Mitchell v. Universal Music Group Inc. et al

Filing 132

MEMORANDUM AND OPINION & ORDER by Magistrate Judge Colin H. Lindsay on 3/30/2018; For the reasons stated above, the Court GRANTS Mitchells motion to compel (DN 83.) No later than 60 days after the entry of this Order, defendants are to supplement their discovery responses in accordance with the Courts opinion. Within 30 days of the entry of this Order, Mitchell may file an attorneys fees bill pursuant to Fed. R. Civ. P. 37(5)(A) and Local Rule 54.4, attaching an invoice detailing the costs of bringing this motion. Under Local Rule 7.1, defendants have 21 days in which to respond; any such response shall address only the reasonableness of Mitchells fee bill.cc:counsel (ARM)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF KENTUCKY
LOUISVILLE DIVISION
CIVIL ACTION NO. 3:15-CV-174-JHM

LEROY PHILLIP MITCHELL,

Plaintiff,

v.
UNIVERSAL MUSIC GROUP INC., et al.,

Defendants.

Memorandum Opinion and Order
Before the Court is an amended motion to compel supplemental discovery responses (DN
83) filed by plaintiff Leroy Philip Mitchell (“Mitchell”). Defendants Andre Young (“Young”),
Lorenzo Patterson (“Patterson”), and Capitol Records, LLC 1 (“Capitol”) collectively responded
on January 31, 2017 (DN 85), and Mitchell replied on February 7, 2017 (DN 86.) For the
reasons stated below, the Court GRANTS Mitchell’s motion to compel.
I. Statement of Facts and Procedural History
Mitchell, a singer, songwriter, and music producer who performs under the name Prince
Philip Mitchell, filed this copyright infringement action against defendants in February 2015.
(DN 1.) Mitchell is the copyright holder of the musical composition “Star in the Ghetto” through
his company, Hot Stuff Publishing. (DN 116, #823.) Shortly after receiving his copyright in
1977, Mitchell entered into a contract allowing a subsidiary of defendant Universal Media Group
Inc. (“Universal”) to record and market a performance of “Star in the Ghetto.” (Id.) The
eventual song, “A Star in the Ghetto,” was recorded by the music group Average White Band
1

Initially, Mitchell named Priority Records, LLC as a defendant instead of Capitol. During the course of this action,
Capitol purchased Priority Records, and was substituted for it. Although Priority Records’s responses to Mitchell’s
discovery requests are at issue here, the Court will refer to it as “Capitol.”

1

and solo artist Ben E. King. (Id.) Mitchell alleges that Young and Patterson, better known by
their professional names of Dr. Dre and MC Ren, respectively, sampled a portion of “A Star in
the Ghetto” when recording the song “If It Ain’t Ruff,” which first appeared on the 1988 album
Straight Outta Compton by Young’s and Patterson’s hip-hop group, N.W.A. (Id. at 824.)
Mitchell claims that he never gave Capitol, Young, or Patterson permission to use portions of his
musical composition “Star in the Ghetto,” and thus filed the instant action for alleged violations
of federal copyright statutes. (Id. at 822, 825.)
In January 2017, Mitchell filed an amended motion to compel (DN 83), requesting that
this Court compel defendants to supplement and/or answer several of his requests for production,
requests for admission, and interrogatories. (DN 83-1, #433.) Mitchell’s main contention was
that defendants had “improperly imposed a three-year limitation on documents and information
provided”; defendants had argued that copyright law only permitted Mitchell to recover damages
for the three years preceding the date of his lawsuit. (Id.; DN 85, #562.) In April 2017,
defendants filed a motion for partial summary judgment (DN 88), seeking, inter alia, to cap
Mitchell’s damages based largely on the same arguments they put forward in their response to
Mitchell’s motion to compel.

Mitchell’s motion to compel remained pending in light of

defendants’ motion for summary judgment. On December 18, 2017, this Court denied the
portion of defendants’ motion regarding a damage cap. (DN 124.)

2

II. Legal Standard
Rule 26(b)(1) defines the scope of and limits on discovery. It provides:
Scope in General. Unless otherwise limited by court order, the scope of
discovery regarding any non-privileged 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 stake 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 the scope of
discovery need not be admissible in evidence to be discoverable.
Fed. R. Civ. P. 26(b)(1). Additionally, “[o]n motion or on its own, the court must limit the
frequency or extent of discovery otherwise allowed by these rules or by local rule if it determines
that:
(i)

(ii)
(iii)

the discovery sought is unreasonably cumulative or duplicative, or can be
obtained from some other source that is more convenient, less
burdensome, or less expensive;
the party seeking discovery has had ample opportunity to obtain the
information by discovery in the action; or
the proposed discovery is outside the scope permitted by Rule 26(b)(1).

Fed. R. Civ. P. 26(b)(2)(C).
Rule 26(e)(1) governs supplementation of a party’s discovery responses. It imposes a
duty of supplementation on a party who has responded to an interrogatory, request for
production, or request for admission. Fed. R. Civ. P. 26(e)(1). The supplementation must be
made “in a timely manner … if the additional or corrective information has not otherwise been
made known to the other parties during the discovery process or in writing; or as ordered by the
court.” Fed. R. Civ. P. 26(e)(1)(A)–(B).
It is axiomatic that the Court has broad discretion in determining the proper scope of
discovery. Chrysler Corp. v. Fedders Corp., 643 F.2d 1229, 1240 (6th Cir. 1981); Naartex
3

Consulting Corp. v. Watt, 722 F. 2d 779, 788 (D.C. Cir. 1983); Hibbs v. Marcum, 2018 WL
953347, at *2 (W.D. Ky. Feb. 20, 2018).
III. Analysis
Mitchell raises three concerns with defendants’ responses – or lack thereof – to his
discovery requests. First, Mitchell argues that defendants have improperly imposed a three-year
limitation on their responses, and he demands that they supplement their responses with “all
responsive documents from [1988] to present.” (DN 83-1, #433.) Second, Mitchell requests that
defendants “supplement any and all incomplete answers and/or responses that lack any
substance.” (Id.) Third, Mitchell requests that the Court order defendants to “produce mutually
agreed upon items,” which include master tapes, distribution agreements, and protocol
documents regarding recording, editing, and production. (Id.) Because the Court has recently
ruled on defendants’ three-year limitation argument in its December 18, 2017 order, it will
address it here first.
A. Pre-February 5, 2012 Financial Documents
1. Three-Year Limitation
In several of its responses to Mitchell’s discovery requests, defendants asserted that his
claims are “subject to a three (3) year statute of limitations, so the financial information
requested is limited to the timeframe of February 5, 2012 until present.” (DN 83-1, #434.)
Capitol asserted this defense, or a variation of it, in Requests for Production Nos. 5–7, 9–12, 22–
24 and Interrogatories Nos. 8, 9, 15; Young asserted this defense or variation of it in Requests for
Production Nos. 5 – 12, 22, 24, and Interrogatories No. 7, 8, 14. (DN 83-2, 465–66, 470, 474–
78, 485–87; DN 83-3, 504–05, 508–09, 513–18, 525–26.) In both the instant motion and his
response to defendants’ motion for partial summary judgment, Mitchell argued that while the
4

Copyright Act provides a three-year statute of limitations, the limitation period begins to run
only when a plaintiff’s claim accrues.

(DN 83-1, #434.)

Sixth Circuit jurisprudence, he

continued, allows for copyright infringement plaintiffs to recover outside of the three-year
window so long as they did not discover the infringement before the commencing of the threeyear period. (Id.) Defendants, on the other hand, had argued that the Supreme Court’s recent
ruling in Petrella v. MGM, 134 S. Ct. 1962 (2014), abrogated any Sixth Circuit precedent
regarding recovery for copyright infringement plaintiffs. (DN 85, #563.)
The undersigned’s decision is straightforward in light of the Court’s December 18, 2017
ruling. There, the Court denied defendants’ motion for summary judgment on the issue of
damages and held that “Petrella does not require the Court to ignore Sixth Circuit precedent that
clearly defines accrual of a copyright claim as occurring when the plaintiff ‘knew of the potential
violation or is chargeable with such knowledge.’ ” (DN 124, #956) (internal citations omitted).
In Petrella, the Supreme Court held that the doctrine of laches could not be used by a defendant
in a copyright infringement case to preclude a claim of damages within the three-year limitations
period. Petrella v. MGM, 134 S. Ct. 1962, 1973 (2014). The Petrella Court made several
observations2 in the course of its decision that called into question the validity of the “discovery
rule.”

In the Sixth Circuit, as in majority of other circuits, the discovery rule starts the

limitations period not at the time of the alleged wrongful act, but when the plaintiff discovers (or
reasonably should have discovered) the injury that forms the basis of the claim. Bridgeport
Music, Inc. v. Rhyme Syndicate Music, 376 F. 3d 615, 621 (6th Cir. 2004). But as the Court
stated, not only have a wide-range of District Courts determined that Petrella did not abrogate
2

Among its observations were, “[a] copyright claim thus arises or accrues when an infringing act occurs,” and “a
successful plaintiff can gain retrospective relief only three years back from the time of suit.” Petrella, 134 S.Ct. at
1969–70.

5

the “discovery rule,” the Supreme Court itself noted the prevalence of the rule in a footnote and
declined to address the issue. (DN 124, #956–57); Petrella, 134 S. Ct. at 1969, n4. Therefore,
the Court denied defendants’ motion for summary judgment and held that Mitchell was not
precluded from recovering damages for any claims that accrued within three-years of the
commencement of his lawsuit (February 2015). (DN 124, #959.)
Thus, if Mitchell is ultimately successful in this action and demonstrates that defendants
have unlawfully infringed his protected copyrights, then he may recover damages dating back to
1988 (the first commercial release of “If It Ain’t Ruff”), regardless of the date of occurrence,
because his claim did not accrue until May 2014. (DN 124, #959.) On this basis, Mitchell’s
discovery requests for financial documents dating back to 1988 (or whatever date he believes
defendants’ first infringing act occurred on) are highly relevant to his claims, and defendants
cannot impose a three-year limitation period on the financial records they produce in discovery.
2. Undue Burden
Defendants raise one last objection to the production of financial documents prior to
February 5, 2012. They argue that it would be “unreasonably burdensome and costly” for them
to produce more than twenty-five years of Capitol’s financial information based “solely on
Plaintiff’s mere statement in his pleading that he did not know about his claims earlier because of
alleged fraudulent concealment by Defendants.” (DN 85, #567.) They proffer that it would take
several weeks of concentrated work to compile a financial report, but given that it is unlikely that
the employees working on the report will be able to do so uninterrupted, defendants estimate it
would take much longer than that. (Id. at 571.) Regarding Young’s royalty statements, his
counsel state that they were required to review and redact over 5,800 pages of statements, and
that this process required a “substantial” number of hours of work. (Id.) On the other hand,
6

Mitchell argues that the requested information “may have a material bearing on issues of
infringement, concealment, and damages,” and he is therefore entitled to its discovery. (DN 86,
#590.)
A party seeking to compel discovery has the burden of demonstrating that the
information sought is relevant. Gruenbaum v. Werner Enterprises, Inc., 270 F.R.D. 298, 302
(S.D. Ohio 2010). But given the broad nature of discovery, it is a low threshold to meet.
Hadfield v. Newpage Corp., 2016 WL 427924, at *3 (W.D. Ky. Feb. 3, 2016). Under Rule 26,
relevance is to be “construed broadly to encompass any matter that bears on, or that reasonably
could lead to other matter that could bear on” a party’s claim or defense.

Id. (quoting

Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)). Even so, District Courts are
obliged to limit discovery when its “burden or expense . . . outweighs its likely benefit, taking
into account the needs of the case, the amount in controversy, the parties’ resources, the
importance of the issues at stake in the litigation, and the importance of the proposed discovery
in resolving the issues.” Siriano v. Goodman Mfg. Co., L.P., 2015 WL 8259548, ) at *5 (S.D.
Ohio Dec. 9, 2015 (citing Surles ex rel. Johnson v. Greyhound Lines, Inc., 474 F.3d 288, 305
(6th Cir. 2007)). Finally, the new proportionality analysis allows consideration of a number of
factors, including the importance of the issues at stake in the action, the amount in controversy,
the parties’ relative access to relevant information, the parties’ resources, and the importance of
the discovery in resolving the issues. Stillwagon v. City of Delaware, 2015 WL 13632426, at * 2
(S.D. Ohio Dec. 11, 2015) (citing Fed. R. Civ. P. 26(b)(1)).
The Court finds that Mitchell has met his burden of showing that the financial
information he seeks is discoverable. Pursuant to 17 U.S.C. §504(b), if he is successful in
7

demonstrating that defendants unlawfully sampled his musical copyright, Mitchell is entitled to
recover “any profits of the infringer that are attributable to the infringement and are not taken
into account in computing the actual damages.” (DN 86, #591.) Mitchell cannot adequately
calculate his statutory damages if he does not have access to defendants’ complete financial
records regarding the song “If It Ain’t Ruff.” Defendants cannot in good faith – and do not
appear to – argue that the financial information Mitchell seeks is not highly relevant to this case.
Instead, they assert that producing all of the requested information would require substantial
hours and expenses. The Court understands that producing a complete financial report for the
years Mitchell requests would cost Capitol employees considerable man-hours that could instead
be spent on more productive company ventures. The Court is also cognizant of the fact that
defendants’ counsel would be required to review tens of thousands of Young’s royalty
statements to properly disclose and redact them. But Rule 26 prohibits disclosure when it would
be unduly burdensome, not when it would be “merely expensive or time-consuming.” Siriano v.
Goodman Mfg. Co., L.P., 2015 WL 8259548, at *5 (S.D. Ohio Dec. 9, 2015) (citing Surles ex
rel. Johnson v. Greyhound Lines, Inc., 474 F.3d 288, 305 (6th Cir. 2007)).
The proportionality balancing test also weighs in Mitchell’s favor. As stated above, the
financial information in question is crucial for Mitchell because he cannot properly calculate his
statutory damages without it. As Mitchell states in his initial disclosures, because of his statutory
right for a share of the profits stemming from “If It Ain’t Ruff,” he will be entitled to what he
believes will be more than one million dollars in damages (for a total of a six million dollar
award) if he prevails. (DN 45, #218.) Capitol’s financial statements and Young’s royalty
statements are, to the best of the Court’s knowledge, not publicly accessible and only in their
8

respective possessions; Mitchell has no access to the financial information he requested other
than defendants producing it during discovery.
Defendants must produce all financial documents that, regardless of date, are responsive
to Mitchell’s discovery requests. Based on the discovery requests made so far, Capitol must
supplement its answers to Requests for Product Nos. 5–7, 9–12, 22–24 and Interrogatories Nos.
8, 9, 15, and Young must supplement his answers to Requests for Production Nos. 5 – 12, 22, 24,
and Interrogatories No. 7, 8, 14.
B. Defendants’ Boilerplate Objections
Next, Mitchell protests to defendants’ frequent use of the attorney-client privilege and
work-product doctrine as objections to many of his discovery requests. (DN 83-1, #446.)
According to Mitchell, Capitol has asserted either of these objections 29 times in its responses,
and Young has asserted both of the privileges 31 times in his. (Id.) But to date, neither Capitol
nor Young have produced a privilege log explaining which documents are responsive but are
being withheld. (Id.) Defendants respond by arguing that there is no need for them to produce
privilege logs because they lodged those objections “out of an abundance of caution,” and that no
documents falling under the scope of those privileges have, as of yet, been found. (DN 85,
#573.) In another section of his motion to compel, Mitchell also objects to the use of the
“proportionality” response used in the majority of defendants’ discovery objections, claiming
that the interrogatories where the proportionality objections were lodged “cut right to the most
rudimentary issues in this case.” (DN 83-1, #442.) Based on the Court’s count, Capitol has
raised the proportionality objection in its discovery responses 39 times, and Young has raised the
same objection 41 times. (DN 83-2; DN 83-3.)
9

Most of the substance – if it is even appropriate to call it that – of defendants’ objections
to several of the discovery requests can be classified as little more than boilerplate.

By

definition, “boilerplate” is “[r]eady-made or all-purpose language that will fit in a variety of
documents.” Boilerplate, Black’s Law Dictionary (7th ed. 1999). Indeed, defendants have
admitted as much with respect to the claims of privilege. (DN 85, #573.) The Eastern District of
Michigan’s recent commentary on boilerplate objections to discovery requests seems especially
apt here: “Defendants’ ‘objections’ to these discovery requests are the typical boilerplate
objections known and detested by courts and commentators – and receiving parties – around the
nation.” Wesley Corp. v. Zoom T.V. Products, LLC, 2018 WL 372700, at *4 (E.D. Mich. Jan. 11,
2018). See also Steed v. EverHome Mortg. Co., 308 Fed. App’x. 364, 371 (11th Cir. 2009)
(noting that boilerplate objections to discovery requests “may border on a frivolous response”);
Burlington Northern & Santa Fe Ry. Co. v. U.S. Dist. Court for Dist. Of Mont., 408 F.3d 1142,
1149 (9th Cir. 2005) (hereinafter “Burlington Northern”) (holding that boilerplate objections to
discovery requests are insufficient to assert a privilege); Janko Enterprises, Inc. v. Long John
Silver’s, Inc., 2013 WL 5308802, at *7 (W.D. Ky. Aug. 19, 2013) (“Unexplained and
unsupported ‘boilerplate’ objections clearly are improper.”) (citations omitted)). The Wesley
Corp. Court prophetically continues, “[t]his court is not the first – nor will it be the last – to
condemn the use of boilerplate objections. Indeed, perhaps the only thing more surprising than
the pervasive reliance on boilerplate is the practice's continued existence in the face of strong and
widespread criticism by federal courts.” Wesley Corp., 2018 WL 372700, at *4. (citations
omitted).

10

Aside from wasting the time of both the Court and the receiving party, boilerplate
objections to interrogatories and requests for production are forbidden by the Federal Rules of
Civil Procedure. Fed. R. Civ. P. 33(b)(4) (requiring objections to interrogatories be made with
specificity); Fed. R. Civ. P. 34(b)(2)(B) (requiring objections to requests for production “state
with specificity” the grounds for objecting to the request); Id. at (b)(2)(C) (“an objection must
state whether any responsive materials are being withheld on the basis of that objection”). Such
“copy and paste” objections often give the impression that the responding party did not take the
serving party’s discovery requests seriously, and that the responding party had already
formulated its replies prior to conducting good faith searches. In addition to violating several
rules of civil procedure, boilerplate objections also violate the ABA’s Model Rules of
Professional Conduct. Model Rules of Prof'l Conduct R. 3.4(d) (“A lawyer shall not. . . . in
pretrial procedure, make a frivolous discovery request or fail to make reasonably diligent effort
to comply with a legally proper discovery request by an opposing party.”).
As the citations above would imply, and as the discussion by the Eastern District of
Michigan makes clear, defendants are far from the only civil litigants to employ such obstructive
responses.

The question becomes, why do lawyers insist on perpetuating this “menacing

scourge”3 on the legal profession? The addiction to boilerplate responses cannot be born out of a
lawyer’s obligation to be a zealous advocate for his or her client4, nor are they (always) the result
of hostility among the parties.5 It is the Court’s view that the persistent use of boilerplate

3

Liguria Foods, Inc. v. Griffith Laboratories, Inc., 320 F.R.D. 168, 170 (N.D. Iowa 2017).
See, e.g., Matthew L. Jarvey, Boilerplate Discovery Objections: How They Are Used, Why They Are Wrong, And
What We Can Do About Them, 61 DRAKE L. REV. 913, 926–27 (2013).
5
In the aforementioned Liguria Foods case from the Northern District of Iowa, Judge Bennett explained at length
that boilerplate objections were still improper even when counsel for both parties had a good working relationship
with each other.
4

11

objections is the result of the tradition or habit of “always” doing things in a certain fashion.
Greenhorn attorneys are taught to practice law in accordance with the traditions and habits of
their senior colleagues, whether that entails writing motions in a certain style or, raising the
“usual” affirmative defenses in every answer or, as pertinent here, reflexively including
boilerplate objects to all discovery requests without thought to whether the objections are
appropriate in the particular case.

Although its origin will probably remain unknown, the

tradition of “preserving objections” by way of boilerplate is undoubtedly the way many lawyers
have “always” responded to discovery requests. It is high time that tradition be ended.
The consequence for lodging objections in such a frivolous fashion is waiver, regardless
if the objection was made as a precautionary measure. Wesley Corp. v. Zoom T.V. Products,
LLC, 2018 WL 372700, at *4 (E.D. Mich. Jan. 11, 2018) (“Lawyers who purport to ‘preserve’ an
objection by including it in a boilerplate statement must be prepared to face the fact that the
result of a substance-free objection is generally [forfeiture].”). In Burlington Northern, the Ninth
Circuit rejected a per se rule that would have deemed a privilege waived if a privilege log was
not filed within 30 days as mandated by Fed. R. Civ. P. 34. Burlington Northern, 408 F.3d at
1149. Instead, the Ninth Circuit set forth a multi-factor test for District Courts to use on a caseby-case basis to determine if waiver applies to a privilege; the factors include the following:
[(1) T]he degree to which the objection or assertion of privilege enables the
litigant seeking discovery and the court to evaluate whether each of the withheld
documents is privileged. . .[(2)] the timeliness of the objection and accompanying
information about the withheld documents. . .[(3)] the magnitude of the document
production; and [(4)] other particular circumstances of the litigation that make
responding to discovery unusually easy. . .or unusually hard.
Id. The Ninth Circuit cautioned that the use of these factors should not be “mechanistic,” but
rather as a means to “forestall needless waste of time and resources, as well as tactical
12

manipulation of the rules and the discovery process.” Id. Although not binding on this Court, in
the absence of relevant Sixth Circuit precedent, the Court finds the Burlington Northern test
helpful in determining whether it should find that defendants have waived any of its privileges.
Applying these four factors to defendants’ over-use of the attorney-client and workproduct privileges, the Court finds that they have waived any objection to the production of
documents based on either of those two doctrines based on Mitchell’s current discovery requests.
The vagueness of defendants’ asserted objections rendered it impossible for both the Court and
Mitchell to determine which responsive documents, if any, were in their possession and
encompassed by the scopes of the attorney-client privilege and work-product doctrine. Indeed,
until they admitted that they knew of no documents that would require the production of a
privilege log, it appears as though Mitchell was under the impression that defendants were
withholding responsive documents. (DN 83-1, #446; DN 85, #573.) Although the objections
were timely, defendants failed to provide any detail whatsoever about the allegedly withheld
documents. The Court is unaware of the amount of documents produced (other than defendants’
counsel’s assertion that they reviewed thousands of financial statements), and there are no
circumstances present in this case that makes responding to discovery unusually easy or difficult.
But most troubling to the Court is the way in which the absence of privileged materials
came to light. Mitchell was forced to file a motion to compel to learn that defendants were not
withholding responsive documents based on either of the two privileges at issue here. Counsel
for defendants signed their names on documents asserting (or at the very least, implying) that
certain responsive materials were being withheld when they knew that no such materials existed
at the time they signed the documents. (DN 83-2, #489; DN 83-3, #528.) In addition to
13

needlessly delaying the discovery in this case, it calls into question whether defense counsel
complied with Rule 26(g). Fed. R. Civ. P. 26(g), 1983 Amendment Advisory Committee Notes
(stating that an attorney has a duty to make a “reasonable inquiry” into the factual basis of his
response, request, or objection).
Regarding defendants’ overuse of the proportionality objection, the Court notes that the
changes to the proportionality analysis that the Court referenced in a previous section do not
allow the objecting party to simply use a boilerplate objection to state that the discovery request
was not proportional. ProCom Heating, Inc. v. GHP Group, Inc., 2016 WL 8203221, at *4
(W.D. Ky. July 8, 2016) (citing Salazar v. McDonald’s Corp., 2016 WL 736213, at *2 (N.D.
Cal. Feb. 25, 2016)). This is precisely what defendants have done here. Not once in the eighty
times defendants claimed that Mitchell’s discovery requests were not proportional did they
bother to explain how they were disproportionate. To highlight one particular example of this,
Mitchell’s Interrogatory No. 11 to Capitol requested that it “[s]tate the factual basis for your
contention that you have not infringed the copyrights of the musical works “Star in the Ghetto”
and/or “A Star in the Ghetto.” (DN 83-2, #467.) Besides objecting based on the attorney-client
privilege and work product doctrine, Capitol stated that the interrogatory was “overly broad and
not proportional to the needs of the Plaintiff’s case.”

(Id.)

It is beyond the Court’s

understanding how hearing Capitol’s explanation of how it did not violate his copyrighted
property is not proportional to his case. In another example, Mitchell’s Interrogatory No. 14
requests the factual bases that support Capitol’s affirmative defenses. (Id. at 469.) Capitol once
again objected by claiming that the proper answer to the question would not be proportional to
Mitchell’s case. (Id.) In their written submission, defendants do not even attempt to explain in
14

its response how Mitchell’s complaints about the overuse of the proportionality objection are, in
its words, “overblown and misleading.” (DN 85, 571.) The only thing “overblown” about these
discovery issues is defendants’ reliance on boilerplate objections.
It is important to note that although defendants have waived any objection to Mitchell’s
current discovery requests based on attorney-client privilege, the work product doctrine, and
proportionality, this waiver does not apply to any future discovery. If the Court allows further
discovery in this case, defendants may still utilize those three objections – provided, of course,
that they amount to more than the boilerplate seen here.
Therefore, the Court finds that defendants have waived any discovery objections based
on attorney-client privilege, work product doctrine, and on the basis that they are
disproportionate to the needs of his case.
C. Incomplete Responses
Aside from the missing financial information and improper use of boilerplate objections,
Mitchell also argues that defendants have not properly responded to several other discovery
requests. (DN 83-1, #441.) More specifically, Mitchell states that a “significant number” of
defendants’ answers “lack substance and/or are incomplete.” (Id. at 444.) He points to several
of Capitol’s discovery responses and several of Young’s that he believes are insufficient. (Id. at
442, 445.) The Court will address Mitchell’s specific concerns in turn.

1. Capitol’s Interrogatory No. 15; Young’s Interrogatory No. 14
Mitchell objects to Capitol’s response to Interrogatory No. 15 and Young’s Response to
Interrogatory No. 14. These interrogatories state:
15

Interrogatory No. 15: State the total number of copies of the musical work, “If It
Ain't Ruff” that have been made by you or licensed by you in any form or format
including any samples of said work.
Interrogatory No. 14: State the total number of copies of the musical work, “If It
Ain't Ruff” that have been made by you or licensed by you in any form or format
including any samples of said work.
(DN 83-2, #480–81; 83-3, #508.) Setting aside defendants’ objections based on the three year
statute of limitations, they state that they have already properly replied to the interrogatories via
“SoundScan computations,” which list the number of the copies sold. (DN 85, #572.) Mitchell
argues that SoundScan computations reveal only sales but not licenses. (DN 83-1, #445.)
Defendants do not dispute this. Conspicuously absent from defendants’ explanation is any
mention of why they did not provide Mitchell with the licensing information he requested or,
alternatively, why producing the licensing information would not be appropriate.

Because

defendants have not provided any objection to Mitchell’s request for licensing information,
Capitol shall supplement its response to Interrogatory No. 15, and Young shall supplement his
response to Interrogatory No. 14; both supplementations shall include information related to the
licensing of “If It Ain’t Ruff.”
2. Capitol’s Request for Production Nos. 14, 15, 20; Young’s Request for Production Nos. 14,
15, 17.
Next, Mitchell objects to defendants’ responses – or lack thereof, he claims – to several
of his requests for production. These requests are as follows:
REQUEST FOR PRODUCTION NO. 14: Please produce all documents or
other tangible items that relate to, pertain to, or represent Defendant's alleged
copyright ownership rights and/or licenses of exclusive rights under U.S.
Copyright law with respect to any copyrighted sound recordings and/or
underlying musical works included in the musical work "If It Ain't Ruff '
including, but not limited to, any Certificates of Copyright Registration and the
applications therefore.
16

REQUEST FOR PRODUCTION NO. 15: Please produce all correspondence or
other documents relating to communications to or from you, your successors,
your predecessors, your agent(s), your employees, and/or your representative(s),
relating to the creation, production, copyright registration, distribution and/or
exploitation in any form or format of any and all versions of the song entitled "If
it Ain't Ruff."
REQUEST FOR PRODUCTION NO. 20: Please produce all documents
relevant or relating to, licensing, assignment, transfer, or conveyance of any rights
in the musical work, "If It Ain't Ruff."
REQUEST FOR PRODUCTION NO. 14: Please produce all documents or
other tangible items that relate to, pertain to, or represent Defendant's alleged
copyright ownership rights and/or licenses of exclusive rights under U.S.
Copyright law with respect to any copyrighted sound recordings and/or
underlying musical works included in the musical work "If It Ain't Ruff '
including, but not limited to, any Certificates of Copyright Registration and the
applications therefore.
REQUEST FOR PRODUCTION NO. 15: Please produce all correspondence or
other documents relating to communications to or from you, your successors,
your predecessors, your agent(s), your employees, and/or your representative(s),
relating to the creation, production, copyright registration, distribution and/or
exploitation in any form or format of any and all versions of the song entitled "If
it Ain't Ruff."
REQUEST FOR PRODUCTION NO. 17: Please produce all correspondence,
communications, and/or written documents between you and the U.S. Copyright
Office concerning the registration and subsequent licensing of the song, "If It
Ain't Ruff."
(DN 83-2, #479–81, 484; DN 83-3, #519–21.) Mitchell argues that defendants’ collective
production of a two page spreadsheet (entitled “Special Markets/Licensing”) is insufficient
because it does not provide any details about underlying licensing agreements, but rather merely
relays that they received “sampling income” from Frankie J.’s song “Just Can’t Say It’s Love.”
(DN 83-1, #445.) Mitchell states that the requested information is necessary for his case because
“every licensing agreement for use of the sample is an infringement,” and because he cannot

17

“properly determine the total amount of actual damages” without it. (Id. at 445–46.) Defendants
reply by asserting that Mitchell’s complaints are “unfounded” because they have already
produced all of the requested documents that they had in their possession. (DN 85, #573.) In
their email response to Mitchell regarding these particular discovery requests, defendants explain
that “due to the time that has passed,” neither Young nor Capitol have any of the documents in
their possession. (DN 83-5, #552.)
Yet there is a fundamental flaw in defendants’ argument: the only document they have
produced so far (according to Mitchell) is a spreadsheet summarizing, potentially among other
things, sampling income from the song “Just Can’t Say It’s Love.” (DN 83-1, #445.) But the
Court is highly doubtful that the only document in defendants’ collective possession responsive
to these requests is a two page spreadsheet summarizing one licensing agreement. Defendants
may not obfuscate underlying documents by producing a spreadsheet summarizing their contents
and then claim that they do not have any other documents in their possession. Nor may they hide
relevant documents by using the phrase “readily available” to impose limitations on themselves
with regards to searching for documents. (DN 83-2, #480.) Defendants, however, state that
subsequent to the filing of Mitchell’s motion to compel, they located additional royalty
statements and another license agreement. (DN 85, #573.) The Court will assume that in over
the year since Mitchell filed this instant motion, defendants have produced those additional
documents.
Defendants shall conduct a reasonable search and produce the documents, including the
licensing agreement for “Just Can’t Say It’s Love,” underlying the information within the two
page spreadsheet. If they cannot locate the source of the underlying information, they shall
18

affirmatively state as such, but if this is the case, they shall explain – to the best of their
knowledge – where the information came from. But if they do find the underlying documents,
then they shall explain why their earlier searches did not turn up the documents.
D. Production of Agreed-Upon Documents
Finally, Mitchell asserts that defendants have agreed to produce certain documents, but at
the time of the filing of his motion (January 20, 2017), they have not yet done so. (DN 83-1,
#448.) Defendants assert that Mitchell’s request is “needless and not the proper subject of a
motion to compel.” (DN 85, #574.) Given the length of time that has passed since the motion to
compel was filed, it is unclear to the Court if these documents have been produced or not.
IV. Conclusion
For the reasons stated above, the Court GRANTS Mitchell’s motion to compel (DN 83.)
It is the Court’s hope that this Order is the first step in what will likely be a long process of
eliminating the usage of boilerplate objections in this District.
V. Order
No later than 60 days after the entry of this Order, defendants are to supplement their
discovery responses in accordance with the Court’s opinion. Within 30 days of the entry of this
Order, Mitchell may file an attorneys’ fees bill pursuant to Fed. R. Civ. P. 37(5)(A) and Local
Rule 54.4, attaching an invoice detailing the costs of bringing this motion. Under Local Rule
7.1, defendants have 21 days in which to respond; any such response shall address only the
reasonableness of Mitchell’s fee bill.

Any broader objection to the ruling herein must be

contained in an objection to this Order, pursuant to Local Rule 72.2. An agreement between the
parties on the issue of fees obviates the need for Mitchell to file a motion.
19

Colin Lindsay, MagistrateJudge
United States District Court
cc: Counsel of record

20

March 30, 2018