A.V.E.L.A., Inc. v. The Estate of Marilyn Monroe, LLC et al

Filing 110

ORDER re: 95 MOTION for Reconsideration re; 79 Order on Motion for Sanctions. filed by A.V.E.L.A., Inc., Leo Valencia. For the reasons discussed above, the February 24, 2014 order stands. This resolves the motion for reconsideration (Docket no. 95). (Signed by Magistrate Judge James C. Francis on 4/11/2014) Copies Mailed By Chambers. (djc)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
- - - - - - - - - - - - - - - - - -:
A.V.E.L.A., INC.,
: 12 Civ. 4828 (KPF) (JCF)
:
Plaintiff,
:
MEMORANDUM
:
AND ORDER
- against :
:
THE ESTATE OF MARILYN MONROE,
:
BIOWORLD MERCHANDISING, and DOES
:
1 THROUGH 10,
:
:
Defendants.
:
- - - - - - - - - - - - - - - - - -:
THE ESTATE OF MARILYN MONROE and
:
BIOWORLD MERCHANDISING,
:
:
Counter Claimants, :
:
- against :
:
A.V.E.L.A., INC. and LEO VALENCIA, :
:
Counter Defendants. :
- - - - - - - - - - - - - - - - - -:
JAMES C. FRANCIS IV
UNITED STATES MAGISTRATE JUDGE
Leo Valencia has applied for reconsideration of my February
24, 2014 Memorandum and Order, granting the motion to compel filed
by the defendant, the Estate of Marilyn Monroe (the “Estate”). See
A.V.E.L.A., Inc. v. Estate of Monroe, No. 12 Civ. 4828, 2014 WL
715540 (S.D.N.Y. Feb. 24, 2014).

For the following reasons,

reconsideration is granted, but I adhere to my prior determination.
Background
In its Motion for Sanctions for Discovery Misconduct and to

1

Compel Discovery, the Estate outlined what it contended constituted
grave misconduct on the part of AVELA and Mr. Valencia in evading
discovery obligations.

The primary thrust of the motion was to

preclude AVELA from offering evidence relating to (1) documentation
supporting any claims of intellectual property ownership in Marilyn
Monroe images and (2) elements of cost in deduction with respect to
the Estate’s disgorgement of profits remedy.

As an alternative,

the Estate sought production of the evidence in dispute, as well as
documentation of the counter-defendants’ licensees, both foreign
and domestic.

(Memorandum of Law in Support of Defendant/Counter-

Plaintiff the Estate of Marilyn Monroe, LLC’s Motion for Sanctions
for Discovery Misconduct and to Compel Discovery (“Counter-Pl.
Memo.”) at 21-22).

The Estate also sought additional sanctions

under

pursuant

Rule

37

and

to

the

Court’s

inherent

power.

(Counter-Pl. Memo. at 22-24)
On February 24, 2014, I issued a Memorandum and Order, largely
granting the Estate’s motion to compel, although declining to
preclude evidence or order other sanctions. AVELA, 2014 WL 715540,
at

*10.

I

observed

that,

several

hours

before

filing

their

opposition to the motion, the counter-defendants produced several
of the requested categories of discovery, including artist files,
copyright deposit materials, copies of checks from AVELA to V
International, and a printout of the website www.radio-days.info
2

including

images

offered

for

licensing.

Id.

at

*4.

After

determining that preclusion was unwarranted at this stage in the
litigation, I ordered the counter-defendants to produce: a list of
worldwide licensees; a list of all financial institutions where
AVELA or Mr. Valencia maintained accounts, including accounts in
the name of other business entities; the underlying financial
records

demonstrating

revenues,

sales,

costs,

and

deductions

associated with Marilyn Monroe artwork (including new copies of the
recently produced checks); and any further documentation supporting
their claims of intellectual property in the Marilyn Monroe images
AVELA offered for licensing.

Id. at *10.

As the motion to compel

had been granted, I also required the counter-defendants to bear
the Estate’s costs associated with the motion.

The counter-

defendants were ordered to comply within thirty days of the date
that the discovery stay then in place was lifted.

On March 14,

2014, plaintiff’s newly-retained counsel filed this motion for
reconsideration.
Discussion
A.

Legal Standard

A motion for reconsideration is governed by Rule 6.3 of the
Local Rules of the United States District Courts for the Southern
and Eastern Districts of New York and is committed to the sound
discretion of the court.

Idowu v. Middleton, No. 12 Civ. 1238,
3

2013 WL 371657, at *1 (S.D.N.Y. Jan. 31, 2013). “‘The standard for
granting

such

generally

be

a

motion

denied

is

unless

strict,
the

and

moving

reconsideration
party

can

will

point

to

controlling decisions or data that the court overlooked -- matters,
in other words, that might reasonably be expected to alter the
conclusion reached by the court.’”

Space Hunters, Inc. v. United

States, 500 F. App’x 76, 81 (2d Cir. 2012) (quoting Shrader v. CSX
Transportation, Inc., 70 F.3d 255, 257 (2d Cir. 1995)). Generally,
reconsideration “requires ‘an intervening change of controlling
law, the availability of new evidence, or the need to correct a
clear error or prevent manifest injustice.’” Capitol Records, Inc.
v. MP3tunes, LLC, No. 07 Civ. 9931, 2013 WL 1987225, at *1
(S.D.N.Y. May 14, 2013) (quoting Virgin Atlantic Airways Ltd. v.
National Mediation Board, 956 F.2d 1245, 1255 (2d Cir. 1992)).

“A

party seeking reconsideration may neither repeat arguments already
briefed, considered and decided, nor advance new facts, issues or
arguments not previously presented to the Court.”

Ferring B.V. v.

Allergan, Inc., No. 12 Civ. 2650, 2013 WL 4082930, at *1 (S.D.N.Y.
Aug. 7, 2013) (internal quotation marks omitted).

Reconsideration

remains “an extraordinary remedy to be employed sparingly in the
interest

of

resources.”

finality

and

conservation

of

scarce

judicial

Hinds County, Mississippi v. Wachovia Bank N.A., 700

F. Supp. 2d 378, 407 (S.D.N.Y. 2010) (internal quotation marks
4

omitted).
B.

Reconsideration of Compelled Production

Rule 26 authorizes parties to obtain “discovery regarding any
matter, not privileged, which is relevant to the subject matter
involved in the pending action,” as well as all information
“reasonably calculated to lead to the discovery of admissible
evidence.”

Fed. R. Civ. P. 26(b)(1).

The counter-plaintiff is

correct that the initial disclosures mandated by Rule 26(a) do not
require the disclosing party to produce actual documents “until the
other party wishes to obtain access to the [referenced] documents
by either a formal or informal discovery request.” Coppola v. Bear
Stearns & Co., 1:02-CV-1581, 2005 WL 3159600, at *7 (N.D.N.Y. Nov.
16, 2005).

Rule 26(e), meanwhile, imposes an obligation to timely

supplement or correct discovery responses either when a party
“learns that in some material respect the disclosure or response is
incomplete or incorrect” or “as ordered by the court.”

Fed. R.

Civ. P. 26(e).
Here, the Estate followed the initial disclosures by AVELA and
Mr. Valencia with requests, both formal and informal, for the
information they subsequently sought to compel.

(The Estate of

Marilyn

Opposition

Monroe,

LLC’s

Memorandum

of

Law

in

to

A.V.E.L.A., Inc.’s and Leo Valencia’s Motion for Reconsideration of
Order Compelling Discovery and Awarding Attorneys’ Fees at 8;
5

Plaintiff A.V.E.L.A., Inc.’s Response to Defendant’s First Set of
Requests for Documents (“AVELA Response”), attached as Exh. B to
Declaration of Gina L. Durham dated Dec. 19, 2013 (“Durham Decl.”),
Response Nos. 4-5, 8-12, 14, 18-22; Cross-Defendant Leo Valencia’s
Responses to Defendant the Estate of Marilyn Monroe, LLC’s First
Set of Requests for Production of Documents to Cross-Defendant Leo
Valencia (“Valencia Response”), attached as Exh. N to Durham Decl.,
Response No. 3).

In most cases, the counter-defendants agreed to

produce all responsive documents but then contended that such
documents could not be located.

(AVELA Response, Response Nos. 4-

5, 14, 18-22; Valencia Response, Response No. 3; E-mail of Melissa
Woo dated Dec. 4, 2013 (“Woo 12/4/13 E-Mail”), attached as Exh. V
to Durham Decl.; Counter-Pl. Memo. at 1).
that,

after

a

reasonable

search

and

AVELA also responded

inquiry,

there

were

no

documents responsive to the Estate’s request for a printout of
AVELA-operated websites displaying AVELA licensed products. (AVELA
Response, Response No. 46). This posture, according to the Estate,
allowed the counter-defendants to contend that they were compliant
with their discovery obligations yet prevented the Estate from
pursuing a motion to compel.

(Counter-Pl. Memo. at 1).

“Where one party fails to respond to a discovery request, or
provides evasive or incomplete responses, the aggrieved party may
seek an order to compel disclosure or discovery.” Glencore Denrees
6

Paris v. Department of National Store Branch 1, No. 99 Civ. 8607,
2008 WL 4298609, at *4 (S.D.N.Y. Sept. 19, 2008) (citing Fed. R.
Civ. P. 37(a)); In re Teligent, Inc., 358 B.R. 45, 61 (Bankr.
S.D.N.Y. 2006).

It is up to the party seeking to compel production

to “cast doubt” on the responding party’s representation that they
have conducted a reasonable and adequate search for responsive
documents.

Gary Friedrich Enterprises, LLC v. Marvel Enterprises,

Inc., No. 08 Civ. 1533, 2011 WL 2623458, at *1 (S.D.N.Y. June 21,
2011); see also Trilegiant Corp. v. Sitel Corp., 272 F.R.D. 360,
368 (S.D.N.Y. 2010) (where requesting party could not specify
documents opposing party failed to produce, “no basis for ordering
[opposing party] to respond more fully to these requests”).
Estate

carried

deposition
evidence.

its

testimony

burden
and

by

pointing

undisclosed

to

The

inconsistencies

licensees,

among

in

other

In addition, the production of several categories of

documents in response to the filing of the motion to compel
undermined the counter-defendants’ claims that such information
could not be found.
1. Intellectual Property Rights to Marilyn Monroe Images
In its first request for document production, the Estate
formally requested documents identifying each and every copyright
registration or application for works incorporating images of
Marilyn Monroe, as well as documents demonstrating AVELA’s rights
7

to use third-party works featuring Marilyn Monroe (i.e., the
“artist files”).

AVELA responded that it would produce non-

privileged responsive documents in its possession, custody, or
control.

(AVELA Response, Response Nos. 4-5).

several

copyright

through

e-mail,

registrations.
attached

as

registrations.
the

deposit

The

materials

Estate

It did produce
then

associated

requested,
with

such

(E-mail of Nicole Chaudhari dated Sept. 10, 2013,

Exh.

C

to

Durham

Decl.).

AVELA’s

then-counsel

responded, on September 10, 2013, that she had “requested the
deposit copies and [would] produce” them.

(E-mail of Melissa Woo

dated Sept. 10, 2013, attached as Exh. D to Durham Decl.). Despite
this confirmation, the deposit materials were not produced.
Estate also reiterated its request for the artist files.

The

(Letter

of Nicole Ann Chaudhari dated Nov. 4, 2013 (“Chaudhari Letter”),
attached as Exh. O to Durham Decl., at 2).

In December 2013, AVELA

responded that it was unable to locate these files.

(Woo 12/4/13

E-Mail).
After the motion to compel was filed, the counter-defendants
produced the requested copyright deposit materials and several
artist files.

(Memorandum of Law in Support of Opposition to

Defendant/Counter-Plaintiff the Estate of Marilyn Monroe, LLC’s
Motion

for

Discovery

Sanctions

for

(“Counter-Def.

Discovery
Memo.”)
8

at

Misconduct
4-5;

and

to

Declaration

Compel
of

Leo

Valencia dated Jan. 14, 2014 (“Valencia Decl.”), attached to
Counter-Def.

Memo.,

¶¶

3,

14).

The

counter-defendants

also

produced a copy of the pages from the website www.radio-days.info,
despite its response in August 2013 that no such documents existed.
(Counter-Def. Memo. at 5; AVELA Response, Response No. 46).
The requested materials are clearly relevant to the claims at
issue in this case.

In their initial disclosures, AVELA proffered

that it had “documents regarding the acquisition and ownership of
artwork featuring Marilyn Monroe,” which the Estate then requested.
(A.V.E.L.A., Inc.’s Initial Disclosures Pursuant to FRCP 26(a)(1)
(“AVELA Rule 26 Disclosures”), attached as Exh. A to Durham Decl.,
at 7; AVELA Response, Response Nos. 4-5).
Estate

provided

sufficient

evidence

to

In its motion, the
conclude

that

these

documents were in AVELA’s possession but were not being produced in
a

timely

manner.

(Counter-Pl.

Memo.

at

5-7

(highlighting

deposition testimony regarding artist files and subsequent e-mails
that such files could not be located, and delay in production of
copyright deposit materials)).

In my prior order, despite the

belated production of some requested documents, I required the
counter-defendants to produce any further documentation supporting
their claims of intellectual property ownership in Marilyn Monroe
images, essentially reiterating the mandate under Rule 26 that
parties must timely supplement their disclosures and production.
9

That order stands.

To the extent that any further responsive

documents relating to its intellectual property rights in Marilyn
Monroe images remain in its possession, custody, or control, AVELA
is required to produce them.1

If no such documents exist or can be

found, AVELA is directed to file a certification to that effect.
See, e.g., Colon v. Potter, No. 3:08 CV 75, 2009 WL 1456486, at *1
(D. Conn. May 21, 2009) (requiring party to provide sworn affidavit
attesting that diligent search produced no responsive materials).
2. Financial Records
i. Checks
In its motion to compel, the Estate contended that the checks
provided by the counter-defendants demonstrating the fees paid by
AVELA to V International were redacted beyond recognition and
unusable. (Counter-Pl. Memo. at 14-15). AVELA provided new copies
of the checks in conjunction with its opposition.

(Counter-Def.

Memo. at 8 (“[Mr.] Valencia has located copies of the actual checks
and has produced them to The Estate . . . .”)).

The Estate,

however, noted in its Reply that, although unredacted, the new
copies were nonetheless illegible.

1

(Defendant/Counter-Plaintiff

In its opposition to the motion to compel, then-counsel for
the counter-defendants noted that “several artist contracts” had
recently been located and produced, which leaves open the
possibility that a diligent search might uncover other such files.
(Counter-Def. Memo. at 4).
10

the Estate of Marilyn Monroe, LLC’s Reply in Support of its Motion
for Sanctions for Discovery Misconduct and to Compel Discovery
(“Counter-Pl. Reply”) at 9).

Based on this exchange, I required

AVELA to produce new copies of the checks.
The counter-defendants’ counsel now proffers that the checks
produced on January 14 were in fact copies received from AVELA’s
bank, as Mr. Valencia could not locate the checks.2

Counter-

defendants’ counsel doubts that the bank has more legible copies of
the checks, and therefore argues that the counter-defendants cannot
be required to produce documents outside of their possession,
custody, or control.

(AVELA Reconsideration Memo. at 2, 14-15).

This is information that could have been presented to the Court in
AVELA’s opposition to the motion to compel, but was not.

2

If

Although counsel for the counter-defendants argues that
requesting and producing copies of the checks from the bank
demonstrates the counter-defendants’ willingness to “go the extra
mile” in discovery (Memorandum of Points and Authorities in Support
of Motion for Reconsideration of Order Compelling Discovery and
Awarding Attorneys’ Fees (“AVELA Reconsideration Memo.”) at 3), no
mention is made of requesting the bank statements that the counterdefendants say cannot be located. In addition, it bears mention
that a party may be required to produce discovery under Rule 34 not
only where it has actual physical possession of the documents at
issue, but also where it has the “practical ability to obtain the
documents from a non-party to the action.”
In re NTL, Inc.
Securities Litigation, 244 F.R.D. 179, 195 (S.D.N.Y. 2007), aff’d
sub nom. Gordon Partners v. Blumenthal, No. 02 Civ. 7377, 2007 WL
1518632 (S.D.N.Y. May 17, 2007) (emphasis added) (internal
quotation marks omitted); see also, e.g., In re Ski Train Fire of
November 11, 2000 Kaprun Austria, No. MDL 1428, 2006 WL 1328259, *5
(S.D.N.Y. May 16, 2006).
11

counter-defendants

cannot

acquire

more

legible

copies

of

the

checks, AVELA must file a certification to that effect.
ii. Underlying Financial Documentation
In its Rule 26 disclosures, AVELA represented that it had in
its possession documents relating to the expenditures associated
with

advertising,

marketing,

and

promotion.

(AVELA

Rule

26

Disclosures at 7). AVELA produced balance sheets for 2008-2012 and
an

income

summary

showing

the

percentage

of

AVELA

profits

attributed to Marilyn Monroe products. (Counter-Def. Memo. at 7).
During Mr. Valencia’s deposition, the Estate questioned him on the
creation of this income summary, which he was preparing at the
time.

(Deposition of Leo Valencia dated Oct. 1, 2013 (“Valencia

Dep.”), attached as Exh. H to Durham Decl., at 149-51). The Estate
asked

Mr.

Valencia

whether

any

of

the

underlying

supporting the claimed expenses had been produced.
at 150).

receipts

(Valencia Dep.

Mr. Valencia responded that although he had not produced

the underlying financial documents, he had “created summarizations
of the balance sheets and . . . the expenses sheets and the
percentages accurately.”
Valencia’s

deposition,

(Valencia Dep. at 151).
the

Estate

requested

Following Mr.
the

underlying

documentation relating to AVELA’s costs and deductions associated
with income from Marilyn Monroe images.

(Chaudhari Letter at 2).

The counter-defendants replied that these documents could not be
12

located but that Mr. Valencia would continue to search for them.
(Woo 12/4/13 E-mail; E-Mail of Melissa Woo dated Dec. 10, 2013,
attached as Exh. W to Durham Decl.).

Although seeking preclusion

of documents that might be used to support costs and deductions,
the Estate’s motion also noted that the Court might “allow [the]
[c]ounter-[d]efendants to produce additional documents, including
the back-up documentation that they currently claim is not able to
be located.”

(Counter-Pl. Memo. at 21).

In the motion for reconsideration, the counter-defendants
reassert that such documents cannot be found and object to the
characterization

that

the

requested

documents

were

Valencia’s possession at the time of his deposition.

in

Mr.

(Reply

Memorandum of Points and Authorities in Support of Motion for
Reconsideration

of

Order

Compelling

Discovery

and

Awarding

Attorneys’ Fees (“Reconsideration Reply Memo.”) at 7-8).

Counsel

for the counter-defendants proffers an alternate explanation of the
deposition testimony: that Mr. Valencia used other summarizations
of balance sheets and expenses when creating the income summary and
not the actual receipts at issue.
8

n.7).

Submitting

an

(Reconsideration Reply Memo. at

alternate

explanation

for

a

party’s

testimony is not sufficient grounds for reconsideration, especially
where this argument was not presented in the initial motion.
(Counter-Def. Memo. at 11 (noting that “[Mr.] Valencia has not been

13

able to locate all of his source documents used to prepare AVELA’s
financial records”) (emphasis added)).
Counsel for the counter-defendants also now explains that
AVELA does not intend to rely on the raw underlying documentation
to support its income and balance sheet calculations.
Reconsideration Memo. at 5).

(AVELA

However, whether one party intends

to rely on certain documents in its defense does not demarcate the
allowable scope of discovery.

Given the deposition testimony,

which can be read to affirm that Mr. Valencia did indeed have
access to underlying financial data when creating the produced
income summary, the Estate provided sufficient evidence that these
documents existed but were not being produced.

If AVELA indeed

cannot locate the receipts at issue, it must submit a certification
that, after a diligent search, no receipts can be found.
iii. Bank Account Information
In addition, although much of the dispute has focused on a
particular box of receipts referenced in Mr. Valencia’s deposition,
the Estate’s request is broader than just those receipts.

(AVELA

Response, Response Nos. 14, 18-22; Chaudhari Letter at 2).

In its

original opposition to the motion to compel, AVELA noted that it
had

largely

complied

with

the

Estate’s

request

by

producing

unredacted royalty reports, invoices from V International, and
checks to V International.

(Counter-Def. Memo. at 7).

14

However,

the Estate also requested the production of bank statements and
credit card statements, which were never produced.

(Chaudhari

Letter at 2).
As part of its motion to compel, the Estate sought disclosure
of the names and addresses used by Mr. Valencia, which I read to
also include AVELA accounts.

(AVELA Reconsideration Memo. at 5

(describing AVELA as a “one man company with Mr. Valencia as its
sole officer and no employees”)). I ordered the counter-defendants
to “disclose a complete list of financial institutions at which
AVELA or Mr. Valencia maintains an account.”
715540,

at

*10.

In

their

initial

AVELA, 2014 WL

opposition,

the

counter-

defendants argued that the request was “drastic and unwarranted”
and would unjustifiably interfere with Mr. Valencia’s privacy
rights.

(Counter-Def. Memo. at 14).

The counter-defendants now

contend that the request goes beyond any propounded discovery
request. (AVELA Reconsideration Memo. at 15).
This

argument

initial opposition.

was

not

raised

in

the

counter-defendants’

Therefore, it is inappropriate to address on

reconsideration. Moreover, reversing my previous order and denying
the Estate’s request would be a purely formal exercise.

Discovery

has not yet closed and a denial would merely lead the Estate to
request this information, which is relevant and discoverable.

15

3. Worldwide List of Licensees
In its documents requests to both AVELA and to Mr. Valencia
individually,

the

Estate

requested

documents

identifying

all

entities through which Mr. Valencia or AVELA operates in licensing
images of Marilyn Monroe.
Valencia

Response,

(AVELA Response, Response Nos. 8-12;

Response

No.

3).

The

counter-defendants

objected to the requests but nonetheless agreed to produce all
responsive, non-privileged documents.

(AVELA Response, Response

Nos. 8-12; Valencia Response, Response No. 3).
In its opposition to the motion to compel, the counterdefendants

insisted

that

a

worldwide

list

of

licensees

was

irrelevant, and that all contracts with foreign licensees contained
territorial limitations.

(Counter-Def. Memo. at 6 & n.2).

However, the Estate’s initial requests were phrased broadly enough
to

reach

international

licensees,

and

it

later

specifically

requested such information. (Chaudhari Letter at 2). In addition,
the Estate in its motion to compel argued that international
licensees were relevant insofar as they might import Marilyn Monroe
products into the United States. (Counter-Pl. Memo. at 9-10; Order
Page

for

Urban

Species,

attached

as

Exh.

X

to

Durham

Decl.

(displaying Marilyn Monroe t-shirts offered by a United Kingdom
retailer)).

The Estate also included evidence of at least one

international licensee that had not been previously disclosed.

16

(Counter-Pl. Memo. at 9-10; Poetic Gem Renews with Radio Days,
attached as Exh. Y to Durham Decl.).

The counter-defendants’

response that this licensee was a former but not current licensee
was insufficient to dispel the Estate’s concerns that AVELA had not
produced all documents relating to its licensees.
Memo. at 6).
of

the

For these reasons, which support both the relevance

requested

undisclosed

(Counter-Def.

discovery

information,

I

and

the

ordered

potential

of

counter-defendants

the

existence

to

disclose “a worldwide list of all licensees, former and current,
that license Marilyn Monroe products either directly from AVELA or
through AVELA or Mr. Valencia operating as a license agent.”
AVELA, 2014 WL 715540, at *10. However, this need not be disclosed
in the form of a list; rather, the counter-defendants may produce
documents sufficient to identify all current licensees of both
AVELA and Mr. Valencia.
The

counter-defendants

also

seek

clarification

that

the

ordered supplementation of royalty reports, balance sheets, and the
income summary not mandate the creation of new documents, but
rather

the

production

of

relevant

documents.

(AVELA

Reconsideration Memo. at 16-18).

This is indeed the case.

providing

to

foreign

documentation

licensees,

will

relating
likely

all

impact

licensees,

the

current

As

including
discovery

responses provided by the counter-defendants, they are under the

17

obligation created by Rule 26(e) to supplement their previous
responses

with

additional

documentation

where

necessary.

As

outlined by counter-defendants’ counsel, the pertinent document
requests are Nos. 14, 18, 19, 20, 21, 22, and 26.

(AVELA

Reconsideration Memo. at 16).
C.

Reconsideration of Grant of Attorneys’ Fees

The

counter-defendants

contend

that

I

applied

the

wrong

standard when determining whether attorneys’ fees were warranted in
connection to the motion to compel.

(AVELA Reconsideration Memo.

at 20). Where a motion to compel is granted or requested discovery
is provided after the motion is filed, the court must require the
party whose conduct necessitated the motion or their counsel to pay
the movant’s reasonable expenses incurred in making the motion,
including attorneys’ fees.

See Alexander Interactive, Inc. v.

Adorama, Inc., No. 12 Civ. 6608, 2014 WL 61472, at *7 (S.D.N.Y.
Jan. 6, 2014); Oleg Cassini, Inc. v. Electrolux Home Products,
Inc., No. 11 Civ. 1237, 2013 WL 3056805, at *4 (S.D.N.Y. June 19,
2013); Underdog Trucking, LLC v. Verizon Services Corp., 273 F.R.D.
372, 377 (S.D.N.Y. 2011).

However, attorneys’ fees may not be

ordered if the movant filed before attempting to meet and confer in
good faith, if non-disclosure was substantially justified, or if
other circumstances make an award of expenses unjust. Fed. R. Civ.
P.

37(a)(5)(A)(i)-(iii).

Substantial

18

justification

is

“justification to a degree that could satisfy a reasonable person
that parties could differ as to whether the party was required to
comply with the disclosure request or if there exists a genuine
dispute concerning compliance.”

Ritchie Risk-Linked Strategies

Trading (Ireland), Ltd. v. Coventry First LLC, 280 F.R.D. 147, 159
(S.D.N.Y. 2012) (internal quotation marks omitted).
Numerous decisions note that Rule 37(a) “provides, in fact,
that the losing party on a motion to compel must pay reasonable
expenses, barring extenuating circumstances.” JSC Foreign Economic
Association Technostroyexport v. International Development & Trade
Services, Inc., No. 03 Civ. 5562, 2005 WL 1958361, at *13 (S.D.N.Y.
Aug. 16, 2005) (collecting cases).

In addition, “[a]n award of

reasonable fees incurred in bringing a motion to compel discovery
is the least harsh of all the sanctions allowed under Rule 37.”
Aetna Life Insurance Co. v. Licht, No. 03 Civ. 6764, 2005 WL
180873, at *1 (S.D.N.Y. Jan. 27, 2005).

Here, the counter-

defendants produced some of the discovery at issue after the motion
to compel was filed.

(Counter-Def. Memo. at 4-5).

the production of other discovery was ordered.

In addition,

Therefore, Rule

37’s rebuttable presumption in favor of fee shifting applies.
also

expressly

found

that

the

counter-defendants’

delay

I
in

producing the artist files, copyright deposit materials, checks,
and website printout was not substantially justified.

19

AVELA, 2014

WL 715540, at *5.

Furthermore, as stated above, the production of

this evidence after repeated assurances that it could not be
located undermines the credibility of the counter-defendants’
position that they could not find other requested discovery,
including underlying financial data.

And, although the counter-

defendants’ objection to discovery relating to foreign licensees
might satisfy the substantial justification standard on grounds of
relevance, see Klein v. Torrey Point Grp., LLC, __ F. Supp. 2d __,
__, 2013 WL 5761401, at *20 (S.D.N.Y. 2013), that ultimately
applies to just one category of the discovery ordered.

This in

itself is insufficient to bar an award of attorneys’ fee. See Fed.
R. Civ. P. 37(a)(5)(C) (granting court discretion to apportion
expenses even where motion is granted in part and denied in part).
Finally, there are no circumstances here that would make an
award of attorneys’ fees unjust. While counter-defendants’ counsel
argues that there was no conduct by the counter-defendants that
necessitated the filing of the motion to compel (Reconsideration
Reply Memo. at 12-14), the belated production of the requested
artist files, copyright deposit materials, and website printout
demonstrates

that

inadequate.

The

the

counter-defendants’

counter-defendants

must

prior
bear

the

search

was

costs

and

attorneys’ fees associated with the Estate’s motion to compel.

20

Conclusion
For the reasons discussed above, the February 24, 2014 order
stands.

This resolves the motion for reconsideration (Docket no.

95) .
SO ORDERED.

cS

C·~r.J 'lZ-­

JAMES C. FRANCIS IV
UNITED STATES MAGISTRATE JUDGE

Dated: New York, New York
April 11, 2014
Copies mailed this date:
Michael R. Adele, Esq.
Technology Litigation Center
828 S. Marjan St
Anaheim, CA 92806
Gina L. Dunham, Esq.
DLA Piper, LLP
555 Mission Street, Suite 505
San Francisco, CA 94105
Nicole A. Chaudhari, Esq.
DLA Piper, LLP
203 North LaSalle Street, Suite 1900
Chicago, IL 60601
Tamar Y. Duvdevani, Esq.
DLA Piper, LLP
1251 Avenue of the Americas
New York, NY 10020

21