Hahn v. Hunt et al

Filing 44

ORDER AND REASONS re 24 Motion to Quash or Alternatively, Motion for Protective Order ; re 28 Motion to Compel Compliance with Subpoenas to Alexander Ellsworth, and, in the Alternative, Motion for Contempt as set forth in document. Signed by Magistrate Judge Joseph C. Wilkinson, Jr on 4/20/2016. (my)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
P. J. HAHN

CIVIL ACTION

VERSUS

NO. 15-2867

MICHAEL HUNT ET AL.

SECTION “G” (2)

ORDER AND REASONS ON MOTIONS
This is a copyright infringement case. It was originally filed in state court and
removed to this court based upon federal question jurisdiction. In this case, plaintiff P. J.
Hahn alleges that defendants, artist Michael Hunt and two of his corporate entities
(hereinafter collectively “Hunt”), used Hahn’s copyrighted photographs of “various native
shorebirds,” Record Doc. No. 1-1 at ¶ IV, to produce and profit from certain
print/lithographs allegedly marketed by Hunt through Ducks Unlimited without obtaining
permission to use plaintiff’s copyrighted material.
Two motions are pending before me. Both are related to subpoenas and a deposition
notice seeking testimony and production of documents and electronically stored
information from Alexander Ellsworth, an individual named by Hunt as a witness, Record
Doc. No. 19 at p. 2, but who is not a party to this litigation.

The motions are

(1) Ellsworth’s Motion to Quash or, Alternatively, for a Protective Order, Record Doc. No.
24, and (2) Defendants’ Motion to Compel Compliance with Subpoenas and, Alternatively,
for Contempt, Record Doc. No. 28. Movant submitted a supplemental memorandum,
Record Doc. No. 35, and both sides filed written opposition memoranda. Record Doc. Nos.

37 and 38. Movant was permitted to file a reply memorandum. Record Doc. Nos. 39, 40,
41. Oral argument was conducted on April 20, 2016.
Although the current dispute is obviously limited to that which is pending before this
court, it is informed by the fact that those involved have also been engaged in two separate
state court actions. It is clear from the records of these state court actions attached to
Ellsworth’s motion, Record Doc. No. 24-5 - 24-17, that those proceedings have been
vitriolic and virulently litigated. Those state court actions have nothing legally and little
factually to do with this federal copyright infringement claim.
Having considered the record, the written submissions of the parties, the oral
argument of counsel, and the applicable law, IT IS ORDERED that Ellsworth’s motion
is GRANTED as to the subject subpoenas. For the following reasons, the subpoenas are
quashed, and Ellsworth’s deposition and document production, if any, will be subject to the
court’s protective and modification order contained herein. Defendants’ motion is
DENIED in all respects, except that it is GRANTED IN PART insofar as it seeks an order
scheduling Ellsworth’s deposition.
Third-party subpoenas “‘are discovery devices which, although governed in the first
instance by Rule 45, are also subject to the parameters established by Rule 26.’” Garvin
v. S. States Ins. Exchg. Co., No. 1:04cv73, 2007 WL 2463282, at *5 n.3 (N.D. W. Va. Aug.
28, 2007) (quoting In re Application of Time, Inc., 1999 WL 804090, at *7 (E.D. La. Oct.
6, 1999), aff’d, 209 F.3d 719, 2000 WL 283199 (5th Cir. 2000)); accord Martin v. Oakland
Cnty., No. 2:06-CV-12602, 2008 WL 4647863, at *1 (E.D. Mich. Oct. 21, 2008) (citing
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Fabery v. Mid-South OB-GYN, No. 06-2136, 2008 U.S. Dist. LEXIS 39679, at *3-5 (W.D.
Tenn. May 15, 2008), and cases cited therein).
The parameters established by Rule 26 are that permissible discovery extends only
to that which is non-privileged, relevant to claims and defenses in the case and within the
applicable Rule’s proportionality limits, regardless whether those limits arise from the
indistinguishable standards of Fed. R. Civ. P. 26(b)(1) and (b)(2)(C) as they existed at the
time this case was filed or in those same Rules as presently configured. Proportionality
analysis includes consideration of factors including the importance of the issue at stake, the
amount in controversy, the parties’ relative access to 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.
Scholarly evaluation of the Federal Rules and the impact of inclusion of the
proportionality concept within Rule 26(b)(1)’s threshold scope of discovery indicate “that
non-parties have greater protections from discovery and that burdens on non-parties will
impact the proportionality analysis.” E. Laporte and J. Redgrave, A Practical Guide to
Achieving Proportionality Under New Federal Rule of Civil Procedure 26, 9 Fed. Cts. L.
Rev. 57 (2015).
Rule 45[(d)(1)] affords non-parties a higher protection in terms of the
burden that can be imposed upon them and states that the “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.” Indeed, when analyzing the costs and benefits of a production by
a non-party in Guy Chem. Co. v. Romaco AG, [243 F.R.D. 310, 313 (N.D.
Ind. 2007)], the court stated that “[t]he most crucial factor . . . is the fact that
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[the producing party] is a non-party.” Although the court eventually ordered
production, it was conditioned upon plaintiff paying the entire cost. Other
courts have imposed similar conditions based on their reluctance to impose
significant costs of litigation onto a non-party. Rule 45[(d)(1)] also
commands the court to “enforce this duty [to not impose an undue burden or
expense upon a non-party] and impose an appropriate sanction” upon the
requesting party.
Id. at pp. 57-58 (footnotes omitted). Both Rules 45 and 26 authorize the court to modify
a subpoena duces tecum when its scope exceeds the boundaries of permissible discovery
or otherwise violates the parameters of Rule 45. Fed. R. Civ. P. 45(d)(3); 26(c)(1)(D).
Ellsworth’s request for a protective order is governed by Fed. R. Civ. P. 26(c)(1),
which provides in pertinent part: “A party or any person from whom discovery is sought
may move for a protective order . . . The court may, for good cause, issue an order to
protect a party or person from annoyance, embarrassment, oppression, or undue burden or
expense, including . . . specifying terms, . . . for the . . . discovery.” The requirement “of
a showing of good cause to support the issuance of a protective order indicates that ‘[t]he
burden is upon the movant to show the necessity of its issuance, which contemplates a
particular and specific demonstration of fact as distinguished from stereotyped and
conclusory statements.’” In re Terra Int’l, Inc., 134 F.3d 302, 306 (5th Cir. 1998) (quoting
United States v. Garrett, 571 F.2d 1323, 1326 n.3 (5th Cir. 1978)); see also United States
v. Talco Contractors, Inc., 153 F.R.D. 501, 513 (W.D.N.Y. 1994) (“Good cause must be
established and not merely alleged.”).

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Evaluating defendants’ subpoenas1 against these standards leads to the conclusion
that the requests to Ellsworth to produce the broad array of materials sought in the
subpoenas are excessive, seek much that is not relevant to the claims and defenses in this
copyright infringement case, including possibly privileged communications between
Ellsworth and his attorneys, and are beyond what is necessary and beneficial to resolution
of this case, which is exclusively a copyright infringement case. For example, all three
numbered requests for production seek all materials of all kinds relating to Hunt and all
“artwork created by” Hunt, without limitation to the particular allegedly copyrighted
photographs and print/lithographs for Ducks Unlimited that are the actual subject of the
parties’ claims and defenses in this lawsuit. In addition, the logistical requirements of the
subpoena duces tecum and “Notice of Records Deposition” were unreasonable. The
subpoena duces tecum and “Notice of Records Deposition” provided only 10 days for
production of the requested materials from the date of the request, Record Doc. Nos. 24-3
at pp. 1, 4-5, when Fed. R. Civ. P. 34 provides for 30 days for responses to requests for
production between parties. In short, the subpoenas are objectionable on their face because
they exceed the scope of permissible discovery.
The claims and defenses and proportionality focus of this case are limited to the
narrow transactions asserted in the pleadings; specifically, the petition originally filed in
state court, Record Doc. No. 1-1, and the answer, Record Doc. No. 5. They include the
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One of defendants’ discovery devices used against Ellsworth is a “Notice of Records
Deposition.” Record Doc. No. 24-3. Discovery in this case is governed by the Federal Rules of Civil
Procedure, which contain no such discovery device.

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particular photographs as to which plaintiff alleges copyright interests; the specifically
described joint venture among the parties and Ducks Unlimited; the particular
print/lithographs produced by Hunt for the alleged joint venture; the alleged “contract to
obtain legal permission” from plaintiff for use of his photographs, Record Doc. No. 1-1 at
¶ IX; the “part of the” $246,000 settlement between Hunt and Ducks Unlimited in February
2015 concerning the print/lithographs as to which plaintiff claims copyright infringement,
id. at ¶¶ X, XI; and the facts and circumstances underlying the affirmative defenses asserted
by Hunt in the answer. They do not include the claims, defenses or subject matter of the
separate state court lawsuits. As to proportionality specifically, although the parties’
resources appear more or less equivalent, Ellsworth is not a party to this action. The
importance of his testimony as a non-party witness and his relevant materials, if any, is
limited to the matters set out above and does not extend to the vast range of materials
sought in defendants’ subpoena duces tecum or the subject matter of the state court
litigation. The potential for burden, annoyance and oppression appears substantial, in light
of the vast scope of the discovery requests served upon Ellsworth by defendants and the
nature and manner in which the separate state court litigation has been waged. The amount
in controversy appears limited to some portion of $246,000.
Accordingly, IT IS ORDERED that Ellsworth’s motion is granted in that the
subpoenas and deposition notices that are the subject of these motions are QUASHED. The
subpoena duces tecum to Ellsworth is hereby MODIFIED to require that he must produce
to defendants only those non-privileged materials in his possession, custody or control,
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excluding communications between him and his counsel, concerning the particular
photographs as to which plaintiff alleges copyright interests; the specifically described joint
venture among the parties and Ducks Unlimited; the particular print/lithographs produced
by Hunt for the alleged joint venture’ the alleged contract to obtain legal permission from
plaintiff for use of his photographs by Hunt and/or Ducks Unlimited; and the February
2015 settlement between Hunt and Ducks Unlimited concerning the particular
print/lithographs as to which plaintiff claims copyright infringement, but only insofar as
such materials reflect or make reference to any claim of copyright protection or noncopyright application or to plaintiff’s alleged right or claim to receive any part of the
settlement amount paid to Hunt by Ducks Unlimited.
IT IS FURTHER ORDERED that Ellsworth’s motion for a protective order is
GRANTED in that his oral deposition testimony is limited to the topics and materials set
out in the preceding paragraphs of this order. I find that the state court materials attached
to the motion and the vast scope of Hunt’s discovery requests sent to Ellsworth establish
good cause to limit the topics about which Ellsworth may be questioned at his deposition,
to avoid annoyance and oppression. Questioning during Ellsworth’s deposition concerning
the claims, defenses and subject matter of the state court litigation referenced in the motion
papers, including particularly any topics which the state courts have ruled are not
discoverable in those actions, is specifically PROHIBITED.
IT IS FURTHER ORDERED that Ellsworth’s motion is GRANTED insofar as it
seeks an award of some yet-to-be-determined reasonable attorneys’ fees and expenses
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incurred in connection with this motion. If Ellsworth seeks to recover, however, he must
file a separate motion to set the amount of the award, noticing it for submission so that
defendants may have an opportunity to oppose it, attaching all necessary proof and in
compliance with Local Rule 54.2, no later than April 29, 2016.
For the same reasons set out above, defendants’ motion is GRANTED only IN
PART in that (1) Ellsworth must produce to defendants, no later than April 29, 2016, all
materials in his possession, custody or control, but limited to the court’s modification of
the subpoena duces tecum set out above; and (2) Ellsworth must appear for his deposition
and provide testimony, limited as provided in the protective order set out above. Counsel
must confer immediately to schedule Ellsworth’s deposition at a date, place and time
convenient for the witness, but the deposition must take place any day during the week of
May 2, 2016. No later than April 25, 2016, counsel must submit to me a letter, which I
will file in the record, setting out the agreed-upon details of the deposition. Counsel may
vary the logistical details of the deposition, but only upon written stipulation filed in the
record. If no agreement is reached, the court will issue an order setting the deposition on

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a date, time and place convenient for the court. In all other respects, defendants’ motion
is DENIED.

20th
New Orleans, Louisiana, this _________ day of April, 2016.

JOSEPH C. WILKINSON, JR.
UNITED STATES MAGISTRATE JUDGE

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