Integrated Global Concepts, Inc v. J2 Global, Inc et al

Filing 87

ORDER GRANTING MOTION TO COMPEL AND ENTRY OF PROTECTIVE ORDER by Judge Paul S. Grewal granting 73 Motion to Compel; granting 74 Motion for Protective Order (psglc3S, COURT STAFF) (Filed on 12/13/2013)

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UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
For the Northern District of California

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INTEGRATED GLOBAL CONCEPTS, INC.,

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Plaintiff and Counterclaim Defendant, )
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v.
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j2 GLOBAL, INC. and ADVANCED
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MESSAGING TECHNOLOGIES, INC.,
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Defendant and Counterclaimant. )
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)

Case No.: C-12-03434-RMW
ORDER GRANTING DEFENDANT’S
MOTION TO COMPEL AND
GRANTING DEFENDANT’S MOTION
FOR ENTRY OF PREVIOUSLY
AGREED PROTECTIVE ORDER
(Re: Docket Nos. 73 and 74)

Defendant and Counterclaimants j2 Global, Inc. and Advanced Messaging Technologies,

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Inc. (collectively “j2”) move to compel Plaintiff and Counterclaim-Defendant Integrated Global

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Concepts, Inc. (“IGC”) to produce documents related to seven of j2’s initial requests for

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production. 1 In addition, j2 moves for entry of a previously-agreed protective order. 2

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Having considered the parties’ papers and arguments the court GRANTS j2’s motion to

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compel, and GRANTS j2’s motion to entry of a previously-agreed protected order.
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See Docket No. 73.

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See Docket No. 74.

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Case No.: 5:12-cv-03434-RMW
ORDER GRANTING DEFENDANT’S MOTION TO COMPEL

I. BACKGROUND

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The court draws the following facts from Plaintiff’s complaint, and takes them as true for

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purposes of the pending motions.

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IGC and j2 entered into a non-exclusive licensing agreement in order to effectuate a transfer
of IGC’s customer base to j2. 3 The parties entered into an “Agreement of Understanding” 4 that
included a “Release” of “all [existing] claims” in relation to the assets provided to j2 by IGC. 5 In

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United States District Court
For the Northern District of California

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addition to the “Release” the “Agreement of Understanding” included a “Covenant” where j2
would not “institute or maintain against” IGC “any action or proceeding” related to IGC’s
equipment, software, services, or other assets provided to j2 by IGC. 6

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On April 20, 2012, j2 sued IGC in the Central District of California for various violations of

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the original agreement. On July 2, 2012, IGC filed this suit against j2 for breach of the covenant

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not to sue. 7 On August 5, 2013, the court issued a scheduling order bifurcating the contract

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interpretation issue from the other issues in the case. 8 On September 17, j2 filed the two motions

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currently pending before the court: a motion to compel further responses and document production 9

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and a motion for entry of a previously agreed protective order, so that document production may

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proceed.1

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See id. at ¶ 11-31.

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Id. at ¶ 32.

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Id. at ¶ 33.

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Id. at ¶ 34.

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See Docket No. 1.

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Docket No. 66 at ¶ 1-2 (“The contract interpretation issue is bifurcated and will be tried before
other issues. The court confirmed that such limited bifurcation is what it previously had intended
and that it did not intend to bifurcate any issues other than the interpretation issue.”).

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See Docket No. 7.

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Case No.: 5:12-cv-03434-RMW
ORDER GRANTING DEFENDANT’S MOTION TO COMPEL

II. LEGAL STANDARDS

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The Federal Rules of Civil Procedure provide that a party “may obtain discovery regarding

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any nonprivileged matter that is relevant to any party’s claim or defense.” 10 “Relevance for

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purposes of discovery is defined very broadly.” 11 If a party facing a discovery deadline is waiting

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for documents in response to a document request, the party may immediately move to compel
production of the documents. 12 On a motion to compel, the party seeking to compel discovery has

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the initial burden of “establishing that its request satisfies the relevancy requirements of Rule
26(b)(1).” 13 “In turn, the party opposing discovery has the burden of showing that the discovery

United States District Court
For the Northern District of California

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should not be allowed, and also has the burden of clarifying, explaining or supporting its objections

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with competent evidence.” 14

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III. DISCUSSION
A. Motion to Compel

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j2 asserts that the requests for production at issue here are relevant to supporting j2’s claims

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for the contractual interpretation of the “Agreement of Understanding.” The parties do not dispute
that the productions are permissible under the rules; they simply disagree as to when that
production will be appropriate. Judge Whyte has made it clear that such productions are only
necessary at this phase of the litigation if they will are necessary to contract interpretation claims. 15
Succinctly, then, the issue before the court is whether IGC’s source code is relevant to the

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Fed. R. Civ. P. 26(b).

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See Garneau v. City of Seattle, 147 F.3d 802, 812 (9th Cir. 1998).

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See Fed. R. Civ. P. 37(a)(3)(B)(iv).

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See Fed. R. Civ. P. 26(b)(1); see Soto v. City of Concord, 162 F.R.D. 603, 610 (N.D. Cal. 1995).

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See Louisiana Pacific Corp. v. Money Market 1 Institutional Investment Dealer, 2012 WL
5519199, at *3 (N.D. Cal. Nov. 14, 2012); United States v. Warner, Case No. 11–04181-LB, 2012
WL 6087193, at *3 (N.D. Cal. Dec. 6, 2012).

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See Docket Nos. 77, 20:4-20:15, 23:1-23:2, 83.

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Case No.: 5:12-cv-03434-RMW
ORDER GRANTING DEFENDANT’S MOTION TO COMPEL

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interpretation of the original agreement.
IGC has repeatedly asserted that MaxEmail functions now exactly as it did at the time the

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Release was signed. 16 It has relied on those assertions in making substantive and dispositive

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motions to the court. Judge Whyte relied on those assertions in making his decision on j2’s Rule

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12(b)(6) motion. 17 In making these assertions and allowing these reliances, IGC has put the

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developmental state of its product at issue in the contract interpretation phase of the litigation. It

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would therefore be manifestly unjust to deny j2 the opportunity to probe the factual basis of IGC’s
assertions, once they have been put at issue. j2’s motion to compel is GRANTED.

United States District Court
For the Northern District of California

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B. Motion For Entry of Previously Agreed Protective Order

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At the hearing, the only disputed issue regarding the protective order was where the source

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code would be produced, if and when such production was required. 18 Because the case is
pending in the Northern District of California, and because both parties have representatives in the
Northern District, the source code shall be produced in the Northern District of California

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according to the deadlines set forth in the scheduling order and subject to the other terms of the
proposed protective order. 19
IV. CONCLUSION

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Defendant’s Motion to Compel is GRANTED. Defendant’s Motion for Entry of Previously

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Agreed Protective Order is GRANTED, with source code production to occur in this district.

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IT IS SO ORDERED.

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Dated: December 13, 2013

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_____________________________________
PAUL S. GREWAL
United States Magistrate Judge

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See Docket No. 73.

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See Docket No. 52.

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See Docket No. 84.

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See Docket No. 66.

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Case No.: 5:12-cv-03434-RMW
ORDER GRANTING DEFENDANT’S MOTION TO COMPEL