Disney Enterprises, Inc. et al v. Hotfile Corp. et al
Filing
221
REPLY to Response to Motion re 200 Plaintiff's MOTION to Compel PLAINTIFFS' RENEWED MOTION TO COMPEL PRODUCTION OF PARTICULAR SOURCE CODE >PLAINTIFFS' REPLY MEMORANDUM IN SUPPORT OF MOTION TO COMPEL PARTICULAR SOURCE CODE< filed by Columbia Pictures Industries, Inc., Disney Enterprises, Inc., Twentieth Century Fox Film Corporation, Universal City Studios Productions LLLP, Warner Bros. Entertainment Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(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’ REPLY MEMORANDUM OF LAW
TO COMPEL PRODUCTION OF PARTICULAR SOURCE CODE
Plaintiffs have requested a narrow piece of source code showing how Hotfile handles a
discrete function: disabling and blocking files in response to takedown notices. Defendants now
claim in their Opposition brief that the source code will not show what Plaintiffs are seeking, i.e.,
Hotfile’s admitted practice of not disabling files in response to notifications of infringement, and
how long that practice continued. But Defendants provide no evidence other than unsworn
assertions in their brief about what the requested source code shows or does not show, and
Defendant Titov, testifying as Hotfile’s representative, was unable at his deposition to provide
1
with any degree of reliability the information sought. On an issue with the potential to
substantially undermine Hotfile’s principal defense in this action, Plaintiffs should not be forced
to rely on mere unsworn assertions in a brief, or on the testimony of a party witness devoid of
specifics and facing a strong incentive to give self-serving testimony. Plaintiffs need to be able
to test those representations against objective evidence. That objective evidence is the specific,
narrow section of the source code requested.
It is precisely because this source code is so important that Plaintiffs repeatedly sought it
from Defendants and Defendants’ counsel told Plaintiffs’ counsel (contrary to Defendants’
accusation that Plaintiffs did not negotiate this issue with Defendants) that Hotfile was “not
going to accede to plaintiffs[’] demand for source code.” The source code is relevant and
necessary to Plaintiffs’ case. And while Defendants may claim that the source code that operates
their website is a trade secret in its entirety, they have failed to carry their burden of showing that
the much narrower segment of that source code sought in this motion – source code
implementing the deletion and blocking of files in response to takedown notices – has any
commercial value at all, much less that it is a “trade secret” requiring protection from discovery.
ARGUMENT
A.
The Narrow Source Code Sought Is Critically Relevant.
The critical relevance of the source code sought is obvious and Defendants’ Opposition
to Plaintiffs’ motion does not meaningfully contest it. Defendants have made the centerpiece of
their strategy in this case to argue that Hotfile’s liability should be limited because of the safe
harbor provisions of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512(c).
That safe harbor, however, requires, among other things, that a service provider “remove, or
disable access to, the material” claimed as infringing in a notice or of which it has “actual
knowledge.” 17 U.S.C. § 512(c)(1)(A) & (c)(1)(C). While Defendants argue that Plaintiffs are
“overreaching” by relying upon these statutory provisions, Opp. at 5 n.1, they are not. When
Hotfile admittedly did not disable a file in response to a notice, it did not comply with section
512(c)(1)(C). When Hotfile admittedly did not disable a file that it knew was identical to a file
that had been the subject of a notice (because the “hash” of the files was identical), Hotfile did
not comply with section 512(c)(1)(A) and/or section 512(c)(1)(C). The centrality of these
questions to the case is undeniable.
2
How those functions are implemented should be reflected in specific parts of Hotfile’s
source code. And as Plaintiffs’ technical expert Dr. Ian Foster previously explained, one would
also generally expect parties to retain historical versions of source code, see Declaration of Ian
Foster in Support of Plaintiffs’ Motion to Compel (ECF No. 73-1) at ¶ 12; it is also common for
engineers to leave “comments” in source code that explain or disable particular features (a
practice Hotfile has not denied). Source code is thus objective evidence of how Hotfile
implements the file-deleting and file-blocking functions at issue in this motion – and would also
be reasonably expected to contain relevant information about past practice.
B.
Defendant Titov’s Uncertain Testimony And Unsworn Claims In A Brief Are Not
An Adequate Substitute For Objective Evidence.
Rather than contest the relevance of the narrow source code sought here, Defendants’
Opposition relies, essentially, on two arguments: (1) the factual assertion that Hotfile’s source
code would not reveal “the specific date information” about when Hotfile ceased the nondeletion practices to which Titov confessed at his deposition, and (2) the contention that Titov’s
testimony is in any event an adequate substitute for the source code itself. Opp. at 1. Both
arguments miss the point of Plaintiffs’ Motion: source code is objective evidence of how the
Hotfile system operates. On an issue this central, Plaintiffs should not be forced to rely on
unsworn and carefully-worded representations in a legal filing about what the source code would
or would not show, or on imprecise statements by a party witness with an incentive to give selfserving testimony, when there is objective evidence that can be consulted instead.
First, because Hotfile’s practices in responding to takedown notifications are so critical to
whether Hotfile is excluded altogether from the DMCA safe harbor – and because Hotfile
admittedly failed to implement practices necessary for compliance with takedown notices for
some period after its founding – Mr. Titov, himself a Defendant in this case, faces an obvious
incentive to minimize Hotfile’s original practices and place the date on which Hotfile abandoned
them as early as possible. When Titov testified that he was “not sure” when this practice stopped
and thought it was “maybe” around August 2009, Plaintiffs should be entitled to test that
imperfect and possibly self-serving recollection against real evidence.
Second, the unsworn and carefully-worded representations by Hotfile in its Opposition
brief – which make assertions about what the requested source code would and would not show –
raise more questions than they answer. Defendants claim that “a search was conducted”
regarding Hotfile’s source code, but do not say whether Hotfile’s counsel reviewed the code or
3
simply relied upon representations from Titov himself to determine what the code shows or does
not show (Opp. at 3). They claim that Hotfile’s source code “does not have the specific date
information that Plaintiffs seek” (Opp. at 1; see also id. at 3) (emphasis added) and “would not
provide any greater specificity” than Titov’s testimony (Opp. at 3), and that Hotfile does not
maintain source code revisions, see Opp. Ex. A at 4, but stop short of representing that there is
no useful information at all in Hotfile’s source code about Hotfile’s past deletion and blocking
practices or Hotfile’s changes to them, such as annotations or legacy portions of the code that
have been rendered inoperative by being “commented out.”1 Again, on an issue of such
importance, deliberate and carefully-worded claims in a legal brief are not an adequate substitute
for evidence.
C.
Defendants’ “Trade Secret” Claims Are Overstated And Lack Evidentiary Support.
For the reasons stated supra, the narrow source code sought is necessary to Plaintiffs’
claims, satisfying any heightened standard required for obtaining this discovery. However,
Defendants overreach when they suggest that the narrow source code sought here – “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,” see Motion, ECF No. 200 at 4 n.1.–
constitutes a “trade secret” deserving of heightened protection.
Again, Plaintiffs are not seeking the entirety of Hotfile’s source code, nor even of
competitively sensitive functions – only the source code showing how Hotfile implements the
disabling of files and/or URLs in response to notifications of infringement. It is hard to see how
this narrow function – which relates to legal compliance rather than to business operations –
could be valuable to Hotfile’s competitors. Indeed, while Defendants assert that “Hotfile’s
competitive position could be harmed if [the] source code were disclosed to its competitors as
well as other companies,” Opp. at 7, they support that assertion only by citing to inapposite
testimony from Titov in which he claimed that competitive harm could occur to Hotfile as a
result of the disclosure of all of Hotfile’s source code to competitors. Opp. at 7 (citing ECF 8117 at ¶¶ 8-9). Nothing in that testimony supports Hotfile’s assertion that the specific and narrow
1
See Proposed Order, ECF No. 200-2 at 1 (requesting any “including in-file programmer
comments,” the existence of which Hotfile does not deny).
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portion of its source code for taking down infringing files derives economic value from being
unknown to Hotfile’s competitors.
D.
Plaintiffs Conferred With Defendants Prior To Seeking Relief From The Court.
Finally, Defendants do not represent accurately the negotiation history in their
representation to the Court that “[t]he only discussion related to the substance of this motion
consisted of a request made on the record by plaintiffs’ counsel on December 7, 2011.” Opp. at
1.2 Contrary to Defendants’ accusations, this issue was negotiated and an impasse was reached.
After Titov’s initial deposition and the exchange of initial expert reports in this case,
Plaintiffs specifically sought from Defendants in writing the specific and narrow source code
sought here, specifically “source code related to the blocking or removal of files.” See Ex. A.
After back-and-forth discussions over several days, Defendants counsel represented – again in
writing – that Hotfile’s position was that Plaintiffs’ request for this exact source code was
“substantively … improper” and that “we are not going to accede to plaintiffs[’] demand for
source code.” Id. Plaintiffs’ counsel also notified Defendants – the Tuesday before the Friday
on which this motion was filed – of their intention to file it by the end of the discovery period;
indeed the parties even negotiated extensively about the briefing schedule in the several days
leading up to the filing of this motion. See Ex. B. At no point during any of these discussions
regarding this motion and its subject matter did Defendants ever represent that the requested
source code did not exist (and they still do not), much less ever express the position that
additional negotiations would be useful or that Defendants were open to changing their position.
CONCLUSION
For the reasons stated, Plaintiffs respectfully request that their renewed Motion to
Compel the production of Hotfile’s source code related to the blocking or removal of files be
grated.
2
The transcript attached to Defendants’ Opposition relates to a separate issue that arose at
Titov’s deposition: Defendants’ failure to prepare their 30(b)(6) witness on a duly noticed
deposition topic, not the production of the source code itself, on which the parties had already
reached an impasse. Plaintiffs’ request at the deposition was rather to “have Mr. Titov prepare to
look at [the source code] and see if that can refresh his memory” because of Titov’s inability to
testify on the topic as noticed. Opp. Ex. A at 5.
5
DATED: January 10, 2011
By: /s/ Karen L. Stetson
Karen L. Stetson
GRAY-ROBINSON, P.A.
1221 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: (305) 461-6880
Facsimile: (305) 461-6887
MOTION PICTURE ASSOCIATION
OF AMERICA, INC.
Karen R. Thorland (Pro Hac Vice)
15301 Ventura Blvd.
Building E
Sherman Oaks, CA 91403
Phone: (818) 995-6600
Fax: (818) 285-4403
JENNER & BLOCK LLP
Steven B. Fabrizio (Pro Hac Vice)
Duane C. Pozza (Pro Hac Vice)
Luke C. Platzer (Pro Hac Vice)
1099 New York Ave., N.W.
Suite 900
Washington, DC 20001
Telephone: (202) 639-6000
Facsimile: (202) 639-6066
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 10th day of January, 2012, I served the following document on all
counsel of record on the attached service list via the Court’s ECF System:
Plaintiffs’ Reply 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
1
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
tschoenberg@fbm.com
Roderick M. Thompson
rthompson@fbm.com
N. Andrew Leibnitz
aleibnitz@fbm.com
Deepak Gupta
dgupta@fbm.com
Janel Thamkul
jthamkul@fbm.com
235 Montgomery Street
San Francisco, CA 94104
Phone: 415-954-4400
RASCO KLOCK
Janet T. Munn
jmunn@rascoklock.com
283 Catalonia Ave., Suite 200
Coral Gables, FL 33134
Phone: 305-476-7101
Fax: 305-476-7102
Attorney for Defendants Hotfile Corp. and
Anton Titov
Attorneys for Defendants Hotfile Corp. and
Anton Titov
BOSTON LAW GROUP, PC
Valentin Gurvits
vgurvits@bostonlawgroup.com
825 Beacon Street, Suite 20
Newton Centre, MA 02459
Phone: 617-928-1804
Attorneys for Defendants Hotfile Corp. and
Anton Titov
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