Viper Nurburgring Record LLC v. Robbins Motor Co. LLC et al
Filing
64
MEMORANDUM AND ORDER granting in part and denying in part 50 Motion to Compel. Signed by Magistrate Judge Kenneth G. Gale on 12/3/18. (df)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
VIPER NURBURGRING
RECORD, LLC,
)
)
)
Plaintiff,
)
vs.
)
)
ROBBINS MOTOR CO., LLC,
)
and CLAYTON ROBBINS,
)
)
Defendants.
)
______________________________ )
Case No. 18-4025-HLT-KGG
MEMORANDUM & ORDER ON
DEFENDANTS’ MOTION TO COMPEL
Before the Court is the Motion to Compel filed by Defendants Robbins
Motor Co., LLC and Clayton Robbins (“Defendants”). (Doc. 50.) Having
considered the submissions of the parties, Defendants’ motion is GRANTED in
part and DENIED in part.
FACTUAL BACKGROUND
This is a copyright infringement case. Defendants have summarized the
“nature of the case” in their motion as follows:
Plaintiff is an entity formed to set a world record time for
a production or ‘stock’ Viper – that is, a ‘normal’ Viper
car off the production line or taken from stock, and not
specially modified other than minor things like a safety
cage for the drive – on the Nurburgring track in Nurburg,
Germany. Defendants were a sponsor and contributed
thousands of dollars to help support this world record
attempt.
1
VNR hired a professional photographer to
document the event. In exchange for Defendants’ support
and sponsorship, VNR gave Defendants an express
license to use at least one photograph, and (Defendants
argue) at the least an implied license to use the others.
Some of the photographs were later offered on the
photographer’s website for license at $99 per photo, and
many were also reproduced on social media with
commentary from Viper owners (there is a Viper Owners
website and online community).
The world record attempt failed (even though, it
now appears, VNR may have surreptitiously made major
and illicit modifications to boost the car’s power). A few
months later, VNR claimed Defendants had to pay more
money for the license for the already promised
photograph, and then in March 2018 asserted that
Defendants had infringed VNR’s purported copyrights by
using a number of other photographs. Defendants
disagreed. This lawsuit ensued.
(Doc. 50, at 2.)1
Defendants bring the present motion seeking an Order compelling Plaintiff
to provide “full and complete responses” to various Interrogatories and Requests
for Production. (Id.)
ANALYSIS
A.
Legal Standards for Discovery.
Fed.R.Civ.P. 26(b) states that
1
The Court notes that in responding to Defendant’s motion to compel, Plaintiff did not
specifically controvert any portion of this factual summation. (Doc. 53, at 2-3.)
Although Plaintiff may prefer additional facts be included for clarification purposes, the
Court will accept this background as true and sufficient for purposes of the present
motion.
2
[p]arties may obtain discovery regarding any
nonprivileged matter that is relevant to any party’s claim
or defense and proportional to the needs of the case,
considering the importance of the issues at state in the
action, the amount in controversy, the parties’ relative
access to relevant information, the parties’ resources, the
importance of the discovery in resolving the issues, and
whether the burden or expense of the proposed discovery
outweighs its likely benefit. Information within this
scope of discovery need not be admissible in evidence to
be discoverable.
As such, the requested information must be nonprivileged, relevant, and
proportional to the needs of the case to be discoverable. Holick v. Burkhart, No.
16-1188-JTM-KGG, 2018 WL 372440, at *2 (D. Kan. Jan. 11, 2018).
“Unless a request is overly broad, irrelevant, or unduly burdensome on its
face, the party asserting the objection has the duty to support its objections.” Funk
v. Pinnacle Health Facilities XXIII, LP, No. 17-1099-JTM-KGG, 2018 WL
6042762, at *3 (D. Kan. Nov. 19, 2918) (quoting Hammond v. Lowe's Home
Ctrs., Inc., 216 F.R.D. 666, 670 (D.Kan.2003)). Further, once the “low burden of
relevance is established, the legal burden regarding the defense of a motion to
compel resides with the party opposing the discovery request.” Waters v. Union
Pac. RR. Co., NO. 15-1287-EFM-KGG, 2016 WL 3405173, at *1 (D. Kan. June
21, 2016) (citing Swackhammer v. Sprint Corp. PCS, 225 F.R.D. 658, 661, 662,
666 (D. Kan. 2004) (stating that the party resisting a discovery request based on
3
overbreadth, vagueness, ambiguity, or undue burden/expense objections bears the
burden to support the objections)).
II.
Disputed Discovery Requests.
Defendants are seeking supplemental responses to Interrogatories No. 1, 2,
7, 8, 13, 14, First Request for Production Nos. 10, 16, 18, 19, 26, 30, 31, 32, 34,
37, and Second Request for Production No. 1 and 2. Defendants’ motion and reply
brief tend to discuss the discovery requests in a more general fashion, rather than
addressing the requests individually or in more specific categories. This approach
has complicated the Court’s analysis of the issues, often making it difficult for the
Court to determine what Defendants contend is missing from Plaintiff’s
production. That stated, the Court will address the discovery requests at issue.
A.
Interrogatories 1, 2, 13, and 14.
Defendants have categorized these four Interrogatories together, contending
they “seek discovery on the identities of all sponsors for the world record attempt,
the benefits that Plaintiff promised and/or provided to each sponsor, negotiations
for any licenses by sponsors, and information on any licenses to the photographs at
issue.” (Doc. 50, at 5.) Defendants argue that any licenses to the photographs at
issue are relevant. (Doc. 50, at 5.) They contend that Plaintiff’s “course of
conduct towards other sponsors, including providing licenses to the photographs, is
germane to assessment of a sponsor’s rights and obligations to the photographs at
4
issue.” (Id., at 5-6.) Defendants continue that “all sponsorships to the VNR
attempt and the amount paid in financial support are relevant, because this
information may suggest the monetary value of the photographs, illustrate the
different benefits a sponsor was given based on the amount of monetary support
provided, and the estimated value of a license for use of the photographs.” (Id., at
6.)
According to Defendants, Plaintiff’s “treatment of and course of conduct
towards other sponsors is useful to assess and characterize its relationship with
Defendants, including the rights and obligations related to use of the photographs
at issue.” (Id., at 6.) They argue that such information “may show that
Defendants’ sponsorship entitled it to implied licenses for use of all photographs
based on the total financial support it provided as compared to other sponsors” and
also provides a basis for determining “the monetary value of licenses to the
photographs and value of the photographs.” (Id.) Further, Defendants contend the
requested information might also reveal that other sponsors have implied licenses
to the photographs. (Id.) Defendant has, however, made no attempt to proffer an
evidentiary basis for its claim that any particular conduct of Plaintiff towards this
Defendant supports its claim for an implied license to use photographs beyond the
express grant. This makes the discovery of Plaintiff’s treatment of other sponsors,
for the purpose of supporting its theory, of dubious relevance. However, out of an
5
abundance of caution, and without opining whether such would be ultimately
admissible at trial, the Court will order the production of discovery into express
agreements for the limited or unlimited use of the photographs with other sponsors,
and into the identity of all sponsors to facilitate Defendant’s investigation into
whether other unlicensed sponsors used photographs. Within the context of these
general theories, the Court will address these four Interrogatories individually.
1.
Interrogatory No. 1.
Interrogatory No. 1 asks Plaintiff to “[i]dentify all individuals or entities that
provided payments or other financial support to VNR for the ‘world record
attempt’ as described in your Complaint, and indicate the total amount of support
each such individual or entity provided.” (Doc. 50-2, at 1.) Plaintiff objects that
the request is irrelevant and not proportional to the needs of the case “except for
sponsorships that included a license to use the copyrighted images identified in the
complaint.” (Doc. 50-2, at 1.) Plaintiff also objects that the requested information
is “confidential and private, and to the extent VNR discloses sponsorships that
included a nonexclusive license to use the copyrighted images identified in the
complaint, such information shall be provided under the Court’s Protective Order.”
(Id.) Plaintiff then included a list of sponsors to whom a license was provided for
such images, designating the same as “confidential.” (Id., at 1-2.)
6
The Court finds Plaintiff should supplement this with a list of all sponsors.
The request, as worded, is otherwise facially overbroad and seeks information not
relevant to this case. Plaintiff is not required to provide the additional information
(e.g. the amount of support) that was requested. These objections are sustained.
Defendants’ motion is DENIED as to Interrogatory No. 1.
2.
Interrogatory No. 2.
This discovery request asks Plaintiff to “[i]dentify all individuals or entities
that you have sold or otherwise provided a license to for the Photographs.” (Doc.
50-2, at 2.) Plaintiff objects that the information is “confidential and private.”
(Id.) Plaintiff continues that it “has not sold the copyrighted images identified in
the complaint, but to the extent these images have been the subject of a nonexclusive license, the licensee shall be provided under the Court’s Protective
Order.” (Id.) Plaintiff then attached a “list of sponsors to whom a non-exclusive
license to said images was provided,” which was marked as “confidential”
pursuant to the Protective Order.
In response to Defendants’ motion, Plaintiff indicates that it has “identified
all non-exclusive licensees who were sponsors.” (Doc. 53, at 7.) Plaintiff attests
that, beyond the licenses contained in the list, Plaintiff has not “sold” any
photograph at issue. (Id.) Plaintiff argues that its response to Interrogatory No. 2
“is not lacking in any respect, and Defendants fail to identify any alleged
7
insufficiency, instead simply arguing VNR should provide something more.” (Id.,
at 8.) The Court agrees. Both Defendants’ motion and reply brief fail to
specifically indicate how Plaintiff’s response to Interrogatory No. 2 is insufficient.2
Defendants’ motion is DENIED as to Interrogatory No. 2.
3.
Interrogatory No. 13.
This Interrogatory instructs Plaintiff to “[i]dentify all benefits, including
placing the name or logo of the sponsor on the vehicle, you provided to any
sponsor of the VNR world record attempt.” (Doc. 50-2, at 7.) Plaintiff objects that
the Interrogatory seeks irrelevant information and is not proportional to the needs
of the case, “except for sponsorships that included a license to use the
copyrighted images identified in the complaint.” (Id.) Plaintiff also objects that
the information is “confidential and private, and to the extent [Plaintiff] discloses
sponsorships that included a nonexclusive license to use the copyrighted images
identified in the complaint, such information shall be provided under the Court’s
Protective Order.” (Id.) Plaintiff then provided a “list of sponsors to whom a
2
Plaintiff continues that “beyond the licensees already identified in information provided
to Defendants, [Plaintiff] has not authorized use of the photographs at issue. If others are
making unlicensed use of the photographs, such uses are also infringement and [Plaintiff]
can separately pursue other infringement.” (Doc. 53, at 7-8.) Plaintiff correctly argues
that even if such infringement has occurred, it would not excuse Defendants’
infringement. (Id.)
8
non-exclusive license to said images,” which was marked as “confidential”
pursuant to the Protective Order. (Id.) The list “also sets forth other benefits
provided these specific sponsors,” according to Plaintiff. (Id.)
In response to Defendants’ motion, Plaintiff argues that that Defendants are
of the position that “any sponsorship is relevant despite having nothing to do with
either the photographs at issue or the Defendants’ infringement.” The Court agrees
that information beyond simply identifying sponsors regarding sponsorships that
are unrelated to photographs or related licenses is overly broad and irrelevant to the
claims in defenses in this case. Plaintiff states it “has provided information and
documentation for those sponsors who received a non-exclusive license to the
photographs at issue.” (Doc. 53, at 9.) As Plaintiff opines, “[i]f another sponsor
got its name on the car and did not get a license, how does that relate to
Defendants’ infringement? It does not.” The Court agrees. Defendants’ motion is
DENIED as to this interrogatory.
4.
Interrogatory No. 14.
Interrogatory No. 14 asks Plaintiff to identify “all sponsors of the VNR
world record attempt that ‘negotiated for a license” to use the Photographs, as
discussed in paragraph 13 of your Complaint.” (Doc. 50-2, at 7.) Plaintiff objects
that the interrogatory seeks information that is irrelevant or not proportional to the
needs of the case, “except for sponsorships that included a license to use the
9
copyrighted images identified in the complaint.” (Id.) Plaintiff also objects that
the information sought is “confidential and private, and to the extent [Plaintiff]
discloses sponsorships that included a non-exclusive license to use the copyrighted
images identified in the complaint,” Plaintiff will produce it subject to the
Protective Order. That stated, Plaintiff includes a list, marked as confidential, “of
sponsors to whom a license to said images was provided.” (Id., at 8.)
Plaintiff contends that Defendants’ motion
fails to identify what further information is sought.
Where sponsors sought out and were provided a license,
VNR provided identifying information for those
sponsors. Nothing more is sought and therefore nothing
more is required. The motion to compel should be denied
with respect to this interrogatory.
(Doc. 53, at 10.) The Court agrees. Defendants’ motion (Doc. 50) fails to indicate
what information they are attempting to discover beyond what is included in the
provided list “of sponsors to whom a license to said images was provided.”
Defendants’ motion is DENIED as to Interrogatory No. 14.
B.
Interrogatories Nos. 7 and 8.
Interrogatory No. 7 asks Plaintiff to “[i]dentify each and every URL, web
site, web page, and social media account on which you promoted and/or sought
sponsorship for VNR’s ‘world record attempt.’” (Doc. 50-2, at 4.) Interrogatory
No. 8 instructs Plaintiff to “[i]dentify all efforts you made to secure financing or
sponsorships for the VNR ‘world record attempt.’” (Id., at 5.) In response to each,
10
Plaintiff objects that the Interrogatories are irrelevant and not proportional to case,
“as no sponsorships were publicly promoted as including a license to the
copyrighted images referenced in the complaint.” (Id., at 5.)
Defendants contend that although Plaintiff’s counsel “agreed that Plaintiff
would provide information on any webpage or social media postings as requested
in Interrogatory No. 7,” by the filing of the present motion, Plaintiff had failed to
file a supplemental response. (Doc. 50, at 6-7.) Plaintiff’s response to the motion
makes no reference to, and does not deny, this promised supplemental response.
As such, Plaintiff is instructed to supplement accordingly. Defendants’ motion is
GRANTED as to Interrogatory No. 7. Supplemental responses are due within
thirty (30) days of the date of this Order.
As to Interrogatory No. 8, Defendants contend that Plaintiff’s interactions
with potential sponsors are relevant because Plaintiff “may have advertised to
potential sponsors that a benefit of sponsorship would be access to use photographs
taken at the event” or “may have promised use of more than one photograph to
another potential sponsor for less financial support than was given by Defendants.”
(Id., at 7.) Even considering the broad scope of discovery relevance, the Court
does not agree with Defendants as to the relevance of how Plaintiff “went about
gaining sponsorship and the benefits or perks promised in return for financial or
other support are related to Plaintiff’s claims and Defendants’ defenses.” (Id.)
11
Evidence that “other sponsors that received similar promises of one or more
licenses to use the photographs based on financial sponsorship” is not probative of
what agreements existed between Plaintiff and Defendants in this case.
Defendants’ motion is DENIED as to Interrogatory No. 8.
C.
First Requests for Production.
1.
Request No. 10.
Request No. 10 asks for “[a]ll documents related to your purchase of the
Photographs from photographer Eric Meyers.” Plaintiff objects that the request is
vague, irrelevant, and disproportionate to the case “as the request is not limited to
postings that relate to the Registered Works.” (Doc. 50-2, at 15.) That stated,
Plaintiff indicated it would “produce the agreements memorializing the assignment
of rights to the Registered Works by Eric Meyers.” (Id.)
Defendants contend that this is insufficient. They argue that “the
negotiations with Eric Meyers may reveal important facts regarding the value of
the images and other information related to the validity of the copyrights” such as
the fee paid to Meyers “may be an admission by conduct and otherwise indicate
the fair market value of the photos.” (Doc. 50, at 8.) Defendants also surmise
there may “be issues about Plaintiff’s purported ownership of the photos and the
associated copyrights at all, since Plaintiff is not the author,” which, Defendants
12
argue, is “directly related to Plaintiff’s claimed damages and Defendants’
affirmative defenses… .” (Id.)
Defendants indicate that the parties “discussed limiting this request to only
those documents that discuss or relate directly to the photographs, such as
correspondence negotiating the purchase or discussing copyright issues,” but
Plaintiff did not agree to such a limitation. The Court finds the proposed limitation
to be fair and GRANTS Defendants’ motion within these parameters.
2.
Requests Nos. 16, 19, and 26.
These Requests seek discussions or references to the “world record attempt”
on “[a]ll websites owned, operated, or controlled” by Plaintiff (Request No. 16), in
“[a]ll social media postings” by Plaintiff (Request No. 19), or in “[a]ll postings on
driveviper.com” by Plaintiff (Request No. 26). (Doc. 50-2, at 15, 16.) Plaintiff
objects that the requests seek information that is irrelevant and disproportionate to
the needs of the case because the requests are “not related to the Registered Works
or Defendants’ infringement.” (Id.)
Defendants argue that Plaintiff’s
promotion of the event may include relevant information
regarding sponsorships, benefits of sponsorship, and use
of photographs taken during the event. Such evidence is
germane to the assessment and characterization of VNR’s
relationship with Defendants, and how Defendants
believed they were allowed to use the photographs at
issue. Here, Defendants maintain that they shared some
of the photographs at issue in order to further promote
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the event and obtain financial support for the world
record attempt. If VNR was taking similar action, this
information would be relevant to whether Defendants’
use was reasonable and unintentional infringement. This
information is directly related to Plaintiff’s claims and
Defendants’ affirmative defenses and should be
produced.
(Doc. 50, at 8.)
Plaintiff responds that it supplemented its responses to Requests Nos. 16 and
19. As to Request No. 16, Plaintiff’s supplemental response “notes that while the
locations where VNR promoted the events is irrelevant to Defendants’
infringement, VNR nonetheless had produced documents evidencing postings
including the photographs at issue in this case made by VNR on websites it owns,
operates or controls.” (Doc. 53, at 12.) As to Request No. 19, Plaintiff indicates
the supplemental response “produc[ed] social media postings by VNR that
included the photographs at issue in this case. Other postings, unrelated to either
the photographs at issue or Defendants’ infringement, have no relevance to the
issues in this case.” (Id., at 13.) Defendants’ reply is silent as to these
supplemental responses. The Court therefore surmises that the supplements
provided sufficient information and DENIES Plaintiff’s motion.
14
Plaintiffs’ response – and Defendants’ reply brief – are silent as to Request
No. 26.3 The Court therefore instructs Plaintiff to supplement its response to
Request No. 26 to include any references on driveviper.com regarding the
photographs at issue in this case to the extent Plaintiff has not already done so.
This portion of Defendant’s motion is GRANTED in part.
3.
Requests Nos. 18 and 30.
Request No. 18 asks for “[a]ll correspondence regarding sponsorships or
raising money for the ‘world record attempt’ as described in your Complaint.”
(Id.) Request No. 30 seeks “[a]ll documents evidencing your attempts to solicit
sponsors for the world record efforts in Nurburg, as described in your Complaint.”
(Doc. 50-2, at 17.) Plaintiff objects that these requests are irrelevant and
disproportionate to the case because they are “not related to the Registered Works
or Defendants’ infringement,” but it agreed to produce “records evidencing nonexclusive licenses for the Registered Works.” (Id.)
Defendants argue that “Plaintiff’s treatment of and course of conduct
towards other sponsors is certainly germane to assessment and characterization of
its relationship with Defendants, including rights and obligations with reference to
the photographs at issue.” (Doc. 50, at 9.) They continue that “[t]he information
3
The Court notes that Request No. 26 is not included in the list of discovery responses
at issue at the beginning of Defendants’ motion. (Doc. 50, at 1.) It is, however,
specifically referenced in the body of the motion. (Id., at 8.)
15
also may suggest the monetary value of licenses to the photographs and the
photographs themselves.” (Id.)
Plaintiff responds that correspondence regarding attempts to raise any type
of sponsorship is irrelevant because “[t]here are nearly 600 people/entities that
donated to VNR, and to go through documents related to every one of them is
unduly burdensome when VNR has already produced the agreements with any
sponsors that received a license.” (Doc. 53, at 13.) The Court agrees. Request
No. 18, on its face, encompasses irrelevant information. It is also facially
overbroad, unduly burdensome, and disproportionate to the needs of the case.
The same is true for as to Request No. 30, which seeks “all documents
evidencing your attempts to solicit sponsors… .” Plaintiff argues that its “efforts
to obtain sponsorship have no possible connection to Defendants’ infringement of
photographs owned by [Plaintiff].” (Doc. 53, at 14.) Even assuming there is a
possible connection between this information and Defendants’ claims, they have
failed to articulate it in a way that would counteract the facial overbreadth of the
request or establish the proportionality of the effort to respond to the needs of the
case. Swackhammer, 225 F.R.D. at 661, 662, 666 (stating that the party resisting a
discovery request based on overbreadth, vagueness, ambiguity, or undue
burden/expense objections bears the burden to support the objections). As such,
Defendants’ motion is DENIED as to Requests Nos. 18 and 30.
16
4.
Requests Nos. 31 and 37.
Request 31 seeks “[a]ll documents related to any sponsor of the world record
efforts receiving or negotiating for a license to the Photographs.” (Doc. 50-2, at
17.) Request No. 37 seeks “[a]ll documents relating to any secondary sponsor’s
sponsorship of VNR’s world record efforts.” (Id., at 18.) Plaintiff objects that
these requests are irrelevant and disproportionate to the case to the extent they are
not related to the Registered Works or Defendants’ infringement. (Id., at 17, 18.)
As to Request No. 31, Plaintiff agreed to produce “records evidencing nonexclusive licenses for the Registered Works,” while in response to Request No. 37,
Plaintiff directs Defendants to its responses to interrogatories. (Id.)
Defendants contend that Plaintiff’s actions in soliciting sponsorships and
negotiating licenses to the photographs with other sponsors is relevant,
proportional to the case and discoverable. (Doc. 50, at 9.) They continue that,
regardless of whether they were allowed to use only one photograph or had implied
licenses to use all photographs at issue,
Plaintiff may have negotiated with other sponsors for
explicit licenses to more than one photograph for less
financial support than what was provided by Defendants.
This information is relevant to Plaintiff’s claims that
Defendants were only allowed use to one photograph, the
reasonableness of Defendants’ use, and Defendants’
argument that any alleged infringement was unintentional
and innocent. It also reflects the monetary value of the
photographs themselves and any licenses to the
photographs. Plaintiff claims statutory damages in this
17
matter which may range from $750 to $30,000 per
infringement depending on the circumstances. What
[Plaintiff] was willing to accept as sponsorship (whether
money, support, parts, tires, advertisement etc.) in
exchange for licenses is a circumstance that will
influence the potential amount of damages awarded in
this case if Defendants infringed.
(Id., at 9-10.)
Plaintiff responds that, as to Request No. 31, it “has already produced
records for any sponsor who requested and received a nonexclusive license to the
photographs at issue.” (Doc. 53, at 14.) As for Defendants’ claim that Plaintiff
“may have negotiated with other sponsors for explicit licenses to more than one
photograph for less financial support,” Plaintiff contends that Defendants have the
documents to analyze this question already in their possession, as Plaintiff
“produced the documents evidencing each sponsor license.” (Id.) As to Request
No. 37, Plaintiff contends that despite the overbreadth and burdensome nature, it
“has produced documents evidencing any sponsorship that yielded a license to the
photographs in this action.” (Id., at 16.)
Defendants’ reply brief does not discuss Requests Nos. 31 and 37
specifically. (See Doc. 56.) As such, the Court cannot determine what additional
documents Defendants are seeking and will not attempt to assume what
information Defendants contend is lacking.
18
Further, Request No. 37 is facially overbroad, unduly burdensome, and
disproportionate to the needs of the case as it seeks “[a]ll documents relating to any
secondary sponsor’s sponsorship of VNR’s world record efforts.” The Request, as
worded, clearly encompasses significant information that is unrelated to the claims
and defenses in this case, which relate to the subject photographs and licenses. As
such, Defendants’ motion is DENIED as to Requests Nos. 31 and 37.
5.
Requests Nos. 32 and 34.
Request No. 32 asks for “[a]ll documents illustrating any monetary
compensation received by you for use of the Photographs.” (Doc. 50-2, at 17.)
Plaintiff objects that the Request is irrelevant and disproportionate to the case “to
the extent it seeks ‘all documents illustrating any monetary compensation,’ as the
request is not related to the Registered Works or Defendants’ infringement.” (Id.)
Plaintiff then directed Defendants to its responses to interrogatories “for the
monetary compensation provided by those who received a non-exclusive license.”
(Id.)
Request 34 asks for “[a]ll documents illustrating payments received for
licenses to the photographs, as described in your Complaint.” Plaintiff objects that
the request is not relevant and not proportional to the needs of the case “to the
extent it seeks ‘all documents…’” (Doc. 50-2, at 17-18.) Plaintiff continues that
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“[t]o the extent [it] has any such documents in its custody or control, documents
evidencing the amounts paid for non-exclusive licenses will be produced.”
Defendants argue that “[i]ncredibly, because this is a central issue in
damages, Plaintiff objects that the documents are irrelevant, or should be limited
only to non-exclusive licenses. These requests are directly related to Plaintiff’s
claims for damages and the value of the photographs at issue.” (Doc. 50, at 10.)
Plaintiff responds that it “has produced documents showing what each
sponsor paid for a license” and that “[n]o further compensation has been provided
beyond these licenses.” (Doc. 53, at 15.) Plaintiff continues that
Defendants suggestions that the photographs at issue
have been sold by VNR is simply untrue. VNR has
objected to the extent this request seeks ‘all documents
illustrating monetary compensation…’ because it
seemingly goes beyond the license documents to every
document related to the same transaction, whether voided
checks, bank statements, wire transfer receipts, etc. To
request ‘all’ documents is overly broad and a waste of
time and resources.
(Id.)
Defendants’ reply brief does not discuss these requests or the issue of
compensation for the licenses or photographs. (See Doc. 56.) Again, the Court is
unable to determine what additional documents Defendants are seeking and the
Court will not attempt to assume what information Defendants contend is lacking.
20
Further, the Requests are facially overbroad, unduly burdensome, and
disproportionate to the needs of the case by seeking “all” such documents. The
Court agrees with Plaintiff that every document related to the transactions would
encompass voided checks, bank statements, wire transfer receipts, and the like.
Defendants have made no effort to explain how the burden required for Plaintiff to
compile and produce all such information would be proportionate to the needs of
the case. This is particularly notable given that Plaintiff has already produced
“documents showing what each sponsor paid for a license” and has attested that
“[n]o further compensation has been provided beyond these licenses.” (Doc. 53, at
15.) The Requests, as worded, clearly encompass significant information that is
unduly burdensome and disproportionate to the needs of the case. As such,
Defendants’ motion is DENIED as to Requests Nos. 32 and 34.
D.
Second Requests for Production Nos. 1 and 2.
1.
Request No. 1.
Request No. 1 seeks “[a]ll correspondence between you and Eric Meyers.”
Plaintiff objects that the request is vague, overly broad, not relevant and
not proportional to the needs of this case. (Doc. 50-3, at 1.) That stated, Plaintiff
provided “the agreement with Eric Meyers and the assignment of the Registered
Works.” Defendants indicate that
[t]his includes discussion of the event, compensation for
his services, use of the photographs, and registration of
21
copyrights. ...Defendants seek this discovery to
investigate Plaintiff’s claims of valid copyright and value
of the photographs at issue. Counsel for Defendants
discussed limiting the scope of the request to not include
various emails regarding benign topics like scheduling or
flight information, but Plaintiff still refused to produce
documents within a narrower scope.
(Doc. 50, at 10.)
Plaintiff responds that it has met its duty of production by providing
Defendants with the agreements with Meyers. Plaintiff asks, “What could other
correspondence have to do with Defendants’ copyright infringement?” (Doc. 53,
at 16.) The Court agrees with Plaintiff. The limited probative value of this
information does not outweigh the burden that would be imposed on Plaintiff to
respond. Defendants’ motion is, thus, DENIED as to Request No. 1.
2.
Request No. 2.
Request No. 2 asks for “[a]ll correspondence between you and Colin Fox
related to documenting the world record attempt, as described in your Complaint.”
Mr. Fox was the videographer for the VNR events. Plaintiff again objects that the
request is vague, overly broad, irrelevant, and not proportional to the needs of the
case because “Colin Fox was not involved in any of the Registered Works.” (Doc.
50-3, at 1.)
Defendants contend that this Request seeks information “related to whether
Plaintiff also acquired licenses to Mr. Fox’s photographs or video, and the value of
22
those services.” (Doc. 50, at 10-11.) According to Defendants, this information
should be produced because it “is related to Plaintiff’s claimed damages and the
value of the photographs at issue...” (Id.) Defendants dispute Plaintiff’s objections
that because the Request does not relate to the Registered Works, it is vague,
overbroad, irrelevant and not proportional to the needs of the case. According to
Defendants, “Plaintiff’s conduct and treatment of other copyrighted or
copyrightable material stemming from the world record attempt is directly relevant
to assessment and characterization of the subset at issue.” (Id.)
Plaintiff responds that although it retained the services of numerous
professionals for its record attempt, “only the infringement of photographs taken
by Mr. Meyers are at issue in this case” and that it “has not asserted any claims of
infringement as to copyrighted works of Mr. Fox by Defendants.” (Doc. 53, at 17.)
Plaintiff continues that “[t]here is simply no connection between Defendants’
infringement of photographs taken by Mr. Meyers and owned by VNR, and
correspondence between VNR and Mr. Fox.” (Id.)
Defendants reply that “[t]he value exchanged for any rights to similar
photographs taken by Colin Fox may also inform questions of the value of the
photographs at issue and reasonable calculation of damages, if infringement is
found.” (Doc. 56, at 3.) The Court does not agree. There are no claims of
infringement as to copyrighted works of Mr. Fox in this case. The information is
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simply not relevant to this case. Defendants’ motion is, thus, DENIED as to
Request No. 2.
IT IS THEREFORE ORDERED that Defendant’s Motion to Compel (Doc.
50) is GRANTED in part and DENIED in part as more fully set forth above. All
supplemental responses shall be served within thirty (30) days of the date of this
Order.
IT IS ORDERED.
Dated this 3rd day of December, 2018.
S/ KENNETH G. GALE
Kenneth G. Gale
United States Magistrate Judge
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