Elan Microelectronics Corporation v. Apple, Inc.

Filing 371

Declaration of Derek C. Walter in Support of 369 Opposition/Response to Motion to Compel Discovery Related to Apple iOS Applications for the Accused Products filed byApple, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I)(Related document(s) 369 ) (Walter, Derek) (Filed on 8/2/2011)

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JOEL BEININ, Plaintiff, v. THE CENTER FOR THE STUDY OF POPULAR
CULTURE, Defendant.
NO. C 06-2298 JW (RS)
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
CALIFORNIA, SAN JOSE DIVISION
2006 U.S. Dist. LEXIS 96088; 35 Media L. Rep. 1527

October 31, 2006, Decided
October 31, 2006, Filed
SUBSEQUENT HISTORY: Motion denied by Beinin v.
Ctr. for the Study of Popular Culture, 2007 U.S. Dist.
LEXIS 22518 (N.D. Cal., Mar. 16, 2007)
COUNSEL: [*1] For Ph.D. Joel Beinin, Plaintiff:
Albert L. Sieber, LEAD ATTORNEY, Fenwick & West
LLP, San Francisco, CA.; Mitchell Harris Zimmerman,
Patrick E. Premo, LEAD ATTORNEYS, Mary Elizabeth
Milionis, Fenwick & West LLP, Mountain View, CA,
US.
For The Center for the Study of Popular Culture, a
California corporation, Defendant: Roger R. Myers,
LEAD ATTORNEY, Rachel E. Matteo-Boehm, Holme
Roberts & Owen LLP, San Francisco, CA.
JUDGES: RICHARD
Magistrate Judge.

SEEBORG,

United

States

OPINION BY: Richard G. Seeborg
OPINION

ORDER GRANTING IN PART AND DENYING IN
PART MOTION TO COMPEL AND MOTION FOR
PROTECTIVE ORDER
I. INTRODUCTION

Before the Court is defendant's motion for a
protective order, plaintiff's corresponding motion to
compel, and post-hearing requests from both sides that
they be permitted to submit additional materials. Based
on the parties' briefing, the arguments of counsel, and the
record herein, each motion will be denied in part and
granted in part, and the requests to file additional
materials will be denied.
II. BACKGROUND
Plaintiff Joel Beinen is a professor of Middle Eastern
studies at Stanford University who has been involved
with the Middle East Studies Association ("MESA").
[*2] Defendant The Center for the Study of Popular
Culture ("the Center") is self-described as a "non-profit
organization founded by author and advocate David
Horowitz to promote conservative positions on matters of
domestic and foreign policy." The Center publishes
political commentary online and in printed books and
pamphlets. In February of 2005, the Center published a
pamphlet entitled "Campus Support for Terrorism." The
pamphlet collected several articles criticizing various
academic organizations and individuals for advocating
views that the authors assert are not in the interests of the
United States. One of the articles in the pamphlet, entitled
"Terror's Faculty Sympathizers," expressly criticized
MESA and Beinen.
The cover of the pamphlet featured photographs of

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2006 U.S. Dist. LEXIS 96088, *2; 35 Media L. Rep. 1527

four individuals mentioned in the articles, including one
of Beinen. The center obtained the photo of Beinen from
the Stanford University website. Beinen subsequently
obtained an assignment of rights from the photographer
who had taken the picture, and then filed this action for
copyright infringement.
III. DISCUSSION
Under the Federal Rules of Civil Procedure, Rule
26(b)(1), [*3]
[p]arties may obtain discovery regarding
any matter, not privileged, that is relevant
to the claim or defense of any party . . .
For good cause, the court may order
discovery of any matter relevant to the
subject matter involved in the action.
Relevant information need not be
admissible at the trial if the discovery
appears reasonably calculated to lead to
the discovery of admissible evidence.

Evidence is relevant if it has "any tendency to make
the existence of any fact that is of consequence to the
determination of the action more probable or less
probable than it would be without the evidence." Federal
Rules of Evidence, Rule 401. Discovery may be limited
by the court for good cause shown "to protect a party or
person from annoyance, embarrassment, oppression, or
undue burden or expense." Fed. R. Civ. P. 26 (c))
A. Discovery Requests Related to Liability
Beinen has propounded a number of interrogatories
and document requests that the Center contends are
wholly inappropriate given that Beinen is suing only for
copyright infringement and not for libel. The Center
notes that it would be entitled [*4] to various protections
in any libel suit, including the provisions of California's
"anti-SLAPP" statute, Cal. Code Civ. P. § 425.16 and
rights under the First Amendment. The Center argues that
Beinen is now attempting to evade those limitations by
seeking discovery that would only be relevant had he
brought a defamation claim.
Beinen concedes that, as drafted, the discovery
requests seek factual support for the content of the
pamphlet, among other things. Beinen argues, however,
that in the meet and confer process he narrowed his

requests to seek only information related to the cover of
the pamphlet, and its use in advertising and promoting
the pamphlet or other publications, fund raising, or other
activities of the Center. Beinen contends that, as limited,
the requests properly seek information that is relevant to
a copyright claim because the Center's intent and motive
is germane to its various equitable defenses and to the
doctrine of "fair use."
As noted at the hearing, the precise contours of the
limitations Beinen proposes are somewhat unclear. It
appears, however, that even though Beinen has
disavowed any intent to obtain factual support for the
contents of the pamphlet, [*5] he is still expecting the
Center to provide any factual support it may have for
what Benin sees as the "message" of the cover. Even
assuming that the Center's good faith or lack thereof may
have some bearing on claims or defenses in this copyright
action, Beinin has not shown how the truth or falsity of
the "message" of the cover has any relevance to this
action for copyright infringement of the photograph. The
issue in this case is not whether Benin "supports
terrorism" or not, nor whether it was defamatory to imply
that he does. With that limitation in mind, the Court will
address the specific requests remaining in dispute.
Interrogatory No. 4
This interrogatory requests the Center to state all
facts relating to why it "believes Prof. Beinin supports or
collaborates with terrorists." Having sued only in
copyright, Beinen cannot now call on the Center to
defend or support any opinions it may hold about Beinen
and his activities. No further response to this
interrogatory will be required.
Interrogatory No. 5
As drafted, this interrogatory seeks "all facts relating
to the Pamphlet's discussion of Prof. Beinin," including
all facts underlying the statements made in the pamphlets.
[*6] Beinen has now recast this interrogatory to request
"all facts relating to the cover of the Booklet and use of
the cover of the booklet in [the Center's] advertising,
promotion, solicitation and or fund-raising activities."
With the understanding that the Center is not required to
state facts supporting the "message" of the cover, the
revised interrogatory is appropriate, and a further
response shall be provided within 20 days of the date of
this order.

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2006 U.S. Dist. LEXIS 96088, *6; 35 Media L. Rep. 1527

Document Request No. 1

the date of this order.

This request seeks all documents in any way related
to Beinen. The Center has agreed to produce any
documents related to its use of Beinen's photograph, but
contends that the request is otherwise overbroad.
Assuming the Center possesses other documents relating
to Beinen, those documents may well pertain to his
public activities and political views. Indeed, the divergent
political opinions of the parties is no secret. The details of
what the Center has collected about Beinen, or what it
has said to others about Beinen, simply have no bearing
on the copyright issues in this action. No further response
to this request will be required.

Document Request Nos 28 and 29

Document Request No. 3
This request originally sought "all documents [*7]
relating to the Pamphlet" including communication with
third parties. As limited, it now seeks only documents
relating to the cover of the pamphlet and its use by the
Center. As limited, the request does not require the
Center to support the "message" of the cover, and is not
otherwise overbroad. The Center has already agreed to
produce responsive documents "relating to its use of the
photograph." To the extent that the Center possesses
additional responsive non-privileged documents relating
to its use of the cover in its advertising, promotion,
solicitation, and/or fund raising activities, it shall produce
them within 20 days of the date of this order.
Document Request Nos. 5 and 6
As drafted, these requests seek communications
between Horowitz or Ben Johnson and third parties
regarding Beinen, MESA, the photograph and/or the
pamphlet. Beinen is now limiting the request to
communications regarding Beinen, the photograph, the
cover of the pamphlet and its use in advertising,
promotion, solicitation, and/or fund raising activities.
To the extent the narrowed requests still seek any
communications relating to Beinen, they remain
overbroad, for the same reason as discussed in connection
[*8] with request no. 1. The remainder of the requests as
narrowed, however, are appropriate, for the same reason
as discussed in connection with request no. 3. To the
extent that the Center possesses additional responsive
non-privileged documents relating to its use of the cover
in its advertising, promotion, solicitation, and/or fund
raising activities, it shall produce them within 20 days of

These requests seek documents supporting the
purported connection between terrorists and Beinen and
other academics. As with interrogatory no. 4, there is no
basis in this copyright action to require the Center to
defend the message conveyed by the pamphlet or its
cover. No further response to these requests will be
required.
B. Discovery Requests Related to Damages
As narrowed in the parties' meet and confer
discussions, the discovery requests relating to damages
that remain in dispute are interrogatory 12, subcategories
(3) (sales of books and pamphlets) and (4) (revenue
received from direct solicitations) and document request
14 (documents supporting the interrogatory response).
The Center contends that it should not have to
disclose [*9] any revenue information except what it
derived from sales of the pamphlet itself. Beinen points
out, however, that the pamphlet--and therefore his
photograph--was depicted prominently on the Center's
website. Beinen's theory is that his photograph was in
effect used as a marketing tool for all of the Center's sales
and fund-raising efforts. The Center argues that Beinen
will not be able to prove a sufficient nexus between the
use of the photograph and other revenues so as to permit
recovery of such "indirect profits." The Center may well
ultimately be able to persuade the trial judge or a trier of
fact that issues of causation and speculation preclude
recovery for some or all of the "indirect profits," but that
is a question that must be decided on a complete factual
record. As limited, these requests are reasonably
calculated to lead to the discovery of admissible
evidence. The Center shall serve a further response to
interrogatory 12, subcategories (3) and (4), and any
non-privileged responsive supporting documents within
20 days of the date of this order.
C. Post-hearing submissions
The Court has received and considered the post
hearing letter briefs that it requested. [*10] The Center's
subsequent request to submit copies of certain materials
produced by Benin in discovery is denied. The Center has
not demonstrated that consideration of such materials is
critical to disposition of these motions. Beinin's request to

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2006 U.S. Dist. LEXIS 96088, *10; 35 Media L. Rep. 1527

file a transcript counsel produced of the hearing in this
matter is denied. The audio record of the hearing is
already part of the record herein.

IT IS SO ORDERED.

IV. CONCLUSION

RICHARD SEEBORG

The parties' respective motions are denied in part and
granted in part, as set forth above.

United States Magistrate Judge

Dated: October 31, 2006