Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 177

RESPONSE to re 176 Objection Go Daddy's Response to Petronas's Objections to Bill of Costs by GoDaddy.com, Inc.. (Fiorino, Joseph) (Filed on 3/16/2012)

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JOHN L. SLAFSKY, State Bar No. 195513
DAVID L. LANSKY, State Bar No. 199952
HOLLIS BETH HIRE, State Bar No. 203651
JOSEPH G. FIORINO, State Bar No. 262787
WILSON SONSINI GOODRICH & ROSATI
PROFESSIONAL CORPORATION
650 Page Mill Road
Palo Alto, CA 94304
Telephone:
[phone]
Facsimile:
[phone]
Email:
[e-mail]
Attorneys for Defendant/Counterclaimant,
GODADDY.COM, INC.

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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PETROLIAM NASIONAL BERHAD,
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Plaintiff,
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vs.
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GODADDY.COM, INC.,
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Defendant.
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GODADDY.COM, INC.,

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Counterclaimant,
vs.
PETROLIAM NASIONAL BERHAD,
Counterclaim Defendant.

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CASE NO.: 09-CV-5939 PJH

GO DADDY’S RESPONSE TO
PETRONAS’S OBJECTIONS TO
BILL OF COSTS

Honorable Phyllis J. Hamilton

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Defendant and Counterclaimant GoDaddy.com, Inc. (“Go Daddy”) respectfully submits
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this response to the objections of Plaintiff and Counterclaim Defendant Petroliam Nasional Berhad
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(“Petronas”) to the Bill of Costs filed by Go Daddy on February 29, 2012. The objections raised
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by Petronas are an attempt to evade responsibility for the monetary costs incurred by Go Daddy in
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GO DADDY’S RESPONSE TO PETRONAS’S
OBJECTIONS TO BILL OF COSTS
Case No. 4:09-cv-05939-PJH

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defending itself against an unnecessary lawsuit brought by Petronas. Furthermore, Pertronas’s

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accusation that there is “nothing [that]. . . supports the costs claimed” in Go Daddy’s Bill of Costs

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ignores the documentary evidence and case law cited in the Declaration of Joseph G. Fiorino in

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support of Go Daddy’s Bill of Costs (“Fiorino Decl.”) and demonstrates a narrow and erroneous

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understanding of Civil Local Rule 54.

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Deposition Transcripts

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Civil Local Rule 54-3(c)(1) provides that, with respect to deposition transcripts, “[t]he

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cost of an original and one copy of any deposition (including videotaped depositions) taken for

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any purpose in the case” is recoverable. Petronas’s assertion that videotaping of a deposition is to

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be viewed as a superfluous additional copy is misplaced. See Objection to Go Daddy’s Bill of

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Costs (“Obj.”) at 1-2. Both the videotaping, including technician fees, and the written transcripts

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are recoverable. Indeed, “a sensible reading of [Rule 54-3(c)(1) is that it] covers the cost of

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videotaping and the cost incurred by the court reporter associated with obtaining a stenographic

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transcription of a deposition, as well as the cost of one copy of the videotape and of the written

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transcript.” MEMC Electronic Materials v. Mitsubishi Materials, No. C 01-4925 SBA (JCS),

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2004 WL 5361246, at *3 (N.D. Cal., Oct. 22, 2004) (awarding costs for both the videotaping and

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transcribing of depositions); see also Hynix Semiconductor, Inc. v. Rambus Inc., 697 F. Supp. 2d

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1139, 1150 (N.D. Cal. 2010) (“The cost of videotaping, including video technician fees, as well as

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the cost of the videotape and written transcript are taxable costs.”).

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Furthermore, Petronas’s claim that Go Daddy seeks more than an original and one copy of

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any transcript is incorrect. The invoices for Items 4-6 of the Itemized Bill of Costs each reflect

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charges that are for only an original and one certified copy of each deposition, and that invoices

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corresponding to Items 7-10 are for merely one certified copy of each deposition—without any

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mention of charges for videotaping. See Exhibit C to Go Daddy’s Bill of Costs at 5-11. In the

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invoices for Items 1-3, which (as discussed above) are for the properly recoverable cost of

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videotaping, the column for “DVD Sync Copies” is a reference to the number of discs required to

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capture the deposition, as the testimony from one deposition spanned across multiple DVDs. It is

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GO DADDY’S RESPONSE TO PETRONAS’S
OBJECTIONS TO BILL OF COSTS
Case No. 4:09-cv-05939-PJH

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not, as Petronas contends, a reference to the multiple copies of a single deposition. See Exhibit C

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to Go Daddy’s Bill of Costs at 2-4.

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Similarly, other necessary and natural costs—such as for rough discs, delivery, and

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expedited services—tied to the transcribing of depositions are recoverable. See Service Employees

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Intern. Union v. Rosselli, No. C 09-00404 WHA, 2010 WL 4502176, at *3-4 (N.D. Cal. Nov. 1,

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2010) (overruling objections to reporter’s invoices listing “‘rough disk’ fees, ‘expedited’ services

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charges, parking reimbursements, charges for court reporter ‘waiting time,’ charges for court

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reporter ‘before/after hours,’ delivery costs, appearance and travel fees, ‘video digitizing to

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DVD[s],’ and ‘video synchronizing’”; awarding over $200,000 in costs). The argument that Go

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Daddy seeks to be reimbursed for “deposition transcript costs that are not allowed” is another

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exaggeration by Petronas. See Obj. at 2. For Items 1-13, no invoice reflects even a single charge

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for miniscripts; only Item 6 contains a charge for ACSII condensing for a total of $16.00; and only

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Item 10 contains expedited delivery charges (which, as discussed above, are properly recoverable).

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See Exhibit C to Go Daddy’s Bill of Costs at 2-11.

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Exemplification and Reproduction of Documents

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Petronas’s insistence that it should not have to pay costs for reproduction and

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exemplification of documents with respect to Items 14-36 is without merit. Under Civil Local

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Rule 54-3(d)(2), “[t]he cost of reproducing disclosure or formal discovery documents when used

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for any purpose in the case is allowable.” As indicated in the Itemized Bill of Costs and the

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Fiorino Decl., charges for reproduction were incurred to reproduce discovery documents, several

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of which were also reproduced for use in depositions. See Fiorino Decl. ¶ 8; see also Itemized Bill

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of Costs, Items 14-36. Petronas (again) cites to no authority to back up its claim that Go Daddy

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must go further and specifically identify each of the documents that were reproduced. Over the

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course of the litigation Petronas served 57 document requests on Go Daddy, requiring the

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Company to convert and reproduce documents from multiple databases to meet its discovery

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obligations. The costs associated with reproduction of such discovery documents is recoverable

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under Rule 54-3(d)(2). See Parrish v. Manatt, Phelps & Phillips, LLP, No. C 10-03200 WHA,

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2011 WL 1362112, at *2 (N.D. Cal Apr. 11, 2011) (holding that costs incurred for “reproduction,
GO DADDY’S RESPONSE TO PETRONAS’S
OBJECTIONS TO BILL OF COSTS
Case No. 4:09-cv-05939-PJH

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scanning, [conversion,] and imaging of client documents ‘for review and potential production’ or

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‘for initial production’. . . are properly recoverable”). In addition, Go Daddy has made a

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conscious effort to be conservative in seeking costs for reproduction by only submitting the

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invoices of outside vendors for recovery. See Exhibit C to Bill of Costs at 15-36. Go Daddy has

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foregone seeking the photocopying costs charged by its counsel Wilson Sonsini Goodrich &

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Rosati, in order to specifically avoid seeking the cost of reproducing copies of motions, pleadings,

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notices, and other routine case papers.

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Petronas also improperly implies that Go Daddy has sought costs for “intellectual effort” in
connection with the production of documents. See Obj. at 4. However, Petronas fails to cite to

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any instances where Go Daddy has allegedly done so and relies on a case, Zuill v. Shanahan, 80 F.

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3d 1366 (9th Cir. 1996), that predates the age of e-discovery and deals with the unrelated matter of

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fees and copying costs from a copyright office. Furthermore, the “intellectual effort” that the

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court in Zuill speaks of is a reference to attorney’s fees for preparation of a production (see id. at

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1371). Here, Go Daddy’s Bill of Costs does not seek any recovery for its attorneys’ time in

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reviewing or preparing documents for production. Petronas’s objections also misleadingly suggest

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that Go Daddy has sought to recover oppressive costs for optical character recognition (“OCR”)

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and metadata extraction in connection with reproducing documents. See Obj. at 3-4. However, for

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Items 14-36 of the Itemized Bill of Costs, no invoice contains a single charge for metadata

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extraction, and only a single invoice (for Item 21) has a $4.20 charge for OCR.

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Preparation of Charts, Diagrams or Other Visual Aids

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Petronas states that, under Civil Local Rule 54-3(d)(5), the cost of preparing a chart,

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diagram, or other visual aid is reimbursable where “reasonably necessary to assist the jury or the

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Court in understanding the issues. . .” See Obj. at 5. Go Daddy agrees. This is the very reason the

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demonstrative (Item 37) was prepared by Go Daddy and used in the successful December 7, 2011

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motion to dismiss hearing: to assist the Court in understanding the complex litigation timeline of

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this case against the backdrop of the concurrent in rem lawsuits brought by Petronas against the

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disputed domain names.
GO DADDY’S RESPONSE TO PETRONAS’S
OBJECTIONS TO BILL OF COSTS
Case No. 4:09-cv-05939-PJH

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Go Daddy respectfully requests that the Items in its Bill of Costs be awarded.

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Dated: March 16, 2012

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WILSON SONSINI GOODRICH & ROSATI
Professional Corporation

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By: /s/ Joseph G. Fiorino
Joseph G. Fiorino

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Attorneys for Defendant/Counterclaimant
GODADDY.COM, INC.

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GO DADDY’S RESPONSE TO PETRONAS’S
OBJECTIONS TO BILL OF COSTS
Case No. 4:09-cv-05939-PJH

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