Perfect 10 Inc v. Google Inc et al

Filing 543

SUPPLEMENT to MOTION to Compel Perfect 10, Inc. to Produce Documents, Comply with the Protective Order, and Affix Document Control Numbers to its Document Productions #407 Google Inc.'s Supplemental Memorandum in Support of its Motion to Compel Perfect 10, Inc. to Affix Document Control Numbers to its Document Production filed by Counter Claimant Google Inc, Defendant Google Inc. (Attachments: #1 Second Supplemental Declaration of Rachel Herrick Kassabian in Support Thereof, #2 Exhibit 1, #3 Exhibit 2)(Herrick, Rachel)

1 QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP Michael T. Zeller (Bar No. 196417) [e-mail] 2 865 South Figueroa Street, 10th Floor 3 Los Angeles, California 90017-2543 Telephone: [phone] Facsimile: [phone] Charles K. Verhoeven (Bar No. 170151) [e-mail] 5 50 California Street, 22nd Floor 6 San Francisco, California 94111 Rachel Herrick Kassabian (Bar No. 191060) [e-mail] 7 555 Twin Dolphin Drive, Suite 560 8 Redwood Shores, California 94065 9 Attorneys for Defendant GOOGLE INC. 10 11 12 UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA CASE NO. CV 04-9484 AHM (SHx) [Consolidated with Case No. CV 054753 AHM (SHx)] DISCOVERY MATTER GOOGLE INC.'S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL PERFECT 10, INC. TO AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION [Second Supplemental Declaration of Rachel Herrick Kassabian filed concurrently herewith] Hon. Stephen J. Hillman Date: None [Currently under submission] Time: None Crtrm.: 550 Discovery Cutoff: None Set Pretrial Conference Date: None Set Trial Date: None Set

13 PERFECT 10, INC., a California corporation, 14 Plaintiff, 15 vs. 16 GOOGLE INC., a corporation; and 17 DOES 1 through 100, inclusive, 18 19 20 22 23 vs. Defendants. AND COUNTERCLAIM

PERFECT 10, INC., a California 21 corporation, Plaintiff,

24 AMAZON.COM, INC., a corporation; A9.COM, INC., a corporation; and 25 DOES 1 through 100, inclusive, 26 27
01980.51320/3118394.3

Defendants.

28

Case No. CV 04-9484 AHM (SHx) [Consolidated with Case No. CV 05-4753 AHM (SHx)] GOOGLE INC.'S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL PERFECT 10, INC. TO AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION

1 I. 2

PRELIMINARY STATEMENT In response to the Court's request at the September 22, 2009 hearing,

3 defendant Google Inc. ("Google") respectfully submits this Supplemental 4 Memorandum regarding the feasibility and minimal cost for plaintiff Perfect 10, Inc. 5 ("P10") to affix control numbers to its electronic document production. 6 P10 cannot rely on any documents at trial or on summary judgment that P10 7 has not produced in discovery. Fed. R. Civ. P. 37(c)(1). Control-numbering 8 document productions is a common method employed by litigants to demonstrate 9 which documents have been produced, and when. As explained in the Supplemental 10 Declaration of Rachel Herrick Kassabian filed September 21, 2009 ("Supp. 11 Kassabian Dec.") and at the September 22, 2009 hearing, P10's preferred software, 12 Adobe Acrobat Professional, has a "Bates numbering" feature that presents a low13 cost option which would allow P10 to easily and automatically affix sequential 14 control numbers to its electronic document production, while preserving the 15 document data and file structure associated with its productions. P10 has offered no 16 reason why it is unable to use Adobe Acrobat Professional in this fashion, and its 17 objection that "bates-stamping is impermissibly expensive" fails in the face of 18 Google's showing. 19 Nevertheless, if the Court is not inclined to order P10 to affix control numbers 20 to its document production regardless of how inexpensive the process might be, 21 Google respectfully requests that P10 be ordered to submit a declaration identifying 22 the file path and production date for any non-control-numbered documents P10 23 proffers in any court proceeding (including motions, depositions, hearings, or trial). 24 If that alternative too is unacceptable to the Court, then Google withdraws its 25 Motion to Compel P10 to Affix Control Numbers to Its Document Production, 26 without prejudice to (1) renewing the Motion with the District Judge prior to trial 27
01980.51320/3118394.3

28

Case No. CV 04-9484 AHM (SHx) [Consolidated with Case No. CV 05-4753 AHM (SHx)] GOOGLE INC.'S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL PERFECT 10, INC. TO AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION

-1-

1 and (2) Google's ability to contest the admissibility of any evidence offered by P10 2 on this basis and others. 3 II. 4 5 P10 CAN AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION USING ADOBE ACROBAT PROFESSIONAL. In researching the Court's question regarding the cost associated with

6 applying control numbers to P10's document production, counsel for Google 7 discovered that Adobe Acrobat Professional (version 8.0 or later) includes a "Bates 8 numbering" feature that automatically affixes sequential control numbers to every 9 page of a collection of electronic documents. This automated feature is compatible 10 with the Adobe PDF documents that make up the majority of P10's production, and 11 will also automatically Bates-number image files, text files, Microsoft Office 12 documents, web pages, HTML files, Tiff files, and XPS documents. See Supp. 13 Kassabian Dec. ¶ 4 (Docket No. 540). Thus, the vast majority of the documents in 14 P10's electronic production are capable of being sequentially numbered for free 15 using Acrobat Professional. Id. 16 Pursuant to the Court's comments at the September 22, 2009 hearing, Google 17 has used this feature to bates-stamp a sample portion of P10's electronic production 18 ­ specifically, the disk P10 produced on August 12, 2009 (consisting of 19 approximately 700 PDF and raw image files comprising approximately 720 MB of 20 data). Selecting an entire document production for Bates-numbering may be 21 accomplished by opening Acrobat Professional's Bates numbering feature, choosing 22 "Add Folders" from the "Add Files" menu that appears, and selecting the drive, disk 23 or group of folders to be Bates-numbered. All of the files within the folders and 24 sub-folders of the location selected will be automatically Bates-numbered with 25 Acrobat Processional. The one-click process of selecting all of the documents in 26 P10's August 12, 2009 document production for automatic Bates-numbering is 27 shown below.
01980.51320/3118394.3

28

Case No. CV 04-9484 AHM (SHx) [Consolidated with Case No. CV 05-4753 AHM (SHx)] GOOGLE INC.'S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL PERFECT 10, INC. TO AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION

-2-

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Once the files to be Bates-numbered have been selected, configuring Adobe 18 Acrobat Professional to affix sequential control numbers to electronic documents 19 can be done quickly (about 10 minutes in our example). Acrobat Professional 20 allows the user to specify the location and format of the control numbers added to 21 the selected documents in one window, and even provides a preview of how the 22 format chosen will appear on documents selected. The program also allows the user 23 to place confidentiality stamps or other information on all the documents selected. 24 The Bates-numbering format and options screen is shown below: 25 26 27
01980.51320/3118394.3

28

Case No. CV 04-9484 AHM (SHx) [Consolidated with Case No. CV 05-4753 AHM (SHx)] GOOGLE INC.'S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL PERFECT 10, INC. TO AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION

-3-

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 The Bates numbering feature in Acrobat Professional maintains the original 21 folder structure of the electronic documents selected for Bates-numbering. All of 22 the documents selected are automatically Bates-numbered in the manner in which 23 they were originally arranged, and all non-PDF documents selected are 24 automatically converted to Adobe PDF format for numbering. The computer 25 processing time required for the automatic conversion and Bates-numbering after 26 Adobe Acrobat has been configured will vary with the size and number of 27 documents selected and the speed of the computer being used. With respect to the
01980.51320/3118394.3

28

Case No. CV 04-9484 AHM (SHx) [Consolidated with Case No. CV 05-4753 AHM (SHx)] GOOGLE INC.'S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL PERFECT 10, INC. TO AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION

-4-

1 August 12, 2009 document production that Google converted, it took approximately 2 45 minutes for the computer to complete the bates numbering. The control numbers 3 were placed in the bottom right-hand corner of each document, an excerpt of which 4 is shown below. 5 6 7 8 9 10 11 A disk containing a copy of P10's entire August 12, 2009 production with the Bates 12 numbers automatically added to each page is attached as Exhibit 1 to the Second 13 Supplemental Declaration of Rachel Herrick Kassabian filed concurrently herewith 14 ("Second Supp. Kassabian Dec."). 1 15 III. 16 17 18 19 ALTERNATIVELY, P10 SHOULD BE REQUIRED TO SUBMIT A DECLARATION IDENTIFYING THE FILE PATH AND PRODUCTION DATE FOR ANY DOCUMENTS IT USES IN ANY COURT PROCEEDINGS. Alternatively, if the Court is not inclined to order P10 to Bates-number its

20 document production, Google requests that the Court order P10 to submit a 21 declaration identifying the file path and production date for any non-Bates22 23 24 25 26 27
01980.51320/3118394.3

Because P10 produced its August 12, 2009 document production in a nontext-searchable format, the Bates-numbered versions of those documents in Exhibit 1 likewise are not text-searchable. Additionally, because some of the raw image files in P10's August 12, 2009 production were much larger than a standard 8.5 by 11 inch page, the Bates numbers applied to those image files appear very small in relation to the image; however, all of the Bates numbers are legible, appear on each page when printed, and are sequentially numbered within each document.
Case No. CV 04-9484 AHM (SHx) [Consolidated with Case No. CV 05-4753 AHM (SHx)] GOOGLE INC.'S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL PERFECT 10, INC. TO AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION

1

28

-5-

1 numbered documents Perfect 10 offers as evidence in any court proceeding 2 (including motions, depositions, hearings, or at trial). In the case of depositions, 3 Perfect 10 should be ordered to serve such a declaration no later than five business 4 days before the scheduled deposition date, so that Defendants may verify, prior to 5 the deposition, that the documents in question were in fact produced. 6 IV. 7 8 9 10 IF THE COURT IS NOT INCLINED TO ORDER P10 TO BATES STAMP ITS ELECTRONIC DOCUMENT PRODUCTION, GOOGLE RESPECTFULLY WITHDRAWS ITS MOTION WITHOUT PREJUDICE. It is each party's burden to produce its own documents in the proper format.

11 There is no basis to order a defendant to undertake the plaintiff's legal work for it, 12 let alone require a defendant to incur legal fees and other costs to do so. This is 13 particularly true here, given that P10's claims of poverty are evidently incorrect in 14 light of Mr. Zada's claims that he is worth $100 million, the P10 mansion in Beverly 15 Hills is worth $29 million, and P10 staffers each are paid $100,000 a year in 16 compensation.2 Should the Court not be inclined to order P10 to affix control 17 numbers to its document production, Google respectfully withdraws its Motion to 18 Compel P10 to Affix Control Numbers to Its Document Production, without 19 prejudice to renewing the Motion with the District Court prior to trial, and without 20 prejudice to Google's ability to contest the admissibility of any evidence offered by 21 P10 under Rule 37(c)(1) or on any other basis. 3 22 23 24 25 26 27
01980.51320/3118394.3

28

Second Supp. Kassabian Dec., Ex. 2. Regardless of how quick or inexpensive the Acrobat Professional Bates numbering process is, Google objects to doing P10's legal work for it, for a host of reasons. First as a matter of basic fairness, Google should not be punished for its efforts here. Google located this inexpensive option for P10 to complete the Bates numbering process in response to (1) P10's objections regarding expense, and (2) the Court's comments at the September 14, 2009 telephonic hearing. It simply cannot (footnote continued) Case No. CV 04-9484 AHM (SHx) [Consolidated -63

2

with Case No. CV 05-4753 AHM (SHx)] GOOGLE INC.'S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL PERFECT 10, INC. TO AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION

1 DATED: September 29, 2009 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
01980.51320/3118394.3

Respectfully submitted, QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP By Rachel Herrick Kassabian Attorneys for Defendant GOOGLE INC.

be that if Bates numbering is expensive, then P10 need not do it, and if Bates numbering is inexpensive, then P10 still need not do it. If the Court believes that P10 is not obliged to Bates stamp its production, then Google will accept that ruling ­ but Google should not be penalized for bringing this deficiency to the Court's attention by being ordered to do P10's litigation work for it. If P10 refuses to Bates stamp its production, then it should bear the consequences for that position, including exclusion at trial or on motion practice if Judge Matz believes it is appropriate. Second, requiring Google to process and re-produce P10's documents back to P10 invites a host of side-issues and disputes that likely will implicate (and threaten to invade) attorney work product and attorney client communications. For example, were P10 to claim that some documents were missing from the bates­ stamped versions, or appeared altered, Google would be forced to defend itself through testimony of its counsel regarding work done in connection with this lawsuit. This in turn would lead to a multiplicity of discovery disputes requiring Court intervention.
Case No. CV 04-9484 AHM (SHx) [Consolidated with Case No. CV 05-4753 AHM (SHx)] GOOGLE INC.'S SUPPLEMENTAL MEMORANDUM IN SUPPORT OF ITS MOTION TO COMPEL PERFECT 10, INC. TO AFFIX CONTROL NUMBERS TO ITS DOCUMENT PRODUCTION

28

-7-