Tomelleri v. Zazzle,Inc. et al

Filing 194

MEMORANDUM AND ORDER denying 100 Motion to Quash. Signed by Magistrate Judge Teresa J. James on 1/28/2015. (ts)

IN THE 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 ORDER
This matter is before the Court on Defendant Zazzle’s Motion to Quash Third-Party
Subpoenas (ECF No. 100).1 Plaintiff issued seven third-party subpoenas which directed the
corporate recipients to produce documents related to their intellectual property interactions with
Zazzle, including any claims of infringement by Zazzle. For the reasons set forth below, the
Motion to Quash is denied.
I.

BACKGROUND FACTS
The parties’ discovery disputes are well-documented in earlier orders from this Court,

and facts beyond those relevant to the outstanding third-party subpoenas need not be repeated.
Following service of Notices of Intent to Serve Subpoenas, Plaintiff caused Third-Party
Subpoenas Duces Tecum to be served on seven businesses, all of which own copyrighted or
trademarked images that have presumably been uploaded onto Zazzle’s website, Zazzle.com.
The subpoena recipients are Hallmark Cards, Inc., Lions Gate Entertainment Inc., North Jersey
Media Group, Inc., Summit Entertainment, LLC, The Walt Disney Company, Universal Studios
1

The motion also sought an order protecting Zazzle from eight deposition notices and preventing
Plaintiff from issuing any further discovery without leave of Court. See ECF No. 100 at 1. The
undersigned Magistrate Judge has addressed those issues in other rulings and the parties concur
that no further ruling is necessary. See, e.g., ECF No. 172.
1

Entertainment, Inc., and Warner Bros. Entertainment, Inc.2 Zazzle responded with the instant
motion.
II.

ARGUMENTS ASSERTED FOR AND AGAINST QUASHING THE SUBPOENA
Recognizing that courts allow plaintiffs in copyright infringement actions to establish

willful conduct by presenting evidence of other lawsuits against the defendant for the same
conduct, Zazzle nonetheless argues that Plaintiff’s subpoenas are overbroad because they seek
every document in the third parties’ possession relating to claims of copyright infringement
against Zazzle.3 Zazzle also argues that to the extent Plaintiff is entitled to any such information,
he should seek to obtain it from Zazzle rather than from the non-parties who have been
subpoenaed. And because Plaintiff has requested that Zazzle produce documents related to prior
lawsuits, the subpoenas are improperly cumulative. Additionally, Zazzle argues that the
subpoenas are overbroad because they seek correspondence between the third parties and Zazzle
that refers to intellectual property in any way. Finally, Zazzle asserts that because Hallmark
Cards, Inc., The Walt Disney Company, and Warner Bros. Entertainment, Inc. have not filed
lawsuits against Zazzle, those parties could not possibly have information as to whether Zazzle’s
alleged infringement in this case was willful.
Plaintiff argues that he seeks information from companies that do business with Zazzle
and are known for safeguarding intellectual property rights in their copyrighted material.
Plaintiff contends that the purpose of such discovery is to counter Zazzle’s representation that it
does not infringe, it is not responsible for infringement occurring on its website, and it has no
ability to prevent infringement. Plaintiff argues that he is entitled to conduct discovery to
2

See ECF Nos. 82-88 (Notices of Intent to Serve Subpoena); ECF Nos. 106-111, 113 (Returns of
Service).
3

See ECF No. 101 at 9 & n.8.
2

challenge each of those representations. Implying that entities such as Hallmark Cards, Inc. and
The Walt Disney Company require protection, Plaintiff states his belief that Zazzle does police
its own website against infringing use of certain copyrighted material. Through the subpoenas,
Plaintiff seeks to understand the methods Zazzle uses with these seven companies to ensure
against infringement.
Neither party discusses Fed. R. Civ. P. 45, which governs subpoenas and motions to
quash, with the exception of Defendant’s mention of a protective order under the former Rule
45(d)(3)(B)(i).4
III.

ANALYSIS
Fed. R. Civ. P. 45, which governs motions to quash subpoenas, was amended effective

December 1, 2013. Prior to the amendment, Rule 45 required that subpoenas issue from the
district where compliance was required.5 The issuing court retained the authority to modify or
quash the subpoena.6 After the 2013 amendment, however, subpoenas must be issued from the
court where the action is pending,7 but the authority to quash or modify the subpoena remains
with “the court for the district where compliance is required.”8 Although transfer of a motion to

4

See ECF No. 101 at 10; ECF No. 142 at 4.

5

See Fed. R. Civ. P. 45(a)(2) (2011) (stating that subpoenas “must issue as follows . . . for
production or inspection, . . . from the court for the district where the production or inspection is
to be made”).

6

See Fed. R. Civ. P. 45(c)(3) (2011) (stating that the “issuing court must quash or modify”
subpoenas).

7

Fed. R. Civ. P. 45(a)(2).

8

Fed. R. Civ. P. 45(d)(3)(A), (B).
3

quash from the court where compliance is required to the issuing court is permitted under the
rule in certain circumstances, any such transfer is not initiated by the issuing court.9
Plaintiff directed Hallmark Cards, Inc. to produce the subpoenaed documents in the
District of Kansas;10 Lions Gate Entertainment Inc., Summit Entertainment, LLC, The Walt
Disney Company, and Universal Studios Entertainment, Inc. are to produce documents in Los
Angeles, California;11 and North Jersey Media Group, Inc. and Warner Bros. Entertainment, Inc.
are to produce documents in New York, New York.12 The “district[s] where compliance is
required” are therefore the District of Kansas, the Central District of California, and the Southern
District of New York. No motion to quash has been transferred from another court, and this
Court’s authority is therefore limited to ruling on Defendant’s motion insofar as it relates to the
subpoena served on Hallmark Cards, Inc.13
Subsections 45(d)(3)(A)(i)-(iv) of the Rule require the court to quash or modify a
subpoena that (1) fails to allow a reasonable time to comply, (2) requires a person to comply
beyond the geographical limits specified in Rule 45(c), (3) requires disclosure of privileged or
other protected matter, if no exception or waiver applies, or (4) subjects a person to undue

9

See Fed. R. Civ. P. 45(f) (“When the court where compliance is required did not issue the
subpoena, it may transfer a motion under this rule to the issuing court.”).
10

See ECF No. 82-1.

11

See ECF Nos. 83-1, 85-1, 86-1, 87-1.

12

See ECF Nos. 84-1, 88-1.

13

See Synqor, Inc. v. Vicor Corp., No. 3:14-mc-79-D-BN, 2014 WL 2519242 (N.D. Tex. June 3,
2014); Meyer v. Receivables Performance Mgmt., LLC, No. C12-2013RAJ, 2014 WL 1976664
(W.D. Wash. May 14, 2014); Semex Alliance v. Elite Dairy Genomics, LLC, No. 3:14-cv-87,
2014 WL 1576917 (S.D. Ohio April 18, 2014).
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burden.14 Subsections 45(d)(3)(B)(i)-(ii) of the Rule permit the court to quash or modify a
subpoena that requires (1) disclosure of a trade secret or other confidential research,
development, or commercial information, or (2) disclosure of an unretained expert’s opinion or
information that does not describe specific occurrences in dispute and results from the expert’s
study that was not requested by a party.15
Zazzle relies on only one of the enumerated grounds which would require or permit this
Court to quash the Hallmark Cards subpoena. Zazzle asserts that the information Plaintiff seeks
would require Hallmark Cards to disclose confidential information and trade secrets, along with
privileged work-product from prior and pending litigation. Zazzle provides no evidentiary
support for its conclusory assertion.
Zazzle’s motion to quash the Hallmark Cards subpoena fails for three reasons. First,
Zazzle makes no showing that it has standing to challenge the subpoena. “A motion to quash or
modify a subpoena duces tecum may only be made by the party to whom the subpoena is
directed.”16 An exception exists where the party seeking to challenge the subpoena has a
personal right or privilege with respect to the subject matter requested in the subpoena.17 Here,
Zazzle has failed to explain how it has some personal right or privilege to protect with regard to
the documents sought from Hallmark Cards. Zazzle makes no such argument, although certainly
Zazzle would have raised the issue if Zazzle had reason to believe that a personal right or
privilege exists.
14

Fed. R. Civ. P. 45(d)(3)(A)(i)-(iv).

15

Fed. R. Civ. P. 45(d)(3)(B)(i)-(ii).

16

Kan. Health Care Ass’n, Inc. v. Kan. Dep’t of Soc. & Rehab. Servs, Civ. A. No. 90-4207-S.,
1990 WL 255000, at *1 (D. Kan. December 18, 1990).
17

Id.
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Second, even if Zazzle could reasonably assert a privilege as to documents within
Hallmark Cards’ possession, a party objecting to a subpoena on that basis bears the burden of
establishing that privilege applies by describing in detail the documents or information to be
protected and providing precise reasons for the objection.18 Zazzle has asserted no facts to
establish privilege.
Finally, even if Zazzle had standing to challenge the subpoena, the Court would reject the
argument that Hallmark Cards could not have relevant information because Zazzle has not had
any litigation related to intellectual property with that company. The Court recognizes that the
scope of discovery under a subpoena is the same as discovery under Rule 26.19 Specifically,
Fed. R. Civ. P. 26(b) allows parties to seek discovery of any nonprivileged information relevant
to any party’s claims or defenses.20 Relevance is construed broadly; “a request for discovery
should be allowed ‘unless it is clear that the information sought can have no possible bearing’ on
the claim or defense of a party.”21
Plaintiff’s subpoena commands Hallmark Cards to produce documents which relate to
Zazzle’s unauthorized use of Hallmark Cards’ intellectual property; Zazzle’s methods for
protecting against such unauthorized use; and communications between Zazzle and Hallmark
18

Phalp v. City of Overland Park, Kan., No. 00-2354-JAR, 2002 WL 1162449, at *2 (D. Kan.
May 8, 2002). Rule 45 also addresses the showing that a person must make who is withholding
subpoenaed information as privileged or subject to protection as trial-preparation material. See
Fed. R. Civ. P. 45(e)(2)(A). In this instance, the rule would apply to Hallmark Cards and not to
Zazzle.
19

Schneider v. CitiMortgage, Inc.,, No. 13-4094-SAC, 2014 WL 4749181, at *2 (D. Kan. Sept.
24, 2014).
20

Fed. R. Civ. P. 26(b)(1).

21

Schneider, 2014 WL 4749181, at *2 (quoting The Goodyear Tire & Rubber Co. v. Kirk’s Tire
& Auto Servicecenter of Haverstraw, Inc., 211 F.R.D. 658, 663 (D. Kan. 2003)).
6

Cards relating to intellectual property, infringement, and/or settlement.22 Clearly, Plaintiff’s
discovery request is not limited to litigation between Hallmark Cards and Zazzle. Given the
allegations of Plaintiff’s First Amended Complaint, the Court finds that its discovery requests are
relevant to Plaintiff’s efforts to understand Zazzle’s ability and methods to police infringement
on its website, and to discover other alleged acts of infringement by Zazzle to support Plaintiff’s
claim of willful infringement.
IT IS THEREFORE ORDERED that Defendant Zazzle’s Motion to Quash Third-Party
Subpoenas (ECF No. 100) is DENIED.
IT IS SO ORDERED.
Dated in Kansas City, Kansas on this 28th day of January, 2015.

s/ Teresa J. James
Teresa J. James
U.S. Magistrate Judge

22

See Subpoena Exhibit A (ECF No. 82-1 at 4).
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