Bryan Pringle v. William Adams Jr et al

Filing 249

OPPOSITION to MOTION for Sanctions Rule 11 237 filed by Plaintiff Bryan Pringle. (Attachments: # 1 Declaration of Dean A. Dickie, # 2 Declaration of Kathleen E. Koppenhoefer, # 3 Declaration of George L. Hampton IV, # 4 Declaration of Colin C. Holley, # 5 Declaration of Ira Gould, # 6 Declaration of Ryan Greely, # 7 Declaration of Barbara Frederiksen-Cross, # 8 Declaration of Michael Scott Brown)(Holley, Colin)

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LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 Dean A. Dickie (appearing Pro Hac Vice) 1 dickie@millercanfield.com Kathleen E. Koppenhoefer (appearing Pro Hac Vice) 2 koppenhoefer@millercanfield.com MILLER, CANFIELD, PADDOCK AND STONE, P.L.C. 3 225 West Washington Street, Suite 2600 Chicago, IL 60606 4 Telephone: 312.460.4200 Facsimile: 312.460.4288 5 George L. Hampton IV (State Bar No. 144433) 6 ghampton@hamptonholley.com Colin C. Holley (State Bar No. 191999) 7 cholley@hamptonholley.com HAMPTONHOLLEY LLP 8 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 9 Telephone: 949.718.4550 Facsimile: 949.718.4580 10 Attorneys for Plaintiff 11 BRYAN PRINGLE 12 13 UNITED STATES DISTRICT COURT 14 CENTRAL DISTRICT OF CALIFORNIA 15 SOUTHERN DIVISION 16 17 18 19 20 21 22 23 24 25 26 27 28 ) ) ) Plaintiff, ) ) v. ) ) WILLIAM ADAMS, JR.; STACY ) FERGUSON; ALLAN PINEDA; and ) JAIME GOMEZ, all individually and collectively as the music group The Black ) ) Eyed Peas, et al., ) ) Defendants. ) BRYAN PRINGLE, an individual, Case No. SACV 10-1656 JST (RZx) PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS AGAINST PLAINTIFF AND HIS COUNSEL PURSUANT TO FED. R. CIV. P. 11 DATE: April 16, 2012 TIME: 10:00 a.m. CTRM: 10A TABLE OF CONTENTS 1 Page 2 3 4 I. II. 5 6 7 8 9 10 III. IV. 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 V. INTRODUCTION......................................................................................... 1 FACTS........................................................................................................... 2 A. Creation of the Derivative Version of “Take a Dive.” ....................... 2 B. Preservation of Evidence Regarding the Creation of the Derivative Version of “Take a Dive.”................................................. 3 C. Plaintiff’s Counsel Adequately Investigated The Allegations in the Complaint ...................................................................................... 5 D. Defendants’ Purported Independent Creation of the “David Pop Guitar” Files ........................................................................................ 6 STANDARD FOR RULE 11 SANCTIONS ................................................ 7 ARGUMENT ................................................................................................ 8 A. Rule 11 Sanctions Are Improper Where They Are Intentionally Used to Chill Advocacy and Not For A Legitimate Purpose ............. 8 B. Neither Plaintiff Nor His Counsel Violated Rule 11 In Any Assertions Set Forth In the First Amended Complaint..................... 11 1. Plaintiff Should Be Able to Pursue His Sampling Claim, Particularly Where Defendants’ Own Expert Agrees That Copying Is The Only Explanation For the Similarities between “I Gotta Feeling” and “Take a Dive.” ...................... 12 2. Defendants’ Argument That Plaintiff’s Evidence of Access is Somehow Sanctionable Is Wholly Unsupported by Any Case Law................................................................................. 14 C. Plaintiff’s Claim for Infringement Is Legally Sufficient and Should Be Decided by a Jury; Sanctions Are In No Way Appropriate Here............................................................................... 17 1. Defendants Ignore Their Infringement of the Musical Composition of the Derivative of “Take a Dive.” .................. 17 2. Defendants’ Argument That Plaintiff’s Own Expert “Rejects” the Infringement of “Take a Dive” is Without Merit........................................................................................ 18 D. Defendants Continue to Make Bogus Claims of Spoliation to Poison the Well, Despite A Plethora of Evidence to the Contrary ... 21 1. Defendants’ Motion is Untimely ............................................ 21 2. Defendants Rely on Authority that Does not Support an Award of Sanctions Here........................................................ 22 CONCLUSION ........................................................................................... 25 27 28 -i- 1 INDEX OF AUTHORITIES Page(s) 2 CASES 3 American National Property & Casualty Co. v. Campbell Insurance, Inc. No. 3:08-cv-00604 2011 WL 3021399 (M.D. Tenn. July 22, 2011) ...........21, 22 4 LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 5 Associated Indem. Corp. v. Fairchild Indus., 961 F.2d 32 (2nd Cir. 1992) .................................................................................7 6 7 Business Guides, Inc. v. Chromatic Communications Ent., Inc., 111 S.Ct. 922 (1991)...........................................................................................11 8 9 Buster v. Greisen, 104 F.3d 1186 (9th Cir. 1997) ............................................................................16 10 Card v. State Farm Fire & Cas. Co., 11 126 F.R.D. 654 (N.D. Miss. 1989) .....................................................................20 12 Christian v. Mattel, Inc., 13 286 F.3d 1118 (9th Cir. 2002) ....................................................................1, 7, 16 14 Cosmetic Ideas, Inc. v. IAC/Interactive Corp., 606 F.3d 612 (9th Cir. 2010) ..............................................................................18 15 16 Estate of Blue v. County of Los Angeles, 120 F.3d 982 .................................................................................................15, 16 17 18 Glenn v. Scott Paper Co., Civ. A. No. 92–1873, 1993 WL 431161 (D.N.J. Oct. 20, 1993) .......................22 19 20 Greenberg v. Sala, 822 F.2d 882 (9th Cir. 1987) ..............................................................................11 21 Halaco Engineering Co. v. Costle, 22 843 F.2d 376 (9th Cir. 1988) ..............................................................................24 23 Henderson v. Weatherly, 24 116 F.R.D. 147 (E.D. Pa. 1987) .........................................................................20 25 Herron v. Jupiter Transp. Co., 26 858 F.2d 332 (6th Cir. 1988) ..............................................................................12 27 Himaka v. Buddhist Churches of America, 917 F. Supp. 698 (N.D. Cal. 1995).....................................................................11 28 - ii - 1 Historical Truth Productions, Inc. v. Sony Pictures Entertainment, 1995 WL 693189 (S.D.N.Y. Nov. 22, 1995) .....................................................21 2 Hogate v. Baldwin, 3 425 F.3d 671 (9th Cir. 2005) ..............................................................................14 4 Hudson v. Moore Business Forms, Inc., 5 836 F.2d 1156 (9th Cir. 1987) ..............................................................................8 6 ICU Medical, Inc. v. Alaris Medical Systems, Inc., No. SACV 04-00689 MRP...........................................................................12, 13 7 LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 8 In re Girardi, 611 F.3d 1027 (9th Cir. 2010) ......................................................................13, 14 9 10 In re Hayes Microcomputer Products, Inc. Patent Litigation, 766 F. Supp. 818 (N.D. Cal. 1991).......................................................................8 11 12 Kravetz v. Park La Brea Associates, 862. F.2d 875 (9th Cir. 1988) .............................................................................20 13 Kronisch v. United States, 14 150 F.3d 112 (2nd Cir. 1998) .............................................................................24 15 Leon v. IDX Sys. Corp., 16 464 F.3d 951 (9th Cir. 2006) ........................................................................22, 24 17 Metcalf v. Bochco, 294 F.3d 1069 (9th Cir. 2002) ............................................................................20 18 19 Payne v. Exxon Corp., 121 F.3d 503 (9th Cir. 1997) ..............................................................................25 20 21 Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295 (Fed. Cir. 2004) ............................................................................8 22 23 Qualcomm, Inc. v. Broadcom Corp., 2008 WL 638108 (S.D.Cal. Mar. 5, 2008).........................................................23 24 Qualcomm v. Broadcom, 25 No. 05cv1958-B (BLM), 2008 WL 66932 (S.D.Cal. Jan. 7, 2008) vacated......23 26 Riverhead Sav. Bank v. Nat’l Mortgage Equity Corp., 27 893 F.2d 1109 (9th Cir. 1990) ..........................................................................8, 9 28 - iii - 1 Silberman v. Innovation Luggage, Inc., 2003 WL 1787123 (S.D.N.Y. Apr. 3, 2003) ......................................................13 2 Silvestri v. General Motors, 3 271 F.3d 583 (4th Cir. 2001) ..............................................................................23 4 Single Chip Sys. Corp. v. Intermec IP Corp., 5 2007 WL 2012610 (S.D. Cal. June 29, 2007) ......................................................7 6 Smith v. Ricks, 31 F.3d 1478 (9th Cir. 1986) ............................................................11, 14, 15, 16 7 LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 8 Stewart v. American Intern. Oil & Gas Co., 845 F.2d 196 (9th Cir. 1988) ................................................................................8 9 10 Truesdell v. Southern California Permanente Medical Group, 209 F.R.D. 169 (C.D. Cal. 2002)..........................................................................8 11 12 United States v. Kitsap Physicians Serv., 314 F.3d 995 (9th Cir. 2002) ..............................................................................24 13 Zaldivar v. City of Los Angeles, 14 780 F.2d 823 (9th Cir. 1986) ..............................................................................12 15 Zubulake v. UBS Warburg LLC, 16 229 F.R.D. 422 (S.D.N.Y. 2004)........................................................................23 17 STATUTES 18 17 U.S.C. §501(b) ....................................................................................................13 19 COURT RULES 20 21 F.R.C.P. 11.................. 1, 2, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 20, 21, 22, 23, 25 22 F.R.C.P. 26...............................................................................................................23 23 F.R.C.P. 37.........................................................................................................21, 22 24 F.R.E. 408 ..................................................................................................................4 25 OTHER AUTHORITIES 26 26 Am. Jur. 3d Proof of Facts § 537........................................................................12 27 28 - iv - 1 I. INTRODUCTION 2 According to the Defendants’ own expert, Paul Geluso, it is unavoidable that 3 copying took place here. Even so, and even though the evidence to date shows that it 4 is more probable than not that Defendants copied from Plaintiff, Defendants moved 5 for Rule 11 sanctions, coincidentally two days before the hearing on their motion for 6 summary judgment. 7 Defendants’ motion is based upon the incorrect notion that to avoid Rule 11 8 sanctions, a plaintiff must be in a position to prove his case before ever filing a 9 complaint. Defendants resort to the use of inflammatory language, emotional 10 rhetoric, sensational allegations, and old fashioned name-calling, but nowhere LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 11 establish through competent, admissible evidence that Plaintiff’s counsel failed to 12 perform adequate legal research to confirm that the theoretical underpinnings of the 13 complaint are warranted either by existing law, or a good faith argument for an 14 extension, modification, or reversal of existing law. Christian v. Mattel, Inc., 286 15 F.3d 1118, 1127 (9th Cir. 2002). This is an abusive litigation tactic presented to chill 16 legitimate advocacy, which should be denied. 17 Plaintiff has submitted admissible evidence that he wrote and recorded both 18 the original and derivative version of “Take a Dive” and that one or more of the 19 Defendants copied it. In addition to Defendants’ own expert’s admission that the 20 song must have been copied, Plaintiff offers the following evidence: 21 1. Plaintiff created “Take a Dive” in 1999 and copyrighted it. Shortly after 22 that, he created its derivative version. 23 2. Plaintiff backed up the file containing “Take a Dive” onto an .NRG 24 image in 1999. That file has not been changed or altered since it was created in 1999, 25 ten years before “I Gotta Feeling” was released. The disc that the song was burned to 26 was manufactured in 1999 and has not been sold since 2003. 27 3. Plaintiff’s brother, Jeffrey Pringle, a deejay, played the derivative 28 version of “Take a Dive” on the radio between 1999 and 2002. -1- 1 4. Plaintiff’s expert, Dr. Alexander Norris, has opined that “Take a Dive 2 (Dance Version)” was indeed derived from the copyrighted version of “Take a 3 Dive.” Dr. Alexander Stewart has further opined that Defendants sampled the 4 derivative version of “Take a Dive.” 5 Plaintiff sought discovery in good faith with an eye towards proving that his 6 song was copied. Based on the evidence, including the evidence offered in 7 opposition to Defendants’ motion for summary judgment, a reasonable trier of fact 8 could find Plaintiff’s claim has merit. As such, Defendants’ motion for Rule 11 9 sanctions smacks of gamesmanship. Defendants appear to have filed the motion as a LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 tactic to aid their summary judgment arguments, rather than based on any legitimate 11 argument that sanctions are warranted here. The motion should be denied and 12 Defendants should be cautioned against further misuse of the Rules. 13 II. FACTS 14 Bryan Pringle wrote and recorded “Take a Dive” in 1998 using a stand alone 15 Ensoniq ASR-10 keyboard. Plaintiff’s Statement of Additional Facts In Opposition 16 to Motion for Summary Judgment, at ¶ 115, Dckt. No. 196. “Take a Dive” was 17 registered with the United States Copyright Office along with the other songs on his 18 album DeadBeat Club:1998. Id. at ¶ 117. The Register of Copyrights issued 19 Certificate of Registration number SRu 387-433 for Deadbeat Club:1998 on 20 April 29, 1998. Id. Plaintiff provided a sealed copy of the CD to the Court on 21 December 19, 2011 in opposition to Defendants’ Motion for Summary Judgment. Id. 22 23 A. Creation of the Derivative Version of “Take a Dive.” After he wrote and recorded “Take a Dive,” Plaintiff created several derivative 24 versions including “Take a Dive (Dance Version).” Id. at ¶ 119. He created the 25 derivative by removing the vocals and replacing them with a repeating eight-bar 26 melody using a “guitar twang” sequence he previously recorded in or about 1997 for 27 his song “Faith,” another track on Deadbeat Club. Id. at ¶ 120. Faith is Track No. 8 28 -2- 1 on the CD previously provided to the Court. Other than that change, the songs are 2 identical: 3  The original and derivative have the same ambient sounds at the 4 beginning of both versions. Norris Decl., Dckt. No. 192 at ¶ 6. 5  The original and derivative have identical keyboard motifs at :09 6 seconds, identical bass parts and identical chord progression. Id. 7  The original and derivative have identical sonic sweeps and changes in the bass parts at similar points in time of both tracks. Id. 8  The original and derivative have identical key, temp, and timbre with 9 respect to the above-identified similarities. Id. LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 11 Mr. Pringle sent the derivative dance version of “Take a Dive” to UMG, 12 Interscope, and EMI. Plaintiff’s Statement of Additional Facts In Opposition to 13 Motion for Summary Judgment, at ¶ 130. He also sent it to Gum Productions, and 14 received an acknowledgement from them. Id. at ¶¶ 131, 149, 150. These 15 communications occurred over ten years ago, and not surprisingly, he lost track of 16 them over the following decade. Pringle Decl., Dckt. 189 No. at ¶ 5. Mr. Pringle’s 17 brother, Jeffrey Pringle, will testify at trial that he played the derivative version of 18 “Take a Dive” on the radio. Jeffrey Pringle Decl., Dckt. No. 190. Additionally, 19 Jeffrey Pringle’s friend, Scott Brown, received Mr. Pringle’s music, liked it and 20 played it on the radio, a fact to which he will also testify to at trial. See, Decl. of 21 Scott Brown at ¶ 4, filed concurrently herewith and incorporated by reference. 22 23 24 B. Preservation of Evidence Regarding the Creation of the Derivative Version of “Take a Dive.” After Mr. Pringle created the derivative of “Take a Dive,” he saved it on an 25 external disc drive using an NRG image file, which he titled “DISK05.NRG” 2. 26 Dckt. No. 196 at ¶ 128. He did this by backing up the creation file for the derivative 27 of “Take a Dive” onto a small computer serial interface (SCSI) hard drive, which he 28 connected to a Windows 98 computer. Id., at ¶¶ 191, 192. Using the Ensoniq Disk -3- 1 Manager (EDM) software, he created the .NRG image files which he then burned 2 onto a CD bearing Serial Number 9E24F221861. Id. at ¶ 192, Gallant Decl. ¶ 4, 3 Dckt. No. 193. In doing this, Mr. Pringle preserved the evidence of the creation of 4 the derivative of “Take a Dive,” even after his audio and computer equipment were 5 stolen in October 2000. Dckt. No. 196, ¶ 193. Mr. Pringle has offered two expert 6 opinions affirming that the DISK05.NRG2 disk contains “Take a Dive,” that it was 7 created, modified, and last accessed in 1999, and that no evidence exists to support 8 Defendants’ theory that the disk was back dated. See, Gallant Decl. at ¶ 4; Barbara 9 Frederiksen-Cross Decl., Dckt. No. 189, and March 2, 2012 Barbara Frederiksen- LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 Cross Supplemental Decl. (“March 2 Cross Decl.”), filed concurrently herewith and 11 incorporated by reference at ¶21. 12 Additionally, forensic expert Barbara Frederiksen-Cross provided additional 13 analysis that shows that the other files included on the .NRG disc, including 14 photographs, contain metadata that confirms they date back to 1998 and 1999. 15 Specifically, the dates of the photos themselves date to 1999, and they were taken on 16 the Olympus C900Z, which was released in 1998. Frederiksen-Cross Decl.¶ 20, 17 Dckt. No. 189. The CD-Rom that the DISK05.NRG2 disk was burned to was a 18 Verbatim CD-Rom, product number 94328, with a specific serial number of 19 9E24F221861. Product 94328 has been out of production since 1999. The specific 20 CD-Rom used by Mr. Pringle to preserve the derivative of “Take a Dive” was 21 produced on February 24, 1999. See, Exhibit B to Decl. of Kathleen E. 22 Koppenhoefer filed concurrently herewith and incorporated by reference. 23 On July 10, 2010, Defendants sent Plaintiff a Rule 408 Confidential 24 Settlement letter, which they have subsequently attempted to enter as evidence in the 25 record. In the letter, Ms. Cenar requests “preservation of evidence” without 26 specifying what she meant by “evidence” and even suggested that Mr. Gould should 27 not explain to Mr. Pringle the specifics behind her request. See Exhibit J to 28 Dickstein Decl., Dckt. No. 161. Subsequently, Mr. Pringle provided forensic expert -4- 1 David Gallant with the disc containing all evidence of the original creation of the 2 derivative version of “Take a Dive,” specifically the CD-Rom with the serial number 3 of 9E24F221861 that contained the derived version of “Take a Dive.” Gallant Decl. 4 at ¶ 4, Dckt. No. 193. Because Mr. Pringle wrote and created the derivative over a 5 decade earlier, he no longer had the specific equipment used in creating the 6 derivative, but did have the .NRG file which had been preserved. Mr. Pringle did 7 what was requested. He preserved, through a professional, all of the “evidence” he 8 had of his work. 9 LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 11 C. Plaintiff’s Counsel Adequately Investigated The Allegations in the Complaint. Bryan Pringle initially retained attorneys Ira Gould and Ryan Greely. See 12 Declarations of Ira Gould and Ryan Greely. Prior to agreeing to represent 13 Mr. Pringle, Mr. Gould and Mr. Greely investigated the merits of the claim, as set 14 forth in their declarations. In October 2010, Dean Dickie, a principal with Miller, 15 Canfield, Paddock and Stone, P.L.C., formally joined in the representation. Prior to 16 agreeing to represent Mr. Pringle, Mr. Dickie also investigated the merits of the 17 claims. Dickie Decl. at ¶¶5-12. Prior to filing the original complaint, George 18 Hampton and Colin Holley of HamptonHolley LLC were retained as local counsel. 19 They, too, engaged in an investigation of Pringle’s allegations. Declaration of 20 George Hampton at ¶¶ 4-14; Declaration of Colin Holley at ¶¶ 4-13. The original complaint as filed did not contain a claim for sampling. 21 22 Subsequent to its filing, Plaintiff’s counsel was put in touch with an expert in sound 23 engineering, Mark Rubel. Rubel Decl., Dckt. No. 71a. Plaintiff’s counsel learned that 24 Mr. Rubel would be able to determine whether or not the Black Eyed Peas 25 Defendants sampled the derivative of “Take a Dive.” Id. Mr. Rubel analyzed the 26 tracks and concluded that “Take a Dive” was sampled by “I Gotta Feeling.” Rubel 27 Decl. at ¶ 3, Dckt. No. 71a; he provided the Plaintiff’s counsel with an expert report 28 -5- 1 with his conclusion that the Black Eyed Peas sampled the derivative version of “Take 2 a Dive” in creating “I Gotta Feeling.” Id. 3 Plaintiff’s counsel amended the complaint to include a count for sampling. 4 Later, Defendants’ own expert, Paul Geluso, agreed that it is obvious that either 5 “Take a Dive” or “I Gotta Feeling” was copied. (See, Paul Geluso Decl. at ¶ 31, 6 Dckt. No. 162). Plaintiff’s expert, Dr. Stewart, agrees with Mr. Geluso, concluding 7 that the musical notes of the two songs are identical and that Defendants sampled the 8 derivative version of “Take a Dive.” See, Report of Dr. Alexander Stewart, attached 9 as Exhibit D to Koppenhoefer Decl. LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 11 12 D. Defendants’ Purported Independent Creation of the “David Pop Guitar” Files. In their motion for summary judgment, Defendants argue that they have 13 offered irrefutable evidence that Defendant Riesterer created the music files that 14 became “I Gotta Feeling,” but the evidence actually shows that Defendants offered as 15 their “creation files” music files that were not created until 2011. Defendants 16 produced the “David Pop Guitar” files produced as Riesterer0000001, 17 Riesterer0000002 and Reisterer0000038, which they claim date to 2008. Dckt. No. 18 196 at 176. The files were created using Logic Pro, software from Apple Computers 19 used to write, record and mix music. March 2 Frederiksen-Cross Decl. at ¶ 52, n. 18. 20 The Logic Pro metadata includes reference to the MOTU 828MK3 Hybrid, which is 21 a hybrid audio interface device manufactured by MOTU, a developer of computer 22 based audio and visual production hardware and software. Id. at ¶ 52, n. 19. The 23 MOTU 828mk3 Hybrid is a sound device that was released in January 2011. MOTU 24 has confirmed that the MOTU 828MK3 Hybrid was first shipped to customers in 25 February/March 2011, with simultaneous releases in the United States and other 26 countries. Id. at ¶ 53. The device was not made available to “beta” testers before its 27 public release date; all development testing was done internally. Id. at ¶ 53, n.24. 28 -6- 1 Additionally, substantial evidence exists that “I Gotta Feeling” was never 2 created using Logic Pro at all, but rather was created using Pro Tools. In May 2010, 3 Kara Cenar sent Mr. Pringle’s prior attorneys a communication requesting that they 4 provide the individual tracks of “Take a Dive” to her in a Pro Tools format: “If what 5 you are now saying is that the claim is a sample, which it appears you are, please 6 provide us with your client’s Pro Tools mix of their track, so that we can determine if 7 anything was sampled.” See Exhibit C to Declaration of Ryan Greely. Both 8 Defendant Adams and Defendant Guetta have provided numerous interviews 9 regarding their use of Pro Tools to create music. Before “I Gotta Feeling” was LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 allegedly created by Defendants, Defendant Adams stated in an interview that he 11 uses Pro Tools exclusively. After “I Gotta Feeling” was released, Defendant Guetta 12 also stated in separate interviews that he records music using Pro Tools - not Logic 13 Pro. See, Exhibit A to Koppenhoefer Decl. 14 III. STANDARD FOR RULE 11 SANCTIONS 15 “Rule 11 ‘is targeted at situations’ where it is patently clear that a claim has 16 absolutely no chance of success under the existing precedents, and where no 17 reasonable argument can be advanced to extend, modify or reverse the law as it 18 stands.’” Associated Indem. Corp. v. Fairchild Indus., 961 F.2d 32, 34 (2nd Cir. 19 1992) (internal citations omitted). When considering Rule 11 motions, the Ninth 20 Circuit undertakes a two-pronged inquiry. A party seeking sanctions must prove 21 both (1) the complaint is legally or factually “baseless” from an objective 22 perspective, and (2) that the attorney failed to conduct “a reasonable and competent 23 inquiry” before signing and filing it. Christian v. Mattel, Inc., 286 F.3d 1118, 1127 24 (9th Cir. 2002). 25 Sanctions under Rule 11 are only imposed in “the exceptional circumstance,” 26 where a claim or motion is clearly unmeritorious or frivolous. Single Chip Sys. Corp. 27 v. Intermec IP Corp., 2007 WL 2012610 at *6 (S.D. Cal. June 29, 2007) (citing 28 Riverhead Sav. Bank v. Nat’l Mortgage Equity Corp., 893 F.2d 1109, 1115 (9th Cir. -7- 1 1990)). A frivolous claim or pleading is one that is both “legally or factually baseless 2 from an objective perspective” and brought without a “reasonable and competent 3 inquiry.” Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1299 (Fed. Cir. 4 2004) (internal citations omitted). “This is a difficult standard to meet.” In re Hayes 5 Microcomputer Products, Inc. Patent Litigation, 766 F. Supp. 818, 828 (N.D. Cal. 6 1991). “The key question is whether a pleading states an arguable claim.” Stewart v. 7 American Intern. Oil & Gas Co., 845 F.2d 196, 201 (9th Cir. 1988) (emphasis 8 added). 9 Defendants cannot meet their burden and have failed to show that any LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 violation of Rule 11 has occurred. Plaintiff and his counsel have prosecuted the claim 11 in good faith and have done so after making an appropriate inquiry into the basis for 12 the claim, including obtaining reports by reputable experts. 13 IV. 14 15 16 ARGUMENT A. Rule 11 Sanctions Are Improper Where They Are Intentionally Used to Chill Advocacy and Not For A Legitimate Purpose. The Ninth Circuit recognizes that “[a]n award of Rule 11 sanctions raises two 17 competing concerns: the desire to avoid abusive use of the judicial process and to 18 avoid chilling zealous advocacy.” Hudson v. Moore Business Forms, Inc., 836 F.2d 19 1156, 1160 (9th Cir. 1987)(emphasis added) (citing In re Yagman, 796 F.2d 1165, 20 1182, amended, 803 F.2d 1085 (9th Cir. 1986)). A district court should not grant 21 sanctions lightly. Truesdell v. Southern California Permanente Medical Group, 209 22 F.R.D. 169, 176 (C.D. Cal. 2002). “Because the rule is not intended to chill an 23 attorney’s enthusiasm or creativity in pursuing factual and legal theories, courts have 24 interpreted Rule 11’s language to prescribe sanctions, including fees, only in the 25 exceptional circumstance, where a claim or motion is patently unmeritorious or 26 frivolous.” Riverhead Sav. Bank. v. National Mortgage Equity Corp., 893 F.2d 1109, 27 1115 (9th Cir. 1990) (internal citations omitted). The key question in assessing 28 frivolousness is whether a complaint states an arguable claim – not whether the -8- 1 pleader is correct in his perception of the law.” Riverhead Sav. Bank, 893 F.2d 1109, 2 1115 (9th Cir. 1990) (quoting Hudson v. Moore Business Forms, Inc., 827 F.3d 450, 3 453 (9th Cir. 1987)). 4 Here, Defendants cannot legitimately point to evidence warranting sanctions. 5 Instead, Defendants grossly misconstrue the record and the dealings between the 6 parties and do so intentionally to distort the facts and paint the Plaintiff and his 7 counsel in a bad light. The allegations contained in Defendants’ Rule 11 motion are 8 scathing, and exceed the scope of even the most zealous of advocacy. Simply put, 9 they are either (1) untrue or (2) irrelevant to the inquiry. The complaints of the LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 Defendants range from the extremely serious, yet wholly unmeritorious, allegations 11 of spoliation, to trivial complaints that Plaintiff should be sanctioned under Rule 11 12 because he cancelled a deposition 9 days in advance. Defendants’ overreaching in 13 their motion is voluminous, repetitive and presented simply as a litigation tactic 14 meant to chill effective, legitimate advocacy: 15  Defendants argue that Rule 11 sanctions are warranted because Plaintiff 16 spoiled evidence of the creation of “Take a Dive” even though Plaintiff 17 has provided (1) sworn testimony, (2) physical evidence, (3) expert 18 confirmation that “Take a Dive” was created in 1999 and electronically 19 preserved at that time, and (4) through the retention of a forensic expert. 20  Defendants argue without any authority that Rule 11 sanctions are 21 warranted because of the aforementioned cancelling of a deposition 9 22 days before the deposition, and fail to explain how or why this even 23 implicates Rule 11. 24  Defendants argue that Rule 11 sanctions are warranted because they 25 disagree with an argument offered by Plaintiff in his response to their 26 motion for summary judgment. 27 28  Defendants argue that Rule 11 sanctions are warranted because although Plaintiff has testified under oath that he distributed copies of the -9- 1 derivative version of “Take a Dive” to Defendants, he did not keep 2 evidence of his distribution for ten years. According to Defendants, 3 Plaintiff should be sanctioned because at his deposition, he allegedly 4 identified the wrong address—Burbank Drive—for materials sent a 5 decade earlier. 6  Defendants complain bitterly that Mr. Pringle should be sanctioned 7 because he has stated (partly in response to specific interrogatories from 8 Defendants asking this very question) that Defendants have violated 9 other copyrights of his. LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10  Defendants argue that the similarities identified between “Take a Dive” 11 and “I Gotta Feeling” as set forth in the complaint are not actionable and 12 therefore Plaintiff should be sanctioned, ignoring the opinions set forth 13 by Dr. Norris and Dr. Stewart which detail the similarities between the 14 two songs. 15  Defendants argue that Rule 11 sanctions are warranted because when 16 Jeffrey Pringle stated in a sworn Declaration that he heard the derivative 17 version of “Take a Dive” in 1999 and played it on the radio, he did not 18 provide supporting documentation for his sworn testimony. 19 And so on. Defendants spend a great deal of time engaging in name calling. 20 They characterize Mr. Pringle as (1) a “serial plaintiff” without support for the 21 accusation; (2) a fraud as a musician because he has never had a record deal; (3) a 22 fabricator of a sound recording when in reality, what Mr. Pringle did was the 23 equivalent of making a digital copy of what he previously created; and (4) a liar. 24 They use words like “fantasy” and “fairytale” and make these malicious allegations 25 without a shred of “evidence,” only bluster and innuendo. They misstate testimony, 26 such as the “Burbank Drive” testimony, to paint Mr. Pringle as a liar who is not 27 credible. (See, Def. Mot. for Sanctions, p. 18). In that instance, when asked the 28 address of Interscope Records, Mr. Pringle testified “I know it was in California. I - 10 - 1 believe it was- and this is just from what I recall. It was Bur- --Burbank Drive? I 2 don’t recall specifically. I could look at the records I have to refresh that.” Dckt. 3 No. 239-6. Defendants justify their request for sanctions under Rule 11 in part based 4 on this testimony. 5 Defendants moved for Rule 11 sanctions not because there is any evidence that 6 the claims proffered by Plaintiff are frivolous, but because Defendants are taking 7 every opportunity to distort the record in the desperate hope that this Court will 8 ignore that any untrained ear can tell the songs at issue are virtually identical. 9 Defendants have offered “evidence” of the independent creation of “I Gotta LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 Feeling” in the form of what they represent to be “original” creation files from 2008 11 that were made using a sound device that was not released until January 2011. 12 Defendants’ motion for sanctions is devoid of merit. They have not and cannot show 13 that Plaintiff’s claims are frivolous or that Plaintiff or his counsel have acted in bad 14 faith in this litigation. 15 16 17 B. Neither Plaintiff Nor His Counsel Violated Rule 11 In Any Assertions Set Forth In the First Amended Complaint. Defendants suggest that Plaintiff lacks evidentiary support to win his claims 18 and therefore is liable for Rule 11 sanctions. While Plaintiff certainly disagrees, that 19 position is not a basis for Rule 11 sanctions. The United States Supreme Court has 20 stated that the imposition of Rule 11 sanctions against a party is only proper when 21 the party has failed to make a “reasonable inquiry” into pertinent facts or law. 22 Business Guides, Inc. v. Chromatic Communications Ent., Inc., 111 S.Ct. 922, 933 23 (1991). Rule 11 requires only that a signatory to a complaint make a reasonable 24 inquiry to determine the facts of the case and believe that the position asserted is 25 “well [-] grounded in fact.” See, e.g., Greenberg v. Sala, 822 F.2d 882, 886 (9th Cir. 26 1987); see also Smith v. Ricks, 31 F.3d 1478, 1488 (9th Cir. 1986). “[A] cause of 27 action is ‘well [-] grounded in fact’ if an independent examination reveals ‘some 28 credible evidence’ in support of a party’s statements.” Himaka v. Buddhist Churches - 11 - 1 of America, 917 F. Supp. 698, 710 (N.D. Cal. 1995); citing Kendrick v. Zanides, 609 2 F.Supp. 1162, 1172 (N.D. Cal. 1985). In determining whether there is “some credible 3 evidence” in support of a claim, courts use an objective test. Zaldivar v. City of Los LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 4 Angeles, 780 F.2d 823, 831 (9th Cir. 1986) (abrogated on other grounds in Cooter, 5 supra, 496 U.S. 384 (1990)). 1. Plaintiff Should Be Able to Pursue His Sampling Claim, 6 Particularly Where Defendants’ Own Expert Agrees That Copying Is The Only Explanation For the Similarities 7 between “I Gotta Feeling” and “Take a Dive.” 8 The elements of proving infringement via copying or sampling are no different 9 than what is required generally to prove infringement of a musical composition. 26 10 Am. Jur. 3d Proof of Facts § 537. To prove his sampling or digital copying, a 11 plaintiff must prove copying, which copying is typically established by showing that 12 the defendant had access to the plaintiff’s work and there is substantial similarity of 13 defendants’ work to the original work. See Id. at Sec. 18 (citing Baxter v. MCA, Inc., 14 812 F.2d 421 (9th Cir. 1987). In light of the similarities between the two songs, 15 similarities conceded by Defendants’ own expert and established by note-by-note 16 scores done by an accomplished musicologist expert, Plaintiff should be permitted to 17 pursue all of his claims, including sampling. 18 Defendants cite a multitude of cases in support of their claim for Rule 11 19 sanctions with respect to Plaintiff’s copyright claim over the sound recording of the 20 derivative of “Take a Dive.” None of the cases cited by Defendants, however, 21 support an award of sanctions. First, Defendants rely on Herron v. Jupiter Transp. 22 Co., 858 F.2d 332, 336 (6th Cir. 1988), which stands for the basic conclusion that 23 attorneys have a duty to inquire into the facts and the law supporting a claim before 24 filing. Herron, 858 F.2d at 335. Nothing set forth in Herron supports Defendants’ 25 argument that Plaintiff violated Rule 11. Defendants also rely on ICU Medical, Inc. 26 v. Alaris Medical Systems, Inc., No. SACV 04-00689 MRP (VBKx), 2007 WL 27 6137003 (C.D. Cal. Apr. 16, 2007), which likewise does not support an award of 28 - 12 - 1 sanctions here. In ICU, the court awarded Rule 11 sanctions because of the plaintiff’s 2 factual mischaracterization of what the court ultimately found to be frivolous claims. 3 Id. at *14-15. Although the court in ICU stated that a reasonable inquiry would have 4 revealed that the claims were frivolous, the court’s decision rested on the fact that 5 plaintiff mischaracterized the protected material. No such argument is available 6 here. 7 Defendants next cite to Silberman v. Innovation Luggage, Inc., 2003 WL 8 1787123, at *15 (S.D.N.Y. Apr. 3, 2003) in support of their position that Plaintiff’s 9 counsel was obligated to withdraw the sampling claim because it had no evidentiary LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 support. (Def. Mot. for Sanctions, Dckt. No. 239 at p. 17.) But the cited portion 11 Silberman deals with Rule 11 sanctions for a claim brought without any legal basis. 12 (See id., p. 17, citing Silberman). In Silberman, one of the plaintiffs in a copyright 13 suit raised a claim for relief under Swiss law arising out of the same factual 14 background. Id. Silberman, 2003 WL 1787123 at *11-12. Like the plaintiff’s claims 15 arising under U.S. copyright laws, the Swiss law claim was frivolous for want of 16 standing. Id. at *11-12 (finding that as holder of an exclusive license to reproduce 17 plaintiff Silberman’s work, plaintiff Wizard lacked standing to sue under 17 U.S.C. 18 §501(b)). The court also noted that plaintiff’s counsel had already been previously 19 sanctioned by other courts in the Second Circuit and in the State of New York, so he 20 was well aware of the requirements of Rule 11. Silberman, 2003 WL 1787123 at *15. 21 Finally, Defendants cite to In re Girardi, 611 F.3d 1027, 1036 (9th Cir. 2010) 22 as support for the position that Plaintiff’s counsel’s assertion of a claim that lacks 23 “evidentiary support” is an “unmistakable violation of Rule 11.” (Def. Mot. for 24 Sanctions, p. 18, citing In re Girardi, 611 F.3d 1027, 1036 (9th Cir. 2010)). The 25 court in Girardi considered the appropriateness of monetary and other disciplinary 26 sanctions (including suspension and disbarment) under the Federal Rules of 27 Appellate Procedure for filing a frivolous appeal and making false statements 28 regarding a writ of execution issued by a Nicaraguan court. Id. at 1034. The case - 13 - 1 itself only mentions Rule 11 in citations to other cases. See id. at 1036, 1062. The 2 underlying case law requires that a party show more than a lack of evidentiary 3 support for a claim in order to warrant Rule 11 sanctions. See Hogate v. Baldwin, 4 425 F.3d 671 (9th Cir. 2005). (“When, as here, a “complaint is the primary focus of 5 Rule 11 proceedings, a district court must conduct a two-prong inquiry to determine 6 (1) whether the complaint is legally or factually baseless from an objective 7 perspective, and (2) if the attorney has conducted a reasonable and competent inquiry 8 before signing and filing it.”). 9 None of these cases support entering sanctions against the Plaintiff. Should LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 the Court accept Defendants’ contention, it would mean that every losing litigant 11 would be subject to sanctions. Such a result would have a chilling effect on litigants, 12 which is contrary to the purpose and intent of the rule. Further, Plaintiff has offered 13 evidence that note for note, the two songs are identical. See, Declaration of Dr. 14 Alexander Stewart. Dr. Stewart concludes that this is evidence of sampling. Even if 15 a finder of fact ultimately concludes that there is no sampling, there is no evidence to 16 show that the allegation in the complaint was frivolous. 2. Defendants’ Argument That Plaintiff’s Evidence of Access is 17 Somehow Sanctionable Is Wholly Unsupported by Any Case Law. 18 19 Defendants claim that Plaintiff and his attorney have violated Rule 11 because 20 although Plaintiff has testified under oath and provided a sworn Declaration that he 21 provided copies of the derivative of “Take a Dive” to various individuals in the 22 recording industry—including the Defendants—he has no has copies of what he 23 mailed out or received in return. Defendants seek Rule 11 sanctions on the grounds 24 that because Plaintiff did not retain copies of what he sent or received ten years ago, 25 he has violated the rule. 26 In support of this argument, Defendants cite Smith v. Ricks, 31 F.3d 1478, 27 1488 (9th Cir. 1994) for the positions that: (1) Plaintiff’s counsel could not “merely 28 rely on Pringle’s say-so” and were required to investigate the veracity of Pringle’s - 14 - 1 allegations and (2) Plaintiff’s counsel’s assertions regarding Defendant Guetta 2 affirming the existence of correspondence with Pringle is misleading and in violation 3 of Rule 11’s objective reasonableness standard. (Def. Mot. for Sanctions, pp. 18, 19, 4 citing Smith, 31 F.3d at 1488.) In Smith, the court found that the defendant hospital 5 and physicians, the plaintiff’s former employer and colleagues, were entitled to Rule 6 11 sanctions against a cardiologist who brought antitrust claims against the 7 defendants after being removed through a peer review process. Smith, 31 F.3d. 14818 1484. The district court based its sanctions on the attorney’s “pattern of misconduct” 9 during the course of the litigation. Id. at 1488. The attorney’s misconduct culminated LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 in his filing a re-notice of a motion that the court had already denied. Id. at 1488. The 11 attorney claimed that he meant to file a motion for appeal, admitted that he did not 12 read the motion before filing it, and admitted that the motion was baseless. Id. at 13 1488. Despite the fact the attorney claimed it was a mistake, the Court of Appeals 14 upheld the district court’s decision to grant sanctions, stating that “counsel can no 15 longer avoid the sting of Rule 11 sanctions by operating under the guise of a pure 16 heart and empty head.” Id. While Smith offers a succinct yet thorough summary of 17 Rule 11 sanctions, it does not address any of the positions for which Defendants cite 18 it and it does not provide support for an award of sanctions here. 19 Defendants also cite Estate of Blue v. County of Los Angeles, 120 F.3d 982, in 20 support of the position that Plaintiff’s counsel cannot “merely rely on Pringle’s say21 so.” (Def. Mot. for Sanctions, p. 19.) But Estate of Blue does not support an award of 22 sanctions here. The Estate of Blue court found the estate’s claim was frivolous and 23 warranted Rule 11 sanctions because it was time-barred by the statute of limitations. 24 Id. In Estate of Blue, the plaintiff estate brought §1983 claims in federal district 25 court against the Los Angeles Police for the shooting death of an innocent bystander 26 at a liquor store robbery. Id. at 983. Simultaneously, the estate brought state law 27 claims in parallel litigation in California Superior Court. Id. After voluntarily 28 dismissing the federal case, the plaintiff amended the state court complaint to add the - 15 - 1 §1983 claims against the same defendants. Because the claims had since become 2 time-barred, the court found that the claims were frivolous. Id. at 984-85. The court’s 3 discussion of Rule 11 was brief, stating “Frivolous filings are ‘those that are both 4 baseless and made without a reasonable and competent inquiry.’” Id. at 985 (citing 5 Buster v. Greisen, 104 F.3d 1186, 1190 (9th Cir. 1997), abrogated on other grounds 6 by Fossen v. Blue Cross and Blue Shield of Montana, Inc., 2011 WL 4926006 (9th 7 Cir. Oct. 18, 2011)). This principle is sound, but the facts of both Estate of Blue and 8 Buster v. Greisen, which the court in Estate of Blue quoted, involve claims that have 9 become frivolous through res judicata, collateral estoppel, or periods of limitation. LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 These are simply not applicable here. 11 The principle for which Defendants cite Smith and Estate of Blue is applied in 12 Christian v. Mattel, 286 F.3d 1118, 1128-19 (9th Cir. 2002), which Defendants cite 13 as an example of courts “routinely” imposing Rule 11 sanctions on claims brought 14 with no evidence of access. (Def. Mot. for Sanctions, p. 19.) Christian does not 15 stand for that proposition. The attorney in Christian had previously represented the 16 plaintiff’s daughter in an earlier action against Mattel arising out of the same facts. 17 The earlier suit, alleging Mattel infringed on the daughter’s design of college 18 cheerleading dolls, resulted in a settlement agreement. As a means of circumventing 19 the settlement agreement, the plaintiff brought a second suit against Mattel for 20 infringement on the sculpture and painting design of the heads of several dolls. The 21 court found that these claims were frivolous, because Mattel’s sculpture designs 22 predated the development of plaintiff’s designs, a fact easily known since the 23 copyright date was printed on each doll’s head. Id. at 1124. The court found that by 24 simply looking at the doll, the plaintiff and his counsel would have discovered that 25 the copyright predated their own claim. This failure to do even the most minimal 26 inquiry warranted sanctions. 27 Next, Defendants claim that Plaintiff made a misleading assertion in response 28 to Defendants’ motion for summary judgment and this single assertion subjects - 16 - 1 Plaintiff to Rule 11 sanctions. In support of this argument, Defendants cite Jimenez v. 2 Madison and Smith v. Hicks. In Jimenez, the Seventh Circuit issued Rule 11 3 sanctions against a plaintiff and the plaintiff’s attorney for bringing a frivolous 4 appeal based on frivolous claims supported by falsified documents. Jimenez, 321 5 F.3d 652, 656-657 (7th Cir. 2003). In Jimenez, the plaintiff supported her claims that 6 her former employer discriminated against her by producing falsified emails and 7 letters. Id. at 656-57. The trial court found the documents to be “obviously 8 fraudulent” and issued sanctions against the plaintiff and the plaintiff’s attorney for 9 relying on the documents without conducting a reasonable inquiry into their veracity. LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 Id. at 655-56. 11 Unlike the Jimenez plaintiff, and, possibly these Defendants, Plaintiff has not 12 falsified any documents or files. Nothing in Plaintiff’s opposition to Defendants’ 13 summary judgment motion is remotely improper, let alone so flagrant as to warrant 14 Rule 11 sanctions. That Defendants disagree with Plaintiff’s characterization of 15 Guetta’s testimony simply is not the stuff of Rule 11 sanctions, and is an example of 16 the improper use of these sanctions as a tool of intimidation. Defendants seem to 17 suggest that the Court should not only accept the credibility of its witnesses over the 18 credibility of Plaintiff, but it should sanction Plaintiff for disagreeing with 19 Defendants’ version of the facts and remaining true to the integrity of his version of 20 the underlying facts. No plaintiff is obligated to accept the defendants’ lawyer’s 21 story of what happened for fear of being sanctioned under Rule 11. Credibility is 22 within the exclusive province of the trier of fact, not the lawyers bullying a plaintiff 23 and his counsel with the threat of Rule 11 sanctions. 24 C. Plaintiff’s Claim for Infringement Is Legally Sufficient and Should Be Decided by a Jury; Sanctions Are In No Way Appropriate Here. 25 26 27 28 1. Defendants Ignore Their Infringement of the Musical Composition of the Derivative of “Take a Dive.” Defendants ignore that Plaintiff’s complaint also alleges copyright - 17 - 1 infringement of the musical composition for the derivative version of “Take a Dive.” 2 Defendants have erroneously claimed that they are legally entitled to copy Plaintiff’s 3 song because the Copyright Office rejected the separate registration of the derivative 4 version of “Take a Dive.” Their position is incorrect as a matter of law. Although 5 Section 411(a) of the Copyright Act states that registration is required, according to 6 the Ninth Circuit, the term “register” as used in § 411(a) means a copyright is 7 “registered” at the time the copyright holder’s application is received by the 8 Copyright Office. Cosmetic Ideas, Inc. v. IAC/Interactive Corp., 606 F.3d 612, 619 9 (9th Cir. 2010). The Ninth Circuit has determined that the Register’s decision to LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 grant a registration certificate is largely perfunctory and is ultimately reviewable by 11 the courts. The Ninth Circuit noted that the courts are “empowered to review any 12 denial of a certificate, and approval by the Register gives an applicant only prima 13 facie evidence of copyright, leaving the courts to make the ultimate determination in 14 either instance. See §§ 411(a), 410(c).” Id. A lack of a registration certificate simply 15 means that a plaintiff has a greater evidentiary burden of proving the validity of the 16 copyright. Id. Given the concession by Defendants’ expert that copying in this case is 17 unavoidable, it cannot be said as a matter of law that Plaintiff’s claim is frivolous or 18 that Plaintiff will not be able to meet this evidentiary burden. 2. Defendants’ Argument That Plaintiff’s Own Expert “Rejects” 19 the Infringement of “Take a Dive” is Without Merit. 20 Defendants complain that Plaintiff “mislead” the Court in his characterization 21 of Defendant Guetta’s testimony in Plaintiff’s opposition to summary judgment. And 22 although Defendants’ argument is fraught with mock outrage over this 23 “misrepresentation,” Defendants do exactly what they complain of with respect to 24 their own characterization of Dr. Norris’ opinions and testimony. Playing fast and 25 loose with the deposition testimony and ignoring key provisions of his expert report, 26 Defendants claim that Plaintiff’s own expert actually rejects infringement. 27 28 - 18 - 1 First, Defendants’ Motion asserts “When Pringle’s experts were subjected to 2 deposition, however, they conceded that any similarities between ‘Take a Dive’ and 3 ‘I Gotta Feeling’ are not original to ‘Take a Dive’ and are therefore not a valid basis 4 for an infringement claim.” (Def. Mot. for Sanctions, p. 11.) Contrary to 5 Defendants’ characterization, in his deposition, Dr. Norris acknowledged only that 6 individual elements of “Take a Dive,” such as its tempo, length, or drumbeat were 7 not on their own original. (See Norris Tr. [Dckt. 221-4] pp. 249-251.) It is hardly 8 novel to state that a song is not the first song of a given length or a given tempo, and 9 no credible expert would offer an opinion that individually, such elements are LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 protectable. But when directly asked if the similarities between the original version 11 of “Take a Dive” and “I Gotta Feeling” were limited to generic musical building 12 blocks, Dr. Norris responded that he did not agree with that characterization of the 13 songs’ similarities. (Norris Tr. [Dckt. 221-4] p.81, “I don’t think I’d agree with 14 that.”) Dr. Norris went on to state that although he could not be sure, he believed 15 that combination of “Take a Dive’s” individually non-protectable elements could 16 constitute a protectable original work. (Norris Tr. [Dckt. 221-4] p. 250.) In this 17 respect, Defendants’ characterization of Dr. Norris’ testimony is misleading at best. 18 Next, Defendants’ Motion asserts, “Neither of Pringle’s experts were willing 19 to testify that the combination of non-protectable elements in ‘Take a Dive’ were 20 somehow protectable in the aggregate.” (Def. Mot. for Sanctions, p. 12, citing Norris 21 Tr. 250-251; citing Stewart Tr. 284-285.) This assertion is also based on Dr. Norris’ 22 testimony. After repeatedly responding to Defendants’ counsel that he could not at 23 that time answer whether the combination of non-protectable elements of “Take a 24 Dive” (i.e., tempo, length, orchestration, drum patter, 8-bar structure, and key center 25 of G Mixolydian) is legally protectable (Norris Tr. 250), Dr. Norris stated, “I believe 26 the combination of these elements could be original, but I could not say for sure.” 27 (Norris Tr. 251.) Dr. Norris stated that the same was true for the derivative version of 28 “Take a Dive.” (Id.) Neither of Defendants’ mischaracterizations support - 19 - 1 Defendants’ claim that there are no protectable similarities between “Take a Dive” 2 and “I Gotta Feeling.” 3 In Metcalf v. Bochco, the Ninth Circuit reversed entry of summary judgment 4 on a copyright claim, holding that even if individual elements do not rise to protected 5 expressions of thought, “the presence of so many generic similarities and the 6 common patterns in which they arise [can] satisfy the extrinsic test.” Metcalf v. 7 Bochco, 294 F.3d 1069, 1074 (9th Cir. 2002). The Metcalf court noted: 8 15 Each note in a scale, for example, is not protectable but a pattern of notes in a tune may earn copyright protection. The particular sequence in which an author strings a significant number of unprotectable elements can itself be a protectable element. Each note in a scale, for example, is not protectable, but a pattern of notes in a tune may earn copyright protection. A common ‘pattern [that] is sufficiently concrete . . . warrant[s] a finding of substantial similarity.’ Shaw [v. Lindheim], 919 F.2d [1353], 1363 [(9th Cir. 1990)]; see id. (“Even if none of these [common] plot elements is remarkably unusual in and of itself, the fact that both [works] contain all of these similar events gives rise to a triable question of substantial similarity of protected expression.”) Id. (where main characters are both well dressed, wealthy, self-assured and have expensive tastes, “the totality of these] similarities . . . goes beyond the necessities of [defendants’ work’s] theme and belies any claim of literary accident.”). Id. at 1074. 16 Defendants fail to show that it was objectively unreasonable for Plaintiff to 9 LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 11 12 13 14 17 pursue his claim against the Defendants against this backdrop. 18 While Defendants would require Pringle to accept their expert report as 19 gospel, the “colorable basis” and “well-grounded” standard does not require an 20 attorney to simply accept his opponent’s evidence as true and concede his own 21 position, even if his opponent’s position is ultimately accepted by the court. See Card 22 v. State Farm Fire & Cas. Co., 126 F.R.D. 654 (N.D. Miss. 1989). Indeed: 23 24 25 26 27 Federal Rule of Civil Procedure 11 does not require an attorney to disbelieve his own [claims] merely on the strength of contrary assertions by opposing counsel, nor is that rule violated merely because plaintiff’s attorney is not yet in possession of all of the facts which full-scale discovery might disclose. Henderson v. Weatherly, 116 F.R.D. 147, 148 (E.D. Pa. 1987); see also 28 Kravetz v. Park La Brea Associates, 862. F.2d 875, *2 (9th Cir. 1988) (“Rule 11 - 20 - 1 must not be used to chill zealous advocacy; creativity in legal thinking is 2 encouraged.”) 3 According to Defendants, Plaintiff cannot show that the original version of 4 “Take a Dive” is substantially similar to “I Gotta Feeling” and for Plaintiff’s failure 5 to do nothing other than (allegedly) fail to meet his burden of proof, he and his 6 counsel should be sanctioned under either Rule 11, or the Court’s inherent authority, 7 citing Historical Truth Productions, Inc. v. Sony Pictures Entertainment, 1995 WL 8 693189 at *15 (S.D.N.Y. Nov. 22, 1995). Should this argument be accepted, the 9 chilling effect on litigation would be extreme and any unsuccessful plaintiff would LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 risk Rule 11 sanctions for merely not winning. But even so, Defendants’ reliance on 11 Historical Truth Productions is misplaced. There, the court found plaintiff’s 12 complaint contained significant misrepresentations. No case in the Ninth Circuit cites 13 this 1995 unpublished decision as authoritative and Defendants’ reliance on it is 14 unpersuasive. 15 Alternatively, Defendants suggest that the Court should sanction Plaintiff 16 under its inherent authority for a host of manufactured sins, citing Leon v. IDX Sys. 17 Corp., 464 F.3d 951, 958 (9th Cir. 2006) (citing Anheuser-Busch, Inc. v. Natural 18 Beverage Distribs., 69 F.3d 337, 348 (9th Cir. 1995). But as discussed throughout the 19 course of this brief, neither Plaintiff nor his counsel has engaged in sanctionable 20 conduct despite Defendants’ gross mischaracterizations to the contrary. 21 22 23 24 25 26 27 28 D. Defendants Continue to Make Bogus Claims of Spoliation to Poison the Well, Despite A Plethora of Evidence to the Contrary. 1. Defendants’ Motion is Untimely. When determining whether spoliation sanctions appropriately brought under Rule 37 are warranted, courts consider the timing of the motion. Specifically, courts look at when the motion was brought relative to (1) the discovery of the alleged spoliation and (2) the close of discovery; (3) motions for summary judgment and (4) trial. American National Property & Casualty Co. v. Campbell Insurance, Inc. - 21 - 1 No. 3:08-cv-00604 2011 WL 3021399 at * 1-2, (M.D. Tenn. July 22, 2011). A 2 spoliation argument used to defend summary judgment is improper where the 3 concerns were never raised during discovery. Id. citing Morse Diesel Int’l Inc. v. 4 United States, 81 Fed. Cl. 220, 222 (2008). Further, courts are wary of spoliation 5 motions filed on the eve of trial. Id. citing Permasteelisa CS Corp. v. Airolite Co., 6 LLC, No. 2:06-cv-569 2008 WL 2491747 at *2-3 (S.D. Ohio June 18, 2008). 7 Here, there is ample evidence from the record that Defendants made 8 (unfounded) allegations of spoliation against Plaintiff in August 2011. The parties 9 exchanged numerous emails on the subject at that time, and Plaintiff made all LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 evidence in his possession available to Defendants’ forensic expert. Plaintiff has 11 offered a consistent explanation regarding the fact that his hard drive became 12 inoperable and was replaced as a warranty repair. Even though the issue has been 13 debated since August 2011, Defendants never raised it until after the close of 14 discovery. And the instant motion seeking Rule 11 sanctions is not the proper forum 15 to litigate a motion for spoliation. Glenn v. Scott Paper Co., Civ. A. No. 92–1873, 16 1993 WL 431161 at *17 (D.N.J. Oct. 20, 1993) n. 3 (motion for spoliation claim 17 improper where moving party failed to make motion under Rule 37). The fact that 18 Defendants have included unfounded spoliation allegations in a motion for Rule 11 19 sanctions at all is further evidence that they have an improper motive and seek only 20 to sling mud, and not to raise legitimate concerns. 2. Defendants Rely on Authority that Does not Support an 21 Award of Sanctions Here. 22 As an alternative to Rule 11 sanctions, Defendants argue that the Court should 23 award sanctions under its inherent authority, citing Leon v. IDX as support. (Def. 24 Mot. for Sanctions, p. 21, n.9.) In Leon, the court sanctioned the plaintiff for 25 violating explicit court orders. In doing so, the court determined that courts should 26 consider the following factors in deciding whether to sanction conduct: “(1) the 27 public’s interest in expeditious resolution of litigation; (2) the court’s need to manage 28 - 22 - 1 its dockets; (3) the risk of prejudice to the party seeking sanctions; (4) the public 2 policy favoring disposition of cases on their merits; and (5) the availability of less 3 drastic sanctions.” Id. The Defendants casually suggest that the Court should dismiss 4 the case as a sanction, in a footnote, without any analysis of the factors implicated in 5 this extreme and wholly unwarranted remedy. 6 Defendants cite Qualcomm v. Broadcom, No. 05cv1958-B (BLM), 2008 WL 7 66932 at *31 (S.D.Cal. Jan. 7, 2008) vacated in part by Qualcomm, Inc. v. Broadcom 8 Corp., 2008 WL 638108 (S.D.Cal. Mar. 5, 2008) in support of their argument that 9 Plaintiff’s counsel’s failure to preserve “evidence” is a sanctionable ethical violation. LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 (Def. Mot. for Sanctions, p. 22.) But the Qualcomm court stated explicitly that its 11 review was limited to applicable discovery rules and remedies and that Rule 11 did 12 not apply. Qualcomm, 2008 WL 66932 *9 n. 5. 13 Defendants also cite Zubulake v. UBS Warburg LLC, 229 F.R.D. 422, 432 14 (S.D.N.Y. 2004) as support for the position that the failure to preserve evidence is 15 sanctionable conduct. But like Qualcomm, Zubulake deals with discovery 16 requirements under Federal Rule of Civil Procedure 26. There is no mention of Rule 17 11 sanctions. The issue in Zubulake was the attorney’s duty to locate discoverable 18 evidence. 229 F.R.D. at 432. In Zubulake, the court addressed the attorney’s 19 responsibility to do more than notify a client and its employees of a litigation hold 20 (requiring them to retain documents once litigation began), but the counsel must 21 monitor the retention and “take some reasonable steps to see that sources of relevant 22 information are located.” Id. Putting aside the fact that Zubulake does not involve 23 Rule 11 sanctions, its discussion of Rule 26 sanctions do not apply to the present 24 case. Zubulake involved a company-wide document retention system which was 25 required to be monitored as of the onset of litigation. Despite Defendants’ suggestion 26 to the contrary, the duty to preserve evidence does not relate back forever. Courts 27 have held that when the duty does trigger before litigation, it commences when 28 litigation is reasonably anticipated or contemplated. See Silvestri v. General Motors, - 23 - 1 271 F.3d 583, 590 (4th Cir. 2001); Kronisch v. United States, 150 F.3d 112, 126 (2nd 2 Cir. 1998). 3 As argued at length in Plaintiff’s Opposition to Defendants’ Motion for 4 Summary Judgment, the evidence before the Court establishes that Pringle replaced 5 his 2009 hard drive before he contemplated litigation and before Defendants sent 6 notice to preserve the drive. Additionally, the uncontroverted facts and evidence 7 before the Court is that the 2011 hard drive did not contain a copy of “I Gotta 8 Feeling.” Because “I Gotta Feeling” was not present on the 2011 hard drive, Pringle 9 did not have “some notice that the [hard drive was] potentially relevant to the LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 litigation before [it was] destroyed.” See United States v. Kitsap Physicians Serv., 11 314 F.3d 995, 1001 (9th Cir. 2002). If the 2011 hard drive was not potentially 12 relevant, spoliation could not occur and, consequently, Defendants could not have 13 been harmed by Pringle’s warranty replacement of the defective, inoperable 2011 14 drive. And though Defendants point to a communication from May 2010 which 15 requests “preservation of evidence,” as of that time, all evidence had been preserved 16 in the form of the .NRG file. 17 Even if this Court concludes that Pringle was under a duty to preserve his later 18 hard drives which were not used in the creation of the derivative of “Take a Dive,” 19 the drastic sanction of case dismissal is not warranted. The imposition of the drastic 20 sanction of dismissal requires a finding of “willfulness, fault, or bad faith.” Leon, 464 21 F.3d at 958 (quoting Anheuser-Busch, Inc., 69 F.3d at 348 (citation omitted)). The 22 Court should consider the following factors: (1) the existence of certain extraordinary 23 circumstances; (2) the presence of willfulness, bad faith, or fault by the offending 24 party; (3) the efficacy of lesser sanctions; (4) the relationship or nexus between the 25 misconduct and the matters in controversy; and, as an optional consideration where 26 appropriate, (5) the prejudice to the party victim of the misconduct. Halaco 27 Engineering Co. v. Costle, 843 F.2d 376, 380 (9th Cir. 1988). Public policy favoring 28 - 24 - 1 disposition of cases on their merits counsels against a sanction in the form of a 2 default. Payne v. Exxon Corp., 121 F.3d 503, 507 (9th Cir. 1997) (citation omitted). 3 There is no evidence that Pringle destroyed “evidence.” Instead, the 4 evidence—in the form of testimony, physical evidence, and expert forensic 5 analysis—shows that the derivative of “Take a Dive” was created and electronically 6 preserved in 1999, ten years before “I Gotta Feeling” was released. In good faith, 7 Pringle submitted this evidence to Mr. Gallant and made it available to opposing 8 counsel without question. This evidence shows that Defendants’ claims of spoliation 9 are a smoke screen. LLP HAMPTONHOLLEY 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 10 V. CONCLUSION 11 For each of these reasons, Defendants’ motion for Rule 11 sanctions should be 12 denied, and Plaintiff should be awarded his costs and fees incurred in having to 13 defend against the motion. 14 Dated: March 26, 2012 15 16 17 18 19 20 Dean A. Dickie (appearing Pro Hac Vice) Kathleen E. Koppenhoefer (appearing Pro Hac Vice) MILLER, CANFIELD, PADDOCK AND STONE, P.L.C. George L. Hampton IV (State Bar No. 144433) Colin C. Holley (State Bar No. 191999) HAMPTONHOLLEY LLP By: /s/ Dean A. Dickie Attorneys for Plaintiff Bryan Pringle 21 22 23 24 25 26 27 28 - 25 - 1 2 3 4 5 6 CERTIFICATE OF SERVICE On March 26, 2012, I electronically filed the foregoing PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION FOR SANCTIONS AGAINST PLAINTIFF AND HIS COUNSEL PURSUANT TO FED. R. CIV. P. 11 using the CM/ECF system which will send notification of such filing to the following registered CM/ECF Users: 7 Barry I. Slotnick 8 Donald A. Miller Tal Efriam Dickstein 9 Linda M. Burrow 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 bslotnick@loeb.com dmiller@loeb.com, vmanssourian@loeb.com tdickstein@loeb.com wilson@caldwell-leslie.com, burrow@caldwell-leslie.com, popescu@caldwell-leslie.com, robinson@caldwell-leslie.com Ryan Christopher Williams williamsr@millercanfield.com Kara E. F. Cenar kara.cenar@bryancave.com Robert C. Levels levels@millercanfield.com Kathleen E. Koppenhoefer koppenhoefer@millercanfield.com Rachel Aleeza Rappaport rrappaport@loeb.com Jonathan S. Pink jonathan.pink@bryancave.com, elaine.hellwig@bryancave.com Dean A. Dickie dickie@millercanfield.com, smithkaa@millercanfield.com, deuel@millercanfield.com, christensen@millercanfield.com, seaton@millercanfield.com Edwin F. McPherson emcpherson@mcphersonrane.com, astephan@mcphersonrane.com Joseph G. Vernon vernon@millercanfield.com James W. McConkey mcconkey@millercanfield.com Justin Michael Righettini justin.righettini@bryancave.com, elaine.hellwig@bryancave.com Tracy B. Rane trane@mcphersonrane.com Thomas D. Nolan tnolan@loeb.com 1 I am unaware of any attorneys of record in this action who are not registered 2 for the CM/ECF system or who did not consent to electronic service. 3 I certify under penalty of perjury under the laws of the United States of 4 America that the foregoing statements are true and correct. 5 Dated: March 26, 2012 6 /s/Colin C. Holley George L. Hampton IV (State Bar No. 144433) Colin C. Holley (State Bar No. 191999) HAMPTONHOLLEY LLP 2101 East Coast Highway, Suite 260 Corona del Mar, California 92625 Telephone: 949.718.4550 Facsimile: 949.718.4580 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ND: 4833-3883-8536, v. 1

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