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

Filing 91

REDACTION MOTION Plaintiffs' and the MPAA's Motion to Authorize Use of Categorical Privilege Logs and Memorandum of Law in Support (Public Redacted Version) by Columbia Pictures Industries, Inc., Disney Enterprises, Inc., Twentieth Century Fox Film Corporation, Universal City Studios Productions LLLP, Warner Bros. Entertainment Inc. (Attachments: # 1 Text of Proposed Order [Proposed] Order Granting Plaintiffs' and the MPAA's Motion to Authorize Use of Categorical Privilege Logs)(Stetson, Karen) Modified to convert document to a motion on 7/7/2011 (lh).

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO. 11-20427-JORDAN

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.
/

PLAINTIFFS’ AND THE MPAA’S MOTION TO AUTHORIZE USE OF
CATEGORICAL PRIVILEGE LOGS AND MEMORANDUM OF LAW IN
SUPPORT

PUBLIC REDACTED VERSION

Plaintiffs Disney Enterprises, Inc., Twentieth Century Fox Film Corporation,
Universal City Studio Productions LLLP, Columbia Pictures Industries, Inc., and Warner
Bros. Entertainment, Inc. (“Plaintiffs”), and nonparty the Motion Picture Association of
America, Inc. (“MPAA”), hereby submit this Motion to Authorize Use of Categorical
Privilege Logs and Memorandum of Law in support.
INTRODUCTION
Plaintiffs and the MPAA estimate that there are more than five thousand
documents reflecting attorney work product that are called for by Defendants’ document
requests. Such documents are voluminous in this case because (1) Plaintiffs and outside
litigation counsel engaged in substantial pre-filing analysis and investigation into Hotfile
[----------------------------------------------------------------] before this litigation was
commenced; and (2) nearly all of the custodians of documents concerning Hotfile in
Plaintiffs’ possession are attorneys (e.g., in-house lawyers, in-house litigation counsel at
the MPAA, and outside litigation counsel) or antipiracy employees and vendors acting at
the direction of those attorneys. It would be both burdensome and unnecessary to insist
that Plaintiffs and the MPAA serve a document-by-document privilege log itemizing
each and every privileged document and communication responsive to Defendants’
requests.
In such instances, the Federal Rules authorize a producing party to serve a
categorical privilege log rather than a document-by-document privilege log. Under Rule
26(b)(5)(A), a party withholding documents on the basis of privilege or work product
protection satisfies its obligations under the Federal Rules by “describ[ing] the nature of
the documents, communications, or tangible things not produced or disclosed.” See Fed.
R. Civ. P. 26(b)(5)(A)(ii). The purpose of this disclosure is to provide the other party
with information adequate to determine whether to test the privilege. Courts have
routinely construed this provision to authorize the production of categorical privilege logs
where the privileged documents are voluminous and an itemized log would be
unnecessarily burdensome, and Plaintiffs and the MPAA respectfully request that this
Court do so here.1
1

Plaintiffs offered to bilaterally exchange privilege logs in categorical format, but
Defendants declined Plaintiffs’ offer. See Declaration of Luke C. Platzer in Support of
1

ARGUMENT
I.

RULE 26 PERMITS DESCRIBING WITHHELD DOCUMENTS BY
CATEGORY.
The requirement in Federal Rule of Civil Procedure 26(b)(5)(A) that a party

withholding documents on the basis of attorney-client privilege or attorney work product
“describe the nature of the documents, communications, or tangible things not produced
or disclosed” with information sufficient to “enable other parties to assess the claim” can
be satisfied by the use of a “categorical privilege log ….” Republic Servs., Inc. v. Am.
Int’l Specialty Lines Ins. Co., No. 07-21991-CIV, 2008 WL 4691836, at *3 (S.D. Fla.
Oct. 21, 2008) (authorizing use of a categorical privilege log where number of privileged
documents is substantial). The Advisory Committee Notes to Rule 26 expressly provide
for categorical privilege logs, stating that “[Rule 26] does not attempt to define for each
case what information must be provided when a party asserts a claim of privilege or work
product protection,” and that “[d]etails concerning time, persons, general subject matter,
etc., may be appropriate if only a few items are withheld, but may be unduly burdensome
when voluminous documents are claimed to be privileged or protected, particularly if the
items can be described by categories.” Fed. R. Civ. P. 26 advisory committee’s Note on
1993 Amendments (emphasis added).
Courts, including in this District, have routinely allowed parties to serve
categorical privilege logs where document-by-document itemization would be
unnecessarily cumbersome. See, e.g., Republic Services, 2008 WL 4691836, at *3
(approving use of categorical log where there were “over 2,500 documents for which
Plaintiff claims privilege”); Orbit One Commc’ns, Inc. v. Numerex Corp., 255 F.R.D. 98,
109 (S.D.N.Y. 2008) (“To lessen the burden posed by reviewing and recording a large
quantity of protected communications, [the respondent] may provide a categorical
privilege log rather than a traditional, itemized privilege log”); In re Imperial Corp. of
Am., 174 F.R.D. 475, 478-79 (S.D. Cal. 1997) (“[M]ost of the documents sought. . .were
created during the course of this and related litigation, or before the initiation of this
litigation when the subpoenaed firms were representing plaintiffs in anticipation of this

Plaintiffs’ and the MPAA’s Motion to Authorize Use of Categorical Privilege Logs,
dated July 6, 2011 (“Platzer Decl.”), ¶¶ 6-10.

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and related litigation. . .To force the creation of a document-by-document privilege log
of documents of that magnitude is unreasonable and overly burdensome.”) (emphasis
added); see also In re Rivastigmine Patent Litig., 237 F.R.D. 69, 87 (S.D.N.Y. 2006). 2
II.

THE COURT SHOULD PERMIT PLAINTIFFS TO SERVE A
CATEGORICAL PRIVILEGE LOG IN THIS ACTION.
Plaintiffs and the MPAA are in possession of a substantial volume of privileged

documents and attorney work product due to Plaintiffs’ investigation of Hotfile. This
investigation was conducted by Plaintiffs and their current outside litigation counsel and
coordinated by the MPAA. See Platzer Decl. ¶ 3. Counsel was retained for the purpose
of investigating defendants’ conduct, evaluating potential claims, and ultimately filing
this action. Counsel’s work included litigation analysis, consultations with technical and
statistical experts, research and investigation to identify publicly available evidence, and
ongoing communications with counsel at Plaintiffs and at the MPAA. See Platzer Decl.
¶¶ 4-5. These are the very types of documents that, if generated after the commencement
of litigation, would not have to be logged at all pursuant to this Court’s local rules. See
Southern District of Florida Local Rule 26.1(g)(3)(C). Thus, the Court should hold that
Plaintiffs are only need to describe such pre-litigation documents by category in their
privilege log. See In re Imperial Corp. of Am. 174 F.R.D. 475, 478-79 (authorizing use
of categorical privilege logs where most of the documents were created during the course
of litigation or “before the initiation of this litigation”).
Moreover, each of the Plaintiff studios, on an ongoing basis, independently
investigates online infringement of its copyrighted works for the purpose of identifying
and responding to infringement and identifying infringers for potential enforcement
action. This too generates numerous communications between in-house counsel, internal
2

Similarly, this Court’s Local Rules exempts wholesale from the privilege logging
obligation any documents “created after commencement of the action[.]” See Southern
District of Florida Local Rule 26.1(g)(3)(C). This rule recognizes that there are categories
of communications (such as attorney-client communications and attorney work product
subsequent to the filing of a complaint) for which the burden of creating itemized logs
outweighs any marginal benefit such itemization may have in assessing claims of
attorney-client privilege or work product protection. The same principle should be no
less true in case such as this one, where comparable and voluminous pre-complaint work
product, attorney correspondence, and legal analysis specifically pertaining to this lawsuit
were created before the Complaint was filed.

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antipiracy personnel acting at their direction, antipiracy vendors retained by counsel to
assist with such investigations, and, periodically, attorneys at the MPAA and outside
litigation counsel. Each of the Plaintiffs therefore possesses numerous additional
documents responsive to Defendants’ broad document requests that are protected from
disclosure by the attorney-client privilege and/or the attorney work product doctrine. See
Platzer Decl. ¶ 4.
Finally, the number of privileged documents is substantial, in part, because some
of Defendants’ document requests expressly seek information about Plaintiffs’ precomplaint investigations, which thereby guarantees that virtually all privileged
documents and attorney work product created as part of that process will be in some way
responsive. For instance, Defendants have requested, inter alia, that Plaintiffs produce:
All DOCUMENTS and COMMUNICATIONS that REFER or RELATE to
YOUR investigations (or by any of YOUR other agents in any context, including
but not limited to anyone acting on YOUR behalf on anti-piracy matters) of
HOTFILE, including all DOCUMENTS that REFER or RELATE to YOUR
strategies, tactics, techniques, procedures, processes, methods, and operations
used in such investigations, as well as any DOCUMENTS related to any files
removed from HOTFILE as a result of such investigations, including the removed
files themselves.
Platzer Decl. Ex. A at Request for Production No. 38.
III.

PLAINTIFFS’ PROPOSED CATEGORICAL PRIVILEGE LOG WILL
FULLY ENABLE DEFENDANTS TO ASSESS PLAINTIFFS’ CLAIMS OF
PRIVILEGE AND WORK PRODUCT PROTECTION.
Plaintiffs have proposed to Defendants a categorical privilege log that would fully

comply with the requirements of Rule 26, and allow Defendants, if they so choose, to
challenge each claim of privilege or attorney work product protection that Plaintiffs or
the MPAA may assert. Plaintiffs’ proposed privilege log would consist of a number of
distinct categories. While Defendants may not agree that all such categories are entitled
to attorney client privilege or to attorney work product protection, the category
descriptions would supply Defendants with sufficient information to “enable [them] to
assess the claim” of privilege as required by Rule 26. Fed. R. Civ. P. 26(b)(5)(A). By
way of nonexhaustive example, Plaintiffs’ proposed privilege log could contain
categories such as the following:

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•

Communications between current outside litigation counsel and Plaintiffs’ inhouse counsel regarding Hotfile for the purpose of evaluating legal claims against
Defendants.

•

Communications between outside litigation counsel and in-house counsel at the
MPAA regarding Hotfile for the purpose of evaluating legal claims against
Defendants.

•

Communications among outside litigation counsel, in-house counsel at the
MPAA, and Plaintiffs’ in-house counsel regarding Hotfile for the purpose of
evaluating legal claims against Defendants.

•

Communications between outside litigation counsel and technical experts who
were retained to assist counsel in conducting a pre-complaint litigation analyses
of Hotfile for the purpose of evaluating legal claims against Defendants..

•

Communications between Plaintiffs’ in-house counsel and/or antipiracy
employees working at their direction and outside copyright enforcement vendors
retained by counsel to gather evidence of online copyright infringement and issue
to notifications of infringing activity to Hotfile, inter alia, for purposes of
identifying infringers for potential enforcement action.
Whatever challenges to Plaintiffs’ privilege assertions the Defendants may

ultimately wish to bring before the Court, it can be done without creating the unnecessary
burden of a document-by-document log containing thousands and thousands of privileged
documents.
CONCLUSION
For the reasons stated, Plaintiffs respectfully request that the Court enter an order
authorizing Plaintiffs to submit their privilege log in this action using categorical logging.

5

Dated: July 6, 2011

Respectfully submitted,
By: /s/ Luke C. Platzer
Luke C. Platzer

MOTION PICTURE ASSOCIATION
OF AMERICA, INC.
Karen R. Thorland (Pro Hac Vice)
15301 Ventura Blvd.
Building E
Sherman Oaks, CA 91403
Phone: [phone]
Fax: [phone]

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: [phone]
Facsimile: [phone]
Karen L. Stetson
GRAY-ROBINSON, P.A.
1221 Brickell Avenue
16th Floor
Miami, Fl 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiffs and the MPAA

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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 Plaintiffs have conferred with counsel for Defendants
Hotfile Corp. and Anton Titov in a good faith effort to resolve the issues raised in this Motion
without court action, but have been unable to do so, as described in my accompanying
declaration.

Dated: July 6, 2011

By: /s/ Luke C. Platzer
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
Phone: [phone]
Fax: [phone]

MOTION PICTURE
ASSOCIATION
OF AMERICA, INC.
Karen R. Thorland (Pro Hac Vice)
15301 Ventura Blvd.
Building E
Sherman Oaks, CA 91403

Karen L. Stetson
GRAY-ROBINSON, P.A.
Karen L. Stetson (FL Bar No.
742937)
1221 Brickell Avenue
Suite 1600
Miami, FL 33131
Phone: [phone]
Fax: [phone]

Attorneys for Plaintiffs and the MPAA

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on this 6th Day of July, 2011, I served the following
documents on all counsel of record on the attached service list via the Court’s CM/ECF filing
system:
Plaintiffs’ and the MPAA’s Motion to Authorize Use of Categorical Privilege Logs
and Memorandum of Law in Support
I further certify that I am admitted pro hac vice to the United States Court for the Southern
District of Florida and certify that this certificate of Service was executed on this date at
Washington, D.C.
By: /s/ Luke C. Platzer
Luke C. Platzer

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

RASCO KLOCK
Janet T. Munn
[e-mail]
283 Catalonia Ave., Suite 200
Coral Gables, FL 33134
Phone: [phone]
Fax: [phone]

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]

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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