Dish Network L.L.C. v. ABC, Inc. et al

Filing 331

MEMORANDUM AND ORDER. For the foregoing reasons, CBS's motion to compel, Docket Entry No. 250, is granted, in part, and denied, in part. On or before October 1, 2014, DISH must produce to CBS the following documents in response to: (1) document request Nos. 15, 16, 17 and 18, in CBS Corporation's Fourth Set of Requests for the Production of Documents, and document request Nos. 1 and 2, in CBS Parties' Fifth Set of Requests for the Production of Documents; and (2) document request No. 5, in ABC's Fifth Request for Production of Documents, document request Nos. 2 and 4, in ABC's Sixth Request for Production of Documents, and document request Nos. 2 and 3, in CB S's Sixth Set of Requests for the Production of Documents. Granting in part and denying in part 250 Motion to Compel. (Signed by Magistrate Judge Kevin Nathaniel Fox on 11/3/2014) (rjm).

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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IN RE: AUTOHOP LITIGATION

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KEVIN NATHANIEL FOX
UNITED STATES MAGISTRATE JUDGE

MEMORANDUM AND ORDER1
12-CV-4155 (LTS)(KNF)

This is an action by DISH Network L.L.C., a satellite television provider, seeking a
declaratory judgment that it is in compliance with its retransmission agreements with CBS
Corporation, CBS Broadcasting Inc., CBS Studios Inc. and Survivor Productions, LLC
(collectively “CBS”). CBS brought counterclaims against DISH Network, L.L.C. and EchoStar
Technologies LLC (collectively “DISH”) for copyright violations, breach of contract and fraud.
Before the Court is CBS’s motion to compel DISH to produce certain documents. DISH
opposes the motion.
CBS’S CONTENTIONS
CBS seeks to compel DISH to produce: (1) internal, non-privileged DISH
communications relating to negotiations with three local network affiliates, Gannett
Broadcasting, Inc., Sinclair Broadcast Group. Inc. and Hoak Media Corp., referencing Prime
Time Any Time (“PTAT”) and AutoHop features allowing subscribers to skip television
commercials when playing back certain recorded programs, and portions of any draft or final
agreements between DISH and any of the three local affiliates relating to PTAT, AutoHop or
commercial skipping. (Ex. 1, CBS Corporation’s Fourth Set of Requests for the Production of

1

This is a redacted version of the September 24, 2014 Memorandum and Order, Docket
Entry No. 309, that was sealed to protect certain commercially sensitive information.

Documents, document request Nos. 15-18, Ex. 2 CBS Parties’ Fifth Set of Requests for the
Production of Documents, document request Nos. 1 and 2)2; (2) viewership tracking data
showing usage of PTAT and AutoHop (Ex. 6, CBS Parties’ First Request for Production of
Documents, document request No. 12)3; (3) DISH documents concerning the value of
distributing CBS programming (Ex. 1, CBS Corporation’s Fourth Set of Requests for the
Production of Documents, document request Nos. 19-22)4; (4) directives and instructions

2

CBS Corporation’s Fourth Set of Requests for the Production of Documents, document
request Nos. 15, 17 and CBS Parties’ Fifth Set of Requests for the Production of Documents,
document request No. 1 state: “All documents concerning any communications discussing or
referencing PTAT or AutoHop that You have had with Gannett[, Sinclair and Hoak Media].”
CBS Corporation’s Fourth Set of Requests for the Production of Documents, document request
Nos. 16, 18 and CBS Parties’ Fifth Set of Requests for the Production of Documents, document
request No. 2 state:
With respect to all draft and final agreements between You and Gannett[, Sinclair
and Hoak Media] where PTAT or AutoHop was discussed or referenced during
negotiations relating to that draft or final agreement, produce the portions of such
documents that relate directly or indirectly to PTAT, AutoHop, or commercial
skipping, including but not limited to provisions sufficient to show any consideration
provided in connection with those services.
3

CBS Parties’ First Request for Production of Documents, document request No. 12

states:
All documents Concerning DISH’s [REDACTED], and all Documents Concerning
[REDACTED] as well as all reports, studies, analyses, or data, including from
periods of time after the [REDACTED], projecting or reporting the quantity or
percentage of DISH subscribers’ enabling or disabling PTAT and/or AutoHop, the
quantity or percentage of the use of PTAT and/or AutoHop; or the use of AutoHop
with regard to specific programs.
4

CBS Corporation’s Fourth Set of Requests for the Production of Documents, document
request No. 19 states: “All documents relating to any analysis, study, survey, research, or
business plan regarding the losses or other business harm DISH would incur if it lost the right to
retransmit the CBS Broadcast Signal to some or all of its subscribers.” CBS Corporation’s
Fourth Set of Requests for the Production of Documents, document request No. 20 states: “All
documents relating to any analysis, study, survey, research, or business plan regarding the losses
or other business harm DISH would incur if it lost the right to retransmit the broadcast signal of
ABC, Fox, or NBC to some or all of its subscribers.” CBS Corporation’s Fourth Set of Requests
(continued...)
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relating to the operation of PTAT and AutoHop ( Ex. 11, ABC Parties’ Fifth Request for
Production of Documents, document request No. 5,5 Ex. 12, ABC Parties’ Sixth Request for
Production of Documents, document request Nos. 2 and 4,6 Ex. 13, CBS Parties’ Sixth Set of
Requests for the Production of Documents, document request Nos. 2 and 3,7); and (5) documents
referring to any harm allegedly caused to DISH by any networks’ refusal to carry television
advertising promoting the Hopper, DISH’s high definition digital video recorder (Ex. 12, ABC

4

(...continued)
for the Production of Documents, document request No. 21 states: “All documents relating to
any analysis, study, survey, research, or business plan regarding the amount DISH would be
willing to pay to retransmit the CBS Broadcast Signal to its subscribers.” CBS Corporation’s
Fourth Set of Requests for the Production of Documents, document request No. 22 states: “All
documents relating to any analysis, study, survey, or research regarding the amount DISH would
be willing to pay to provide CBS content to its subscribers through any alternative distribution
channel, including without limitation any form of video-on-demand, internet streaming, over the
top, or digital distribution.”
5

ABC Parties’ Fifth Request for Production of Documents, document request No. 5
states: “All Documents, including guides and instruction manuals, providing employees or
contractors with directives or instructions on changing PTAT settings after a local station has
stopped or started an affiliation with ABC, CBS, NBC, or Fox.”
6

ABC Parties’ Sixth Request for Production of Documents, document request No. 2
states: “All Documents, including guides and instruction manuals, providing employees or
contractors with directives or instructions on changing PTAT settings when DISH switches from
offering standard-definition PTAT recording to offering high-definition PTAT recording in a
DMA”[designated market area]. ABC Parties’ Sixth Request for Production of Documents,
document request No. 4 states: “All Documents, including guides and instruction manuals,
providing employees or contractors with directives or instructions on changing PTAT settings
for Subscribers who live in zip codes associated with more than one DMA.”
7

CBS Parties’ Sixth Set of Requests for the Production of Documents, document request
No. 2 states: “All documents, including guides and instruction manuals, providing employees or
contractors with directives or instructions on changing PTAT settings when DISH switches from
offering standard-definition PTAT recording to offering high-definition PTAT recording in a
DMA.” CBS Parties’ Sixth Set of Requests for the Production of Documents, document request
No. 3 states: “All documents, including guides and instruction manuals, providing employees or
contractors with directives or instructions on changing PTAT settings for Subscribers who live in
zip codes with more than one DMA.”
3

Parties’ Sixth Request for Production of Documents, document request No. 8,8 Ex. 13, CBS
Parties’ Sixth Set of Requests for the Production of Documents, document request No. 89). CBS
also seeks to compel DISH to add Warren Schlichting as a custodian of electronically stored
information.
CBS contends that documents concerning negotiations and agreements with local
affiliates are relevant [REDACTED] and, consequently, to CBS’s fraud and copyright damages.
CBS asserts that DISH’s interrogatory responses state [REDACTED]. CBS seeks the
data to analyze how often DISH subscribers watch network prime time programming without
commercials. According to CBS, DISH first refused to produce data claiming they were highly
confidential, then took the position that it would not be feasible to produce data by the end of
discovery in a format that CBS’s outside expert could interpret or analyze, then stated it would
be a prohibitively expensive and time-consuming production because the data were regularly
archived in a format that is not readily accessible. CBS contends the data are relevant, and DISH
already submitted a declaration, in opposing ABC’s motion for a preliminary injunction and
ABC’s appeal to the Second Circuit, in which these data were analyzed to support its assertion
that [REDACTED]. Having relied on the data to support its defense, CBS asserts, DISH cannot
now withhold the data on the ground that they are too confidential or too costly to produce, since
any burden was created by DISH through its failure to preserve the data in an accessible format,

8

ABC Parties’ Sixth Request for Production of Documents, document request No. 8
states: “All documents referring to any harm to You allegedly caused by any networks’ refusal to
carry television commercials promoting the Hopper.”
9

CBS Parties’ Sixth Set of Requests for the Production of Documents, document request
No. 8 states: “All Documents requested by the ABC Parties in their Sixth Request For
Production of Documents in In re AutoHop Litigation, No. 12 Civ. 4155 (S.D.N.Y.).”
4

upon having notice that it might be required to produce them. CBS asserts that, if DISH
continues to refuse to produce the requested data on burden grounds, it should be precluded from
using the data to support its defense.
CBS contends that documents concerning the value of distributing CBS programming are
relevant to CBS’s fraud claim and measure of damages, because the damages are based, in part,
on the market value of distributing CBS programming by DISH on an on-demand, commercialfree basis as a result of the release of PTAT and AutoHop. CBS maintains that DISH’s recent
retransmission agreement with ABC confirms that PTAT and AutoHop are part of DISH’s
broader alternative distribution plan.
According to CBS, documents concerning the control DISH exercises over the operation
of PTAT and AutoHop are relevant to whether DISH engages in sufficient volitional conduct
related to the copying of CBS programming. Thus, DISH cannot limit its document response to
“formalized” guides and instruction manuals but must produce all documents containing the
relevant directives and instructions to its employees or contractors.
Moreover, documents referring to any networks’ refusal to carry television advertising
promoting the Hopper are relevant because they are “probative of the harm caused to advertisers
when their advertisements are not seen by consumers,” which is the “same harm CBS alleges
occurs as a result of DISH’s PTAT and AutoHop services being used to watch CBS
programming commercial-free.” CBS contends that “DISH cannot put this allegation at issue
and then deny CBS the opportunity to seek discovery related to it.”
DISH’S CONTENTIONS
DISH contends that it produced to CBS the PTAT and AutoHop usage data upon which it
relied when opposing both ABC and Fox’s motions for a preliminary injunction and
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supplemented those reports in discovery. It asserts that CBS now seeks all DISH’s viewership
data relating to the rate at which DISH subscribers use PTAT and AutoHop. However, DISH
contends, this request is contrary to the parties’ December 7, 2012 electronic discovery order and
the May 13, 2013 amendment to that order excluding from production electronic information
whose preservation requires extraordinary affirmative measures that are not utilized in the
ordinary course of business. According to DISH, PTAT and AutoHop usage data represent a
small part of an enormous data set generated by Hopper devices daily, which is extremely
difficult to store, process and use. [REDACTED] Moreover, to extract the relevant meaning
from the PTAT and AutoHop viewer measurement data requires associating it with other data,
which is a time-consuming and difficult technical and analytical process. DISH contends that
aggregate viewer measurement data are a valuable confidential asset of DISH and subject to
strict privacy laws. As a consequence, only limited responsive data are accessible without resort
to data archives that the parties already agreed shall not be used in this action. Although DISH
makes viewer measurement data available to Rentrak [REDACTED]. CBS cannot establish the
good cause necessary to require production of [REDACTED]. Thus, since DISH does not
[REDACTED] no obligation exists on DISH to produce the data, and any further production
would impose an undue burden and expense on DISH. Furthermore, less burdensome ways exist
to obtain the information because this information was provided to Fox in another suit over
PTAT and AutoHop by way of interrogatory responses, and CBS did not explain why it cannot
proceed in that manner here, or why it needs the data to analyze how often DISH subscribers
watch network programming without commercials. DISH contends that, if the Court grants
CBS’s request, any production of viewer measurement data should be subject to significant
conditions, including that CBS will bear the expense of any such discovery, and only limited
6

access should be provided. Moreover, in light of the time needed to process and provide the
data, the case schedule should be amended. According to DISH, cost-shifting is appropriate and
the data should be placed in a clean room where only experts have access to the data and no one
should be allowed to copy the data. DISH should also be afforded an opportunity to object to
such experts before they receive access to the data to ensure that competitors do not receive
access to it. DISH contends that no basis exists to preclude it from relying on previously created
reports in support of its defense. DISH has not disobeyed any order or acted in bad faith.
DISH asserts that the documents it agreed to produce [REDACTED] are “more than
sufficient.” CBS seeks production of internal discussions of DISH’s negotiations with its
affiliates, while refusing to produce any of its own communications with pay-television
providers about PTAT or AutoHop in connection with retransmission consent negotiations.
According to DISH, CBS cannot have it both ways, claim that a category of documents is not
relevant in the context of its own discovery obligations, yet move to compel that same category
of documents from DISH. Furthermore, CBS’s request for internal communications is unduly
burdensome, requiring careful analysis for work product and attorney-client privilege, making it
time and labor-intensive. DISH’s internal discussions of PTAT and AutoHop after the features
were released have no bearing on whether DISH had a duty to disclose PTAT and AutoHop to
CBS during negotiations of the retransmission agreement. Anything DISH considered paying
internally [REDACTED], as opposed to what DISH paid is irrelevant to calculating damages.
Similarly, requests for documents regarding the amount DISH would be willing to pay to
retransmit CBS’s broadcast signal or distribute CBS content through alternative distribution
channels seem designed to obtain highly-confidential information [REDACTED], impose an
undue burden on DISH and are irrelevant. CBS knows the market value of distributing its own
7

programming commercial-free and on-demand, and it has contracts with other entities
evidencing that market value. CBS’s request for all directives and instructions on changing
PTAT settings, regardless of where they are located, is overly broad, unduly burdensome and
cumulative, since DISH already produced guides and instruction manuals on the workings of
PTAT.
DISH contends that any harm to DISH from the networks’ refusal to air DISH
advertisements promoting Hopper is irrelevant. That is so because the harm to DISH from the
networks’ refusal to air Hopper advertisements has no bearing on the alleged harm to the
networks from consumers using AutoHop to skip commercials belonging to non-party
advertisers that were aired. Moreover, DISH did not allege that it was harmed by the networks’
refusal to air Hopper commercials.
CBS’S REPLY
In its reply, CBS seeks to preclude DISH from relying on the PTAT and AutoHop usage
data going forward in this action based on DISH’s amended opposition to CBS’s instant motion.
Since DISH’s amended opposition, filed without authorization, was stricken from the record, see
Docket Entry No. 292, the Court will not consider CBS’s arguments addressing DISH’s
amended opposition or any exhibits post-dating DISH’s May 2, 2014 opposition to the motion.
CBS also indicates that its request to compel DISH to add Warren Schlichting as a custodian of
electronically stored information is moot.
LEGAL STANDARD
“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any
party’s claim or defense . . . . Relevant information need not be admissible at the trial if the
discovery appears reasonably calculated to lead to the discovery of admissible evidence.” Fed.
8

R. Civ. P. 26(b)(1). The scope of discovery under Rule 26(b) is broad. See Oppenheimer Fund,
Inc. v. Sanders, 437 U.S. 340, 351, 98 S. Ct. 2380, 2389 (1978) (relevant for the purposes of
Rule 26(b) means “any matter that bears on, or that reasonably could lead to other matter that
could bear on, any issue that is or may be in the case”).
On notice to other parties and all affected persons, a party may move for an order
compelling disclosure or discovery. The motion must include a certification that the
movant has in good faith conferred or attempted to confer with the person or party
failing to make disclosure or discovery in an effort to obtain it without court action.
Fed. R. Civ. P. 37(a)(1).
Upon any motion or application involving discovery or disclosure requests or
responses under Fed. R. Civ. P. 37, the moving party shall specify and quote or set
forth verbatim in the motion papers each discovery request and response to which
the motion or application is addressed. The motion or application shall also set forth
the grounds upon which the moving party is entitled to prevail as to each request and
response.
Local Civil Rule 37.1.
“[M]otions to compel under Fed. R. Civ. P. 37 . . . are entrusted to the sound discretion of the
district court.” United States v. Sanders, 211 F.3d 711, 720 (2d Cir. 2000).
APPLICATION OF LEGAL STANDARD
Procedural Deficiencies
CBS’s motion is procedurally deficient because it does not contain a certification that it
has in good faith conferred or attempted to confer with DISH in an effort to obtain discovery
without court intervention, as required by Rule 37(a)(1) of the Federal Rules of Civil Procedure.
Although CBS submitted exhibits demonstrating letters exchanged among counsel in connection
with various discovery requests, such letters are not contemplated by Rule 37, and they place an
unnecessary burden on the Court to ascertain what, if any, efforts have been made by CBS to
confer or attempt to confer with DISH to resolve the discovery issues raised in this motion
9

without court intervention. Moreover, CBS failed to comply with Local Civil Rule 37.1, because
it did not set forth verbatim DISH’s initial responses to its document requests, including DISH’s
initial response to Document Request No. 12, contained in CBS’s First Request for Production of
Documents. However, the Court has reviewed the parties’s submissions on the motion,
including discovery-related communications among counsel. Notwithstanding the procedural
deficiencies and to save time and resources in accordance with Rule 1 of the Federal Rule of
Civil Procedure, the Court will analyze the motion on the merits.
DISH’s Internal Communications Related to Negotiations with Three Affiliates
DISH’s contention that it “has agreed to sufficient production on this subject matter, and
should not be required to produce anything more” is baseless. DISH makes no citation to any
authority for this proposition and does not explain what it means when it states that its
production of external communications with the three affiliates is “more than sufficient.”
Nonprivileged relevant matter must be disclosed, see Fed. R. Civ. P. 26(b)(1), and Rule 26(b)(1)
of the Federal Rules of Civil Procedure does not state or contemplate degrees of sufficiency in
connection with disclosure obligations. Moreover, DISH’s argument that producing internal
communications related to negotiations with three affiliates will “require very careful analysis
for work product and attorney-client privilege, making review and production extremely timeand-labor intensive” is unsupported. DISH does not explain how “very careful analysis for work
product and attorney-client privilege” of its internal communications related to negotiations with
three affiliates differs from any other analysis for work product and attorney-client privilege
which must be performed before documents are disclosed, or why or how such an analysis is
more time or labor intensive than any other analysis for work product and attorney-client
privilege that must be performed before documents are disclosed. Thus, DISH failed to show
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that CBS’s request for DISH’s internal communications on its negotiations with three affiliates
concerning PTAT and AutoHop is unduly burdensome.
DISH is correct that CBS failed to show that its request for internal communications is
relevant to calculating the amount of CBS’s fraud damages. In fact, CBS’s quotation: “‘[Fraud
damages are] computed by ascertaining the ‘difference between the value of the bargain which a
plaintiff was induced by fraud to make and the amount or value of the consideration exacted as
the price of the bargain,’” taken from Lama Holding Co. v. Smith Barney Inc., 88 N.Y.2d 413,
421, 646 N.Y.S.2d 76, 80 (1996) (quoting Sager v. Friedman, 270 N.Y. 472, 481 (1936)),
contradicts directly its argument that the amount DISH was willing to pay, or considered paying
to its affiliates, relates to the amount of CBS’s fraud damages. The measure of damages for
fraudulent inducement to make a contract that otherwise would not have been made “is
indemnity for loss suffered through that inducement. From such damages ‘all elements of profit
are excluded. The true measure of damage is indemnity for the actual pecuniary loss sustained
as a direct result of the wrong.’” Sager, 270 N.Y. at 481. Thus, what DISH was willing to pay
or consider paying to its affiliates is irrelevant to CBS’s fraud damages.
However, DISH’s internal communications concerning negotiations with its three
affiliates are relevant to the determination of copyright statutory damages that CBS seeks in its
counterclaims. See 17 U.S.C. § 504(c). In determining the amount of statutory damages for
copyright infringement, courts consider various factors, including: (1) “the infringer’s state of
mind”; (2) “the expenses saved, and profits earned, by the infringer”; (3) “the revenue lost by the
copyright holder”; (4) “the deterrent effect on the infringer and third parties”; (5) “the infringer’s
cooperation in providing evidence concerning the value of the infringing material”; and (6) the
conduct and attitude of the parties.” Bryant v. Media Right Prods., Inc, 603 F.3d 135, 144
11

(2d Cir. 2010). DISH’s internal communications concerning negotiations with its affiliates are
relevant to the enumerated factors that courts consider when determining copyright statutory
damages, in particular to the alleged infringer’s state of mind, since, in establishing the
appropriate amount of statutory damages to be awarded, CBS has the burden of proving “that
infringement was committed willfully.” 17 U.S.C. § 504(c)(2). Accordingly, DISH’s objections
to CBS’s request for internal communications concerning DISH’s three affiliates, Ganett
Broadcasting, Inc., Sinclair Broadcast Group, Inc. and Hoak Media Corp., are overruled. DISH
must produce those documents to CBS, in response to CBS Corporation’s Fourth Set of Requests
for the Production of Documents, document request Nos. 15, 16, 17 and 18, and CBS Parties’
Fifth Set of Requests for the Production of Documents, document request Nos. 1 and 2.
DISH’s Viewership Tracking Data Showing Usage of PTAT and AutoHop
CBS failed to comply with Local Civil Rule 37.1, because it did not set forth verbatim
DISH’s initial response to document request No. 12 from CBS Parties’ First Request for
Production of Documents. In its memorandum of law, under the subheading “Viewership
Tracking Data Showing Usage of PTAT and AutoHop,” CBS referenced “Req. No. 12 (Second)”
as the document request at issue. However, CBS failed to point to any document request “No.
12 (Second)” in its papers or explain the meaning of “(Second)” appended to “Req. No. 12” in
its motion papers, notwithstanding that the parties use the words “Request No. 12 (Second)” in
their letters to one another. Try as it may, the Court was unable to discern the meaning of
“Request No. 12 (Second).” The Court will assume that “Request No. 12 (Second)” refers to
document request No. 12 from CBS Parties’ First Request for Production of Documents.
Although CBS in its memorandum of law contends that DISH’s objections to CBS’s
document request No. 12 changed over time, CBS did not provide DISH’s initial response to it,
12

only subsequent letters, which show certain discovery-related communications among counsel.
In one of those letters, dated November 18, 2013, DISH stated it stands by its objection to CBS’s
request, without identifying that objection, and it contended that CBS’s request lacks foundation
and seeks work product, inappropriately. In a letter, dated February 4, 2014, DISH contended,
inter alia, that document “Request No. 12 (Second)” is “overly broad and unduly burdensome, as
well as incomprehensibly vague.” DISH asserted that it is impracticable and not feasible to
produce raw data because they are not in a format that CBS’s experts could interpret or analyze.
Moreover, DISH expressed concern that CBS failed to provide sufficient assurance that it would
respect confidentiality with respect to any raw data that may be produced. In a letter, dated
March 25, 2014, DISH contends that it did not need to maintain raw data flowing in from
Hopper set-top boxes reflecting subscriber usage of PTAT and AutoHop in an accessible format
for the ordinary course of its business, because the cost associated with such storage in an
accessible format would be prohibitive.
According to CBS, “[i]n opposing both ABC’s motions for preliminary injunction and
ABC’s subsequent appeal to the Second Circuit, DISH submitted declarations analyzing this
viewership data to support its assertion [REDACTED]. DISH already produced PTAT and
AutoHop usage data it relied upon in support of its opposition to the motions for preliminary
injunction. CBS contends that DISH “already submitted declarations to the Court analyzing this
data,” and no reason exists “why the data that was [sic] used to prepare these analyses is distinct
from, and more confidential than, the remaining raw data sought by CBS.” CBS does not
dispute that producing the requested viewership data would be unduly burdensome, only that
“the asserted burden was created by DISH,” and that the value of the required information
outweighs the burden to DISH. CBS did not address DISH’s objection that document request
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No. 12 is “incomprehensibly vague.”
The Court sustains DISH’s objections that CBS’s document request No. 12 is “overly
broad and unduly burdensome, as well as incomprehensibly vague.” CBS’s document request
No. 12 consists of a seemingly single sentence that is nine lines long and extremely difficult, if
not impossible, to understand. CBS appears to request three categories of items: (1) “All
documents Concerning [REDACTED]; (2) “All Documents Concerning [REDACTED]; and
(3) “all reports, studies, analyses, or data, including from periods of time after the
[REDACTED], projecting or reporting the quantity or percentage of DISH subscribers’ enabling
or disabling PTAT and/or AutoHop, the quantity or percentage of the use of PTAT and/or
AutoHop; or the use of AutoHop with regard to specific programs.”
The first two categories appear to seek all documents concerning all DISH’s decisions on
the [REDACTED]. The first two categories appear to be overly broad in scope, as they do not
contain any time or other limitation, and the content of Vivek Khemka’s deposition transcript
remains unknown to the Court, as it was not submitted by any party on this motion,
notwithstanding the reference to it in describing CBS’s document request No. 12. The third
category is vague, because it is hardly comprehensible, if at all, and what can be discerned to be
requested is overly broad. The third category appears to seek all documents and data, without
any time period or other limitation, “projecting or reporting” certain information about PTAT
and AutoHop users and usage. Although the third category seems to include “periods of time
after [REDACTED], no definite time period is indicated in the request. The convoluted syntax
of CBS’s document request No. 12 makes it difficult, if not impossible, to understand what
exactly is being sought in the third category.
Moreover, the enormous burden and expense that would be imposed on DISH to access
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and process the requested data outweighs any benefit CBS might have from using that data to
refute DISH’s assertion [REDACTED]. Although in its reply CBS focuses on DISH’s changes
in position, with respect to the production in response to document request No. 12 and its
amended opposition to the motion not considered here, CBS does not challenge DISH’s
assertions that: (a) the parties agreed, on May 9, 2013, that they will not be required to search for
“other forms of ESI whose preservation requires extraordinary affirmative measures that are not
utilized in the ordinary course of business,”
see Docket Entry No. 214; and (b) producing the data requested does require extraordinary
affirmative measures that are not utilized in the ordinary course of business. The Court notes
that the parties’ agreement occurred after document request No. 12 had been made by CBS.
However, the portion of the parties’ May 9, 2013 agreement exempting certain electronically
stored information from production was based specifically on Section (6)(a) of the parties’ Joint
Electronic Discovery Submission No. 1, see Docket Entry No. 160, notwithstanding the fact that
the agreed exemption in Docket Entry No. 214 expanded the initial exemption in Docket Entry
No. 160. Given that electronically stored information whose preservation requires extraordinary
affirmative measures that are not utilized in the ordinary course or business is not required to be
produced as per the parties’ May 9, 2013 agreement, document request No. 12 appears to fall
squarely within that category. The Court finds that CBS failed to show that overruling DISH’s
objections, that document request No. 12 from the CBS Parties’ First Request for Production of
Documents is “overly broad and unduly burdensome, as well as incomprehensibly vague,” is
warranted.
DISH Documents Concerning the Value of Distributing CBS Programming
Although CBS contends that the documents requested are relevant to its “fraud
15

damages,” that is not the case: what losses or business harm DISH “would incur if it lost the
right to retransmit the CBS broadcast Signal” or what DISH was willing to pay to retransmit the
CBS signal to its subscribers or to provide CBS content to its subscribers through any alternative
distribution channel, is irrelevant to the issue of fraud damages. That is so because “[t]he true
measure of damage is indemnity for the actual pecuniary loss sustained as a direct result of the
wrong.” Sager, 270 N.Y. at 481. CBS’s request to compel DISH to respond to document
request Nos. 19-22, from its Fourth Set of Requests For the Production of Documents is denied.
Directives and Instructions Relating to the Operation of PTAT and AutoHop
CBS contends that DISH produced only “formalized” guides and instruction manuals,
without providing an explanation of what that term means or submitting a sample to facilitate the
Court’s understanding of what was produced. Notwithstanding, CBS’s document requests do
not include any limitation on the documents to “formalized.” DISH’s assertions of the
determinative issue concerning “direct infringement” and whether documents it produced are
“sufficient to show how PTAT operates” are of no consequence to its obligation to respond to
CBS’s document requests. DISH’s conclusory objections that, “[i]n light of the vast amount of
discovery produced by DISH on the workings of PTAT,” CBS’s requests for additional
documents are “cumulative and unduly burdensome,” are unsupported. DISH failed to explain
why CBS’s requests are unduly burdensome or to describe how they are cumulative. Therefore,
DISH must produce documents in response to: (a) document request No. 5, in ABC’s Fifth
Request for Production of Documents; (b) document request Nos. 2 and 4, in ABC’s Sixth
Request for Production of Documents; and (c) document request Nos. 2 and 3, in CBS’s Sixth
Set of Requests for the Production of Documents.

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Network Refusal to Carry DISH Advertisements
The Court finds that document request No. 8, from ABC Parties' Sixth Request for
Production of Documents, and document request No. 8, from CBS Parties' Sixth Set of Requests
for the Production of Documents, are irrelevant and no documents need to be produced. DISH is
correct that the harm to DISH from the networks' refusal to air Hopper advertisements has no
bearing on the harm to CBS from consumers using AutoHop to skip any non-parties'
commercials that were aired.

CONCLUSION
For the foregoing reasons, CBS's motion to compel, Docket Entry No. 250, is granted, in
part, and denied, in part. On or before October 1, 2014, DISH must produce to CBS the
following documents in response to:
(1)

document request Nos. 15, 16, 17 and 18, in CBS Corporation's Fourth Set of
Requests for the Production of Documents, and document request Nos. 1 and 2, in
CBS Parties' Fifth Set of Requests for the Production of Documents; and

(2)

document request No. 5, in ABC's Fifth Request for Production of Documents,
document request Nos. 2 and 4, in ABC's Sixth Request for Production of
Documents, and document request Nos. 2 and 3, in CB S's Sixth Set of Requests
for the Production of Documents.
SO ORDERED:

Dated: New York, New York
November 3, 2014

KEVIN NA THANIEL FOX
UNITED STATES MAGISTRATE JUDGE

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