Viper Nurburgring Record LLC v. Robbins Motor Co. LLC et al
Filing
79
MEMORANDUM AND ORDER granting 63 Motion for Protective Order. Signed by Magistrate Judge Kenneth G. Gale on 1/19/18. (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
PLAINTIFF’S MOTION FOR PROTECTIVE ORDER
Before the Court is the “Motion for Protective Order as to Defendants’
Third-Party Subpoenas” filed by Plaintiff Viper Nurburgring Record LLC (“VNR”
or “Plaintiff”). (Doc. 63.) Having considered the submissions of the parties,
Defendants’ motion is GRANTED.
FACTUAL BACKGROUND
This is a copyright infringement case. Defendants have summarized the
“nature of the case” in their motion as follows:
VNR is an entity formed to set a world-record time
for a production car on the infamous Nürburgring track in
Nürburg, Germany. (Doc. 1, ¶8.) VNR organized two
trips to the Nürburgring in 2017, using two 2017 Viper
ACR vehicles provided by a sponsor for the record
time attempts. (Id., ¶9.) The world record attempts were
documented by a professional photographer, Eric
Meyers, who was hired by VNR to take photographs of
1
the record attempts. (Id., ¶11.) Mr. Myers assigned
ownership rights for his photographs to VNR. (Id.)
VNR solicited sponsorships online and within the
Viper community. Third parties BJ Motors and Viper
Exchange assisted in the VNR record efforts by
supplying the vehicles. BJ Motors and Viper Exchange
were both provided non-exclusive licenses to use the
photographs from the world record attempts, including
those photographs used by Defendants without
authorization. Prior to this action, Defendants threatened
to defame VNR’s owner, Russ Oasis, and Viper
Exchange within the Viper community if VNR filed suit
seeking to enforce VNR’s copyright rights. (Doc. 1,
¶30.) Defendants’ litigation tactics continue their presuit pattern of harassment, and would impose an undue
burden on Viper Exchange and BJ Motors.
VNR has already disclosed both BJ Motors and
Viper Exchange as sponsors. VNR has already
acknowledged that they provided the vehicles used and
were provided a non-exclusive license to the photographs
at issue.
(Doc. 63, at 1-2.)
Defendants provide the following additional statements in the factual
background portion of their response brief:
Plaintiff’s interrogatory responses indicate that at least
part of the consideration offered for sponsorship was the
Viper vehicles themselves. As of the date of this
response, Plaintiff has not provided copies of any written
agreements with BJ Motors and/or Viper Exchange
related to the sponsorship. Plaintiff has not produced any
correspondence between VNR and these entities related
to the sponsorship or the photographs.
Plaintiff identified these two sponsors as entities
that received a license to use the photographs at issue in
exchange for sponsorship. On a very basic level, this is a
2
similar arrangement to the agreement VNR made with
Defendants. However, Plaintiff has not provided
documents detailing the nature and extent of the
sponsorship and license agreement. In turn, Defendants
sent subpoenas to BJ Motors and Viper Exchange
seeking documents reflecting the terms of the
sponsorship agreement including the value of
consideration exchanged.
(Doc. 68, at 2.)
Plaintiff brings the present motion seeking a Protective Order regarding the
third-party subpoenas Defendants have served on BJ Motors and Viper Exchange.
(Doc. 63.) Plaintiff contends that “[b]ecause the wide-ranging subpoenas served
on BJ Motors and Viper Exchange seek information far beyond that which is
relevant to VNR’s claims or Defendants’ defenses in this case, the Court should
issue a protective order to place reasonable limits on their scope.” (Id., at 2.)
ANALYSIS
A.
Legal Standards for Discovery.
Fed.R.Civ.P. 26(b) states that
[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
3
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).
Discovery relevance is broadly construed. AKH Co., Inc. v. Universal
Underwriters Ins. Co., 13-2003-JAR-KGG, 2015 WL 4523578, at *2 (D. Kan.
July 27, 2015). As such, “discovery should be considered relevant if there is any
possibility the information sought may be relevant to the subject matter of the
action.” Id. “Federal Rule of Civil Procedure 26(c) confers broad discretion on
the trial court to decide when a protective order is appropriate and what degree of
protection is required.” Layne Christensen Co. v. Purolite Co., 271 F.R.D. 240,
244 (D. Kan. 2010) (quoting Seattle Times Co. v. Rhinehart, 467 U.S. 20, 36
(1984)).
Fed.R.Civ.P. 45 governs subpoenas, with section (d) of that Rule relating to
“protecting a person subject to a subpoena” as well as “enforcement.” Subsection
(d)(1) of the Rule states that
[a] party or attorney responsible for issuing and serving a
subpoena must take reasonable steps to avoid imposing
undue burden or expense on a person subject to the
subpoena. The court for the district where compliance is
required must enforce this duty and impose an
appropriate sanction – which may include lost earnings
4
and reasonable attorney's fees – on a party or attorney
who fails to comply.
Subsection (d)(2)(B) relates to objections to subpoenas and states that
[a] person commanded to produce documents or tangible
things or to permit inspection may serve on the party or
attorney designated in the subpoena a written objection to
inspecting, copying, testing, or sampling any or all of the
materials or to inspecting the premises – or to producing
electronically stored information in the form or forms
requested. The objection must be served before the
earlier of the time specified for compliance or 14 days
after the subpoena is served. If an objection is made, the
following rules apply:
(i) At any time, on notice to the commanded
person, the serving party may move the court for
the district where compliance is required for an
order compelling production or inspection.
(ii) These acts may be required only as directed in
the order, and the order must protect a person who
is neither a party nor a party’s officer from
significant expense resulting from compliance.
Subsection (d)(3)(A) requires the District Court to quash or modify a
subpoena that: (i) fails to allow a reasonable time to comply; (ii) requires a person
to comply beyond the geographical limits specified in Rule 45(c); (ii) requires
disclosure of privileged or other protected matter, if no exception or waiver
applies; or (iv) subjects a person to undue burden. Fed.R.Civ.P. 26(c), however,
allows a court to enter a protective order regarding a subpoena to protect a party
5
from annoyance, embarrassment or oppression. Stewart v. Mitchell Transport,
No. 01-2546-JWL, 2002 WL 1558210, at *6 (D. Kan. July 11, 2002).
B.
Disputed Portions of Subpoenas. 1
Both subpoenas include the same requests for production, numbered and
worded identically. As such, the Court will address the various requests as to both
subpoenas.
1.
Modifications to/Work Done on Vipers (Requests 3, 4, 10, 11).
Request No. 3 seeks “[a]ny documents related to any modifications you
performed on the Vipers,” while Request No. 10 asks for documents regarding
prices charged for such modifications. (Doc. 63-1, at 6; Doc. 63-2, at 6.) Requests
4 and 11 seek the same such information as to “work performed on the Vipers” and
related pricing. (Id.) Plaintiff argues that the information is sought only to “annoy
and embarrass not only VNR but also the third party recipients, and may also
prejudice VNR by interfering with its relationship with the third party recipients.”
(Doc. 63, at 5.) Plaintiff also argues that the requests are irrelevant. “The issues to
be tried in this case are whether Defendants had the authority to use the
copyrighted photographs and the damages that flow from any infringement.
1
The Court notes that the parties have resolved their disputes regarding Requests Nos. 1
and 2 and that Requests Nos. 8 and 9 have been withdrawn.
6
Making modifications to a vehicle has no relation to copyright infringement or
damages.” (Id.)
Defendants respond that the information is relevant because it relates
to the conduct of the parties that indeed negotiated for
and received a license to use the photographs in exchange
for sponsorship. Moreover, the information requested is
relevant to the issue of monetary value and consideration
provided to VNR in exchange for the licenses to use
photographs. … Defendants are entitled to seek
discovery on the terms of these agreements, including
consideration exchanged in both monetary form and in
the form of services and/or products provided.
Defendants believe modifications to the vehicles were
additional consideration in exchange for the licenses to
the photographs. Information on the nature, extent, and
value of those modifications and services is relevant to
(1) the terms of the agreements, (2) the value and
consideration of the sponsorship, (3) the value of the
photographs/licenses, and (4) potential damages.
(Doc. 68, at 4.) Defendants continue that because Plaintiff is claiming actual
damages,
Plaintiff may seek compensation for ‘the extent to which
infringement has injured or destroyed the market value of
the copyrighted work at the time of infringement.’ The
market value of the photographs may be estimated based
on what other sponsors were willing to pay for the
photographs or licenses to the photographs. For that
reason, the consideration Plaintiff accepted from other
sponsors for use of the same photographs is evidence of
Plaintiff’s claims for actual damages. Even if Plaintiff
elects statutory damages, the value of licenses is still a
relevant consideration in calculating damages.
(Id., at 5 (citations omitted).)
7
Finally, Defendants contend that the information is relevant to their
affirmative defense of unclean hands. (Id., at 6.) Defendants contend that
“Plaintiff solicited sponsorships from individuals and entities based on this
representation – that a production or ‘stock’ Viper would be used to break the
world record.” (Id.) Defendants further contend that the modifications performed
on the Vipers at issue by third-parties BJ Motors and Viper Exchange were
significant enough to “alter” the cars from “production” or “stock” status, thus
making inaccurate Plaintiff’s representations as to the production status of the car.
(Id.)
Plaintiff replies that the modifications to the cars were related only to safety.
(Doc. 72, at 2.) It contends that prior to the lawsuit, “Defendants threatened to
destroy VNR and its owners’ reputation in retribution for enforcing the terms of
the license,” and that these requests are an extension of that behavior (Id., at 3.)
Those third parties have been dragged into this case for
the purpose of annoying, harassing, and embarrassing
them, and causing damage to their reputations. Calling
VNR and its third-party sponsors cheaters does not make
the requests relevant to (a) determining the scope of
Defendants’ license to use one or more pictures or (b)
calculating damages suffered by VNR as a result of the
alleged infringement.
(Id.)
The Court finds that the information sought by Defendants in Requests 3, 4,
10, and 11 is irrelevant to whether Defendants had the authority to use the
8
copyrighted photographs at issue. Even if tangentially relevant, the information
requested is not proportional to the needs of the case. Defendants have provided
nothing of substance to support their “belief” that the information requested will
establish that Plaintiff was somehow cheating in making safety modifications to
the cars at issue. The information is clearly sought for the purpose of embarrassing
or harassing Plaintiff and/or the third-parties who have been subpoenaed.
Plaintiff’s objections are sustained and Plaintiff’s motion is GRANTED as to
Requests 3, 4, 10, and 11.
2.
Correspondence (Requests Nos. 5, 6, and 7).
Request No. 5 seeks “[a]ll correspondence between you and Oasis related to
modifications to the Vipers, the Vipers themselves, or the world record attempt.”
(Doc. 63-1, at 6; Doc. 63-2, at 6.) Request No. 6 seeks “[a]ll correspondence
between you and VNR.” (Id.) Request No. 7 asks for “[a]ny correspondence
between you and any other person or entity related to modifications to the Vipers,
the Vipers themselves, or the world record attempt.” (Id.)
Plaintiff argues that the requests are not properly limited to correspondence
regarding the photographs at issue. (Doc. 63, at 6, 7.) Defendants respond that
they will limit Requests Nos. 5 and 6 to correspondence relating to “(1) the
photographs at issue, (2) any consideration paid or services rendered in support of
the world record attempt or as part of sponsorship, and (3) the world record
9
attempt.” (Doc. 68, at 7.) Defendants contend the information is relevant and
discoverable because
Plaintiff has already indicated through discovery that the
Viper vehicles may be one form of consideration
provided in the sponsorship agreement. Defendants
believe that the modifications and/or services performed
on the Vipers are still another aspect of these agreements.
Moreover, the modifications information is relevant to
Defendants’ affirmative defense of unclean hands as
discussed above.
(Doc. 68, at 7.) For the reasons discussed in Section 1, supra, Plaintiff’s objections
are sustained and Plaintiff’s motion is GRANTED as to Requests 5, 6, and 7. The
Court, however, finds that correspondence regarding the photographs at issue
should be produced, in accordance with the limitation proposed by Plaintiff – any
correspondence regarding the use of the copyrighted pictures or money paid for
use of the pictures. (See Doc. 63, at 6.)
IT IS THEREFORE ORDERED that Plaintiff’s “Motion for Protective
Order as to Defendants’ Third-Party Subpoenas” (Doc. 63) is GRANTED as set
forth above.
IT IS ORDERED.
Dated this 9th day of January, 2019.
S/ KENNETH G. GALE
Kenneth G. Gale
United States Magistrate Judge
10
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?