Tiki Shark Art Incorporated v. Cafepress.com, Inc.

Filing 74

ORDER AFFIRMING MAGISTRATE JUDGE'S ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT CAFEPRESS INC.'S MOTION TO COMPEL PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 30(a)(2), 37(a), DOC. 48 re 48 , 55 - Signed by JUDGE J. MICHAEL S EABRIGHT on 8/12/2014. "Based on the foregoing, the court AFFIRMS Magistrate Judge Puglisi's June 30, 2014 Order Granting in Part and Denying in Part Defendant Cafepress Inc.'s Motion to Compel Pursuant to Federal Ru le of Civil Procedure 30(a)(2), 37(a), Doc. No. 48." (emt, )CERTIFICATE OF SERVICEParticipants registered to receive electronic notifications received this document electronically at the e-mail address listed on the Notice of Electronic Filing (NEF). Participants not registered to receive electronic notifications were served by first class mail on the date of this docket entry

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAII

TIKI SHARK ART INCORPORATED, )
)
Plaintiff,
)
)
vs.
)
)
CAFEPRESS INC.,
)
)
Defendant.
)
)
_______________________________ )

CIVIL NO. 13-00577 JMS-RLP
ORDER AFFIRMING
MAGISTRATE JUDGE’S ORDER
GRANTING IN PART AND
DENYING IN PART DEFENDANT
CAFEPRESS INC.’S MOTION TO
COMPEL PURSUANT TO
FEDERAL RULE OF CIVIL
PROCEDURE 30(a)(2), 37(a), DOC.
NO. 48

ORDER AFFIRMING MAGISTRATE JUDGE’S ORDER GRANTING
IN PART AND DENYING IN PART DEFENDANT CAFEPRESS INC.’S
MOTION TO COMPEL PURSUANT TO FEDERAL RULE OF CIVIL
PROCEDURE 30(a)(2), 37(a), DOC. NO. 481
I. INTRODUCTION
Plaintiff Tiki Shark Art Incorporated (“Plaintiff”) appeals Magistrate
Judge Richard L. Puglisi’s June 30, 2014 Order Granting in Part and Denying in
Part Defendant CafePress, Inc.’s (“Defendant”) Motion to Compel Pursuant to
Federal Rule of Civil Procedure (“FRCP”) 30(a)(2), 37(a) (the “June 30, 2014
Order”). Plaintiff argues that the June 30, 2014 Order is clearly erroneous because:
(1) it did not require Defendant to meet and confer regarding each of the deposition

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The title of this Order corrects a minor typographical error in the title of the Magistrate
Judge’s Order as to the specific subsection of Rule 30 applicable to the Motion to Compel.

issues; (2) it granted relief that Defendant did not specifically request; and (3) it
enforced a subpoena that was not personally served and for which witness fees and
mileage were not tendered. Based on the following, the court AFFIRMS the June
30, 2014 Order.
II. BACKGROUND
Plaintiff asserts claims of copyright infringement in violation of 17
U.S.C. § 501, and removal of copyright management information in violation of 17
U.S.C. § 1202(b).2 Doc. No. 29, First Amended Complaint (“FAC”). As alleged
in the FAC, Plaintiff “owns valid copyrights” of an original painting titled
“Forbidden Island” (the “Work”) created by Brad “Tiki Shark” Parker. Id. ¶¶ 4651. Defendant allegedly operates a website through which it sells products such as
“towels, flip-flops, bags, mugs, t-shirts and hats” that are printed with designs
uploaded to its website. Id. ¶¶ 55-57, 70, 76. The FAC alleges that Defendant
displayed, reproduced, and sold the Work on products through its website without
Plaintiff’s authorization and removed copyright management information from the
Work. Id. ¶¶ 93-108, 122-23. The FAC further alleges that Plaintiff suffered
damages after TIKI STYLE ME - JLT, an Emirati company, placed a large order

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By stipulation, filed April 25, 2014, Plaintiff dismissed with prejudice claims asserted
pursuant to the Lanham Act and for unjust enrichment. Doc. No. 34.
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worth $257,728.00 for beach towels featuring the Work, but then cancelled that
order after discovering that the Work was being used on mass-market products
through Defendant’s website. Id. ¶¶ 113-116.
In the course of discovery, Defendant noticed an FRCP 30(b)(6)
(“Rule 30(b)(6)”) deposition, for which Plaintiff designated “Brad Parker and/or
Abbas Hassan” to testify. Doc. No. 35-9, Def.’s Ex. “O” at 345-352. Although
Hassan is Plaintiff’s Vice President, see Doc. No. 35-11, Def.’s Ex. “NN” ¶ 3,
Defendant also issued a subpoena, pursuant to FRCP 45 (“Rule 45"), to Hassan to
be deposed individually and to produce documents. Doc. No. 35-7, Def.’s Ex. “C.”
Defendant served the subpoena on Plaintiff’s counsel after being unable to effect
personal service, and with the understanding that Plaintiff’s counsel accepted
service on behalf of Hassan. See Doc. No. 47-3, Chang Suppl. Decl.
¶ 13.3

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Counsel for Defendant explains that personal service could not be effected because the
address Plaintiff provided for Hassan was c/o Plaintiff’s counsel at a P.O. box, and the address
for Plaintiff’s business was a UPS Store. Doc. No. 47-3, Chang Suppl. Decl. ¶ 13. Counsel for
both parties engaged in extensive discussions regarding the scheduling of depositions during
which counsel for Defendant “specifically asked whether [Plaintiff’s counsel] would require
[Defendant to] personally serve [Plaintiff’s counsel] with the subpoenas on Abbas Hassan or if
he could simply stipulate that the subpoenas have been deemed served on counsel.” Id.
Plaintiff’s counsel never responded regarding service, but subsequently confirmed the date of
Hassan’s deposition indicating that counsel would produce Hassan for that deposition. Id.
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Defendant contends that Plaintiff, Parker, and Hassan have not fully
complied with discovery requests. More specifically, Defendant contends that
depositions of Parker and Hassan, both individually and as Plaintiff’s designated
Rule 30(b)(6) witnesses, were incomplete due to (1) Plaintiff’s and Hassan’s
failure to produce requested documents prior to the depositions; (2) the witnesses’
lack of knowledge about topics for which they were designated Rule 30(b)(6)
witnesses, disruptive conduct, and refusal to answer or evasive answers to
numerous questions; and (3) early termination of Hassan’s deposition after a letter
was hand-delivered threatening harm to Defendant’s counsel and his family.
On May 23, 2014, Defendant filed a Motion to Compel seeking
further (1) depositions of Parker and Hassan, individually and in their capacities as
Plaintiff’s designated Rule 30(b)(6) witnesses; and (2) responses and the
production of documents by Plaintiff, Parker, and Hassan. Defendant sought an
order (1) setting forth rules of decorum for the depositions; (2) requiring each
witness to be prepared to “testify on all Rule 30(b)(6) topics noticed by
[Defendant];” (3) requiring Plaintiff to cover the cost of security to protect
Defendant’s counsel; and (4) compelling Plaintiff and Hassan (individually) to
produce documents responsive to Defendant’s First Set of Requests for Production
Nos. 4, 17-18, 21-22, 24-27, 31-32, and 41.
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The June 30, 2014 Order granted most of the requested relief in great
detail, including, but not limited to, (1) requiring each party to bear its own costs to
attend further depositions,4 and specifying the location, amount of additional time,
manner in which Plaintiff must designate Rule 30(b)(6) witnesses for each topic,
and rules of decorum for those depositions, Doc. No. 48 at 4-7, 16; and
(2) setting deadlines for the production of documents and/or written responses by
Plaintiff and Hassan, id. at 16.
On July 14, 2014, Plaintiff filed an Objection to the June 30, 2014
Order. Doc. No. 55. Defendant filed its Response on July 28, 2014. Doc. No. 61.
Pursuant to Local Rules (“LR”) 7.2(d) and 74.1, the court finds this matter suitable
for disposition without a hearing.
III. STANDARD OF REVIEW
Pursuant to 28 U.S.C. § 636(b)(1), FRCP 72(a), and LR 74.1, any
party may appeal to the district court any pretrial nondispositive matter determined
by a magistrate judge. Such an order may be reversed by the district court judge
only when it is “clearly erroneous or contrary to law.” 28 U.S.C. § 636(b)(1)(A);
LR 74.1.

4

The June 30, 2014 Order denied Defendant’s request to require Plaintiff to pay for the
cost of security personnel at the depositions. Doc. No. 48 at 7.
5

The threshold of the “clearly erroneous” test is high and significantly
deferential. “A finding is ‘clearly erroneous’ when although there is evidence to
support it, the reviewing court on the entire evidence is left with the definite and
firm conviction that a mistake has been committed.” United States v. U.S. Gypsum
Co., 333 U.S. 364, 395 (1948); Matthews v. Chevron Corp., 362 F.3d 1172, 1180
(9th Cir. 2004); Boskoff v. Yano, 217 F. Supp. 2d 1077, 1083 (D. Haw. 2001);
Thorp v. Kepoo, 100 F. Supp. 2d 1258, 1260 (D. Haw. 2000).
IV. DISCUSSION
Plaintiff argues that the June 30, 2014 Order is clearly erroneous and
is contrary to law by: (1) not requiring the parties to meet and confer as to each
deposition issue raised in the Motion to Compel as required by LR 37.1;
(2) granting relief that Defendant did not request, namely additional time to depose
Parker and Hassan, and requiring Plaintiff to notify Defendant in writing whether
Parker or Hassan, or both, are designated to testify on five specific Rule 30(b)(6)
topics; and (3) enforcing a subpoena on Hassan to be deposed in his individual
capacity that was not personally served and for which no witness fees were paid in
violation of FRCP 45. Plaintiff is mistaken.
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///
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A.

No Further Meet and Confer Was Required
LR 37.1 requires that prior to filing a discovery motion, moving

counsel must meet and confer with opposing counsel “concerning all disputed
issues, in a good faith effort to limit the disputed issues and, if possible, eliminate
the necessity for a motion[.]” However, where requiring the parties to meet and
confer would be futile, or depending upon the particular circumstances of a case,
courts may address a motion’s merits despite a party’s failure to comply with a
meet-and-confer requirement. See Pickett v. Nev. Bd. of Parole Com’rs, 2012 WL
1376969, at *3 (D. Nev. Apr. 19, 2012) (noting that although required by local
rule, “courts have held that ‘special circumstances’ or a responding parties’
complete failure to respond can obviate a requesting parties’ need to meet and
confer” and citing cases); see also Feldman v. Pokertek, Inc., 2011 WL 4543990,
at *2 (D. Nev. Nov. 30, 2010) (addressing merits of motion to compel despite
plaintiff’s failure to meet and confer and noting defendant’s utter failure to produce
requested documents); cf. Yue v. Storage Tech. Corp., 2008 WL 4185835, at *7
(N.D. Cal. Sept. 5, 2008) (declining to strike motion for attorney fees despite
failure to meet and confer as required by local rules after finding that ordering the
parties to meet and confer would be futile); Thomas v. Baca, 231 F.R.D. 397, 404
(C.D. Cal. 2005) (explaining that failure to meet and confer, as required by local
7

rule, was not a sufficient reason to deny class certification motion because informal
resolution of motion was not possible).
In this case, the record shows that Defendant corresponded with
Plaintiff’s counsel numerous times in an effort to resolve disputes regarding
production of documents prior to the scheduled depositions. See Doc. No. 35-6,
Chang Decl. ¶¶ 3-4, 6-11, 13-20, 22-24, 26. In the course of that correspondence,
Defendant explicitly advised Plaintiff four times that should it fail to produce the
requested documents, Defendant would move to reopen the depositions at
Plaintiff’s cost. Id. ¶¶ 14, 16, 22, 26.
As explained in the June 30, 2014 Order, these efforts satisfied the LR
37.1 meet and confer requirement in part, and also supported the conclusion that
further efforts would be futile toward resolving remaining production of document
and deposition disputes:
Although it does not appear that the parties met and
conferred regarding the details of a second round of
depositions, the parties did meet and confer prior to the
initial depositions regarding Defendant’s position that the
depositions would need to be re-opened based on
Plaintiff’s failure to provide certain documents before the
depositions. See ECF No. 35-6 at 7, Decl. of Lori Chang
¶¶ 16, 22-24. To avoid unnecessary re-briefing on this
issue and because it does not appear from the record that
a meet and confer would limit the disputed issues, the
Court will address Defendant’s request for a second
round of depositions.
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Doc. No. 48, June 30, 2014 Order at 4 (emphases added). Magistrate Judge
Puglisi correctly reviewed the record and addressed the merits of the Motion to
Compel only after finding that another meet and confer would be futile. See
Pickett, 2012 WL 1376969, at *3; Feldman, 2011 WL 4543990, at *2; Yue, 2008
WL 4185835, at *7; Thomas, 231 F.R.D. at 404. Accordingly, Magistrate Judge
Puglisi’s decision to address the merits of Defendant’s Motion to Compel without
requiring the parties to engage in an additional meet and confer was not clearly
erroneous or contrary to law.
B.

Additional Deposition Time and Rule 30(b)(6) Designation by Topic
“District courts have ‘broad discretion to manage discovery and to

control the course of litigation under Federal Rule of Civil Procedure 16.’” Hunt v.
Cnty. of Orange, 672 F.3d 606, 616 (9th Cir. 2012) (quoting Avila v. Willits Envtl.
Remediation Trust, 633 F.3d 828, 833 (9th Cir. 2011)); see also Little v. City of
Seattle, 863 F.2d, 681, 685 (9th Cir. 1988) (“The district court has wide discretion
in controlling discovery, and its rulings will not be overturned in the absence of a
clear abuse of discretion.”). This discretion extends to fashioning discovery orders
that may expand, limit, or differ from the relief requested. See Crawford-El v.
Britton, 523 U.S. 574, 598 (1998) (“On its own motion, the trial court may alter the
limits in the Federal Rules on the number of depositions . . . and may also [alter]
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the length of depositions under Rule 30[.]”); see also Bishop v. Potter, 2010 WL
2771763, at *1 (D. Nev. June 4, 2010) (granting additional time to depose plaintiff
despite defendant’s request for dismissal or an order precluding plaintiff from
testifying); UMG Recordings, Inc. v. Doe, 2008 WL 2949427, at *3 (N.D. Cal. Jul.
30, 2008) (“[T]he district courts wield broad discretion” “in fashioning discovery
orders[.]”) (citing cases).
Defendant sought to reopen depositions of Parker and Hassan
individually and as Rule 30(b)(6) witnesses, and supported that request with
allegations concerning (1) the witnesses’ lack of knowledge as to certain Rule
30(b)(6) topics for which they were designated; and (2) the witnesses’ conduct and
events that precluded Defendant from effectively using the scheduled deposition
time. Doc. No. 35-1, Def.’s Mot. at 13-16 (detailing allegations and citing written
transcripts and video excerpts of the depositions).
Magistrate Judge Puglisi correctly reviewed the record and, in light of
both Defendant’s specific requests for relief and issues that arose during the prior
depositions, fashioned discovery rulings calculated to fully resolve the underlying
disputes. See Crawford-El, 523 U.S. at 598 (observing that the court may alter
limits in discovery rules sua sponte); Bishop, 2010 WL 2771763, at *1 (ordering
relief not specifically requested); UMG Recordings, Inc. v. Doe, 2008 WL
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2949427, at *3 (N.D. Cal. Jul. 30, 2008) (noting that the court has “broad
discretion” to “fashion[] discovery orders”). These rulings are well within the
court’s discretion -- granting Defendant additional time to depose both witnesses
and requiring Plaintiff to designate in writing which witness(es) would testify on
five specific Rule 30(b)(6) topics was not clearly erroneous or contrary to law.
C.

Neither Personal Service of Subpoena nor Fees to Hassan Was Required
Personal service of a subpoena is generally required to compel the

testimony or documents from a non-party witness who is not controlled by a party
to the action. See Newell v. Cnty. of San Diego, 2013 WL 4774767, at *2 (S.D.
Cal. Sept. 5, 2013) (citing FRCP 45 and compiling cases). But service of a Rule 45
subpoena may also be accomplished where counsel accepts service on behalf of a
non-party witness. See e.g., Casida v. Sears Holding Corp., 2012 WL 3260423, at
*3 (E.D. Cal. Aug. 8, 2012) (noting that plaintiff’s counsel agreed to accept service
of deposition subpoena on third party witness’ behalf); cf. Ghiorzi v. Whitewater
Pools & Spas, Inc., 2011 WL 5101947, at *3 (D. Nev. Oct. 26, 2011) (denying
imposition of sanctions where despite being unable to effect personal service on
non-party witness, counsel failed to inquire whether opposing counsel would
accept service of a deposition subpoena on the witness’ behalf). And where
counsel fails to respond to a direct request whether a deposition subpoena is
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required or would be accepted on behalf of a non-party witness, but continues to
communicate regarding the scheduling of such deposition, such silence is
construed in favor of the requesting party. See, e.g., In re Keystone Foods, Inc.,
134 B.R. 828, 830 (W.D. Pa. 1991) (“It was unnecessary for Defense counsel to
issue a subpoena in view of his direct request. He should have assumed, and did,
that the witness was under Plaintiff-counsel’s control.”).
Furthermore, a witness may be deposed in both his individual and
corporate capacities. See Landmark Screens, LLC v. Morgan, Lewis & Brokius
LLP, 2010 WL 3221859, at *2 (N.D. Cal. Aug. 13, 2010); see also Fresenius Med.
Care Holdings, Inc. v. Roxane Labs., Inc., 2007 WL 1026439, at *1 (S.D. Ohio
Mar. 30, 2007) (commenting that it would have been practically expedient to
depose the same witness in both his individual and Rule 30(b)(6) capacities
simultaneously). And a “Rule 30(b)(6) . . . deponent[] is required to appear for a
properly noticed deposition.” Bishop, 2010 WL 2771763, at *1 (citing Anderson v.
Air W., Inc., 542 F.2d 1090, 1093 (9th Cir. 1976) and other cases); see also Cadent
Ltd. v. 3M Unitek Corp., 232 F.R.D. 625, 627-28 n.1 (C.D. Cal. 2005) (“It is well
recognized that if the corporation is a party, the notice compels it to produce any
officer, director or managing agent named in the deposition notice. It is not
necessary to subpoena such individual.”). A Rule 30(b)(6) deposition notice is
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properly served on the organization. Fadem v. Am. States Preferred Ins. Co., 2014
WL 202176, at *3 (D. Nev. Jan. 16, 2014) (“[N]otice [of a Rule 30(b)(6)
deposition] should be served upon the organization, not the individual.”).
Applying these principles to the instant action, the court concludes that neither
personal service of a Rule 45 subpoena nor witness fees for Hassan was required.
The July 30, 2014 Order compels Hassan to appear for a second
deposition individually and as Plaintiff’s Rule 30(b)(6) designee, and “to produce
the five categories of documents identified in the Amended Notice of Deposition”
dated April 4, 2014. Doc. No. 48, June 30, 2014 Order at 7-8. In so ruling,
Magistrate Judge Puglisi rejected Plaintiff’s argument that Hassan need not
“produce any documents because he was not properly served with [a] subpoena”:
The Court rejects Plaintiff’s argument because Plaintiff’s
counsel stated that they represented Mr. Hassan in this
litigation and did not inform Defendant’s counsel that
formal service of the subpoena on Mr. Hassan was
required.
Id. at 8.
The parties do not dispute that notice of the deposition of Hassan as a
Rule 30(b)(6) witness was properly served. Rather, Plaintiff contends that in
accordance with Rule 45, Defendant may not depose Hassan in his individual
capacity “in Honolulu (as opposed to Kona),” absent personal service of a
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subpoena and without tendering “witness fees for deposition and travel, air fare,
meals and hotel.” Doc. No. 55, Pls.’ Obj. at 14.
However, Plaintiff provides no authority to refute Magistrate Judge
Puglisi’s finding that because Hassan was represented by Plaintiff’s counsel,
personal service was not required. And this is particularly true in light of counsel’s
failure to respond to Defendant’s inquiry regarding the need for such service. See
Newell, 2013 WL 4774767, at *2 (explaining that Rule 45 subpoena is required
only where non-party witness is not controlled by a party); In re Keystone Foods,
Inc., 134 B.R. at 830 (“It was unnecessary for Defense counsel to issue a subpoena
in view of his direct request. He should have assumed, and did, that the witness
was under Plaintiff-counsel’s control.”). Furthermore, Plaintiff failed to provide
any authority to support a finding that where a corporation is compelled to produce
a Rule 30(b)(6) witness for deposition, the corporation is then entitled to recover
the witness’ travel costs merely because that witness is deposed in both his
individual and corporate capacities during the same deposition. Accordingly, the
June 30, 2014 Order is not clearly erroneous or contrary to law by compelling
Hassan to appear for a second deposition and produce the requested documents.
///
///
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V. CONCLUSION
Based on the foregoing, the court AFFIRMS Magistrate Judge
Puglisi’s June 30, 2014 Order Granting in Part and Denying in Part Defendant
Cafepress Inc.’s Motion to Compel Pursuant to Federal Rule of Civil Procedure
30(a)(2), 37(a), Doc. No. 48.
IT IS SO ORDERED.
DATED: Honolulu, Hawaii, August 12, 2014.

/s/ J. Michael Seabright
J. Michael Seabright
United States District Judge

Tiki Shark Art Incorporated v. CafePress, Inc., Civ. No. 13-00577 JMS-RLP, Order Affirming
Magistrate Judge’s Order Granting in Part and Denying in Part Defendant Cafepress Inc.’s
Motion to Compel Pursuant to Federal Rule of Civil Procedure 30(a)(2), 37(a), Doc. No. 48

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