Disney Enterprises, Inc. et al v. Hotfile Corp. et al

Filing 180

MOTION to Compel the Production of Titov Deposition Ex. 27 [REDACTED] by Warner Bros. Entertainment Inc.. Responses due by 12/30/2011 (Attachments: # 1 Text of Proposed Order)(Stetson, Karen)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO.1 1-20427-WILLIAMS/TURNOFF

DISNEY ENTERPRISES, INC.,
TWENTIETH CENTURY FOX FILM CORPORATION,
UNIVERSAL CITY STUDIOS PRODUCTIONS LLLP,
COLUMBIA PICTURES INDUSTRIES, INC., and
WARNER BROS. ENTERTAINMENT INC.,

Plaintif,
v.

HOTFILE CORP., ANTON TITOV, and
DOES 1-10.
Defendants.
I

HOTFILE CORP.,

Counterclaimant,
v.

WARNER BROS. ENTERTAINMENT INC.,
Counterdefendant.
I

WARNER'S MOTION AND MEMORANDUM OF LAW
TO COMPEL THE PRODUCTION OF TITOV DEPOSITION EX. 27
Hotfi1e is improperly trying to claim work product over - and claw back - a document it

previously produced (twice) and that Warner Bros. Entertainment ("Warner") marked and used
an exhibit (hereinafter "Titov Deposition Ex. 27") during the depositions in Bulgaria last week.

Defendant Titov, testifying as Hotfie's Rule 30(b)(6) witness, was questioned extensively about

Titov Deposition Ex. 27. Hotfie's lead counsel, who defended the deposition, was provided
with a copy of the document at the deposition simultaneously with the witness. At no time
1

during the questioning on Titov Deposition Ex. 27 did Hotfle or its counsel raise any objection
as to work product or privilege, or make any suggestion that Titov Deposition Ex. 27 had been

inadvertently produced. Hotfie asserted work product and demanded to expunge the deposition
transcript after the deposition had concluded for the day, and only after Mr. Titov had already

given testimony about the document that undermines Hotfle's counterclaim against Warner. As
explained by Mr. Titov, Titov Deposition Ex. 27 reflects that

Hotfie cannot be permitted to unring the bell and now seek to claw back Titov
Deposition Ex. 27 and withhold it from production. If Titov Deposition Ex. 27 ever qualified as
privilege has long since been waived.

work product (a questionable proposition), any claim of

Here, the prejudice to Warner is manifest. As a direct result of the testimony by Hotfile about

Titov Deposition Ex. 27, Warner forewent further examination on the subject matter reflected in

Titov Deposition Ex. 27, and refrained from marking and examining Mr. Titov on other similar

documents.! If the concept of waiver is to have any meaning, Hotfile clearly cannot be permitted
to wait until after it sees how the examination turns out before deciding that it would prefer to try
to preclude the evidence altogether.

! It bears mention that this is not the first or only document that Hotfile is seeking to claw back

as "inadvertently" produced. Many of the other 64 documents defendants seek to claw back and which plaintiffs are not contesting - were produced in Bulgarian and at least arguably were
produced inadvertently. Moreover, as to one (Titov Deposition Ex. 26), the possibility that the

Bulgarian language document might be work product was raised at the deposition before the
witness was questioned on the document. In that instance, counsel for plaintiffs stipulated that
the examination of the witness on the document would not, by itself, constitute a waiver of work
product if it was later concluded that the document had been inadvertently produced. But the
circumstances as to that document (Ex. 26) and the document at issue in this motion (Ex. 27) are
dramatically different. Titov Deposition Ex. 27 is in English, was not inadvertently produced,
and was the subject of questioning at the deposition without any objection being raised.

2

ARGUMENT
Under the Protective Order entered in this case, a party may claw back a privileged

document that it produced "inadvertently." See Stipulated Protective Order, ECF No. 68, at 18 ir

20. The Protective Order specifically provides, however, that a party may object to an attempt to
claw back a document, and move to compel its production, where the "production of the

allegedly inadvertently produced document was not inadvertent or ... conduct since production
of

the allegedly inadvertently produced document constitutes waiver." Id. at 19 ir 20.1

Hotfie cannot carry its burden to show that Titov Deposition Exhibit 27 ever qualified as
both could be shown,

work product or that its production was truly "inadvertent." But even if

any privilege has been waived.
1. At his deposition, Mr. Titov confirmed that

Because Titov Deposition Ex.

27 memorializes the conclusions of an investigation that Hotfile's counsel did not initiate, direct
or participate in, Hotfile cannot shield the document from production on the basis of attorney

work product. See, e.g., The Equal Rights Center v. Lion Gables Residential Trust, No. DKC 07-

2 Consistent with the requirements of

the Protective Order, Warner is submitting
the entire, 297-page
document) under seal to the Court along with this motion to compel, while destroying other
Warner's Motion to
Luke C. Platzer in Support of
copies in its possession. See Declaration of
Compel Titov Deposition Exhibit 27 ("Platzer Decl.") (submitted herewith) Ex. C. While
Warner is mindful of the Court's direction to avoid the unnecessary filing of motions under seal,
this motion (i.e. the requirement under the protective order that Platintiffs
the circumstances of
destroy their own copies of the document, and to present to the Court the challenged document
and testimony) necessitate an under seal filing.
Paragraph 20 of

a copy of

Titov Deposition Exhibit 27 (which constitutes a shorter excerpt of

3

2358,2010 WL 2483613, at *7 (D. Md. June 15,2010) ("Where work product protection is

invoked, it is that party's burden to show, as to each document, that the work product in question

was: (l) prepared by, or under the direction of, an attorney and, (2) was prepared in anticipation
of litigation. ") (internal quotation marks omitted) (citing cases).
2. Defendants' production of

Titov Deposition Ex. 27 also was not "inadvertent."

Hotfie did not produce the document by mistake; Hotfile produced it because it decided to take a
the infringement status of

legal position earlier in this case that non-lawyers' assessment of

files

is not work product because those conclusions are facts that do not contain attorney mental
impressions. As the Court wil recall, Hotfie brought a motion to compel against Warner on this

theory, seeking Warner's conclusions as to takedown notices it sent to Hotfile. In that motion,

Hotfie argued as follows:
rT)hat a party "analyzed" facts at the direction of counsel doesn't somehow
render those facts protected as work product. Hotfle sought information about
pure facts-whether Warner had found instances where it deleted files that it was
not authorized to delete-not protected attorney mental impressions about those

facts. The facts underlying what may otherwise be protected attorney work
product are quintessentially not work product...

Motion and Memorandum of Law of Defendant and Counter-claimant Hotfie
Corporation to Compel Discovery from Plaintiff and Counter-Defendant Warner Bros.
Entertainment Inc. of

Warner's Takedown Investigations, ECF No. 164, at 7.

3. That Hotfie was not successful in defeating Warner's claim of work product (in

part because Warner's analysis was initiated and directed by counsel) does not change the fact

that Hotfie made a tactical decision to take a position as to work product and produced Titov
Deposition Ex. 27 to maintain consistency with that position. Titov Deposition Ex. 27 is a 297-

page document, in English (a smaller excerpt was used at the deposition). It is simply not
credible for Hotfile to claim the document was unknowingly or inadvertently produced. Indeed,

4

Hotfile produced the document not once but twice, once bearing Bates numbers HF02866338,

which is Titov Deposition Ex. 27, and again bearing Bates numbers HF00036777. See Platzer
Decl. ir 4 & Ex. C.
4. In the end, however, the circumstances surrounding the creation and production of

Titov Deposition Ex. 27 became immaterial when, without objection from Hotfle or its counsel,
Hotfile, and Mr. Titov was

the document was marked at the Rule 30(b)(6) deposition of

extensively questioned on the document. See Titov Dep. Tr. at 155:16-160:22 (Platzer Ex. A).
By failing to raise a contemporaneous objection at the deposition, and instead waiting until after
Mr. Titov had given testimony on the document to decide whether or not to assert privilege,
Hotfile has waived any claim of

work product protection over the document. E.g., St. Cyr v.

Flying J, Inc., No. 3:06-cv-13-J-33-TEM, 2008 WL 2097611 (M.D. Fla. May 16,2008) (work
product waived by voluntary disclosure of letter and email correspondence during deposition
where counsel only generally objected, but did not specifically object on the basis of

work

product); Carrasco v. Campagna, No. C-03-4727, 2007 WL 81909, at *3 (N.D. CaL. Jan. 9,

2007) (concluding that work product covering investigatory interviews was waived where

witnesses were specifically asked about what they discussed with the investigator, no objections
were made, and each witness provided substantive answers); see generally Stern v. O'Quinn, 253

F.R.D. 663, 681 (S.D. Fl. 2008) ("Generally speaking, as noted above, work-product protection
is waived when protected materials are disclosed in a manner which is either inconsistent with
maintaining secrecy against opponents or substantially increases the opportunity for a potential
adversary to obtain the protected information") (internal quotation marks and citation omitted).

CONCLUSION
For the foregoing reasons, Warner respectfully requests that this motion be granted.

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CERTIFICATE OF GOOD FAITH CONFERENCE
I HEREBY CERTIFY that, pursuant to Local Rule 7.1(a)(3), U.S. District Court for the
Southern District of Florida, counsel for Warner has conferred with counsel for Defendant

Hotfle Corp. in a good-faith efforts to resolve the issues raised in this Motion without court
action, but have been unable to do so.

DATED: December 12,2011

By: lsi Karen L. Stetson
Karen L. Stetson
GRAY-ROBINSON, P.A.
1221 Brickell Avenue, 16th Floor
Miami, FL 33131

Telephone: [phone]

Facsimile: [phone]
JENNER & BLOCK LLP

MOTION PICTURE ASSOCIATION
OF AMERICA, INC.

Steven B. Fabrizio (Pro Hac Vice)
Duane C. Pozza (Pro Hac Vice)
Luke C. Platzer (Pro Hac Vice)

Karen R. Thorland (Pro Hac Vice)

15301 Ventura Blvd.
Building E
Sherman Oaks, CA 91403
Phone: [phone]

1099 New York Ave., N.W.
Suite 900
Washington, DC 20001

Fax: [phone]

Telephone: [phone]

Facsimile: [phone]
Attorneys for Plaintif

6

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 11-20427-WILLIAMS/TURNOFF

DISNEY ENTERPRISES, INC.,
TWENTIETH CENTURY FOX FILM CORPORATION,
UNIVERSAL CITY STUDIOS PRODUCTIONS LLLP,
COLUMBIA PICTURES INDUSTRIES, INC., and
WARNER BROS. ENTERTAINMENT INC.,
Plaintiffs,
v.
HOTFILE CORP., ANTON TITOV, and
DOES 1-10.
Defendants.
/
HOTFILE CORP.,
Counterclaimant,
v.
WARNER BROS. ENTERTAINMENT INC.,
Counterdefendant.
/
CERTIFICATE OF SERVICE
I HEREBY CERTIFY on this 12th day of December, 2011, I served the following documents on
all counsel of record on the attached service list via the Court’s CM/ECF filing system:
Warner’s Motion And Memorandum Of Law To Compel The Production Of Anton
Titov Deposition Ex. 27
I further certify that I am admitted to the United States Court for the Southern District of Florida
and certify that this Certificate of Service was executed on this date.
By: /s/ Karen L. Stetson
Karen L. Stetson

SERVICE LIST
Disney Enterprises, Inc., et al. v. Hotfile Corp. et al.
CASE NO. 11-CIV-20427-WILLIAMS-TURNOFF

FARELLA BRAUN + MARTEL LLP
Anthony P. Schoenberg
[e-mail]
Roderick M. Thompson
[e-mail]
N. Andrew Leibnitz
[e-mail]
Deepak Gupta
[e-mail]
Janel Thamkul
[e-mail]
235 Montgomery Street
San Francisco, CA 94104
Phone: [phone]
Attorneys for Defendants Hotfile Corp. and
Anton Titov

BOSTON LAW GROUP, PC
Valentin Gurvits
[e-mail]
825 Beacon Street, Suite 20
Newton Centre, MA 02459
Phone: [phone]
Attorneys for Defendants Hotfile Corp. and
Anton Titov

RASCO KLOCK
Janet T. Munn
[e-mail]
283 Catalonia Ave., Suite 200
Coral Gables, FL 33134
Phone: [phone]
Fax: [phone]
Attorney for Defendants Hotfile Corp. and
Anton Titov