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

Filing 200

Plaintiff's MOTION to Compel PLAINTIFFS' RENEWED MOTION TO COMPEL PRODUCTION OF PARTICULAR SOURCE CODE by Columbia Pictures Industries, Inc., Disney Enterprises, Inc., Twentieth Century Fox Film Corporation, Universal City Studios Productions LLLP, Warner Bros. Entertainment Inc.. Responses due by 1/9/2012 (Attachments: # 1 Affidavit Declaration of Duane C. Pozza in Support of Renewed Motion to Compel, # 2 Text of Proposed Order)(Stetson, Karen)

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.
/

PLAINTIFFS’ RENEWED MOTION AND MEMORANDUM OF LAW
TO COMPEL PRODUCTION OF PARTICULAR SOURCE CODE
From early in this litigation, the plaintiffs have sought the “source code” to the Hotfile
website – the computerized instructions that constitute the programs and software operating the
site. Defendants’ response has been that it is not “necessary” for the plaintiffs to obtain the
source code, because they can obtain information showing the key operations of the Hotfile
website from non-source code documents and testimony from Hotfile witnesses. When plaintiffs
originally moved to compel production of source code, the Court denied their request on the

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grounds that the source code was confidential and, relying on defendants’ arguments, that
plaintiffs had not demonstrated that it was “necessary” to obtain all source code. However, the
Court held open the possibility that plaintiffs may demonstrate a need to obtain source code
based on the course of discovery. As to one particular technical issue (described in more detail
below), defendants have failed to produce non-source code documents or a witness who can
testify as to the timing of certain changes that are directly relevant to a key issue under the
Digital Millennium Copyright Act (“DMCA”). As a result, plaintiffs now renew their motion for
source code, limited to source code related to these narrow technical issues in dispute.
During the recent depositions of defendants, plaintiffs learned that

Defendants have been unable to produce documents or a witness identifying when
this change took place.
The timing of the change is a critical fact in this case. Hotfile’s
potentially disqualifies it from DMCA protection for substantial period of the
website’s history. Plaintiffs are entitled to know when the change was made. The source code
would answer these questions objectively. Plaintiffs therefore seek source code related to this
process in order to determine when the change or changes were made.
BACKGROUND
Defendants have made clear that their central defense in this litigation will be their claim
that Hotfile responds to takedown notices, which defendants claim entitles them to the
protections of the DMCA. See, e.g., Hotfile’s Second Amended Answer (ECF No. 161) ¶ 71.
Defendants have touted their supposed compliance with plaintiffs’ takedown notices and their
claim that Hotfile uses so-called “hash” technology (i.e. technology that identifies when two
copies of a file are identical) to block the subsequent uploading of files that have been previously

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removed in response to a takedown notice. See, e.g., Declaration of Anton Titov in Support of
Defendants’ Opposition to Plaintiffs’ Motion For Emergency Order Preserving Evidence, ECF
No.30-1, at ¶ 10 (touting Hotfile’s “MD5/SHA1” technology, i.e. hash technology).
However, at the recent deposition in Bulgaria of Anton Titov (who was also Hotfile’s
30(b)(6) representative and lead developer), Mr. Titov revealed that
Specifically, he admitted that for a significant period of Hotfile’s history,

See Declaration of Duane C. Pozza in
Support of Plaintiffs’ Renewed Motion to Compel Production of Particular Source Code (“Pozza
Decl.”), Ex. A (Titov Dep.) at 339:20-340:2; 473:2-475:17. Even more egregiously, Hotfile

–
a feature that plaintiffs alleged in their Complaint as being apparently designed to thwart
takedown notices in exactly this manner. See id., Ex. A (Titov Dep.) at 473:19-474:22; see also
Complaint, ECF No. 1, at ¶ 38.

When pressed for information about when
Hotfile abandoned these previous practices and adopted its claimed current policy of deleting
and blocking files,

At the same time, Mr. Titov admitted that he

Thus, defendants have been unable to produce documents or a witness who can testify

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when those key changes were made, leaving the source code as the only available option for
further information.
ARGUMENT
With respect to the narrow factual issues at issue in this motion – when Hotfile started
,
and when Hotfile started using “hash” information to prevent files from simply being reuploaded after they were identified as infringing and taken down – defendants should be
compelled to provide any specific files and sections of its source code that refer, relate, or are
used in the those processes.
In denying plaintiffs’ initial motion to compel production of source code in August, the
Court nevertheless agreed that “the source code may become necessary in the future” based on
the adequacy of further discovery and positions taken by defendants in the case. See ECF No.
128 at 4 n.2. At the time, the Court denied plaintiffs’ motion to compel all source code for the
Hotfile website – while explicitly leaving open the possibility that it might compel the
production of some source code should it become necessary in the future. Id. at 1-4. Indeed, the
Court stated that such necessity would arise if defendants were to take a legal position that
Hotfile “cannot implement some infringement-stopping mechanism because of the way it coded
some operation or function.” Id. at 4 n.2. As described below, (1) for the narrow portion of
Hotfile’s source code at issue in this motion, such necessity has now arisen, and (2) Hotfile’s
principal objection to the production of its source code – that such source code represents a
“trade secret” – has no real force with respect to source code showing how Hotfile operated in
the past. Accordingly, plaintiffs have shown a compelling need for production of certain limited
portions of the source code.
A. Plaintiffs’ Requests for Production (RFP No. 16):
All versions of the source code for the Hotfile Website as it now exists or has ever
existed.1

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This is the text of Plaintiffs’ original Request For Production. For purposes of this motion, as
noted above, Plaintiffs are moving only on the narrow subset of Hotfile’s source code related to
its processes for disabling files or URL links in response to takedown notices and its process for
using “hash” information to prevent files from being re-uploaded after they have been taken
down.

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B. Defendants’ Objections to Plaintiffs’ Request for Production:
Hotfile incorporates by reference its general objections to this request for
production of documents. Hotfile further objects to this request as overbroad,
unduly burdensome, and not reasonably calculated to lead to the discovery of
admissible evidence in that is seeks all source code for the Hotfile Website,
without any limitation or relationship to the two claims of copyright infringement
set forth in the Complaint and/or the approximately 150 titles as to which
infringement is claimed in the Complaint.
Hotfile further objects to this request as overbroad, unduly burdensome, and not
reasonably calculated to lead to the discovery of admissible evidence insofar as it
seeks all versions of the source code, regardless of whether such source code is
from time periods relevant to the present litigation. This is not a patent litigation.
Hotfile further objects that this request seeks Hotfile’s trade secrets (i.e., it’s
source code), which are confidential, proprietary and commercially sensitive. The
details of every line that ever existed of Hotfile’s most closely-held trade secrets
are not relevant or properly subject to discovery here. Demanding that Hotfile
produce every line of code ever written for Hotfile is improper and abusive, and
on this basis Hotfile objects.
C. Grounds Assigned for Defendants’ Objections:
The grounds are set forth in the objections.
D. Bases for Compelling Production as to Request No. 16:
Defendants’ principal defense in this action is its claim that it implemented takedown
notices it received from the Plaintiffs. See, e.g., Hotfile’s Second Amended Answer (ECF No.
161) ¶ 71. That defense depends upon Hotfile’s having actually disabled all known copies of an
infringing file upon notification, as well as upon preventing their subsequent re-upload. See 17
U.S.C. § 512(c)(1)(C) (service provider must “remove, or disable access to, the material”
claimed as infringing in a notice) (emphasis added); 17 U.S.C. § 512(c)(1)(A) (safe harbor
unavailable where a service provider has actual knowledge that file is infringing – as would be
the case had Hotfile already removed the identical file for copyright infringement in the past).
Moreover, plaintiffs’ claims in this action included extensive allegations of infringement
by Hotfile in the past, not just in the past year. It is therefore of paramount importance to
establish the precise date range in the past during which Hotfile

in order to establish for which past infringements Hotfile may be excluded from claiming

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the protections of the DMCA due to its failure to implement takedown notices properly.2 Indeed,
defendants’ own interrogatories to plaintiffs demand that plaintiffs identify any infringing files
for which Hotfile did not properly implement a takedown notice – discovery plaintiffs cannot
meaningfully answer without knowing, for plaintiffs’ past takedown notices, which files Hotfile
actually disabled and which files it allowed to remain on its system while merely deactivating
one of many URLs for downloading the file. See Defendants’ Interrogatory No. 20 (demanding
that Plaintiffs identify which allegedly infringing files Hotfile failed to properly take down in
response to a notice).
Given the importance of this question to the principal defense upon which defendants are
relying, it is clear that the relevant portions of the source code are “necessary” to the case. ECF
No. 128 at 4 n.2. The Court’s denial of plaintiffs’ earlier source code motion was based on the
premise that there were alternative means for plaintiffs to obtain comparable information – such
as the Court’s suggestion that “plaintiffs can request that Hotfile describe its source code.” ECF
No. 128 at 3. At Mr. Titov’s deposition, Plaintiffs made that precise request – but
See Pozza Decl., Ex. A

Moreover, Mr. Titov was unable to point to other documents that would show
when such a change was made.
On an issue so critical to defendants’ primary defense in this case, plaintiffs cannot merely
rely upon a memory that Mr. Titov admits is incomplete, when there may be objective evidence
providing an exact date. As Plaintiffs’ expert Dr. Ian Foster has previously explained, it is a
common practice to maintain source code history in a source code repository, and it is therefore
highly likely that Hotfile’s source code “would show when particular features were introduced
and any changes that Hotfile made to its system over time.” Declaration of Ian Foster in Support
of Plaintiffs’ Motion to Compel (ECF No. 73-1) at ¶ 12. Plaintiffs should not be forced to rely
on Mr. Titov’s incomplete recollections when there may be actual, objective evidence reflecting
the dates of Hotfile’s design changes.
Finally, the Court’s reason for allowing Hotfile to protect its source code in its August
ruling – that Hotfile’s source code represents a valuable “trade secret,” see ECF No. 128 at 2 –
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Plaintiffs also contend that Hotfile is ineligible for the protections of the DMCA for reasons
other than a failure to implement takedown notices.
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cannot possibly apply to the limited sections of Hotfile’s source code that Plaintiffs now seek.
Plaintiffs are only asking for the source code showing how Hotfile implemented the functions at
issue in the past, and when Hotfile abandoned the previous practices to which Mr. Titov
testified. Whatever the commercial sensitivity and value of Hotfile’s source code for its currentday implementations, there surely can be no real “trade secret” value to showing how Hotfile
coded functions of its website that it has since abandoned or the time at which it abandoned
them. The concern that animated the Court’s previous denial of much broader discovery into
Hotfile’s source code, therefore, is not implicated by the much narrower request made in this
Motion.
CONCLUSION
For the reasons stated, Plaintiffs respectfully request that their renewed Motion to
Compel be granted.3
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 Plaintiffs have conferred with counsel for Defendant
Hotfile 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 23, 2011

By: /s/ Karen L. Stetson
Karen L. Stetson
GRAY-ROBINSON, P.A.
1221 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]

MOTION PICTURE ASSOCIATION
OF AMERICA, INC.
Karen R. Thorland (Pro Hac Vice)

JENNER & BLOCK LLP
Steven B. Fabrizio (Pro Hac Vice)
Duane C. Pozza (Pro Hac Vice)

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Plaintiffs attempted to file the unredacted under seal filing with the Court on December 23,
2011 before 4pm, but the clerk’s office was closed. Counsel for Plaintiffs had previously called
to confirm that the clerk’s office would be open on December 23, 2011, and were not informed
of the early closing.
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15301 Ventura Blvd.
Building E
Sherman Oaks, CA 91403
Phone: [phone]
Fax: [phone]

Luke C. Platzer (Pro Hac Vice)
1099 New York Ave., N.W.
Suite 900
Washington, DC 20001
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiffs

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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 23rd day of December, 2011, I served the following document on
all counsel of record on the attached service list via the Court’s ECF System:
Plaintiffs’ Renewed Motion And Memorandum Of Law To Compel Production of
Particular Source Code
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

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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]

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

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

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