Metro Media Entertainment, LLC v. Does 1 - 47

Filing 92

MEMORANDUM OPINION. Signed by Chief Judge Deborah K. Chasanow on 4/30/13. (sat, Chambers)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
:
METRO MEDIA ENTERTAINMENT, LLC
:
v.

:

Civil Action No. DKC 12-0347

:
RICHARD STEINRUCK
:
MEMORANDUM OPINION
Presently
copyright

pending

infringement

and
case

ready
is

an

for

resolution

objection

to

in

a

this

discovery

ruling made by United States Magistrate Judge Charles B. Day on
January 29, 2013 (ECF No. 80), and a motion for leave to file a
second amended complaint (ECF No. 85) filed by Plaintiff Metro
Media Entertainment, LLC.

The relevant issues have been briefed

and the court now rules pursuant to Local Rule 105.6, no hearing
being

deemed

necessary.

For

the

reasons

that

follow,

the

objection will be overruled and the motion will be denied.
I.

Background
Plaintiff commenced this action on February 6, 2012, by

filing a complaint against forty-seven Doe defendants alleged to
have

infringed

its

copyright

in

a

pornographic

film

by

downloading and/or uploading the video over the Internet via a
file-sharing

protocol

called

BitTorrent.

On

the

same

date,

Plaintiff filed a motion for expedited discovery, seeking the

issuance of subpoenas directing internet service providers to
identify

the

addresses.

customers

associated

with

the

infringing

That motion was granted on March 20.

IP

Subsequently,

however, the court severed the forty-seven defendants referenced
in the complaint and dismissed without prejudice all except Doe
1, further directing that “all documents filed in this action
that

contain

Doe

under seal.”
answer

and

1’s

identifying

(ECF No. 17, at 2).
counterclaim

in

which

information

shall

be

filed

Doe 1 responded by filing an
he

publicly

revealed

his

identity as Defendant Richard Steinruck.1
On July 30, 2012, a scheduling order was entered, which
provided, inter alia, a September 13 deadline for moving for
joinder of additional parties and amendment of the pleadings.
(ECF No. 28).

Ten days prior to that deadline, Plaintiff moved

for an extension of time, citing its discovery that “a large
number of copyright infringements have been committed through
Steinruck’s IP address, which will likely require an amendment
of the pleadings in the future.”

(ECF No. 36-2, at 1).

That

motion was denied by a paperless order issued September 13,
albeit “without prejudice to the filing of a later motion for
leave to amend.”

(ECF No. 40).

1

Plaintiff moved to dismiss the counterclaim, and the court
granted that motion by a memorandum opinion and order issued
December 14, 2012.
See Metro Media Entertainment, LLC v.
Steinruck, --- F.Supp.2d ----, 2012 WL 6562774 (D.Md. 2012).
2

Shortly

after

discovery

commenced,

the

parties

became

embroiled in a number of disputes.

On October 14, Defendant

filed

(ECF

a

motion

to

compel

discovery

No.

42),

which

was

denied for failure to comply with Local Rule 104.7 (ECF No. 45).
On

October

22,

Defendant

filed

an

amended

certificate

under

Local Rule 104.7, incorporating by reference the prior motion.
(ECF No. 46).
protective

Nine days later, Plaintiff filed a motion for

order.

(ECF

No.

48).

That

was

followed

by

Plaintiff’s motions to compel (ECF No. 59) and for extension of
the discovery deadline (ECF No. 65).

On November 2, the case

was referred to Judge Day for resolution of all discovery and
related scheduling matters.
Judge Day held a hearing on the pending motions on January
29,

2013.

Following

that

hearing,

he

issued

a

series

of

paperless orders, including, as relevant here, an order granting
in part and denying in part Plaintiff’s motion for protective
order.

(ECF No. 75).

pending

objection

On February 12, Plaintiff filed the

(ECF

No.

80),

which

was

followed

by

Defendant’s opposition papers (ECF No. 83) and Plaintiff’s reply
(ECF No. 89).

On March 15, Plaintiff moved for leave to file a

second amended complaint, seeking to add an additional defendant
and two new causes of action.
opposition on April 1.

(ECF No. 85).

(ECF No. 89).

3

Defendant filed an

II.

Objection to Protective Order Ruling
A.

Standard of Review

Under

28

U.S.C.

§

636(b)(1),

non-dispositive

pretrial

matters may be referred to a magistrate judge for hearing and
determination.

A district judge may modify or set aside any

portion of a magistrate judge’s non-dispositive ruling “where it
has been shown that the magistrate judge’s order is clearly
erroneous
72(a);

or

Local

contrary
Rule

to

law.”

301.5.a.

Id.;
Under

see
the

also

Fed.R.Civ.P.

clearly

erroneous

standard, the reviewing court is not to ask whether the finding
is

the

best

or

only

conclusion

permissible

based

on

the

evidence, nor is it to substitute its own conclusions for that
of the magistrate judge.

See Tri–Star Airlines, Inc. v. Willis

Careen Corp., 75 F.Supp.2d 835, 839 (W.D.Tenn. 1999).

Rather,

the court is only required to determine whether the magistrate
judge’s findings are reasonable and supported by the evidence.
Id.
to

It is not the function of objections to discovery rulings
allow

wholesale

magistrate judge.”

relitigation

of

issues

resolved

by

the

Buchanan v. Consol. Stores Corp., 206 F.R.D.

123 (D.Md. 2002).
B.

Analysis

By an email dated October 13, 2012, counsel for Plaintiff
sent defense counsel a proposed protective order, asserting that
“[t]he depositions of your clients will include personal details
4

that should not be divulged, and the same applies to my client.”
(ECF No. 48-4).
order.

Defense counsel did not consent to the proposed

Nevertheless, in response to Plaintiff’s supplemental

interrogatories

and

requests

for

production

of

documents,

submitted October 20, Defendant objected to multiple requests on
the ground that “[t]his information is sensitive and contact
information will only be disclosed if a protective order is
entered

by

the

Court

calling

information by [Plaintiff].”
Upon

receipt

responses,

of

Plaintiff’s

for

nondisclosure

of

the

(ECF No. 48-6, at 4).

Defendant’s
counsel

sent

supplemental
defense

discovery

counsel

an

email

observing that Defendant had “on multiple occasions refused to
enter

into

a

protective

order,”

and

draft a proposed order to his liking.

suggesting
(Id.).

that

Defense counsel

responded:
Protective orders should be rarely
and then only to protect on a
factual issue, such as someone’s
financial information that is for
eyes only.

entered
specific
personal
attorney

You appear to want a protective order of
broad applicability to prevent anyone from
learning anything about the details of our
pretrial information, and that is not in the
public interest and not designed to satisfy
the requirements of Rule 26.
If you really believe that a protective
order is called for by Rule 26 in this case,
tell me specifically the facts that would
cause annoyance, embarrassment, oppression,
5

counsel

or undue burden or expense for anyone
tell me who the persons are who have
interests that need protection and
factual information you believe fills
requirement.
(Id.

at

3-4).

Defendant’s
order

was

When

discovery
needed,

Plaintiff’s
responses

defense

attorney

indicated

counsel

and
such
what
that

pointed

out

that

that

a

protective

doubled-down

on

his

prior

position: “I have asked – and I think more than once – who the
protective order is to protect and what Rule 26 objective is it
aimed at. . . . Please tell me so I can understand why you think
you need a protective order.”

(Id. at 3).

Plaintiff’s counsel

responded:
I suggested that we agree on a protective
order to make sure that neither Plaintiff’s
nor Defendant’s private information gets
published.
Since you rejected my [prior
proposed] protective order, and refused to
answer
discovery
because
there
is
no
protective order in place, I asked you to
suggest a protective order.
(Id. at 2).

Defense counsel replied, “At this point I do not

anticipate any information being disclosed that would require a
protective order for my client.”
Frustrated
October

31,

by

2012,

these
a

(Id. at 1).

negotiations,

motion

for

“(i)

Plaintiff
an

order

filed,

on

regarding

confidentiality of discovery material and inadvertent disclosure
of privileged material, and (ii) an order allowing disclosure,
pursuant to Defendant’s discovery request, of certain Internet

6

subscribers’

identities

as

‘attorney’s

under confidentiality order.”

eyes’

(ECF No. 48).

only

documents

In an accompanying

memorandum, Plaintiff explained:
Defendant will be taking depositions
and other discovery of Plaintiff and/or
Plaintiff’s
agent
[Copyright
Enforcement
Group] Tek International [“CEG”].
Further,
Defendant
has
served
upon
Plaintiff
additional written discovery demands, at
least one of which (i.e., a third set of
interrogatories) would require disclosure of
Plaintiff’s
confidential
information.
Before
complying
with
such
discovery,
Plaintiff and its agent are in need of an
order protecting the confidentiality of much
of their information.
Furthermore,
because
of
recently
discovered information that an individual[,]
P.S.[,] may be related to the alleged
copyright
infringements
in
intimate
cooperation with Defendant Steinruck, a
protective order will protect the personal
matters of P.S. and Defendant Steinruck, who
has
already
refused
to
make
certain
discovery because of an absence of a
protective order.
(ECF No. 48-1, at 1-2 (internal emphasis removed)).
attached

to

prohibiting

its
the

motion

two

proposed

disclosure

of

protective

confidential

Plaintiff

orders:

one

information

designated by the parties, and another protecting the identities
of the dismissed Doe defendants, which had been requested by
Defendant through discovery.

(ECF Nos. 48-2, 48-3).

In responding to the motion, Defendant argued that “[t]he
objective of the protective order sought by Plaintiff [] is to

7

make sure that discovery information from this case, which is
relevant

and

counterclaims
filing

directly

on

in

cases

other

multi-defendant

John

point
by
Doe

for

effective

pornographic
cases

to

defense

film

extort

and

companies

money

from

innocent citizens, cannot be used by other innocent citizens to
defend themselves in these similar cases.”

(ECF No. 56, at 1).

He asserted that “Jon Nicolini, Vice President of Technology for
[CEG], . . . and a principal declarant of technical information
filed as an exhibit to the Plaintiff’s complaint in at least two
of

these

without

cases,
a

refuses

protective

through

order

that

his
has

attorney
a

to

be

provision

deposed

that

the

information may not be used for any purpose except this suit[.]”
(Id.

at

1-2

Defendant,

(internal

“[i]n

emphasis

refusing

this

removed)).
protective

According
order,

[he]

to
is

attempting to enable similar defendants to defend and/or file a
counterclaim against these companies without requiring extensive
finances and resources which many cannot afford.”
Although

he

disputed

the

“need

for

a

general

(Id. at 2).2
overarching

protective order in this case” (id. at 3), Defendant attached

2

Defense counsel specifically cited a case pending in the
United States Court of Appeals for the D.C. Circuit in which
defense
counsel
represents
the
appellant,
arguing
that
“[e]vidence in the case here will be very relevant to [the D.C.
case] when it is likely reversed and sent back for trial.” (ECF
No. 56, at 2 n. 1).
8

two proposed orders purporting to modify the proposals attached
to Plaintiff’s motion.
At the hearing on January 29, Judge Day initially pressed
Plaintiff’s counsel to identify the information he sought to
protect.

Counsel asserted that an order was necessary because

depositions would reveal the “confidential business processes of
CEG, . . . what the underlying technology is, how it works, what
software is applied, and how it tracks[.]”
When

the

protect

court
the

inquired

interests

as
of

to

why

(ECF No. 84, at 53).

Plaintiff

another

business

was

seeking

entity,

to

counsel

responded, “[b]ecause CEG is the company that actually prepared
the tracking data in this case, . . . [which] relates to the
business of [Plaintiff], because [Plaintiff] has to continue to
protect its copyrights.”
that

there

were

“no

(Id.).

trade

secrets,

[Plaintiff] is concerned with.”
Having

first

argued

in

Plaintiff’s counsel confirmed
things

like

that,

that

(Id.).
favor

of

a

protective

order

to

protect the interests of CEG, Plaintiff next asserted that an
order was necessary to protect Defendant:
[T]his issue of the protective order . . .
ties into two other issues. One of them is
that [Plaintiff is] seeking discovery of
computers.
We have not had access to the
computers of Mr. Steinruck yet.
So we
believe that it is also in the defendant’s
interest to protect information. . . .
Furthermore, since we have now discovered
that there is a particular individual, which
9

I identified as P.S., and it relates to
numerous activities that I would like not to
name at this point in the interest of
decorum.
But, they involve . . . highly
sensitive issues[,] . . . particularly
[insofar as] this individual[,] P.S.[,] is
concerned. So I believe it is very much in
the interest of the defendant to have a[]
protective order in place to ensure that
this information does not become public.
(Id. at 54).
Consistent with the upside-down nature of the proceedings,
Defendant then withdrew his opposition to a protective order:
We are not opposing the insertion of a
protective order.
And the protective order
that
we
attach
to
our
response,
our
opposition, is very similar in most of the
basic, what I will call the boilerplate,
provisions to what [Plaintiff] proposed.
I
have identified in red the difference.
And
if
I
could
hand
the
Court
one
and
[Plaintiff’s counsel] one, it may help us to
discuss it in practical terms, because . . .
I think it boils down to a very simple
question . . . [:] [Plaintiff] does not want
any of this information to be available for
any other purpose to any other party,
including us, if we want to use it for
anything else or if some other lawyer, who
is representing some poor citizen, says I
can’t afford to go to California to take Mr.
Nicolini’s
deposition;
can
I
get
your
deposition.
[Plaintiff] doesn’t want that,
because their premise is to make it very
difficult to defend a case. So all we want
to do is say the protective order will
always be subject to the Court authorizing
use or distribution.
And that’s what we
have done.
(Id. at 55).

10

With

respect

to

the

overriding

issues

presented

by

the

parties, Judge Day ruled as follows:
I think in principle we are saying something
similar now, which is different than my
understanding coming to the bench. I am not
inclined to allow information in this case
to be haphazardly available to other people
in other cases.
And so I think that is
consistent with the plaintiff’s view. And I
also hear it now consistent with the
defense’s view. I think that to the extent
that the Court issues a protective order, it
will be limited to the use in this case
only.
And to the extent that there is
another plaintiff, another day, and another
place that wishes to access any of that
information, they will have to file a motion
with this Court to obtain that information.
And this Court would be in the best position
to balance the interests, the competing
interests, of those involved.
(Id. at 56).
The court then commenced a “line by line discussion” of the
protective

order,

defense counsel.
read,

using

the

(Id.).

“Confidential

red-lined

version

provided

by

Paragraph five of Defendant’s draft

information

shall

not

be

used

or

shown,

disseminated, copied, or in any way communicated to anyone for
any

purpose

authorized

whatsoever,
by

jurisdiction.”
objected

to

this

Court

(ECF
this

except
or

No.

56-2

language

as

provided

another
¶

5).

insofar

for

court

below
of

Plaintiff’s
as

it

or

as

competent
counsel

“contradict[ed]

paragraph number 19,” but otherwise found it “sufficient . . .
[i]f it is only upon a court order[.]”
11

(ECF No. 84, at 57).

Upon

turning

to

paragraph

nineteen,

the

court

agreed

with

Plaintiff that the proposed language was inconsistent and, with
the consent of defense counsel, ordered that the paragraph be
stricken.

(Id.

at

59).

During

a

subsequent

discussion

regarding the procedure for making objections to confidential
designations, Plaintiff’s counsel argued, “we should stick to
the same formula that is provided in the [local] rules.”
at 61).

(Id.

Again, Judge Day agreed: “I am going to require a

modification

of

this

subparagraph

(a).

It

is

to

track

the

sample stipulated order regarding confidentiality of discovery
material under the local rules.

It shall basically cut and

paste subsection 1(d) and all of its subparts.”

(Id. at 62).

To eliminate the risk of any confusion, the court read into the
record the language provided in the relevant subsection of the
local rules.
Plaintiff further objected to the inclusion of Defendant’s
proposed paragraph twenty, which recited:
Notwithstanding
any
provision
of
this
Protective Order, where counsel believe
confidential
information
or
documents,
either on its face or in conjunction with
other information, indicates a violation or
potential violation of law – criminal,
civil, or regulatory in nature – the
relevant information or documents may be
disclosed to the appropriate federal, state,
or local law enforcement authority or other
appropriate
agency
charged
with
the
responsibility
of
investigating
or
prosecuting such a violation or enforcing or
12

implementing such law.
Any information so
disclosed is not subject to the terms of
this Protective Order.
(ECF

No.

56-2

¶

20).

Plaintiff

argued

that

this

paragraph

should be stricken “because it is covered by paragraph 5.”
No. 84, at 69).
to

judicial

The court observed that paragraph five “speaks

actions,”

while

paragraph

nineteen

“is

talking about regulatory and other federal conduct[.]”
69-70).

(ECF

really
(Id. at

Defense counsel then asserted:
I will give you an example, Your Honor. If
Mr. Steinruck found, based on facts, that
[Plaintiff] was somebody who was violating
criminal laws against him, he ought to be
able to go to the FBI, if he wants to,
without having to come to the Court and ask
permission.
That’s basically what this
covers. For example, if somebody had broken
into his house surreptitiously for some
reason or other, you know.

(Id. at 70).

The court agreed with Defendant, stating, “I am

going to leave 20 in.”

(Id.).3

At the conclusion of the in-court editing process, defense
counsel asserted that he would draft a corrected version of the
order, send it to Plaintiff’s counsel for approval, and that it

3

The court previously denied Defendant’s motion to compel
disclosure of information about the Doe defendants, thus
rendering moot the issue of a protective order with respect to
that information. (ECF No. 84, at 34). Nevertheless, Plaintiff
clarified, during the protective order portion of the hearing,
that an order would not be necessary to protect the identities
of the Doe defendants.
The court confirmed that “[t]he
identities of the other Does will not be revealed at this time.”
(Id. at 70).
13

would then be submitted to the court.
upon

the

electronic

filing

of

a

Judge Day asserted that,

stipulated

version

corrected protective order, he would enter the order.

of

the

Following

the hearing, the court entered a paperless order granting in
part and denying in part Plaintiff’s motion.
The

stipulated

protective

order

consequently, an order was never entered.

was

never

filed;

Instead, on February

10, defense counsel filed a request for “discovery assistance”
from Judge Day.

(ECF No. 79).

With respect to the protective

order, the request recites:
[A]t the January 29, 2013[,] hearing[,] you
went over the two versions of the protective
order proposed by counsel and meticulously
orally edited the version handed up to you,
which had the disputed portions highlighted
in red.
When you finished with your
rulings, we had a protective order that
needed only fresh typing to implement the
edits you ordered. I prepared such a clean
copy implementing your orders and sent it to
[Plaintiff] for review and agreement that it
was accurate. . . . [Plaintiff] has refused
to accept the retyped order or act on my
request.
Instead, [Plaintiff] demurred
improperly by suggesting that I confer with
Ira Siegel, counsel for two witnesses in
California whose deposition[s] are planned
for March 12-14 to see if he had changes to
.
.
I
pointed
out
to
suggest.[4].
[Plaintiff’s counsel] that the protective
order was subject to implementation by
4

Mr. Siegel is counsel for the CEG, the entity that
monitors use of Plaintiff’s copyrights.
On February 13, he
filed a motion for admission pro hac vice as counsel for
Plaintiff. (ECF No. 81). That motion was granted the following
day. (ECF No. 82).
14

counsel for the parties, not counsel for
future witnesses.
I have heard nothing in
response.
(ECF No. 79, at 2).
Rather than respond to Defendant’s request, Plaintiff filed
the

pending

First,

he

objection
contends,

two

days

later,

“[u]nfortunately,

raising
and

three

issues.

erroneously,

the

Magistrate Judge approved the wording in [paragraph five of]
Defendant’s version [of the protective order] that states [that]
Confidential Information (including ‘Confidential – Attorney’s
Eyes Only’) can be used or disclosed as allowed ‘by this Court
or another court of competent jurisdiction.’”
1-2

(internal

Furthermore,
approved

the

emphasis,

according
[]

to

wording

marks,

and

Plaintiff,
from

(ECF No. 80, at

citations
Judge

[paragraph]

Day
20

removed)).
“erroneously

of

the

order

proposed by Defendant”:
[T]hat wording, which is not even hinted at
in this Court’s Model Protective Order,
allows Defendant’s counsel to self-servingly
believe
that
confidential
information
“indicates
a
violation
or
potential
violation of law – criminal, civil, or
regulatory in nature” and then the terms of
the Confidentiality Order effectively become
nil at the discretion of Defendant’s counsel
– again, even after this case is terminated.
(Id. at 4 (internal emphasis, marks, and citation omitted)).
Finally, Plaintiff complains that the draft order submitted by
defense counsel “either inadvertently eliminated the protection

15

for ‘Confidential-Attorneys’ Eyes Only’ material that Defendant
had

agreed

worse.”

to

and

was

approved

by

the

Magistrate

Judge,

or

(Id. at 5).

With respect to Plaintiff’s argument concerning the use of
discovery material in other litigation, Defendant contends that
“Judge Day agreed with defense counsel that there may be cases
where

other

defendants

should

be

able

to

have

access

to

discovery information unearthed in this case,” and that “[a]ny
legitimate concern by Plaintiff about the confidentiality of the
evidence being protected from random publicity can be protected
by the protective order approved by Judge Day.”

(ECF No. 83, at

3-4).

twenty

Regarding

the

language

of

paragraph

–

i.e.,

addressing circumstances in which confidential information may
be disclosed to law enforcement – Defendant asserts:
The
provision
allowing
disclosure
of
confidential information covered by this
protective
order
to
law
enforcement
authorities
was
intended
to
permit
cooperation
with
law
enforcement
where
criminal conduct may be involved.
One such
crime, extortion, may be at issue in these
cases[,] particularly where a number of
federal
district
judges
have
already
concluded that there is extortion in at
least
some
of
these
pornographic
film
company copyright cases. . . . Plaintiff’s
suggestion that such a provision would
render
confidentiality
“nil”
is
utter
hyperbole.
Yet, Defendant is willing to
fine tune the language to assure that only a
lawyer would be the one to make such a
disclosure.

16

(Id. at 4-5).
and

Defense counsel acknowledged making “an honest

unintentional

mistake

of

dropping

two

subparagraphs

of

language from the ‘Attorney Eyes Only’ provisions agreed to by
Judge Day when counsel consolidated the rulings . . . into a
clean draft of the protective order[.]”

(Id. at 2).

attached

revised

to

protective

his

opposition

order,

papers

including

a

the

Defendant

copy

of

inadvertently

the

omitted

information.5
Plaintiff’s

arguments

regarding

the

rulings

as

to

paragraphs five and twenty of the proposed protective order were
not presented to Judge Day at the January 29 hearing.

Indeed,

with respect to paragraph five, Plaintiff’s counsel noted his
agreement

as

to

the

wording,

objecting

only

that

there

contradictory language contained in paragraph nineteen.
the

court

agreed

with

this

position,

striking

was
When

paragraph

nineteen, counsel was fully satisfied, and Plaintiff may not now
argue otherwise.

See Maxwell v. South Bend Work Release Center,

No. 3:09-CV-008-PPS-CAN, 2010 WL 4318800, at *2 (N.D.Ind. Oct.
25, 2010) (“Arguments not raised before a magistrate judge and
raised for the first time in the objections filed before the
district judge are waived”) (citing United States v. Moore, 375
5

Upon the court’s direction, Plaintiff filed a reply in
which it did not object to the language contained in the
corrected
version
of
the
protective
order
attached
to
Defendant’s opposition papers. As to all other issues, however,
Plaintiff essentially restated its prior position.
17

F.3d 580, 584 n. 2) (7th Cir. 2004); United States v. Melgar, 227
F.3d

1038,

Plaintiff

1040

(7th

objected

Cir.

to

its

2000)).

As

inclusion

to

to

paragraph

the

extent

twenty,
that

concerned matters already covered under paragraph five.

it

When

Judge Day opined that, in fact, there was a distinction between
the

circumstances

of

disclosure

permitted

under

the

two

paragraphs, Plaintiff’s counsel voiced no further objection.
Even

if

Plaintiff

had

raised

his

objections

before

the

magistrate judge, he has not established that that the decision
to include these paragraphs was clearly erroneous.

Regarding

the extent to which a protective order may be modified to permit
use of protected information in other litigation, the United
States District Court for the Middle District of North Carolina
addressed a similar issue in SmithKline Beecham Corp. v. Synthon
Pharmaceuticals, Ltd., 210 F.R.D. 163, 166 (M.D.N.C. 2002).
court explained:
Courts have the inherent power to modify
protective
orders,
including
protective
orders arising from a stipulation by the
parties.
United Nuclear Corp. v. Cranford
Ins. Co., 905 F.2d 1424, 1427 (10th Cir.
1990),
cert.
denied
sub
nom,
American
Special Risk Ins. Co. v. Rohm & Haas Co.,
498 U.S. 1073, 111 S.Ct. 799, 112 L.Ed.2d
860 (1991); see Jochims v. Isuzu Motors,
Ltd.,
148
F.R.D.
624,
630
(S.D.Iowa)
(collecting cases), modified by, 151 F.R.D.
338 (S.D.Iowa 1993).
Therefore, the fact
that the instant protective order does not
contain
a
clause
allowing
use
of
confidential material in other litigation,
18

The

while not irrelevant, does not bar the Court
from modifying the protective order to allow
such use.
Id.

Here,

exception

the

from

language

the

of

paragraph

prohibition

of

five,

disclosure

providing

of

an

confidential

information “as authorized by this Court or another court of
competent jurisdiction,” is entirely consistent.

Plaintiff’s

primary complaint is that Defendant intends to make discovery
available

to

other

defendants

in

similar

cases.

This

is,

however, “an appropriate goal under the Federal Rules of Civil
Procedure, which are intended to ‘secure the just, speedy, and
inexpensive determination of every action.’”

Deford v. Schmid

Prods. Co., 120 F.R.D. 648, 654 (D.Md. 1987) (quoting Cipollone
v. Liggett Group Inc., 113 F.R.D. 86, 91 (D.N.J. 1986)); see
also Culinary Foods, Inc. v. Raychem Corp., 151 F.R.D. 297, 306
(N.D.Ill.

1993)

(“Collaborative

use

of

discovery

materials

furthers the goal of Rule 1 by eliminating the time and expense
of ‘re-discovery’”).
explained

that

particularly

In Deford, 120 F.R.D. at 654, the court

“[s]haring

appropriate

discovery

where

materials

multiple

individual

may

be

plaintiffs

assert essentially the same alleged wrongs against a national
manufacturer of a consumer product.”
hold

doubly

copyright

true

owner

in

the

asserts

instant

The same reasoning would
case,

substantially

where

similar

claims against scores of individual defendants.
19

a

corporate

infringement

Thus, Plaintiff

cannot show that the magistrate judge’s inclusion of language
permitting disclosure with court approval was clearly erroneous.
Nor has Plaintiff demonstrated that the court’s ruling with
respect

to

the

inclusion

of

paragraph

twenty

–

permitting

disclosure of confidential information to “appropriate . . . law
enforcement authorit[ies]” “where counsel believe[s] . . . [that
it] indicates a violation or potential violation of law” (ECF
No. 56-2 ¶ 20) – was in error.

While Plaintiff appears to have

good cause for concern that this language would permit defense
counsel to disclose confidential information based on his belief
that Plaintiff’s litigation tactics constitute “extortion” (ECF
No. 83, at 4), this court has specifically found otherwise in
this case.

See Metro Media Entertainment, 2012 WL 6562774, at

*4-5 (finding no abuse of process or malicious use of process in
Plaintiff’s use of subpoenas).

To the extent that Defendant

might disclose such information to authorities on that basis, he
does so at his own peril, as he would risk a possible contempt
finding.
Finally, insofar as Plaintiff complains about the omission
of certain language in the draft order submitted by Defendant
for Plaintiff’s approval, there is essentially nothing for the
court to review.

Because the proposed language was never agreed

to, it was never submitted to Judge Day and no order was ever
issued.

Moreover, defense counsel has attached to Defendant’s
20

opposition papers a corrected version of the order, containing
the language that he purports was inadvertently omitted in the
prior draft.

In its reply, Plaintiff does not argue that this

language

inaccurate.

is

Thus,

there

appears

to

be

no

disagreement.
Accordingly, Plaintiff’s objections to Judge Day’s order
granting in part and denying in part Plaintiff’s motion for
protective order will be overruled.
III. Motion for Leave to File a Second Amended Complaint
On March 15, Plaintiff filed the pending motion for leave
to file a second amended complaint, seeking to add Defendant’s
son, Patrick Steinruck, as a defendant in this action and to
raise additional causes of action for secondary infringement and
negligence.

(ECF No. 85-1).

While Plaintiff cites Federal Rule

of Civil Procedure 15(a) as the bases of its motion, it is
undisputed that the deadline for moving for amendment or joinder
of additional parties under the scheduling order expired as of
September 13, 2012.
Plaintiff’s

motion

The practical effect of this point is that
triggers

both

Rule

15(a),

governing

amendments to pleadings, and Rule 16(b), governing modification
of the schedule.
The standards for satisfying these two rules are at odds.
Rule 15(a)(2) provides, in pertinent part, that “leave shall be
freely

given

when

justice

so

requires,”
21

while

Rule

16(b)(4)

states that “[a] schedule may be modified only for good cause
and with the judge’s consent.”

The Fourth Circuit resolved this

tension in Nourison Rug Corp. v. Parvizian, 535 F.3d 295, 298
(4th Cir. 2008):
Given their heavy case loads, district
courts require the effective case management
tools provided by Rule 16. Therefore, after
the deadlines provided by a scheduling order
have passed, the good cause standard must be
satisfied to justify leave to amend the
pleadings.
This result is consistent with
the
rulings
of
other
circuits.
See
O’Connell v. Hyatt Hotels of Puerto Rico,
357 F.3d 152, 154-55 (1st Cir. 2004); Parker
v. Columbia Pictures Indus., 204 F.3d 326,
340 (2d Cir. 2000); S & W Enters. v. South
Trust Bank of Ala., 315 F.3d 533, 536 (5th
Cir. 2003); Leary v. Daeschner, 349 F.3d
888, 906 (6th Cir. 2003); In re Milk Prods.
Antitrust Litig., 195 F.3d 430, 437-38 (8th
Cir. 1999); Sosa v. Airprint Sys., Inc., 133
F.3d 1417, 1419 (11th Cir. 1998).
Rule

16(b)’s

timeliness
filing.
piece

“good

of

amendment

the

cause”
and

standard
the

focuses

reasons

for

on
the

the
tardy

Because a court’s scheduling order “‘is not a frivolous
of

paper,

idly

entered,

which

can

be

cavalierly

disregarded by counsel without peril,’” Potomac Elec. Power Co.
v. Elec. Motor Supply, Inc., 190 F.R.D. 372, 375 (D.Md. 1999)
(quoting

Gestetner

v.

Case

Equip.

Co.,

108

F.R.D.

138,

141

(D.Me. 1985)), a movant must demonstrate that the reasons for
the tardiness of its motion justify a departure from the rules
set by the court in its scheduling order.

22

Thus, the primary

consideration of the court in addressing whether “good cause”
has

been

shown

diligence.

under

Lack

Rule

of

16(b)

diligence

relates
and

to

the

movant’s

carelessness

are

“hallmarks of failure to meet the good cause standard.”

the
West

Virginia Housing Dev. Fund v. Ocwen Technology Xchange, Inc.,
200

F.R.D.

inquiry

564,

is

567

upon

modification.
should end.”

If

(S.D.W.Va.

the

2001).

that

party

focus

party’s

moving

“[T]he
reasons

for

was

not

diligent,

the

of

the

seeking
inquiry

Marcum v. Zimmer, 163 F.R.D. 250, 254 (S.D.W.Va.

1995).
Plaintiff

has

provided

no

explanation

for

its

delay

of

approximately six months after expiration of the deadline for
amendment of pleadings or joinder of additional parties to file
its

motion

for

leave

to

amend.

The

record

reflects

that

Plaintiff learned by September 29, 2012, that Patrick Steinruck
was

living

in

infringement.

Defendant’s

home

on

the

date

of

the

alleged

Nevertheless, it waited well over five months to

seek to add him as an additional defendant, and it has failed to
make

any

showing

of

diligence.

Accordingly,

Plaintiff

has

failed to establish good cause for leave to amend and its motion
will be denied.

This denial will be without prejudice, however,

to Plaintiff’s right to file an amended motion within fourteen
days, addressing the proper standard.

23

IV.

Conclusion
For the foregoing reasons, Plaintiff’s objections to the

magistrate judge’s ruling will be overruled and its motion for
leave to file a second amended complaint will be denied.
separate order will follow.

________/s/_________________
DEBORAH K. CHASANOW
United States District Judge

24

A