Tomelleri v. Zazzle,Inc. et al
Filing
171
MEMORANDUM AND OPINION regarding 75 MOTION for Protective Order - The Court's order dated December 5, 2014 (ECF No. 162) is incorporated and confirmed in this memorandum and opinion with the exception of the ruling on Topic No. 23. For the re asons stated herein, the order (ECF No. 162) is hereby AMENDED to modify Topic 23 as follows: Zazzle's gross profits, gross margins, revenues and expenses related to the allegedly infringing images from whatever source, as well as indirect and redirect sales made by virtue of Zazzle's use of the infringing images. Signed by Magistrate Judge Teresa J. James on 12/12/14. (kao)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
JOSEPH R. TOMELLERI,
Plaintiff,
v.
ZAZZLE, INC.,
Defendant.
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Case No. 13-cv-02576-EFM-TJJ
MEMORANDUM AND OPINION
In the Order dated December 5, 2014, the undersigned Magistrate Judge ruled on
Defendant Zazzle, Inc.’s Motion for An Order Limiting the Scope of Plaintiff’s Rule 30(b)(6)
Topics and Related Discovery, and for an Award of Sanctions Against Plaintiff’s Counsel for
Abusive Discovery (ECF No. 75), to address Zazzle’s objections to specific topics included in
the Amended Notice of Plaintiff’s Rule 30(b)(6) depositions.1 The Court now issues this
Memorandum and Opinion to provide the basis for those rulings and to address the remaining
issues in Defendant’s motion.
I.
Background
Plaintiff, an artist who creates illustrations of fish, brought this action for damages and
injunctive relief claiming that Defendant Zazzle violated copyright laws by allowing third-party
users of Zazzle’s website to upload Plaintiff’s illustrations to be replicated and sold for profit.2
Zazzle operates through its website, Zazzle.com, where visitors to the website may create and
purchase customized products by incorporating personalized images or text, or purchase products
1
See ECF No. 75 (Defendant’s Motion); ECF No. 64 (Plaintiff’s Amended Notice).
2
The Background section is largely taken from Defendant’s motion. Plaintiff did not take issue with Defendant’s
version or provide its own Background version.
1
which contain images that have been uploaded by third parties. These third parties place an
uploaded image onto an image of a product that Zazzle sells and, once combined, display the
product image on the customer’s “storefront.” The storefront is a user-specific webpage that a
user can create on Zazzle’s website; the customer uses the storefront to order a product that
Zazzle creates by using an image supplied by a third party and placing that image on an item that
Zazzle sells.
Zazzle represents that it requires each third-party user to execute agreements which,
among other things, act to prevent and detect copyright infringement.
On June 12, 2012, Plaintiff’s counsel contacted Zazzle and complained of copyright
infringement. Zazzle represents that it immediately removed the allegedly infringing product
images and told Plaintiff the quantity and dollar value of the products at issue. On November 5,
2013, Plaintiff filed his complaint alleging that Zazzle violated copyright laws because several of
Plaintiff’s copyrighted images have been uploaded and made available for sale on Zazzle’s
website.
Skipping over much of the history of this particular dispute, Plaintiff served an Amended
Notice of Plaintiff’s Rule 30(b)(6) Deposition with 38 topics, many with subparts.3 Plaintiff also
served notices for eight individual depositions.4 Defendant now seeks a protective order which
limits the scope of the 30(b)(6) depositions, precludes Plaintiff from taking additional
depositions without leave of court, and awards sanctions.
3
ECF No. 64.
4
ECF Nos. 90-97.
2
Defendant includes in its supporting suggestions a statement of good faith attempt to
resolve dispute.5 Defendant refers to the communications between the parties and attaches
copies of their email and letter correspondence.6 The Court finds that the parties largely
complied with their duty to confer under D. Kan. R. 37.2. With respect to Topic Nos. 24, 29, 31,
37, and 38, the Court notes that Defendant did not include these requests in its objections to
Plaintiff’s 30(b)(6) deposition notice,7 and consequently the parties’ subsequent communications
were likewise silent on those topics. Given the parties’ seeming inability to move forward with
discovery absent the Court’s ruling on this motion, however, and under the Court’s authority
pursuant to Fed. R. Civ. P. 26(b)(2)(C), the Court has considered the motion in toto.
II.
Legal Standard for Protective Order
Defendant seeks a protective order pursuant to Federal Rule of Civil Procedure 26(c).
That rules provides, in pertinent part, that for good cause the court may issue an order to protect
a party from “annoyance, embarrassment, oppression, or undue burden or expense, including . . .
forbidding inquiry into certain matters, or limiting the scope of disclosure or discovery to certain
matters.”8 The party seeking the protective order has the burden of demonstrating good cause for
it.9 To establish good cause, the moving party must offer “a particular and specific
demonstration of fact, as distinguished from stereotyped and conclusory statements.”10 Even
upon a showing of good cause, however, the Court also considers other factors that were or could
5
See ECF No. 76 at 7.
6
See ECF No. 76 Exs. 1, 3-6.
7
See ECF No. 76-3.
8
Fed. R. Civ. P. 26(c)(1)(A).
9
Aikens v. Deluxe Fin. Servs., Inc., 217 F.R.D. 533, 534 (D. Kan. 2003).
10
Gulf Oil Co. v. Bernard, 452 U.S. 89, 102 N. 16 (1981).
3
have been presented by the party seeking discovery to determine whether the totality of the
circumstances justifies the entry of a protective order.11
The court has broad discretion to decide when a protective order is appropriate and what
degree of protection is warranted.12 The Supreme Court has recognized that “[t]he trial court is
in the best position to weigh fairly the competing needs and interests of the parties affected by
discovery. The unique character of the discovery process requires that the trial court have
substantial latitude to fashion protective orders.”13 Notwithstanding this broad grant of
discretion, a court may issue a protective order only if the moving party demonstrates that the
basis for the protective order falls within one of the specific categories enumerated in the Rule,
i.e. that the requested order is necessary to protect the party from “annoyance, embarrassment,
oppression, or undue burden or expense.”14
III.
Defendant’s Objections to the Rule 30(b)(6) Deposition Topics
When a party seeks to depose a corporation or other entity, the notice of deposition “must
describe with reasonable particularity the matters for examination.”15 The areas of inquiry are
also constrained by the general scope and limits of discovery set out in Fed. R. Civ. P. 26(b). For
Rule 30(b)(6) “to effectively function, the requesting party must take care to designate, with
11
See Citimortgage, Inc. v. Sanders, No. 11-CV-2540-EFM-GLR, 2012 WL 6024641, at *2 (D. Kan. Dec. 4, 2012).
The Court makes specific reference to its consideration of the totality of the circumstances because Plaintiff’s
response to Defendant’s motion is wholly devoid of legal authority and is short on analysis. See ECF No. 125. On
the other hand, Defendant has successfully avoided virtually all of Plaintiff’s discovery efforts to this point, and the
Court sees a need to take a comprehensive look at this discovery dispute “to weigh fairly the competing needs and
interests of [the] parties affected by discovery.” Seattle Times Co. v. Rhinehart, 467 U.S. 20, 22 (1984).
12
MGP Ingredients, Inc. v. Mars, Inc., 245 F.R.D. 497, 500 (D. Kan. 2007) (quoting Seattle Times Co. v. Rhinehart,
467 U.S. 20, 36 (1984)).
13
Seattle Times, 467 U.S. at 36.
14
ICE Corp. v. Hamilton Sundstrand Corp., No. 05-4135-JAR, 2007 WL 1652056, at *3 (D. Kan. June 6, 2007)
(quoting Fed. R. Civ. P. 26(c)).
15
Fed. R. Civ. P. 30(b)(6).
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painstaking specificity, the particular subject areas that are intended to be questioned, and that
are relevant to the issues in dispute.”16 A notice for a Rule 30(b)(6) deposition that is not so
constrained but is instead overly broad “subjects the noticed party to an impossible task.”17
Where a party seeks a protective order to avoid undue burden based on relevance of the
topics specified in the notice, the court must maintain its liberal approach to discovery relevance
where relevancy is broadly construed and a request for discovery should be considered relevant
if there is any possibility that the information sought may be relevant to the claim or defense of
any party.18
Defendant objects to 17 of Plaintiff’s 38 topics,19 and its objections are primarily that the
topics are overbroad or beyond the scope of relevancy. The Court has ruled on each objection
and now sets forth the reasons underlying each ruling.
Topic Nos. 5 and 6: Defendant objects to providing information regarding its use of
redirected advertising and metadata tags or fields “in any [non-sales] aspect of Zazzle’s
business.” Defendant argues that Plaintiff’s claims are limited to the sale of products allegedly
bearing his illustrations, and that information about other aspects of Zazzle’s business is not
remotely relevant. Plaintiff contends that he is entitled to inquire about Zazzle’s other forms of
business because he does not understand Zazzle’s methods and this information may reveal other
means of infringement. Plaintiff’s explanation and the allegations in his complaint provide no
basis for the Court to find that information about “any other aspect of Zazzle’s business” is a
16
Sprint Commc’ns Co., L.P. v. Theglobe.com, Inc., 236 F.R.D. 524, 528 (D. Kan. 2006).
17
Reed v. Bennett, 193 F.R.D. 689, 692 (D. Kan. 2000).
18
Cooper v. Old Dominion Freight Line, Inc., No. 09-CV-2441 JAR, 2011 WL 124567, at *3 (D. Kan. Jan. 14,
2011) (internal citations omitted).
19
See Notice of Plaintiff’s Rule 30(b)(6) Deposition (ECF No. 62).
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proper topic for a Rule 30(b)(6) deposition.20 The Court finds that such a request is overly
broad, encompasses matters irrelevant to the claims and defenses in this case, and would
constitute an undue burden on Defendant. Accordingly, as the Court’s order (ECF No. 162)
states: The requested protection is granted in part. These topics shall be limited to redirected
advertising and metadata tags or fields related to sales of Zazzle products. The concluding
clause(s), “any other aspect of Zazzle’s business” is overbroad and the Court strikes that portion
of Topics 5 and 6.
Topic No. 11: Plaintiff seeks information about the “database(s), application(s),
software, and/or systems used by Zazzle in conducting business, including conducting business
online.” Defendant objects to this topic on the ground that company-wide discovery unrelated to
any alleged infringement is overbroad as a matter of law, and that information related to Zazzle’s
alleged infringement is covered by several other topics. Plaintiff says that he does not know
where or how Zazzle keeps and maintains its images, and he is entitled to inquire about Zazzle’s
databases, software, and systems that relate to infringement. The Court finds Defendant’s
characterization of this request as seeking “company-wide” discovery to be inaccurate and the
cases it cites are not on point.21 The Court further finds, however, that this topic does not
describe a subject area that is relevant to the issues in dispute in this case. The topic is overly
broad and written so generally that it would extend to every aspect of Defendant’s databases and
computer systems. Plaintiff seeks this same information with greater specificity in other topics
to which Defendant has not objected. Accordingly, as the Court’s order (ECF No. 162) states:
The requested protection is granted. The Court strikes Topic 11.
20
The Court’s view is the same with respect to the allegations in Plaintiff’s proposed First Amended Complaint.
21
See ECF No. 76 at 9-10, 11.
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Topic Nos. 15 and 16: Plaintiff seeks information about the manner and method related
to two aspects of Defendant’s advertising, revenue generation and tracking. Zazzle objects that
internet advertising is not related to Plaintiff’s claims and that Plaintiff merely hopes to discover
other acts of alleged infringement through this topic.22 Zazzle also argues that this is improper
company-wide discovery. As the Court has noted, the cases Defendant cites with respect to
company-wide discovery are not on point. Plaintiff responds that he is aware of instances where
Zazzle used his images to make money through internet advertising. To the extent that these
topics seek information beyond Zazzle’s use of Plaintiff’s images, the Court finds that they are
overly broad. Accordingly, as the Court’s order (ECF No. 162) states: The requested protection
is granted in part. These topics shall be modified to read as follows:
Whether Zazzle received revenue from internet advertising by utilizing Plaintiff’s
images and, if so, the manner and method by which Zazzle generated revenue for
sales of such advertising (No. 15); and the manner and method by which Zazzle
tracked or tracks revenue and expenses related to such advertising (No. 16).
Topic Nos. 18 and 19: Plaintiff seeks information related to Zazzle’s use of images or
designs uploaded by Sellers or Affiliates for internet and non-internet advertising and any
revenue generated or expenses incurred in connection therewith. Defendant objects that these
topics are overly broad and wholly irrelevant because Plaintiff has not alleged that Defendant
uses Plaintiff’s images for advertising. Plaintiff responds that he is entitled to this information
for the reasons set forth in Topic Nos. 15 and 16. To the extent that these topics seek
information beyond Zazzle’s use of Plaintiff’s images, the Court finds that they are overly broad.
Accordingly, as the Court’s order (ECF No. 162) states: The requested protection is granted in
part. These topics shall be modified as follows:
22
Defendant suggests that such a “fishing expedition” is at the heart of many of Plaintiff’s requests.
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Zazzle’s use of Plaintiff’s images or designs uploaded by Sellers or Affiliates for
internet advertising and any revenue generated or expenses incurred in using such
images or designs (No. 18); and Zazzle’s use of Plaintiff’s images or designs
uploaded by Sellers or Affiliates for advertising and any revenue generated or
expense incurred for such use (No. 19).
Topic No. 20: Plaintiff seeks information related to any third parties’ use of images
uploaded to Zazzle for internet advertising. Defendant objects that it cannot produce such
information because any third parties Plaintiff might be describing are not within Zazzle’s
possession, custody, or control. Plaintiff responds that it is entitled to such information to the
extent that images uploaded to Zazzle’s website are used to promote, advertise, or otherwise
compensate Zazzle. Plaintiff’s response does not address the assertion that the information it
seeks is not within Zazzle’s possession, custody, or control. The request is unduly burdensome
and likely subjects Defendant to an impossible task. Accordingly, as the Court’s order (ECF No.
162) states: The requested protection is granted. The Court strikes this topic.
Topic Nos. 22, 24, and 29: Plaintiff seeks information relating to any copyright
infringement or DMCA claims involving Zazzle (Topic No. 22) and Zazzle’s methods for
preventing and responding to claims of copyright infringement (Topic Nos. 24 and 29).
Defendant objects that such information would not be admissible. Admissibility is not the
standard, of course, and the Court finds that the subject matter is relevant. In addition,
Defendant has opened the door to this discovery by putting at issue its methods for preventing
and detecting copyright infringement. Accordingly, as the Court’s order (ECF No. 162) states:
The requested protection is denied. These deposition topics will be allowed.
Topic No. 23: Plaintiff seeks information concerning financial performance for Zazzle
including an explanation of Zazzle’s financial statements and accounting methods. Defendant
objects that the request is facially overbroad as it seeks detailed financial information regarding
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the entirety of Zazzle’s business. Plaintiff asserts that it is entitled to inquire as to Zazzle’s gross
profits, gross margins, revenues and expenses related to the allegedly infringing images and to
indirect sales made by virtue of such images. The Court agrees with Plaintiff’s statement, and
Plaintiff has offered to limit the topic to these items. Defendant concedes that Plaintiff is entitled
to discovery on the available categories of damages for Defendant’s alleged infringement of
Plaintiff’s copyrighted images. Although the court mistakenly stated in its order (ECF No. 162)
that Topic No. 23 is stricken, the Court hereby amends the order to modify the topic as follows:
Zazzle’s gross profits, gross margins, revenues and expenses related to the
allegedly infringing images from whatever source, as well as indirect and redirect
sales made by virtue of Zazzle’s use of the infringing images.
Topic No. 28: Plaintiff seeks information regarding the business method and explanation
of the software used in the operation of the Zazzle business that creates images of products
available for sale. Defendant objects to the request as being vague and unclear and asks that
Plaintiff modify the request. To the extent that the request seeks information about the specific
software Defendant uses, Defendant objects that the information is proprietary and far beyond
the scope of this lawsuit. Plaintiff responds that it is simply seeking to gain an understanding of
the method and manner as to how the software works, from uploading an image through sale of
the product, including accounting for all associated revenues and expenses. With that limitation,
the Court agrees that Plaintiff is entitled to the requested information. Accordingly, as the
Court’s order (ECF No. 162) states: The requested protection is granted in part. This topic is
modified to:
Seek an explanation of the functionality of the software used in the operation of
the Zazzle business that creates images of products available for sale.
Topic No. 30: Plaintiff seeks information concerning all companies affiliated or in any
way related, by contract, ownership, or otherwise, with Zazzle that have used Plaintiff’s
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illustrations upon products made or sold by Zazzle or any person or entity compensating Zazzle
for the sale of such products. Defendant objects that the request is unclear and vague and seeks
information that is within Plaintiff’s possession. Plaintiff responds that it is entitled to learn
whether Zazzle is compensated by third parties for making or selling products or advertisements
using Plaintiff’s illustrations or other uploaded images. As modified, the Court agrees that the
topic seeks relevant information. Accordingly, as the Court’s order (ECF No. 162) states: The
requested protection is granted in part. This topic is modified to:
Discover information concerning all third parties of which Zazzle is aware that
have paid or been paid any amount of money as a result of the sale of Zazzle
products using Plaintiff’s illustrations.
Topic No. 31: Plaintiff seeks information regarding Zazzle’s relationship with
Pinterest.com.23 Defendant asserts that Plaintiff has made no allegations that would place any
relationship between Zazzle and Pinterest.com at issue, and that seeking information about a
“relationship” is impermissibly vague. Plaintiff contends that Zazzle’s infringing products have
appeared on Pinterest.com and that he is entitled to know whether a relationship exists between
the two entities. The Court finds that this request is not relevant to the issues in this case. To the
extent that Zazzle’s alleged infringement includes any relationship it has with Pinterest.com,
such information should be included in Topic Nos. 1 through 4. Accordingly, as the Court’s
order (ECF No. 162) states: The requested protection is granted. The Court strikes this topic.
Topic Nos. 37 and 38: Plaintiff seeks information on all advertising networks used by
Zazzle (Topic No. 37) and on the advertising format on which any image uploaded to Zazzle
23
Pinterest is a web and mobile application company that offers a visual discovery, collection,
sharing, and storage tool. Users create and share the collections of visual bookmarks (boards).
Boards are created through a user selecting an item, page, website, etc. and pinning it to an
existing or newly created board. See http://en.wikipedia.org/wiki/Pinterest.
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appears for each advertising network used by Zazzle, including a description of each such format
and the quantity of impressions and clicks for each (Topic No. 38). Defendant objects that the
term “advertising network” is not defined, that Plaintiff has made no allegation that any
advertising networks are involved in the alleged infringement, and that Plaintiff is not entitled to
company-wide information. Plaintiff contends that to the extent Zazzle generates revenue
through advertising networks using infringing images, these requests relate to Zazzle’s liability
for contributory and vicarious infringement. As previously stated, the Court does not accept
Defendant’s attempt to equate Plaintiff’s global requests with the sort of company-wide
discovery that is at issue in the cases Defendant cites. However, Plaintiff points to no allegations
in his complaint which would address Zazzle’s advertising networks, and the Court finds that the
request is not relevant to any issue in the case. Accordingly, as the Court’s order (ECF No. 162)
states: The requested protection is granted. The Court strikes these topics.
IV.
Defendant’s remaining requests
Defendant seeks an order requiring Plaintiff to seek leave to depose any individual
witnesses following the completion of the Rule 30(b)(6) depositions. The Court declines to enter
such an order and refers the parties to ECF No. 162 at page 3.
Defendant also seeks sanctions in connection with its motion. Exercising its authority
under Fed. R. Civ. P. 37(a)(5)(C), the Court declines to award Defendant its reasonable expenses
incurred in making the motion. Defendant did not wholly prevail. In many instances, the Court
has rejected Defendant’s wholesale objection and has ruled that a modified topic is permissible.
V.
Conclusion
The Court’s order dated December 5, 2014 (ECF No. 162) is incorporated and confirmed
in this memorandum and opinion with the exception of the ruling on Topic No. 23. For the
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reasons stated herein, the order (ECF No. 162) is hereby AMENDED to modify Topic 23 as
follows: Zazzle’s gross profits, gross margins, revenues and expenses related to the allegedly
infringing images from whatever source, as well as indirect and redirect sales made by virtue of
Zazzle’s use of the infringing images.
IT IS SO ORDERED.
Dated in Kansas City, Kansas on this 12th day of December, 2014.
s/ Teresa J. James
TERESA J. JAMES
UNITED STATES MAGISTRATE JUDGE
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