Viacom International Inc. et al v. YouTube, Inc. et al

Filing 9

Response of Non-Party BayTSP to Defendant YouTube's Motion to Compel Production of Documents byBayTSP, Inc. (Attachments: # 1 Proposed Order)(Hemminger, Steven) (Filed on 11/18/2008)

Viacom International Inc. et al v. YouTube, Inc. et al

Doc. 9

1 Steven D. Hemminger (State Bar No. 110665) ALSTON & BIRD LLP 2 Two Palo Alto Square 3 3000 El Camino Real, Suite 400 Palo Alto, CA 94306-2112 4 Tel.: [phone] Fax: [phone] Email: [e-mail] 6 7 Attorney for Nonparty BayTSP, Inc. 8 9 10 11 12 Viaco m Internat ional Inc., et al., 13 14 v. Plaint iffs, UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION Case No. 08-MC-80211-JF-PVT RESPONSE OF NONPARTY BAYTSP TO DEFENDANT YOUTUBE'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS

15 YouTube, Inc. et al., 16 Defendants. 17 18 19 20 21 v. The Football Associat ion Premier League Limited, et al., Plaint iffs,

Date: Time: Dept.: Judge:

December 9, 2008 10:00 a.m. Courtroom 5, 4th Floor Patricia V. Trumbull

22 YouTube, Inc. et al., 23 24 25 26 27 28
BAYTSP'S RESPO NSE TO YO UTUBE'S MOTION TO COMPEL PROD UCTION O F DOCUMENTS CASE NO. 08 -MC -80211 JF (PVTx)

Defendants.

Dockets.Justia.com

1

Table of Contents

2 I. Factual Background ...................................................................................................... 2 3 4 5 6 7 A. B. C. D. YouTube's Overly-Broad Subpoena to Nonparty BayTSP ........................ 2 Negotiat ions Regarding the Unreasonable Scope of YouTube's Subpoena .................................................................................................. 4 Negotiat ions Regarding the Use of Co mprehensive Search Terms ............ 9 BayTSP's Efforts to Produce Documents Under the Negotiated Scope of YouTube's Subpoena ............................................................... 10

8 II. Argument ............................................................................................................... 12 9 10 11 12 13 14 E. A. B. C. D. YouTube's Subpoena Seeks to Impose Undue Hardship on BayTSP .................................................................................................. 12 YouTube Attempts to Undermine its Negotiat ions with BayTSP ............ 14 BayTSP's Use of Search Terms is Ent irely Appropriate.......................... 15 Substant ial Harm Would Result fro m Co mpelling BayTSP to Comply with YouTube's Original Subpoena .......................................... 16 YouTube's Procedural Vio lations ........................................................... 17

15 III. The Court Should Reasonably Limit Production ...................................................... 17 16 17 18 19 20 21 22 23 24 25 26 27 28
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1 2 3

Table of Authorities

Cas es

4 Compaq Computer Corp. v. Packard Bell Electronics, Inc., 163 F.R.D. 329 (N.D. Cal. 1995) ....................................................................... 13 5 6 EEOC v. McCormick & Schmick's, 2007 U.S. Dist. LEXIS 38049 (N.D. Cal. May 15, 2007) .................................. 13 7 Exxon Shipping Co. v. U.S. Dep't. of Interior., 34 F.3d 774 (9th Cir. 1994) ................... 12 8 Gonzales v. Google, Inc., 9 234 F.R.D. 674 (N.D. Cal. 2006) ....................................................................... 13 10 Highfields Capital Mgmt., L.P. v. Doe, 11 No. C0400176, 2005 U.S. Dist. LEXIS 29680 (N.D. Cal. May 31, 2005) .......... 12 12 In re CV Therapeutics, Inc. Securities Lit., 2006 WL 2458720 (N.D. Cal. 2006). ................................................................ 15 13 14 Katz v. Batavia Marine & Sporting Supplies, Inc., 984 F.2d 422 (Fed. Cir. 1993) ........................................................................... 13 15 United States v. Columbia Broadcasting System, Inc., 16 666 F.2d 364 (9th Cir. 1982) ............................................................................. 13 17 18

Rules

19 Fed. R. Civ. P. 45 .................................................................................................... 12, 13 20 Fed. R. Evidence 502 ............................................................................................... 16, 17 21 United States District Court for the Northern District of California Local Rule 37-1 ................................................................................................. 17 22 23 24 25 26 27 28
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Pursuant to the Federal Rules of Civil Procedure and Local Rules of the United

2 States District Court for the Northern District of California, San Jose Divis io n, 3 BayTSP.com, Inc. ("BayTSP") hereby opposes the Motion to Compel Production of 4 Documents Pursuant to Subpoena Duces Tecum filed on October 20 by YouTube, Inc. et 5 al. ("YouTube") and requests that the motion be denied. 6 7 MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION YouTube attempts to create a dispute where none exists. BayTSP has not refused

8 to produce documents, and, has worked diligent ly toward production of the documents 9 the parties agreed BayTSP would produce, namely documents relating to the plaint iffs in 10 the two lit igat ions and "related parties." In fact, as of the date of the hearing, December 11 9, it is ant icipated that YouTube will have had tens of thousands of documents available 12 for review. While, YouTube, for some reason tries to make out a case for intent ional 13 delay, the fact of the matter is that YouTube's subpoena, which literally calls for every 14 document at BayTSP, even when limited to communicat ions wit h the plaint iffs and 15 related parties, includes hundreds of thousands of documents. 16 As explained below, and as YouTube already knows, BayTSP collected over four

17 terabytes of data. After limit ing and processing the data, BayTSP then developed a list of 18 search terms and used those terms to "filter" the collected data in an effort to identify a 19 subset of potentially responsive documents. Unfortunately, due to the large number of 20 terms and the commo nalit y o f so me of the terms, well over a millio n documents passed 21 through the electronic filter. Assuming that each document averaged about five pages, 22 that volume o f documents amounts to over five millio n pages of documents. Prior to 23 production, even with Agreements regarding inadvertent disclosure, BayTSP, and now 24 Viaco m, was and is, obligated to review the documents for privilege, personal and other 25 who lly-unrelated documents. Even taking only two minutes per document to review, it 26 would have taken over 33,000 hours, or 1300 days or 3.5 person-years to review. To 27 facilitate this review, BayTSP developed an electronic search strategy. As it is, BayTSP 28 still spent over 1900 hours in the last six mo nths searching and reviewing those millio n
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1 plus documents and have narrowed the number of potentially responsive documents to 2 approximately 650,000 or half. 3 As BayTSP has told YouTube, the documents are currently being reviewed by

4 Viaco m for privilege and work product informat ion. BayTSP understands fro m Viaco m 5 that it expects to be able to begin releasing documents on a rolling basis for YouTube's 6 review on November 21. 7 As the record indicates, while it has taken time to process the huge amount of data

8 invo lved, BayTSP has tried to keep YouTube informed and also tried to solicit its help in 9 getting the documents produced in a timely fashio n. 10 When considering this matter, the Court is urged to look behind YouTube's

11 curtain of hyperbo le, accusations, and sensational arguments to the facts. BayTSP has 12 tried to do that and does not waste the Court's time arguing the facts or the law related to 13 the DMCA. 14 15 A. 16 I. FACTUAL BACKGROUND

YouTube's Overly-Broad Subpoena to Nonparty BayTSP BayTSP is a nonparty to this lit igat ion. One need only look to the pleadings for

17 evidence of BayTSP's procedural remoteness from this suit. BayTSP is neit her a plaint iff 18 nor defendant in this act ion (Declaration of Brandon Baum ("Baum Decl."), D.I. 2, ¶6; 19 Ex. C). In fact, BayTSP's invo lvement in this suit was brought on by YouTube's own 20 subpoena to BayTSP (Baum Decl., ¶4; Ex. A). YouTube's third-party subpoena 21 inherent ly recognizes BayTSP's status as a nonparty (id.). YouTube's assert ion, 22 therefore, that BayTSP "effect ively did vo lunteer to participate in this lit igat ion" (Mot. at 23 14:12) is wit hout merit. The mere fact that Viacom hired BayTSP to search for and 24 ident ify infringing material posted to YouTube's website, doe not make BayTSP a party. 25 BayTSP stands to gain nothing fro m this suit and has not been accused of any 26 wrongdoing. As set forth below, nonpart y BayTSP is to be protected from undue 27 hardship imposed by unreasonable subpoenas. See Section II.A. infra. 28 YouTube's claims notwithstanding, BayTSP, a third party to this lit igation, has
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1 never refused to produce its documents relevant to Viaco m's lit igation wit h YouTube. 2 This was explained in the first substant ive teleconference wit h YouTube on November 3 27, 2007. To the contrary, BayTSP has expended significant effort to gather, process, 4 and review a vast number of responsive documents. BayTSP has further made YouTube 5 aware of these continued efforts by engaging in numerous good fait h conversat ions 6 informing YouTube of BayTSP's progress, as set forth below. 7 YouTube's subpoena, however, seeks far more than this limited set of documents.

8 The original scope of YouTube's subpoena seeks an unreasonable and irrelevant set of 9 documents. For instance, several requests seek all documents and co mmunicat ions 10 concerning monitoring, searching or screening o f YouTube, regardless o f whether these 11 documents are related to Viaco m and the instant suit (Baum Decl., ¶4, Ex. A (Doc. 12 Requests 1, 3, 5, 7, 8, 12, and 13)). Addit ional requests fish for all software (and all 13 documents related to the nature, use, development, training, user documents, interface 14 design, and interfaces o f that software) that BayTSP uses to ident ify or monitor 15 copyrigthed works (id. (Doc. Request 2, 8, and 10)). This expansive request taken at face 16 value would encompass, among other things, all software used to generate email, access 17 the internet, create spreadsheets, etc. Still other requests seek all documents related to the 18 training o f emplo yees to search for or monitor websites, which would include amo ng 19 myriad other irrelevant documents, all scheduling emails and memoranda (id. (Doc. 20 Requests 3 and 7)). None of these are relevant to the dispute of whether YouTube has 21 vio lated the copyright laws. In particular documents related to BayTSP's clients other 22 than the plaint iffs is who lly irrelevant and would result in substant ial harm to BayTSP's 23 business if it was required to invo lve other third parties in the dispute between Viaco m 24 and YouTube. It is for this very reason that BayTSP and YouTube agreed to exclude 25 them fro m the present production. 26 Faced wit h YouTube's overly-broad requests, BayTSP chose to work in good

27 fait h with YouTube to reasonably limit its subpoena, rather than refuse to produce 28 documents as YouTube now claims in its motion. The facts belie YouTube's assert ion
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1 that BayTSP has refused to produce documents. 2 B. 3 Negotiations Regarding the Unreasonable Scope of YouTube's Subpoena YouTube and BayTSP spent many mo nths negotiating the scope of BayTSP's

4 response to YouTube's September 27, 2007 subpoena. These negotiat ions began with 5 BayTSP's timely November 7 object ions to the overly broad and unduly burdenso me 6 scope of YouTube's subpoena (Baum Decl., ¶5; Ex. B; see also Declarat ion of Steven D. 7 Hemminger ("Hemminger Decl."), ¶2; Ex. A). Counsel for BayTSP spent over three 8 mo nths discussing the scope of the subpoena with attorneys fro m YouTube's original 9 counsel, Bart lit Beck Herman Palenchar & Scott LLP (Baum Decl., ¶17; Ex. N). 10 Negotiat ions that neither Mr. Baum nor his firm were invo lved in. 11 BayTSP conducted its init ial telephonic meet and confer with YouTube's counsel

12 on November 27, 2007 (Hemminger Decl., ¶3; Ex. B). During this call, BayTSP's 13 counsel emphasized the need to identify all plaint iffs regarding which BayTSP will 14 produce responsive informat ion prior to commencing the process of co llect ing documents 15 (id. at ¶4). This is because, as BayTSP's counsel explained, BayTSP does not store each 16 client's informat ion in a separate database such that it would be simple to extract data 17 relat ing to any particular client (id. at ¶5). YouTube's counsel agreed to seek 18 clarification fro m YouTube on: (i) the breadth of the requests; (ii) the relevance of the 19 informat ion sought; (iii) whether YouTube agrees to limit the requests to include 20 informat ion relat ing to the named plaint iffs; and (iv) whether YouTube is seeking 21 production of the BayTSP's source code (id. at ¶6). Similarly, BayTSP's counsel agreed 22 to consult with BayTSP regarding the fo llowing outstanding issues: (i) whether BayTSP 23 would agree to a piecemeal production despite the burden; and (ii) whether BayTSP 24 would agree to produce design specificat ions, user manuals, marketing materials and 25 other such information discussing BayTSP's so ftware (id. at ¶7). 26 During their subsequent December 4 telephonic meet and confer, counsel for

27 BayTSP and counsel for YouTube continued the discussion regarding BayTSP's response 28 to YouTube's subpoena (id. at ¶8). BayTSP's counsel explained that although BayTSP
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1 does not believe the requests are proper because they are overbroad, it would like to reach 2 agreement regarding the scope of the requests and produce relevant documents (id. at ¶9). 3 The discussio n then progressed to BayTSP's concerns that the document requests, as 4 written, seek informat ion relat ing to each of BayTSP's clients and potential clients (id. at 5 ¶10). Counsel for YouTube raised for the first time the issue of whether BayTSP will 6 agree to produce documents relating to Viaco m's subsidiaries (id. at ¶11). As the 7 subpoena did not define the term "Viaco m," BayTSP's counsel agreed to consult with 8 BayTSP regarding this issue and YouTube's counsel agreed to provide BayTSP with a 9 list of Viaco m's subsidiaries (id. at ¶12; see also id, ¶13; Ex. C). 10 YouTube's counsel cont inued the December 4 meet and confer by co mmunicat ing

11 YouTube's proposal to limit the requests to seek informat ion relating to BayTSP's ten 12 biggest clients (in addit io n to documents relating to the named plaint iffs), including 13 documents concerning the effect iveness of BayTSP's searching mechanism, the rules 14 provided by the clients to BayTSP to guide BayTSP's search for infringing uses, and the 15 process for sending takedown notices to YouTube (id. at ¶14). BayTSP's counsel 16 ident ified several problems wit h YouTube's proposal including the substant ial burden on 17 BayTSP and likely chilling effect on BayTSP's business (id. at ¶15). Counsel explained 18 that BayTSP's documents are subject to confident ialit y agreements (id. at ¶16). A 19 copyright owner may opt not to hire BayTSP for fear of exposure to the fo llowing risks: 20 (1) the production of the copyright owner's confident ial informat ion to YouTube; and/or 21 (2) YouTube's issuance of a subpoena to the copyright owner (id. at ¶17). Further, 22 BayTSP's counsel stated that it is not clear how the informat ion regarding these ten 23 clients is relevant to Viaco m's claims (id. at ¶18). Finally, wit h regard to the types of 24 documents YouTube sought, BayTSP stated it does not necessarily maintain tallies of all 25 of the takedown notices it sends on behalf o f each client nor does BayTSP maintain 26 documents concerning its effect iveness in ident ifying infringement (id. at ¶19). Counsel 27 for YouTube agreed to consult with YouTube in order to narrow its requests in light of 28 the foregoing concerns (id. at ¶20).
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Counsel for YouTube and BayTSP next met and conferred via telephone on

2 December 18 (id. at ¶21). BayTSP proposed that the parties agree to limit the subpoena 3 to seek informat ion relat ing to the named plaint iffs and that BayTSP's production of this 4 informat ion would constitute init ial co mpliance with the subpoena. (id. at ¶22). 5 YouTube's counsel agreed that this proposal makes sense, but noted that counsel did not 6 have the authorit y to agree and would have to confer with YouTube (id. at ¶23). 7 Regarding the production of informat ion relat ing to BayTSP's clients other than the 8 named plaint iffs, BayTSP stated its concern that the production of informat ion relat ing to 9 its clients will drag them into the lawsuit and have a chilling effect on BayTSP's business 10 (id. at ¶24). Moreover, BayTSP failed to understand the relevance of the names o f its 11 clients (id. at ¶25). Thus, BayTSP objected to the production of this informat ion on the 12 grounds of relevance, confident ialit y and burden (id. at ¶26). With regard to the 13 production of informat ion relating to the named plaint iffs, BayTSP's counsel represented 14 that BayTSP would contact each named plaint iff that is a client of BayTSP regarding the 15 production of the client's information in response to YouTube's subpoena (id. at ¶27). If 16 the client did not object to the production of its information, BayTSP would produce it 17 and Bay TSP would not object to the production of documents relating to any of these 18 clients unless the client objected (id. at ¶28). BayTSP must fo llow this procedure, 19 BayTSP's counsel stated, because its agreements with its clients provided that BayTSP 20 may neit her disclo se that a particular ent ity is a client nor disclo se that client's 21 informat ion without notifying the client and providing the client with the opportunit y to 22 object (id. at ¶29). BayTSP waited to hear back from YouTube on the outstanding 23 proposals. 24 On January 2, 2008, more than two months after BayTSP's objected to

25 YouTube's subpoena, counsel for BayTSP were informed that Mayer Brown LLP would 26 replace Bart lit Beck Herman Palenchar & Scott LLP as counsel for YouTube in this 27 matter (id. at ¶30; Ex. D). 28 BayTSP's counsel repeated its proposal to YouTube's new counsel on January 7,
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1 namely that YouTube limit its excessive requests for documents to include only Plaint iffs 2 and their subsidiaries and exclude BayTSP's proprietary software and nonparty clients 3 (id. at ¶31). YouTube's new counsel agreed to speak to YouTube regarding whether it 4 was willing to accept the fo llowing proposal by BayTSP: (1) YouTube would limit its 5 subpoena to seek informat ion relat ing to the named plaint iffs only; (2) YouTube would 6 agree that BayTSP need not produce its source code; and (3) BayTSP would agree that it 7 will not to object to the issuance of a second YouTube subpoena seeking this informat ion 8 at a later date on the basis o f that it the issuance of second subpoena is unduly 9 burdenso me. (id. at ¶32). 10 On January 18, YouTube's counsel accepted BayTSP's limit ing proposal (id. at

11 ¶33; Ex. E). During a telephonic meet and confer on January 30, however, BayTSP's 12 counsel clarified that the January 18 letter from YouTube's counsel did not accurately 13 reflect BayTSP's proposal (id. at ¶34). BayTSP proposed that the parties agree to limit 14 the subpoena to seek documents specific to the named Plaint iffs only and to exclude 15 production of BayTSP's source code (id. at ¶35). BayTSP further proposed that its 16 response to the subpoena would const itute full compliance wit h the subpoena wit hout 17 prejudice to YouTube's right to issue a subsequent subpoena seeking the production of 18 addit ional information (id. at ¶36). Although counsel for YouTube expressed concern 19 that it would have no recourse should BayTSP produce very few responsive documents, 20 BayTSP's counsel alleviated this concern by stating that BayTSP would produce all 21 responsive documents subject to these limitat ions and that YouTube could later issue a 22 second subpoena seeking the production of the excluded categories of documents (id. at 23 ¶37). Counsel for YouTube agreed and requested that BayTSP's counsel memorialize in 24 writing the parties' agreement to the above terms as stated on January 30, 2008 (id. at 25 ¶38). BayTSP's counsel submitted a written summary o f the parties' agreement for 26 execution on February 13, 2008 (id. at ¶39; Ex. F). 27 Continuing their January 30 meet and confer, counsel for both YouTube and

28 BayTSP agreed to further limit YouTube's request to exclude the fo llowing: the history
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1 of BayTSP's so ftware development, any development contribut ions made by ent it ies 2 other than named Plaint iffs (wit h the except ion of development documents showing 3 design specifications of the techno logy), and API's that do not belong to BayTSP (which 4 counsel represented it believed BayTSP did not have) (id. at ¶40). BayTSP then 5 informed YouTube's counsel that takedown notices sent by BayTSP on behalf of its 6 clients did not exist at BayTSP in any documentary form (id. at ¶41). Rather, the 7 informat ion contained in the takedown notices exis ted in a proprietary database such that 8 they can be created, but to create the takedown notices would require creat ion of a script 9 and processing on the current and archived databases (id. at ¶42). The entire process, 10 BayTSP's counsel stated, would be extremely burdenso me and t ime consuming (id. at 11 ¶43). Moreover, BayTSP reminded YouTube's counsel that YouTube has a copy of the 12 takedown notices and stated that it was unclear why these takedown notices were crit ical 13 to YouTube's case (id. at ¶44). BayTSP's counsel declined to produce the ent ire 14 database because it contains proprietary information that would need to be redacted by 15 BayTSP emplo yees, prevent ing them fro m attending to their ordinary business (id. at 16 ¶45). YouTube's counsel stated YouTube would consider reimbursing BayTSP for the 17 expense of redact ion and BayTSP's counsel agreed to discuss wit h BayTSP the effort 18 required to retrieve the takedown notices (id. at ¶46). Thus as of February, 2008 the 19 parties had not yet finalized their discussio ns. 20 On February 15, shortly after agreeing to BayTSP's proposal and in response to

21 BayTSP's February 13 writ ing co mmemorating the same, YouTube sought expansio n of 22 the negotiated subpoena's scope to "Viaco m-related entit ies," rather than simply Viaco m 23 subsidiaries, but refused to clarify the meaning of this phrase (Baum Decl., ¶17; Ex. N; 24 see also Hemminger Decl., ¶47; Ex. G). To clarify the term and mo ve forward with 25 production, BayTSP provided on February 20 a lis t of more than 470 ent it ies that it 26 understood to be "Viaco m-related entit ies" (Hemminger Decl., ¶48; Ex. H) . 27 Notwithstanding YouTube's complaint s that receipt of the documents was "crit ical" 28 YouTube delayed substant ively responding to BayTSP's attempt at clarificat ion for over
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1 two months (Baum Decl., ¶17; Ex. N). 2 In the meant ime, given BayTSP's desire to move forward with document

3 collect ion in light of the agreed upon subpoena scope, counsel for BayTSP stated via its 4 March 24 letter to YouTube's counsel, that BayTSP would co llect documents pursuant to 5 the agreement, specifically o mitting (i) documents related to BayTSP clients not named 6 as plaint iffs and not included on the February 20 list of Viaco m-related entit ies, and (ii) 7 BayTSP's source code, firm ware, computer programs and algorithms (Hemminger Decl., 8 ¶49; Ex. I). In response to YouTube's March 26 concerns, BayTSP recounted the 9 January 30 agreement in a letter dated March 28 and, in the interest of moving production 10 document collect ion forward, requested provide by April 5 an alternate list of Viaco m 11 ent it ies to BayTSP's February 20 list (id at ¶50; Ex. J). BayTSP also elicited a response 12 regarding the stalled decisio ns of takedown notices, which had been left to YouTube to 13 determine whether it would co mpensate BayTSP for the expense of obtaining these (id). 14 On April 2, nearly five months after receiving BayTSP's object ions to its subpoena 15 (including two months of silence), YouTube finally identified the ent it ies it thought were 16 relevant, a list of more than 470 ent ities (id at ¶51; Ex. K). 17 C. 18 Negotiations Regarding the Use of Comprehensive Search Terms While negotiat ing the final scope of YouTube's subpoena, BayTSP entered into

19 discussio ns with and obtained an e-discovery vendor (Baum Decl., ¶17; Ex. N). BayTSP 20 then identified and collected over four terabytes of data (id.). This excessive vo lume of 21 data made clear to BayTSP that targeted searches would be necessary to ident ify and then 22 review documents responsive to the narrowed scope of YouTube's subpoena 23 (Hemminger Decl., ¶52). On April 23, BayTSP's counsel informed YouTube that 24 BayTSP had co mpleted its document collect ion and was in the process of developing a 25 search term list (id., ¶53; Ex. L). 26 On May 2, BayTSP solicited fro m YouTube a list of relevant search terms (id.,

27 ¶54; Ex. M). After receiving in response a request that BayTSP itself provide a list of 28 search terms, BayTSP generated such a list, provided it to YouTube, and sought
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1 meaningful input fro m YouTube (id., ¶¶55-6; Exs. N-O). Unfortunately, on May 21, 2 YouTube again refused to provide BayTSP with search terms and instead provided only 3 vague suggest ions (see id., ¶57; Ex. P). On May 28, BayTSP utilized YouTube's 4 suggest ions to generate addit ional search terms and then again so licited terms from 5 YouTube, requesting this information by May 30 (id.). In response to its latest overture, 6 BayTSP received fro m YouTube an object ion to the adequacy o f electronic searching 7 generally (id., ¶59; Ex. R). Confronted with YouTube's unreasonable unwillingness to 8 assist in the determination o f searches co mmensurate with the negotiated scope of 9 YouTube's subpoena, BayTSP informed YouTube on May 30 that its search list of nearly 10 1,000 terms was being finalized (see id., ¶60; Ex. S). 11 YouTube's counsel, on May 30, attempted to renege on the agreed upon limit ed

12 scope of its subpoena (id., ¶61; Ex. T). BayTSP's counsel reminded YouTube in its June 13 2 response that, as discussed, BayTSP intended to use the search term list to retrieve 14 properly requested documents (id., ¶62; Ex. U). On June 10, BayTSP informed YouTube 15 that its search term list was now complete and that BayTSP's document vendor indicated 16 filt ering the data collected would require approximately one month (Baum Decl., ¶17; 17 Ex. N). In addit ion to that time, BayTSP stated that production of documents to 18 YouTube would not be possible without additional time for review of privilege and 19 responsiveness (id). Finally, BayTSP offered to meet with YouTube at the end of June or 20 early July in order to better project a timeline for production after filtering the collected 21 data (id). 22 23 D. 24 25 YouTube did not contact BayTSP again unt il late August. YouTube's Already Has or Should Have the Majority of Documents it is Complaining About The vast majorit y o f the documents that YouTube complains about it already has

26 or could get through discovery fro m plaint iffs. For example, it already has copies of all 27 of the takedown notices that BayTSP has sent. Not only on behalf of the plaint iffs but 28 every other client that BayTSP has that had copyrighted material posted on YouTube.
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1 Also, YouTube should have copies of all o f the communicat ions between BayTSP and 2 the plaint iffs. Given the stated need for this informat ion, it is beyo nd belief that 3 YouTube has not requested those communicat ions fro m Viaco m. Thus, the vast majorit y 4 if not all o f the communicat ions with plaint iffs are already in YouTube's possessio n. 5 YouTube's motion references complaint s from three or four people who received

6 take down notices that they contend were improper.1 First, these communications are 7 between YouTube and the posters. Thus, these are not the types of co mmunicat ions that 8 would co me from BayTSP. In any event, BayTSP has agreed to produce such documents 9 as they relate to the plaint iffs should any exist. 10 As such YouTube's co mplaints about the crit icalit y o f the documents and the

11 delay in getting them ring ho llow. 12 E. 13 14 BayTSP's Efforts to Produce Documents Under the Negotiated Scope of YouTube's Subpoena Since co mpleting the five mo nth negotiat ions o f subpoena scope and two months

15 of search term discussio ns wit h YouTube, BayTSP has expended significant effort to 16 gather, process, and review a vast amount of potentially responsive documents. In its 17 August 21 email to YouTube's counsel, BayTSP's counsel informed YouTube that 18 processing and review of the documents has taken much longer than anticipated (Baum 19 Decl. Ex. O). Nevertheless, at least seventeen attorneys and staff members have worked 20 for months reviewing documents for privilege and responsiveness and preparing 21 documents for production (Hemminger Decl., ¶63). Collect ively, these attorneys and 22 staff have spent over 1900 hours preparing documents for production to YouTube (id., 23 ¶64). In addit ion, BayTSP's internal emplo yees have invested substant ial amounts of 24 time and resources in ident ifying documents and assist ing with their collect ion (id., ¶65). 25 26 27 28
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Ult imately, more than 1.35 millio n documents were electronically processed and

Interestingly YouTube only received complaint s from less than a half a dozen people fro m amo ng the of the hundreds of thousands o f take down notices that were sent.

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1 loaded into a database for review (id., ¶66). As of the time o f this response, BayTSP has 2 ident ified approximately 650,000, believed to be non-privileged documents for 3 production to YouTube (id., ¶¶67-70; Exs. V-Y). BayTSP's counsel has repeatedly 4 represented to YouTube that responsive documents will be made available on a rolling 5 basis beginning November 21,2 thereby obviat ing any alleged need for this motion (id.). 6 As of the time of filing this response, YouTube has refused to withdraw this mot ion (id.). 7 8 A. 9 II. ARGUMENT YouTube's Subpoena Imposes Undue Hardship on BayTSP It is well-settled that under Rule 45(c)(1) of the Federal Rules of Civil Procedure

10 third parties, like BayTSP, are to be protected from undue hardship imposed by 11 unreasonable subpoenas. Indeed, YouTube concedes the presence of Rule 45 concerns 12 created by its subpoena (Mot. at 14:10). 13 Discovery is mo nitored and regulated because it is often used, as in this case, to

14 harass and burden parties. Highfields Capital Mgmt., L.P. v. Doe, No. C0400176, 2005 15 U.S. Dist. LEXIS 29680, at *7 (N.D. Cal. May 31, 2005) (noting that one of the most 16 commo n abuses under Rule 45(c) is the "cast ing an indefensibly wide net, or of seeking 17 informat ion fro m a non-party"). Undue burden to a nonparty is evaluated under both 18 Federal Rule of Civil Procedure 26 and 45. See Exxon Shipping Co. v. U.S. Dep't. of 19 Interior., 34 F.3d 774, 779 (9th Cir. 1994). 20 By issuing its overly-broad subpoena, YouTube fails to "take reasonable steps to

21 avo id imposing undue burden or expense on a person subject to the subpoena." Fed. R. 22 Civ. P. 45(c)(1) . The Court is particularly concerned anyt ime enforcement of a 23 24 25 26 27 28
BAYTSP'S RESPO NSE TO YO UTUBE'S MOTION TO COMPEL PROD UCTION O F DOCUMENTS 2

While BayTSP and YouTube had spent a good deal of time negotiat ing the scope of the documents to produce, it had understood that there were no outstanding issues and had heard nothing fro m YouTube for two months prior to its surprise filing of this motion. Thus, BayTSP does not feel that the spirit behind the meet and confer requirements was met with regard to the filing of this motion and had YouTube inquired when the document would be available before filing the motio n, it would have learned that they were being reviewed by Viaco m and available in November.

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1 subpoena imposes an econo mic burden on a nonparty. Gonzales v. Google, Inc., 234 2 F.R.D. 674, 680 (N.D. Cal. 2006); see Compaq Computer Corp. v. Packard Bell 3 Electronics, Inc., 163 F.R.D. 329 (N.D. Cal. 1995) citing United States v. Columbia 4 Broadcasting System, Inc., 666 F.2d 364, 371 (9th Cir. 1982); Katz v. Batavia Marine & 5 Sporting Supplies, Inc., 984 F.2d 422, 424 (Fed. Cir. 1993) (noting nonparty status is a 6 significant factor in weighing the burdens imposed by the discovery requests); see also 7 EEOC v. McCormick & Schmick's, 2007 U.S. Dist. LEXIS 38049 *18 (N.D. Cal. May 8 15, 2007) (stating co mpliance with a subpoena is excused if "co mpliance threatens to 9 unduly disrupt or seriously hinder normal operations o f a business."). 10 A burden is undue when it is not just ified by an offsetting benefit to the

11 administration of just ice, where co mpliance is unlikely to yield relevant evidence, as 12 illustrated by the Advisory Committee Notes to the 1991 amendments to Rule 45(c) . 13 Thus, the court balances the relevance o f the discovery sought, the requested party's 14 need, and the potential hardship to the party subject to the subpoena. Gonzales, 234 15 F.R.D. at 680. BayTSP's nonparty status entit les it to considerat ions of the damage that 16 could be done to its business by requiring production of documents of parties unrelated to 17 the lit igat ion. How and when a third party engages BayTSP to monitor the web to protect 18 their rights under the Copyright Laws is who lly irrelevant to the issues in the case. 19 Indeed, since YouTube is fully aware of the chilling effect its request for such material 20 fro m third parties like BayTSP would have on copyright holders in hiring people to 21 police its copyrighted works, it can only be inferred that it is emplo ying this tactic to 22 convince copyright owners not to hire companies like BayTSP. 23 Applying these precedents, YouTube's subpoena imposes undue burden on

24 BayTSP. Contrary to YouTube's assert ions, BayTSP has not refused to produce 25 responsive documents. Rather, BayTSP has furthered the discovery process by 26 negotiat ing the scope and formulat ing search term lists to render relevant documents. 27 YouTube, in vio lat ion of Fed. R. Civ. P. 45(c)(1), has not taken reasonable steps to avoid 28 imposing an undue burden upon BayTSP and has not allowed reasonable time for
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1 compliance considering the depth and vagueness of YouTube's requests. Thus, the 2 original scope of YouTube's subpoena runs afoul of the case law protecting nonpart y 3 BayTSP from overly-board demands. 4 B. 5 YouTube Attempts to Undermine its Negotiations with BayTSP Wit hout providing any just ificat ion, YouTube now urges this Court to compel

6 BayTSP to produce documents responsive to the original scope of its subpoena (Mot. at. 7 15:23-24). This result would who lly ignore negotiations over approximately seven 8 mo nths ­ negotiat ions in which YouTube participated fully. As set forth above, 9 YouTube and BayTSP engaged in extensive discussions regarding the scope of 10 YouTube's subpoena. YouTube and BayTSP's mutual assent to the negotiated scope is 11 evident in each company's decis io n to continue toward production of responsive 12 documents under the narrowed subpoena. Indeed, rather than filing a motion to quash 13 YouTube's subpoena, BayTSP turned its efforts toward colleting data and collaborating 14 with YouTube to create a search term list. Similarly, YouTube, rather than filing a 15 mot ion to compel at that time, engaged in reviewing BayTSP's search terms, albeit 16 argumentatively. 17 Surprisingly, YouTube's motion o mits its extensive negotiat ions with BayTSP.

18 In order to argue that YouTube is ent itled the ent ire original scope of its unduly 19 burdenso me subpoena, YouTube's motion ent irely glosses over YouTube's and 20 BayTSP's seven month negotiat ions (See Mot. at 15). YouTube instead chooses to 21 emphasize its purported need for BayTSP's documents ­ a need that is quest ionable at 22 best given YouTube's invo lvement in negotiat ions and periodic delays of up to two 23 mo nths in responding to BayTSP during these negotiat ions. In fact, YouTube dropped its 24 threats of a motion to compel related to electronic searching in June, apparent ly sat isfied 25 with BayTSP's efforts toward production of this sizable vo lume of documents (Baum 26 Decl., ¶17; Ex. N). YouTube cannot now claim BayTSP has stonewalled it and this 27 alleged refusal so mehow entit les YouTube to overly-broad discovery when the facts 28 clearly show that BayTSP has worked diligently in good fait h to produce responsive
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1 documents. 2 Finally, allowing YouTube to undermine its more than half-year-lo ng negotiat ions

3 with BayTSP will vio late notions of fundamental fairness to a third party. BayTSP has 4 spent 1900 hours undertaking extensive efforts to produce documents responsive to the 5 negotiated scope of YouTube's (Hemminger Decl. , ¶63). This scope was agreed to by 6 YouTube as sufficient to provide the documents it purports to need. To allow YouTube 7 to vio late its own agreement would cause BayTSP, a third-party to the lit igat ion, to incur 8 even greater expense for no just cause. 9 C. 10 BayTSP's Use of Search Terms is Entirely Appropriate In addit ion to reverting to the original scope of its subpoena, YouTube challenges

11 BayTSP's use of search terms to ident ify responsive, relevant documents. BayTSP has 12 searched over a millio n of documents using a list of thousands of targeted search terms 13 (Hemminger Decl., ¶¶56, 66). As set forth above, YouTube was granted ample 14 opportunit y to contribute to this list, and the list ultimately searched includes several 15 terms suggested by YouTube. 16 "Emplo yment of search terms is a reasonable means o f narrowing the production

17 in this instance." In re CV Therapeutics, Inc. Securities Lit., 2006 WL 2458720 *2 (N.D. 18 Cal. 2006). In CV Therapeutics, this Court allowed the applicat ion of search terms to 19 125,000 in order to ident ify responsive documents. Id. Here the potential burden to 20 nonpart y BayTSP is much greater. BayTSP has already applied the thousand-plus list 21 negotiated to millio ns of documents and has identified over half a millio n documents for 22 production (Hemminger Decl., ¶¶56, 67-70; Exs. V-Y). Moreover, "[t]o the extent 23 Plaint iff contests the adequacy of the search terms, it has not set forth an alternative 24 search methodology . . . ." In re CV Therapeutics, Inc. Securities Lit., 2006 WL 2458720 25 *2 (N.D. Cal. 2006). While YouTube now contests BayTSP's use of search terms, it fails 26 to provide any reasonable alternat ive co mpliant with Rule 45. In light of BayTSP's 27 extraordinary efforts and YouTube's failure to act reasonably, there can be litt le doubt 28 that BayTSP's use o f search terms is ent irely appropriate.
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1 D. 2 3

Substantial Harm Would Result from Compelling BayTSP to Comply with YouTube's Original Subpoena As set forth above, BayTSP, having negotiated a reasonable subpoena scope and

4 search terms wit h YouTube, has invested considerable resources toward production. To 5 compel BayTSP to now return to YouTube's original unduly burdenso me requests 6 without the assistance of search terms would result in at least the fo llowing harm. First, YouTube's original broad requests do not account for third-party 7 8 confident ialit y o f documents. See Section I.B. supra. The vast majorit y o f documents 9 responsive to these requests do not relate to Viacom's suit with YouTube and are 10 therefore irrelevant to this lit igat ion (see Hemminger Decl., ¶58). Moreover, these 11 documents are subject to confident ialit y agreements requiring that BayTSP contact all 12 clients whose data would be released in response to YouTube's requests (id., ¶29). 13 Releasing this significant amount of data unrelated to this lit igat ion would undoubtedly 14 adversely impact BayTSP's business. BayTSP's clients will likely not continue their 15 relat ionships wit h BayTSP for fear that if there is any future lawsuit, the clients' 16 confident ialit y will be co mpro mised (see id., ¶¶15, 17, 24). BayTSP would suffer this 17 harm for no appreciable benefit to YouTube, as the documents YouTube seeks are 18 irrelevant to this lit igat ion. Explored a little more closely, YouTube is essent ially asking 19 the court to rule that it can serve a subpoena on any copyright owner to seek informat ion 20 about how they po lice their rights. The mere fact that BaytSP is hired as a copyright 21 owners agent does not render the agreements between these clients and BayTSP relevant 22 to Viaco m's claims in the lawsuit. What YouTube should focus on is discovering 23 Viaco m's bases for its claims and addressing those claims -- not fishing from third 24 parties. 25 Second, BayTSP has already co mpleted its review and preparation of documents 26 (id., ¶70; Ex. Y). BayTSP properly undertook this review pursuant to Rule 502 of the 27 Federal Rules of Evidence, which provides that inadvertent disclosure of privileged 28 documents does not result in waiver if "the ho lder of the privilege took reasonable steps
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1 to prevent disclo sure." Indeed, fully reviewing these documents for privilege contributed 2 significant ly to the amount of time needed to prepare these more than half-millio n 3 documents for YouTube. Broadening the scope of BayTSP's search at this late stage 4 would only increase the number of irrelevant yet potentially privileged documents 5 BayTSP would be forced to review in order to discharge its Rule 502 duty. 6 Third, YouTube would have this Court preclude BayTSP fro m applying search

7 terms to BayTSP's documents in order to ident ify a responsive subset. As set forth 8 above, this process is entirely proper under this Court's precedent and has been agreed to 9 by YouTube. If this Court now requires BayTSP to cull through its ent ire universe o f 10 documents again wit hout the use of the comprehensive search term list previously 11 applied, BayTSP will be faced wit h individually reviewing four terabytes of data in order 12 to respond to YouTube's third-part y subpoena (see Baum Decl., ¶17; Ex. N). A review 13 of that magnitude would require in excess of six months and not result in the 14 ident ificat ion of documents not already available to YouTube (see id.). 15 E. 16 YouTube's Procedural Violations In addit ion to the foregoing, YouTube's motion should be denied for vio lating

17 Local Rule 37-1 and this Court's Standing Order. YouTube attempts to circumvent the 18 meet and confer requirement of Local Rule 37-1 by erroneously characterizing its 19 negotiat ions and requests for informat ion as conferences sufficient to satisfy the local rule 20 (Mot. at 1). Further, at no point did YouTube confer with BayTSP with regard to its 21 intent to file the present motion. As such and in addit ion to the reasons stated above, the 22 Court should deny YouTube's motion. 23 24 III. THE COURT SHOULD REASONABLY LIMIT PRODUCTION YouTube improperly attempts to now undermine the negotiated scope of its

25 subpoena. Further YouTube seeks to persuade this Court to compel third-part y BayTSP 26 to produce documents under undue burdens contrary to established precedent. In light of 27 these tactics, BayTSP respectfully requests that this Court deny YouTube's motion and 28 Order the fo llowing:
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1

(i) YouTube's subpoena duces tecum to BayTSP be limited to include only

2 Plaint iffs and their subsidiaries; 3 (ii) YouTube's subpoena duces tecum to BayTSP be limited to exclude BayTSP's

4 proprietary so ftware and BayTSP's nonpart y clients; 5 (iii) Production by making responsive documents available for YouTube's

6 inspection on two computer terminals at Alston & Bird LLP's offices located at Two Palo 7 Alto Square, 3000 El Camino Real, Suite 400, Palo Alto, CA., shall be sufficient; 8 (iv) Documents responsive to the limited scope allowed by this Order shall be

9 made available for inspect ion on a rolling-basis terminat ing two weeks after the totalit y 10 of responsive non-privileged documents has been made available; 11 (v) Inadvertent production documents protected under the attorney-client

12 privilege, work-product protection, or any other applicable privilege or protection, 13 despite reasonable efforts to prescreen such documents prior to production, will not 14 waive the applicable privilege or protection, and YouTube will return such inadvertently 15 produced Discovery Material pro mpt ly after learning of its inadvertent production; and 16 (vi) Should YouTube indicate it seeks copies of documents made available for

17 inspection, electronic and paper copies such documents shall be provided to YouTube at 18 you YouTube's expense. 19 20 21 Dated: November 18, 2008 22 23 24 25 26 27 28
BAYTSP'S RESPO NSE TO YO UTUBE'S MOTION TO COMPEL PROD UCTION O F DOCUMENTS

Respect fully Submitted,

/s/ Steven D. Hemminger Steven D. Hemminger ALSTON & BIRD, LLP Attorneys for Nonparty BayTSP.com, Inc.

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