Psychic Readers Network, Inc. v. Take-Two Interactive Software, Inc. et al

Filing 75

ORDER granting in part and denying in part 67 Plaintiff's Motion to Compel Defendants to Produce Documents. Signed by Magistrate Judge Barry S. Seltzer on 8/13/2018. See attached document for full details. (pb00)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 17-61492-CIV-DIMITROULEAS/SELTZER

PSYCHIC READERS NETWORK, INC.,
Plaintiff/Counterdefendant,
vs.
TAKE-TWO INTERACTIVE SOFTWARE,
INC. and ROCKSTAR GAMES, INC.,
Defendants/Counterclaimants,
and DOES 1-10,
Defendants.
________________________________/
ORDER ON PLAINTIFF’S MOTION TO COMPEL
THIS CAUSE has come before the Court upon the Plaintiff’s Motion to Compel
Defendants to Produce Documents [DE 67]. This is an action for copyright infringement
and unjust enrichment in which Plaintiff, Psychic Readers Network, Inc. (“PRN”), seeks
damages and injunctive relief for Defendants’ alleged unauthorized use of Plaintiff’s
character “Miss Cleo” for its video game Grand Theft Auto: Vice City. Plaintiff seeks an
Order compelling Take-Two Interactive Software, Inc. and Rockstar Games, Inc.
(collectively “Defendants”) to produce documents responsive to PRN’s First Request for
Production of Documents.
There are several categories of documents in dispute. The first category involves
Defendants’ financial records and profits from 2002 through the present (Request Nos. 1,
4, 8, and 9). The documents pertain to Plaintiff’s claim for actual damages for copyright

infringement. Defendants have agreed to produce responsive documents dating back to
July 26, 2014, but they object to producing documents prior to that date on the ground that
the applicable statute of limitations for copyright infringement is three years and, therefore,
Plaintiff may only recover damages for the three-year period prior to filing suit. 17 U.S.C.
§ 507(b).
Plaintiff relies upon Habersham Plantation Corp. v. Molyneux, 2011 WL 13216994
(S.D. Fla. Aug. 19, 2011), and argues that it can recover damages for acts of infringement
that occurred more than three years before the suit was filed because it neither knew nor
reasonably should have known about the alleged infringement. Defendant argues that
given the level of success enjoyed by Grand Theft Auto: Vice City, and the alleged
importance of the Auntie Poulet character to the game, it is unreasonable for Plaintiff to
assert that a reasonable copyright holder would not have discovered, in the 16 years of the
game’s existence, the alleged infringement. Defendant also argues that a recent Supreme
Court case, Patrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014), makes clear
that copyright damages are strictly limited to those incurred in the three year period
preceding the litigation. The Patrella Court, however, specifically noted that it had not
considered whether the “discovery rule” applies in copyright actions. Id. at 1969, n.2.
Furthermore, several courts subsequent to Patrella have ruled that a plaintiff in a copyright
case may recover damages beyond the three-year statute of limitations when it did not
know, and could not have reasonably known, of the alleged infringement. See Mitchell v.
Capitol Records, LLC, 287 F. Supp. 3d 673 (W.D. Ky. 2017); Wolf v. Travolta, 167 F.
Supp. 3d 1077 (C.D. Cal. 2016); Grant Heilman Photography, Inc. v. McGraw-Hill Cos.,
Inc., 28 F. Supp. 3d 399 (E.D. Pa. 2014).
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The issue of how far back Plaintiff can seek recoverable damages is ultimately for
the District Court to determine. At this stage, the undersigned concludes only that
discovery of Defendants’ financial records from the date of the first infringement to the
present is relevant and proportional to the needs of the case. Fed. R. Civ. P. 26(b)(1).
Accordingly, the Motion to Compel will be granted as to Request Numbers 1, 4, 8, and 9.
The second category of documents sought by Plaintiff involves documents that
identify or show the distributor(s) of Grand Theft Auto: Vice City (Request Numbers 10 and
41). Plaintiff has named as Defendants unknown “Does 1 through 10" and seeks the
identity of Defendants’ distributors so that those entities can be joined in this copyright
action. Thus, the undersigned concludes that the requests are relevant to Plaintiff’s claims.
Defendants, however, argue that the requests are not proportional to the needs of the case
because they are not limited in scope, time, or geography.

In response, Plaintiff

acknowledges that a list of distributors of Grand Theft Auto: Vice City is sufficient and that
the identity of all distributors involved in the distribution of the infringing product are not just
relevant but also proportional.

The undersigned agrees.

The Motion to Compel

addressed to Request Numbers 10 and 41 will be granted, but Defendants’ response will
be limited to a list of the distributors of Grand Theft Auto: Vice City from its initial release
through the present.
The final category of documents sought by Plaintiff involves contracts and licenses
for other actors and intellectual property used in Grand Theft Auto: Vice City (Request
Numbers 5, 18, and 19). Plaintiff argues that payments made to other actors who
performed in the release and payments made for the use of other intellectual property in
the game are relevant and necessary for determining damages caused by Defendants’
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failure to license the Miss Cleo character. The undersigned disagrees. Payments made
to other talent who performed in the work are not relevant to payments made to the actor
who played Miss Cleo. In addition, the licenses paid by Defendants for other intellectual
property are not relevant to the fair market value of Miss Cleo.

Accordingly, the

undersigned concludes that Request Numbers 5, 18, and 19 are not relevant to the claims
or defenses in the case, nor are they proportional to the needs of the case. Fed. R. Civ.
P. 26(b)(1).
Accordingly, for the foregoing reasons, it is hereby
ORDERED AND ADJUDGED that Plaintiff’s Motion to Compel Defendants to
Produce Documents [DE 67] is GRANTED IN PART and DENIED IN PART. The Motion
is GRANTED as to Request Nos. 1, 4, 8, 9, 10, and 41 and is DENIED as to Request
Numbers 5, 18, and 19. Defendant shall produce responsive documents as defined herein
with 14 days of the date of this Order.
DONE AND ORDERED in Chambers, Fort Lauderdale, Florida, this 13th day of
August 2018.

Copies furnished counsel via CM/ECF

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