Bean v. John Wiley & Sons Incorporated

Filing 104

ORDER granting Plaintiff's motion to compel keys explaining spreadsheet codes and fees 84 ; Defendant shall provide plaintiff with a key defining all terms contained in Exhibit A to Plaintiff's reply 94 within 5 days; denying Plaintiff's motion to compel production of documents 85 ; each party to bear its own fees and costs. Signed by Judge Frederick J Martone on 1/17/12.(REW)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE DISTRICT OF ARIZONA

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Tom Bean,
Plaintiff,

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vs.

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John Wiley & Sons Incorporated,
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Defendant.
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CV 11-08028-PCT-FJM
ORDER

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Plaintiff is a professional photographer. Defendant publishes educational textbooks.

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Plaintiff alleges that defendant infringed his copyrights by unlawfully reproducing his

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photographs in its textbooks.

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The court has before it plaintiff's motion to compel keys explaining spreadsheet codes

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(doc. 84), defendant's response (doc. 88), and plaintiff's reply (doc. 94). We also have

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plaintiff's motion to compel production of documents (doc. 85), defendant's response (doc.

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90), and plaintiff's reply (doc. 95).

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I

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In the course of discovery, plaintiff requested defendant to produce printing, sales, and

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distribution data. Defendant maintains this information in an electronic database called

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CORE. Defendant produced the requested information, first in the form of screenshots and

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then (upon plaintiff's request) in excel spreadsheet format. Several of the column headings

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and spreadsheet cells include abbreviations. For example, one spreadsheet includes the

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following: "INV ADJ Units (life to date)," "VG Enc PAG," "LM4E," "BRV." and "IRCD."

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Reply to Mot. to Compel Keys, ex. A. Plaintiff asked defendant to provide a key to each

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spreadsheet that would define each abbreviation. Defendant refused, stating that plaintiff

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already knows the meaning of the terms from deposition testimony, and stating that it is not

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required to create documents that do not currently exist. Plaintiff moves for an order

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compelling defendant to produce keys defining the spreadsheet codes.

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A party may request electronically stored information ("ESI") that is "stored in any

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medium from which information can be obtained either directly or, if necessary, after

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translation by the responding party into a reasonably usable form." Fed. R. Civ. P.

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34(a)(1)(A). The rule explicitly places the burden of translating the data on the responding

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party (in this case, the defendant). Although spreadsheets are generally a useable form,

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defendant's use of cryptic abbreviations without definition renders these portions of the

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spreadsheets meaningless, just as if the data had been produced in code or in a non-readable

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format.

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Defendant complains that because plaintiff has learned the meaning of the

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abbreviations through deposition testimony and informal communications with counsel,

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providing this information is duplicative and improperly burdensome. We disagree. It is

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defendant's burden to translate ESI into a useful format. Plaintiff has already provided

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defendant with a list of abbreviations for which it seeks a definition. Reply to Mot. to

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Compel Keys, ex. A. Requiring defendant to supply definitions already in its possession is

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not overly burdensome compared to requiring plaintiff to sift through pages of documents.

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Plaintiff's motion to compel keys explaining the spreadsheets is granted.

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II

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Next, plaintiff moves for production of documents responsive to two requests. First,

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plaintiff seeks documents that identify similar claims of unauthorized use of visual art

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brought against defendant (Document Request 46). Second, plaintiff seeks transcripts of

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deposition testimony of employees and agents of defendant from substantially similar actions

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(Document Request 47).1 Plaintiff states that the existence of similar claims by other

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photographers is relevant to the issues of defendant's willfulness and notice. Plaintiff also

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expects that deposition transcripts likely contain relevant information regarding defendant's

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business operations and whether defendant has a policy of knowing copyright infringement.

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Defendant objects, arguing that the two actions filed against it not involving plaintiff's

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counsel concern different photographs, licensing transactions, and publications. Moreover,

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defendant argues that plaintiff may seek his own discovery in this case to uncover

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information about defendant's business operations and policies. In his reply, plaintiff quotes

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from depositions already in his possession to bolster his argument that the other deposition

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testimony he seeks will be directly relevant to the issues of notice and willfulness. Plaintiff

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also argues for the first time that he seeks production of the transcripts for impeachment

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purposes. We do not consider new arguments raised in a reply. See Eberle v. City of

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Anaheim, 901 F.2d 814, 818 (9th Cir. 1990).

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Plaintiff does not dispute defendant's observation that the remaining two infringement

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cases against it concern different photographs, licensing transactions, and publications. We

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are not persuaded that the additional information sought - from cases involving different

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publications and different licensing processes - is likely to lead to discovery of admissible

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evidence and result in a benefit to plaintiff greater than the burden on defendant of

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production. See Fed. R. Civ. P. 26(b)(1); id. 26(b)(2)(C). Plaintiff's motion to compel

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production of documents responsive to Document Request 46 and 47 is denied.
III

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We have granted one motion to compel and denied the other. Both motions and

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responses were substantially justified. See id. 37(a)(5). Rather than ordering defendant to

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pay plaintiff fees for one motion and plaintiff to pay defendant fees for the other, we think

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it best to call it even.

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Plaintiff is not requesting deposition transcripts for cases in which its own counsel
represented the plaintiff, as counsel already possesses copies.
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IT IS ORDERED GRANTING plaintiff's motion to compel keys explaining

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spreadsheet codes and fees (doc. 84). Defendant shall provide plaintiff with a key defining

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all terms contained in Exhibit A to plaintiff's reply (doc. 94) within five days of the date of

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this order.

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IT IS ORDERED DENYING plaintiff's motion to compel production of documents
(doc. 85).

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Each party to bear its own fees and costs.

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DATED this 17th day of January, 2012.

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