VinterActive, LLC v. OptiRev, LLC

Filing 52

ORDER GRANTING IN PART DEFENDANT/COUNTERCLAIMANT OPTIREV, LLC'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS 45 . (Illston, Susan) (Filed on 6/17/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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VINTERACTIVE, LLC,

Case No. 15-cv-02903-SI

Plaintiff/Counterdefendant,
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v.
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OPTIREV, LLC,
Defendant/Counterclaimant.

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ORDER GRANTING IN PART
DEFENDANT/COUNTERCLAIMANT
OPTIREV, LLC'S MOTION TO
COMPEL PRODUCTION OF
DOCUMENTS

United States District Court
Northern District of California

Re: Dkt. No. 45
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On June 17, 2016, the Court held a hearing on defendant/counterclaimant OptiRev, LLC's

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motion to compel production of certain documents and for costs incurred. For the reasons set

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forth below, the motion is GRANTED in part.

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DISCUSSION

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On May 11, 2016, defendant/counterclaimant OptiRev, LLC filed a motion to compel

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production of certain documents and for costs incurred. As stated in its reply, OptiRev requests

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that VinterActive be required to obtain the complete record from the Copyright Office, including

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applications for copyright, deposited works, registrations, and relevant correspondence. Dkt. 47 at

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4:27, 3:26-27.

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In its complaint, VinterActive alleges, inter alia, claims for copyright infringement of

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website codes and content it produced for OptiRev. In its answer and counterclaim, OptiRev

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asserts numerous affirmative defenses and counterclaims which place the ownership and validity

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of the alleged copyrights at issue. OptiRev alleges, inter alia, that OptiRev and/or its clients are

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the authors and owners of the website content, that numerous versions of the websites and code

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exist, and that the code is not copyrightable. OptiRev contends that the documents it seeks are

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necessary to ascertain the authenticity of VinterActive's ownership claims.

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On November 9, 2015, OptiRev requested three broad categories of documents from

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VinterActive: (1) copies of "all copyright applications, registration forms, registration certificates

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. . . made with the United States Copyright Office that relate to the subject matter of this

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litigation," (2) copies of "all documents, from May 2015 through and including the date of

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production, that memorialize, refer, or pertain to any communication between [VinterActive] on

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one hand, and The United States Copyright Office on the other, which relate to the subject matter

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of this litigation," and (3) copies of "all copyright . . . deposits made with the United States

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Copyright Office that relate to the subject matter of this litigation." Dkt. 45 at 8-9.

United States District Court
Northern District of California

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OptiRev states that it repeatedly requested copies of the exact applications and deposited

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works from VinterActive, and that VinterActive says that these are in the possession of its former

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counsel.

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applications and the files provided by VinterActive for uploading into the system," "copyright

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registrations that have been issued," "correspondence with the Copyright Office in regards to the

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transfer of files and the copyright registrations," and a "privilege log of the work product created

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for Early Neutral Evaluation." Dkt. 46 at 9:10-14. Specifically, VinterActive produced printouts

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from the Copyright Office website with the content of the applications and deposited works, a

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letter from VinterActive's counsel to the Copyright Office requesting transfer of access from

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former to current counsel, emails from the Copyright Office confirming registration of the codes, 1

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and a privilege log for work product including correspondence with the Copyright Office in

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regards to file transfers and registrations. See Dkt. 45 at 11-12.

In lieu of the requested documents, VinterActive says it produced "the copyright

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OptiRev asserts that VinterActive "may not have produced all of the applications (e.g.,

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supplementary applications), the correct deposited works, and all correspondence with the

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VinterActive says that these "emails" were automated messages and that OptiRev's use of
the messages violated the confidentiality of Early Neutral Evaluation. Dkt. 46 at 7:17-27.
OptiRev apologized, but asserted that no work product protection applies. Dkt. 47 at 4 n.2.
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Copyright Office." Dkt. 47 at 3:25-27. OptiRev believes that the printouts of the copyright

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applications are incomplete due to missing information including the category of copyright

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claimed under 17 U.S.C. § 102, the date of publication, the nature of the work, the nature of the

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authorship, and whether the work was derivative. OptiRev also notes discrepancies between the

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printed applications and online registrations. OptiRev submits that the content of the application

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for the Presidio Inn website does not match its online registration information. For example, the

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online version includes the "Type of Work" and "Authorship" / "Basis of Claim," both of which

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are absent from its respective printout. Dkt. 45 at 11:13-16. Additionally, the Copyright Office

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website lists "2013" as the "Date of Creation," whereas the printout lists this date as "2012." Id. at

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11:16-17. VinterActive's papers do not explain these discrepancies, although at the hearing

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United States District Court
Northern District of California

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counsel stated that the discrepancies were due to an amendment to the application. OptiRev also

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asserts that VinterActive has not explained how it determined that the applications submitted to

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the Copyright Office by its former counsel were the ones "that were purportedly provided to him

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by [the client]." Dkt. 47 at 4:8-9.

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VinterActive responds that "numerous failed attempts were made to obtain VinterActive's

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files from [former counsel]," but provides no further details. Dkt. 46-1 at ¶ 5; Dkt. 47 at 4:14.

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VinterActive states that it did not request copies of each document from the Copyright Office due

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to "significant expense,"2 but VinterActive states that the documents it produced are the same as

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those filed by its former counsel with the Copyright Office. Dkt. 46-1 at ¶ 11; Dkt. 46 at 8:5-6.

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VinterActive says that the deposited materials it produced are "the same materials provided for the

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copyright applications, and these were the same materials that were uploaded in the electronic

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application." Dkt. 46 at 8:5-10.

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Finally, OptiRev believes that VinterActive has not produced all correspondence with the

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Copyright Office. VinterActive claims that any further communications with the Copyright Office

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are privileged as work product because they were prepared for Early Neutral Evaluation. OptiRev

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VinterActive states that it would cost approximately $2,000-$3,000 for VinterActive to
obtain the complete record from the Copyright Office, while OptiRev claims that obtaining the
same documents would cost it approximately $16,000 due to "Copyright Office legal costs." Dkt.
46-1 at ¶ 11; Dkt. 47 at 5 n.1.
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submits that VinterActive waived any privilege when it disclosed the information to a third party

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(the Copyright Office). Alternatively, OptiRev contends that VinterActive waived the privilege

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when it submitted responses past their initial deadline on December 14, 2015. While OptiRev

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granted a conditional extension to VinterActive until December 31 provided that it receive all

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responses and documents on that date, it claims the extension was void for lack of confirmation

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and because VinterActive failed to send the documents.

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The scope of discovery extends to any "nonprivileged matter that is relevant to any party's

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claim or defense and proportional to the needs of the case." Fed. R. Civ. P. 26(b)(1). The work

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product doctrine, a form of privileged matter, extends to "documents and tangible things that are
prepared in anticipation of litigation or for trial by or for another party."

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United States District Court
Northern District of California

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Fed. R. Civ. P.

26(b)(3)(A). However, documents prepared for litigation may be discovered if "the party shows

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that it has substantial need for the materials to prepare its case and cannot, without undue hardship,

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obtain their substantial equivalent by other means." Fed. R. Civ. P. 26(b)(3)(A)(ii). Although

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courts mandate monetary sanctions when granting a motion to compel against the party whose

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"conduct necessitates the motion," courts can limit their imposition where "circumstances make an

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award of expenses unjust." Fed. R. Civ. P. 37(a)(5)(A)(iii).

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The Court finds that exact copies of the applications, deposited works, registrations, and

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correspondence are relevant to both VinterActive's claims and OptiRev's counterclaims. See Fed.

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R. Civ. P. 26(b)(1). It appears that VinterActive has made good faith, though unsuccessful, efforts

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to obtain these documents from its former counsel. Because VinterActive's former counsel, who

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filed the applications at issue, has failed to respond to VinterActive's requests, combined with the

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fact that there are discrepancies between the documents produced by VinterActive and the

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registrations, the Court finds it appropriate to order VinterActive to obtain the complete file from

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the Copyright Office. Additionally, to the extent that any correspondence between VinterActive

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and the Copyright Office was prepared in anticipation of settlement, the Court finds that any

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protection offered by work product is overcome by necessity. See Fed. R. Civ. P. 26(b)(3)(A)(ii).

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VinterActive is ordered to obtain the files because, according to counsel, the cost will be

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considerably less for VinterActive to obtain them, than it would be for OptiRev to do so. Under
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the circumstances, however, and because the complete file will assist both sides in achieving a fair

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resolution of this action, it is appropriate that the cost of obtaining the materials from the

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Copyright Office be split, 50/50, between the parties. The Court further finds that monetary

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sanctions are unjustified as VinterActive displayed good faith in its beliefs and supplementary

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responses. See Fed. R. Civ. P. 37(5)(A)(iii).

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CONCLUSION

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The Court GRANTS OptiRev's motion to compel production of the Copyright Office

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record and DENIES OptiRev's request for monetary sanctions. The Court orders VinterActive to

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obtain and produce the complete file, and orders the parties to split the cost of such production

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United States District Court
Northern District of California

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equally.

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IT IS SO ORDERED.

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Dated: June 17, 2016
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SUSAN ILLSTON
United States District Judge

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