can, on the 17 theory that in October 2013 DC’s rights will be compromised, as both the Siegels’ 18 and Shusters’ termination notices purport to take effect then. This is a bargaining 19 ploy, of course, and DC needs and has the right to proceed to judgment in this case 20 well before 2013. A critical path item in doing so is completing discovery, and 21 discovery cannot really begin or end until DC has the Timeline documents in hand. 22 Petitioners might wish that the Supreme Court or en banc court will save 23 them. But as Mohawk Indus., Inc. v. Carpenter, 130 S. Ct. 599, 606-07 (2009), 24 made clear, this is not a valid impediment to DC getting the Timeline documents: 25 26 27 [P]ostjudgment appeals generally suffice to protect the rights of litigants and assure the vitality of the attorney-client privilege. Appellate courts can remedy the improper disclosure of privileged material in the same way they remedy a host of other erroneous evidentiary rulings: by vacating an adverse judgment and remanding for a new trial…. 28 -9DC’S EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT A 18 Case 2:10-cv-03633-ODW -RZ Document 391 Filed 04/25/12 Page 21 of 38 Page ID #:24485 1 Co., 883 F. Supp. 488, 492 (C.D. Cal. 1995). It also proposed a reasonable 2 procedure to address any vestigial and legitimate concerns (if any) that defendants 3 might have concerning confidentiality. 4 If the Court requires hearing on this matter, DC requests that the hearing 5 occur on April 30, 2012, at 10 a.m. PDT. 6 Dated: 7 April 25, 2012 Respectfully Submitted, O’MELVENY & MYERS LLP 8 By: /s/ Daniel M. Petrocelli Daniel M. Petrocelli Attorneys for Plaintiff DC Comics 9 10 11 12 OMM_US:70667349 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 15 DC’S EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT A 19 EXHIBIT B Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 1 of 20 Page ID #:23491 1 2 3 4 5 6 DANIEL M. PETROCELLI (S.B. #097802) dpetrocelli@omm.com MATTHEW T. KLINE (S.B. #211640) mkline@omm.com CASSANDRA L. SETO (S.B. #246608) cseto@omm.com O’MELVENY & MYERS LLP 1999 Avenue of the Stars, 7th Floor Los Angeles, CA 90067-6035 Telephone: (310) 553-6700 Facsimile: (310) 246-6779 10 PATRICK T. PERKINS (admitted pro hac vice) pperkins@ptplaw.com PERKINS LAW OFFICE, P.C. 1711 Route 9D Cold Spring, NY 10516 Telephone: (845) 265-2820 Facsimile: (845) 265-2819 11 Attorneys for Plaintiff DC Comics 7 8 9 12 UNITED STATES DISTRICT COURT 13 CENTRAL DISTRICT OF CALIFORNIA 14 Plaintiff, 15 16 17 18 19 20 21 22 23 24 25 26 27 Case No. CV 10-3633 ODW (RZx) DC COMICS, DISCOVERY MATTER v. PACIFIC PICTURES CORPORATION, IP WORLDWIDE, LLC, IPW, LLC, MARC TOBEROFF, an individual, MARK WARREN PEARY, as personal representative of the ESTATE OF JOSEPH SHUSTER, JEAN ADELE PEAVY, an individual, LAURA SIEGEL LARSON, an individual and as personal representative of the ESTATE OF JOANNE SIEGEL, and DOES 1-10, inclusive, Defendants. DC COMICS’ NOTICE OF MOTION AND MOTION TO COMPEL PRODUCTION OF DOCUMENTS DECLARATIONS OF MATTHEW T. KLINE AND CASSANDRA SETO, AND [PROPOSED] ORDER FILED CONCURRENTLY HEREWITH Judge: Magistrate: Hon. Otis D. Wright II Hon. Ralph Zarefsky Hearing Date: Feb. 13, 2012 Hearing Time: 10:00 a.m. Courtroom: 540 Discovery Cutoff: None Set Pretrial Conference: None Set Trial: None Set 28 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS EXHIBIT B 20 Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 2 of 20 Page ID #:23492 1 2 TO ALL PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that on February 13, 2012, at 10:00 a.m., or as 3 soon thereafter as the matter may be heard by the above-entitled court, located at 4 255 East Temple Street, Los Angeles, California in Courtroom 540, plaintiff DC 5 Comics will and hereby does move the Court for an order compelling defendants 6 (1) to produce to DC an unredacted copy of the communication from Kevin Marks 7 (the “Marks Communication) identified in defendant Laura Siegel Larson’s July 11, 8 2003, letter to her half brother Michael, Seto Decl. Ex. C at 287, and the Toberoff 9 Timeline document, Docket No. 49, FAC Ex. A at 63; or (2) to provide the Court, 10 for its in camera review, the Marks Communication. 11 This motion is made pursuant to Rules 26, 34, and 37 of the Federal Rules of 12 Civil Procedure and Rule 37-2 of the Local Rules of this Court on the grounds that 13 defendants have no proper grounds to resist producing the Marks Communication. 14 Any asserted privilege in the document was waived when defendants disclosed its 15 contents in, inter alia, Larson’s July 2003 letter. Significant portions of the Marks 16 Communication, moreover, are not privileged, but rather merely recount and 17 convey business communications. The Marks Communication is directly relevant 18 to DC’s federal and state-law claims in this case and significantly undermines the 19 credibility of at least three key witnesses: Marks, Larson, and Marc Toberoff. 20 Pursuant to Local Rule 37-1, the parties have attempted unsuccessfully to 21 resolve their disputes and therefore respectfully seek the assistance of the Court. 22 Pursuant to Central District Local Rule 37-2.4, and as explained the Declaration of 23 Matthew T. Kline filed concurrently herewith, DC is forced to submit this as a 24 motion rather than a joint stipulation because defendants have improperly refused to 25 provide their opposition in s timeline manner in accordance with Local Rule 37-2.2. 26 This motion is based on this Notice of Motion and Motion; the 27 accompanying Memorandum of Points and Authorities; the concurrently-filed 28 Declarations of Matthew T. Kline and Cassandra Seto and exhibits in support -1- EXHIBIT B 21 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 3 of 20 Page ID #:23493 1 thereof; any additional briefing that may be filed; all exhibits, files, and records on 2 file in this action; matters of which judicial notice may be taken; and such 3 additional submissions and argument as may be presented at or before the hearing 4 on this motion. 5 Dated: 6 7 8 9 January 23, 2012 Respectfully Submitted, O’MELVENY & MYERS LLP By: /s/ Daniel M. Petrocelli Daniel M. Petrocelli Attorneys for Plaintiff DC Comics 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -2- EXHIBIT B 22 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 4 of 20 Page ID #:23494 1 TABLE OF CONTENTS 2 3 4 5 I. Page INTRODUCTION........................................................................................... 1 II. RELEVANT FACTUAL BACKGROUND ................................................... 3 1. The Marks Communication At Issue And Its Relevance........................... 3 6 2. Larson’s July 2003 Letter And Its Revelations Concerning Marks........... 4 7 8 III. MARKS COMMUNICATION IDENTIFIED IN LARSON’S JULY 9 2003 LETTER ................................................................................................. 8 10 11 DEFENDANTS SHOULD BE COMPELLED TO PRODUCE IV. CONCLUSION ............................................................................................. 14 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -i- EXHIBIT B 23 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 5 of 20 Page ID #:23495 1 TABLE OF AUTHORITIES 2 Page 3 CASES 4 Applied Med. Res. Corp. v. Ethicon, Inc., 2005 U.S. Dist. LEXIS 41199 (C.D. Cal. May 23, 2005).................................. 14 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Burden-Meeks v. Welch, 319 F.3d 897 (7th Cir. 2003) .............................................................................. 10 Dellwood Farms, Inc. v. Cargill, Inc., 128 F.3d 1122 (7th Cir. 1997) ............................................................................ 10 Electro Scientific Indus., Inc. v. Gen. Scanning, Inc., 175 F.R.D. 539 (N.D. Cal. 1997) ......................................................................... 9 In re Fischel, 557 F.2d 209 (9th Cir. 1977) .............................................................................. 13 In re Grand Jury Investigation, 974 F.2d 1068 (9th Cir. 1992) ............................................................................ 14 In re Qwest Commc’ns Int’l Inc., 450 F.3d 1179 (10th Cir. 2006) ............................................................................ 9 In re Teleglobe Commc’ns Corp., 493 F.3d 345 (3d Cir. 2007) ............................................................................... 11 Mckay v. Comm’r, 886 F.2d 1237 (9th Cir. 1989) ............................................................................ 13 Permian v. U.S., 665 F.2d 1214 (D.C. Cir. 1981) ......................................................................... 10 Tennenbaum v. Deloitte & Touche, 77 F.3d 337 (9th Cir. 1996) .................................................................................. 8 24 25 26 27 U.S. v. Freeman, 519 F.2d 67 (9th Cir. 1975) ................................................................................ 13 U.S. v. Hall, 346 F.2d 875 (2d Cir. 1965) ............................................................................... 13 28 - ii - EXHIBIT B 24 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 6 of 20 Page ID #:23496 1 TABLE OF AUTHORITIES (continued) 2 3 4 5 6 7 Page U.S. v. Jacobs, 117 F.3d 82 (2d Cir. 1991) ............................................................................. 8, 12 U.S. v. Martin, 278 F.3d 988 (9th Cir. 2002) .............................................................................. 10 U.S. v. Mendelsohn, 896 F.2d 1183 (9th Cir. 1990) .............................................................................. 9 8 9 10 11 12 13 14 15 16 17 U.S. v. Reyes, 239 F.R.D. 591 (N.D. Cal. 2006) ......................................................................... 9 U.S. v. Ruehle, 583 F.3d 600 (9th Cir.2009) ............................................................................... 10 Upjohn Co. v. U.S., 449 U.S. 383 (1981) ..................................................................................... 12, 13 Weil v. Inv./Indicators, Research & Mgmt., Inc., 647 F.2d 18 (9th Cir. 1981) .........................................................................passim Westinghouse Elec. Corp. v. Republic of the Philippines, 951 F.2d 1414 (3d Cir. 1991) ............................................................................. 10 18 OTHER AUTHORITIES 19 FED R. CIV. P. 34(b)(2)(C) ....................................................................................... 14 20 6-26 MOORE’S FEDERAL PRACTICE - CIVIL § 26.49 (2011) ..................................... 13 21 MOORE’S FEDERAL DISCOVERY PRACTICE § 3.17 (2011)........................................ 14 22 23 24 25 26 27 28 - iii - EXHIBIT B 25 Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 7 of 20 Page ID #:23497 1 2 I. INTRODUCTION DC brings this motion to obtain a single communication from Kevin Marks 3 to the Siegel heirs—a communication whose existence and substance is openly 4 disclosed in both defendant Laura Siegel Larson’s July 11, 2003, non-privileged 5 letter to her half-brother Michael, as well as the non-privileged Toberoff Timeline. 6 DC’s complaint alleges that in October 2001, DC reached an agreement with the 7 Siegels finally settling the Siegels’ copyright claims. Marks negotiated the contract 8 on behalf of the Siegels, and he told DC in October 2001 the Siegels “accepted” 9 DC’s then-pending offer. Toberoff, who was well aware of this agreement from 10 conversations with Marks, falsely represented to the Siegels, through Marks, that a 11 wealthy investor was prepared immediately to pay the Siegels $15 million for their 12 putative Superman rights, plus other consideration. Based on Toberoff’s false 13 promises, the Siegels in 2002 repudiated their 2001 agreement with DC and entered 14 into a series of agreements with Toberoff and defendant IP Worldwide, LLC, which 15 gave Toberoff and his company a 45% interest in the Siegels’ putative rights. 16 Larson’s July 2003 letter, which Judge Wright recently ordered defendants to 17 produce, confirms that Marks communicated Toberoff’s offer to the Siegels, and 18 that when he did so, he told them they could not accept it because they “had a deal 19 with Time Warner/DC.” Marks said further that, if the Siegels repudiated their deal 20 with DC to accept Toberoff’s offer, Marks “would testify against [the Siegels] in 21 court.” Larson’s July 2003 letter openly admits Marks said this, and Larson’s 22 admission—which defendants fought for years to keep hidden from DC—validates 23 DC’s claims in this case, impeaches key testimony from Larson, Marks, and 24 Toberoff, and contradicts defendants’ contention in this case and Siegel that the 25 Siegels and DC did not reach a binding settlement in October 2001. 26 DC was entitled to Larson’s July 2003 letter to her brother, and is now 27 entitled to the underlying Marks communication that both the July 2003 letter and 28 the Toberoff Timeline openly disclose. Larson’s disclosure of Marks’ message in -1- EXHIBIT B 26 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 8 of 20 Page ID #:23498 1 her non-privileged July 2003 letter waived any claim of privilege defendants could 2 assert in Marks’ communication. Judge Wright ordered defendants to produce the 3 July 2003 letter over defendants’ specious objections that the July 2003 letter was 4 privileged, and over defendants’ claims that prior rulings in this case and Siegel 5 barred DC from discovering the document. 6 The Toberoff Timeline—which Judge Larson ordered defendants to produce, 7 and defendants jointly and publicly filed in Siegel in March 2009, Docket No. 42 at 8 40-54—similarly discusses Toberoff approaching Marks to acquire the Siegels’ 9 interests; Marks’ conveying Toberoff’s offer to the Siegels; and Marks “tell[ing] the 10 Siegels that he would testify in court against the Siegels if they accepted this 11 offer….” This disclosure of Marks’ communications—which defendants 12 previously asserted the Toberoff Timeline invented and did not exist—also vitiated 13 any claims of privilege in the Marks’ communication. 14 In any event, it is clear that at least significant parts of the Marks 15 communication were not privileged, because the document merely conveyed 16 Toberoff’s offer to the Siegels, Marks’ responsive comments to Toberoff, and his 17 affirmation that DC and the Siegels had reached an agreement in 2001. As courts 18 in this circuit and elsewhere have held, attorney-client privilege does not extend to 19 the transmission of such business proposals from one party to another, or to a 20 recitation of such underlying, operative facts. 21 Parts of the Marks communication not disclosed in the July 2003 letter or the 22 Toberoff Timeline might be privileged, but defendants have neither explained nor 23 showed why that is the case, or redacted the document to eliminate subject matters 24 other than those disclosed in the July 2003 letter and the Timeline. Indeed, DC 25 does not know whether the Marks communication is lengthy or brief, or whether 26 there is a basis to redact any of its contents. What DC does know is that the 27 communication contains Marks’ message conveying Toberoff’s offer to the Siegels 28 and his objections to it. DC is entitled to discover Marks’ communication on these -2- EXHIBIT B 27 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 9 of 20 Page ID #:23499 1 subjects in his own words—both as proof of its claims and to impeach his, 2 Larson’s, and Toberoff’s contrary testimony. In short, defendants should be 3 ordered to produce the Marks communication without delay. Alternatively, the 4 Court should order defendants to provide the document for in camera review, to 5 produce the document to DC, with redactions if necessary. 6 II. RELEVANT FACTUAL BACKGROUND 7 1. The Marks Communication At Issue And Its Relevance 8 Defendant Laura Siegel Larson sent her half-brother Michael Siegel a letter 9 dated July 11, 2003, in which she openly disclosed the existence and substance of a 10 communication she received from Kevin Marks—the Siegels’ prior lawyer who 11 negotiated with DC a settlement of the heirs’ putative Superman claims in October 12 2001. Cassandra Seto Decl. (“Seto Decl.”) Ex. C at 287. According to Larson, 13 Marks communicated to the Siegels in 2002: an offer made by defendant Marc 14 Toberoff on behalf of an unnamed “investor” to acquire the Siegels’ putative 15 Superman rights; that the heirs could not accept the offer because they “had a deal 16 with Time Warner/DC” providing that DC would retain all rights to Superman; and 17 that Marks “would testify against [the Siegels] in court” if they repudiated the 18 October 2001 agreement with DC to accept Toberoff’s offer. Id. 19 The Marks Communication validates DC’s federal and state-law claims here. 20 As alleged in DC’s complaint, DC and the Siegels engaged in negotiations for four 21 years after the Siegels served their Superman termination notice in 1997, resulting 22 in an agreement in October 2001 finally settling the Siegels putative claims. 23 Docket No. 49, First Amended Complaint (“FAC”) ¶¶ 66-69. Indeed, Marks sent 24 John Schulman, general counsel for Warner Bros., a letter on October 19, 2011, 25 confirming the parties’ agreement: “The Siegel Family (through Joanne Siegel and 26 Laura Siegel Larson, the majority owners of the terminated copyright interests) has 27 accepted D.C. Comics’ offer of October 16, 2011 in respect of the ‘Superman’ and 28 ‘Spectre’ properties.” Docket No. 305-15 at 414. -3- EXHIBIT B 28 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 10 of 20 Page ID #:23500 1 After securing half of the Shuster heirs’ putative Superman copyright 2 interests for himself, Toberoff reached out to Marks in late 2001, early 2002, and 3 again in the summer of 2002. Docket No. 49, FAC ¶¶ 66-79. As Marks has 4 testified, he told Toberoff of the existence of the 2001 agreement between the 5 Siegels and DC, refused to discuss its specifics, but Toberoff pressed for details 6 concerning the agreement and asked Marks to communicate to the Siegels an offer 7 to buy out their rights. Docket Nos. 49, FAC ¶ 77; 307 at 9-13; 308 ¶¶ 16-31. 8 Toberoff falsely represented to the Siegels (through Marks) that if they 9 repudiated their agreement with DC and entered into an agreement with him 10 instead, a wealthy “investor” was prepared immediately to pay them $15 million for 11 their Superman rights, plus generous back-end profit participations and other 12 consideration. Toberoff also falsely represented that he and his business partner 13 would help the Siegels produce their own Superman movie. Docket Nos. 49, FAC 14 ¶¶ 71-78 & Ex. A at 63; 225-4 at 3; 305-14 at 375:20-376:5; 308 ¶¶ 29-31. Based 15 on Toberoff’s false inducements, the Siegels repudiated their 2001 agreement with 16 DC and entered into agreements with Toberoff and defendant IP Worldwide, LLC, 17 which provided Toberoff and his company a 45% interest in any recovery by the 18 Siegels. Docket Nos. 49, FAC ¶¶ 79-85, 180-86; 305-26; 305-56 308 ¶¶ 32-41. 19 2. Larson’s July 2003 Letter And Its Revelations Concerning Marks 20 From the outset of discovery in this case, DC pressed defendants to produce 21 correspondence between Larson and her brother Michael identified in the Toberoff 22 Timeline—none of which had been provided to DC in the Siegel case or appeared 23 on defendants’ numerous privilege logs. E.g., Docket No. 160 at 30-38. This 24 includes a May 2003 letter from Michael to Larson and Larson’s July response. 25 Docket Nos. 49, FAC Ex. A at 64-66; 160 at 37-38. Defendants refused to produce 26 these non-privileged communications between brother and sister, forcing DC to file 27 motion after motion seeking these unaccounted for Larson-Michael Siegel 28 correspondence. E.g., Docket Nos. 160 at 30-38; 225 at 13-17; 316 at 6-20. -4- EXHIBIT B 29 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 11 of 20 Page ID #:23501 1 This Court ordered defendants to produce to DC a May 13, 2003, letter from 2 Michael to Larson. Docket No. 209 at 12. The May 13 letter directly refutes 3 factual contentions in SLAPP briefing, corroborates DC’s claims in the case, and 4 confirms the veracity of parts of the Toberoff Timeline document. See Docket No. 5 225 at 13-14.1 DC examined Larson about Michael’s May 13 letter during her 6 deposition. She confirmed that she responded to his May 13 letter; that she 7 believed her response was sent in July 2003; and that she gave Toberoff a copy of 8 the final letter. Docket No. 316-5 at 314:12-15, 316:11-12, 323:11-14, 325:22- 9 327:22, 328:3-330:3. Toberoff refused to produce the letter or confirm it existed 10 for months—then he finally disclosed its existence on defendants’ privilege logs 11 (where it was hidden behind other entries) and claimed it was subject to a common- 12 interest privilege. Docket Nos. 329, 331, 332. 13 Judge Wright ultimately ordered defendants to produce the July 2003 letter to 14 DC, rejecting as clearly erroneous defendants’ arguments that, inter alia, the July 15 2003 letter was protected by a common-interest privilege, or that prior discovery 16 rulings in this case or Siegel barred DC from seeking it. Docket No. 336. 17 Like the May 2003 letter, the July 2003 letter contains especially important 18 revelations—both because of the facts it recounts, and because it underpins many of 19 DC’s key allegations in this case. Compare Seto Decl. Ex. C at 287-90, with 20 Docket No. 49, FAC ¶¶ 7-8, 66-85, 180-86. Significantly, Larson openly discloses 21 receiving a communication from Marks in which he conveyed Toberoff’s offer to 22 Siegels, while at the same time stating that he would testify against the heirs if they 23 24 25 26 27 28 1 The opening line of the May 13 letter also disclosed yet another Larson-Michael correspondence defendants never logged, produced, or disclosed—a November 2, 2002, letter from Larson to Michael. Docket No. 225-4 at 3. Defendants represented to this Court that they were not in possession of the November 2 letter, Docket Nos. 267-1 at 2526; 288 at 38:22-39:13, and based on that representation, the Court denied DC’s motion to compel its production, Docket No. 288 at 43:23-44:2. Defendants now admit the November 2 letter is in their possession, yet they still refuse to produce it. Seto Decl. Ex. F at 311 (Entry No. 399). DC will be moving separately to compel its production. -5- EXHIBIT B 30 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 12 of 20 Page ID #:23502 1 accepted his offer. Larson wrote to her brother (in a letter she admits Toberoff 2 reviewed, edited, and approved): 3 4 5 6 7 8 9 We fired Kevin Marks and Bruce Ramer because they were insisting we take a bad TW/DC deal. You’ll remember that you, Don Bulson and we were shocked when Kevin Marks said that if asked to, he would testify against us in court. … Kevin Marks had turned Marc away saying we had a deal with DC when we did not. … Kevin Marks told Marc we had a deal with Time Warner/DC. Seto Decl. Ex. C at 287 (emphasis added). The Marks Communication not only directly supports DC’s claims in this 10 case, it bears importantly on Larson’s, Marks’, and Toberoff’s credibility as 11 witnesses. For example—before DC obtained the Timeline document or any of the 12 evidence above—Marks equivocated in the Siegel case: 13 14 15 16 17 18 19 20 21 22 23 Q. Did you as of February 6, ‘02 believe that you had closed a deal with DC for the Superman interest? A. Well, if the question is did I think at this point there was a final, binding, enforceable agreement, the answer would be no, but I did believe that we had come to an agreement back on October 19th, 2001, that was reflected exactly in the terms that I set out. At the end of that letter I wrote to John in substance and effect, “John, if I’ve gotten anything wrong, if I’ve misstated any of these terms, please let me know.” When John writes back on October 26, which I see later, in effect his letter is, “Yeah, you've got terms wrong. My outline of the deal terms is different than your outline of the deal terms.” So while I thought we had an agreement on these terms, John evidently didn’t, and where you don’t have a meeting of the minds, you don’t have an agreement. Docket No. 305-14 at 360:21-362:2. Larson made similar claims, see Seto Decl. Ex. B at 130-155:24; 224:21- 24 225:5; 266:10-270:3 (“We never reached a final agreement.”), and Toberoff 25 testified that Marks did not tell Toberoff the Siegels already had a deal with DC. 26 Compare, e.g., Docket Nos. 305-17 at 517:13-532:20 (Toberoff: “[Marks’] 27 indicated that the Siegel rights were available, and if there was an interest in those 28 rights, you can make an offer, but he can’t discuss anything with me.”) (emphasis -6- EXHIBIT B 31 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 13 of 20 Page ID #:23503 1 added), with Seto Decl. Ex. C at 287 (Larson, in 2003 Letter edited and approved 2 by Toberoff: “Kevin Marks told Marc we had a deal with Time Warner/DC.”).2 3 Larson’s July 2003 letter also confirms, once again, the accuracy of the 4 Toberoff Timeline. Defendants have claimed the Timeline is an “untrustworthy,” 5 “ranting” “hitpiece” and chastised DC and its counsel for relying on it. E.g., 6 Docket Nos. 160 at 5, 71-73; 162-10 at 581-82 ¶ 10; 196 at 2, 10; 230 at 9-10. Yet, 7 discovery revelation after discovery revelation—all made under force of court 8 order—has verified the Timeline is in fact a truthful recitation of defendants’ 9 admissions and conduct, and that it identifies documents defendants improperly 10 buried and withheld. E.g., Docket Nos. 209 at 12; 230 at 9-10; 336. The Timeline, 11 like the July 2003 letter, discloses the Marks communication and recounts: 12 MT and Ari Emanuel, partner and agent at Endeavor, contacts Kevin Marks at Gang, Tyrer [sic], Ramer, & Brown again, (who represented Joanne and Laura Siegel), on August 8, 2002. MT approaches the Siegels, not as an attorney but as a film producer, stating that he is “allied” with Emanuel, hoping such a claim will legitimize him. On August 8, 2002, MT tells Marks that he and Emanuel have a billionaire ready to offer $15 million up-front, plus what they promise to be meaningful participation from proceeds for exploitation of the Siegels’ rights to SUPERMAN and some continued royalties on an ongoing basis in all media. Kevin Marks says to the Siegels, ‘Don’t do it.” … In their very first conversation, Kevin Marks tells MT “no go” --- that the Siegels have already reached an agreement with Time Warner and DC Comics. Marks conveys MT’s offer to the Siegels, and Marks does say to the Siegels, it is a better offer than the one you have. However, Marks also tells the Siegels that he would testify in court against the Siegels if they accepted this offer because he believes there has already been an agreement reached [with DC]. The Siegels are angry at Kevin Marks that he said he would testify against them if they took MT’s offer, and relations break down between the Siegels and Gang, Tyrer [sic]. They fire Gang, Tyrer. 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 The Court in Siegel, which did not have the benefit of this new evidence, denied DC’s settlement defense based, inter alia, on Marks’, Larson’s, and Toberoff’s deposition testimony. Case No. CV-04-8400, Docket No. 293 at 57-62. DC will be presenting this new evidence in Siegel, as one of many grounds to overturn Judge Larson’s ruling. -7- EXHIBIT B 32 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 14 of 20 Page ID #:23504 1 Docket No. 49, FAC Ex. A at 63 (emphasis added). 2 Hoping to avoid motion practice, DC asked defendants to produce the Marks 3 communication identified in the July 2003 letter and Timeline. Defendants refused. 4 Seto Decl. Exs. D, E.3 They also refuse to describe the communication beyond 5 what is disclosed in the July 2003 letter and Timeline, nor will they confirm where 6 it is listed on their various privilege logs. DC believes, but cannot know for certain, 7 that it is at Entry No. 623 of the Siegel Privilege Log—an August 9, 2002, “Letter” 8 from “Kevin Marks” to “Joanne, Laura Siegel, Atty Don Bulson, Atty Bruce 9 Ramer,” which was withheld on “Atty/Client” grounds, Docket No. 162-6 at 422. 10 III. DEFENDANTS SHOULD BE COMPELLED TO PRODUCE MARKS 11 COMMUNICATION IDENTIFIED IN LARSON’S JULY 2003 12 LETTER 13 1. Larson’s July 2003 Letter Waived Privilege in the Marks Communication. 14 Larson’s disclosure of the substance of the Marks communication in her July 2003 15 letter waived whatever privilege might otherwise have existed in the document. See 16 Tennenbaum v. Deloitte & Touche, 77 F.3d 337, 341 (9th Cir. 1996) (“disclosure of 17 privileged communications to someone outside the attorney-client relationship” 18 waives privilege); Weil v. Inv./Indicators, Research & Mgmt., Inc., 647 F.2d 18, 25 19 (9th Cir. 1981) (waiver applies to all “communications about the matter actually 20 disclosed”); U.S. v. Jacobs, 117 F.3d 82, 91 (2d Cir. 1991) (“[d]isclosure of the 21 3 22 23 24 25 26 27 28 Defendants do not dispute that the Marks communication is responsive to DC’s requests for production served in Siegel and this case or relevant. E.g., Docket Nos. 16114 at 154-55 (Larson Request No. 15 (“All DOCUMENTS relating to the October 19, 200[1] letter from Kevin Marks to John Schulman confirming that the SIEGEL HEIRS ‘accepted D.C. Comics’ offer of October 16, 2001.”); Id. No. 23 (“All DOCUMENTS relating to any solicitation, offer, or option from any DEFENDANT regarding the purported rights YOU or the SIEGEL HEIRS [have] in SUPERMAN and/or SUPERBOY.”)); 296-3 at 17 (Siegel Heirs Request No. 52 in Siegel (“All Writings concerning the settlement discussions between Plaintiffs and Defendants that took place from approximately April 17, 1997 through September 30, 2002.”); Id. No. 59 (“All Writings concerning any disposition of any rights relating to Superman, including but not limited to any solicitation, offer, option, agreement or license.”)). -8- EXHIBIT B 33 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 15 of 20 Page ID #:23505 1 substance of a privileged communication” effects waiver); In re Qwest Commc’ns 2 Int’l Inc., 450 F.3d 1179, 1185 (10th Cir. 2006) (“voluntary disclosure by the client 3 is inconsistent with the attorney-client relationship and waives the privilege”). 4 The law in this circuit is well-established that voluntary disclosure of the 5 substance of a claimed attorney-client communication waives privilege as to that 6 communication. For example, in Electro Scientific Indus., Inc. v. Gen. Scanning, 7 Inc., 175 F.R.D. 539, 543 (N.D. Cal. 1997), the court found that a news release 8 stating that counsel advised that the subject patents were invalid waived privilege as 9 to underlying legal opinions. The court reasoned that the news release “voluntarily 10 disclosed an important, substantive component of a communication from counsel”; 11 indeed, the news release disclosed “the most important part of it: the bottom line of 12 the lawyer’s opinion, his conclusion, the ultimate outcome of his legal reasoning,” 13 Id. (emphasis in original). Larson similarly discloses in her July 2003 letter the 14 “most important parts” of Marks’ communication: that Marks believed the Siegels 15 “had a deal with Time Warner/DC” finally settling their putative Superman claims 16 in October 2001; that Marks “turned Marc [Toberoff] away saying [the Siegels] had 17 a deal with DC”; and that Marks made clear to the Siegels he “would testify against 18 them in court” if they repudiated the October 2001 agreement to accept Toberoff’s 19 offer on behalf of the unnamed “investor.” Seto Decl. Ex. C at 287.4 Defendants cannot avoid this waiver by having improperly withheld the July 20 21 2003 letter from DC for over six years based on specious common-interest privilege 22 claims now rejected by Judge Wright. The July 2003 letter was written by Larson 23 in response to Michael’s May 13 letter concerning Toberoff’s misconduct—and his 24 illicit efforts to secure Michael’s rights. Docket No. 225-4; 316-5 at 314:12-15, 25 26 27 28 4 Accord Weil, 647 F.2d at 25 (disclosure to opposing counsel of content of privileged communication waived privilege) U.S. v. Mendelsohn, 896 F.2d 1183, 1189 (9th Cir. 1990) (waiver found where statements concerning advice of counsel made to third party); U.S. v. Reyes, 239 F.R.D. 591, 602-603 (N.D. Cal. 2006) (disclosure of substance of legal investigative reports to government waived privilege as to underlying documents). -9- EXHIBIT B 34 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 16 of 20 Page ID #:23506 1 316:11-12, 323:11-14, 325:22-327:22, 328:3-330:3. Larson drafted and sent her 2 July 2003 letter to address these accusations of misconduct, Docket Nos. 329 at 3; 3 332 at 7—and she did so after September 2002, and at a time when the Ohio district 4 court held (and Judge Wright confirmed) Michael’s and Larson’s interests were not 5 in common, but were “separate and apart.” Docket Nos. 161-5 at 31; 336. When 6 Michael received the July 2003 letter—which contains no privilege or 7 confidentiality markings—he had no duty to keep the July 2003 letter or its 8 discussions of the Marks’ communication private, meaning the July 2003 letter 9 “surrenders the privilege with respect to the world at large; selective disclosure is 10 not an option.” Burden-Meeks v. Welch, 319 F.3d 897, 898 (7th Cir. 2003); accord 11 supra n.4 & accompanying text; Dellwood Farms, Inc. v. Cargill, Inc., 128 F.3d 12 1122, 1126-27 (7th Cir. 1997); Permian v. U.S., 665 F.2d 1214, 1219-22 (D.C. Cir. 13 1981); Westinghouse Elec. Corp. v. Republic of the Philippines, 951 F.2d 1414, 14 1423-27 (3d Cir. 1991). 15 Defendants assert that no waiver occurred because in 2001 and part of 2002 16 Michael and Larson shared a common-interest, and all Larson was doing in her 17 2003 letter was discussing a 2002 communication—Marks’ message—that once 18 was confidential. Seto Decl. Ex. E at 293. Whether Michael previously shared a 19 common interest with Larson makes no difference. In July 2003, Michael stood in 20 the same shoes as any other third-party recipient of Larson’s letter. He was not 21 within the umbrella of any privilege and could disclose its contents to anyone. 22 Larson could have no expectation (reasonable or otherwise) of confidentiality in her 23 letter or its contents, see U.S. v. Martin, 278 F.3d 988, 1000 (9th Cir. 2002), and 24 she thereby waived any privilege in the contents of the letter, including her detailed 25 description of the Marks communication and the underlying Marks document that 26 communicated it, U.S. v. Ruehle, 583 F.3d 600, 612 (9th Cir.2009) (“any voluntary 27 disclosure of information to a third party waives the attorney-client privilege”); 28 Weil, 647 F.2d at 24. Parties who share the common-interest privilege expressly - 10 - EXHIBIT B 35 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 17 of 20 Page ID #:23507 1 agree not to disclose such communications, e.g., In re Teleglobe Commc’ns Corp., 2 493 F.3d 345, 364-65 (3d Cir. 2007), but as the Ohio court and Judge Wright both 3 confirmed, Michael was under no such duty in July 2003. 4 Indeed, at the time Larson sent her July 2003 letter, her and Michael’s 5 interests were palpably at odds. Larson agreed Toberoff should try to buy, in 6 partnership with Ari Emanuel, her sick brother Michael’s putative interests in 7 Superman. Seto Decl. Ex. A at 3-5. Larson, by her own admission, worked with 8 Toberoff to convince Michael to accept Toberoff’s offer on behalf on his “unnamed 9 investor,” id. Ex. C at 288-90, even though the terms Toberoff was offering 10 Michael were worse than he and Larson were themselves demanding from DC, see 11 Docket No. 183-4 at 47. Toberoff also withheld key information from Michael and 12 his lawyer, Don Bulson. Bulson recently confirmed that in negotiating with 13 Toberoff he asked for transparency, e.g., Docket No. 305-52 at 1877:21-1878:3, 14 and despite repeated requests that Toberoff identify the unnamed “investor” on 15 whose behalf he was purportedly acting, Toberoff refused to tell him it was 16 Emanuel. E.g., id. at 1863:5-11. Toberoff likewise refused to disclose his own 17 personal business interests in the transaction, including that Emanuel was his 18 business partner. E.g., id. at 1863:18-1867:2. 19 Defendants suggest DC is precluded from discovering the Marks document 20 based on rulings by the Ohio court in the Siegel case, Seto Decl. Ex. E at 293, but 21 no court—not this Court, not the Court in Siegel, and not the Ohio court—has ever 22 adjudicated whether Larson’s disclosure in her July 2003 letter waived privilege in 23 the Marks communication. No court could have so ruled since defendants first 24 produced the July 2003 letter in October 2011, pursuant to Judge Wright’s order, 25 and after having obscured it for years behind a false privilege log entry listing a 26 “Facsimile” from “Laura Siegel” to “Marc Toberoff.” Docket No. 329 at 1. 27 28 2. Defendants’ Disclosure of the Toberoff Timeline Also Waived Privilege in the Marks Communication. The Timeline, like Larson’s July 2003 letter, openly - 11 - EXHIBIT B 36 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 18 of 20 Page ID #:23508 1 discloses Marks’ communications with the Siegels’ concerning Toberoff’s illicit 2 offer. See supra at 7-8. Such disclosures vitiate any claims of privilege in the 3 document. E.g., Weil, 647 F.2d at 24 (waiver applies to all “communications about 4 the matter actually disclosed”); Jacobs, 117 F.3d at 91 (“[d]isclosure of the 5 substance of a privileged communication” effects waiver). 6 Defendants repeatedly waived all privilege claims over the Timeline, as 7 Judge Larson squarely held. E.g., Docket No. 42 at 45-47. And when DC finally 8 obtained the document in December 2008, defendants took no steps to maintain its 9 confidentiality. Just the opposite: defendants chose openly and publicly to file the 10 Timeline on March 2, 2009, as part of a discovery joint stipulation in the Siegel 11 case. See Docket No. 42 at 43-44. As quoted and shown above, the Timeline 12 contains lengthy descriptions of the Marks communication, and defendants never 13 sought to redact those descriptions or quotations—rather, instead, they called them 14 a delusional and false rant. E.g., Docket Nos. 160 at 5, 71-73; 162-10 at 581-82 15 ¶ 10; 196 at 2, 10; 230 at 9-10. But Larson’s very own July 2003 letter (which 16 Toberoff scripted) shows that the Timeline’s disclosures were not a wild rant, and 17 confirm that Marks, in fact, told Toberoff and the Siegels exactly what the Timeline 18 author reported. By failing to assert privilege over the Timeline in 2007 or 2008, 19 and by failing to protect or redact its contents from full public review in 2009, 20 defendants waived any privilege claim over the Marks communication. 21 3. In Any Event, The Marks Communication Is Not Privileged (And Least 22 Not In Its Entirety). Larson’s July 2003 letter and the Timeline both describe the 23 Marks communication as (a) Marks’ republishing Toberoff’s offer to acquire the 24 Siegels’ purported Superman rights; (b) Marks’ republishing his disclosure to 25 Toberoff that the Siegels reached agreement with DC; and (c) Marks’ recounting 26 the fact the Siegels reached a settlement agreement with DC in 2001. It is well- 27 established that the attorney-client privilege does not extend to the transmission of 28 facts such as this, as opposed to the conveyance of legal advice. E.g., Upjohn Co. - 12 - EXHIBIT B 37 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 19 of 20 Page ID #:23509 1 v. U.S., 449 U.S. 383, 395-396 (1981) (protection of attorney-client privilege does 2 not extend to “facts”). Facts do not become privileged simply because they are 3 incorporated into a communication from counsel. Id. at 396; see 6-26 MOORE’S 4 FEDERAL PRACTICE - CIVIL § 26.49 (2011) (“The underlying facts of an action are 5 not protected by the attorney-client privilege.”). 6 In Mckay v. Comm’r, 886 F.2d 1237, 1238 (9th Cir. 1989), the Ninth Circuit 7 permitted an attorney to testify, over an attorney-client privilege objection, that he 8 conveyed a notice of deficiencies from the IRS to his client. The “relaying of this 9 message is not in the nature of a confidential communication.” Id. The privilege 10 does not extend to the Marks communication for the same reason: Marks was 11 merely conveying the terms of Toberoff’s offer to the Siegels, his response, and the 12 fact of their October 2001 agreement with DC. Marks “served merely as a conduit 13 for transmission of a message,” U.S. v. Freeman, 519 F.2d 67, 68 (9th Cir. 1975) 14 (quoting U.S. v. Hall, 346 F.2d 875, 882 (2d Cir. 1965)). 15 Likewise, in In re Fischel, 557 F.2d 209, 212 (9th Cir. 1977), the Ninth 16 Circuit ordered an attorney to produce lawyer-created documents that summarized 17 business transactions with third parties. The facts incorporated into the summary 18 documents did not become privileged because an attorney gathered them. The 19 “purpose of the [attorney-client] privilege,” the court held, “is not to permit an 20 attorney to conduct his client’s business affairs in secret,” and that an “attorney’s 21 involvement in, or recommendation of, a transaction does not place a cloak of 22 secrecy around all incidents of the transaction.” Id. at 211-12. Marks’ words and 23 actions as “attorney-messenger” similarly do not cloak the facts conveyed. 24 4. The Order DC Seeks. Defendants should be ordered to produce the Marks 25 communication to DC without redaction. Defendants refuse to describe the 26 document beyond what is disclosed in Larson’s July 2003 letter and the Timeline, 27 so DC has no way of determining whether it includes any privileged material 28 beyond the non-privileged contents discussed above. DC believes the Marks - 13 - EXHIBIT B 38 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS Case 2:10-cv-03633-ODW -RZ Document 362 Filed 01/23/12 Page 20 of 20 Page ID #:23510 1 communication is identified as Entry No. 623 of the Siegel Privilege Log in this 2 case, Docket No. 162-6 at 422, but as noted above, defendants refuse to confirm 3 that. To the extent the document incorporates legal advice, defendants had a duty 4 to produce a redacted copy of the document, excluding any claimed privileged 5 material. See FED R. CIV. P. 34(b)(2)(C). Defendants did not and therefore waived 6 any privilege claims. See Weil, 647 F.2d at 24 (voluntary disclosure of claimed 7 privileged material to a third party constitutes waiver); MOORE’S FEDERAL 8 DISCOVERY PRACTICE § 3.17 (2011) (produced documents to be redacted to 9 preserve privilege claims). 10 In the alternative to ordering the document produced outright, the Court 11 could order defendants to submit it for in camera review, to determine whether any 12 additional contents in the document other than those described above exist and 13 should be redacted. See In re Grand Jury Investigation, 974 F.2d 1068, 1074 (9th 14 Cir. 1992); Applied Med. Res. Corp. v. Ethicon, Inc., 2005 U.S. Dist. LEXIS 41199, 15 at *4 (C.D. Cal. May 23, 2005). At all events, DC should be provided without 16 delay the portions of the Marks memo disclosed in the July 2003 letter and 17 Timeline. 18 IV. 19 20 21 22 23 24 CONCLUSION For the foregoing reasons, DC’s motion should be granted. Dated: January 23, 2012 Respectfully Submitted, O’MELVENY & MYERS LLP By: /s/ Daniel M. Petrocelli Daniel M. Petrocelli Attorneys for Plaintiff DC Comics 25 26 27 28 - 14 - EXHIBIT B 39 DC’S NOTICE OF MOT. & MOT. TO COMPEL PROD. OF DOCS EXHIBIT C Case 2:10-cv-03633-ODW -RZ Document 405 Filed 05/02/12 Page 1 of 6 Page ID #:24946 1 2 3 4 5 6 DANIEL M. PETROCELLI (S.B. #097802) dpetrocelli@omm.com MATTHEW T. KLINE (S.B. #211640) mkline@omm.com CASSANDRA L. SETO (S.B. #246608) cseto@omm.com O’MELVENY & MYERS LLP 1999 Avenue of the Stars, 7th Floor Los Angeles, CA 90067-6035 Telephone: (310) 553-6700 Facsimile: (310) 246-6779 10 PATRICK T. PERKINS (admitted pro hac vice) pperkins@ptplaw.com PERKINS LAW OFFICE, P.C. 1711 Route 9D Cold Spring, NY 10516 Telephone: (845) 265-2820 Facsimile: (845) 265-2819 11 Attorneys for Plaintiff DC Comics 7 8 9 12 UNITED STATES DISTRICT COURT 13 CENTRAL DISTRICT OF CALIFORNIA 14 15 DC COMICS, Plaintiff, 16 17 18 19 20 21 22 23 24 25 Case No. CV 10-3633 ODW (RZx) DISCOVERY MATTER v. PACIFIC PICTURES CORPORATION, IP WORLDWIDE, LLC, IPW, LLC, MARC TOBEROFF, an individual, MARK WARREN PEARY, as personal representative of the ESTATE OF JOSEPH SHUSTER, JEAN ADELE PEAVY, an individual, LAURA SIEGEL LARSON, an individual and as personal representative of the ESTATE OF JOANNE SIEGEL, and DOES 1-10, inclusive, Defendants. DC COMICS’ REPLY IN SUPPORT OF EX PARTE APPLICATION TO LIFT TEMPORARY STAY ON COURT’S MAY 25, 2011, AND AUGUST 8, 2011, ORDERS Judge: Magistrate: Hon. Otis D. Wright II Hon. Ralph Zarefsky Hearing Date: May 7, 2012 Hearing Time: 10:00 a.m. 26 27 28 DC’S REPLY ISO EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT C 40 Case 2:10-cv-03633-ODW -RZ Document 405 Filed 05/02/12 Page 4 of 6 Page ID #:24949 1 5. The exigency and need for the documents at issue here is real. As Ninth 2 Circuit law makes clear, it is for the Ninth Circuit—and the Ninth Circuit alone—to 3 decide whether it will consider the Timeline documents as part of defendants’ 4 SLAPP and Siegel appeals. Ex Parte App. at 8-9. Defendants do not and cannot 5 dispute this, suggesting only instead that the court of appeals would consider these 6 documents in an extraordinary case. Opp. at 3-5. This is an extraordinary case, 7 just like the ones DC cited, Ex Parte App. at 8 & n.1, because defendants have long 8 possessed and refused to produce the underlying Timeline documents at issue, and 9 no one can dispute whether documents like the Marks memo or memos confirming 10 that Toberoff’s business practices were “unlawful” are relevant. 11 As Chief Judge Kozinski explained in the Lowry case cited by DC and 12 defendants, the Ninth Circuit has the “inherent authority to supplement the record in 13 extraordinary cases,” but is loathe to do so where the “authenticity” of documents is 14 disputed. 329 F.3d at 1024-25. Here, there is no dispute about authenticity, nor 15 could there be one, given that the documents at issue admittedly came from 16 Toberoff’s files and Toberoff reviewed the documents and logged them as allegedly 17 real, privileged communications between client and counsel. 18 Defendants cannot decide for the Ninth Circuit what documents the court 19 will consider on appeal. And given the admitted authenticity of these documents, 20 the already interlocutory nature of defendants’ SLAPP and Siegel appeals, and 21 DC’s arguments in both appeals about the relevance of this newly emerging 22 evidence as direct refutations to defendants’ factual arguments, the Ninth Circuit 23 would be well within its rights to consider all or, at least some, of the Timeline 24 documents in either appeal. At least one that it certainly can and should consider is 25 the Marks memo, which is described in detail in the district court and appellate 26 record in the Siegel and Pacific Pictures cases, and fully supports DC’s position in 27 both appeals. E.g., Case No. CV-04-8400, Docket Nos. 476 at 11-22; 476-2 at ¶¶ 28 4-5; see Decl. of Ashley K. Pearson (“Pearson Decl.”) Ex. A at 8-12. -3DC’S REPLY ISO EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT C 41 Case 2:10-cv-03633-ODW -RZ Document 405 Filed 05/02/12 Page 6 of 6 Page ID #:24951 1 to wait another month, some months, or possibly even a year to obtain these 2 materials. The one-year stay that has already occurred fully served its intended 3 purpose. 4 Dated: May 2, 2012 5 Respectfully Submitted, O’MELVENY & MYERS LLP By: /s/ Daniel M. Petrocelli Daniel M. Petrocelli Attorneys for Plaintiff DC Comics 6 7 8 9 OMM_US:70675589.1 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -5DC’S REPLY ISO EX PARTE APPLICATION TO LIFT TEMPORARY STAY EXHIBIT C 42 EXHIBIT D Case 2:10-cv-03633-ODW-RZ Document 424 Filed 05/10/12 Page 1 of 1 Page ID #:25445 UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA CIVIL MINUTES - GENERAL Case No. CV 10-03633 ODW (RZx) Title DC COMICS v. PACIFIC PICTURES CORPORATION, ET AL. Present: The Honorable Date May 10, 2012 RALPH ZAREFSKY, U.S. MAGISTRATE JUDGE Ilene Bernal N/A Deputy Clerk Court Reporter / Recorder Attorneys Present for Plaintiff: Attorneys Present for Defendants: Not Present Not Present Proceedings: In Chambers – DEFENDANTS’ EX PARTE APPLICATION FOR A PROTECTIVE ORDER REGARDING THE PRODUCTION OF THE “STOLEN DOCUMENTS” Filed May 9, 2012 - Doc 420 Defendants may designate as confidential any document to be produced that contains sensitive medical information. Any such document shall be used only in accordance with the custom of the parties as they have handled other documents designated as confidential. The designation shall expire within 30 days unless Defendants move, by noticed motion under L.R. 37, for a protective order as to that specific document; if Defendants so move, the designation will continue until the Court rules. If any documents contain personal identifiers such as Social Security numbers, Plaintiff shall maintain the personal identifiers in confidence. Except as set forth, Defendants’ Ex Parte Application is denied. : Initials of Preparer CV-90 (10/08) CIVIL MINUTES - GENERAL EXHIBIT D 43 igb Page 1 of 1

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?