John Wiley & Sons, Ltd. et al
Filing
203
MEMORANDUM Opinion and Order Signed by the Honorable Arlander Keys on 9/16/2013:(ac, )
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
JOHN WILEY & SONS, LTD., AND )
AMERICAN INSTITUTE OF PHYSICS,)
)
Plaintiffs,
)
)
vs.
)
MCDONNELL BOEHNEN HULBERT
)
& BERGHOFF LLP, AND JOHN DOE )
NOS. 1-10,
)
Defendants,
)
)
and
)
THE UNITED STATES PATENT AND )
TRADEMARK OFFICE,
)
)
)
Intervening Defendant
)
and Counterclaim Plaintiff.
)
No. 12 C 1446
)
Judge Charles R. Norgle, Sr.
Magistrate Judge Arlander Keys
)
MEMORANDUM OPINION AND ORDER
Defendants, McDonnell Boehnen Hulbert & Berghoff LLP
("MBHB"), move pursuant to Fed. R. Civ. P. 37(a) to compel
Plaintiffs, John Wiley & Sons, Ltd. (“Wiley”), and American
Institute of Physics (“AIP”) (collectively, “Plaintiffs”), to
produce documents that sufficiently respond to Requests for
Production Nos. 75 and 76, and to fully respond to Interrogatory
No. 17.
For the reasons set forth below, Defendant’s motion to
compel RFP Nos. 75 and 76 is granted, but is denied as to Inter.
No. 17.
Background
This is a copyright infringement action.
On October 17,
2012, Plaintiffs commenced this action asserting that Defendants
violated their copyrights in two scientific journal articles11 by
submitting them without authorization to the United States Patent
and Trademark Office (“PTO”).
Defendants’ practice includes both
prosecuting patents before the PTO, as well as counseling clients
regarding a wide range of issues, such as assessing the validity
of patents and lawfully avoiding patent infringement.
Defendants’ main defense is fair use.
Plaintiffs timely
amended their claims, withdrawing the allegations relating solely
to Defendants’ unauthorized submission of their copyrighted work
to the PTO. (Am. Compl., at ¶ 1.)
Instead, Plaintiffs now make
a broader claim, which is that MBHB has illegally made use of
their copyrighted articles in association with Defendants’ legal
practice as a whole, such as its practice of counseling and
litigation, “by making internal copies of those articles in
connection with McDonnell’s for-profit patent practice...The
internal copying has occurred...throughout McDonnell’s patent law
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Plaintiff John Wiley & Sons, Ltd. has accused MBHB of
infringing Raznikov, V., et al., “A new approach to data
reduction and evaluation in high-resolution time-of-flight mass
spectrometry using a time-to-digital convertor data-recording
system,” Rapid Communications in Mass Spectrometry, vol. 15, No.
8, pp. 570–78 (2001) (the “Raznikov Article”). Plaintiff American
Institute of Physics has accused MBHB of infringing Erchak, A.,
et al., “Enhanced coupling to vertical radiation using a twodimensional photonic crystal in a semiconductor light-emitting
diode,” Applied Physics Letters, vol. 78, No. 5, pp. 563–65
(2001) (the “Erchak Article”) (collectively, “the articles”).
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practice, and is not limited to McDonnell’s patent prosecution
practice.”
(Pls.’ Mot. Summ. J. p.42 at 1-2.)
Thus, the amended
complaint is not limited to MBHB’s patent prosecution, but
includes all of MBHB’s law practice, including but not limited to
its patent counseling practice.
The Court has already made clear that discovery will not be
used as a fishing expedition, but because the parties had reached
an impasse on the parameters of the search that was necessitated
by Plaintiffs’ amended complaint, the Court approved a reasonable
new search for the Articles’ use.
MBHB conducted the search
approved by the Court, and discovered no additional uses of the
Articles beyond those previously disclosed to Plaintiffs.
MBHB contends that Plaintiffs’ claims are barred by at least
fair use, laches, and estoppel.
To prove these affirmative
defenses, MBHB intends to establish, among other things, that:
(1) conduct hypothesized by Plaintiffs would not materially
impact the market for Plaintiffs’ works (a factor in a fair use
analysis); and (2) Plaintiffs were aware of law firms engaging in
acts such as those they now accuse MBHB of doing, but did nothing
to address these uses for an unreasonable length of time.
MBHB
also argues that it needs information on Plaintiffs’ licensing
and profits to address damages.
Plaintiffs filed a summary judgment motion on Defendant’s
laches affirmative defense, which is still pending before Judge
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Norgle.
Now, Defendant’s current motion argues that MBHB is
entitled to targeted documents responsive to RFP Nos. 75 and 76,
which are relevant to MBHB’s fair use defense, and to a response
to Interrogatory No. 17, which seeks information relevant to
MBHB’s copyright misuse defense.
MBHB additionally argues that
this information is necessary for MBHB to prepare for the
remaining depositions of Wiley’s witnesses.
Plaintiff contends
that MBHB’s motion should be denied, as it already has Wiley’s
budgetary information necessary for its fair use defense, and
that the information sought via Interrogatory No. 17 is
irrelevant and privileged.
For the reasons set forth below, the
Court grants Defendants motion in part, and denies Defendants
motion in part.
Discussion
The district court exercises significant discretion in
ruling on a motion to compel.
The district court may grant or
deny the motion in whole or in part, and similar to ruling on a
request for a protective order under Rule 26(c), the district
court may fashion a ruling appropriate for the circumstances of
the case.
Fed. R. Civ. P. 37(a)(4)(B), (c).
Thus, a district
court is not limited to either compelling or not compelling a
discovery request; in making its ruling, a district court should
independently determine the proper course of discovery based upon
the arguments of the parties.
See, e.g., Gile v. United
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Airlines, Inc., 95 F.3d 492, 496 (7th Cir. 1996).
Courts have
discretion to limit the extent of discovery after considering
“[if] the burden or expense of the proposed discovery outweighs
its likely benefit...the importance of the issues at stake in the
action, and the importance of the discovery in resolving the
issues.”
Fed. R. Civ. P. 26(b)(2)(c)(iii).
Where the party from whom the documents are requested
objects to the request, the party seeking the request may move
for an order to compel production.
Inc., 95 F.3d 496.
Gile v. United Airlines,
The Seventh Circuit, however, has often
warned that “discovery is not to be used as a fishing
expedition.” E.E.O.C. v. Harvey L. Walner & Associates, 91 F.3d
963, 971–972 (7th Cir. 1996). Accord Brenneman v. Knight, 297
Fed.Appx. 534, 538, 2008 WL 4748516, 2 (7th Cir. 2008) (“But
requiring the staff to conduct a fishing expedition, particularly
of the magnitude Brenneman requested, would have imposed too
great a burden.”)
Defendants argue that Wiley’s cumulative and relevancy
objections are baseless, and that MBHB is entitled to the
information it seeks. The Court will address each request in
turn.
I. MBHB’s Request for Production Nos. 75 and 76.
MBHB served two RFP’s on Wiley seeking budgetary
information:
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RFP No. 75: For each of the years from 2006 to
present, the annual budgets of John Wiley’s
scientific, technical, and medical publishing
division presented to John Wiley’s finance
department, as testified to by Ms. Elfenbein
in her June 11, 2013, deposition.
RFP No. 76: For each of the years from 2006 to
present, the final budgets as they pertain to
John Wiley’s scientific, technical, and
medical publishing division presented to John
Wiley’s finance department, as testified to by
Ms. Elfenbein in her June 11, 2013,
deposition.
MBHB argues that the documents responsive to RFP Nos. 75 and 76
(the internal financial reports of Wiley’s scientific,
technical, and medical (“STM”) group), are relevant to MBHB’s
fair use defense and have yet to be produced.
Wiley does not
dispute these facts, but instead contends that the relevant
information contained within the financial documents is already
available and contained within Wiley’s public annual reports.
MBHB counters that Wiley’s argument ignores the wealth of
information in the internal financial documents not found in the
public annual reports.
The Court agrees and finds Plaintiff’s
attempt to diminish the requested reports as predictions, and
assert their production as cumulative, unavailing.
The budgets were prepared by Wiley’s Senior Vice President
for International Development, with input from a combination of
individuals with different responsibilities upon which Wiley
relies on to make its annual business decisions.
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(D.I. 190,
Exhibit 1 at 32:10–21.)
Thus, these are important documents for
Wiley’s STM group, which explains why the STM group creates these
budgets and financial reports each year.
Plaintiffs argue that
“actual gross revenue and operating income” provided in its
annual reports is Sufficient information for the fourth fair use
factor analysis. (D.I. 193 at 3.)
The Court disagrees, as MBHB
has underscored how the information provided in the annual report
“identifies no operating costs, does not allocate “shared” costs
to the STM business, and identifies no revenue expense drivers,
which are all available in the budgets requested. (See D.I. 193
at 6–7.)”
Defs.’ Reply, at 5 (Dkt. 200).
Thus, the annual
reports do not provide vital information about the STM group —
the division that would actually suffer market harm — which MBHB
needs to analyze the fourth fair use factor.
Accordingly, The
Court orders complete production of both RFP Nos. 75 and 76.
II. MBHB’s Interrogatory No.17
Next, MBHB requests that this Court order Wiley to respond
to the following interrogatory:
Interrogatory No. 17: Provide the bases for the
statement in the letter to Bradley J. Hulbert at
MBHB from William Dunnegan, dated November 9, 2010,
that:
“The STM Publishers have recently reviewed the
public records of your firm’s patent filings, and
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have found substantial evidence of unlicensed
copying of their copyrighted material.”
MBHB argues that this information is relevant to its copyright
misuse defense, as it will demonstrate that Wiley was “using its
intellectual property to strong-arm law firms into
licenses based on no evidence of infringement whatsoever.”
Defs.’ Mot., at 7 (Dkt. 190).
Conversely, Wiley argues that this
request is untimely, irrelevant, and is “nothing more than
McDonnell’s attempt to buy more time and a renewed attempt to
invade the plaintiffs’ work product privilege.”
Pls.’ Op., at 5
(Dkt. 193).
Either way, a party making a claim of copyright infringement
does not equate to copyright misuse.
The copyright misuse
defense involves using the "monopoly" of a copyright to obtain
rights outside the scope of those granted by the Copyright Act.
See Arista Records, Inc. v. Flea World, Inc., 356 F. Supp.2d 411,
428 (D.N.J. 2005) ("Moreover, case law suggests that the defense
of copyright misuse 'has rarely been upheld as a defense to a
claim of copyright infringement.' Lexmark Int'l, Inc. v. Static
Control Components, Inc., 253 F.Supp.2d 943, 965 (E.D.Ky.2003),
vacated on other grounds , 387 F.3d 522 (6th Cir.2004).”).
Plaintiff did not assert anything other than copyright
infringement, which is well within their statutory rights, and
MBHB has not provided evidence of Wiley using the monopoly of its
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copyright to obtain unfair rights.
Therefore, the Court denies
MBHB’s request for production pursuant to Inter. No. 17.
Conclusion
For the reasons set forth above, Defendant’s motion to
compel [Dkt. #189] is granted in part, and denied in part.
Accordingly, MBHB’s motion to compel is granted as to RFP. Nos.
75 and 76, but denied as to Inter. No. 17.
Dated: September 16, 2013
E N T E R E D:
_____________________________
MAGISTRATE JUDGE ARLANDER KEYS
UNITED STATES DISTRICT COURT
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